Chanel Limited v Tessa Sullivan

[2016] ATMO 49

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition filed by Chanel Limited to registration of trade mark application 1545437(3, 14) - COCO BIRD - in the name of Tessa Sullivan.

Delegate:	Cristy Condon
Representation:	Opponent: Sean Mc Manis of Shelston IP Pty Ltd Applicant: Not represented
Decision:	2016 ATMO XX Section 52 opposition to registration – s44 considered –established – Trade Mark refused

Background

1. On 8 March 2013 Tessa Sullivan (‘the Applicant’) filed an application under the Trade Marks Act 1995 (Cth) (‘the Act’) to register the following trade mark:

   Trade Mark no.:     1545437

   Trade Mark:           Coco Bird (‘the Trade Mark’)

   Priority Date:          8 March 2013

   Goods:  Class 3: Cleaning preparations for use on jewellery

   
   Class 14: Articles of imitation jewellery; Articles of jewellery; Artificial jewellery; Boxes for jewellery; Cases adapted to contain items of jewellery; Chains (jewellery); Charms (jewellery); Containers especially adapted for presentation and display of jewellery or watches; Costume jewellery; Fake jewellery; Fashion jewellery; Gold jewellery; Imitation jewellery; Imitation jewellery ornaments; Items of jewellery; Jewellery; Jewellery articles; Jewellery boxes; Jewellery cases; Jewellery chain; Jewellery chain of precious metal for bracelets; Jewellery chain of precious metal for necklaces; Jewellery coated with precious metal alloys; Jewellery coated with precious metals; Jewellery containing gold; Jewellery fashioned from bronze; Jewellery fashioned from non-precious metals; Jewellery fashioned of precious metals; Jewellery fashioned of semi-precious stones; Jewellery for personal adornment; Jewellery for personal wear; Jewellery in non-precious metals; Jewellery in precious metals; Jewellery in semi-precious metals; Jewellery items; Jewellery made from gold; Jewellery made from silver; Jewellery made of bronze; Jewellery made of crystal; Jewellery made of crystal coated with precious metals; Jewellery made of glass; Jewellery made of non-precious metal; Jewellery made of plastics; Jewellery made of plated precious metals; Jewellery made of precious metals; Jewellery made of precious stones; Jewellery made of semi-precious materials; Jewellery of yellow amber; Jewellery ornaments; Jewellery plated with precious metals; Jewellery products; Jewellery rope chain for bracelets; Jewellery rope chain for necklaces; Jewellery stones; Leather jewellery; Lockets (jewellery); Medallions (jewellery); Medical condition alert jewellery; Neck chains (jewellery); Necklaces (jewellery); Ornaments (jewellery); Personal jewellery; Precious jewellery; Rings (jewellery); Sterling silver jewellery; Synthetic stones (jewellery)

2. In due course the Trade Mark application was examined and on 4 July 2013 it was advertised as accepted for possible registration in the Official Journal of Trade Marks. 

3. Pursuant to s 52 of the Act on 4 September 2013 Chanel Limited (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the application, and on 4 October 2013 it filed a Statement of Grounds and Particulars (‘the SGP’), which particularised the grounds of opposition under s 44 and s 60 of the Act. A Notice of Intention to Defend was subsequently filed by the Applicant and the evidence stages commenced.

The Evidence

1. The evidence filed by the parties consists of five declarations.  These are summarised below:

   The Opponent’s Evidence in Support

   Declaration made by David Blakeley dated 31 October 2014, with Exhibits DB-1 to DB26; and

   Declaration made by Sean Francis McManis dated 31 October 2014, with Exhibits SFM-1

The Applicant’s Evidence in Answer

Declaration made by Tess Sullivan dated 14 February 2015

The Opponent’s Evidence in Reply

Declaration made by Sean McManis dated 15 April 2015, with Annexures A to E

Declaration made by David Blakeley dated 8 May 2015, with Exhibit A and Annexures B and C

1. On 28 August 2015 the Opponent requested a hearing.  I have been allocated the hearing, as a delegate of the Registrar.  On 29 March 2016 I sent an email to both parties which set out the schedule for the making of written submissions.  The Opponent made comprehensive submissions, both written and oral in accordance with the schedule.  The Applicant did not make any submissions.  On 4 May 2016 I conducted the hearing.  The Opponent was represented at the hearing by Sean McManis from Shelston IP.  The Applicant was not represented.

Relevant date and onus

1. The rights of the parties are to be determined as at the date of application which is typically the filing date.[1] The relevant date in the current matter is 8 March 2013. The Opponent bears the onus of establishing a ground of opposition,[2] and should one ground be established there is no requirement that I discuss any other ground of opposition. The standard of proof is the ordinary civil standard of the balance of probabilities.[3] 

   [1] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; the Act ss 6, 12, 72.

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [3] Pfizer Products Inc v Karam [2006] FCA 1663 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156.

2. In this decision ‘the relevant goods’ means all the goods claimed in classes 3 and 14 of the Trade Mark application.

The Legislation

1. Section 44 of the Act relevantly provides:

   Identical etc. trade marks

   (1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

   (a)  it is substantially identical with, or deceptively similar to:

   (i)  a trade mark registered by another person in respect of similar goods or   closely related services; or

   (ii)  a trade mark whose registration in respect of similar goods or closely related                 services is being sought by another person; and

   (b)  the priority date for the registration of the applicant’s trade mark in respect of               the applicant’s goods is not earlier than the priority date for the registration of                  the other trade mark in respect of the similar goods or closely related services.

   (2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a)  it is substantially identical with, or deceptively similar to:

   (i)  a trade mark registered by another person in respect of similar services or   closely related goods; or

   (ii)  a trade mark whose registration in respect of similar services or closely related              goods is being sought by another person; and

   (b)  the priority date for the registration of the applicant’s trade mark in respect of               the applicant’s services is not earlier than the priority date for the registration of                 the other trade mark in respect of the similar services or closely related goods.

2. Section 60 of the Act provides:

   Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

   Note: For priority date see section 12

Discussion and Reasons

Section 44

1. The question under s 44 deals with the competing rights of owners of trade marks in Australia and it can be established on the face of the SGP based on the conflicting trade mark/s that have been nominated by the Opponent in that document.

2. Under section 44 an Opponent must first establish that the trade mark upon which it relies upon has an earlier priority date than the Trade Mark. Secondly, it must establish that this trade mark contains similar goods, or closely related services to those claimed in the Trade Mark specification[4]. Thirdly, it must establish that this trade mark is substantially identical with, or deceptively similar to, the Trade Mark. 

   [4] Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 per French J.

3. In pursuit of this ground the Opponent has nominated three registered trade marks and one pending trade mark (the ‘Coco trade marks’).  The details of the Opponent’s Coco trade marks are as follows:

   Trade Mark No.: 445285

   Trade Mark:   COCO

   Filing/priority date: 14 May 1986

   Owner: Chanel Limited

   Goods & Services:

   Class 14: All goods in this class, including: precious metals and their alloys and goods in precious metals or coated therewith (except cutlery, forks and spoons); jewellery, precious stones; horological and chronometric instruments; and parts of and accessories for such goods.

   Trade Mark No.: 486409

   Trade Mark: COCO

   Filing/priority date: 4 May 1988

   Owner: Chanel Limited

   Goods & Services:

   Class 42: Services in this class connected with the retailing of perfumery, clothing, jewellery and accessories

   Trade Mark No.: 642736

   Trade Mark: COCO

   Filing/priority date: 7 October 1994

   Owner: Chanel Limited

   Goods & Services:

   Class 42: Services in this class connected with the retailing of perfumery; and the retailing of womens' clothing, jewellery and accessories through womens' outlets and womens' boutiques only

   Trade Mark No.: 1474214

   Trade Mark: COCO

   Filing/priority date: 13 February 2012

   Owner: Chanel Limited

   Goods & Services:

   Class 9: Optical apparatus and instruments; automatic machines for vending perfumes or cosmetics; spectacles, sunglasses, eye glasses, field glasses, binoculars; cases, cords and chains for the aforesaid goods; spectacle and sunglasses frames and lenses; electronic hair appliances for personal use; anti-glare glasses and visors; anti-theft apparatus for skis and ski equipment; clothing and gloves for protection against accidents; helmets; goggles; personal safety alarms; fascias, cases, covers and carry bags for telephones and telecommunications apparatus and instruments; fascias, cases, covers and carry bags for computer apparatus and instruments; fascias, cases, covers and carry bags for electronic devices; mobile telephone cards; downloadable ring tones and icons; machine readable mobile airtime vouchers; club cards, charge cards, payment cards, loyalty cards, debit cards, credit cards; CD ROM, DVD and blue ray discs; decorative magnets

   Class 14: Articles made of precious metals or coated therewith; jewellery; precious stones; charms; keyrings; horological and chronometric instruments, watches, clocks, watch bands, watch straps, watch bracelets; parts and fittings for all the aforesaid

   Class 18: Articles of leather and of imitation leather; handbags; pocket wallets, umbrellas, parasols, vanity cases (not fitted), briefcases, articles of luggage, purses (not of precious metal or coated therewith), leather belts; bags; skins and hides, all for use in the clothing industry; carrying cases; parts and fittings for the aforesaid goods

   Class 25: Clothing; footwear; headgear; gloves, scarves, belts Class 35: Articles made of precious metals or coated therewith; jewellery; precious stones; charms; keyrings; horological and chronometric instruments, watches, clocks, watch bands, watch straps, watch bracelets; parts and fittings for all the aforesaid

   Class 35: Retail services and department store retail services connected with the sale of a variety of goods, including perfumes, toiletries, cosmetics, sunglasses, jewellery, watches, handbags, leather goods, clothing, footwear and accessories; wholesale outlet retail services connected with the sale of a variety of goods including perfumes, toiletries, cosmetics, sunglasses, jewellery, watches, handbags, leather goods, clothing, footwear and accessories; specialist clothing retail services; specialist footwear retail services; specialist cosmetics retail services; specialist perfume retail services; specialist toiletries retail services; specialist jewellery retail services; specialist bag and leathergoods retail services; specialist watch retail services; optical glasses specialist retail services; sales promotion services; mail order and electronic shopping retail services connected with the sale of a variety of goods including perfumes, toiletries, cosmetics, sunglasses, jewellery, watches, handbags, leather goods, clothing, footwear and accessories; information and advisory services relating to the aforesaid; advertising and promotion services relating to these goods; excluding services relating to furniture and furnishings; excluding services relating to food and drinks
   
   Endorsements: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.*

4. To begin with I note that the priority dates of all of the Coco trade marks predate 8 March 2013[5] and, for brevity, I note that the class 14 jewellery goods claimed in the Trade Mark are the same, or similar to, the class 14 jewellery goods protected by coco trade marks 445285 and 1474214[6]. 

   [5] This is the relevant date.

   [6] Section 14 of the Act.

5. Furthermore, given the Applicant was not represented at the hearing for the opposition, it was not disputed that the jewellery products claimed in the Trade Mark were identical to the jewellery already protected by coco trade marks 445285 and 1474214.  However, the Applicant did file evidence regarding the particular nature of the jewellery it provides (which is chiefly low cost jewellery) and contrasted those goods with the Opponent’s designer cosmetic jewellery.  It sought to show that its jewellery items were marketed quite differently to the Opponent’s designer brand goods.  The evidence also states that the COCO BIRD trade mark is applied to goods made in, and imported from China and the products are not unique designs to the COCO BIRD brand.[7]  Lastly, I appreciate that the Applicant, Tessa Sullivan, shows in Exhibit A[8] that the Trade Mark is named after [remainder of sentence redacted]. However the intention of the Applicant and why it chose its Trade Mark (no matter how meaningful the decision was) is not a relevant factor under section 44 of the Act.

   [7] Declaration made by Tessa Sullivan dated 14 February 2015 with Exhibit A to C.

   [8] Ibid.

6. That said, I am not persuaded by the Applicant’s evidence because legal authority makes it clear that for the purposes of section 44 the “question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the Applicant can do if registration is obtained.”[9] As Lord Parker also stated in Re Pianotist Co Ltd’s Application:[10]

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in normal way as a trade mark for the goods of the respective owners of the marks.

   [9] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; 45 IPR 411; [1999] FCA 1020 [50].

   [10] (1906) 23 RPC 777.

7. Further, I strongly agree with Mason J in Berlei Hestia Industries Ltd v Bali Co Inc[11] where he observed:

   ...The question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.

   [11] [1973] HCA 43; (1973) 129 CLR 353 [362].

8. I therefore find that the jewellery goods claimed by the Trade Mark are similar to those jewellery products already claimed by coco trade marks 445285 and 1474214.

9. I am also satisfied that a trader who is designing, manufacturing and selling jewellery could reasonably be expected to also make its own jewellery cleaner.  Needless to say I consider that the class 3 goods claimed in the Trade Mark are also similar to the class 14 goods claimed in coco trade marks 445285 and 1474214.  As the Opponents trade marks are all for the word coco there is no need for me to analyse the similarity of the goods and services in respect of the other coco trade marks any further.

10. I turn now to decide whether the Trade Mark is deceptively similar to the coco trade marks[12].

    [12] I note the Opponent is not pursuing this ground with respect to the principle of substantially identical trade marks.

11. The concept of deceptive similarity, is defined in section 10 of the Act:

    10 Definition of deceptively similar

    For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion

12. The test as to whether trade marks are deceptively similar is explained in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd[13]. Dixon and McTiernan JJ stated:

    [T]he marks ought not … to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.

    [13] (1937) 58 CLR 641 (at 658).

13. The trade marks upon which the Opponent relies are all the word ‘COCO’ solos.  These trade marks are wholly contained in the Trade Mark. ‘COCO’ has no meaning in the context any of the goods or services in this matter.  This means the word ‘COCO’ is quite distinctive and therefore memorable in the context of jewellery cleaner and the design, manufacturer and retailing of jewellery.  I am not satisfied that the addition to the word ‘BIRD’ in the Trade Mark creates a different impression to the plain word ‘COCO’. 

14. I am satisfied that the impression or recollection which is carried away and retained would be the basis of a mistaken belief that the Trade Mark is the Opponent’s trade mark, or it would result in contextual confusion, that is, where the Trade Mark contains the additional word BIRD which is different to the coco trade marks and is readily apparent to the potential purchaser but still leads them to wonder whether they come from the same source.[14]

    [14] See for example Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159 at [145] where Honourable Justice Nicholas also cited the following cases: In the Matter of John Fitton & Co Limited’s Application (1949) 66 RPC 110 (JESTS and EASYJESTS) Tonka Corporation v Chong (1994) 29 IPR 253 (MONOPOLY and MUSICOPOLY) ; Telstra Corporation Ltd v Yellownet Corporation (1999) 44 IPR 415 (YELLOW PAGES and YELLOWNET); and Caterpillar Inc v Amco (Vic) Pty Ltd (2000) 49 IPR 407 (CAT and LANDCAT).

15. I refer  to John Fitton & Co. Ltd’s Application,[15] where the Assistant Comptroller was considering the similarity of the trade marks JESTS and EASYJESTS and he stated:

    With reference to the nature of the confusion alleged the evidence furnished on behalf of the Opponents by their trade declarants is directed not so much towards showing that the two marks "Jests" and "Easyjests" might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element" Jest" in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from one and the same trade source.

    [15] In the Matter of John Fitton & Co Limited’s Application at [25].

1. Thus trade marks may be found deceptively similar according to whether they might be mistaken for one another, or according to whether they might be distinguished from one another but nonetheless thought to originate from the same trade source.

2. I am satisfied that potential purchasers will have cause to wonder if the Trade Mark originated from the Opponent. Accordingly, the Opponents ground for opposition under s 44 is established at least in respect of coco trade marks 445285 and 1474214.

Decision

1. Subsection 55(1) of the Act provides:

55  Decision

(1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a) to refuse to register the trade mark; or

(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

1. The Opponent has established a ground of opposition under s 44.

2. Accordingly, I decide to refuse trade mark 1545437 one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that the disposition of the application should be in accordance with the Court’s order or direction.

Cristy Condon
Hearing Officer and Trade Mark Attorney
Trade Marks Hearings
13 July 2016