Chloe SA v Lin Australia Pty Ltd

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TRADE MARKS ACT 1995



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

Re:Opposition by Chloe SA to registration of trade mark application 983713(25) - SONJA CHLOE - filed in the name of Lin Australia Pty Ltd.

Delegate: Jock McDonagh
Representation: Opponent: Trevor Stevens of Davies Collison Cave Attorneys
Applicant: No representation or appearance
Decision: S52 opposition - grounds under sections 44 and 60 established, s43 ground not established – registration refused.  Costs awarded against the applicant.

Background

  1. The applicant, Lin Australia Pty Ltd, filed trade mark application for the following trade mark:

Application Number:

983713
Priority date:

 29 December 2003
Goods:

Class 25: clothing, footwear, headwear.
Trade Mark:

SONJA CHLOE
Advertised:  20 May 2004

  1. The opponent, Chloe SA, filed notice of opposition to the trade mark's registration on 19 August 2004.  That notice listed effectively all of the available grounds of opposition provided in the Trade Marks Act 1995 ("the Act").

  2. The opponent duly served and filed evidence in support. The applicant did not serve or file any evidence.

  3. The matter came to a hearing before me, as a delegate of the Registrar of Trade Marks, in Sydney on 17 October 2005. Mr Trevor Stevens of Davies Collison Cave, Attorneys, represented the opponent. There was no appearance by or for the applicant, which was unrepresented throughout the opposition period.

    The Evidence

  4. Details of the evidence filed and served is shown in the following table:

Declarant Date declared Exhibits Known As
Evidence in Support
Catherine Louise Cannon 19.04.05 CLC1 to CLC11 Cannon
Wendy Marshall 13.05.05 Marshall

  1. The Cannon declaration is made by the Trade Mark Manager of the opponent, a position she has held since November 1995.  She narrates the history and operation of the Chloe fashion house since its foundation in 1952.  The opponent produces ‘designer label’, high quality ready to wear garments designed by such apparently well-known identities as Karl Lagerfeld, Stella McCartney (daughter of  musician Sir Paul McCartney) and Phoebe Filo.

  2. The Marshall declaration is made by the managing director and owner of Elle Pty Ltd, which stocks and sells well-known ‘designer label’ clothing including that of the opponent. Ms Marshall has worked in the clothing industry for some 36 years, including experience as a fashion model in Australia and internationally.  She states that she was inducted into the Western Australian Fashion Hall of Fame.

    Onus of Proof

  3. It is necessary for the opponent to establish at least one of the grounds set out in its notice of opposition in order to succeed, and that the decision to reject must be made upon positive satisfaction that the ground has been made out.  The Registrar is required to approach the question of registration with the presumption of registrability in mind: Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, Lomas v Winton Shire Council [2003] AIPC ¶91-839, Kowa Company Ltd v N V Organon [2005] FCA 1282 paragraph [139].

    Grounds of Opposition

    Ground 1 – section 44: conflicting trade mark

  4. The relevant…

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Details
Case
[2006] ATMO 10
Decision Date

CaseChat Overview and Summary

This matter concerned an opposition to a trade mark application, brought by Chloe SA (the opponent) against Lin Australia Pty Ltd (the applicant). The hearing was conducted by Jock McDonagh, a delegate of the Registrar of Trade Marks. The opponent, a well-known fashion house, opposed the registration of the applicant's trade mark, arguing it was substantially identical or deceptively similar to its own registered mark. The applicant did not appear at the hearing.

The court was required to determine whether the applicant's trade mark was substantially identical with, or deceptively similar to, the opponent's registered trade mark for similar or closely related goods, and to consider the respective priority dates of the marks. The opponent also raised a ground of opposition under section 60 of the Act, relating to the reputation of its mark.

The delegate considered the evidence of the opponent's long-standing reputation in the fashion industry and the nature of its high-quality garments. The delegate found that the opponent had not established a ground of opposition under section 60, as no connotation of sponsorship or endorsement could be attributed to the applicant's mark. However, the delegate found that the opponent had established grounds of opposition under section 44, based on the substantial identity or deceptive similarity between the marks and the similarity of the goods.

Consequently, the delegate refused to register the applicant's trade mark application. The opponent was awarded costs against the applicant.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

The matter came to a hearing before me, as a delegate of the Registrar of Trade Marks, in Sydney on 17 October 2005. Mr Trevor Stevens of Davies Collison Cave, Attorneys, represented the opponent. There was no appearance by or for the applicant, which was unrepresented throughout the opposition period.The Evidence Details of the evidence filed and served is shown in the following table: The Cannon declaration is made by the Trade Mark Manager of the opponent, a position she has held since November 1995. She narrates the history and operation of the Chloe fashion house since its foundation in 1952. The opponent produces ‘designer label’, high quality ready to wear garments designed by such apparently well-known identities as Karl Lagerfeld, Stella McCartney (daughter of musician Sir Paul McCartney) and Phoebe Filo. The Marshall declaration is made by the managing director and owner of Elle Pty Ltd, which stocks and sells well-known ‘designer label’ clothing including that of the opponent. Ms Marshall has worked in the clothing industry for some 36 years, including experience as a fashion model in Australia and internationally. She states that she was inducted into the Western Australian Fashion Hall of Fame.Onus of Proof It is necessary for the opponent to establish at least one of the grounds set out in its notice of opposition in order to succeed, and that the decision to reject must be made upon positive satisfaction that the ground has been made out. The Registrar is required to approach the question of registration with the presumption of registrability in mind: Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, Lomas v Winton Shire Council [2003] AIPC ¶91-839, Kowa Company Ltd v N V Organon [2005] FCA 1282 paragraph [139].Grounds of OppositionGround 1 – section 44: conflicting trade mark The relevant parts of section 44 read:44.(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) the applicant's trade mark 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. Therefore, the issues that I need to consider are:(a) the priority dates of the competing marks,(b) whether the goods are similar goods, and(c) whether the trade marks are substantially identical or deceptively similar. In this case, the opponent relies on trade mark registration 406019, for the fancy word mark chloe. The registration has a priority date of 29 March 1984, and covers the following goods in class 25: articles of clothing excluding footwear.

Decision

Reasons for decision

The opponent submitted that because of the opponent’s mark being contained within the applicant’s trade mark, there would be a connotation of sponsorship, endorsement, affiliation or connection with the opponent. In my opinion, this is a question of reputation and, therefore, a matter properly dealt with under s.60. I do not believe that any sort of “connotation” or “secondary meaning” can be attributed to the mark. I dismiss this ground of opposition.Decision and Costs The opponent has established grounds of opposition on which it relied so that the opposition has been successful. Pursuant to section 55 of the Act, I refuse to register application 983713. The opponent sought its costs in this matter. As the opponent has been successful in its opposition, I award costs against the applicant and direct that the applicant pay the costs of the opponent in accordance with the official scale.Jock McDonaghHearing OfficerTrade Marks Hearings20 January 2006

Ratio Decidendi

Legal Principle Established

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