Chloe SA v Lin Australia Pty Ltd
[2006] ATMO 10
•20 January 2006
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 appearanceDecision: S52 opposition - grounds under sections 44 and 60 established, s43 ground not established – registration refused. Costs awarded against the applicant. Background
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
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").
The opponent duly served and filed evidence in support. The applicant did not serve or file any evidence.
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:
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
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 Opposition
Ground 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.
In relation to clothing and headwear, the respective goods are identical. I am satisfied that these goods are also similar goods to footwear, since the nature and purpose of the goods, the trade origins and the trade channels through which they move are likely to be the same in both cases: Dinning v New Balance Athletic Shoe Inc (1992) AIPC ¶90-931.
The opponent conceded that the marks were not substantially identical. Thus the only remaining issue to determine is whether the marks are deceptively similar.
For deceptive similarity, a different comparison is made than that for substantial identity. Here the question is one of impression based on recollection of the mark (Shell Co of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 (‘Shell’) at 415). While it is not necessary to prove actual deception, neither is a mere possibility of confusion sufficient: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (`Southern Cross'); there must be real, tangible danger of confusion occurring (Woolworths). It is sufficient if, by reason of use of the mark, a number of people would wonder if two products came from the same source (Southern Cross).
Mr Stevens highlighted the following matters he submitted should be considered when comparing the trade marks:
· While the applicant’s trade mark consists of two words, both of those words are first names for females, which is unusual.
· The name Sonja has a soft sound and is less emphatic than Chloe.
· The word Chloe has an unusual spelling and pronunciation.
· Given the existing reputation enjoyed by the opponent’s trade mark chloe, it is that word within the applicant’s trade mark that will be noted and retained in the recollection of consumers and persons in the trade.
One is cautious in taking too much account of reputation of an opponent’s mark in a section 44 comparison, especially where such a mark does not amount to a notorious mark as suggested by French J in Woolworths. However, I am aware of what the delegate in Automobiles Peugot v Viva Time Corp (2001) 54 IPR 568, at 579, describes as ‘contextual’ confusion. The delegate concluded that there are circumstances where it is quite likely that a prospective purchaser, noting the similarities of the trade marks will, notwithstanding any differences, believe that the goods are placed onto the market under the aegis of one trader or that the products are related in some way.
The single word Chloe is the only word comprising the opponent’s trade mark, and that word is a significant feature within the applicant’s mark such that it can be said that both marks share an essential feature. Taking into account relevant principles of comparison of trade marks, in particular imperfect recollection and the effect of spoken descriptions when applied to the same or similar goods, I am satisfied that there is a reasonable likelihood of deception or confusion between the competing trade marks. I find that this ground of opposition has been established.
Ground 2 – section 60: Reputation in a similar trade mark
Section 60 provides:
60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.To satisfy section 60, an opponent has the burden of establishing the following elements:
· a pre-existing trade mark;
· substantial identity or deceptive similarity between the applied-for trade mark and the pre-existing trade mark;
· the acquisition of a reputation in Australia by the pre-existing trade mark; and
· a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.
It has already been established that the opponent’s pre-existing trade mark chloe is deceptively similar to that of the applicant.
The next question in respect of the section 60 ground, is whether the opponent has shown a sufficient reputation in its trade mark to satisfy the requirements of subsection 60(b), such that the reputation is likely to deceive and cause confusion. The reputation must be shown to have existed at the priority date.
It is not necessary to prove reputation by direct evidence of consumer appreciation; it is commonplace to infer reputation from a high volume of sales, together with substantial advertising and other promotions: McCormick & Co Inc v McCormick, (2001) 51 IPR 102 at 129.
There is substantial evidence of sales, advertising and other promotions in Australia provided by the opponent. It is clear to me that the opponent’s trade mark has significant public visibility, and substantial international and domestic reputation in the fashion industry.
On the basis of the evidence before me, I am satisfied that the requisite reputation existed at the relevant date and that because of the reputation the use of the opposed trade mark would deceive or confuse. Accordingly this ground of opposition has been established.
Ground 3 – section 43: Connotation in the applied for mark
Section 43 provides:
43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
The connotation envisaged in s.43, if it exists, must be seen as inherent to the mark itself. That is, a meaning that the mark possesses quite apart from any reputation that it may hold in relation to a particular trader, as Spender J pointed out in Winton Shire Council v Lomas (2002) 56 IPR 72.
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 McDonagh
Hearing Officer
Trade Marks Hearings
20 January 2006
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