Choo La La Pty Ltd

[2022] ATMO 179

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2184103 (class 25) – Choo La La - in the name of Choo La La Pty Ltd

Delegate:

Tracey Berger

Representation:

Applicant: Marcus Fleming of Counsel, instructed by Greg Tye and Isabelle Tye of Richards & Evans Commercial Lawyers

Decision:

2022 ATMO 179

Trade Marks Act 1995 (Cth) – s 38 proceeding – proposal to revoke acceptance – Regulation 4.15A objections – whether application should not have been accepted – acceptance not revoked

Background

1. This proceeding is in respect of the proposed revocation of acceptance under s 38 of the Trade Marks Act 1995 (Cth) (‘Act’)[1] of trade mark application number 2184103 (‘Application’) for:

Trade Mark:            Choo La La (‘Trade Mark’)

Applicant:Choo La La Pty Ltd (‘Applicant’)

Filing Date:  16 June 2021

Specification:  Jackets (clothing); Dance clothing; bath robes; T-shirts; shorts

(‘Goods’)

[1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

2.     The Application was submitted through the assisted filing service[2] and after a clear assessment issued, the Applicant elected to file the Application under Part 4 of the Act. The Trade Mark was examined in accordance with s 31. No objections to registration of the Trade Mark were raised and on 30 June 2021, the Application was accepted for possible registration. The Application was advertised as accepted for possible registration on 17 November 2021.

[2] Regulations pt 3A.

3.     On 17 January 2022, J. Choo Limited (‘Opponent’) filed a Notice of Intention to Oppose the Application.  On 21 January 2022, the Opponent’s attorneys requested that the acceptance of the Application be revoked on the basis that the Opponent’s protected international trade marks containing or consisting of CHOO covering goods and services in classes 9, 14, 16, 18, 25 and 35 were not cited as objections to the Application.

4.     On 27 January 2022, a delegate of the Registrar issued a Notification of Intention to Revoke Acceptance (‘Notification’) which relevantly stated:

Trade mark application 2184103 was advertised as accepted in the Official Journal of Trade Marks on 17 November 2021. However, it has now come to my attention that the trade mark should not have been accepted.

This is because there are earlier trade marks namely TMs 1383508, 1487481, 1710940, 1759615 and 1982345 which share the word CHOO as a distinctive, prominent and memorable element and it is likely that consumers would confuse these marks in the marketplace or assume they share a common trade source. These marks should have been raised as grounds for rejection at the examination stage.

In addition your claims in Class 25 for various clothing goods are the same as, similar or closely related to the earlier marks claims in Classes 25 and 35 for various clothing, footwear, headwear, retail and related goods and services.

Therefore, having taken into account all the circumstances that existed when the application was accepted, it is considered reasonable to revoke the acceptance in accordance with section 38 of the Trade Marks Act 1995.

5.     In response to the Notification, the Applicant requested to be heard.  Written submissions, with annexures of the Opponent’s request for revocation of the Application (‘Revocation Request’), the examination records of the Application and the Revocation Panel’s deliberations,[3] were provided prior to the hearing in accordance with directions.  I heard this matter on 6 October 2022 as a delegate of the Registrar of Trade Marks by way of video conference.  The Applicant was represented by Marcus Fleming of Counsel, instructed by Greg Tye and Isabelle Tye of Richards & Evans Commercial Lawyers.

[3] These documents were provided to the Applicant following an application under s 217A and appended to the submissions.

Legislation

6. Section 38 provides:

38  Revocation of acceptance

(1)  Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:

(a)  the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and

(b)  it is reasonable to revoke the acceptance, taking account of all the circumstances.

(2)  If the Registrar revokes the acceptance:

(a)  the application is taken to have never been accepted; and

(b)  the Registrar must examine, and report on, the application as necessary under section 31; and

(c)  sections 33 and 34 again apply in relation to the application.

7.     This section gives the Registrar a broad discretionary power to revoke the acceptance of an application to register a trade mark.  In Ladbrokes Digital Australia Pty Ltd,[4] the Registrar’s delegate outlined two factors which must be satisfied before revoking acceptance:

Firstly, the Registrar must be satisfied that the Application should not have been accepted having regard to all of the circumstances, known or unknown at the time, that existed when the Application was accepted. Secondly, that it is reasonable to revoke the acceptance, taking into account all of the circumstances that exist. If acceptance is revoked, the Application is taken never to have been accepted and is returned to examination so that the Applicant may address the circumstances that should have prevented acceptance.

[4] [2016] ATMO 116, [7] (Hearing Officer Wilson).

Proposal for Revocation

8.     The basis for the proposed revocation of acceptance of the Application is that there are grounds for rejection under Reg. 4.15A on the basis of the following marks in the name of the Opponent (‘Proposed Cited Marks’[5]):

[5] Registration number 1487481 CHOO 24:7 referred to in the Notification has not been renewed and has been removed from the Register.  Hence this mark no longer constitutes a ground for rejection under s 44.

TM No.	Trade Mark	Priority Date	Specification[6]
1383508 (IR 1048272)	11 August 2010	14, 18, 25
1710940 (IR 1257825)	18 December 2014	35
1759615 (IR 1257825)	2 February 2016	18, 25
1982345 (IR 1443377)	9 April 2018	14, 18, 25

[6] The specifications of the Proposed Citations are set out in Annexure A to this Decision.

9.     The examination records show that the Examiner extracted details of a number of marks including all of the above marks except registration 1710940, at the time the assisted filing request was made and again once the Application was filed.  The Examiner entered an annotation on the examination records that each of the marks extracted was sufficiently different from the Trade Mark.  Although details of registration 1710940 were not extracted, I note that the search strategy would have disclosed this mark and that this mark is identical to that of registrations 1383508 and 1759615, which mark the Examiner concluded is not deceptively similar to the Trade Mark. 

10.   The Applicant contends that the proposed decision to revoke acceptance of the Application and raise grounds for rejection under Reg. 4.15A amounts to a mere difference of opinion, that there is no proper basis on which to revoke acceptance and taking into account all of the circumstances, acceptance should not be revoked but rather the matter be resolved by way of the opposition filed by the Opponent.

Section 44/ Reg 4.15A

11.   For there to be a ground for rejection under Reg. 4.15A, the Trade Mark must be substantially identical with, or deceptively similar to, at least one of the Proposed Cited Marks which has an earlier priority date than the Application, is in the name of someone other than the Applicant and claims similar or closely related goods and services to the Goods.  Each of the Proposed Cited Marks satisfies the procedural requirements of Reg. 4.15A in that these marks have an earlier priority date than the Trade Mark and are in the name of someone other than the Applicant.

12.   The Applicant accepts that the Proposed Cited Marks all cover similar goods or closely related services to the Goods.

13.   Accordingly, the relevant question is whether the Trade Mark is substantially identical or deceptively similar to any of the Proposed Cited Marks.

Comparison of Trade Marks

14.   The assessment of substantial identity was identified by Windeyer J in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (‘Shell’) as follows:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[7]

[7] [1963] HCA 66, [12] (‘Shell’).

15.   Each of the Proposed Cited Marks consists of the word CHOO with some slight stylisation whereas the Trade Mark comprises three elements CHOO LA LA.  On a side by side comparison of the marks, the additional element “LA LA” in the Trade Mark creates an obvious difference such that there is not a total impression of resemblance.

16.   The test for deceptive similarity is broader and as observed by Windeyer J in Shell:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[8]

[8] Ibid [13].

17.   The only textual element of the Proposed Cited Marks is ‘CHOO’ which is wholly contained in the Trade Mark.  Whilst deceptive similarity can be found where one mark uses an essential feature of the other mark,[9] this factor is not determinative.  The respective marks as a whole must be considered. 

[9] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 174-5 (Viscount Maugham); De Cordova v Vick Chemical Co (1951) 68 RPC 103, 105-6 (Lord Radcliffe).

18.   Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2)[10] (‘Swancom’) involved a comparison on the one hand of the marks CORNER, CORNER HOTEL and THE CORNER and on the other hand, JAZZ CORNER HOTEL and THE JAZZ CORNER HOTEL.  The Court found that the addition of the word ‘JAZZ’ changed the mark such that JAZZ CORNER HOTEL and THE JAZZ CORNER HOTEL were not deceptively similar to CORNER, CORNER HOTEL and THE CORNER. This finding was not disturbed on appeal.[11]  In this case, Justice O’Bryan commented:

While the similarity between the marks must give rise to some prospect of confusion, the question is whether there is a real or tangible risk of such confusion as opposed to a mere possibility. That question is not answered simply by observing the degree of similarity (in the sense of the number of common words in the marks), but by considering the effect of the similarity. Attention must be given to the impression produced by the entirety of the marks, recognising that one word or feature of a mark can be more striking and memorable than another.[12]

[10] [2021] FCA 328 (O’Bryan J).

[11] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [103] (Yates, Abraham and Rofe JJ))

[12] Swancom, n 10, [245].

19.   The Trade Mark appears to be a play on the phrase ‘OOH LA LA’ whereas CHOO solus suggests a surname or the sound of a train (as in ‘choo choo’).  The additional element “LA LA” in the Trade Mark creates visual, phonetic and connotative differences from the Proposed Cited Marks.

20.   Each of the Revocation Panel members decided that it was reasonable to revoke acceptance of the Application for different reasons.  The reasons given by the panel members are summarised below:

i.The presence of the earlier ‘CHOO’ family of marks reinforces the consumers’ assumption (or at least degree of confusion) that the traders may be related;

ii.CHOO is a very unusual and memorable element.  It is clear the earlier owner doesn’t just use CHOO (evidenced by CHOO 24/7) so it is not beyond the realms of probability that consumers would assume that the Trade Mark and Proposed Cited Marks are owned by the same owner;

iii.Consumers who are unsure of the earlier trader are likely to infer that goods under the Trade Mark arise from the same or unrelated source because CHOO is an essential element of both the Trade Mark and Proposed Cited Marks; and

iv.Reputation as well as distinct memorable quality of CHOO renders confusion likely.

21.   As noted at footnote 5, registration 1487481 CHOO 24:7 was not renewed and that mark has been removed from the Register.  Renewal of this registration was due by 27 July 2021 and hence the registration had expired at the time of the Notification proposing to revoke acceptance and the deliberations of the Revocation Panel.  Accordingly, this registration did not constitute a valid citation at the time.

22.   In any event, I do not believe that the Proposed Cited Marks constitutes a ‘family’ of marks.  Three of the four Proposed Cited Marks are the same mark and registration 1982345 is still the mark CHOO but with different stylisation.  An objection based on a family of trade marks may arise under s 44/Reg 4.15A but only where there is a known and familiar use of a number of trade marks such that the common element in the ‘family’ of marks has such notoriety that consumers are likely to be so familiar with the use of that element, that it is a relevant ‘surrounding circumstance’.[13] 

[13] C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539, [52] (Ryan, Branson and Lehane JJ).

23.   It is only the reputation in an earlier mark (as opposed to an earlier trader) which is a relevant surrounding circumstance and only where the prior mark or common feature is notorious or ubiquitous.  In my opinion, the Proposed Cited Marks do not have the necessary degree of notoriety or ubiquity.

24.   In my view, the Examiner’s decision to accept the Trade Mark was reasonably supported by the accepted test for deceptive similarity under Reg 4.15A.  The Examiner considered the Proposed Cited Marks and whilst there is no specific record of the Examiner’s conclusion on registration number 1710940, that mark is identical to two of the other Proposed Cited Marks which the Examiner concluded were not deceptively similar to the Trade Mark.  The question of deceptive similarity is one on which reasonable minds might differ[14] and I do not consider the Examiner’s conclusion that the Trade Mark is not deceptively similar to the Proposed Cited Marks to be manifestly wrong.  The views of the Revocation Panel are not persuasive and amount to a mere difference of opinion.  Given the opposition is now in the evidence stage, it is more appropriate that the questions of deceptive similarity and, more broadly, whether the Application should proceed to registration, be determined through that proceeding.

[14] Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH [2001] FCA 1874, [32] (Hill J) and [148] (Lindgren J).

Decision

25.   For the above reasons and taking into account all the circumstances that existed when the Application was accepted, I am not satisfied that the Application should not have been accepted.  Accordingly, I decline to revoke acceptance of the Application.

Tracey Berger

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

12 October 2022

Annexure A

TM No.	Trade Mark	Specification
1383508 (IR 1048272)	Class 14:  Precious metals and their alloys and goods in precious metals or coated therewith; jewellery, costume jewellery, arm cuffs (jewellery), wrist bands (jewellery); key rings (trinkets or fobs); precious stones; horological and chronometric instruments; parts and fittings for the aforesaid goods Class 18:  Leather and imitations of leather, and goods made of these materials; trunks, travelling bags, handbags, purses, wallets, hat boxes, umbrellas, parasols, walking sticks; parts and fittings for the aforesaid goods Class 25:  Clothing, footwear and headgear
1710940 (IR 1257825)	Class 35:  Advertising and marketing services; sales promotion for others; procurement services for others; retail services in relation to luxury goods (not including coffee, tea, beverages, foods, coffee machines or goods for use with food or beverages), lifestyle (not including coffee, tea, beverages, foods, coffee machines or goods for use with food or beverages) and personal products including, soaps, perfumery, fragrances, perfume in solid form, essential oils, body oils, cosmetics, hair lotions, body lotions, foot lotions, nail care preparations, nail varnish, nail polish, nail varnish and polish removing preparations, talcum powder, sunscreen preparations, sun-tanning preparations, pumice stone, emery boards, dentifrices, shoe cream, shoe polish, shoe wax, cleaning and polishing preparations, (including cleaning and polishing preparations for leather, footwear, handbags, sunglasses), candles and wicks for lighting, Christmas tree candles, nightlights (candles), scented candles, grease for shoes, oil for the preservation of leather, small items of metal hardware, buckles, metal name plaques, key rings, key fobs, eyewear, sunglasses, spectacles, sunglasses and spectacles cases and frames, optical frames, pouches adapted to carry sunglasses and spectacles, encoded bank cards, bags made of leather or imitations of leather adapted for electrical apparatus and instruments, electrical apparatus and instruments, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, pre-recorded CDs, CD-ROMs, tapes and discs, protective footwear, goods made of precious metals or coated therewith, jewellery, costume jewellery, arm cuffs (jewellery), wrist bands (jewellery), jewellery made of leather, key rings (trinkets or fobs), key cases, key bags, precious stones, horological and chronometric instruments, printed matter, stationery, photographs, posters, prints, books, magazines, brochures, calendars, catalogues, goods made of leather and imitations of leather, handbags, travelling bags, trunks, purses, wallets, clutch bags, travel wallets, luggage tags, laptop cases, laptop bags, document folders, mobile phone cases all made of leather or imitations of leather, cosmetics bags, vanity bags, pouches, bags and notepad holders, key fobs of leather or imitations of leather incorporating key rings, key cases, card holders made of leather or imitations of leather, business card holders, hat boxes made of leather or imitations of leather, umbrellas, parasols, walking sticks, textile piece goods, towels, bath linen, face towels of textile, napkins or tissues of textile for removing make-up, handkerchiefs of textile, bed linen, bed spreads, mattress covers, pillow cases, quilts, sheets, table linen, table napkins, table runners, table mats, table cloths, travelling rugs, furniture covers, shower curtains, fabric for boots and shoes, lingerie fabric, homeware, cup holders, cup holders made of leather, clothing, footwear, headgear, scarves; advice and assistance in the selection of goods; including, but not limited to, all the aforesaid services provided via the Internet, the world wide web and/or via communications networks
1759615 (IR 1257825)	Class 18:  Goods made of leather and imitations of leather; handbags, travelling bags, trunks, purses, wallets, clutch bags, travel wallets, luggage tags, luggage label holders, cosmetic bags, vanity bags, pouches, carrying cases, attache cases, cases of leather or leather board, vanity cases not fitted and business card cases, bags, leather or imitations of leather cases for keys; leather key holders, key cases, key bags, card cases; card holders, credit card holders, business card cases; document cases; boxes of leather or leather board; hat boxes made of leather or imitations of leather; parasols, umbrellas, walking sticks; clothing for pets, collars and leads for animals; parts and fittings for the aforesaid goods Class 25:  Clothing, footwear and headgear; scarves; gloves, hats, swimming hats; raincoats, hosiery, sashes for wear, wedding dresses
1982345 (IR 1443377)	Class 14:  Precious metals and their alloys; jewellery; jewellery in the nature of jewellery ornaments; jewellery for use on shoes and handbags; jewellery in the nature of clip-on jewellery for use as fashion accessories; costume jewellery; costume jewellery in the nature of jewellery ornaments; costume jewellery for use on shoes and handbags; costume jewellery in the nature of clip-on jewellery for use as fashion accessories; earrings, bracelets, chains, necklaces, clip on jewellery, arm cuffs (jewellery), wrist bands (jewellery); jewellery made of leather; key rings (trinkets or fobs); key fobs; trinkets of metal; key fobs of leather or imitations of leather incorporating key rings; horological and chronometric instruments; watches, bracelets and straps for watches, cases adapted to contain watches; jewellery boxes, presentation boxes for jewellery, boxes of precious metals; tie clips, cufflinks; shoe ornaments and handbag ornaments of precious metal; ornaments (jewellery); key rings; key chains; key holders; parts and fittings for the aforesaid goods. Class 18:  Handbags, travelling bags, weekend bags, trunks, trunks for storing shoes, purses, wallets, clutch bags, travel wallets, luggage tags, luggage label holders, cosmetic bags, make-up bags, vanity bags, vanity cases not fitted, pouches, cases, bags, shoe bags, cloth bags, backpacks, garment bags, beach bags, briefcases, suitcases, attaché cases; cases of leather or leather board; key cases, key bags; card cases; card holders, credit card holders, debit card holders, bank card holders, business card cases; document cases; hat boxes made of leather or imitations of leather; parasols, umbrellas, walking sticks; parts and fittings for the aforesaid goods; laces (leather); leashes; collars and leads for animals; garments and clothing for pets. Class 25:  Clothing, footwear and headgear; scarves; gloves, hats, belts, swimming hats; raincoats, hosiery, sashes for wear, wedding dresses, fur stoles, stoles of imitation fur, fur muffs, muffs of imitation fur, ear muffs, fur hats, hats of imitation fur, fur coats, coats of imitation fur; kaftans; swimwear; underclothing; outerclothing.