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,…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2022] ATMO 179
Decision Date: 12 October 2022

CaseChat Overview and Summary

This matter concerned a trade mark application by Choo La La Pty Ltd for the mark "CHOO LA LA" in class 25, which covers clothing, footwear, and headwear. The application was opposed by Christian Louboutin SAS, a well-known luxury footwear designer. The core of the dispute revolved around whether the applicant's mark was deceptively similar to the opponent's registered trade mark "LOUBOUTIN" and whether the applicant's mark was an honest and concurrent use.

The court was required to determine two primary issues: first, whether the applicant's trade mark "CHOO LA LA" was deceptively similar to the opponent's registered trade mark "LOUBOUTIN" for the purposes of section 60 of the *Trade Marks Act 1995* (Cth); and second, whether the applicant had established grounds for honest and concurrent use under section 59 of the Act. The opponent argued that the marks were similar and that the applicant's use would likely deceive or cause confusion among consumers, thereby damaging the reputation of their established brand.

In her reasoning, Justice Tracey Berger considered the principles of deceptive similarity, which involve an assessment of whether an ordinary and reasonable member of the purchasing public, when presented with the applicant's mark, would be deceived into believing that the goods offered under that mark were the goods of the opponent, or were in some way associated with the opponent. The court found that despite some phonetic similarities, the marks "CHOO LA LA" and "LOUBOUTIN" were not deceptively similar in appearance, sound, or meaning. Furthermore, the court concluded that the applicant had not established honest and concurrent use, as the evidence did not demonstrate that the applicant had been using the mark honestly and concurrently with the opponent's mark prior to the application date.

Consequently, the court dismissed the opposition to the trade mark application.

Orders