DCK Australia Pty Ltd v Vincona Pty Ltd (Corrected Version)

[2008] ATMO 41

TRADE MARKS ACT 1995

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

Re:Opposition by DCK Australia Pty Ltd to registration of trade mark application 989599 (14;16); 998211 (14;16;18;25;26); 1017912 (35); 1059239 (19;35) - DIVA DOLLS; SASS DIVA - filed in the name of Vincona Pty Ltd.

Delegate:

Claudia Murray

Representation:

Opponent: Carmen Champion of Counsel instructed by Henry Davis York

Applicant: Angela Bowne of Counsel instructed by Peter Maxwell and Associates

Decision:

2008 ATMO 41

S.52 opposition – ss.44 and 60 not established because the opponent’s trade marks not deceptively similar to the trade marks under application. Registration to proceed.

Costs: Awarded against the opponent.

Background

1.     Vincona Pty Ltd (“Vincona” or “the applicant”) applied to register four trade marks — application numbers 989599, 998211, 1017912 and 1059239 (the Vincona trade marks). The relevant details of each of these applications are as follows:

The first Vincona trade mark

Application No:	989599
Trade Mark:	(words: DIVA DOLLS,
Applicant:	Vincona Pty Ltd
Priority Date:	18 February 2004
Class 14:  (goods)	Jewellery; necklaces; earrings; bracelets; rings, chokers, watches, hair ornaments, precious stones, precious metals and their alloys and goods in precious metals or coated therewith not included in other classes
Class 16: (Goods)	Paper, cardboard and goods made from these materials, not included in other classes; printed matter; stationery; diary; notebook, photo album

The second Vincona trade mark

Application No:	998211
Trade Mark:	DIVA DOLLS
Applicant:	Vincona Pty Ltd
Priority Date:	16 April 2004
Class 14:  (goods)	Jewellery including imitation jewellery of all materials; necklaces; earrings; bracelets; rings, chokers, watches, hair ornaments, brooches, charms, trinkets, precious stones, precious metals and their alloys and goods in precious metals or coated therewith not included in other classes
Class 16: (goods)	Paper, cardboard and goods made from these materials; printed matter; diaries; notebooks; photo albums; pads; folders; envelopes, document files; cards; stationery
Class 18: (goods)	Leather and imitation leather bags, bags made of plastic, bags made of material including but not limited to fashion bags and luxury bags, beach bags, carry bags, travel bags, duffle bags, handbags, shoulder bags, tote bags, straw bags, sports bags, evening bags and school bags, wallets, purses, coin purses; leather and imitation leather belts
Class 25: (goods)	Clothing, footwear, headgear, belts, shawls and scarves
Class 26: (goods)	Artificial flower brooches, brooches, iron-on and sew-on motifs, lace and embroidery, ribbons and braids, buttons, hooks and eyes, pins and needles, all ornaments for clothing

The third Vincona trade mark

Application No:	1017912
Trade Mark:	(words: SASS DIVA)
Applicant:	Vincona Pty Ltd
Priority Date:	23 August 2004
Class 35: (services)	Retailing and wholesaling of goods, including clothing, footwear, bags, belts, headgear, jewellery, fashion accessories, garment accessories, paper and cardboard products

The fourth Vincona trade mark

Application No:	1059239
Trade Mark:	DIVA DOLLS
Applicant:	Vincona Pty Ltd
Priority Date:	08 June 2005
Class 19:  (goods)	Tiles, tiles for building, tile flooring, building materials, wall tile, stone, slate, sandstone, marble, artificial stone, construction materials, floor tiles, and mosaics for building
Class 35: (services)	Wholesaling of goods, retailing of goods, imports and exports of goods

2.     Each of these applications were in turn accepted for possible registration, and advertised as accepted in the Australian Official Journal of Trade Marks. DCK Australia Pty Ltd (“DCK” or “the opponent”) filed Notices of Opposition to each trade mark application on 22 September 2004, 24 February 2005, 12 July 2005 and 5 January 2006 respectively. The notice of opposition in relation to the first opposed trade mark cited most grounds of opposition available under the Trade Marks Act 1995 (the Trade Marks Act). The notices filed in respect to the other three opposed trade marks only cited grounds of opposition under sections 43, 44 and 60 of the Trade Marks Act.

3.     The evidence stages were duly completed, and an exchange of further evidence followed. Both parties filed written submissions prior to the hearing. The matter came to be heard before me as a delegate of the Registrar of Trade Marks in Sydney on 19 February 2008. The applicant was represented by Ms Angela Bowne of Counsel, instructed by Mr James Maxwell (not in attendance) of Peter Maxwell and Associates. The opponent was represented by Ms Carmen Champion of Counsel, instructed by Ms Donna Short of Henry Davis York. Also present were Ms Daisy Lam, Managing Director of the applicant, and Mr Nico van der Merwe, the Chief Financial Officer of the opponent.

Evidence

4.     Each side filed the same evidence in relation to all four opposition proceedings. The evidence consists of:

Evidence in Support

ØStatutory declaration of David Anthony Clarke with Exhibits DAC-1 to DAC-22 (Clarke declaration) made 21 March 2006.

Evidence in Answer

ØStatutory declaration of Daisy Lam with Annexures A to AF and Exhibits DL-1 to DL-13 [DL-10 deleted?] (the first Lam declaration) made 22 November 2006;

ØStatutory declaration of Kevin O’Farrell (O’Farrell declaration) made 16 June 2006;

ØStatutory declaration of Kim Montgomery (Montgomery declaration) made 17 June 2006;

ØStatutory declaration of Leah Raschella (Raschella declaration) made 19 June 2006;

ØStatutory declaration of Warren Lam (the W Lam declaration) made 22 November 2006; and

ØStatutory declaration of John Barker Spence with Annexures A-G and Exhibit JBS-1 (Spence declaration) made 22 November 2006.

Evidence in Reply

ØStatutory declaration of Nico Johan Van der Merwe with Exhibits NJV-1 to NJV-5 (Wan der Merwe declaration) made 24 July 2007.

Opponent’s Further Evidence

ØStatutory declaration of Trudie Michelle Helth With Exhibits TMH-1 to TMH-5 (Helth declaration) made 30 October 2007;

ØStatutory declaration of Donna Louise Short (Short declaration) made 20 October 2007; and

ØStatutory declaration of Robert Carlyle Jordan (Jordan declaration) made 30 October 2007.

Applicant’s Further Evidence

ØStatutory declaration of Daisy Lam with Exhibits DL-A to DL-K (the second Lam declaration) made 21 December 2007.

5.     Much of the evidence submitted by both parties concerns the use of the parties’ respective trade marks, and does not require immediate exploration. However, at the hearing there was specific argument about the significance of the Helth declaration, and as that argument explored some relatively new ground relating to evidence obtained from the internet, I believe there is value in recording my consideration of that general issue at this point.

6.     The Helth declaration placed into evidence several historical extracts, obtained from the Internet Archive website ( demonstrating the applicant’s use of the ‘DIVA DOLLS’ trade marks. Of particular interest are exhibits TMH–1, showing the state of the Vincona website at 28 December 2001, and TMH–2, showing that website on 10 October 2003, purportedly the first time the ‘DIVA DOLLS’ trade mark appeared on the website (Helth declaration, paragraph 12).

7.     This evidence was criticised by the applicant, both in the second Lam declaration, and in the course of the hearing. The thrust of this criticism was that the opponent had not established that the methodology employed by the Internet Archive was reliable, and as such I should not give that evidence any weight. In support of this the applicant drew my attention to Exhibits DL-A and DL-A1 of the second Lam declaration. Exhibit DL-A is the Wikipedia extract which discusses the Internet Archive. Specifically it refers to United States civil litigation concerning Telewizja Polska SA and Echostar Satelite, and states that:

Prior to the trial proceedings, EchoStar indicated that it intended to offer Wayback Machine snapshots as proof of the past content of Telewizja Polska’s website. Telewizja Polska brought an action in limine to suppress the snapshots on the grounds of hearsay and unauthenticated source, but Magistrate Judge Arlander Keys rejected Telewizja Polska’s assertion of hearsay and denied TVP’s motion in limine to exclude the evidence at trial. However, at the actual trial, district Court Judge Ronald Guzman, the trial judge, overruled Magistrate Keys’ findings, and held that neither the affidavit of the Internet Archive employee nor the underlying pages … were admissible as evidence. Judge Guzman reasoned that the employee’s affidavit contained both hearsay and inconclusive supporting statements, and the purported webpage printouts themselves were not self-authenticating.

Exhibit DL-A1 to the second Lam declaration consists of the Internet Archive’s terms of use, which specifically does not guarantee the accuracy of the content of the archive. With respect to this Exhibit, I take Ms Champion’s point that these are standard terms designed to minimise any potential legal liability. Despite its terms, I do not believe this Exhibit strongly affects the weight to be attached to Exhibit TMH-2.

The Wikipedia extract above cites an academic article to establish that the trial judge found the archive extracts inadmissible.[1] That article simply does not support Wikipedia’s claim. Rather, the author states that ‘in the few cases where challenges have been interposed to Internet Archive versions of Web pages, the evidence has been admitted over hearsay and authentication challenges.’[2] The article then discusses the findings of Magistrate Keys in the in limine proceedings, but no reference is made to a later judgment of Judge Guzman. Similarly, my research indicates that the archived material was admitted to trial following the decision of Magistrate Keys.[3] The trial decision cited by the applicant makes no reference to the admissibility of information obtained through the Internet Archive, rather it relates to the determination of costs between the parties following the decision at trial.[4] [c1] Based on my own further research, I am not satisfied that Judge Guzman did in fact hold that the archived evidence was inadmissible.[5] Regardless, that decision occurred in a different jurisdiction, operating under different rules as regards the admissibility of evidence than applicable to hearings before the Registrar.

[1] Beryl A Howell, ‘Proving Web History: How to use the Internet Archive’, (February 2006) Journal of Internet Law, 3–9. 

[2] Beryl A Howell, ‘Proving Web History: How to use the Internet Archive’, (February 2006) Journal of Internet Law, 3–9, 7.

[3] Telewizja Polska USA, Inc v Echostar Satellite Corporation 2004 U.S. Dist. LEXIS 20845, 16–18 (Magistrate Judge Arlander Keys); Telewizja Polska USA, Inc v Echostar Satellite Corporation 2005 U.S. Dist. LEXIS 4502, 5–9 (Magistrate Judge Arlander Keys).

[4] Telewizja Polska USA, Inc v Echostar Satellite Corporation, No. 04 C 3293, Slip Op. (N.D. III. Oct. 30, 2007).

[5] see Telewizja Polska USA, Inc v Echostar Satellite Corporation 2005 U.S. Dist. LEXIS 21756  (Guzman J); Matthew Fagan, “Can You do a Wayback on That? The Legal Community’s use of Cached Web Pages in and out of Trial” 13 Journal of Science and Technology Law.

8.     On this issue, I find the approach adopted in the Draft Designs Manual of Practice and Procedure to be useful and informative. The appropriate passage from the Designs Manual deals with evidence obtained from the Internet Archive (“the WayBack Machine”) in the following terms:

Examiners need to be aware that while this facility will usually give a valid date, the level of certainty about any particular date is well less than 100% … These uncertainties in the WayBack Machine require some caution. The WayBack Machine has a sufficient presumption of validity to assert a publication date in the first instance. However the presumption of validity is not so great as to negate a plausible assertion that the date indicated is in error. Accordingly, where an owner responds with a credible reasoned explanation of their belief that the date was in error (for example, based on the owner’s general knowledge of the industry), the examiner will proceed on the basis that the date from the WayBack Machine is not reliable. In contrast, where the owner responds along the line of ‘the date is unreliable because it is from the WayBack Machine. Prove the date’, the owner will not have displaced the presumption of validity that does exist in the WayBack machine information.[6]

[6] IP Australia, Draft Designs Manual of Practice and Procedure (2003 Act) Part 2, Ch 6, D06.3.4 practice is equally applicable in the trade marks context. Archived material from the archive.org website can be presumed to illustrate the content of the Vincona website in this case. A bona fide challenge to the accuracy of Exhibit TMH-2 must go further than merely questioning the Internet Archive as an accurate source of information. More substantive reasons for believing that the particular material in evidence is inaccurate are required. This is particularly the case where the relevant web pages were created by the applicant. If Exhibit TMH–2 did not truly reflect the state of the Vincona web page at the relevant date, it should be relatively easy for the applicant to establish that true state by way of its own further evidence. The applicant has not placed into evidence anything which shows that the Internet Archive is, in this instance, inaccurate, and as such I believe that Exhibit TMH–2 should be regarded as accurate and relevant to the issues in this decision.  

10.   As it stands, I take Exhibit TMH–2 as showing the content of the Vincona website at the relevant date. Not only has the opponent included the actual printout of the website (Exhibit TMH–2), it has supported this with Exhibit TMH–1, which shows the URL of the website searched for as being and the archived versions exhibited as being those as at 28 December 2001 and 10 October 2003. Without this supporting evidence, the weight given to this evidence would be questionable. However, with the supporting information, I believe the opponent has submitted evidence which can be presumed to accurately reproduce the state of the Vincona website at the dates the pages were archived.

11.   I am therefore satisfied that the first page of Exhibit TMH–1 reflects the state of the website ( at 28 December 2001, and that Exhibit TMH–2 reflects the state of the website ( on 10 October 2003. I am, however, mindful that this Exhibit should be weighed bearing in mind the need to treat such evidence with ‘some caution’.[7]

Reasons

[7] IP Australia, Draft Designs Manual of Practice and Procedure (2003 Act) Part 2, Ch 6, D06.3.4 see also European Patent Office, Case No. T 1134/06 – 3.2.04, Decision of the Technical Board of Appeal 3.2.04 pf 16 January 2007.

Deceptive Similarity

12. In her submissions, Ms Champion relied solely upon the grounds of opposition under sections 44 and 60 of the Trade Marks Act. These grounds were pursued with respect to all of the opposed trade marks. I will confine my reasons to the application of these two grounds of opposition in relation to each opposed trade mark. For completeness, I find that no other ground of opposition has been made out with respect to any of the opposed trade marks.

13.   The opponent bears the burden of establishing a ground of opposition on the balance of probabilities.[8] The core issue in this opposition in terms of both grounds of opposition under sections 44 and 60 is whether any or all of the opposed trade marks are deceptively similar to a number of trade marks owned by the opponent. At the dates relevant to all the above oppositions, the grounds of opposition under sections 44 and 60 both required the applicant’s trade mark to be either substantially identical, or deceptively similar to:

(1)A trade mark which is either registered, or for which registration is sought, by a person other than the applicant, that trade mark having an earlier priority date than the applicant’s trade mark (in the case of section 44); or

(2)A trade mark, owned by a person other than the applicant, which had acquired a reputation in Australia before the priority date of the applicant’s trade mark (in the case of section 60).

[8] Pfizer Products Inc v Karam [2006] FCA 1663 (1 December 2006)

14. The opponent cited a suite of registered trade marks in support of the section 44 ground of opposition. The details of the cited trade marks are as follows:

Registration No:	856046 (“the first DCK trade mark”)
Trade Mark:	DIVA
Applicant:	DCK Australia Pty Ltd
Priority Date:	01 November 2000
Class 14: (goods)	Watches, clocks, jewellery, chronological devices

Registration No:	971016 (“the second DCK trade mark”)
Trade Mark:	DIVA
Applicant:	DCK Australia Pty Ltd
Priority Date:	19 September 2003
Class 35: (Services)	Retailing, wholesaling and franchising thereof, all being for jewellery including earrings, bracelets, studs, necklaces, rings, body jewels, precious stones, precious metals and their alloys and jewellery in precious metals or coated therewith, belts, anklets and chokers

Registration No:	964885 (“the third DCK trade mark”)
Trade Mark:	sass
Applicant:	DCK Australia Pty Ltd
Priority Date:	06 August 2003
Class 14: (goods)	Jewellery; earrings, bracelets, studs, necklaces, rings, chokers, anklets; body jewels, watches, watch chains, watch cases, watch bracelets, straps and parts therefor

Registration No:	980423 (“the fourth DCK trade mark”)
Trade Mark:	sassi
Applicant:	DCK Australia Pty Ltd
Priority Date:	01 December 2003
Class 14: (goods)	Jewellery; earrings, bracelets, studs, necklaces, rings, chokers, anklets; body jewels, watches, watch chains, watch cases, watch bracelets, straps and parts therefor

Registration No:	1048202 (“the fifth DCK trade mark”)
Trade Mark:
Applicant:	DCK Australia Pty Ltd
Priority Date:	19 September 2003
Class 14 (goods):	Jewellery; precious stones; precious metals and their alloys and goods in precious metals or coated therewith not included in other classes
Class 35: (Services)	Retailing, wholesaling and franchising thereof, all being for jewellery including earrings, bracelets, studs, necklaces, rings, body jewels, precious stones, precious metals and their alloys and jewellery in precious metals or coated therewith, belts, anklets and chokers

15.   Each of these cited trade marks is registered in the name of a person other than the applicant. The cited trade marks relevant to each of the opposed trade marks by virtue of an earlier priority date are as follows:

Opposed trade mark	Relevant cited trade marks
Application No.989599	Registration No.856046 ‘DIVA’ in class 14	Registration No.971016 ‘DIVA’ in class 35
(the first Vincona trade mark)	(the first DCK trade mark)	(the second DCK trade mark)
Application No.998211 ‘DIVA DOLLS’ (the second Vincona trade mark)	Registration No.856046 ‘DIVA’ in class 14 (the first DCK trade mark)	Registration No.971016 ‘DIVA’ in class 35 (the second DCK trade mark)
Application No.1017912	Registration No.964885 ‘sass’ in class 14	Registration No.980423 ‘sassi’ in class 14
(the third Vincona trade mark)	(the third DCK trade mark)	(the fourth DCK trade mark)
Application No.1059239 ‘DIVA DOLLS’	Registration No.856046 ‘DIVA’ in class 14	Registration No.971016 ‘DIVA’ in class 35	Registration No.1048202 in classes 14 & 35
(the fourth Vincona trade mark)	(the first DCK trade mark)	(the second DCK trade mark)	(the fifth DCK trade mark)

16. The opponent has relied upon its reputation in the trade mark ‘DIVA’ to establish the ground of opposition under section 60 of the Trade Marks Act. For completeness, I note that the opponent’s evidence does not establish a reputation capable of supporting the section 60 ground of opposition for either the third (‘sass’) or the fourth (‘sassi’) DCK trade marks.

17.   The opponent did not argue that any of the opposed trade marks were substantially identical to any of the cited trade marks. Based upon the accepted test for determining whether one trade mark is substantially identical to another,[9] I find that none of the opposed trade marks are substantially identical to any of the relevant cited trade marks.

[9] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1961) 109 CLR 407, 414 (Windeyer J).

18. Section 10 of the Trade Marks Act defines deceptively similar in the following terms:

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.

19.   Determining whether one trade mark is deceptively similar to another is ultimately an assessment of ‘whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained.’[10] In determining this question, the trade marks:

[10] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

ought not … 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 effect of the spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. 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. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.[11]

[11] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ); CA Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 61 (Ryan, Branson and Lehane JJ).

This test was restated by French J to accommodate the presumption of registrability introduced by section 33(1) of the Trade Marks Act:

(i)To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

(ii)A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

(iii)In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

(iv)The rights of the parties are to be determined as at the date of the application.

(v)The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. 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.[12]

[12] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, 382–383 (French J).

20.   The first point I will address based upon these authorities is point (iii) of French J’s statement above — the circumstances surrounding use of the trade marks. This consideration is particularly important in the present case, as the assessment of deceptive similarity in some instances relates to the same trade mark being applied to different goods or services (for example, both the first and second DCK registrations are in respect of the trade mark DIVA, but relate to goods in class 14 and services in class 35 respectively). Where the surrounding circumstances differ, it is imperative to consider these differences when assessing deceptive similarity.

Surrounding Circumstances:

Vincona’s Goods and Services:

21.   Collectively, the four Vincona trade marks cover a variety of goods and services across several classes. The opponent made submissions concerning the circumstances surrounding trade in all the relevant goods and services. The sum total of these submissions is the suggestion that the surrounding circumstances relevant to the applicant’s goods are essentially the same. The types of goods for which the applicant seeks registration would be sold in a wide variety of outlets, including over the internet. The consumers of these goods would primarily be women of all ages, educational standards and economic backgrounds. It was further submitted that the perception of the trade mark when used in relation to the type of goods designated by the applicant would be primarily visual.[13]

[13] See also Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505, 510 (Burchett J).

22.   I agree with these submissions. However I would add that the bulk of the applicant’s goods (those in classes 14, 18 and 25) can broadly be described as fashion articles and accessories. These are goods which are ‘likely to be subjected to a careful visual examination by any intending purchaser, or even by any person whose interest in them is at all aroused.’[14] In assessing the likelihood of deception or confusion arising, therefore, it is necessary to take into account this greater degree of caution which would be exercised by the ordinary consumer.

[14] Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505, 510 (Burchett J).

23.   Examining the goods specified in classes 16 and 26, I do not believe that the ordinary consumer would exercise quite such a degree of caution. These items would likely be purchased without as careful a visual examination as would arise in the context of the goods listed previously. The ordinary consumer would be more likely to adopt a ‘near enough is good enough’ approach with respect to class 16 and 26 goods. Further, as the opponent made clear at the hearing that it does not oppose registration of the fourth Vincona trade mark in class 19, it is unnecessary to consider the surrounding circumstances relevant to those goods.

24.   The services in class 35 relevant to the third and fourth Vincona trade marks are broadly specified. The retailing and wholesaling services are very broadly described for both trade marks. The description relevant to the third Vincona trade mark is only specific in including certain types of retailing and wholesaling services. No other types of retailing or wholesaling services are excluded by this specification. The probable user of these types of services is the public at large, in the case of retailing services, and other businesses in the case of wholesaling, importing and exporting services. While other businesses using the wholesaling, importing and exporting services can be presumed to pay a degree of attention to the services they use, the ordinary consumer would not be expected to exercise a similar degree of care with respect to retail services. Both the visual and aural impressions of the trade marks require consideration in assessing the likelihood of deception or confusion arising where the relevant trade marks are used in relation to the services in class 35.

DCK’s Goods and Services:

25.   The goods and services specified by the five DCK trade marks relevant to this opposition fall into two discrete categories. They are either goods in class 14, essentially being items of jewellery (including watches and other chronological devices), or services in class 35, being retailing, and wholesaling related to the class 14 goods (including franchising of retailers and wholesalers in the case of registered trade mark 971016). Based upon a notional comparison, I cannot see any relevant differences between the opponent’s goods and services, and those of the applicant in the corresponding classes. The surrounding circumstances are applicable to these goods and services as per the preceding discussion.

Relevant Comparisons:

26.   An exhaustive comparison of each of the Vincona marks with each of the relevant DCK trade marks (as outlined in paragraph 16) is not necessary here. For the purposes of assessing deceptive similarity, I will only examine the ‘best case’ comparisons for the opponent. If these do not reveal deceptive similarity, it will not be necessary to consider whether goods and services are similar or closely related.

27.   I am mindful that the assessment of deceptive similarity may differ where the same trade mark is used upon different goods. Not only may the surrounding circumstances differ among goods of differing descriptions, but the likelihood of confusion arising may itself depend on the closeness between the applicant’s and opponent’s goods.[15]

[15] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, 379 (French J).

28.   With respect to the applicant’s ‘DIVA DOLLS’ trade marks (the first, second and fourth Vincona trade marks) the case for deceptive similarity is at its highest where the second Vincona trade mark is compared to the first DCK trade mark, both used in relation to the goods designated in class 14. The best case of deceptive similarity for the third Vincona trade mark requires a comparison of that trade mark with the third DCK trade mark.

Comparison (1) — DIVA DOLLS (Class 14) and DIVA (Class 14):

29.   The crucial issue regarding deceptive similarity relates to the visual impact of the applicant and opponent’s trade marks. The sole visual feature of the opponent’s trade mark is the word ‘diva’. I accept the submission of the applicant that this is a known word describing either “a goddess” or a “distinguished female singer, a prima donna”. The applicant has submitted evidence obtained from the trade marks Register, as well as the Sydney Yellow Pages™ in support of the submission that use of the word ‘diva’ is far from unique (first Lam declaration, paragraph 57.4.xi, Annexures AD–AF; Spence declaration, paragraphs 4 – 7, Annexures A–G, Exhibit JBS–1). On this point I find the following passage from Conde Nast particularly useful:

it should be borne in mind that “vogue” is neither a made-up word nor a word wholly without any direct application … to the goods in question. A trader is not entitled to monopolise such a word, denying its use entirely to other traders. Deceptive or confusing use is barred by the applicant’s registration, but the court should be careful not to shut out inappropriately other traders from the fair use of the language in ways that will not in reality deceive or confuse.[16]

[16] Conde Nast, 511-512

30.   I am satisfied that “diva” is a normal English word. Further, while its ordinary meaning is not directly applicable to jewellery, it does have a loose association with those goods, in the sense that a ‘diva’ is often well adorned in the finest clothes and jewellery. Balanced against this is the fact that the monopoly owned by the opponent is for use of the trade mark ‘DIVA’ on ‘watches, clocks, jewellery, chronological devices’. To the extent the applicant suggests ‘a small amount of difference [between the trade marks] should go a long way’ (first Lam declaration, paragraph 57.4.xiv), I believe they are mistaken as to the question relevant to deceptive similarity. The only relevant inquiry is whether the applicant’s trade mark so nearly resembles those of the opponent that it is likely to deceive or cause confusion.

31.   The applicant’s trade mark is ‘DIVA DOLLS’, which clearly includes the entirety of the opponent’s trade mark, and the additional element ‘dolls’. This inquiry effectively turns on the effect that the second word ‘dolls’ has in diffusing the deception or confusion that may be caused by the use of the common element ‘diva’. The mere fact that the applicant’s trade mark incorporates the word ‘diva’ as one element of the trade mark is not ipso facto sufficient to conclude that the trade marks are deceptively similar.[17] When comparing trade marks to assess whether one trade mark is deceptively similar to another, it is the effect of the trade marks as a whole which must be judged.[18]

[17] Conde Nast, 510

[18] Clark v Sharp [1898]15 RPC 141, 146 (Byrne J); Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd (2004) 63 IPR 38, 42 (Wilcox, Kiefel and Bennett JJ).

32.   The opponent argued that the additional element ‘dolls’ was of limited significance, as it was descriptive when used in reference to “young, attractive females”. The word ‘dolls’ is the plural of ‘doll’ which primarily describes “[a]n image of a human being (commonly of a child or lady) used as a plaything; a girl’s toy-baby.”[19] While I accept that ‘doll’ may also describe a “young, attractive female” I do not believe this is the primary meaning the ordinary customer would attribute to it. I also believe this meaning is somewhat antiquated. At best, the word ‘dolls’ when used in the context of the applicant’s class 14 goods is no more descriptive than the word ‘diva’ is, and its impact upon the trade mark as a whole is not to be ignored.

[19] Online Oxford English Dictionary

33.   The opponent also drew my attention to Exhibit TMH–2 of the Helth declaration (see also first Lam declaration, Annexures H and K). I have already discussed above the issues surrounding the applicant’s challenge to the veracity of the information contained in the Helth declaration, and indicated my conclusions upon that point. Having concluded that I should accept the representation of the applicant’s website given in the opponent’s evidence as an accurate portrayal as at 10 October 2003, I now need to consider the significance of the website material itself.

34.   The applicant’s DIVA DOLLS trade mark is represented in Exhibit TMH–2 in the following form:

There is authority supporting the consideration of evidence of actual use of an applicant’s trade mark, in the determination of whether deception or confusion is likely to arise from the ‘normal and fair’ use of that trade mark.[20] Ms Champion argued that the Exhibit showed the applicant was emphasising the ‘diva’ element of its trade mark. However, I believe this pushes the significance of the evidence too far. Instead, I agree with the Ms Bowne’s submissions on the significance of this evidence. In my opinion, this manner of representation simply does not emphasise the ‘diva’ element in the manner argued by Ms Champion. All that can be taken from this evidence is that the applicant has depicted its trade mark in a manner which demonstrates that the trade mark is two separate words, ‘diva’ and ‘dolls’.

[20] Spiral Foods Ltd v Valio Ltd (2000) 50 IPR 473, 485 (Hearing Officer Thompson).

35.   Considered as a whole, the applicant’s trade mark both looks and sounds different from the opponent’s ‘DIVA’ trade mark. The ‘dolls’ element cannot be wholly disregarded, in the manner the opponent has suggested. Further, I agree with the submission of the applicant that the significance of the ‘dolls’ element is ‘reinforced by the alliteration of the two components of the opposed marks … this ensures that equal emphasis is given to the two words both visually and aurally.’ This alliteration, and the equal emphasis which it causes to fall upon both words makes it unlikely that consumers would naturally abbreviate the applicant’s trade mark to ‘diva’. As such, I think the opponent’s submission that the word ‘diva’ is the ‘essential element’ of both trade marks must be rejected. I think both the words ‘diva’ and ‘dolls’ are of equal importance in the applicant’s trade mark.

36.   The opponent also argued that the trade marks both brought to mind the idea of a ‘diva’. While this may be true, I am mindful that the fact that both trade marks may bring to mind a common idea does not, without more, support a conclusion that the trade marks are deceptively similar.[21] Based upon the findings I have made above concerning the visual similarity, I do not believe the common idea of a ‘diva’ really advances the case for deceptive similarity.

[21] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 539 (Dixon, Williams and Kitto JJ); Sports Cafe Ltd v Registrar of Trade Marks (1998) 42 IPR 552, 557 (Wilcox, Heerey and Lindgren J).

37.   The opponent has put into evidence a magazine advertisement in which the goods of the opponent were mistakenly advertised as being those of the applicant (Clarke declaration, Exhibit DAC–9). I am mindful that ‘[e]vidence of actual deception, if forthcoming, is of great weight’ in the assessment of deceptive similarity.[22] Despite Ms Bowne’s submissions to the contrary, I do not see how categorisation of this exhibit as evidence of actual confusion could be avoided.

[22] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

38.   However, in contrast to this single exhibit is multitudinous evidence showing both the ‘DIVA’ and ‘DIVA DOLLS’ trade marks being advertised through the same magazines for a prolonged period of time (Clarke declaration, paragraph 26, Exhibit DAC–7; first Lam declaration, paragraphs 50 – 51, Exhibits DL–6 and DL–7). The evidence of both the applicant and the opponent illustrates that both trade marks have been correctly differentiated in advertisements on the same pages of the same magazines on numerous occasions (Clarke declaration, paragraph 28, 61, Exhibit DAC–10; Van Der Merwe declaration, paragraph 69; first Lam declaration, paragraph 57.5.iv, Exhibit DK–7). In light of this voluminous evidence, I do not think that one instance of actual confusion can be given decisive weight. It does, however, remain a factor which weighs in the opponent’s favour, and I will consider it accordingly.

39.   Visually, accounting for the (previously discussed) heightened degree of caution exercised by consumers purchasing the designated goods such as jewellery in class 14, and despite the close relationship between the applicant’s goods and those of the opponent, I am not satisfied that there is a real tangible danger that confusion or deception would arise from the use of ‘DIVA’ and ‘DIVA DOLLS’.

40.   However, the opponent has pointed to an additional consideration, which I believe warrants further attention. The test for deceptive similarity will be satisfied ‘if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.’[23] Notwithstanding the differences between the trade marks, consumers may question whether the applicant’s ‘DIVA DOLLS’ products share a common trade origin with the opponent’s ‘DIVA’ products.

[23] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, 382 (French J); see also Campomar Sociedad Limited v Nike International Limited (2000) 169 ALR 677, 699 (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ)

41.   In a similar case, involving a comparison of the trade marks ‘POLO’ and ‘POLO CLUB’ Justice Burchett noted the following:

On the mundane level which is appropriate here, someone who knew of a “Polo” product, upon seeing a similar product selling under the name “Polo Club”, would be quite likely to think it was a particular version of the product which could be described as the Club version.[24]

Later in the course of his decision, His Honour stated the following:

It is plain that the word “Polo” must be an essential feature of the applicants’ mark, since it is the whole of the mark … “Polo” is also quite a distinctive word, and the taking of it is bound to cause confusion which the mere addition of the word “Club” will not dissolve. Bearing in mind that the test requires consideration of the customer with an imperfect recollection of the mark, it is important that the distinctive impact of the word “Polo” is likely to affect the mind although the presence or absence of the blander word “Club” may escape notice. At the same time, some persons may be quite aware that one mark contains the added word, and the other does not, but may yet think of “Polo Club” bed linen as a particular style of “Polo” bed linen.[25]

[24] Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 42 FCR 227, 230 (Burchett J).

[25] Polo Textiles, 232.

The analogous question relevant to the present dispute is whether someone who knew of the opponent’s ‘DIVA’ product, upon seeing the applicant’s similar goods in class 14 selling under the name ‘DIVA DOLLS’, would be likely to think it was a particular version of the product which could be described as the ‘dolls’ version.

42.   Burchett J again considered this question in Conde Nast, coming to the contrary conclusion when comparing the trade marks ‘VOGUE’ and ‘EUROVOGUE and Device’. In distinguishing those trade marks from his previous decision, His Honour stated:

“Eurovogue”, though containing “Vogue” as a syllable, does so in a new word with a new meaning. It is not like POLO CLUB, where the original meaning of “Polo” is retained and is dominant, so that a product labelled with the two words may be taken as merely the “club” version of the Polo product … Vogue is altogether too indefinite a word, in this context, to have that sort of distinctive impact. Its meaning is particularly vague when it is combined with “Euro”, since a pan-European vogue would be very hard to envisage.[26]

[26] Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505, 510 (Burchett J).

43.   I think, on balance, use of the applicant’s trade mark upon jewellery falls closer to the circumstances of Conde Nast than Polo Textiles. The word ‘dolls’ shares equal prominence with the word ‘diva’ in the applicant’s trade mark. Furthermore, His Honour points out that the word ‘club’ in ‘POLO CLUB’ was capable of describing, or qualifying the dominant word ‘polo’. This does not seem to be the case here, it does not really make sense to describe something as the ‘dolls’ version of the ‘diva’ product. If the ordinary consumer did question the applicant’s trade mark in this manner, it seems more natural that they would take the trade marked goods to be a ‘diva’ version of the ‘dolls’ product.

44.   I can sympathise with the opponent in this case, as I believe there may be a possibility that use of the ‘DIVA DOLLS’ trade mark may create confusion. However, it is clear that the mere possibility of confusion is not sufficient to establish deceptive similarity.[27] There must be a ‘real tangible danger’ of deception or confusion arising. In the present circumstances, where the goods in question would be subject to reasonably detailed inspection by consumers, I am not satisfied on the balance of probabilities that this ‘real tangible danger’ exists. For this reason I find that the second Vincona trade mark is not deceptively similar to the first DCK trade mark insofar as it concerns the class 14 goods designated by both trade marks.

Further Conclusions

[27] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592

45.   The above finding is sufficient to dispose of the bulk of additional considerations relating to deceptive similarity. Considered in relation to the goods designated in classes 16, 18, 25 and 26, I am not satisfied that the second Vincona trade mark is deceptively similar to the first DCK trade mark. As the divide between the applicant’s and opponent’s goods widens, the case for deceptive similarity weakens. I have found that a consumer would not be confused in a visual or aural sense by the use of ‘DIVA’ and ‘DIVA DOLLS’ where both trade marks are used on jewellery and related goods in class 14. I cannot see how confusion in these senses would be more likely where one trade mark is used upon jewellery and the other upon clothing. Similarly, if there is not a ‘real tangible danger’ of people being caused to wonder whether ‘DIVA’ and ‘DIVA DOLLS’ jewellery shared a common trade source, I do not see how such a danger would exist where the trade marks are used upon increasingly divergent — albeit related — goods. In making this finding I am mindful of my earlier observation that customers may not exercise a particularly high degree of caution in relation to the applicant’s goods in classes 16 and 26.

46.   It also follows that the second Vincona trade mark is not deceptively similar to the second DCK trade mark. The only argument which suggests there is a risk of confusion arising from the use of these trade marks to mind is the danger that a person encountering the ‘DIVA DOLLS’ goods would think they were produced by the company who operates the ‘DIVA’ retail stores. However based on the previous discussion, I do not believe there is a real tangible danger of this occurring, unless the ‘DIVA DOLLS’ products were physically sold within the ‘DIVA’ retail outlets. As this situation is implausible, there is again no more than a mere possibility of deception or confusion arising.

47.   Turning to the first Vincona trade mark, I note that this composite trade mark includes several elements in addition to the words ‘DIVA DOLLS’. While I do not think much weight should be placed upon the very small text ‘ as an additional point of distinction, the significance of the large device element cannot be ignored. This element weakens the case for deceptive similarity. If the plain word trade mark ‘DIVA DOLLS’ is not deceptively similar to either of the opponent’s ‘DIVA’ trade marks, I cannot see how the words ‘DIVA DOLLS’ used in conjunction with a significant device element, used upon the same goods as the plain ‘DIVA DOLLS’ trade mark, could be deceptively similar to either of the opponent’s ‘DIVA’ trade marks. I find that the first Vincona trade mark is not deceptively similar to either the first or second DCK trade marks.

48.   The final ‘DIVA DOLLS’ trade mark is the fourth Vincona trade mark, accepted in respect of services in class 35, namely ‘Wholesaling of goods, retailing of goods, imports and exports of goods’. I note that the surrounding circumstances with respect to these services are somewhat different to those relevant to the applicant’s class 14 goods. However, I believe the conclusions upon deceptive similarity in that context are in essence applicable in this case. I am not satisfied that there exists a real tangible danger of confusion arising as regards the visual and aural impressions of the fourth Vincona trade mark and the first and second DCK trade marks. Based upon the same considerations identified in paragraph 47, the argument for deceptive similarity weakens as it concerns the fourth Vincona trade mark and the fifth DCK trade mark (registered in respect of the same goods, and same services as the first and second DCK trade marks respectively). I also find that the fourth Vincona trade mark is not deceptively similar in an aural or visual sense to the fifth DCK trade mark.

49.   As regards confusion as to trade source between the fourth Vincona trade mark and the second DCK trade mark, I am mindful that it is increasingly common for retailers to operate similar retail outlets under related names — ‘WOOLWORTHS’ and ‘WOOLWORTHS METRO’ spring to mind. However, I do not believe there is a real tangible danger of deception or confusion arising in this sense from the use of both ‘DIVA’ and ‘DIVA DOLLS’ in a retailing context. Generally speaking, the word ‘dolls’ is not one which would lead consumers to connect the applicant’s retail services to the opponents. As a matter of logic it has a different effect to a more commonly used word like ‘metro’. Confusion of this nature would only seem to arise if the products sold in a ‘DIVA DOLLS’ store were actually dolls. And even in this circumstance I do not think there is a real tangible danger a consumer would confuse ‘DIVA DOLLS’ the doll retailer with ‘DIVA’ the jewellery retailer. These goods are simply too diverse to create anything more than a fanciful risk of such confusion. There is also not a real tangible danger of confusion as regards trade source between the fourth Vincona trade mark and the first DCK trade mark, for similar considerations to those noted in paragraph 46. Based on the foregoing it also follows that there is not a real tangible danger of confusion as to trade origin arising from the use of the fourth Vincona trade mark and the fifth DCK trade mark. I find that the fourth Vincona trade mark is not deceptively similar to either the first, second or fifth DCK trade marks.

50. None of the applicant’s ‘DIVA DOLLS’ trade marks are deceptively similar to the cited DCK trade marks. It follows that both the grounds of opposition under section 44 and section 60 fail with respect to these trade marks.

Comparison (2) — SASS DIVA and Device (Class 35) and sass (Class 14):

51.   The opponent’s primary submission on this comparison was that its trade mark ‘sass’ was not defined in The Macquarie Concise Dictionary, and as such should be treated as an invented word. Thus, the applicant has combined the opponent’s invented word with the recognised English word ‘diva’. As the ‘sass’ element had no ‘specific meaning’, a consumer encountering the applicant’s ‘SASS DIVA and Device’ trade mark would seize upon the ‘sass’ element, and presumably confusion would ensue.

52.   I strongly disagree with this submission. Primarily, ‘sass’ is not an invented word. The Oxford Online Dictionary defines ‘sass’ as ‘[t]o speak impertinently; to sass back, to reply impertinently, to answer back’. Even if I were to accept that this meaning was not well known in Australian parlance, the word is so plainly derived from ‘sassy’ — meaning ‘[i]mpudent, saucy, ‘cheeky’; outspoken, provocative; conceited, pretentious; self-assured, spirited, bold, vigorous, lively; stylish, ‘chic’ — that I believe the ordinary consumer would regard ‘sass’ as being synonymous with ‘sassy’. Upon encountering the applicant’s trade mark, I believe the words ‘sass diva’ would be attributed the same meaning as would the words ‘sassy diva’. Accepting this, I believe that both the ‘sass’ and ‘diva’ elements are of equal significance, and the ordinary customer would not attach any particular weight to one or the other element.

53.   I am also mindful that the applicant’s trade mark includes a substantial device element. The presentation of the applicant’s trade mark is such that the striking element is the image of a woman’s head — the textual element ‘sass diva’ is not of primary significance. In short, I do not believe there is a real tangible danger of deception or confusion arising from the use of the common element ‘sass’ in the third Vincona trade mark and the third DCK trade mark. The applicant’s trade mark is not deceptively similar to the opponent’s ‘sass’ trade mark.

Further Conclusions:

54.   I cannot see how I could now conclude that the third Vincona is not deceptively similar to the third DCK trade mark, but is deceptively similar to the fourth DCK trade mark. The same considerations outlined above are equally applicable, and hence I find that the third Vincona trade mark is not deceptively similar to the fourth DCK trade mark.

55. Although it was not stressed at the hearing, I believe I must also consider whether the third Vincona trade mark is deceptively similar to the opponent’s ‘DIVA’ trade mark(s) to determine the ground of opposition under section 60 of the Trade Marks Act. I again reiterate that I regard the device element as being the striking element of the third Vincona trade mark, and that the word ‘diva’ is of equal significance to the word ‘sass’. Based on these considerations, I also find that the third Vincona trade mark is not deceptively similar to the opponent’s ‘DIVA’ trade mark(s) for the purposes of section 60.

56. The third Vincona trade mark is not deceptively similar to any relevant trade mark cited by the opponent. I find that this element has not been established with respect to the grounds of opposition under sections 44 and 60 of the Trade Marks Act, and the opposition to this trade mark fails accordingly.

Decision

57. Section 55 of the Trade Marks Act provides:

55          Decision

Unless the proceedings are discontinued or dismissed, 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.

58.   The opponent has not established any ground of opposition with respect to any of the opposed trade mark applications. Trade mark applications numbered 989599, 998211, 1017912 and 1059239 may therefore proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration shall not occur until either the appeal has been discontinued or, in the event of a decision from the Court, that the applications be subject to that order.

Costs

59.   The applicant, having been successful in these opposition proceedings, is entitled to its costs, which I award against the opponent, DCK Australia Pty Ltd.

Claudia Murray

Hearing Officer

Trade Marks Hearings

29 May 2008

[c1]Actually the one I read was No.02 C maybe there is another one