Diana Ferrari (Australia) Pty Ltd v Ferrari SpA

[2008] ATMO 73

TRADE MARKS ACT 1995

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

Re:Opposition by Diana Ferrari (Australia) Pty Ltd to registration of trade mark applications 1034919(35) - FERRARI SHOP and 1037585(14) - filed in the name of Ferrari SpA.

Delegate:

Alison Windsor

Representation:

Opponent:  Siobhan Ryan of counsel

Applicant:  Warwick Rothnie of counsel and Stephen Stern, solicitor and partner of Corrs Chambers Westgarth, lawyers.

Decision:

2008 ATMO 73

S52 opposition: Grounds under sections 42, 44 and 60 – no ground established – opposition unsuccessful – costs awarded against opponent.

Background

1. Ferrari SpA (“the applicant”) filed two applications for the registration of trade marks, current details of which are shown below:

Application number:  1034919

Priority date:  9 July 2004 (by virtue of a convention priority based on an Italian application)

Goods/Services:  Class 35:  Retail services including retail services relating to toiletries, cosmetics, hair and body care products for person use, perfumery, key rings, pins, badges, tags, trophies, ornaments of common metal made up with car components, optical instruments, eyeglasses, sun glasses, safety helmets, videotapes, CD ROMs, telephones, cellular phones, cellular phone masks, cellular phone freehand kits, electronic videogames, computer games, computer software, computer accessories, portable computers, barometers, apparatus for recording, transmission or reproduction of sound and images, TV sets and accessories thereof, photographic apparatus and accessories thereof, projectors, watches, alarm-clocks, chronographs and chronometrical instruments and apparatus, jewellery, paper, cardboard and goods made from those materials, printed matter, stationery, stationery items for school, writing instruments, calendars, flags, stickers, adhesive labels, picture-cards, books, magazines, photographs, lithographs, posters, postcards, albums, stamps, greeting cards, goods made from leather, wallets, purses, brief-case, rucksacks, suitcases, belt bags, bags, shoulder-bags, umbrellas, clothing, footwear, headgear, textile goods, beach towels, sheets, tablecloth, fancy pins, mugs, candles, toys, playthings, plushes, golf sets, ashtrays and smokers' articles, bicycles, sporting articles, equipment for sport and fitness; on-line retail services relating to all the above mentioned goods

Trade mark:  FERRARI SHOP

Application number:  1037585

Priority date:       13 January 2005

Goods/Services:  Class 14:  Horological and chronometric instruments and their parts and accessories, watches, wrist watches, watch straps, stopwatches, watch movements, watchbands, watch glasses, chronometers, chronographs (watches), clocks, electronic clocks, mechanical clocks, quartz clocks, alarm clocks, clock cases, watchcases, needles of precious metal, clock radios, cufflinks, tie clips, pins in this class, charms, buckles of precious metal, precious stones, jewels, key-rings of precious metal, pendants of precious metal, earrings, bracelets, necklaces; picture frames, penholders, boxes, pill boxes and paperweights, trays all of precious metals

Trade Mark:  

1. The applications were examined as required by the provisions of section 31 of the Trade Marks Act 1995 (“the Act”) and in due course accepted for possible registration. 

2. In May 2005, Diana Ferrari (Australia) Pty Ltd (“the opponent”) filed notices of opposition to the registration of both applications.  The notices rely on seven grounds of opposition, and are effectively identical.  The service and filing of evidence in respect of the two oppositions was prolonged by attempts between the parties to negotiate a settlement of the matter.  These attempts having failed, service of evidence was completed at the end of November 2007. 

3. The applicant then requested to be heard, and the matter came before me, as a delegate of the Registrar of Trade Marks, in Melbourne on 17 June 2008.  Warwick Rothnie of counsel and Stephen Stern of Corrs Chambers Westgarth, lawyers, jointly represented the applicant.  Siobhan Ryan of counsel represented the opponent.

Evidence

Evidence in support

1. The opponent’s evidence in support consists of a single declaration, that of John Kirkhope, product development manager of the opponent company.  Mr Kirkhope gives a history of the development of the company and its trade marks.  He says the company created its DIANA FERRARI brand in 1980, selling women’s shoes under the brand to major retailers such as Myer stores.  By 1987, the company was selling goods under several brands, including SUPERSOFT BY DIANA FERRARI.  The two brands mentioned are currently the two main footwear brands the opponent owns.

2. The opponent also sells clothing and has licensed production of goods such as sunglasses, wallets, handbags, belts, scarves and jewellery under the DIANA FERRARI brand.  Most of the opponent’s footwear is sold through an extensive network of third party retailers, with broad coverage of the Australian market.  More recently, the opponent has opened its own retail concept stores which sell a full range of footwear, apparel and licensed products.  Clothing is only available through the concept stores, and through a number of clearance outlets.

3. The opponent’s goods have been continuously advertised via print media, its DIANA FERRARI website, point of sale material in stores and television broadcasts.  Both advertising and sales figures point to a company with a prominent position within the relevant Australian market, involving millions of dollars of sales per year.  Mr Kirkhope is of the opinion that DIANA FERRARI is the most widely recognized women’s shoe brand in Australia, and is favoured by more Australian women than any other shoe brand.

Evidence in answer

1. The applicant’s evidence in answer consists of six declarations.  Of these, the declarations made by Peter Lee, vehicle logistics manager of European Automotive Imports Pty Ltd (“EAI”), the applicant’s exclusive distributor in Australia, and by Massimiliano Maestretti, in-house counsel of the applicant, contain the bulk of the evidence.

2. Mr Lee had made his declaration on the basis of a professional relationship with the applicant’s products since 1988.  During that period he has worked with the various firms which were licensed to import both the applicant’s cars and what he describes as “a vast and ever-increasing range of products”.  He has provided a list of some forty items, ranging from toys through to mobile phones, computer games, clothing, jewellery, personal care products and manchester.

3. Sales of Ferrari motor vehicles in Australia began, Mr Lee believes, in or about 1952.  Since 1975 yearly Australia-wide sales of the vehicles have fluctuated from approximately 11 to 110 vehicles.  These sales numbers appear very small, he says, but the sales are strong for products like Ferrari motor vehicles which are amongst the most elite and desired; the highest priced, the highest quality and the most dynamic performance motor vehicles available in the world. 

4. Mr Lee says that purchase of Ferrari products is not restricted to those people who buy the Ferrari motor vehicles, especially given the position of the cars within the market and their relative scarcity in Australia.  The Ferrari products are most commonly bought by people who are likely to be fans of the vehicles, or of Formula 1 motor sports, where Ferrari has had continued success over the years. 

5. The goods are available at Ferrari dealers, and are advertised via brochures, and in print media.  The goods are also available at motor shows in Melbourne and Sydney, (and more recently in Brisbane as well), where brochures and catalogues relating to the goods are also provided.  The goods are also available in association with The Australian Formula 1 Grand Prix event, currently held in Melbourne. 

6. From about 2000, the applicant made the decision to launch a series of shops and stores around the world where all its products could be sold in one place.  “Ferrari Shops” are usually located at airports and other retail travel areas, as well as at Ferrari car dealers.  “Ferrari Stores” are concept stores, usually located in main streets or downtown retail areas.  Mr Lee says that the applicant is currently developing the idea of creating central retail locations in Australia where its goods can be provided for sale.

7. The Maestretti declaration gives a more detailed history of the development of the applicant company and its products, and provides details about the licensing of third parties to produce its range of goods (other than vehicles).  Much of the exhibited material repeats that attached to the Lee declaration.

8. There are two declarations made by Amandine Ponties, who was at the time doing some work experience with the applicant’s legal representatives.  The declarations go to the conduct of three small surveys relating to the general public’s knowledge and recognition of the name FERRARI.  The surveys were conducted in Melbourne in September 2007.  Participants in the first two surveys were shown the trade mark subject of application 1037585  and asked whether, if they saw the trade mark on a watch or a clock, they would associate it with any particular company.  The third survey asked participants whether they would connect a shop named FERRARI SHOP with any particular company.  In all cases, a majority of participants associated the trade marks with either the applicant, or with the applicant’s cars, or simply “cars”.  Mrs Ponties states that no respondent to any of the surveys mentioned the opponent or its trade marks.

9. Craig Raymond Douglas, a private inquiry agent, has provided a declaration in his capacity (amongst others) as an authorised agent in Australia empowered to represent the applicant in respect of the applicant’s anti-counterfeiting activities.  Mr Douglas says he and his staff frequently and thoroughly monitor the Australian market for goods which might infringe the applicant’s Australian registered trade marks or other trade mark rights.  Mr Douglas attests to his knowledge of the applicant’s range of products from as early as 1985 and to his current awareness of the availability of products in Australian stores such as the Victorian Formula 1 Shop in Melbourne.  He also refers to his awareness since 2001 that Ferrari products have been available for purchase through the applicant’s Ferrari Store website (>

   Stephen Marcus Stern is the partner of Corrs Chambers Westgarth Lawyers who has the care and conduct of this opposition.  His declaration refers to an earlier opposition proceeding between the parties in contention here.  Exhibited to his declaration are three short declarations which formed part of the evidence filed in respect of that action.  Mr Stern states that he rejects most of the evidence contained within these declarations except for paragraph 8 in each, an example of which follows:

   If I saw the trade mark FERRARI on a range of clothing or clothing accessories such as sunglasses, bags and watches, I would associate this trade mark with the expensive sports car market and more particularly with Ferrari SpA.  If however I saw the trade mark DIANA FERRARI on a range of clothing or clothing accessories, I would associate this trade mark with the women’s clothing market and more particularly, with Diana Ferrari Pty Ltd. 

10. I will refer to the submissions given at the hearing where necessary during my discussions later in this decision.

Grounds of opposition

1. While the notices mentioned seven separate grounds of opposition, at the hearing the opponent only pursued grounds under sections 44 and 60 and paragraph 42(b) of the Act. For completeness, I find that none of the other grounds specified in the notices have been successful.

Section 44 – identical etc trade marks

1. In respect of section 44, the opponent specified that it intended to rely on its following prior registered trade marks:

Regn No.	Trade Mark	Priority date	Class/es and Goods specifications
363774	DIANA FERRARI	4 August 1981	Class 25:  Footwear
714764	DIANA FERRARI	9 August 1996	Class 9: Optical apparatus and instruments including spectacles, spectacle cases, sunglasses, sunglass cases and parts and accessories therefor in this class; all the aforesaid being for women. Class 14: Jewellery and trinkets; with the exclusion of horological and chronometric instruments and watches; parts and accessories in this class; all the aforesaid being for women Class 18:  Bags including garment bags, handbags, beach bags, shoulder bags, school bags and travel bags, briefcases, attaché cases, suitcases, backpacks, key cases, wallets, purses, umbrellas; all the aforesaid being for women Class 25:  Women's clothing, women's footwear, and women's headgear
869354	DIANA FERRARI	15 March 2001	Class 4:  Candles Class 26:  Hair clips and hair fasteners

1. In order to make out a ground of opposition under section 44, the opponent must point to trade marks which:

   • have earlier priority dates than those of the applications;
   • are claiming similar goods or closely related services; and
   • are substantially identical or deceptively similar to the application trade marks.

2. All three of the opponent’s chosen registrations have earlier priority dates than the applicant’s trade marks subject of this opposition.

3. In respect of the goods and service specifications, the opponent submitted that the broad range of retail services claimed in application 1034919 were closely related to many, if not all, of the goods claimed in the above listed registrations.  Similarly, many of the class 14 goods claimed in application 1037585 were, the opponent submitted, the same or similar to those claimed in class 14 for registration 714764.

4. I am satisfied that there is a sufficient nexus of similarity between some of the applicant’s retail services and the opponent’s claimed goods for them to be seen as closely related. Similarly, there are similar goods involved in the two class 14 claims. The deciding question in respect of the section 44 ground, and a threshold test for the application of the provisions of section 60, will be whether the trade marks are substantially identical or deceptively similar.

Substantial identity and deceptive similarity

1. The opponent did not pursue the question of substantial identity, and I am in agreement with this approach.  However, it contended that the trade marks were deceptively similar.  In investigating this contention, it is appropriate that I consider each of the applicant’s trade marks separately.

Deceptive similarity - Application 1034919 - FERRARI SHOP

1. In respect of this trade mark, the opponent said that FERRARI was an unusual surname, appearing on the SFAS[1] data base only 621 times and that it was a memorable word.  In addition, it is the common element in the applicant’s and the opponent’s trade marks.  The word DIANA, the opponent said, is common, and the word SHOP in the applicant’s trade mark is purely descriptive.  Therefore, the opponent submitted, the applicant’s FERRARI SHOP trade mark should be found to be deceptively similar to the opponent’s DIANA FERRARI trade marks and such a finding would be consistent with guidelines for comparison of names published in the Trade Mark Examiners Manual (“the Manual”), annexure A1 to part 26.

   [1] SFAS refers to a database named Search for Australian Surnames.  It is a database incorporating numbers of occurrences of surnames on Australian electoral rolls, and is used by trade mark examiners to help decide the relative commonness of surnames in the Australian population.  A trade mark with an SFAS value of over 750 is usually regarded as common.

2. The annexure to Part 26 of the manual to which the opponent refers is a table of comparisons designed as an aid for trade mark examiners when they are faced with comparing two trade marks, one consisting of a surname only and the other consisting of that same surname with the addition of a given name (that is, it is the name of a person).  The annex is not law, it is simply a list of suggestions designed to help trade mark examiners take a consistent approach to these particular comparisons.

3. However, the applicant’s trade mark does not consist of either the name of a person or a simple surname, but the expression FERRARI SHOP.  Despite the word SHOP being purely descriptive, it cannot be discounted entirely.  Neither can the word DIANA in the opponent’s trade mark be discounted, despite it being a relatively common given name.  The trade marks must be compared in their entirety - they must not be dissected into sections for the convenience of forcing a guideline to fit the circumstance.  The opponent’s reliance on the quoted annexure as support for its stance results in a flawed argument. 

4. It is clear that the trade marks do have an element in common.  Whether this results in deceptive similarity is another matter.  The term “deceptively similarity” is defined by section 10 as follows:

   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.

5. In the Woolworths Metro case[2], Justice French consolidated and set out the relevant considerations when comparing trade marks:

   [2] Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594–5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (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.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353 at 362 ; 1 ALR 443 at 450:

   … the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.

1. While these two trade marks have that common element, namely the surname FERRARI, I am not satisfied that the overall impressions of the two are such that the average customer is likely to be confused. The opponent’s trade mark is clearly designed to be seen as the name of a person. The applicant’s trade mark is not – it specifically refers to a store or shop. I have not been provided with any information which allows me to infer that the buying public would necessarily assume the applicant’s use of its trade mark was the result of the opponent setting up a shop using only part of its trade mark. Under these circumstances, and taking into account Justice French’s comments, I do not consider the two trade marks to be deceptively similar. The ground of opposition under the provisions of section 44 is thus not made out for this application.

Deceptive similarity - Application 1035785  

1. The applicant refers to this trade mark as the “long F” Ferrari trade mark, and this is a convenient way to describe it.  The letter F with the extended top bar is a significant feature of this trade mark, as well as being a registered trade mark in its own right[3].  Again, taking into account Justice French’s comments, I am not satisfied that there is any real tangible chance of a significant number of people being deceived or confused by the applicant’s use of this trade mark on the goods in class 14 subject of the application.  

   [3] See registrations 740637 in classes 6, 18 and 25 and 836711 in class 12

2. The applicant’s “long F” trade mark and the opponent’s DIANA FERRARI trade mark once again have the surname in common.  However, I consider that the “long F” is a highly memorable feature, adding to the differences between the trade marks.  The net impression of the two trade marks is one of difference, rather than one of similarity.  Even in a situation of “imperfect recollection” I cannot be satisfied there is any strong likelihood of deception and confusion between these two trade marks when both are in use in the general Australian market.  I do not find the trade marks deceptively similar.

3. As I am satisfied that this trade mark is not deceptively similar to the opponent’s DIANA FERRARI trade marks, the final requirement for establishing the ground of opposition under the provisions of section 44 has not been met. This ground has therefore not been established.

Section 60 – similarity to a trade mark with a reputation in Australia

1. At the time these oppositions were filed, section 60 of the Act provided the following:

   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.

2. I am satisfied that the applicant’s and the opponent’s trade marks are neither substantially identical nor deceptively similar, and therefore this ground of opposition fails at the threshold. However, in respect of the matter of reputation, I note that this opposition is between two commercial entities, both of which have trade marks with significant reputations. In the case of the applicant, this is a world wide reputation, especially in respect of the “long F” trade mark. I am of the opinion that, had the applicable provisions of the Act been such that a full consideration of section 60 was appropriate, I would not have found the ground of opposition to be established. I am satisfied that there is little likelihood of the general buying public being deceived or confused by the applicant’s entry into the broader Australian market in the face of the opponent’s established presence, because both parties have such established reputations.

Subsection 42(b) - use contrary to law

1. The opponent submitted that the applicant’s use of the opposed trade marks would contravene sections 52 and 53 of the Trade Practices Act 1974 (“TPA”) because:

   use of the marks by the Applicant in trade or commerce in respect of goods and services within the specifications would be misleading or deceptive, or likely to mislead or deceive and/or would suggest some sponsorship, approval, affiliation or association with the Opponent or its goods which the applicant does not have.

2. The opponent considers that its DIANA FERRARI trade marks are notorious in Australia in respect of women’s footwear, clothing and accessories as well as for retail services in relation to those goods, and because of the “distinctive element FERRARI” within both trade marks, it is very likely that use of the applicant’s trade mark in relation to the goods applied for would result in a substantial number of persons being misled or deceived in respect of the applicant’s similar goods.

3. Section 52 of the TPA provides the following:

   52.  Misleading or deceptive conduct

   (1)  A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

   (2)  Nothing in the succeeding provisions of this Division shall be taken as limiting by implication the generality of subsection (1).

4. Chapter 22 of Shanahan’s Australian Law of Trade Marks and Passing Off, 3^rd edition, at paragraph 22.60 (on p 597), discusses the terms “misleading or deceptive” or “likely to mislead or deceive” in the following words:

   In Equity Access Pty Ltd v Westpac Banking Corp[4] Hill J referred to a number of established propositions relevant to s 52 proceedings covering use of a name or mark which may be summarised (without cited cases) as follows:

   1.    The conduct must convey in all the circumstances of the case a misrepresentation.

   2.    The error or misconception must result from the conduct of the corporation and not from other circumstances for which the corporation is not responsible.

   3.    Conduct will be likely to mislead or deceive if there is a “real or not remote chance or possibility” of misleading or deceiving regardless of whether it is less or more than 50 percent.

   4.    Conduct causing mere confusion or uncertainty is not necessarily coextensive with misleading or deceptive conduct but since actual deception need not be shown the court must consider whether a substantial number of likely purchasers are liable to be deceived.

   5.    The plaintiff must establish that is has acquired the relevant reputation in the name.

   6. Section 52 is not confined to conduct which is intended to mislead or deceived.

   [4] (1989) 16 IPR 431

5. Further relevant comment can be found at paragraph 22.65 (on p 598):

   Misleading conduct does not merely cause confusion; it actually directs a person towards the wrong choice.

6. I have difficulty envisaging a situation where the applicant’s use of either or both of its “long F” or FERRARI SHOP trade marks in the Australian market would direct consumers towards choosing its goods when their real intent was to buy DIANA FERRARI goods.  I am satisfied that both trade marks have sufficient reputation that the relevant buying public will be familiar with them both, hence the likelihood of confusion is remote. 

7. Similarly, in respect of section 53 of the TPA, which deals with false or misleading representations, the respective reputations of the two sets of trade marks effectively negate the possibility of any of the scenarios in that section being realised.

8. In Advantage-Rent-A- Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, Madgwick J said:

   I acknowledge the claim made by counsel for the Registrar that such an approach requires the Registrar to look at questions of law outside his or her expertise and that this can be difficult and may place a large and onerous responsibility upon the Registrar. However, the Registrar has the comfort that the criterion is that the use "would" not "could" be contrary to law.

9. Given what I have provided above, I cannot be satisfied that any of the applicant’s use or proposed use of its trade marks would be contrary to the provisions of sections 52 or 53 of the TPA. The ground of opposition in respect of section 42 of the Act is therefore not established.

Decision

1. As the opponent has not established a ground of opposition, the opposition fails.  Trade mark applications 1034919 and 1037585 may therefore proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been discontinued or registration is otherwise ordered by the court.

Costs

1. Both parties requested their costs.  The applicant has been successful, and is therefore entitled to its costs, which I order against the opponent according to the official scale.

Alison Windsor

Hearing Officer

Trade Marks and Designs Hearings

19 August 2008