Diesel SpA v TGSG Group Pty Limited

[2001] ATMO 122

TRADE MARKS ACT 1995

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

Re:Opposition by Diesel SpA to registration of trade mark application 791316(25) - RP55 - filed in the name of T.G.S.G. Group Pty Limited.

Background

On 16 April 1999, T.G.S.G. Group Pty Limited (‘the applicant’) applied, under the Trade Marks Act 1995 (‘the Act’), to register the trade mark depicted below in respect of ‘Clothing, footwear, headgear’ in class 25.

The application was examined, and subsequently advertised accepted in the Australian Official Journal of Trade Marks on 14 October 1999.

On 14 January 2000, within the time allowed for doing so, Diesel SpA ('the opponent') filed Notice of Opposition to registration of the trade mark.  Service of the Notice of Opposition was effected on the applicant at its address for service shown on Trade Marks Office (‘TMO’) records.

The opponent then applied, on 12 April 2000, for an application for an extension of time to serve evidence in support. To effect service, the opponent forwarded a copy of the application to the same address it had served Notice of Opposition. However, the application for extension was returned, marked ‘Return to Sender - Left Address’. The applicant had not notified this office or the opponent of any change in its address for service. The opponent had complied with the provisions of section 215(6)(b) of the Trade Marks Act 1995, and section 28A of the Acts Interpretation Act 1901, and the application for extension of time was taken to have been served in accordance with section 29 of the latter.

On 14 July 2000 the opponent attempted to serve part of its evidence in support on the applicant, again at the address for service held by TMO.  The material was subsequently returned to sender, and service was deemed to have been effected.

The problem relating to the applicant's address for service continued throughout the remainder of the opposition proceedings - all correspondence sent to the applicant by the opponent or TMO was returned to sender.

On 13 August 2000, an officer of the TMO wrote to the applicant asking it either to confirm that its address for service was that shown on TMO records, or to provide a new address.  That letter was also returned.

The opponent applied for, and was allowed, three further extensions of time. The balance of evidence in support was served on 14 February 2001. In each instance, the opponent attempted to serve the relevant material on the applicant at its address for service, but the evidence was returned to sender. Service was taken to have been effected in accordance with section 29 of the Acts Interpretation Act 1901.

The applicant did not file or serve evidence in answer.  Neither party requested to be heard, and the matter has now come before me, as a delegate of the Registrar, to decide on the written record.  The opponent has provided brief written submissions.

Evidence

Evidence in support of the opposition consists of the statutory declarations of Renzo Rosso dated 23 May 2000, and Helen Robbins dated 14 February 2001.

In his declaration, Mr Rosso, President of the opponent, Diesel SpA, gives a background of the opponent, and briefly discusses its ownership and use of registered trade mark 733977, 55 DSL.  Attached to Mr Rosso’s declaration are Exhibits RR-1 to RR-6, which provide sales and advertising figures, copies of sales invoices, catalogues and advertising leaflets.

As product manager of Diesel Wholesale Pty Ltd, the Australian distributor for the opponent, Ms Robbins gives details of marketing in relation to the trade mark, 55 DSL.  Exhibit 1 to her declaration provides samples of product sheets, a copy of a magazine advertisement, and a swing tag.

Submissions

In written submissions, the opponent's solicitor, Ms Amanda Jones, of Watermark Patent & Trademark Attorneys, submits that the applicant's trade mark, RP55, is similar to trade mark, 55 DSL.  She argues that because of a significant reputation the opponent has gained in its trade mark, 55 DSL, registration of the applicant's mark will cause deception and confusion.

The remainder of the submissions relate to the problems the opponent has faced in attempting to serve documentation on the applicant.  The opponent requests that the application be refused registration because the applicant, in not notifying TMO of a change in its address for service, failed to comply with the Trade Marks Act 1995 and Trade Mark Regulations.

The opponent requests that costs for the preparation of the Notice of Opposition and evidence in support be ordered against the applicant.

Reasons

The Notice of Opposition listed a wide range of grounds. However, the only matters to which the opponent's evidence is directed are those under sections 44 and 60 of the Act. The evidence does not address the remaining grounds. For this reason, I am unable to find the opponent has established a prima facie case for the applicant to answer on any of the grounds cited, other than those which are in terms of sections 44 and 60. I therefore find that all of the other opposition grounds are unsuccessful.

Section 44

So far as it is relevant to this case, section 44 allows:

Identical etc. trade marks

44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a) the applicant's trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1:  For deceptively similar see section 10.

Note 2:  For similar goods see subsection 14(1).
Note 3:  For priority date see section 12.

Section 44 is read in the light of section 33, which provides:

Application accepted or rejected

33.(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a) the application has not been made in accordance with this Act; or
(b) there are grounds for rejecting it.

Note:  For the grounds on which an application may be rejected see Division 2.

(2) The Registrar may accept the application subject to conditions or limitations.

Note:  For limitations see section 6.

(3) If the Registrar is satisfied that:

(a) the application has not been made in accordance with this Act; or
(b) there are grounds for rejecting it;

the Registrar must reject the application.

(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note:  For applicant see section 6.

In Registrar of Trade Marks v Woolworths (1999) 45 IPR 411, at 423, French J said:

The condition of refusal of an application is that the registrar is satisfied that there are grounds for rejection.  If not so satisfied, the registrar must accept the application.  Unless the registrar thinks that the proposed trade mark is likely to deceive or to cause confusion then all other things being equal, the application must be accepted.

At 426 he observed:

The position now is that the registrar and the court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

In deciding whether the opponent is successful under the terms of section 44, I must consider if there is a reasonable likelihood of deception or confusion arising, having taken into account whether the:

• trade marks are substantially identical or deceptively similar,

• respective sets of goods are the same or similar; and the

• priority date of the opponent's trade mark is earlier than that of the opposed trade mark.

Priority date

Registration 733977, on which the opponent bases its section 44 ground, is the trade mark 55 DSL. This trade mark has an earlier priority date than that of this opposed application, as it has been registered since 8 May 1997 in respect of:

Class 3

Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations; soaps, perfumery, essential oils, cosmetics, hair lotions; dentifrices

Class 9

Optical apparatus and instruments namely, sunglasses, eyeglasses, eyeglass cases, contact lenses, face shields and safety goggles; protective safety helmets

Class 25

Clothing, footwear, headgear.

Similarity of the goods

There is an obvious overlap between the applicant's goods and the class 25 specification of trade mark 733977, the respective sets of goods being identical. 

Similarity of the marks

The accepted test as to whether trade marks are substantially identical is set out in cases such as The Shell Co (Aust) Limited v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 ('Shell v Esso') and Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 ('Australian Woollen Mills v F S Walton').  In Shell v Esso, Windeyer J said, at 414:

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

The applicant's trade mark is a composite trade mark consisting of the letters and numerals RP55, which are rendered in shadowed block capitals and set in a curve on a two-tone background.  The background is faintly ribbed and resembles a piece of knitted textile of the kind used to make t-shirts.  When I compare this trade mark with the opponent's mark, which consists solely of the letters/numerals 55 DSL, I find the marks are not substantially identical.

While both marks contain combinations of letters and the numeral 55, the visual differences are obvious.  There are two letters in the applicant's trade mark and these appear after the numeral 55.  The opponent's trade mark contains three letters which are placed before the numeral 55.  The letters in each mark are visually very different.

To determine if the trade marks are deceptively similar, I apply the familiar tests set down in Australian Woollen Mills v F S Walton and Shell v Esso, both above.  In Shell v Esso, at 415, Windeyer J observed:

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 impression that such persons would get from the defendant's television exhibitions.

While there are some similarities in that both trade marks consist of letters combined with the numeral 55, I consider the overall visual impression created by each mark is very different.  The letters are visually so unalike that I think it unlikely that persons of ordinary intelligence would recollect the trade marks in such a way as to confuse one with the other.

The aural impression created by each mark is also different.  In normal English pronunciation the letters RP are quite distinct in sound from DSL.  The numerals 55 appear at the end of the applicant's mark, but at the beginning of the opponent's.  I find it difficult to see how members of the buying public would receive a similar aural impression from the marks.

However, it is not sufficient for me to consider the trade marks in isolation.  I must also consider the circumstances of trade surrounding the goods.  As the goods in question are 'clothing, footwear, headgear' they are for the most part likely to be sold in a manner which affords the potential purchaser both time to inspect them and compare them with other items.  Confusion is unlikely to occur in such situations.  If the goods are ordered by the spoken word, I consider the aural differences are sufficient to dispel any likelihood of confusion arising.

I find the visual and aural impressions created by the respective trade marks are quite different, and the trade marks are not deceptively similar.

In summary, I find the applicant's trade mark RP55 is neither substantially identical nor deceptively similar to the opponent's trade mark 55 DSL.  Although the trade marks are to be used on the same goods, I am not satisfied there is a real likelihood of deception or confusion arising.

Accordingly, I find the opponent has failed to establish the section 44 ground of opposition.

Section 60

Section 60 provides:

Trade mark similar to trade mark that has acquired a reputation in Australia

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

For the opponent to be successful on this ground it must, inter alia, establish that its trade mark is either substantially identical or deceptively similar to the applicant's trade mark. In my reasons relating to section 44, I have found the opponent's trade mark, registration 733977, 55 DSL, is neither substantially identical nor deceptively similar to the applicant's trade mark. I therefore find the opponent has not established its ground under section 60.

Address for service

The opponent has made submissions relating to the applicant's failure to provide a current address for service. It argues the applicant has not complied with regulation 4.2(1)(e) and section 215 of the Trade Marks Act 1995 and Trade Mark Regulations, and requests the application be refused registration.

Section 55 of the Act provides:

Decision

55. 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.

Note:For limitations see section 6.

Section 52 of the Act provides:

52  Opposition

(1) If the Registrar has accepted an application for the registration of a trade mark, a person may oppose the registration by filing a notice of opposition.

(2) The notice of opposition must be in an approved form and must be filed within the prescribed period or within that period as extended in accordance with the regulations.

Note:For approved form and file see section 6.

(3) The opponent must serve a copy of the notice on the applicant.

Note: For opponent see section 6.

(4) The registration of a trade mark may be opposed on any of the grounds specified in Division 2 and on no other grounds.

No direction has been issued by a delegate of the Registrar in relation to the applicant's address for service.  My determination as to whether the applicant is refused or registered must consequently turn solely on the grounds of opposition which are prescribed by the provisions of subsection 52(4), above.

The applicant's failure to provide a current address for service is not a ground specified in Division 2 under which registration of the trade mark can be opposed.  The opponent therefore cannot establish this ground of opposition.

Decision

I find the opponent has failed to establish any of the opposition grounds relied on.  I therefore dismiss the opposition in its entirety. 

I direct that, on payment of the appropriate fees, and subject to any appeal from this decision, the applicant's trade mark may proceed to registration.

Costs

The opponent has requested its costs and the applicant has not.  Thus, as I have found that the opponent has not established its grounds of opposition, I make no order as to costs.

Frances Aarnio

Senior Examiner

13 December 2001