Discovery Holiday Parks Pty Ltd v G'day Baby Pty Ltd
[2023] ATMO 4
•23 January 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONSRe:Oppositions by Discovery Holiday Parks Pty Ltd to registration of trade mark application numbers 1959260 G’DAY BABY and 1959261 G’DAY KIDS – both in classes 24, 25 & 35 – in the name of G’day Baby Pty Ltd
Delegate: Tracey Berger Representation: Opponent: Gilbert Tsang of Counsel, instructed by Minter Ellison
Applicant: Shelley Einfeld of Shelley Einfeld IP Pty LtdDecision: 2023 ATMO 4
Trade Marks Act 1995 (Cth) – oppositions under section 52 – ss 44 and 60 considered – s 44 ground established for some goods and services – applicant given opportunity to amend goods and services – amendment not made - applications refusedBackground
1. This is a decision on the oppositions by Discovery Holiday Parks Pty Ltd (‘Opponent’) to registration of Australian trade mark numbers 1959260 and 1959261 (‘Applications’) filed by G’day Baby Pty Ltd (‘Applicant’) on 3 October 2018 for the trade marks below:
Trade Mark Number
Trade Mark
Specifications
1959260
G’DAY BABY
Class 24: Bath linen; towels; bean bag covers; blankets; bed clothes and coverings; bed linen; bedding; bedroom textile fabrics; blankets, covers and sheets for cots; mattress covers; coverings for walls and windows; curtains; mosquito nets; pyjama cases; soft furnishings; washcloths; wrapping cloths
Class 25: Clothing, footwear, headgear; bibs for babies; clothing for babies; bootees; bathrobes; clothing for children; footwear for infants; pyjamas; dressing gowns; raincoats; hats; rain hats; sun hats; rash vests; swimwear; romper suits; slippers; socks; t-shirts; wraps
Class 35: Retail and wholesale sales services; online retail services; mail order sales services; retail and wholesale sales of clothing and accessories for babies and children
(‘Applicant’s Goods and Services’)
1959261
G’DAY KIDS
2. The Applications claim convention priority from Chinese applications filed on 15 August 2018 and a Hong Kong application filed on 18 September 2018. There is a slight difference in the wording of the Chinese applications in classes 24 and 35, whereas the Hong Kong application covers identical goods and services to the Applications. The difference of just over a month between the filing of the Chinese and Hong Kong applications has no bearing on my finding in either opposition. Moreover, the parties appear to be in agreement that the priority date for the purposes of the oppositions is 15 August 2018 and I accept that as the ‘Relevant Date’.
3. The Applications were examined and subsequently accepted for registration and advertised for opposition on 2 January 2020. The Opponent filed notice of its intention to oppose both Applications on 28 February 2020, followed by its Statement of Grounds and Particulars (‘SGP’) on 27 March 2020. The Applicant filed notice of its intention to defend the oppositions on 10 July 2020.
4. The parties were given the opportunity to file evidence in accordance with the Trade Mark Regulations 1995 (Cth).[1] Following a cooling off period and an extension of time, the Opponent filed evidence in support (‘EIS’) of the opposition on 30 April 2021. The Applicant filed evidence in answer (‘EIA’) on 1 August 2021 and the Opponent lodged its evidence in reply (‘EIR) on 1 October 2021 with written submissions.
[1] Trade Marks Regulations 1995 (Cth) reg 5.14. Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).
5. After the evidence stages concluded, the parties were given the opportunity to be heard and both parties elected a hearing by way of written submissions. The Opponent filed its written submissions on 12 April 2022 (‘Opponent’s Submissions’) and the Applicant filed written submissions on 19 April 2022 (‘Applicant’s Initial Submissions’).
Grounds and Onus
6. The SGP nominates grounds of opposition under ss 44 and 60.
7. The Opponent bears the burden of establishing one or both of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]
[2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
Evidence
8. The following evidence was filed:
EIS
Declaration of Matthew Lang, CFO of the Opponent, made on 29 April 2021 with Exhibits A-I (including Confidential Exhibits E, G and H) (‘Lang Declaration’).
EIA
Declaration of Sarah Hammond, co-founder of the Applicant, made on 27 July 2021 with Exhibits SH-1 to SH-12 (including Confidential Exhibits SH-8 and SH-10) (‘Hammond Declaration’).
EIR
Declaration of Belinda Alcock, Senior Associate of the Opponent’s legal representatives, made on 1 October 2021 with Exhibit BA-1 (‘Alcock Declaration’).
Late evidence
9. Whilst preparing its written submissions, the Opponent became aware that the EIS had not scanned correctly and as a result Confidential Exhibit E being a summary of the Opponent’s annual advertising and promotional expenditure for 2018-2021 had been inadvertently omitted from the EIS that had been filed. On 1 April 2022, the Opponent filed a copy of the EIS in full (including the omitted page) with submissions that Confidential Exhibit E should be taken into account under reg 21.15(4). The Applicant has not objected to Confidential Exhibit E being admitted into evidence and I consider it appropriate to have regard to this exhibit under reg 21.15(4).
10. It is apparent from the Applicant’s Initial Submissions that they adopted a narrow interpretation of the Opponent’s SGP and understood the Opponent’s case to be limited to the claim that the Applicant’s ‘clothing’ is closely related to the services ‘retailing and wholesaling of clothing’ covered in class 35 by the trade marks relied on by the Opponent in support of its s 44 ground of opposition. As a result, the Opponent sought to amend its SGP to clarify any ambiguity. A delegate of the Registrar of Trade Marks determined that it was unnecessary to amend the SGP but the Applicant was given the opportunity to file supplementary submissions. On 20 October 2022, the Applicant filed further written submissions (‘Applicant’s Supplementary Submissions’) and a declaration of Sarah Hammond made on 20 October 2022 with Exhibits SH-13 to SH-14 (‘Further Hammond Declaration’).
11. The Applicant argues that the Further Hammond Declaration should be admitted as evidence because the Opponent was unclear about the case it was pleading. Although the invitation to the Applicant to file supplementary submissions was not intended to provide an opportunity for the filing of additional evidence, the Hammond Declaration is focussed on use of the Trade Marks for ‘clothing’ whereas the Further Hammond Declaration is focussed on use of the Trade Marks for class 24 goods.
12. Under reg 21.15(4), the Registrar is not bound by rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate. Under reg 21.19, the Registrar may propose to take into account information that is relevant to proceedings. The Trade Marks Office Manual of Practice and Procedure[4] provides some guidance on the factors to be considered in deciding whether to allow late filed evidence. These include:
- Why the evidence was filed after the due date.
- If the evidence stage in proceedings has concluded and the matter is ready for determination, why the evidence was not filed earlier.
- What the evidence shows.
- Why that information is crucial to the delegate’s decision.
- Why it is in the public interest to have the information considered.
- What is the balance of convenience for the parties if the information is considered.
[4] Part 51.2.5.
13. It is clear that the Applicant misinterpreted the scope of the s 44 ground of opposition claimed which resulted in its EIA not covering its use of the Trade Marks as broadly as the Applicant may otherwise have done. The Further Hammond Declaration is directed to correcting this error and has probative value. It is in the public interest that I have all relevant information before me. Accordingly, I believe it is appropriate to consider the Further Hammond Declaration under the provisions of reg 21.15(4) and 21.19.
14. This matter has now been allocated to me, a delegate of the Registrar of Trade Marks, to decide based on the materials set out in the preceding paragraphs.
EIS
15. Since the Opponent was established in 2004, it has continuously provided caravan, holiday and resort park services (‘Park Services’) and is now the largest operator of Park Services in Australia with about 300 owned or licenced parks situated throughout all States and Territories. In addition to its Park Services, the Opponent claims that it provides various ancillary goods and services including advertising and promotional services to attract tourists, publications, retail services for its visitors to obtain essential items and souvenirs, and the provision of equipment hire, BBQ facilities and recreational facilities.
16. In 2017, after the Opponent purchased a network of parks, it decided to rejuvenate its branding and adopted the mark G’DAY.
17. On 21 December 2017, the Opponent filed applications for G’DAY, G’DAY REWARDS and G’DAY MAGAZINE, as both word marks and stylised marks, in classes 16, 35, 41 and 43 as shown in Annexure A (‘Opponent’s Marks’).
18. The Opponent’s Marks have been used since around October 2017 with the launch of its G’DAY MAGAZINE. Then in February 2018, the Opponent launched its customer loyalty program named G’DAY REWARDS.
19. Since October 2017, the Opponent’s Marks have been used to promote the Opponent’s Park Services including on its websites at discoveryholidayparks.com.au, gdayparks.com.au and gdayrewards.com.au (‘Opponent’s Websites’), on its social media (Facebook, Instagram and YouTube), G’Day Parks app, signage and point of sale displays at it parks, traditional print advertising, promotional stalls at caravan and camping expos and trade fairs, industry publications and directories, and direct marketing campaigns to the Opponent’s 410,000 subscribers who receive weekly emails. The Opponent also engages in sponsorships or collaborations with third parties such as Flybuys, Velocity Frequent Flyer, Hertz, mycar Tyre & Auto and The Good Guys. Examples of website extracts using the Wayback machine, social media, promotional materials, advertisements and media articles referring to the Opponent’s Marks are provided. Copies of the Google Analytics reports for visits to the Opponent’s Websites are also annexed. Mr Lang states that the actual number of consumers exposed to the Opponent’s Marks is much higher as the Opponent’s Marks are used on other parts of the Opponent’s Websites which are not included in the Google Analytics reports.
20. The Opponent attests that due to its reputation in the Opponent’s Marks, a variety of Australian businesses have sought official partnerships with the Opponent particularly in relation to its G’DAY Rewards loyalty program. These businesses include REPCO in the automotive service industry, Pedders within the towing industry and Velocity Frequent Flyer within the travel industry.
21. Moreover, third party websites such as OzBargain, Top Bargains and Coupert Australia promote the Opponent’s deals and coupons offered under the Opponent’s Marks.
22. Mr Lang declares that the total revenue generated by its Park Services is not known because data from individual parks is unavailable. However, the revenue generated from the G’day Rewards loyalty program for 2018-2020 is provided. Mr Lang attests that the total revenue is significantly higher as many customers book directly through the individual parks’ booking systems and these charges do not form part of the Opponent’s revenue. The Opponent has also provided annual advertising and promotional expenditure for 2018-2021.
EIA
23. The Applicant was founded in June 2013 and designs, manufactures and sells high quality, Australian made clothing and accessories for babies and children. The Applicant claims to have expanded its offering 450% since June 2013.
24. The Applicant registered the business names G’day Kids on 24 July 2013, G’day Baby & Kids on 5 February 2017 and G’day Baby on 10 August 2019.
25. The Applicant’s customers include retail boutiques, pharmacies, zoos, airports, corporate clients, institutions such as schools, gift merchants and end consumers. In addition, the Applicant has a store in St Ives, Sydney and plans to open additional stores in Paddington (Sydney) and in Victoria. The Trade Marks are also used (presumably by way of online sales) in the USA, China, Hong Kong, Canada, Israel, Mexico, throughout Europe, the UK, Korea, Singapore, Malaysia, Japan, New Zealand, Mauritius, Taiwan and New Caledonia. Approximate sales figures for financial year (‘FY’) 2018-2021 in Australia and the rest of the world have been provided.
26. The Applicant attests that it engages in collaborative events with other Australian-made brands with an emphasis on children’s wellbeing, sustainable and safe products and services in the children, parenting and family space.
27. In addition to the Applications, the Applicant owns a number of registrations for marks including or consisting of G’day in Australia and overseas. The earliest of these are the Australian registrations detailed below which were filed on 5 May 2014:
Trade Mark #
Trade Mark
(collectively Applicant’s Logo Marks’)
Specifications
1620905
Class 24: Bath linen; towels; bean bag covers; blankets; bed clothes and coverings; bed linen; bedding; bedroom textile fabrics; blankets, covers and sheets for cots; mattress covers; coverings for walls and windows; curtains; mosquito nets; pyjama cases; soft furnishings; washcloths; wrapping cloths
Class 25: Clothing, footwear, headgear; bibs for babies; clothing for babies; bootees; bathrobes; clothing for children; footwear for infants; pyjamas; dressing gowns; raincoats; hats; rain hats; sun hats; rash vests; swimwear; romper suits; slippers; socks; t-shirts; wraps
Class 35: Retail and wholesale sales services; online retail services; retail and wholesale sales of clothing and accessories for babies and children1620941
Class 18: Baby carriers (slings or harnesses); baby slings; backpacks; bags; carrying bags; luggage; nappy bags; pouch baby carriers; school bags; portable sunshades; tote bags
Class 25: Clothing, footwear, headgear; bibs for babies; clothing for babies; bootees; bathrobes; clothing for children; footwear for infants; pyjamas; dressing gowns; raincoats; hats; rain hats; sun hats; rash vests; swimwear; romper suits; slippers; socks; t-shirts; wraps
Class 35: Retail and wholesale sales services; online retail services; retail and wholesale sales of clothing and accessories for babies and children
28. The Applicant declares that although it initially registered the Applicant’s Logo Marks, these marks were always referred to aurally as G’DAY BABY and G’DAY KIDS. Further, the Applicant attests that it first used the Trade Marks in 2013 and subsequently also used variations such as G’DAY since 2016, G’DAY BABY & KIDS and G’DAY WE’RE THE COMFY ONES throughout Australia for the Goods and Services.
29. The Trade Marks are used on labels, swing tags, product packaging, brochures, stationery, uniforms, point of sale materials and stands, its shop front, pop-up stores, print advertising and social media.
30. The Applicant has promoted its Goods and Services under the Trade Marks on its website at (‘Applicant’s Website’) since 2017. The Applicant claims that its website receives about 10,000 page views from over 2000 active users per month. A Google Analytics report for May 2021 is provided in support of this claim Also, extracts from the Applicant’s website demonstrating use of the Applicant’s various marks containing or consisting of G’DAY are provided.
31. The Applicant’s goods bearing the Trade Marks are promoted through various sales channels including online on the Applicant’s Website and third party websites, by telephone, mail order, catalogues, in store including the Applicant’s own Sydney boutique, social media including the Applicant’s Instagram and Facebook accounts, sponsored social media posts and collaborations with social media influencers, print media, promotional videos, retail fairs and events such as the Royal Easter Show, wholesale tradeshows in Australia and overseas such as the USA and China, conducting giveaways through third parties, sponsorship of podcasts and various other means. The approximate annual advertising expenditures for FY 2014-2021 has been provided.
32. Since 2017, the Applicant’s Goods and Services have also been promoted by way of its customer loyalty program.
EIR
33. Much of the Alcock Declaration constitutes argument and comment on the EIA. However, I note that the Opponent argues that little or no weight should be afforded to the Hammond Declaration on the basis that it is not a statutory declaration. The Hammond Declaration is in an approved form[5] and whilst the term ‘exhibits’ has been used when ‘annexures’ may have been more appropriate, I see no reason not to have regard to the information contained in the Hammond Declaration simply because it is not in the form of a statutory declaration.
[5] Reg 21.6 Regulations.
34. Ms Alcock also attests that searches of the Applicant’s Website using the Wayback Machine show the first record of that website having content is 7 January 2018 and that the first posts on the Applicant’s Instagram account ‘gdaybabykids’ was 7 January 2018 and its Facebook page on 17 November 2017.
35. In addition, the Alcock Declaration exhibits email correspondence with an employee of the Applicant in which that employee states that the Applicant doesn’t have many stockists but will have 2 pop-up stores in October and November 2020 and its first permanent store in 2021.
Discussion
Section 44
36. To establish a ground of opposition under ss 44, the Opponent must rely on at least one pending or registered trade mark with a priority date earlier than the priority date of the application, and which is in the name of a person or persons other than the Applicant. The earlier mark must be substantially identical with or deceptively similar to the Applicant’s trade mark(s) and must be filed or registered in respect of goods or services that are similar or closely related to those of the Applicant.
37. In the SGP, the Opponent relies on the Opponent’s Marks, each of which has a priority date earlier than the Relevant Date and is in the name of someone other than the Applicant.
38. I turn now to a consideration of whether any of the Opponent’s Marks is substantially identical or deceptively similar to the Trade Marks.
Substantial Identity and Deceptive Similarity
39. The Opponent does not argue that any of the Opponent’s Marks are substantially identical to the Trade Marks. Considering first the similarity of the Opponent’s mark G’DAY and the Trade Marks, I note that on a side by side comparison there are obvious differences due to the additional element BABY/KIDS in the Trade Marks such that there is not a total impression of resemblance with the mark G’DAY and even less so in the case of the Opponent’s other marks.[6] Although the additional elements BABY/KIDS are descriptive, these elements cannot be ignored. I am not satisfied that the Trade Marks are substantially identical to the Opponent’s Mark G’DAY and hence, it follows that the Trade Marks are not substantially identical to any of the Opponent’s other marks.
[6] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414.
40. The test for deceptive similarity is broader and as Windeyer J observed in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited:
On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore, the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[7]
[7] Ibid.
41. In determining deceptive similarity, I am guided by the following principles:
·There must be a real, tangible danger of confusion, not just a mere possibility.5
·Likelihood of confusion can be established if a number of consumers would be caused to wonder whether the applicant’s goods or services come from some other source. It is enough if the ordinary person entertains a reasonable doubt.6
·The impression of the respective marks as a whole must be considered, including the size and prominence of word and device elements and their relationship to each other.7 However, deceptive similarity can also be found where one mark uses an essential feature of the other.8
·Consumers may retain an imperfect recollection of a mark or its essential features.9
·It may be relevant that an element of the trade marks under consideration is descriptive. However, descriptiveness does not preclude a finding of deceptive similarity.10
·The impression of the mark on ordinary consumers is relevant, not the impression on those who are particularly perceptive or cautious, or those who are exceptionally careless or stupid.11
·It must be considered how the goods or services are ordinarily sold or provided.12
42. It is convenient to first consider the 646 Mark and 225 Mark. The essential (and only) element of this mark is G’DAY which is wholly contained in the Trade Marks. This is a common English word which is at most suggestive that the relevant goods or services are Australian. The only additional element in the Trade Marks is either KIDS or BABY, both of which are descriptive of goods designed for children or babies (or the related services of selling those goods). Less weight is placed on any descriptive or non-distinctive element when comparing marks.[8] Further, a likelihood of deception or confusion can arise where two marks appear to be related because the distinctive feature of one mark is contained in another.[9] The Opponent argues that there is a risk of ‘contextual confusion’ by reason of the common element G’DAY[10]. I agree that consumers who have encountered the Opponent’s 646 Mark and 225 Mark may be caused to wonder whether the Applicant’s Goods and Services offered under the Trade Marks come from or are authorised by the Opponent. Accordingly, I am satisfied that the Trade Marks are deceptively similar to the Opponent’s mark G’DAY.
[8] Conde Nast Publications Pty Ltd v Virginia Taylor [1998] FCA 864 (Burchett J).
[9] Re Kodak (Australasia) Pty Ltd’s Application (1936) 6 AOJP 1724.
[10] John Fitton & Co. Ltd’s Application (1949) 66 RPC 110, 113 (Assistant-Comptroller Chisholm).
43. In the case of the Opponent’s other word marks, the essential element is again the word G’DAY as the other elements MAGAZINE and REWARDS are not particularly distinctive or memorable. Taking into account the doctrine of imperfect recollection, on balance, I believe that a significant number of consumers may be caused to wonder whether the respective goods and services of the parties originate from the same trade source or are otherwise connected. Although the Trade Marks and each of the Opponent’s other marks contain a different second element, I am not satisfied that this sufficiently mitigates any danger of confusion. I am therefore satisfied that the Trade Marks are deceptively similar to each of the Opponent’s Word Marks.
Similar or closely related goods and services
44. I must now consider whether the Applicant’s Goods and Services are similar or closely related to the goods and services of the Opponent’s Marks. This is a question of fact[11] and for the Opponent to establish.[12]
[11] Polo Textile Industries Pty Ltd v Domestic Textile Corp Pty Ltd (1993) 42 FCR 227, [19].
[12] Registrar of Trade Marks v Woolworths Ltd (‘Woolworths’) (1999) 93 FCR 365, 380.
45. As French J noted in Woolworths:
The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”. [13]
His Honour subsequently continued:
In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question ... Consistently with that proposition, the registrar or a judge on appeal from the registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant's marks would be likely to deceive or to cause confusion.[14]
[13] Ibid, [37].
[14] Ibid, [40].
46. The Opponent’s registrations 2069225 G’DAY, 209226 G’DAY (stylised), 1896651 G’DAY REWARDS, 1896654 G’DAY MAGAZINE, 1896667 G’DAY REWARDS (stylised) and 1896669 G’DAY MAGAZINE (‘Opponent’s Class 35 Marks’) cover the ‘retailing and wholesaling of food’ and ‘retailing and wholesaling of clothing and campers requisites’. The Applications cover “retail and wholesale services”, “online retail services” and “mail order sales services” which the Applicant accepts are services of the same description as the retail and wholesale services of the Opponent’s Class 35 Marks.
47. However, the Applicant disputes that its services “retail and wholesale sales of clothing and accessories for babies and children” are similar services to any of the Opponent’s class 35 services. The Applicant argues that the use of the word ‘and’ in the Opponent’s claim ‘retailing and wholesaling of clothing and campers requisites” is conjunctive rather than disjunctive and hence limits the scope of these services so that the item does not cover retailing and wholesaling of clothing generally but only together with the retailing and wholesale of campers requisites. I do not believe that the Opponent’s services can be interpreted in this manner. In my view, the appropriate reading of the Opponent’s retailing and wholesaling services is that the item covers ‘retailing and wholesaling of clothing’ and ‘retailing of wholesaling of campers requisites’. The retail and wholesale of clothing encompasses the retail and wholesale of clothing for children and babies and is similar to the sale of accessories for children and babies. I regard all of the class 35 services claimed in the Applications to be the same or similar to the class 35 services of the ‘Opponent’s Class 35 Marks’.
48. In relation to the Applicant’s class 25 goods, I reiterate my comments above that the Opponent’s Class 35 Marks cover the retailing and wholesaling of clothing alone and not only when the clothing is sold in combination with campers requisites. Clothing and accessories for children and babies are goods closely related to the Opponent’s services “retailing and wholesaling of clothing”.[15] It is usual practice for many manufacturers of clothing, footwear and headgear to offer their goods for retail sale online and/or through a bricks and mortar store. They also sell their goods wholesale to other retailers. I am satisfied that the Applicant’s class 25 goods are closely related to the class 35 services of the Opponent’s Class 35 Marks.
[15] Richard James Pty Ltd v Grant Oliver Investments Pty Ltd [2005] ATMO 18 (Delegate R. Dunn); Andrew Scott v The Line II Pty Ltd [2022] ATMO 9 (Delegate B. Knowles); Katie Echeverry v Unique Vintage Pty Ltd [2022] ATMO 57 (Delegate T. Berger).
49. With respect to the Applicant’s class 24 goods, the Opponent argues that these goods are closely related to the ‘retailing and wholesaling of campers requisites’. The Opponent contends that ‘campers requisites’ is a broad category “encompassing any item that could conceivably be required by a camper for the purposes of engaging in the past time of camping”. The term ‘requisites’ is defined as ‘indispensable’ or ‘a necessary thing’. To interpret ‘campers requisites’ as including goods such as bedroom textile fabrics, curtains and soft furnishings is unduly broad. With the exception of ‘mosquito nets’, I do not regard the Applicant’s other Class 24 goods as being closely related to the services of the Opponent’s Marks as such goods are sold through different trade channels for a different nature and purpose.
50. The Opponent has in principle established its ground of opposition based on ss 44(1) and 44(2) of the Act with respect to the Applications for ‘mosquito nets’ in class 24, the class 25 goods and class 35 services (’Conflicting Goods and Services’). However, the requirement to reject an application under ss 44(1) and 44(2) is subject to ss 44(3) and 44(4), which permits registration where honest concurrent use, other circumstances or prior continuous use is established. The Applicant bears the onus of establishing that ss 44(3) or 44(4) applies.
Prior continuous use
51. Pursuant to s 44(4), I may not reject the Trade Marks if I am satisfied that the Applicant has used the Trade Marks in respect of the Conflicting Goods and Services beginning before 21 December 2017, being the priority date of the Opponent’s Marks and that use has been continuous at least until the Relevant Date.
52. The Applicant claims to have used the Trade Marks since 2013 when G’DAY BABY was registered as a company name and G’DAY KIDS was registered as a business name. There is little documentary evidence in support of the Applicant’s contention that it has used the Trade Marks since 2013. Much of the evidence is undated or is dated from 2018. However, the Applicant has provided the following evidence which it alleges supports its claims:
· Registration of the domain name since 2014 and use as an email address;
· details of its advertising expenditure on promoting the Applicant’s Goods and Services from 2014 to 2021[16], which appears to exceed the revenue generated which has been provided for FY2018 to FY21[17];
· examples of stationery which the Applicant claims to have used since 2014 referring to the domain name and an invoice dated 29 January 2014 for the set up of the G’DAY BABY letterhead;
· an invoice for G’DAY BABY labels dated 30 May 2017;[18]
· an invoice for G’DAY BABY and G’DAY KIDS ribbon dated 28 November 2016;[19]
· an email chain from January-February 2014 relating to the purchase of zippers and studs;
· operation of the Applicant’s Facebook account since 17 November 2017;[20] and
· pamphlet about the Applicant’s Customer Loyalty program effective 1 December 2017.
[16] Hammond Declaration, Confidential Exhibit SH-10.
[17] Hammond Declaration, Confidential Exhibit SH-8.
[18] Hammond Declaration, Exhibit SH-7.
[19] Hammond Declaration, Exhibit SH-7
[20] Alcock Declaration, [21].
53. The Applicant bears the onus of establishing that it has made prior and continuous use of the Trade Marks. Whilst the above dated instances of use are suggestive that the Applicant may have been using the Trade Marks before December 2017, such uses are equally suggestive that the Applicant may have only been taking preparatory steps to launch the business. With regards to the FY18 sales figures, these sales are minimal and may have occurred after December 2017. The Applicant has not produced any evidence of actual sales, or even an offer to supply the Applicant’s Goods and Services, dated before the priority date of the Opponent’s Marks. Although the Applicant’s Facebook account had been established by November 2017, no screenshots of posts from that account are in evidence.
54. Based on an assessment of the Applicant’s evidence, I am not satisfied that the Applicant has used the Trade Marks in respect of the Conflicting Goods and Services beginning before the priority date of the Opponent’s Marks and that use has been continuous at least until the Relevant Date.
Honest Concurrent Use
55. The date for determining whether the Applicant has established a case of honest concurrent use under s 44(3)(a) is the Relevant Date[21] although evidence of use after that date may provide guidance on whether there is a likelihood of confusion.[22]
[21] Tivo Inc. v Vivo International Corporation Pty Ltd [2012] FCA 252, [244] (Dodds-Streeton J).
[22] Ibid; Conde Nast Publications Pty Ltd v Virginia Taylor (1998) 41 IPR 505, 509 (Burchett J), Johnson & Johnson v Kalnin [1993] FCA 279 (Gummow J).
56. In determining whether there has been honest concurrent use of a trade mark, the main factors to be considered are:
·the degree of confusion likely between the trade marks in question;
·whether instances of confusion have in fact occurred;
·the honesty or otherwise of the concurrent use;
·the extent of use in duration, area and volume; and
·the relative inconvenience that would be caused to the respective parties if the applicant's trade mark should be registered or not registered.[23]
[23] Re Fitton (1949) 66 RPC 110 (UK Reg.); McCormick & Company Inc v McCormick [2000] FCA 1335 [30] (Kenny J).
57. The honesty of the concurrent use is considered a prerequisite to registration and the most important of the factors above.[24]
[24] Chris-telle Pty Ltd v Australian Swimming Inc [2004] ATMO 60, [38] (Hearing Officer R. Dunn).
58. As outlined at paragraph 27, the Applicant has held registrations for logo versions of the Trade Marks for a number of years prior to the Opponent’s adoption of the mark G’DAY and has undertaken the preparatory steps outlined in paragraph 50 in relation to using the Trade Marks. I am satisfied that the Applicant honestly adopted the Trade Marks.
59. There is no fixed minimum period of concurrent use that is sufficient to establish a case for registration under s 44(3)(a) but rather the duration, volume, extent of promotion and size of the market must all be weighed. I note that the sales and advertising figures for FY18 are not substantial. The Further Hammond Declaration contains various evidence dated from 2018 including extracts showing use of the Trade Marks for the Conflicting Goods and Services, email correspondence between the Applicant and customers or potential customers and email correspondence regarding the Applicant sponsoring a podcast. The Applicant’s Facebook account appears to have only a few hundred followers and its Instagram account has less than 5,000 followers.
60. Although the Applicant attests that there have not been any instances of confusion, this may be due to the short period of use of the Trade Marks and low level of use before the Relevant Date.
61. The Applicant argues that it will be significantly inconvenienced if registration of the Trade Marks is refused by not having protection ‘for its valuable goodwill’ whereas the Opponent will not be inconvenienced as its evidence indicates that it does not intend to use the mark G’DAY for the goods and services covered by the Applications. I disagree with this assessment of the Opponent’s evidence. In the Lang Declaration, Mr Lang declares that the Opponent intends to expand its use of the Opponent’s Mark to a broader range of goods and services.[25]
[25] Lang Declaration, [29].
62. I am not satisfied that the Applicant has established sufficient honest concurrent use of the Trade Marks to justify registration of the Applications under s 44(3)(a).
Other circumstances
63. Section 44(3)(b) provides for acceptance of a trade mark where “because of other circumstances, it is proper to do so”. The circumstances that may be considered are not defined or limited except by the purposes of the Act and may include “any aspect of the applicant’s use tending to minimise the risk of confusion or showing particular hardship”.[26]
[26] M Davison, I Horak, Shanahan’s Australian Law of Trade Marks and Passing Off online 7th edition, 2022 Thomson Reuters, [40.2505].
64. The Applicant submits that the following constitute other circumstances justifying the application of s 44(3)(b):
·the Applicant has used not only the Trade Marks, but the mark “G’DAY”, before the Opponent;
·the Opponent’s evidence is that it does not intend to use the Opponent’s Marks for the Applicant’s Goods and Services;
·the Applicant has registered trade marks in Australia which are substantially identical to or deceptively similar to the Opposed Marks and which have an earlier priority date. The Applicant is entitled to those trade marks under the Act and such use will not infringe the Opponent’ Marks;
·the extent of use of the Trade Marks after the Priority Date, which in this case is substantial; and
·if the Registrar is satisfied that the Applicant has earlier use of the Trade Marks, but is not satisfied that this use was continuous, this may be a relevant “other circumstance”.[27]
[27] Re Holt & Co (Leeds) Application [1957] RPC 289 at 294 (Ch D).
65. With respect to the factors above, I have noted earlier in this decision that the Applicant has not provided adequate dated documentary evidence to support its claim to first use of G’DAY as a trade mark for the Applicant’s Goods and Services before the Opponent. The lack of dated evidence is not sufficient to conclude that the Applicant had earlier use of the Trade Marks which was not continuous. Whilst the Applicant has not specifically declared in its evidence that such use was not continuous, the evidence is intended to give the impression that any use was continuous. I have previously noted at [61] that I disagree that the Opponent’s evidence states an intention not to use the Opponent’s Marks for the same or similar goods and services to the Applicant’s Goods and Services.
66. With respect to use of the Trade Marks after the Relevant Date, I am not persuaded that the use has been substantial. There is a general lack of specificity in the Applicant’s evidence which makes it difficult to assess the nature and extent of the Applicant’s use of the Trade Marks. With the exception of overseas sales in FY2019, the sales figures for Australia are not significant despite the Applicant seemingly spending considerably more than its revenue on advertising and promotion. Despite this advertising, the number of followers of the Applicant’s social media accounts are relatively low. Although the Applicant’s website received 2000 visitors in May 2021, there are no details about how many of these visitors were Australian consumers or of the website traffic prior to this time. The Applicant has attended some trade shows and events since 2019, but no details are provided about the number or type of attendees (retailers or direct consumers) at these events. A few invoices for customers in the Applicant’s loyalty program have been provided but the Applicant has not disclosed the total number of customers in this program. The Applicant’s registrations for the logo forms of the Trade Marks are not sufficient in themselves to constitute ‘other circumstances’ justifying registration of the Trade Marks.
67. I am not satisfied that there are ‘other circumstances’ justifying the exercise of my discretion under s 44(3)(b) with respect to the Conflicting Goods and Services.
68. I have found that the s 44 ground of opposition has been established with respect to the Conflicting Goods and Services and that the Applicant has not established a basis for registration under ss 44(3) or 44 for those goods and services. Accordingly, I will now consider whether the Opponent has established a ground of opposition under s 60 with respect to the class 24 goods except ‘mosquito nets’ (‘Relevant Class 24 Goods’).
Section 60
69. Section 60 provides:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, 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.
70. Reputation, in the context of section 60, refers to the ‘recognition of [the mark] by the public generally’,[28] namely amongst a significant or substantial number of persons.[29] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[30]
[28] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).
[29] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ).
[30] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).
71. Reputation is not a factor that is assumed and must be established by the Opponent as a matter of fact[31] as at the Relevant Date.
[31] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).
72. There are a variety of ways the reputation of a trade mark may be established, including by demonstrating that a significant number of people have been exposed to the trade mark,[32] or providing evidence of high volume of sales,[33] advertising expenditure or other promotion of goods or services to which the trade mark applies.[34]
[32] Ibid [118].
[33] McCormick (n 15) [86].
[34] Ibid.
73. In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:
The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[35]
[35] [2019] FCA 923, [83] (O’Bryan J).
74. In its SGP, the Opponent claims that the Trade Marks are similar to the Opponent’s Marks in which the Opponent has acquired a significant reputation and that are well known in Australia for an extensive range of Goods and Services.
75. It is not sufficient for the Opponent to simply establish a reputation in the Opponent’s Marks. There must also be a likelihood of deception or confusion as a result of use of the Trade Marks by the Applicant for the Relevant Class 24 Goods as a result of the Opponent’s reputation.
76. The Opponent first used the mark G’DAY in October 2017, some 10 months before the Relevant Date, when it launched its quarterly magazine G’DAY MAGAZINE. The Opponent’s G’DAY REWARDS program was launched in February 2018, only 6 months before the Relevant date. Although the Opponent is the largest provider of Park Services in Australia and has promoted the Opponent’s Marks on its website since their adoption, I consider that the Opponent would have only acquired a limited reputation in the Opponent’s Marks before the Relevant Date and that any reputation was limited to Park Services. I am satisfied that if the Opponent had a reputation in the Opponent’s Marks for Park Services at the Relevant Date, that reputation was not so extensive that use of the Trade Marks by the Applicant for the Relevant Class 24 Goods would be likely to deceive or cause confusion.
77. The s 60 ground of opposition is not established with respect to the Relevant Class 24 Goods.
Decision and Costs
78. In Apple Inc. v Registrar of Trade Marks, Yates J stated that:
My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[36]
[36] [2014] FCA 1304, [232].
79. In circumstances where an opposition has been established in respect of some, but not all, of the goods or services under consideration, the Registrar may proceed to reject the application in its entirety, under the principles outlined above. However, the Registrar also has a discretion to offer an amendment allowing an applicant to amend the application to remove goods or services for which a ground of opposition has been established.
80. I offered the Applicant the opportunity to amend the Applicant’s Goods and Services to:
Class 24: Bath linen; towels; bean bag covers; blankets; bed clothes and coverings; bed linen; bedding; bedroom textile fabrics; blankets, covers and sheets for cots; mattress covers; coverings for walls and windows; curtains;
mosquito nets;pyjama cases; soft furnishings; washcloths; wrapping cloths
Class 25: Clothing, footwear, headgear; bibs for babies; clothing for babies; bootees; bathrobes; clothing for children; footwear for infants; pyjamas; dressing gowns; raincoats; hats; rain hats; sun hats; rash vests; swimwear; romper suits; slippers; socks; t-shirts; wraps
Class 35: Retail and wholesale sales services; online retail services; mail order sales services; retail and wholesale sales of clothing and accessories for babies and children
81. The Applicant declined to make the proposed amendment. Accordingly, the Opponent has established a ground of opposition under s 44 and I refuse to register trade mark numbers 1959260 and 1959261. Noting the Appeal period, this refusal will be recorded one month from the date of this decision unless the Registrar of Trade Marks is served with a notice of appeal. If the Registrar is served with a notice of appeal, the disposition of the Applications should be in accordance with the Court’s order or direction.
82. Both parties have requested an award of costs. As costs generally follow the event, with respect to trade mark number 1959260, I award costs against the Applicant under s221 in the applicable amounts set out in Schedule 8 of the Regulations. In respect of trade mark number 1959261, I award reduced costs against the Applicant in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[37]
[37] [2001] ATMO 78 (Hearing Officer T. Williams).
Tracey Berger
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
23 January 2023Annexure A
(‘Opponent’s Marks’)
| Trade Mark # | Trade Mark | Goods/Services | Status/Endorsements |
| 1896646 | G’DAY | Class 16: Printed publications including educational and training materials; newsletters; books; booklets; magazines Class 35: Business management assistance; business appraisals; business consultancy; business management of hotels and other forms of accommodation; consultancy services relating to recruitment, selection and management of personnel; human resource management services being selection and monitoring performance of candidates and appointees to own, manage and/or operate hotels, holiday parks, caravan parks and other forms of accommodation; compilation of information into computer databases; organisation of trade fairs for commercial or advertising purposes Class 41: Educational and training services namely provision of training and education services for owners, managers and operators of hotels, holiday parks, caravan parks and other forms of accommodation; arranging and conducting of educational courses, conferences, seminars and workshops for owners, managers and operators of hotels, holiday parks, caravan parks and other forms of accommodation; holiday camp and park services; dissemination of educational and training material for owners, managers and operators of hotels, holiday parks, caravan parks and other forms of accommodation; education information; vocational guidance (education or training advice) for owners, managers and operators of hotels, holiday parks, caravan parks and other forms of accommodation; recreation information; instruction services; practical training (demonstration); educational assessment and training of candidates and appointees to own, manage and/or operate hotels, holiday parks, caravan parks and other forms of accommodation; organisation, management and provision of cultural and sporting events; social club services; theme park services Class 43: Provision of temporary accommodation; holiday park accommodation services; holiday camp services; provision of camp ground facilities and accommodation including tourist accommodation; caravan parks; rental of comping sites; resort, hotel and other temporary accommodation; accommodation reservation services; provision of food and beverages including restaurant, bar, café, canteen and catering services; agency services for reservation of accommodation; arrangement of accommodation for tourists; information services relating to the provision of temporary accommodation; provision of conference facilities | Registered Provisions of paragraph s 44(3)(b) and/or Reg 4.15A(3)(b) applied |
| 1896659 | |||
| 2069225 | G’DAY | Class 35: Retailing and wholesaling of food namely sandwiches, bakery products, coffee and tea-based beverages, snack chips, confectionary products, ice-cream, condiments, cereal, cooking oil, alcoholic beverages, non-alcoholic beverages, dairy products, fruit, vegetables, eggs, nuts, baking products, pasta and bread; retailing and wholesaling of clothing and campers requisites Class 41: Providing online electronic publications excluding in-flight magazines; publication of texts, management and provision of entertainment events; organization, management and provision of social events; entertainment event booking and reservation services provided in relation to a customer loyalty scheme; club entertainment services; holiday camp services (entertainment) | Pending |
| 2069226 | Class 35: Retailing and wholesaling of food, clothing and campers requisites Class 41: Providing online electronic publications excluding in-flight magazines; publication of texts; management and provision of entertainment events; organisation, management and provision of social events; entertainment event booking and reservation services provided in relation to a customer loyalty scheme; club entertainment services; holiday camp services (entertainment) | Pending | |
| 1896651 | G’DAY REWARDS | Class 16: Printed publications including educational and training materials; newsletters; books; booklets; magazines Class 35: Advertising and promotional services; business management assistance; business appraisals; business consultancy; business management of hotels and other forms of accommodation; consultancy services relating to recruitment, selection and management of personnel; human resource management services being the selection and monitoring performance of candidates and appointees to own, manage and/or operate hotels, holiday parks, caravan parks and other forms of accommodation; compilation of information into computer databases; direct mail advertising; modelling for advertising or sales promotion; organisation of trade fairs for commercial or advertising purposes; retailing and wholesaling of food, clothing and campers requisites; preparation of publicity and advertising materials; dissemination of advertising materials; publication of publicity texts; administration of customer loyalty programs; organisation and management of discount card loyalty schemes Class 41: Educational and training services namely provision of training and education services for owners, managers and operators of hotels, holiday parks, caravan parks and other forms of accommodation; arranging and conducting of educational courses, conferences, seminars and workshops for owners, managers and operators of hotels, holiday parks, caravan parks and other forms of accommodation; holiday camp and park services; dissemination of educational and training material for owners, managers and operators of hotels, holiday parks, caravan parks and other forms of accommodation; education information; vocational guidance (education or training advice) for owners, managers and operators of hotels, holiday parks, caravan parks and other forms of accommodation; recreation information; instruction services; practical training (demonstration); providing online electronic publications excluding in-flight magazines; publication of texts; education assessment and training of candidates and appointees to own, manage and/or operate hotels, holiday parks, caravan parks and other forms of accommodation; organisation, management and provision of entertainment, cultural and sporting events; organisation, management and provision of social events; entertainment, cultural or sporting event booking and reservation services provided in relation to a customer loyalty scheme; social club services; club entertainment services; theme park services; holiday camp services (entertainment) Class 43: Provision of temporary accommodation; holiday park accommodation services; holiday camp services; provision of campground facilities and accommodation including tourist accommodation; caravan parks; rental of camping sites; resort, hotel and other temporary accommodation; accommodation reservation services; provision of food and beverages including restaurant, bar, cafe, canteen and catering services; agency services for reservation of accommodation; arrangement of accommodation for tourists; information services relating to the provision of temporary accommodation; provision of conference facilities; temporary accommodation (hotels, motels, resorts) booking and reservation services provided in relation to a customer loyalty scheme | Registered Provisions of paragraph s 44(3)(b) and/or Reg 4.15A(3)(b) applied |
| 1896667 | |||
| 1896654 | G’DAY MAGAZINE | ||
| 1896669 |
0
18
4