Empire Brands Pty Ltd

[2010] ATMO 129

TRADE MARKS ACT 1995

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

Re:Trade mark application numbers 1367550(25), 1367551(25) - QUICK DRY and devices- in the name of EMPIRE BRANDS PTY LTD.

Delegate:

Claudia Murray

Representation:

Applicant: Ms Kerry Newcomb, Trade Marks Attorney, Brisbane.

Decision:

2010 ATMO 129

Section 33 – subsection 44(1) established – applications rejected.

Background

1.     Empire Brands Pty Ltd (‘the applicant’) filed trade mark application numbers 1367550 and 1367551 on 20 June 2010, for the word and device trade marks:

1367550 1367551

2.     The applications were filed in class 25 of the International (Nice) Classification of Goods and Services, in respect of the following goods: ‘Clothing; footwear; headgear for wear’.

3. During examination a ground for rejection under subsection 44(1) of the Trade Marks Act 1995 (‘the Act’) was raised against both applications. Two prior trade mark applications were cited, numbers 1354166 and 1354167 (now registered), owned by Kathmandu Pty Limited. Other relevant details of these citations are as follows:

TM No.	Trade Mark	Filing Date	Class/Goods
1354166	KATHMANDU QUICK DRY	1 April 2010	25: Clothing, headgear and footwear
1354167	1 April 2010	25: Clothing, headgear and footwear

4.     The examiner’s first report invited the applicant to consider the exceptions allowed under subsections 44(3) and (4), whereby the provision of evidence of prior use, honest concurrent use and/or other circumstances might overcome the ground of rejection. The applicant did not take up these suggestions in its response and a second report was issued maintaining the ground for rejection in respect of both applications.

Hearing

5.     The applicant then requested to be heard upon the matter. The hearing was held in Brisbane before me, as delegate of the Registrar of Trade Marks, on 8 September 2010. Ms Kerry Newcomb, Trade Mark Attorney, represented the applicant in person.

Ground of rejection

Section 44 - Identical etc. trade marks

6. Subsection 44(1), applied to the present circumstances, provides that an application for registration must be rejected if the trade mark is substantially identical with, or deceptively similar to, another person’s trade mark application or registration that has an earlier priority date, and covers goods that are similar to the applicant’s goods. The definition of ‘deceptively similar’ in section 10 is that ‘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’. Section 14 defines ‘similar goods’ as goods which are ‘the same’, or ‘of the same description’. In this case, the goods of the subject applications and those covered by the cited trade marks may be fairly described as the same.

7.     Subsections 44(3) and (4) provide the following important exceptions to subsections 44(1) and (2):

(3)      If the Registrar in either case is satisfied:

(a)      that there has been honest concurrent use of the 2 trade marks; or

(b)      that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:    For limitations see section 6.

(4)      If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a)      beginning before the priority date for the registration of the other trade mark in respect of:

(i)          the similar goods or closely related services; or

(ii)         the similar services or closely related goods; and

(b)      ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2: For predecessor in title see section 6.

Note 3: For priority date see section 12.

Discussion

8.     Ms Newcomb placed great emphasis at the hearing upon the ‘purely descriptive’ nature of the words QUICK DRY, both in her client’s applications and also the cited trade marks. She also drew my attention to the device components of both her client’s trade marks, which she submitted could be separately registered as logo trade marks, as they were ‘inherently distinctive and capable of functioning as trade marks themselves in isolation’. Finally, Ms Newcomb argued that the presence of the well-known word ‘Kathmandu’ in both the cited trade marks ‘strongly assists’ them to be distinguished from the applicant’s trade marks, in a similar manner to that described by the Federal Court in Woolworths Ltd v Registrar of Trade Marks[1] (the Metro case) and more recently in Mars Australia Pty Ltd v Sweet Rewards Pty Ltd.[2]

[1] [1998] 1268 FCA.

[2] [2009] FCAFC 174 (11 December 2009).

‘Notoriety’ of part of a trade mark

9.     I have carefully considered Ms Newcomb’s arguments. However, I cannot agree with her contention that, when applied to the same goods in class 25, there are sufficient differences between the relevant trade marks to render them visually and aurally dissimilar. Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd,[3] say of deceptive similarity:

In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.

[3] (1937) 58 CLR 641, at 658.

10.   Approaching the comparison of the relevant trade marks in this way, it is necessary to estimate the impression made upon the minds of prospective customers by the two cited trade marks, both of which give prominence to the words QUICK DRY. Indeed, as shown above, in trade mark number 1354167 the additional words BY KATHMANDU are barely apparent. Ms Newcomb argued, however, that the word KATHMANDU appearing in the cited trade marks had a level of distinguishing notoriety which while not, as she conceded, in the same ‘notoriety league’ as WOOLWORTHS[4] or MALTESERS[5], should still be taken into account. She submitted:

While, this [latter case] was a case pertaining to "deceptive similarity" in relation to trade mark infringement (and passing off/misleading and deceptive conduct) and of course, KATHMANDU is also not quite in the same fame league as MALTESERS, I would suggest that this principle should be considered at least to some degree, in these particular circumstances. As mentioned above, KATHMANDU is an independently registered mark in fact there are ten marks, currently on the Register with seven being registered. In the Metro case, the fact that WOOLWORTHS was a well known mark assisted in distinguishing the marks. I would suggest that at least in these particular circumstances, that is in consideration of the Australian market and registration of the Applicant's mark, in the face of these cited marks, that weight should in fact be given to the distinctive and well known nature of the prominent feature of these citations namely, the word KATHMANDU (and BY KATHMANDU). These particular facts together with the fact that the only nexus QUICK DRY is not really trade mark material (and consequently, I would suggest for the sake of comparison should be almost discounted) I would submit, should be taken into consideration when comparing the cited marks and the Applicant's mark. (Emphasis in original)

[4] Woolworths Ltd v Registrar of Trade Marks, op. cit.

[5] Mars Australia Pty Ltd v Sweet Rewards Pty Ltd, op. cit.

11.   In C A Henschke & Co v Rosemount Estates Pty Ltd,[6] the Full Federal Court said of the findings of notoriety and deceptive similarity in the Metro case:

[The Woolworths Metro case suggests a proposition] that, in assessing the nature of a consumer's imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration.

[6] [2000] FCA 1539 (31 October 2000), para 52.

12.   The Full Court’s observations in the Henschke case make it clear that notoriety in a trade mark should be placed appropriately in context as a relevant consideration amongst others to be addressed under section 44. Further, it envisages notoriety as rising to an ubiquitous level of familiarity amongst consumers in general. The circumstances of the cases cited by Ms Newcomb were different from that which exists here, as the owners of both ‘notorious’ trade marks had provided evidence to the court to that effect. By contrast, and unsurprisingly, the applicant was not in a position to provide convincing evidence demonstrating that the word KATHMANDU has anything like the overwhelming level of familiarity to the Australian public that is enjoyed (according to the courts) by WOOLWORTHS and MALTESERS. I have not been persuaded that the notoriety of the word KATHMANDU is a relevant consideration in this matter.

Device in a trade mark that is ‘an illustration of a word’

13.   Turning to Ms Newcomb’s observations upon the presence of devices in both the applicant’s trade marks, it is interesting to note that in E. & J. Gallo Winery v Lion Nathan Australia Pty Limited,[7] the High Court recently considered the significance of use of the word BAREFOOT with a footprint device that was ‘an illustration of the word’. The majority said at page 69:

The addition of the device to the registered trade mark is not a feature which separately distinguishes the goods or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade mark with the device by reference to the word BAREFOOT. The device is an illustration of the word. The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity of the trade mark in the word alone.

[7] [2010] HCA 15 (19 May 2010).

14.   I agree that, when separately considered, both devices in the applicant’s marks are prominent and quite striking to the eye. Their potential capacity to distinguish is lost, however, as they are represented in the trade marks under consideration here. The purpose each serves in the composite trade marks is merely that of illustration and enhancement of the meaning of the words QUICK DRY. Customers would quite naturally use those words and only those words to verbally identify the trade marks. This, in turn, would lead to customers mistaking them for the cited trade marks, both of which also prominently feature those words.

Trade mark having a ‘descriptive tinge’

15.   Finally, the findings of the Full Federal Court, in Sports Cafe Ltd v Registrar of Trade Marks[8] are relevant to Ms Newcomb’s submissions regarding the Courts being averse to allowing one trader to acquire a monopoly in a trade mark with a ‘descriptive tinge’[9]. The circumstances of that case are similar to those at play here. Wilcox, Heerey and Lindgren JJ commented at page 5 that:

The fact that two marks convey a common idea becomes relevant only if the marks themselves look and sound alike. Commonality of idea might then tip the balance in favour of a finding that the likeness is deceptive.

[8] [1998] FCA 1614 (18 December 1998).

[9] “Ucolite” case, 48 RPC 477 at p 486.

16.   They then found that a similarity of look, sound and meaning between the following trade marks made them deceptively similar, in the context of similar services, despite the clearly ‘descriptive tinge’ present in the common words SPORTS CAFE:

THE SPORTS CAFE

17.   Earlier precedent is provided by cases such as Bathox Bathsalts Pty Ltd v R & C Products Pty Ltd.[10] In that case, Assistant Registrar Susan Farquhar found the trade marks depicted below, applied to liquid detergents for personal use and other similar goods in classes 3 and 5, to be deceptively similar to each other. This was despite exclusive use of the words BATH TIME being disclaimed in the later trade marks, as was permissible under the Trade Marks Act 1955:

LORELENE BATH TIME  

[10] [1991] ATMO 28; 21 IPR 547; AIPC 90-816 (3 May 1991).

18.   Ms Farquhar observed at page 554:

The evidence relied on by the applicant falls short of showing the words BATH TIME to be common to the trade. However, even if the applicant had succeeded in demonstrating that the words were common to the trade this would not have been enough to enable me to disregard those words entirely in assessing the possibility of conflict between the marks: Broadhead's Application (1950) 67 RPC 209.

…Although BATH TIME has considerable descriptive connotation when used on goods such as soaps or detergents for use when bathing, or on medicated bath preparations, I do not believe the combination is a description so apt that it could not be perceived by potential purchasers as a trade mark. The likelihood that within the subject marks these words will be seen as having trade mark significance and that they might be the basis for recollection of these marks is increased, I believe, by their prominence. The relevant goods are not ones the purchase of which would be undertaken with particular care and my opinion is that people aware of the opponent's mark may believe the words BATH TIME in the applicant's mark indicate goods from the same source. I conclude that the applicant's trade marks are deceptively similar to the opponent's trade mark B285539.

19.   In Broadhead's Application, referred to by the Assistant Registrar, it was held, finding the trade marks ‘Alka-vescent’ and ‘Alka-seltzer’ deceptively similar in relation to effervescent seltzer tablets, that:

[W]here you get a common denominator, you must, in looking at the competing formulae, pay much more regard to the parts of the formulae that are not common – although it does not flow from that…that you must treat the words as though the common part was not there at all.

20.   Then, in noting the differences between that case and an earlier case which distinguished ‘Pepsi-Cola’ from ‘Coca-Cola’,[11] the UK Court of Appeal made a further observation about comparisons to be drawn between trade marks that is just as relevant today as it was when it was made sixty years ago:

…[T]hat only emphasises after all what Lord Russell said, what the Assistant-Comptroller said, what Roxburgh, J., said, and what everyone from time to time says; and, although it is obvious, it is perhaps worth repeating, that each case has to be decided on its own particular and peculiar circumstances.[12]

[11] Coca-Cola-Coy of Canada v. Pepsi-Cola Coy of Canada (1942) 59 R.P.C., p. 127.

[12] Broadhead's Application, op. cit. at 215.

21.   To return to the comparison of trade marks at hand, I find that, despite the presence of the word KATHMANDU in the cited trade marks and the presence of devices in the applicant’s trade marks, these differences do not outweigh the similarity between them. This similarity comes from a shared ‘identity’ (reflected in look, sound and ‘commonality of idea’) deriving from the words QUICK DRY. While the trade marks at issue are not substantially identical, the fact that the public would likely identify the applicant’s trade marks by reference to the same very prominent words which it would also use to identify the cited trade marks means that they are certainly deceptively similar. For the purposes of section 44, this finding exists quite separately from the indisputable observation that the words common to all four trade marks have rather more than a ‘tinge’ of descriptiveness about them. It follows that a ground of rejection in terms of section 44 applies to the subject trade marks, based on prior trade mark numbers 1354166 and 1354167.

22.   I have already allowed some time after the hearing and prior to making this decision for the applicant to consider whether it might still wish to pursue those options in terms of subsections 44(3) or (4) which I have discussed above. However, I received no correspondence from the applicant and the final date I set for its response has now passed.

Decision

23. Section 33 of the Act provides:

33  Application accepted or rejected

(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 under this Act for rejecting it.

Note:    For this Act see section 6.

(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 under this Act for rejecting it;

the Registrar must reject the application.

Note:    For this Act see section 6.

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

Note:    For applicant see section 6.

24. The applicant has had an opportunity to be heard on this matter and, at the end of the process, I am satisfied there is a ground under section 44 of the Act for rejecting its applications. Therefore, in accordance with subsection 33(3), I now reject trade mark application numbers 1367550 and 1367551.

Claudia Murray

Hearing Officer

Trade Marks Hearings

22 December 2010