Eres SAS v Michael Hilellis

[2024] ATMO 34

TRADE MARKS ACT 1995

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

Re:Opposition by ERES SAS to registration of trade mark application number 2271249 (class 25) – ARES – in the name of Michael Hilellis

Delegate:

Debrett Lyons

Representation:

Opponent: Spruson & Ferguson

Applicant: W3IP Law Pty Ltd

Decision:

2024 ATMO 34

Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 42(b), 44, 60 and 62A – s 44 established – trade mark refused registration

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by ERES SAS (‘Opponent’) to registration of the following trade mark:

   Trade mark no:  2271249

   Trade mark:  ARES (‘Trade Mark’)

   Applicant:  Michael Hilellis (‘Applicant’)

   Filing date:  19 May 2022

   Specification:  Class 25 – Clothing for gymnastics; Clothing for swimming; Clothing for sports; Clothing for babies; Clothing; Clothing of fur; Collars (clothing); Clothing for surfing; Dance clothing; Pants (clothing); Wraps (clothing); Sports clothing (other than golf gloves); Stuff jackets (clothing); Women's clothing; Ready-made clothing; Apparel (clothing, footwear, headgear); Aprons (clothing); Arm warmers (clothing); Articles of clothing for theatrical use; Articles of clothing made from wool; Boys' clothing; Athletic clothing; Casual clothing; Clothes; Jerseys (clothing); Jackets (clothing); Girl's clothing; Ready made linings for clothing; Rainproof clothing; Pockets for clothing; Thermal clothing; Tennis clothing; Tights; Half length tights; Footless tights; Athletics shorts; Bermuda shorts; Boxer shorts; Denim shorts; Gym shorts; Hats; Hat frames (skeletons); Fur hats; Bobble hats; Beach hats; Rain hats (‘Applicant’s Goods’)

2. The trade mark application was examined as required by s 31 of the Act. Acceptance of the application was published on 20 October 2022.

3. The Opponent filed a Notice of Intention to Oppose followed by a Statement of Grounds and Particulars (‘SGP’) after which the Applicant filed a Notice of Intention to Defend.

4. The Opponent filed the declaration of Danielle Spath made          9 June 2023 with annexures (‘Spath’).  The Applicant relied upon his own declaration made on 25 August 2023 with annexures.            

5. Once the time allowed for filing evidence ended, the parties requested a hearing by written submissions.  Neither party filed written submissions.  The matter has been allocated to me, a delegate of the Registrar of Trade Marks, to decide based on the material just described.

   Grounds of opposition, onus, and relevant date

6. In the SGP, the Opponent nominated grounds under ss 42(b), 44, 58, 58A, 60 and 62A of the Act. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the civil standard of the balance of probabilities[2] and the date at which the rights of the parties are to be determined is 19 May 2022 (‘Relevant Date’) being both the filing date and priority date of the Trade Mark.

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   Section 44

7. Section 44 of the Act relevantly provides:

   (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.

8. To succeed under this ground of opposition the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, in respect of similar goods or closely related services.

9. In the SGP, the Opponent identifies the following trade marks as the basis for this ground of opposition:

trade mark no.	trade mark	priority date	specification
760015	ERES	17 April 1998	Class 25: Articles of clothing for men and boys; articles of clothing for women and girls but not including tailored articles of outer clothing; swimwear, bathing suits; beachwear; leisurewear; windbreakers and lightweight jackets; lingerie; pants; shirts; dresses; blouses; sweaters; jumpsuits; shorts; bathrobes; clothing of terrycloth; headgear and footwear
1160770	9 February 2007	10.   Class 18: Bags in this class; beach bags 11.   Class 24: Towels in this class; beach towels
1732641	19 December 2014	12.   Class 35: Retail and wholesale services and department store retail services connected with the sale of leather and imitation leather, skins and hides, bags, handbags, beach bags, trunks and travelling bags, articles of luggage, wallets, purses, card cases, key holders, vanity cases, carrying cases, cases made of leather, cloth pouches and sleeves, leather belts, umbrellas and parasols, walking sticks, whips, harness and saddlery, clothing, footwear, headgear, swimwear, bathing suits, beach wear, leisure wear, windbreakers, coats, jackets, lingerie, pants, trousers, shirts, dresses, skirts, blouses, sweaters, jump suits, shorts, belts, bathrobes, gloves, scarves, headbands, clothing of terrycloth, sunglasses, towels, beach towels, beach mats, rugs, carpets, blankets, covers, quilts, cushions, pillows, candles, preparations for application to or care of the skin, scalp, hair or nails, soaps, perfumes, essential oils, cosmetics, non-medicated toilet preparations; information and advisory services relating to the aforesaid; advertising and promotion services relating to these goods; sales promotion services; mail order retail services and electronic shopping retail services connected with leather and imitation leather, skins and hides, bags, handbags, beach bags, trunks and travelling bags, articles of luggage, wallets, purses, card cases, key holders, vanity cases, carrying cases, cases made of leather, cloth pouches and sleeves, leather belts, umbrellas and parasols, windbreaks and walking sticks, whips, harness and saddlery, clothing, footwear, headgear, swimwear, bathing suits, beach wear, leisure wear, windbreakers, coats, jackets, lingerie, pants, trousers, shirts, dresses, skirts, blouses, sweaters, jump suits, shorts, belts, bathrobes, gloves, scarves, headbands, clothing of terrycloth, sunglasses, towels, beach towels, beach mats, rugs, carpets, blankets, covers, quilts, cushions, pillows, candles, preparations for application to or care of the skin, scalp, hair or nails, soaps, perfumes, essential oils, cosmetics, non-medicated toilet preparations

1. The SGP states that the Opponent is the owner of these registrations which it says are:

   “… for trade marks that are substantially identical or deceptively similar to the Applicant’s Trade Mark, pre-date the filing of the Applicant’s Trade Mark and cover the same goods, similar services, or closely related services to those covered under the Applicant’s Trade Mark.”

2. I make three observations at this point. First, trade mark 1732641 carries an endorsement that “eres”, means “you are” to French speakers. Secondly, trade mark 1160770 is not, as the SGP states, for class 25 goods but it is for the goods properly identified above in classes 18 and 24. Thirdly, it is not clear that the Opponent is the owner of these registrations. The Register shows the owner as, simply, “Eres”. The Register shows the address of this entity as being: 166 Boulevard Voltaire, F-75011 Paris, France. This is the same address given for the Opponent in documents received by the Office in these proceedings. The designation SAS (Société par Actions simplifiée) is an indicator of incorporation under French law. It might reasonably be inferred that the SAS was unintentionally omitted from the registered trade marks but s 44 does not require that the Opponent be the owner of the earlier mark(s) relied upon and so the question of ownership is not crucial.

3. From the information set out above, it is evident that the registered marks relied upon all have a priority date earlier than the Relevant Date.  For practical purposes, I can concentrate only on trade mark 760015 because there is no distracting stylisation of the registered mark and the Applicant’s Goods are similar to the class 25 goods for which trade mark 760015 is registered.[3]  The remaining question is whether ARES and ERES are either substantially identical or deceptively similar.

   [3] See s 14(1) of the Act.

4. The test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (“Shell”):

   they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[4]

   [4] [1963] HCA 66, [12] (‘Shell’) (Windeyer J).

5. In my opinion, a total impression of resemblance does not emerge from the required comparison.  As such, I do not consider the compared marks to be substantially identical.

6. Section 10 of the Act defines a ‘deceptively similar’ trade mark as:

   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.

7. In Shell, Windeyer J provided the following insights on deceptive similarity:

   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 [trade mark].[5]

   [5] Ibid [13].

8. The question to be considered is whether the similarity gives rise to a real and tangible danger of deception or confusion. In Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) O’Bryan J stated:

   That question is not answered simply by observing the degree of similarity (in the sense of the number of common words in the marks), but by considering the effect of the similarity. Attention must be given to the impression produced by the entirety of the marks, recognising that one word or feature of a mark can be more striking and memorable than another.[6]

   [6] [2021] FCA 328, [245].

9. Spath is an attorney employed by the Opponent’s representatives.  Her declaration is made on the basis of her own knowledge and on “information provided … by Gaylor Felix, Head of Legal Affairs of the Opponent”.   Spath declares that that the Opponent is a French company that was founded in 1968 by Irene Leroux as a small swimsuit boutique in Paris which was in 1996 acquired by French fashion house, Chanel Limited, which has caused the Opponent to open more than thirty boutiques in Paris, London, Cannes, Monaco, Saint Tropex, Aix-en-Provence, Bordeaux, Rome, Milan, Capri, Porto Cervo, Madrid, Marbella, Genera, Brussels, Los Angeles, Palm Beach, East Hampton, Las Vegas, Toronto and Melbourne.

10. The Applicant declares that he is a sole trader and has done business under the Trade Mark since July 2020.  He provides a confidential declaration.  The business supplies sports and athletic clothing under the Trade Mark.  Exhibited to his declaration is a copy of the Applicant’s ABN for ARES ACTIVEWEAR registered since 27 July 2020.  The Applicant also references his existing trade mark registration numbers 2099348, 2105189 and 2182635, all in class 25, the earliest of which is 2099348, registered from 9 June 2020, for the mark appearing below:

11. The Applicant declares that he “chose the [Trade Mark] because ARES is a Greek God of war and one of the twelve major Greek gods who lived on Mount Olympus. … I was inspired by Greek mythology to select the name of a Greek god as I am an Australian born Greek …”.  He goes on to submit that:

    The Trade Mark ARES is not identical or deceptively similar to the ERES mark because the marks clearly do not look the same and do not sound the same and, in my view, a person of ordinary intelligence and memory seeing the marks would not be confused as to the source of the products.

    The kind of customers who buy clothing are discerning and deliberate in their choice and aware of the wider market for clothing with labels. Particularly, the Opponent’s mark ERES is known as a prestigious label for swimwear, French lace underwear and a limited range of activewear. Their products are expensive and appeal to the luxury consumer market who are sophisticated. Luxury consumers are not likely to make mistakes when purchasing a luxury label item and are also unlikely to purchase such goods as an impulse buy. I do not believe that consumers in this market would easily confuse luxury label ERES goods with other goods and would hold such prestigious items up to a closer inspection.

    In my view, the … Trade Mark itself bears no deceptive similarity to ERES having regard to the essential features of the mark and the impression left by the Opposed Mark. Each mark is quite distinct not only visually but also phonetically and the “idea” of the Opposed Mark is quite different.

    I consider that the Opponent’s evidence has failed to show that its trade mark for ERES is substantially identical or deceptively similar to the Opposed Mark or that the Opposed Mark contains any of the essential features of ERES Mark so there is a real risk that the ordinary consumer would be led to believe that the sets of products sold under the trade marks emanate from the same trade source.

12. The compared marks are composed of single, four letter, words.  Neither is an invented word, Ares being, as the Applicant correctly states, a god in Greek mythology, and eres being a participle in French.  In my assessment, neither term is likely to be well understood by the Australian public.  The French term perhaps not at all, and the Trade Mark most likely being properly understood by a percentage of the population and otherwise just as likely to be misunderstood as the Zodiac sign, Aries.  Either way, the Trade Mark would be pronounced as Aires and, in my assessment, the bulk of the public not knowing the French word (and unfamiliar with the luxury brand) would construe ERES in accordance with the habits of Australian, English speakers, as either “airees” or “aires”.  Thus, the compared marks would be pronounced the same, or almost the same, way.

13. The submission as to how the Opponent’s goods sit in the clothing market is, for the purposes of s 44, largely irrelevant for the good reason that there is no restriction on how either the Opponent or the Applicant might now or in the future use their marks as circumscribed by the goods specifications which are, for all intents and purposes, identical. In other words, the reference points for possible confusion under s 44 are the Applicant’s Goods and the class 25 specification of trade mark 760015, not how the goods might actually be bought or sold.[7]

    [7] See, for example, Berlei Hestia Industries Ltd v The Bali Company Co Inc (1973) 129 CLR 353 at 362 (Barwick C.j., McTiernan, Stephen and Mason JJ); Crazy Ron’s Communications v Mobileworld Communications [2004] FCAFC 196; (2004) 209 ALR 1, [77] (Moore, Sackville and Emmett JJ);

14. Section 7(2) of the Act states that “any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark” and in the case of Thorpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited, the Court said that:

    While Windeyer J in Shell compared the visual and not aural features, that was in the context of the marks there under consideration and does not assist Enterprises in precluding consideration of the aural characteristics. The requirement of substantial identity recognises that the identity is not absolute but, as is clear from Shell, the question involves a consideration of the essential elements of the mark … It is not limited to appearance. In considering the total impression, both the visual and aural aspects are relevant. Further I note that s 7(2) of the Act specifically provides that aural representation is a use of the mark.[8]

    [8] Thorpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901, [58] (Bennet J); see also, Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658.

15. I have taken account of the difference in the initial letter of each mark, a distinguishing feature which is sometimes critical, but having weighed that against the nature of the goods and the probability that the marks would be spoken and heard identically, I am satisfied that there is a real and tangible danger of deception or confusion. I find that the compared marks are deceptively similar and so find that the ground of opposition under s 44 of the Act has been established.

    Decision

16. Section 55 of the Act relevantly provides:

    (1) Unless subsection (3) applies to the proceedings, 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.

17. The Opponent has established a ground of opposition. Accordingly, I refuse to register trade mark number 2271249.  If the Registrar is served with a notice of appeal I direct that the disposition of the application should otherwise be in accordance with the Court’s order or direction.

    Costs

18. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Applicant in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

    Debrett Lyons

    Hearing Officer

    Oppositions and Hearings

    Trade Marks and Designs

    23 February 2024