Eveden Inc v P & Y Halas Pty Limited
[2015] ATMO 116
•2 December 2015
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Eveden Inc to registration of trade mark application 1578165 (25) - SEAFOLLY GODDESS - in the name of P & Y Halas Pty Ltd.
| Delegate: | Nicole Worth |
| Representation: | Opponent: Siobhan Ryan of Counsel, instructed by Davies Collison Cave Patent & Trade Mark Attorneys Applicant: Warwick Rothnie of Counsel, instructed by K&L Gates law firm |
| Decision: | 2015 ATMO 116 Section 52 opposition – ss 44 and 60 pursued – goods are of the same description – trade marks are deceptively similar – section 44 established – registration refused. |
Background
This is a decision pursuant to an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) by Eveden Inc (‘the Opponent’) to registration of a trade mark in the name of P & Y Halas Pty Ltd (‘the Applicant’), which is detailed below.
Trade Mark: SEAFOLLY GODDESS (‘the Trade Mark’)
Application No.: 1578165
Filing Date: 3 September 2013 (also referred to as the priority date)
Goods: Swimwear
The application was examined as required by s 31 of the Act. No grounds for rejection or other objections were raised and it was advertised as accepted for possible registration on 23 January 2014.
The Opponent filed a Notice of Intention to Oppose registration of the Trade Mark on 23 March 2014 and a Statement of Grounds and Particulars on 23 April 2014. The grounds of opposition particularised were those under ss 42(b), 44 and 60 of the Act.
Thereafter the parties filed evidence to support their cases (described in more detail below), after which they requested to be heard.
I heard the matter, as a delegate of the Registrar of Trade Marks, in Melbourne on 17 September 2015. Siobhan Ryan of Counsel, instructed by Adam Sears and Cheryl Hrvoj of Davies Collison Cave Patent & Trade Mark Attorneys, represented the Opponent. Warwick Rothnie of Counsel, instructed by Jonathan Feder and Simon Casinader of K&L Gates law firm, represented the Applicant.
Evidence
The evidence filed in this matter comprises:
Evidence in support:
· A declaration by Cheryl Hrvoj, solicitor with Davies Collison Cave Patent & Trade Mark Attorneys, with exhibits CH-1 to CH-4, dated 3 September 2014;
· A declaration by Tracy Lewis, president of the Opponent, with confidential exhibits 1 to 2 and exhibits 3 to 6, dated 29 August 2014.
Evidence in answer:
· A statutory declaration by Anthony Frank Halas, a director of the Applicant, with annexures AFH-1 to confidential annexure AFH-15 (including confidential annexures AFH-4 and AFH-6), dated 28 November 2014;
· A statutory declaration by Amanda Mills, owner of the business Bra Town, dated 26 November 2014;
· A statutory declaration by Francesca Holdsworth, Swimwear Manager of Four Seasons Lingerie and Swimwear, dated 27 November 2014;
· A statutory declaration by Lois Beath Mitchell, owner of the store Michelle Ann Bras & Swimwear, dated 2 December 2014;
· A statutory declaration by Deborah Ann Lebsanft, Business Manager of the business Dezire Intimates, dated 4 December 2014; and
· A statutory declaration by Jonathan Ariel Feder, partner of K&L Gates law firm, with annexures JAF-1 and JAF-2, dated 1 December 2014.
Evidence in reply:
· A declaration by Cheryl Hrvoj with exhibits CH-5 to CH-15, dated 20 March 2015; and
· A declaration by Russell Eise Eisinga Zimmerman, executive director of the Australian Retailers Association, dated 13 March 2015.
Additional declaration on behalf of the Applicant:
· A statutory declaration by Anthony Frank Halas with annexure AFH-16, dated 15 June 2015.
Opponent’s evidence
The Opponent is an overseas entity with a sister company, Eveden Australia Pty Ltd, based in Victoria, Australia. It specialises in designing and manufacturing lingerie and swimwear under a suite of different trade marks including FAUVE, ELOMI, FREYA ACTIVE, FREYA, FANTASIE and GODDESS. Under the trade mark GODDESS it produces a line of lingerie targeted at full figured women, which appears to focus particularly on bras. It owns Australian trade mark registration 151672, details of which are:
Trade Mark: GODDESS
Priority date: 20 November 1958
Goods:Class 25: Brassieres, foundation garments and related ladies’ wearing apparel.
The Opponent has used its GODDESS trade mark in Australia ‘since at least 1998’. Figures for sales generated in Australia are provided for the years 2007 to 2014 which I would characterise as relatively modest, although not insignificant. The Opponent also provides an estimate of its market share of the total lingerie market, which I would characterise also as modest, and an estimate of the percentage of GODDESS branded products that account for that share of the market, which I would characterise as relatively low. Estimated marketing and advertising expenditure is provided for ‘last year’ (which I take to be 2013, the year prior to the date of declaration), which is a significant amount but is for all of the Opponent’s goods as it is declared not to be possible to separate the advertising expenditure for each of the Opponent’s brands. I note also that in light of the 3 September 2013 priority date of the opposed application expenditure after that date is in principle not relevant to my deliberations.
A list of retail outlets in Australia which stock the Opponent’s GODDESS branded goods is provided, of which there are 119. They appear to be mostly independent lingerie stores rather than large chain or department stores. The Opponent also identifies which of them sell swimwear in addition to lingerie, of which there are 37.
Examples of invoices, swing tags, a product brochure, a catalogue of one the Opponent’s stockists, and the pages from the Opponent’s website at <goddessbra.com> are exhibited, all of which show prominent use of the GODDESS trade mark.
Pages from the websites of two of the Opponent’s other brands, FANTASIE and FREYA, are exhibited. Under those trade marks the Opponent produces both lingerie and swimwear, both lines of which incorporate sizing for full figured women (although not necessarily exclusively for full figured women).
In addition to its own prior registration 151672, the Opponent identifies two other prior registrations in support of the ground under s 44.[1] They are:
[1] The Opponent identified a further prior registration in the Statement of Grounds and Particulars, registration no. 1283139, however did not pursue it at the hearing.
Trade Mark: GODDESS
Registration No.: 889663
Priority date: 19 September 2001
Goods:Class 25: Women’s clothing including tops, dresses, skirts, pants, shorts, and jackets, but excluding underwear and hosiery
and
Trade Mark: SEA GODDESS
Registration No.: 1331639
Priority date: 16 November 2009
Goods:Class 25: Clothing excluding underwear, lingerie, hosiery, footwear and headgear.
The Opponent’s Australian solicitor conducted marketplace research. In August 2014 she visited lingerie and swimwear outlets in Melbourne, as well as general women’s wear outlets, and took note of whether both intimate apparel and swimwear were available or promoted together. 15 such outlets were visited of which 9 sold both intimate apparel and swimwear, and of which three were the department stores Myer, David Jones and Target.
The Opponent’s Australian law firm also conducted internet research upon the search engine Google®. The internet research revealed that at the websites <victoriasecret.com>, <shop.cotton.com> and <brasandthings.com> both swimwear and lingerie were sold online, and that 9 companies (other than those at the preceding websites) sold both swimwear and lingerie by reference to the same trade mark. In a further declaration in evidence in reply the Opponent’s solicitor refers to another internet search she carried out using the search terms ‘swimwear’ and ‘lingerie’, which within the first 20 search results revealed 10 websites (not being any of those identified above) which sold swimwear and lingerie under the same brand including Nancy Ganz, Panache, Miraclesuit, Curvy Kate, Agent Provocateur and the Opponent’s own brands Fantasie, Freya and Elomi.
Evidence was adduced that appears intended to show that the words comprising the Trade Mark are likely to be separated in use and/or that GODDESS may be used in a manner wherein it was emphasized over SEAFOLLY. The Opponent reviewed the Applicant’s website at <seafolly.com.au>, on 9 June 2014, and located use of the trade marks SEAFOLLY GODDESS and SF GODDESS. In an internet search conducted on 12 December 2014 use of SF GODDESS was also found upon four third party retailer websites, including those for Myer and Westfield, and a subsequent search showed use of GODDESS as a sub-brand of SEAFOLLY upon the website of the American department store Selfridges. On 15 January 2015 the Opponent’s solicitor attended the Applicant’s Seafolly store in Melbourne Central and there purchased a bikini top and a bikini bottom which were offered for sale as separate items. The swing tags for these items describe them as ‘GoddessSeps’ (‘Seps’ being declared to be a common abbreviation for ‘Separates’), with ‘Seafolly’ appearing on a separate swing tag. The receipt for the items identify them as ‘Goddess’ items, with Seafolly being referenced separately as the name of the store.
The Opponent noted that the terminology used to describe lingerie was also used to describe swimwear, and provides definitions of such words as ‘bustier’, ‘moulded halter’, ‘bandeau bustier’, ‘balconette’ – all of which are used by the Applicant in its description of its swimwear.
A number of magazine articles about the Applicant are exhibited which state that the Applicant, having recently sold a controlling stake in itself to an entity associated with luxury brands conglomerate LMVH Moet Hennessy Louis Vuitton S.A., wishes to expand into new categories and become a ‘lifestyle brand’. Those categories include accessories, sleepwear, activewear, skincare and sun protection.
In response to supporting declarations filed by the Applicant from those in businesses that sell both lingerie and swimwear, who attest that they believe confusion unlikely, the Opponent adduces website extracts which show that the businesses of the supporting declarants all offer a high level of customer service particularly relating to fitting advice. The Opponent also adduces a declaration of Russell Eise Eisinga Zimmerman, Executive Director of the Australian Retailers Association. He declares that he believes confusion is less likely in the mind of a retailer (as opposed to consumers) because retailers are aware of the separate trade sources of similarly branded goods from having direct involvement in purchasing goods from the manufacturers. He also declares that consumers generally do not have the same detailed knowledge of origin.
Applicant’s evidence
The Applicant was incorporated in 1975. It is the registered owner of various Australian trade marks comprising or containing the word SEAFOLLY. Seafolly Pty Ltd was incorporated in 1977 to conduct the business of designing, manufacturing and selling swimwear and apparel under the SEAFOLLY trade mark, and since 1980 the Applicant has granted an exclusive license to Seafolly Pty Ltd to use its intellectual property including the SEAFOLLY trade mark. Hereafter in this decision references to the Applicant include references to Seafolly Pty Ltd, unless indicated otherwise.
The Applicant sells goods bearing the SEAFOLLY trade mark in over 540 multi-brand stores in Australia (including David Jones and Myer department stores), in ten ‘Seafolly Concept Stores’ (which I take to be dedicated to SEAFOLLY branded products only), and in three ‘Seafolly stores’ in Direct Factory Outlet (‘DFO’) centres. It also sells its goods in over 1,700 retail outlets worldwide including such department stores as Selfridges and Nordstrom.
It is declared that SEAFOLLY is a prominent swimwear brand in Australia and that it has a 30% to 35% share of the swimwear market in this country. Sales and marketing figures in relation to the SEAFOLLY brand and volumes of goods sold via wholesale and retail are provided for the financial years 2008/2009 to 2013/2014, all of which involve considerable sums.
Of the Trade Mark, the Applicant declares that it was selected as an appropriate style name for one of its swimwear ranges due to its ‘upmarket’ connotation. It declares it first used the Trade Mark on or around 19 September 2013 upon its website and provides extracts from the Internet Archive’s Wayback Machine[2] demonstrating this. It declares sales have been made in Australia of goods bearing the Trade Mark since approximately October 2013. Wholesale, retail and sales volume figures are provided for goods bearing the Trade Mark (for the financial year 2013/2014) and they too are considerable. It is declared that approximately 20% to 25% of the total marketing expenditure referred to in the paragraph above is attributable to promotion of goods bearing the Trade Mark.
[2] Being a searchable digital archive of information contained upon the World Wide Web.
The Applicant has promoted the Trade Mark by way of ‘range books’, ‘campaign catalogues’, direct marketing emails, editorials, garment swing tags and upon its website.
Six retailers are identified that sell both the Opponent’s goods bearing the GODDESS trade mark and the Applicant’s goods bearing the Trade Mark, SEAFOLLY GODDESS. Some retailers have been supplied with significant amounts of the Applicant’s goods, whilst others have been supplied with very little. Representatives from four of those retailers provide supporting declarations, each of which contain the statement:
In the time that I have been [employed by/owner of the relevant business], I have never encountered any instances of customer confusion between the Seafolly Goddess branded products and [the Opponent’s] Goddess branded products.
One of the declarants also provides her opinion that the parties’ goods are not comparable, and even if the Opponent was to produce swimwear in the future, they would be targeted at the ‘full figure’ market whereas the Applicant’s goods are targeted at a small to average sized market.
The Applicant declares that it considers its main competitors in the Australian retail market to be Billabong, Jets, Sunseeker and Roxy, and it adduces extracts from their websites to show that they do not sell both swimwear and lingerie (although it was pointed out at the hearing that Roxy sells some underwear items).
Lastly the Applicant provides an explanation as to the use of ‘GoddessSeps’ upon the swing tags of the bikini purchased by the Opponent’s solicitor. The bikini style purchased was first delivered for retail in October 2011 and is still sold today. However the names used upon the swing tags have changed over time. Prior to October 2013 the swing tags showed the name ‘GoddessSeps’ with SEAFOLLY appearing on a separate swing tag; between October 2013 and September 2014 the swing tags showed the name ‘SF GoddessSeps’ immediately below which appeared ‘Seafolly Goddess Kiara Bustier’ (‘Kiara Bustier’ being the specific item of the Goddess range); and from September 2014 the swing tags have shown the name ‘Seafolly Goddess’ immediately below which appears the name of the specific item of the Goddess range. It is declared that it is possible that stock of the bikini style, with swing tags as used prior to October 2013, was still in the store at the time the bikini was purchased.
Grounds and Onus
The Opponent pursued only the grounds of opposition under ss 44 and 60. It bears the onus of establishing at least one of those grounds. I confirm that the relevant standard of proof in these proceedings is the ordinary civil standard of the balance of probabilities,[3] and that the relevant date at which the rights of the parties are to be determined is 3 September 2013, the filing date of the application.[4]
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132]-[133]; Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599, [6] to [26].
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592.
Section 44
Section 44 of the Act relevantly provides:
44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:
(a) the applicant's trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Subsections (3) and (4) of s 44 provide for registration of a trade mark in the face of prior deceptively similar or substantially identical trade marks. Subsection 44(4) relates to prior use of an applied-for trade mark by an applicant; and sub-s 44(3) relates to honest concurrent use of an applied-for trade mark by an applicant or ‘other circumstances’ which would make acceptance of a trade mark proper. Neither party made submissions regarding any potential application of these provisions, and so I will not address them either except to briefly state that the evidence does not show any prior use by the Applicant (and therefore sub-s 44(4) is not applicable); and the evidence does not show sufficient use, nor other circumstances making acceptance proper, such that I am satisfied the provisions of sub-s 44(3) should be applied.
As can be seen from sub-s 44(1), above, to establish the ground the Opponent must establish that there is another trade mark (or trade marks) that is registered or pending registration; which has an earlier priority date than that of the Trade Mark; which is in respect of similar goods or closely related services; and which is substantially identical or deceptively similar to the Trade Mark. To do so the Opponent relies upon the three previously identified registrations, reproduced below along with the Trade Mark for ease of comparison.
| SEAFOLLY GODDESS | The Trade Mark. Class 25: Swimwear |
| GODDESS | Registration No.: 151672 Class 25: Brassieres, foundation garments and related ladies’ wearing apparel |
| GODDESS | Registration No.: 889663 Class 25: Women’s clothing including tops, dresses, skirts, pants, shorts, and jackets, but excluding underwear and hosiery |
| SEA GODDESS | Registration No.: 1331639 Class 25: Clothing excluding underwear, lingerie, hosiery; footwear and headgear |
The priority dates of the registered trade marks are all earlier than that of the Trade Mark, and the Opponent did not contend that any of the registered trade marks were substantially identical to the Trade Mark. The matters remaining to be determined then are whether any of the registered trade marks are deceptively similar to the Trade Mark and whether they are in respect of similar goods.
In order to set the context of the assessment to be made here, I turn first to the question of the similarity between the goods in question. ‘Similar goods’ are defined in s 14 of the Act as goods which are the same or ‘of the same description’ as other goods. The expression ‘of the same description’ is not defined in the Act but is a term of art such that ‘if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception.’[5]
[5] Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203; (1993) FCR 227 at 240; cited in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; (2009) 175 FCR 386.
Considerations relevant to the question of whether goods are of the same description were articulated in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (‘Southern Cross’)[6] as follows:
The fact that examination of the nature of the applicant's goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant's goods are not specified by the regulations as being within the same class of goods: see In re The Australian Wine Importers Ltd. (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd. v. Boden per Latham C.J. [1945] HCA 12; (1945) 70 CLR 84, at p 90 . There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek's Application (1946) 63 RPC 59 . Romer J. thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek's Case (1946) 63 RPC 59 the Assistant-Comptroller elaborated on the observations of Romer J. in the following manner: "In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application (1946) 63 RPC 59 , Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are 'of the same description'": In re an Application by John Crowther & Sons (Milnsbridge) Ltd. (1948) 65 RPC 369, at p 372 . Much the same considerations are evident in the observation of Dixon J. (as he then was) in Reckitt & Colman (Australia) Ltd. v. Boden [1945] HCA 12; (1945) 70 CLR 84 when he said: "What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments" (1945) 70 CLR, at p 94 . (at p607).
[6] [1954] HCA 82; (1954) 91 CLR
In respect of the prior registration owned by the Opponent, I consider that the goods of the parties are not the same. They are usually constructed of somewhat different materials and although broadly they share some similar purpose (such as comfort and bust support) their precise purpose is not the same. As pointed out by the Applicant underwear and lingerie are not normally used as alternatives to swimwear, and vice versa.
Nonetheless applying the principles from Southern Cross I consider that the parties’ goods are of the same description. The evidence shows that a number of entities produce both lingerie and swimwear (under the same trade mark or under separate trade marks). In particular in the case of bras and bikini tops (or the cups of one piece swim suits), the method of construction corresponds, as reflected in the shared terminology such as ‘balconette’, ‘bandeau’, ‘halter’, ‘moulded cups/halter’ and so on. It might reasonably be supposed that because of the shared method of construction they likewise share manufacturing technology and expertise – particularly so in the case of special sizing such as the Opponent caters for and reflected in the fact that the Opponent produces both sets of goods. Additionally several retail outlets sell both lingerie and swimwear. Leaving aside department store retailers (which are not irrelevant to the question but which nonetheless sell a broad range of goods so that it is unsurprising they sell both swimwear and lingerie), several lingerie-specific stores also sell swimwear – a connection which is heightened when one considers stores catering to special sizing because it is the sizing and fit that is the primary defining characteristic of the goods. I bear in mind that swimwear will often be sold in a separate section of the store to lingerie or be delineated in some way, however I consider this reflects only the somewhat different purpose of swimwear and not necessarily an incongruence of goods such that they would be perceived to originate from separate sources.
In respect of the prior registrations owned by third parties, I note that both contain the more general claims ‘clothing’ and ‘women’s clothing’ (both excluding underwear and hosiery). Each party asserts that this supports their case. The Opponent argues that similar marks (GODDESS and SEA GODDESS) are already registered in respect of swimwear, which is included within the general rubric of clothing, and therefore they comprise a barrier to registration. The Applicant argues that given GODDESS and SEA GODDESS can coexist for goods including swimwear in the face of the Opponent’s trade mark, the Trade Mark can likewise coexist.
Putting aside the question of coexistence for the time being, I confirm that I consider swimwear is encompassed by the general descriptions ‘clothing’ and ‘women’s clothing’. Clothing is defined as ‘garments collectively; clothes; raiment; apparel’, and swimwear is defined as ‘clothing designed to be worn for swimming or on the beach…’[7] It is perhaps more common than not to explicitly identify swimwear as items separate to the other garments or apparel that make up ‘clothing’, particularly in the case of trade mark specifications. This might explain the coexistence GODDESS and SEA GODDESS with the Opponent’s trade mark wherein the former are registered in respect of goods which encompass swimwear - goods with which the Opponent takes issue in these proceedings. Nonetheless when pressed there is little apparent basis upon which swimwear could be taken not to be included in the broad statement ‘clothing’.
[7] Macquarie Dictionary, online edition, © 2015 Macmillan Publishers Group Australia 2015.
With this context in mind I turn then to the similarity of the trade marks. The expression ‘deceptively similar’ is defined in s 10 of the Act as:
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that is it is likely to deceive or cause confusion.
Of deceptive similarity Windeyer J stated in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd:[8]
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 television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him… It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “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” (1937) 58 CLR, at p 658.
[8] [1963] HCA 66; (1963) 109 CLR 407.
The Opponent also points to a number of cases wherein the addition of a house brand or additional words to prior existing trade marks has not avoided a finding of deceptive similarity, including BRIVIS PROFILER and PROFILE;[9] SNOOZE SLEEP WELL (in fancy script) and SLEEPWELL;[10] OLIN PACE and PACE (as a prefix in combination with various descriptive elements);[11] SITMAR’S FUNSHIP or FAIRSTAR THE FUNSHIP and FUN SHIP;[12] and NATURE’S GIFT SNAP BAR and SNAPZ or SNAPS.[13]
[9] Carrier Air Conditioning P/L v Climate Technologies P/L [2008] ATMO 9.
[10] JWC (INT) Limited [2009] ATMO 40.
[11] Olin Corporation v Pakemaker Pool Supplies (1984) 4 IPR 526.
[12] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936.
[13] Brenda Robinson v Nature’s Gift Australia Pty Ltd [2014] ATMO 96.
For its part the Applicant asserts that GODDESS is a laudatory word apt for use in respect of the goods and cites Mid Sydney Pty Ltd v Australian Tourism Company Ltd, wherein CHIFLEY was found not to infringe CHIFLEY TOWER for reasons including that it was a familiar word geographically and surnominally and the ordinary person would be aware it had several applications. It also points to the prominence of the SEAFOLLY brand in the Australian market as a factor to be considered in the comparison.
It is the trade marks as wholes that must be considered and their respective impressions compared. Those impressions are informed by the words comprising the trade marks and the meaning imparted by them. The ways in which the trade marks might notionally be used, in the sense provided for by s 7(1), are also to be taken into account.
I note that the word GODDESS is defined as ‘a female god or deity’, ‘a woman of extraordinary beauty’, and ‘an adored woman’.[14] Whilst the word may have some desired allusive connotation in respect of either party’s goods, and is perhaps a popular trade mark in respect of goods targeted at women for that reason, it is not one that is apt for ordinary use. It does not describe any character or function, nor is it used in trade to refer to any commonly understood character or quality. Accordingly it is inherently adapted to distinguish clothing, lingerie, underwear and swimwear. SEAFOLLY is an invented word. It may allude to the sea or to foolishness by virtue of ‘sea’ and ‘folly’, but it does not convey any sensible meaning. It too is inherently adapted to distinguish. As such neither word is discounted or given less weight for the purpose of weighing the impression left by the Trade Mark.
[14] Macquarie Dictionary, supra.
The impression of the earlier GODDESS solus marks is as defined in the paragraph above. The word GODDESS is the sole element of which they are comprised and there is no other way to refer to or recall them. SEAFOLLY GODDESS contains the additional, inherently adapted word SEAFOLLY. Nonetheless the meaning of GODDESS is not altered in the Trade Mark: it retains its usual meaning and as indicated above it carries equal weight in distinguishing the goods (unlike such examples as INNER HEALTH PLUS v HEALTHPLUS and THROTTLE JOCKEY v JOCKEY, wherein the additional words created different overall meanings).[15]
[15] Health World Limited v Shin-Sun Australia Ltd [2008] FCA 100 and Jockey International, Inc. v Darren Wilkinson [2010] ATMO 22 respectively.
Within the bounds of what might be considered fair notional use, either of SEAFOLLY or GODDESS could be presented as a dominant or separate feature of the Trade Mark by the use of different fonts or relative sizes of the words. It is therefore possible that GODDESS will be presented in a manner that further distinguishes it from the house mark SEAFOLLY and I bear this in mind in making the assessment.
Both parties made further arguments as to which word might be considered the dominant feature in the Trade Mark. The Opponent made reference to BRIVIS PROFILER (as did the Applicant in respect of a subsequent decision involving that trade mark[16]), wherein the Applicant’s own practice of omitting BRIVIS from references to PROFILER was considered indicative of how customers might perceive the trade mark. However to my knowledge consumers do not ordinarily refer to and recall clothing by the style name assigned by the manufacturer, nor is there anything before me to suggest that this is the case. The Applicant submitted that the word SEAFOLLY would be the dominant feature of the Trade Mark by virtue of its prominence as a brand in the swimwear industry. However whilst the evidence shows that SEAFOLLY enjoys significant presence in respect of swimwear, the evidence does not show it to be of such notoriety or ubiquity that its reputation may be considered in the context of section 44.[17] I therefore do not find either of these arguments persuasive and my consideration of the potential dominant element is as described in the paragraph above.
[16] Climate Technologies Pty Ltd v Carrier Air Conditioning Pty Ltd [2011] ATMO 49.
[17] Unlike the word WOOLWORTHS in WOOLWORTHS METRO and device, see Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; (1999) 45 IPR 411, further discussed in C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; (2000) 52 IPR 42.
I am not persuaded by the supporting declarations filed by the Applicant. The Applicant submits that the lack of confusion, as attested to by the supporting declarants, is a relevant factor and that if confusion was going to occur, it would be in the early period of concurrent use before consumers are properly aware of the different trade origins. Firstly, the lack of confusion is not surprising given the short period of concurrent use. Secondly, I consider that it is a relevant consideration that the retailer and their employees (such as the supporting declarants) have a heightened awareness of the origin of goods. It is also relevant that those declarants operate in an environment where there is a particular emphasis on customer service, so that they are likely to guide the customer and prevent them from being deceived or confused as to the origin of goods. Thirdly, there are only four such declarants.
Given these factors I consider that the Trade Mark is deceptively similar to the prior GODDESS solus marks, being registrations 151672 and 889663. I consider it likely that the ordinary person would, at least, entertain a reasonable doubt as to whether lingerie or clothing sold under the GODDESS trade marks originated from the same source as swimwear sold under the SEAFOLLY GODDESS trade mark, or whether the two were associated in some way (such as a collaboration between the Applicant and Opponent to produce swimwear for the full figured market).
It is not strictly necessary to address the remaining prior registration. However given submissions were made in respect of it I will likewise address it in this decision. The impression left by SEA GODDESS, the trade mark the subject of registration 1331639, is one of a sea deity or a ‘beautiful’/‘adored’ woman of the sea. The word SEA qualifies the word GODDESS. This is conceptually somewhat different to the impression left by SEAFOLLY GODDESS, which appears as two unrelated words. Nonetheless, both trade marks are somewhat visually similar in that they commence with the word or prefix SEA and end with the word GODDESS. They also share a reference to the sea, albeit a relatively imprecise one. I consider that the ordinary person would at least be caused to wonder whether swimwear labelled SEAFOLLY GODDESS originated from the same source as clothing (which may include swimwear) labelled SEA GODDESS.
The ground of opposition under section 44 is accordingly established. It is therefore not necessary for me to address the ground of opposition under section 60, although the Opponent may rely upon it (or any other ground) in the event of an appeal.
Decision and costs
Section 55 of the Act provides:
Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
The Opponent has established a ground of opposition under the Act. I therefore refuse to register trade mark application 1578165.
Costs generally follow the event, and given there is no apparent reason to depart from this principle I award costs against the Applicant.
Nicole Worth
Hearing Officer
Trade Marks Hearings
2 December 2015
19
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