Express, LLC v Euromode Australia Pty Ltd

[2010] ATMO 71

TRADE MARKS ACT 1995

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

Re:Opposition by EXPRESS, LLC to registration of trade mark application 1180064(25) - EXPRESS ONE OF A KIND - filed in the name of Euromode Australia Pty Ltd.

Delegate:

Iain Thompson

Representation:

Opponent: Robert Kelson of Callinans

Applicant: Did not appear or file written submissions

Decision:

2010 ATMO 71

s52 Opposition – s44, trade marks deceptively similar, registration refused.

Costs awarded against applicant.

Background

1. In this matter, Euromode Australia Pty Ltd, of Maribyrnong, Victoria, (‘the applicant’) has applied under the Trade Marks Act 1995 (‘the Act’) to register a trade mark, current details of which appear below:

Application No: 1180064

Priority Date:  8 June 2007

Goods:Class: 25 Aprons (clothing); arm warmers (clothing); armbands (clothing); articles of clothing for theatrical use; articles of clothing made from wool; articles of clothing made of fur; articles of clothing made of hides; articles of clothing made of imitation leather; articles of clothing made of leather; articles of clothing made of plush; articles of waterproof clothing; articles of water-resistant clothing; articles of weatherproof clothing; articles of windproof clothing; athletic clothing; ballet clothing; beach clothing; belts (clothing); boys’ clothing; braces for clothing (suspenders); cashmere clothing; casual clothing; chefs’ clothing; children’s clothing; clothing; clothing for babies; clothing for gymnastics; clothing for sports; clothing for surfing; clothing for swimming; clothing of fur; clothing of imitations of leather; clothing of leather; clothing of paper; clothing, not being protective clothing, incorporating reflective or fluorescent elements or material; clothing, not being protective clothing, treated with fire and heat retardants; collars (clothing); combinations (clothing); cowls (clothing); cyclists’ clothing; dance clothing; denims (clothing); drawers (clothing); ear muffs (clothing); furs (clothing); gabardines (clothing); girl’s clothing; gloves (clothing); golf clothing (other than gloves); halters (clothing); headbands (clothing); hoods (clothing); infants’ clothing; interlinings for clothing; jackets (clothing); jerseys (clothing); jump suits (clothing); kerchiefs (clothing); knitted clothing; knitwear (clothing); ladies clothing; layettes (clothing); leather belts (clothing); linen articles of clothing; mantles (clothing); maternity clothing; men’s clothing; mitts (clothing); money belts (clothing); motorcyclists’ clothing (other than for protection against accident or injury); motorists’ clothing; muffs (clothing); occupational clothing; oilskins (clothing); paper clothing; paper hats (clothing); playsuits (clothing); plush clothing; pockets for clothing; rainproof clothing; ready made linings for clothing; ready-made clothing; ready-made linings (parts of clothing); ready-made pockets (parts of clothing); ready-to-wear clothing; silk clothing; ski clothing (other than for protection against injury); slips (clothing); sports clothing (other than golf gloves); stockinets (clothing); stuff jackets (clothing); tennis clothing; thermal clothing; thermal clothing (other than for protection against accident or injury); thermally insulated clothing; thongs (clothing); three piece suits (clothing); veils (clothing); waterproof clothing; waterproof clothing; water-resistant clothing; weather resistant outer clothing; weatherproof clothing; windbreakers (clothing); women’s clothing; woollen clothing; woven articles of clothing; wraps (clothing); wristbands (clothing); wristlets (clothing)

Trade Mark:  

(‘The opposed trade mark’)

1. The opposed trade mark was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 11 October 2007. On 11 April 2008, Express, LLC of Columbus, Ohio, served and filed Notice of Opposition (‘the Notice’) to the registration of the opposed trade mark. Relevantly, the Notice includes a ground under section 44 of the Act under which I will decide this matter – for the sake of completeness, I find that grounds other than section 44 have not been established by the opponent.

2. The matter came before me on 8 June 2010 in Melbourne for a hearing of the submissions of the opponent, represented by Robert Kelson of Callinans, Patent & Trade Mark Attorneys.  The applicant did not appear and did not file written submissions in support of its application.

3. I agree with Mr Kelson’s submissions that the ground under section 44 should very obviously succeed, and will accordingly keep this decision as brief as is possible.

The Evidence

1. The evidence in support of the opposition comprises a declaration by Matthew C. Moellering, Chief Financial Officer of the opponent. Relevant to the ground under section 44, Mr Moellering states that the opponent is previously the owner of Australian trade mark registrations 495432, 495433, 495434, 495435,[1] and the owner of registrations 787627, 874691 and 1092360.  Details of the above trade mark registrations are:

   [1] I note that trade mark registrations 495432, 495433, 495434 and 495435 have been removed from the Register as they have not been renewed by their owner.

Registration No:              787627

Priority Date:  5 March 1999

Goods:Class: 3 Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions, dentifrices

Class: 14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments

Class: 25 Clothing, footwear, headgear

Class: 35 Retail store services being services rendered by retail establishments to meet the needs of customers and consumers being sale of clothing, fashion goods and accessories and personal care products and accessories including cosmetics, jewellery and skin care products; mail order services for the purchase of clothing, fashion goods and accessories and personal care products and accessories including cosmetics, jewellery and skin care products

Trade Mark:  EXPRESS WORLD BRAND

Registration No:              874691

Priority Date:  4 May 2001

Goods:Class: 25 Clothing; including bathrobes, beach cover-ups, beachwear, belts, blazers, blouses, body shapers, body suits, boxer shorts, bras, bustiers, camisoles, caps, coats, dresses, footwear, foundation garments, garter belts, girdles, gloves, gowns, halter tops, hats, headbands, hosiery, jackets, jeans, jogging suits, knee highs, knit shirts, knit tops, leotards, lingerie, loungewear, mittens, negligees, night gowns, night shirts, pajamas, panties, pants, pantyhose, sarongs, scarves, shirts, shorts, skirts, slacks, sleepwear, slips, socks, stockings, suits, sweat pants, sweat shirts, sweat shorts, sweat suits, sweaters, swim wear, T-shirts, tank tops, tap pants, teddies, ties, tights, underpants, undershirts, underwear and vests

Class: 35 Retail store services and mail order catalogue services featuring personal care products, jewellery, watches, packs, bags, wallets and clothing

Trade Mark:  EXPRESSFASHION

Registration No:              1092360

Priority Date:  29 December 2005

Goods/Services:              Class: 25 Clothing, namely bathrobes, beach cover-ups, belts, blazers, blouses, body suits, boots, boxer shorts, bras, bustiers, camisoles, caps, coats, dresses, garter belts, girdles, gloves, gowns, halter tops, hats, headbands, jackets, jeans, jogging suits, knit shirts, knit tops, leotards, lingerie, mittens, negligees, night gowns, night shirts, pyjamas, panties, pants, pantyhose, sandals, sarongs, scarves, shirts, shoes, shorts, skirts, slacks, slippers, slips, sneakers, socks, stockings, suits, sweat pants, sweat shirts, sweat shorts, sweat suits, sweaters, swimsuits, T-shirts, tank tops, teddies, ties, tights, underpants, undershirts, underwear and vests

Class: 35 Retail store services, mail order catalogue services and on-line retail store services featuring personal care products, home fragrance products, jewellery, watches, packs, bags, wallets and clothing

Trade Mark:  EXPRESSFASHION

Onus

1. In accordance with IP Australia’s current practice I am proceeding on the basis that the opponent need only establish one of its grounds of opposition on the balance of probabilities[2].

   [2] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [27] and Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664 (25 June 2010) at [26] to [40].

Discussion

1. Section 44 of the Act (relevant to the goods of the parties and lack of any evidence from the applicant) provides:

   Identical etc. trade marks

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

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

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

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

   Note 1:  For deceptively similar see section 10.

   Note 2:  For similar goods see subsection 14(1).

   Note 3:  For priority date see section 12.

2. Thus, in order to establish this ground, the opponent needs to establish:

   ·     One or more trade marks registered or pending in the name of a person other than the applicant

   ·     With earlier priority dates than that of the opposed trade mark

   ·     Which is registered or pending in respect of goods which are similar to those in respect of which the opposed application is made

   ·     And that the opposed trade mark is substantially identical or deceptively similar to the trade marks on which the opponent relies.

3. The registrations on which the opponent relies are registered in its own name and have earlier priority dates than that of the opposed trade mark (8 June 2007).

4. The goods in respect of which the opposed trade mark is sought to be registered are either the same goods or are similar goods.[3] 

   [3] The expression ‘similar goods’ is defined by subsection 14(1) as embracing ‘goods of the same description’ – see Southern Cross Refrigerating Company v Toowoomba Foundry Pty. Ltd. [1953] HCA 73; (1954) 91 CLR 592; 1A IPR 465.

5. It remains to be determined whether the trade marks of the parties are (or are not) substantially identical or deceptively similar.

6. Substantial identity is to be assessed according to the test in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407, per Windeyer J at page 414:

   In considering whether marks are substantially identical 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. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question cf fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity, my opinion is ….

7. Here, the trade marks before me are on the one hand EXPRESS WORLD BRAND and EXPRESSFASHION and one the other hand the prominent word EXPRESS with the very much smaller tag line ONE OF A KIND.  The word EXPRESS is the ‘essential feature’ in the trade marks of the parties.  Additionally, the word EXPRESS is capable of functioning as a trade mark which is inherently fully adapted to distinguish in relation to clothing in terms of the test in Clark Equipment Co. v Registrar of Trade Marks (1964) 111 CLR 511 (‘the Michigan case’) at 513.

8. However, the words and expressions WORLD BRAND, FASHION and ONE OF A KIND prima facie lack any inherent adaptation to distinguish whatsoever.

9. The trade marks thus, in my consideration, fall into the class of trade mark referred to by Carr J in PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602 where he said at paragraph 38:

   The question to be decided in each case is largely one of fact, provided that the test is properly applied. Comparing CHOC CHILL, or COFFEE CHILL, or VANILLA CHILL or STRAWBERRY CHILL with CHILL, I note the differences comprising an extra word of varying length the function of which is to describe flavour, but I note the similarity of the constant use of the word CHILL. I have already mentioned the importance of CHILL and the degree to which it is essential to the mark. Bearing in mind the relative importance of CHILL I give very little weight to the descriptors CHOC, COFFEE, VANILLA or STRAWBERRY. In the end, I found myself in agreement with the delegate’s reasoning and conclusion which is set out at p 10 of her reasons as follows:

   “When the side by side comparison is made between the mark CHILL, used by Malanda, and the application trade mark it is not a simple one to one comparison, P B Foods’ mark is not simply CHOC CHILL. PB Foods has chosen to file its mark as one which will be varied in use and in doing so has made it clear that the essential feature of its trade mark is the word CHILL which is used with a purely descriptive variable feature. In selecting the goods, a prospective purchaser will therefore recognise the word CHILL as the badge of origin and will see the word CHOC or COFFEE or STRAWBERRY or VANILLA as nominating nothing more than the flavour of the product. When considered in this light, it seems to me that the comparison between CHILL and CHOC CHILL does lead to a “total impression of similarity” and the proprietorship claim is supported.”

   In my opinion, applying the test referred to in the authorities cited above, the marks are substantially identical.

10. Accordingly, I consider that the sole distinguishing element in the trade marks in question is the word EXPRESS and that it is, essentially, what has been registered by the opponent and is, in essence, that word in respect of which the applicant seeks registration.  These factors give rise to a total impression of identity.

11. I therefore consider the trade marks of the parties to be substantially identical and the other elements required to establish a ground under section 44 are (as discussed above) present.

12. The opponent has established its ground under section 44 of the Act.

Decision

1. Section 55 of the Act relevantly provides:

   Decision

   55. Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

   (a) to refuse to register the trade mark; or
   (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:  For limitations see section 6.

2. I refuse to register application 1180064.

Costs

1. Having established its opposition, the opponent is entitled to its costs which I award at the official scale against the applicant.

Iain Thompson

Hearing Officer

Trade Marks Hearings

4 August 2010