FALKE KGaA v Lily O'Reilly - [2024] ATMO 253

TRADE MARKS ACT 1995

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

Re:Opposition by FALKE KGaA to registration of trade mark application number 2109964 (classes 25 and 35) – FOLKĒ – in the name of Lily O’Reilly

Delegate:

Jonathon Galloway

Representation:

Opponent: Russell Waters of Phillips Ormonde Fitzpatrick

Applicant: Michael Buck IP

Decision:

2024 ATMO 253

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition pursued under ss 42(b), 44 and 60 – s 44 established – no exception applies - trade mark refused registration

Background

This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by FALKE KGaA (‘Opponent’) to registration of the following trade mark:
Trade mark number: 2109964
Trade mark: FOLKĒ (‘Trade Mark’)
Applicant: Lily O’Reilly (‘Applicant’)
Filing date: 7 August 2020
[1] Unless otherwise stated, 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’) respectively.
Specification:
Class 25: Apparel (clothing, footwear, headgear); Boys' clothing; Casual clothing; Children's clothing; Clothing; Clothing for babies; Clothing for swimming; Combinations (clothing); Denims (clothing); Girl's clothing; Infants' clothing; Knitwear (clothing); Ladies clothing; Women's clothing.
Class 35: Retail clothing shop services.
(‘Applicant’s Goods and Services’)
The Trade Mark was examined as required by s 33 and advertised as accepted for possible registration on 15 November 2021.
On 12 January 2022, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 10 February 2022, the Opponent filed its Statement of Grounds and Particulars (‘SGP’).
On 19 April 2022, the parties entered a cooling-off period. Following the end of the cooling-off period, the Applicant filed a Notice of Intention to Defend on 27 October 2022.
The Opponent filed the following Evidence in Support (‘EIS’) on 18 April 2023:
- Declaration by Michael Haeser, Team Leader of the Customer Service Team for International Sales for the Opponent, dated 12 April 2023 with exhibits MH-1 and MH-2 and confidential exhibits MH-3 and MH-4 (‘Haeser’);

Declaration by Felicity Cox, professor in the Department of Linguistics at Macquarie University, dated 17 April 2023 with exhibit FC-1 (‘Cox’);
Declaration by Russell John Waters, Principal at Phillips Ormonde Fitzpatrick, dated 18 April 2023 with exhibit RJW-1 (‘Waters 1’).

The Applicant filed the following Evidence in Answer (‘EIA’) on 24 July 2023:
- Declaration by the Applicant dated 24 July 2023 with exhibit LO-1 (‘O’Reilly’).
The Opponent filed the following Evidence in Reply (‘EIR’) on 25 September 2023:

Declaration by Russell John Waters dated 25 September 2023 with exhibits RJW-1 to RJW-3 (‘Waters 2’).

Once the period for filing evidence had ended, the Opponent requested an oral hearing on 16 November 2023.
As a delegate of the Registrar of Trade Marks, I heard the matter on 2 October 2024. The Opponent filed written submissions and was represented by Russell Waters of Phillips Ormonde Fitzpatrick. The Applicant did not attend or provide written submissions.
The following constitutes my decision on this matter as required by s 55 based on the evidence set out above and the Opponent’s submissions.

Grounds and Onus

The SGP nominates grounds of opposition under ss 42(b), 44 and 60.
The Opponent carries the burden of establishing one or more grounds of opposition.[2] The standard of proof is on the balance of probabilities.[3] The date at which the parties’ rights are assessed is 7 August 2020 (‘Relevant Date’), being the filing date of the Trade Mark and the priority date of the Trade Mark for the purposes of ss 44 and 60.
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

EIS

Haeser declares that the Opponent was established in Germany in 1895. The Opponent owns the following Australian trade mark registrations (collectively ‘Opponent’s Trade Marks’):

Trade mark number	Trade mark	Priority date	Goods and Services
502046	22 December 1988	Class 25: All goods in this class
1215030 (IR 944203)	26 February 2007	Class 3: Soaps for cosmetic purposes, soaps for textiles, perfumeries, ethereal oils, products for personal hygiene and beauty; products to clean, care for and beautify the skin, scalp and hair; toilet articles included in this class, deodorants for personal use, pre-shave and after-shave products Class 9: Eyeglasses and eyeglass frames Class 14: Jewellery and watches Class 18: Leather and imitations of leather, namely suitcases, bags included in this class; small leather articles included in this class, especially purses, wallets, key cases; umbrellas and sunshades Class 25: Shoes, clothing and headgear, belts Class 28: Sports articles included in this class; games and toys
1529928 (IR 1138344)	7 February 2012	Class 3: Soaps for cosmetic purposes, soaps for textiles, perfumeries, ethereal oils, products for personal hygiene and beauty; products to clean, care for and beautify the skin, scalp and hair; toilet articles included in this class, deodorants for personal use, pre-shave and after-shave products Class 9: Eyeglasses and eyeglass frames Class 14: Jewellery and watches Class 18: Leather and imitations of leather included in this class; bags, suitcases, backpacks; small leather articles included in this class, especially purses, wallets, key cases; umbrellas and parasols Class 25: Shoes, clothing, hosiery, headwear, belts Class 28: Sports articles included in this class; games and toys Class 35: Wholesale and retail services in the categories of soaps for cosmetic purposes, soaps for textiles perfumeries, ethereal oils, products to care for body and beauty, products to clean, care for and beautify the skin, scalp and hair, toilet articles, deodorants for personal use, pre-shave and after-shave products, jewellery and watches, eyeglasses and eyeglass frames, leather and imitations of leather, suitcases, bags small leather articles, purses, wallets, key cases, umbrellas and parasols, shoes, clothing, all kinds of hosiery, headwear, belts, sports articles, games and toys

Haeser declares that the Opponent’s Trade Marks have been used in Australia since at least 2006 ‘in relation to socks, pantyhose and tights, as well as a range of other garments, including booties, slippers, jackets, track pants, shirts, pullovers, leggings, scarves, beanies and knitwear’.[4]
[4] Haeser, [3].
Use of the Opponent’s Trade Marks in Australia is principally on packaging and labels on garments. In addition, some garments have the Opponent’s Trade Marks woven into the fabric. Goods bearing the Opponent’s Trade Marks are sold through retail stores such as David Jones, Henry Bucks and online retailers such as Amazon.
Exhibit RJW-1 of Waters 1 contains a video posted by the Applicant to her YouTube channel. The video chronicles the Applicant as she prepares to close down her retail store in preparation for opening a new store. Waters 1 makes note of the ways in which the Trade Mark is portrayed throughout the video such as use of the Trade Mark on garments in different font styles including without the macron above the last letter. Waters 1 notes that the audio track of the video includes the words ‘Hi. Welcome to FOLKĒ’.[5]
[5] Exhibit RJW-1 of Waters 1. According to paragraph 6 of Cox, the Trade Mark is pronounced in exhibit RJW-1 of Waters 1 as ‘foll k’ where ‘foll’ rhymes with ‘doll’.
Cox considers the possible pronunciations of the Opponent’s Trade Marks. A summary of Cox’s considerations is the letters ‘FAL’ may rhyme with ‘pal’ or ‘fall’ and then, can end with ‘k’; ‘ka’ where the letter ‘a’ is an unstressed vowel as in the end of ‘pasta’, ‘ki’ as in the end of ‘tiki’ or ‘kay’ similar to the sound at the end of ‘souffle’. Cox also refers to a less likely pronunciation of ‘FALKE’ wherein the letter ‘l’ is not pronounced, as in ‘talk’. Cox defines the Opponent’s Trade Marks and the Trade Mark as ‘non-words’ in English and notes that the pronunciation may differ based on an individual’s ‘understanding of letter to sound correspondences’ and ‘their previous experience with the spelling-pronunciation of real words when making decisions about non-words’.[6]
[6] Cox, [5].
Cox does not give an indication of the most likely pronunciation of the Opponent’s Trade Marks, but considers that if the example in exhibit RJW-1 of Waters 1 is relied on as to the pronunciation of the Trade Mark then it would ‘be most confusable with’ the Opponent’s Trade Marks if the Opponent’s Trade Marks were pronounced ‘fall k’.

EIA

O’Reilly declares that the Applicant owns an Australian business providing a range clothing, homewares and accessories to a target demographic of males and females aged 18-35 years old ‘who enjoy the simple, fresh, coastal lifestyle’.[7] The Trade Mark was said to be adopted in 2020 after a shortlist of potential names was formed by arranging groups of Scrabble letters.[8] The Trade Mark was chosen because the Applicant states ‘it means PEOPLE’.[9]
[7] O’Reilly, [5].
[8] Ibid [10].
[9] Ibid [9].
The Applicant claims that prior to filing the application she undertook extensive internet searches, in addition to speaking with business mentors, teachers and government workers. The Applicant states that ‘no similar names were revealed’.[10]
[10] Ibid [11].
O’Reilly declares that the Trade Mark has been used continuously since 2020. The Applicant submits approximate annual turnover figures for all products sold under the Trade Mark. The annual turnover figures, which are in relation to the period 2020 to 2023, are stated to be confidential.

EIR

Waters 2 is directed towards addressing the Applicant’s claim that she conducted ‘extensive internet searches’ before applying for the Trade Mark. Waters 2 asserts that ‘extensive internet searches’ would reasonably include a search of the Australian Trade Marks Register. Waters 2 submits that a search of the Australian Trade Marks Register on or before the Relevant Date would have revealed two prior applications in the names of unrelated third parties, for trade marks comprising the word FOLKE.[11] Exhibit RJW-2 contains a first examination report of trade mark application 1732193, along with an extract of the relevant searches of the Australian Trade Marks Register undertaken by the examiner. Waters 2 asserts that the information that can be garnered from a review of trade mark application 1732193, would have given the Applicant a strong indication that the Trade Mark is substantially identical with, or deceptively similar to the Opponent’s Trade Marks because the Opponent’s Trade Marks were among those cited in the examination report for trade mark application 1732193.
[11] Trade mark number 1429228 for ‘folke’ made in respect of men’s clothing lapsed on 24 September 2012; Trade mark number 1732193 comprises the word FOLKE underneath a silhouette image of a bird and was made in respect of apparel (clothing, footwear, headgear). It too is now lapsed.
In addition, Waters 2 addresses the Applicant’s claim that the Opponent’s evidence lacks sufficient dated material that establishes use of the Opponent’s Trade Marks in Australia before the Relevant Date. Exhibit RJW-3 is stated to contain additional examples of how the Opponent’s Trade Marks appeared on the websites of Australian retailers between 2016 and 2019. Waters 2 states that exhibit RJW-3 complements the Opponent’s sales data in Haeser and constitutes use of the Opponent’s Trade Marks in Australia.

Discussion

Section 44 relevantly provides:

44 Identical etc. trade marks
(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.

(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a)it is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar services or closely related goods; or
(ii)a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

(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.
(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.

The SGP refers to s 44 and reg 4.15A. Regulation 4.15A is similar to s 44 but applies when the relied on mark is a protected international trade mark or a trade mark in respect of which the Registrar has received notification of an international registration designating Australia. I note that two of the Opponent’s Trade Marks, being trade mark numbers 1215030 and 1529928, are protected international trade marks. However, for the purpose of clarity, terminology relating to s 44 will be used throughout this decision.
In order to establish the ground of opposition under s 44, the Opponent must identify a trade mark which is registered or pending registration, in the name of a person other than the Applicant, which has an earlier priority date than the Relevant Date, is substantially identical with, or deceptively similar to, the Trade Mark, and is registered in respect of goods or services which are similar and/or closely related to the Applicant’s Goods and Services.
The Opponent relies on the Opponent’s Trade Marks as the basis for this ground of opposition.
I confirm that each of the Opponent’s Trade Marks has an earlier priority date than the Relevant Date.

Comparison of Goods and Services

Section 14 provides:

14 Definition of similar goods and similar services
(1)For the purposes of this Act, goods are similar to other goods:
(a)if they are the same as the other goods; or
(b)if they are of the same description as that of the other goods.

(2)For the purposes of this Act, services are similar to other services:
(a)if they are the same as the other services; or
(b)if they are of the same description as that of the other services.

As can be seen, the Trade Mark broadly claims apparel in class 25 and retail clothing shop services in class 35. It is clear that the goods and services of the Trade Mark are similar to the goods and services of trade mark number 1529928. I also note that each of the Opponent’s Trade Marks claim clothing goods which are similar to the clothing goods in the Trade Mark and closely related to the retail clothing shop services claimed in the Trade Mark.
Given that the Opponent’s Trade Marks have earlier priority dates and are in respect of similar goods and/or closely related services, the remaining consideration is whether the Trade Mark is substantially identical with, or deceptively similar to, the Opponent’s Trade Marks. The Opponent argues that the trade marks are substantially identical and deceptively similar.

Comparison of Trade Marks

As noted, the Opponent relies on three separate trade mark registrations which are identical, therefore the relevant comparison is set out below:

Trade Mark	Opponent’s Trade Marks
FALKE

Whether two trade marks are substantially identical is determined on a side-by-side comparison having regard to the essential features of the trade mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[12]
[12] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J) (‘Shell’).
The Opponent’s submission is that the only difference of any significance is a change in the second letter of each trade mark. The second letter in the Opponent’s Trade Marks is ‘A’ and the second letter in the Trade Mark is ‘O’. The Opponent acknowledges the addition of a macron over the last letter of the Trade Mark but submits the degree of difference that can be attributed to the macron is negligible.
I note the Opponent’s reference to previous decisions which it considers analogous to the current matter, such as Sanofi-Synthelabo v Lohmann Animal Health GmbH & Co. KG, in which the hearing officer found that AVIPRO and AVAPRO were substantially identical in relation to veterinary products.[13] However, the fact that trade marks may differ only by a single letter will not automatically give rise to a finding of substantial identity. The impact of a single letter difference will depend on the particular letter being substituted as well as other factors such as the length of the word and where the substitution occurs in the context of the word.[14]
[13] [2003] ATMO 68, [16] (Hearing Officer Skivington).
[14] Ffrost Konza & Associates Pty Ltd v Fendi Paola & S.LLE S.a.S [1993] ATMO 26 (Hearing Officer Farquhar).
On a side-by-side comparison of the Opponent’s Trade Marks and the Trade Mark there are visual differences including the vowel variation near the beginning of each trade mark. Given the trade marks consist of five letters each, this difference is likely to be recognised in the context of a side-by-side comparison. In addition, the Trade Mark contains a macron over the last letter, which would be noticed on a side-by-side comparison of the trade marks. I am satisfied that there is not a total impression of resemblance between the Trade Mark and the Opponent’s Trade Marks. Therefore, the trade marks are not substantially identical.
The Opponent submits that the Trade Mark is also deceptively similar to the Opponent’s Trade Marks.
Section 10 defines ‘deceptively similar’ in the following terms:
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 it is likely to deceive or cause confusion.
The test for assessing deceptive similarity was set out by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd:
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].[15]
[15] Shell (n 12) [13].

In determining whether two trade marks are deceptively similar, a mere possibility of confusion is not enough. There must be a real likelihood that some people will wonder or be left in doubt about whether the goods come from the same source.[16] The focus of assessing deceptive similarity is in evaluating the effect or impression produced on the mind of potential customers.[17] The estimation of the effect or impression of the trade mark requires an allowance for the imperfect recollection a person may have of the registered trade mark in determining whether use of another trade mark is likely to deceive or cause confusion.[18] The impression comes from judging the trade marks as whole, having regard to the look, sound and ideas conveyed by the trade marks.[19]
[16] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4] (Kitto J).
[17] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [28] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
[18] Crazy Ron’s Communications Pty Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196, [77] (Moore, Sackville and Emmett JJ).
[19] Blend A/S v Barefoot Dreams, Inc.[2024] ATMO 216, [17] (Hearing Officer Lyons).
The Opponent contends that the trade marks are visually similar in that they differ only by one letter. Further, the Opponent submits that there are no discernible points of difference when considering any aural differences or the ideas that each trade mark conveys because, as Cox provides, the Trade Mark and the Opponent’s Trade Marks are considered ‘non-words’ in English.
I consider that the visual points of difference between the trade marks are minimal. The Trade Mark and the Opponent’s Trade Marks are presented in plain text format. While, in isolation, ‘A’ and ‘O’ may quite easily be differentiated, when considering the trade marks as a whole, the surrounding letters are identical. In addition, while both trade marks are presented in uppercase text, I must have regard to any fair and normal manner of use of the trade marks which may cause deception or confusion.
In Registrar of Trade Marks v Woolworths Ltd, Branson J summarised the test for normal and fair use by saying:
Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration.[20]
[20] [1999] FCA 1020, [88].
I note that the ‘fair and normal’ or notional use of a trade mark is understood to be the range of potential uses which the Registrar or Court can reasonably attribute to a pending or registered trade mark in regard to both the trade mark and also the goods or services in relation to which the particular trade mark is pending or registered.[21]
[21] Linecrest Pty Ltd v Cobannah Holdings Pty Ltd as Trustee for the Lollymania Trust [2013] ATMO 2, [21] (Hearing Officer Thompson).
When considering the fair and normal use of the trade marks it is appropriate to conclude that the notional use of the trade marks would extend to use in lower case font, or other font styles. I consider that allowing for use by both parties of the trade marks in a fair and reasonable manner, the visual differences between the letters ‘A’ and ‘O’ would be further diminished by particular variations in font styles, which may diminish the visual differences between ‘a’ and ‘o’.
The difficulty in determining the aural similarity of the Trade Mark and the Opponent’s Trade Marks is that they are not words that are commonly used by English speakers. I consider that Cox establishes that, if the Trade Mark is pronounced as it is heard in exhibit RJW-1to Waters 1, then there is a reasonable likelihood that an Australian consumer would pronounce the Opponent’s Trade Marks in an aurally similar way. As noted above, the Opponent’s evidence includes that the Trade Mark may be pronounced as ‘foll k’ where ‘foll’ rhymes with ‘doll’ and the Opponent’s Trade Marks may be pronounced ‘fall k’ as a single syllable.
In circumstances where one trade mark is an invented word, it is more likely that it would be confused with another trade mark that is also an invented word.[22] In William Bailey (Birmingham) Ltd’s Application, Farwell J considered words that are not in use in the English language to be more susceptible to confusion in the minds of consumers, stating:
No doubt in the case of a fancy or invented word, a word which is not in use in the English language, the possibility of confusion is very much greater. A fancy word is more easily carried in mind and is more easily carried in mind in connection with some particular goods and it may well be that in the case of a fancy word there is much more chance of confusion…[23]
[22] Nexans S.A. v Nex 1 Technologies Co. Ltd [2012] FCA 180, [31] (Murphy J).
[23] (1935) 52 RPC 136, [153] cited in Nexans S.A. v Nex 1 Technologies Co. Ltd [2012] FCA 180, [31] (Murphy J).
The Applicant suggests that the Trade Mark is the Swedish word for ‘people’ while the Opponent’s Trade Marks are the German word for ‘falcon or bird of prey’. There is nothing before me that suggests that the average Australian consumer would recognise the trade marks as being foreign words and understand their respective meanings. While the meaning conveyed by trade marks may contribute to a finding that two trade marks are not deceptively similar, this is unlikely to be the case where the consideration is between two words of foreign languages. This is because the idea conveyed by a trade mark in a foreign language may not be readily understood by Australian consumers.
The allowance that must be made for imperfect recollection in my view increases the likelihood of deception and confusion.[24] The doctrine of imperfect recollection is an aspect of the test for deceptive similarity. The doctrine of imperfect recollection recognises that the eye is not an accurate recorder of visual detail, and that marks are more often remembered by general impressions or by some significant detail than by any photographic recollection of the whole.[25] Allowing for ordinary possibilities of mispronunciation, careless hearing or poor memory, I consider that it is likely that a consumer who is aware of the Opponent’s Trade Marks, and some time later comes across the Trade Mark, will be caused to wonder whether they come from the same source.
[24] Re Rysta Ltd’s Application (1943) 60 RPC 87, 108 (Luxmoore LJ).
[25] Shell (n 12) [13] quoting de Cordova v. Vick Chemical Co(1951) 68 RPC 103, 106 (Lord Radcliffe).
In the current matter, the trade marks differ by one letter and, in my view, both present as invented words which increases the likelihood of confusion. The visual similarity of the trade marks, the fact that they present as invented words, the potential that consumers will recall the trade marks in an aurally similar manner, in conjunction with the doctrine of imperfect recollection, all contribute to a finding of deceptive similarity.
Accordingly, I find that the Opponent has established, in principle, the ground of opposition under s 44. Where a finding under ss 44(1) or 44(2) is established, it is subject to considerations set out in ss 44(3) and 44(4).
The EIA provides that the Applicant began using the Trade Mark in 2020, this is well after the priority date of the Opponent’s Trade Marks. There is no evidence filed which shows that the Trade Mark was used before the priority date of the Opponent’s Trade Marks. Therefore, the exception under s 44(4) does not apply in this matter.

Honest Concurrent Use

Section 44(3) relevantly provides:
(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.

In McCormick & Company Inc v McCormick, Kenny J summarised the principal criteria for determining whether registration should be permitted pursuant to s 44(3), as including:
(1)the honesty of the concurrent use;
(2)the extent of the use in terms of time, geographic area and volume of sales;
(3)the degree of confusion likely to ensue between the marks in question;
(4)whether any instances of confusion have been proved; and
(5)the relevant inconvenience that would ensue to the parties if registration were to be permitted.[26]
[26] [2000] FCA 1335, [30].
O’Reilly provides that the Applicant created the Trade Mark honestly by arranging Scrabble letters and developing a short list and ultimately settling on the Trade Mark. The Applicant submits that prior to filing the application for the Trade Mark she ‘undertook extensive internet searches’ and ‘spoke with business mentors, teachers and government workers in their investigations and no similar names were revealed’.[27] All of these steps led the Applicant to conclude that the Trade Mark or similar names were not being used on relevant goods and services.
[27] O’Reilly, [11].
I note the Opponent’s submissions that ‘extensive internet searches’ could reasonably be thought to include a search of the Australian Trade Marks Register, and honesty of adoption of a trade mark may not be made out in circumstances where an applicant did not undertake sufficient searches. However, as in Tivo Inc v Vivo International Corporation Pty Ltd, whether or not the Applicant had knowledge of an existing trade mark does not necessarily ‘denote dishonesty, or exclude a reasonable belief that adoption of the trade mark would not cause confusion’.[28]
[28] [2012] FCA 252, [249] (Dodds-Streeton J).
Regardless of whether or not the Applicant adopted the Trade Mark honestly, the EIA shows minimal concurrent use at the time the Applicant filed the application. The Applicant declares that she devised the mark in 2020, therefore with a priority date of 7 August 2020 the Applicant could not have had more than 8 months of use at the time of filing the application.
The annual turnover figures provided in O’Reilly are mostly from after the Relevant Date. The Applicant’s sales that were achieved after the Relevant Date do not assist the Applicant. Further, the evidence in relation to annual turnover indicates these figures were achieved in respect of all goods offered under the Trade Mark. It is not clear whether this includes goods bearing other trade marks that are sold by the Applicant. No evidence is provided to show the average retail price of goods sold under the Trade Mark.
The Applicant declares she is not aware of any instances of confusion. However, this may be due to the relatively limited use of the Trade Mark.
O’Reilly declares that the ‘Applicant has utilised time and expense in developing the concept and using the Trade Mark in relation to their Goods and Services in Australia’.[29] The Applicant has not submitted evidence that attests to her advertising and promotion expenditure. The Applicant’s claim that she would be ‘severely disadvantaged’ if the registration of the Trade Mark was refused does not go beyond a bare statement. Conversely, the Opponent has been trading in Australia since 2006, and in that sense, when considering the relative inconvenience to both parties, the balance of convenience favours the Opponent.
[29] O’Reilly, [23].
The Applicant’s evidence does not demonstrate use of the Trade Mark to any significant degree, prior to filing the application.
The evidence, as a whole, is not sufficient to satisfy me that the provisions of s 44(3)(a) apply.
Section 44(3)(b) provides the Registrar with discretion to accept the Trade Mark, if it is satisfied that, because of some other circumstances, it is proper to do so. The Applicant has not submitted evidence or brought to my attention any other circumstances to persuade me that it would be appropriate to apply the provision of s 44(3)(b).
I am not satisfied that the provisions of s 44(3) apply in the present circumstances.
Accordingly, I find that the Opponent has established a ground of opposition under s 44.

Decision

Section 55 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.
Note: For limitations see section 6.
As the Opponent has established a ground of opposition under s 44, I refuse to register trade mark number 2109964. If the Registrar is served with a notice of appeal, I direct that the disposition of the application should be in accordance with the Court’s order or direction.

Costs

The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has established a ground of opposition, I award costs against the Applicant under s 221 as per Schedule 8 of the Regulations.

Jonathon Galloway

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

24 December 2024