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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2024] ATMO 253
Decision Date: 24 December 2024

CaseChat Overview and Summary

FALKE KGaA (the opponent) opposed the registration of a trade mark sought by Lily O'Reilly (the applicant) under section 52 of the *Trade Marks Act 1995* (Cth). The opposition was based on grounds including sections 42(b), 44, and 60 of the Act. The matter came before Jonathon Galloway.

The primary legal issues before the court were whether the applicant's trade mark should be refused registration on the grounds that it was substantially identical or deceptively similar to an earlier trade mark (section 44), or whether it was likely to deceive or cause confusion (section 42(b)), or whether it was an invented word or words used in relation to goods of the same description as those for which the opponent's trade mark was registered (section 60).

The court found that the ground of opposition under section 44 was established, as the applicant's trade mark was found to be deceptively similar to the opponent's earlier registered trade mark. No exceptions to section 44 were found to apply. Consequently, the court determined that the applicant's trade mark should be refused registration.

Orders