FAO SpA v F & T Industries Pty Ltd

[2001] ATMO 73

TRADE MARKS ACT 1995

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

Re:Opposition by FAO SpA to registration of trade mark applications 778757(20, 21), 783601(20, 21), 783602(20, 21), 783603(20, 21) - ALESSI and Variants - filed in the name of F & T Industries Pty Limited.

Background

F & T Industries Pty Limited (‘the applicant’) has filed applications to register four trade marks in Classes 20 and 21, details of which are given below:

Number & Trade Mark	Priority Date	Goods
778757(20) ALESSI 778757(21)	10 Dec 1998	Garden furniture, namely table and chair settings, side tables, sun lounges and other tables and seating; tool boxes of plastic; packaging containers of plastic; storage and transport containers of plastic Plastic household or kitchen containers, namely storage containers; plastic products namely storage containers, flower pots, buckets and household and handyman containers (including laundry baskets) and other plastic containers
783601(20) RIVIERA BY ALESSI 783601(21)	21 Jan 1999	Garden furniture, namely table and chair settings, side tables, sun lounges and other tables and seating; tool boxes of plastic; packaging containers of plastic; storage and transport containers of plastic Plastic products, namely storage containers, flower pots, buckets and household and handyman containers (including laundry baskets) and other plastic containers
783602(20) GIARDINI BY ALESSI 783602(21)	21 Jan 1999	Garden furniture, namely table and chair settings, side tables, sun lounges and other tables and seating; tool boxes of plastic; packaging containers of plastic; storage and transport containers of plastic Plastic products, namely storage containers, flower pots, buckets and household and handyman containers (including laundry baskets) and other plastic containers
783603(20) CASA BY ALESSI 783603(21)	21 Jan 1999	Garden furniture, namely table and chair settings, side tables, sun lounges and other tables and seating; tool boxes of plastic; packaging containers of plastic; storage and transport containers of plastic Plastic products, namely storage containers, flower pots, buckets and household and handyman containers (including laundry baskets) and other plastic containers

Application 778757 was advertised as accepted in the Official Journal of Trade Marks (‘the Journal’) on 27 May 1999 and the following applications were advertised as accepted in the Journal on 3 June 1999.

On 26 August 1999, within the times allowed to do so, FAO Industries SpA (‘the opponent’) filed Notices of Opposition to the registrations of the trade marks.  The grounds stated in the Notices are that:

(i)the applicant is not the owner of the trade mark pursuant to section 58 of the Trade Marks Act 1995 ("the Act");

(ii)the applicant does not intend to use the mark pursuant to section 59 of the Act;

(iii)the opposed mark is substantially identical with or deceptively similar to a trade mark that, before the priority date of the opposed mark had acquired a reputation in Australia and because of that reputation the use of the opposed trade mark would be likely to deceive or cause confusion (section 60 of the Act);

(iv)the opposed mark is substantially identical with or deceptively similar to a trade mark registered by another person in respect of similar goods with an earlier priority date (section 44(1) of the Act);

(v)the opposed trade mark is not capable of distinguishing the goods of the applicant from the goods of other persons (section 41 of the Act);

(vi)the use of the opposed mark is contrary to law pursuant to section 42 of the Act;

(vii)the use of the opposed mark in relation to the goods of the application, because of some connotation that the opposed trade mark has, would be likely to deceive or cause confusion - (section 43 of the Act); and

(viii)the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars (section 62 of the Act).

Evidence in support of the opposition, evidence in answer and evidence in reply were served and filed in accordance with the Trade Marks Act 1995 (‘the Act’) and regulations thereto.  In tabular form, the statutory declarations in evidence are:

Declarant	Known As	Date Made	Exhibits
Evidence in Support
Giorgio Ventura	Ventura 1	18 November 1999	A – J
Alberto Alessi	Alberto Alessi	17 December 1999	A – B
Madelaine Taylor	Taylor	20 December 1999
Mark Anthony Hobbs	Hobbs	28 January 2000
Geoffrey Allan Carkeet	Carkeet	27 January 2000
Evidence in Answer
Francesco Alessi	Francesco Alessi	2 November 2000	FA-1 – FA-5
Paul Brereton	Brereton	1 November 2000	PB-1 & PB-2
Peter Craven	Craven	2 November 2000	PC-1 & PC-2
Sarah Fyfe	Fyfe	3 November 2000	SF-1 & SF-2
Sarala Fitzgerald	Fitzgerald	1 November 2000
Amanda Crowe	Crowe	3 November 2000	AC-1 & AC-2
Erin Laracy	Laracy	3 November 2000	EL-1 & EL-2
Sally Mann	Mann	3 November 2000	SM-1 & SM-2
Charles Parker	Parker	3 November 1999	CP-1 & CP-2
Evidence in Reply
Giorgio Ventura	Ventura 2	25 April 2001	GV-1 – GV-4
Ronald Michael Newman	Newman	20 April 2001	RMN-1
Catherine Mary Chant	Chant	2 May 2001	CMC-1 – CMC-5
Jytte Laulund	Laulund	1 May 2001

The Hearing

The hearing was before me as a delegate of the Registrar of Trade Marks in Canberra on 12 July 2001.  The applicant did not appear or put in written submissions.  Mr Steven Burley of Counsel made submissions for the opponent by teleconference.  Before giving my reasons in this matter, I will discuss the evidence.

The Evidence

Mr Ventura is a director of G and C Ventura Pty Ltd which trades as Ventura Design and Exnovo.  For eighteen years, his company has been the Australian agent for the opponent, F.A.O. SpA, which is an Italian company of Fraz Crusinallo.  The opponent has exported a range of products to Australia since 1949 under the trade mark ALESSI.  Mr Ventura states that these goods include:

Candlesticks; timers; bottle openers; containers of foods and other items; cookware; gardening sets; bowls; glasses; salt and pepper shakers; vases; toilet brushes and containers; trays; cigar lighters; pepper mills; vacuum jugs; spaghetti jars; breadbins; thermometers; paper knives; pencils; coffee machines; “mixer and measure” products; pitchers; paper baskets; ice cube trays; candles; radios; tooth pick holder sets; fly swatters; scales; CD racks; teapots; and kettles; kitchen boxes; dinner sets; cutlery; kitchenware; clocks; lamps; utensil racks; utensils; trolleys; including television trolleys; tray tables; trays; photo frames; key rings; pencil holders; paper holders; bookends; biscuit boxes; other homewares; jewellery; books and t-shirts.

I would think it unlikely that all of these goods were imported into Australia in 1949 – for example, CD racks are unlikely to have been imported before the early 1980s when compact disks became popular.  I regard this statement, therefore, as meaning that, since 1949, the opponent has exported a range of goods to Australia which, over time, has included the nominated goods.

Mr Ventura attaches to his declaration, as exhibit A, a copy of the opponent’s 1999 catalogue, which contains a history of the opponent company.  The opponent was founded in the early twentieth century by Giovanni Alessi in Cruzinallo, a suburb of Omegna on the shores of Lake Orta in Italy.  Initially, the company focussed on working brass and nickel silver sheets but, since World War Two have become predominantly known as a source of a wide range of household goods, made in a variety of materials, sold under the trade mark ALESSI which have a strong ‘design’ element.  The catalogue gives the design date of each item and the material from which the item is made.  Many of the items are made from types of plastic, acrylic resin or Bakelite, or other material coated with the foregoing, and were designed well before the priority dates of the opposed applications.  Among such items are those which fall under the generic classification ‘container’ (for example, SG07 or AG02 –biscuit boxes) or would be a small item of furniture – (for example, EMSTA standard design trolley, which is epoxy resin coated).

The catalogue contains many hundreds of items each of which, says Mr Ventura, if not available in Australia, may be ordered through his company.

Mr Ventura says that his company distributes the goods through David Jones, Coles-Myer, Grace Bros and Daimaru; a variety of homewares/lifestyle stores in Melbourne and Sydney; and, through public museums and galleries in Sydney, Melbourne and Canberra.

Mr Ventura provides details of retail sales and advertising figures in relation to the goods sold under the trade mark in Australia for which confidentiality is claimed.  The figures are substantial, growing and have been so since 1990, the first year for which he provides figures.

The goods sold under the trade mark are widely advertised and promoted by way of advertising in national magazines such as Vogue Living, Marie Claire and Belle; there is also a newspaper advertisement in the Sun-Herald in evidence as well as brochures distributed through the retail outlets which stock the goods bearing the opponent’s trade mark.  Photographs of displays of the goods bearing the opponent’s trade marks at retail outlets in Adelaide, Melbourne and Sydney are exhibited at G to Ventura 1.

Alberto Alessi is managing director of the opponent.  He says that the opponent is owner of the following trade marks registered in Australia:

Reg Number:    296950
Owner:            F.A.O. S.p.A.
Priority Date:    17 June 1976

Goods:Tableware and stainless steel table serving utensils for home, bar and restaurant, all the aforesaid being goods in this class

Trade Mark:     ALESSI

Reg Number:    498692
Owner:            F.A.O. S.p.A.
Priority Date:    15 June 1988 priority from an Italian application

Goods:Silver-plated trays, tea-services, bottle mats, baskets, oil-vinegar sets, cheese dishes and clocks and watches

Trade Mark:     ALESSI

Reg Number:    498693
Owner:            F.A.O. S.p.A.
Priority Date:    15 June 1988 priority from an Italian application
Goods:            Cutlery, carving knives and forks
Trade Mark:     ALESSI

Mr Alberto Alessi observes that his company already promotes certain items of furniture in Australia – such as trolleys and tray tables.

Ms Taylor is buying manager, homewares, for David Jones Limited in Sydney.  Ms Taylor confirms that the opponent’s goods have been sold under the trade mark ALESSI by David Jones in Sydney for the last six years.  She further states that she has personally known of the goods of the opponent sold under the trade mark ALESSI for the last ten years.

Mr Hobbs is the owner and director of Urbano Interior Products which retails, inter alia, designer homeware.  He states that he has been aware of the use of the trade mark ALESSI by the opponent since 1988 and he confirms that he has been involved in the supply of some non-stock items bearing the applicant’s trade mark to customers – these items include trolleys.

Mr Carkeet is director of a company that does business as Style 3000 in Melbourne.  He states that he has known of the opponent’s ALESSI trade mark for the last twelve years and has marketed such goods for the last eight years.  His shop would normally carry about 150 different items from within the opponent’s range, not including colour variations.

In the evidence in answer, Mr Francesco Alessi says that he is managing director of F & T Industries Pty Ltd, of Victoria, which is the applicant in these proceedings.  In the early 1980s the applicant began making automotive components such as bumper bars using a plastic injection moulding process.  The declarant says that, from about 1985, a number of business associates suggested that he make goods other than automotive products and that, in 1990, the applicant started making plastic garden furniture under the trade mark F&T Industries.  Mr Francesco Alessi says that he took a very public role in the marketing of these goods and that he believes that the Alessi name was associated with the wholesale of the goods.

In 1998, Mr Francesco Alessi says, a buyer from Kmart suggested to him that the applicant’s products should have a clearer link to “my name Alessi”.  The buyer suggested that the products should be sold under the trade name ALESSI to build up a greater brand recognition in that name.

I will observe that it is not clear why Mr Franceso Alessi and the buyer apparently believed that he could achieve greater brand recognition under the trade mark ALESSI than he could under the trade mark he was using, or some other trade mark.  While there might be some innocent explanation, one reason that immediately suggests itself is that the trade mark ALESSI was already well-known.

Subsequently, the applicant filed its four trade mark applications for registration of the opposed trade marks.

The declarant says that he knew of the opponent’s ALESSI trade mark at the time he adopted the opposed trade marks and goes on to give reasons why he believed that there would be no consumer confusion caused by the presence of applicant’s and opponent’s trade marks on the market.

One of the reasons Mr Francesco Alessi gives is based on material gleaned from the opponent’s Internet website – this material stresses the up-market nature of the opponent’s goods.  However, I am not prepared to accept this as evidence of the honesty of the adoption of the trade mark as the website has obviously been accessed after the filings of the oppositions and the evidence strikes me as being an artificial reconstruction of events or mental processes that did not occur at the adoption of the trade marks or the filings of the opposed applications.  Further, it is not clear that this material was available on the Internet at the time that Mr Francesco Alessi’s company adopted the trade mark. 

The applicant commenced using its ALESSI trade marks on plastic products in March 1999.  The goods are, or were, sold through Kmart, Bunnings, Mitre 10, McEwans and Grocery Holdings.  The goods have not, claims Mr Francesco Alessi, been sold through the same retail outlets as those of the opponent.

Francesco Alessi attaches brochures showing the trade mark in use in relation to the goods and provides approximate retail figures for goods sold under the trade marks.

Paul Brereton is a senior buyer of Bunnings Building Supplies (‘Bunnings’) of Bourke Street Melbourne.  He attests that Bunnings stocks the goods of the applicant but not those of the opponent.  Mr Brereton says that he believes that it is unlikely that customers of Bunnings stores would know of the opponent’s ALESSI trade mark.  Most of this declaration is fact which is an elaboration of the applicant’s thesis that, as the goods of the applicant are down-market and opponent’s are up-market, there will be no confusion between the trade marks in the market-place.  Since I am, as will become obvious later in these reasons, to consider what the applicant can legitimately do if it secures registration, this material is not relevant to these proceedings. 

Similar observations apply to the declaration of Peter Craven who is National Business manager of Garden and Lifestyle at Mitre 10 Australia Limited (‘Mitre 10’).  Mr Craven avers that he does not think that anyone would wonder whether the goods sold in Mitre 10 under the ALESSI trade mark were made by the opponent.

The declarations by Sarah Fyfe, Amanda Crowe, Erin Laracy, Sally Mann and Charles Parker are made, I understand, although this is not stated here, by people who work within the offices of the solicitors for the applicant.  The declarations are in common form – essentially these people say that if they saw goods with the applicants trade marks on them and then they saw goods with the opponent’s trade mark on them, they would not be caused to wonder whether they came from the same source.  The basis for the comparison is in exhibits of the applicant’s goods and the opponent’s goods, bearing the trade marks, appended to their declarations.  The exhibits are also in common form.  This kind of evidence has been the object of criticism in the courts because no person is willing to admit that she or he would be likely to be deceived or confused.  In Addley Bourne v Swan and Edgar, Ltd 20 RPC 105 Farwell J said, at 118:

It only remains then to call the evidence of people who can say that they themselves would be deceived. Now it is obviously extremely difficult to get any such evidence. Nobody likes to admit that he is so extremely foolish, as in many cases he would have to do. The result is that unless it is left to the eyesight of the Judge to judge for himself, there is practically no evidence open to the Plaintiff in an action of this sort.

He went on to say (1903) 1 Ch 211 at 224:

It appears to me that there is also another reason against the admissibility (that is, of expressions by witnesses of the opinion that a particular mark is or is not calculated to deceive the public), and that is that I do not see how you can call any individual to give what is in truth expert evidence as to human nature, because what they are asked in this form of question is, not what would happen to them individually, but what they think the rest of the world would be likely to suppose or believe. They are not experts in human nature, nor can they be called to give such evidence, and, apart from admissibility, one cannot help feeling that there is a certain proneness in the human mind to think that other people are perhaps more foolish than they really are. I do not think that Carlyle is alone in his estimate of the intelligence of the majority of the inhabitants of these islands. Therefore that is ruled out as a matter of evidence.

Sarala Fitzgerald is the solicitor for the applicant.  She states that she attended various stores in Melbourne where the applicant’s and opponent’s goods bearing the trade marks are sold and she contrasts the methods of display and commercial environments within which the goods are sold – reflecting the up-market and down-market nature of the goods of the parties. 

In the evidence in reply, Mr Ventura in Ventura 2 says that, contrary to the applicant’s assertions, the opponent’s goods bearing the trade mark ALESSI have been sold through stores such as Target and Harvey Norman.  Mr Ventura avers that these stores sold one model of the opponent’s coffee makers that was the result of a joint venture between the opponent and Philips.  Mr Ventura observes that the price range for the opponent’s goods sold under the trade mark is very wide and ranges from $10 through to $2000.

Mr Ventura estimates that his company, which distributes the opponent’s goods in Australia, receives between 2 and 5 enquiries from people who have purchased the applicant’s goods and need, for some reason, to contact the maker of the goods.

Professor Newman is an Associate Professor of design management of the University of New South Wales School of Design Studies.  Professor Newman has a Diploma in Industrial Design and a Graduate Diploma in Higher Education, is a Fellow of the NSW Institute of Arts, and Honorary Life Fellow of the Society of Interior Designers, Singapore.  A copy of his curriculum vitae is exhibited to the declaration.  The professor has expertise in design and brand management and has given, or is scheduled to give, seminars on these topics in Singapore, Israel, Paris and Beijing.  Prior to his academic career, this declarant worked as Research and Development Manager for Sebel Furniture Limited, for his own companies, and as a consultant to other companies on matters of product design, design management, corporate identity and brand development.

Professor Newman says that he is familiar with the opponent’s ALESSI trade mark and has lectured on this brand and its design philosophy for at least 9 years.  He has visited the opponent’s factory in Italy and managed Alberto Alessi’s visit to Australia in 1995 where Mr Alessi lectured and gave workshops.  At that time, Professor Newman curated exhibitions of the opponent’s works in Melbourne and Sydney.

Professor Newman says that, in his experience, the opponent makes many goods of many different materials.  These include plastics.  The goods have many different applications – for example, in the kitchen, bathroom, garden and so on.  The goods range from the strictly ornamental to the very practical and range widely in price.

Professor Newman attests to the strength of the opponent’s ALESSI brand and to his opinion that any product bearing the name in the household, commercial, dining, food service or accessory areas would be associated with the opponent.

Professor Newman corroborates Mr Ventura’s evidence concerning the co-branding of coffee makers by the opponent with Philips and says that he bought such a coffeee maker from a Kmart store.

While I accept this evidence concerning the reputation of the opponent’s trade mark, I do not place reliance on Professor Newman’s conclusions as being expert opinion about the likelihood of deception and confusion.  The homewares market is not a "special market" as that term was used by Lord Diplock in Re GE Trade Mark [1973] RPC 297 at 321, 322 and adopted by Gummow J (with whom Black CJ and Lockhart J agreed) in Interlego AG v Croner Trading Pty Ltd (1992) 25 IPR 65 at 105, 106.

I now turn to the Chant declaration.  Catherine Chant is the solicitor for the opponent.  Her declaration exhibits correspondence from the applicant’s solicitors confirming that Sarah Fyfe, Amanda Crowe, Erin Laracy, Sally Mann and Charles Parker are employed by that firm.

Ms Chant’s declaration also exhibits the results of a survey conducted by email in her firm.  In this survey she asked two questions:

1.      Have you ever bought goods or services in a:

a.  Bunnings, or

b.  Mitre 10 store?

2.      Do you know of the brand ALESSI of the Italian homewares company?

Ms Chant receive 83 responses to her email, copies of which are exhibited to this declaration.  Of the respondents, 47 people had shopped in either or both Mitre 10 and Bunnings and knew of the opponent’s ALESSI trade mark.  Of the remainder, three people had never shopped in either Mitre 10 or Bunnings but had heard of the opponent’s ALESSI trade mark.  Three of the respondents know of the opponent as they work with Ms Chant on this matter.

The survey results might be slightly skewed from the normal – one would expect, perhaps, that people who work for a major firm of solicitors would have higher than average incomes.  However, I think that the survey tends to confirm that the opponent’s trade mark is very well known and that people who shop for goods such as those of the opponent are not excluded from stores like Bunnings, Kmart, Mitre 10 and so on.

Jytte Laulund is manager of Past Present and Future of Sydney which retails homewares, gifts and personal accessories.  She says that she has been employed in the homeware industry for 25 years and intitially worked in this industry in Copenhagen.  She says that, in her experience, in Europe, the opponent’s goods are sold in various kinds of stores including the humblest hardware stores.  Ms Laulund also says that in her opinion, the opponent’s goods are now available in a more broadly based range of shops in Australia and are no longer restricted to high line design shops.

Conclusions

The applicant’s evidence is apparently predicated upon the proposition that the use of the applicant’s and opponent’s trade marks will not confuse or deceive since the goods of the parties are destined for different markets.  One is cheap and sold down-market; the other is expensive and sold up-market.

The opponent’s evidence goes to its reputation, which I would assess as being very strong for the reasons that I give, below.  The opponent’s evidence also suggests that the distinctions between the markets for the parties’ goods are not as strong as the applicant believes and that the goods may be sold within the same markets.

At the hearing of the matters, I asked Mr Burley if he wished me to give reasons in relation to all of the grounds which he addressed in his submissions. He does not and, accordingly, I will decide these matters in terms of section 60 of the Act, as it is the most relevant to these proceedings.

Section 60

Section 60 of the Act provides:

60Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

(b)because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note 1:For deceptively similar see section 10.

Note 2:For priority date see section 12.

The issues that arise are therefore:

Are the trade marks of the applicant and that of the opponent substantially identical or deceptively similar?

What reputation had the opponent’s trade mark at the priority date of the filing of the applicants trade marks?

Because of the reputation of the opponent’s trade mark, would the use of applicant’s trade marks be likely to deceive or cause confusion?

The trade marks

The test for substantial identity is that set out by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414–15:

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 …

There is no doubt that the applicant’s and opponent’s trade marks ALESSI are substantially identical as there is no difference between them.  The balance of the applicant’s trade marks contain material other than the word ALESSI – there is some room for the view that, as this other matter lacks inherent distinctiveness, it should be discounted from the trade marks in the comparison.  However, since this is not critical to my decision, I will leave this in abeyance.

The test for deceptive similarity is as well known as the above quotation.  As Windeyer J said in The Shell at 415:

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.

Windeyer J added, at 416, that

[the] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone but, by the effect of that similarity in all the circumstances.

In the trade marks RIVIERA BY ALESSI, CASA BY ALESSI and GIARDINI BY ALESSI, in the context of the applicant’s goods, I consider that the word ALESSI is stressed and forms the dominant feature of the trade marks as it is apparent that the words CASA and GIARDINI lack inherent distinctiveness, and are descriptive of a characteristic of the goods, being the Italian words for ‘house’ and ‘garden’.  The other word, RIVIERA, is geographical in origin and is, at the very least, strongly evocative of an Italian or Mediterranean origin.  The words BY ALESSI in each trade mark suggest immediately that the item bearing the trade mark is one in a special style or for a particular purpose made by a person called ALESSI.

The deceptive similarity is strengthened, rather than diluted, by the fact that the words other than the words BY ALESSI in the opposed trade marks are Italian in origin.  In other words, a purchaser, knowing of the prior trade mark, is likely to understand the other matter as being confirmation of an Italian origin and hence connect the trade marks more closely with that of the opponent.

Accordingly, I am satisfied that the trade mark of the opponent and the trade marks RIVIERA BY ALESSI, CASA BY ALESSI and GIARDINI BY ALESSI of the applicant are deceptively similar.

Reputation

The reputation of a trade mark may be assessed in a number of different ways.  An obvious method is to assess the revenue gained by sales of goods and expenditure and the amounts spent advertising and promoting the goods to the public and to infer the reputation of the trade mark from these.  There are other indicators: as noted by Kenny J in McCormick & Company Inc v McCormick [2000] FCA 1335, at paragraph 85:

[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures. As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the 'recognition' component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the 'esteem' component of the reputation as do the public events and other trader's marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, 'contra deals' and so forth.  It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC ¶91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 ("Gymboree"), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 ("Nettlefold"), in which Heerey J relied upon the public visibility of the applicant's marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

I infer from the figures relating to the sales of, and advertising relating to, goods bearing the opponent’s trade mark that the trade mark had, at the filing dates of the opposed applications, quite a strong reputation in Australia.  However, I note that the opponent’s goods bearing the trade mark are actually sold, not only in retail outlets but also in museums and galleries; they have been exhibited in galleries in Melbourne and Sydney and have been the subject of lectures in Australia by Mr Alberto Alessi and Professor Newman.  In other words, the goods bearing the opponent’s trade mark are popularly held out to be exemplars of an approach to design, styling and marketing of homewares.  The ‘esteem’ component of the reputation of the trade mark is, therefore, very high and I would consequently conclude that the trade mark had, at the filing dates of these opposed applications, a very high and extensive reputation in Australia.

Deception and Confusion

In Registrar of Trade Marks v Woolworths [1999] FCA 1020, at paragraph 50, French J said:

In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

(i)To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

(ii)A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

(iii)In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

(iv)The rights of the parties are to be determined as at the date of the application.

(v)The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:

"...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

The applicant’s proposition that there will be no confusion or deception, as its goods are cheap and sold through stores such as Kmart and Bunnings, whereas the opponent’s goods are expensive and sold through more exclusive stores, is, in the light of the principle in Berlei, quite erroneous.  For this reason I have not dwelt at length on the evidence in support of the applicant’s proposition.  What I am to consider is how the applicant may use its trade mark if it secures the registrations – obviously, if it secures the registrations, it may, within the scope of the registrations, produce and market goods bearing the trade marks which are more expensive and sold through more exclusive retailers.  Another problem with the logic of the applicant’s proposition is that, while it is apparent that not a large proportion of the people who shop within stores such as Mitre 10 or Kmart may shop for homewares in the upmarket stores within which the opponent’s goods are sold, the reverse is not true.  Most of the people who shop in the upmarket stores within which the opponent’s goods bearing the trade mark are sold will also shop within downmarket stores.  Further, the opponent has, in a co-operative venture with Philips, actually marketed coffee makers through stores which are more downmarket.

The applicant’s specifications of goods contain goods which are the same kind of thing in respect of which the opponent has, in fact, used its trade mark – although this is not necessary to establish an opposition in terms of section 60. Goods sold by the opponent such as plastic, Bakelite, acrylic polymer and resin homewares are of the same genus as packaging containers of plastic; storage and transport containers of plastic. The opponent’s trolleys and stands are of the same genus as the applicant’s plastic furniture. More relevantly stated, however, the applicant’s specifications of goods contain those which would, if made and marketed in the same way as the opponent’s goods, be taken for the opponent’s goods because of its trade mark by the public who are already aware of the reputation of that trade mark.

There is also a real likelihood that the public, who are aware that the opponent has produced goods under the trade mark in a joint venture with one manufacturer, will see the goods of the applicant under the opposed trade marks as being the result of another joint venture with another manufacturer.

I therefore conclude that because of the reputation of the opponent’s ALESSI trade mark, the use of the applicant’s trade marks consisting of, or containing that word, would be likely to deceive or cause confusion.

Decision

The opposition succeeds under section 60.

Costs

Having been successful, the opponent is entitled to its costs.

Ian Thompson
Hearing Officer

13 August 2001