Fendi Adele Srl v Fox-Wizel Pty Ltd

[2007] ATMO 46

TRADE MARKS ACT 1995

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

Re:Opposition by Fendi Adele Srl to registration of trade mark application 1023079(35) - F FOX LOGO - filed in the name of Fox-Wizel Ltd.

Delegate:

Terry Williams

Representation:

Opponent: written submissions by Corrs Chambers Westgarth, solicitors.

Applicant: Susan Gatford of counsel, instructed by Clayton Utz solicitors.

Decision:

2007 ATMO 46

S 52 opposition.  Deceptive similarity not established for purposes of s 44 and s 60, registration proceeding

Background

1. Fox-Wizel Ltd has applied to register the following trade mark. 

1. The application is in respect of the following services:

   Retail services performed in retail fashion stores; franchising services pertaining to retail fashion stores; sales promotion; advertising; direct mail advertising; shop window dressing; publication of publicity texts; procurement services for others (purchasing of goods and services for other businesses); demonstration of goods; business management assistance; business management consultancy; business information; business investigations; marketing studies; business management and organisation consultancy; public relations

2. The application has been examined, and accepted for possible registration, but this is opposed by Fendi Adele Srl (“the opponent”). The opponent relies on grounds of opposition under s 44 and 60. Those provisions are drafted in different ways, to achieve different ends. However, they both hinge on the claim that the applicant’s trade mark is, for the purposes of s 10 of the Trade Marks Act 1995 (the Act) “deceptively similar” to the following marks, registered in the name of the opponent.

Trade mark	Trade Mark	Goods
274997	Footwear and all other goods in class 25
303042	Clothing, including boots shoes and slippers in class 25

1. In support of this contention, the opponent filed written submissions but did not attend the hearing, which I conducted under delegation from the Registrar of Trade Marks.  The opponent’s submissions were prepared by its solicitors, Corrs Chambers Westgarth.  The applicant exercised its right to be heard and was represented by Susan Gatford of counsel, instructed by Clayton Utz solicitors.

Deceptive similarity?

1. It is difficult to fault the opponent’s initial stipulations, which I set out as follows:

   "Deception" or "confusion" in the relevant sense is not limited to visual and/or phonetic confusion between the marks themselves but may entail confusion or deception as to the trade origins of the goods or services (John Fitton & Co Limited's Application (1949) 66 RPC 110 at 113). The Federal Court held in Woolworths Metro (93 FCR 365 at 383) that it is enough for a mark to "cause confusion" if there is a real, tangible danger that a consumer would be caused to wonder whether there is a connection between the marks, or the trade origins of the goods or services supplied under them, or have reasonable doubts. In this context, "confusion" can include "indefiniteness of ideas" (Rich J in Radio Corp Pty Ltd v Disney (1937) 57 CLR 448) or "the sense of mere wonderment as to common origin or connection" (Woolworths Metro).

2. I will not draw this matter out by repeating the opponent’s arguments about the importance of proper allowance for imperfect recollection.  The opponent’s argument comes to the crunch when it is said that:

   Where two marks look alike, case law supports the proposition that the idea conveyed by the marks can be taken into account in deciding whether the marks are likely to deceive: "The presence of a common idea may be a determining factor because the idea is more likely to be recalled that [sic] the precise details of the mark"[Jaffejee v Scarlett (1937) 57 CLR 115 at 121-2; Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited (2003) 59 IPR 31 8 at 331; Sports Cafe v Registrar of Trade Marks (1998) 42 IPR 5521.

   Applying the relevant tests, the opponent submits that the applicant’s and opponent's marks look alike and are deceptively similar for the following reasons:

   (i) the marks convey essentially the same idea, that is, the combination of two letter F's with one letter upside down and interlocking with the other ("Interlocking FF Device") -this shared feature dominates all three marks and provides a prominent visual identifier pivotal to the their recognition by consumers;

   (ii) the other features of the trade mark, including the word FOX, are not so prominent as to displace the commonality of the interlocking FF

   (iii) with the exception of 954629 registered in the name of the applicant, the opponent’s marks are the only registrations in class 25 which feature the interlocking FF device.

3. I will note here that (iii) above is the opponent’s concession that the applicant is already registered as the owner of an almost identical trade mark for relevant goods. The already-registered mark differs from the present only in what appear to be imperfections introduced by the scanning or reproduction process. However, there is no evidence about why the registration of that trade mark in respect of clothing was not challenged at opposition. Nor is there any evidence that the earlier trade mark has been actually used by the applicant. In short, the co-registration of the opponent’s two trade marks with that of applicant in class 25 is, while suggestive, not of decisive weight. The co-existing registration of all three marks in respect of clothing does not preclude the opponent making out, now, the necessary ground(s) of opposition if, as a first hurdle, the test posited by s 10 is met.

4. Ms Gatford addressed the opponent’s submissions, agreeing that the question of deceptive similarity was the crucial one.  She disagreed with the opponent’s argument that the applicant’s and opponent’s respective marks could all be labelled as interlocking letters F.  The applicant’s mark, she argued, subordinated the juxtaposing of two letters F by adding the strong and notable word FOX which, she said, added a new element to the applicant’s mark while drawing away visual weight, and hence reducing the likelihood of recall of, the second letter F.

5. The opponent asserts that consumers are more likely to remember marks by their general impressions or by some significant detail rather than by any photographic recollection (de Cordova v Vick Chemical Co (1951) 1B IPR 496).  The opponent argues that there is thus a reasonable likelihood that a person of normal intelligence but an imperfect recollection, on encountering the trade mark, would wonder whether there is a connection between the trade mark and the opponent's marks.  Such a person, argues the opponent, might (mis)apprehend the interlocking FF Device common to both the trade mark and opponent's marks as a device denoting a common trade source.  In doing so, he or she would disregard differences which might otherwise help to distinguish the trade mark from the opponent's marks.  Alternatively, he or she might adopt the (mistaken) assumption that the trade mark is an "updated version" of the opponent's marks, or a "diffusion mark" within the opponent's well-known stable of brands.

6. The opponent further submits that the addition of the word FOX, occupying as it does only a minor proportion (in area less than 20%) of the trade mark, does little to displace the scope for confusion.  Were the trade mark to be used on small areas such as neck labels for clothing, the opponent argues the word FOX would not reliably serve to distinguish the trade mark from the opponent's marks.  In any event, a number of cases support the proposition that the addition of words to device marks may not serve to dispel the risk of confusion if the device mark is itself similar to another trade mark.

7. The opponent’s submissions also rely on two administrative decisions, one of which is not particularly helpful while the other of which (as Ms Gatford was quick to point out) might well support the applicant. 

8. These are as follows, with the prior registration in the left-hand column:

1. The first of these decisions[1] compared trade marks that Ms Gatford characterised as “chubby chef” devices; one with, and one without, the word KUCHAREK.  I have reproduced the opponent’s depiction of the marks in contention, but this appears to have misconstrued the marks in suit, and thus the hearing officer’s decision.  The hearing officer specifically addressed s 60, and thus the mark actually in use by the opponent, as follows:

   The applicant’s trade mark contains each of the stylistic elements of the opponent’s trade marks. There is a prominent graphical element of a chef’s head and a graphical representation of vegetables in close proximity and in the same position relative to each other.  The opponent’s trade mark appears on a blue background, as does the applicant’s trade mark in use. 

   [1] Podravka Prehrambena Industrija Dd v Przedsiebiorstwo Produkcyjno Handlowe “Prymat” Ryszard Lechowski (2004) 64 IPR 414.

2. Moreover, the hearing officer was able to say:

   My impression is that the figure on which the cartoon chef in the opponent’s trade mark is based and the photograph of the applicant’s chef might, in the context of the trade marks in suit, reasonably be taken to be the same person.

3. Regrettably, even the original copy of the hearing officer’s decision does not clearly reproduce the material that was before the hearing officer at the time of the decision.

4. In the other matter[2], I compared two Pegasus trade marks and said

   The presence of the words PEGASUS IC CERTIFIED ACCOUNTANTS is simply not enough to ‘tellingly distinguish’ the applicant's mark from the device that is the entire of the prior registration.  For all that, to careful inspection, the two devices are not the same, they are simply too close. 

   [2] Mobil Oil Corporation v Dynam Nominees Pty Ltd [1999] ATMO 99

5. In my reference to “tellingly distinguish” I referred to the decision of Wilcox J in Dial-an-Angel Pty Ltd v Saggitaur Services Systems Pty Ltd 19 IPR 171. Wilcox J considered the importance of common features and their balance with distinguishable features. He noted a proposition of long standing: "a man infringes the mark of another if he seizes upon some essential feature of the plaintiff's mark". Wilcox J qualified this as follows:

   Perhaps that statement should be read subject to a qualification that the similarity of an essential feature may be negated by another feature which tellingly distinguishes the two marks.  But this will ordinarily be difficult, for the reasons spelled out in Jafferjee. [Jafferjee v Scarlett (1937) 57 CLR 115].

6. Both of those last cases need to be seen in the light of the presumption under s 33 of the present legislation.  Specifically, while the standard that defines deceptive similarity has not shifted from that defined by case law under the 1955 legislation, such matters as the present must be approached from the principle that deceptive similarity is not established unless the delegate is satisfied, on the basis of the appropriate tests, that deception or confusion is sufficiently likely on the balance of probabilities.

7. The opponent’s central premise is that “The Interlocking FF Device forms an unusual, eye-catching and therefore memorable logo which is likely to fix in the mind of consumers of clothing and the like as belonging to only one trader in the marketplace”.  I do not subscribe to this view of the matter.  The opponent has, to put it bluntly, invented the construct of an interlocking FF device, a description of which Ms Gatford was critical, and seeks now to show that it is a feature of all three trade marks.

8. Not all minds will see and recall trade marks in the same way, particularly when a combination of words and devices is involved.  Clothing buyers and the like - the applicant’s customers, in other words - have the ordinary human talent for making mistakes, groundless speculation or other sorts or confusion, and I do not rule out some instance of the sort of confusion the opponent has in mind.  However, the opponent’s case is weak.  The argument that is strong with traditional and very similar renditions of the winged horse Pegasus barely stretches to the chubby chef in the KUCHAREK example relied on by the opponent and not at all, in my view, to the present matter.  The opponent’s case falls down on the lack of any real probability that the applicant’s and opponent’s respective devices (leaving aside, for the moment, the word FOX) would be recalled, even on a neck label, as similar in the first place, or apprehended, wrongly, as possibly similar. 

9. The more likely view is that the opponent’s trade marks will be recalled for, and in terms of, the comparatively intricate patterns formed by the ways in which the two letters F have been arranged.  I would stress, too, that it is not appropriate to compare the applicant’s mark with any sort of collective or joint impression of those of the opponent.

10. The opponent has argued that the applicant’s mark might be apprehended as, to put the matter in my own words, ‘another variation on the opponent’s familiar interlocked F theme’.  Indeed, the opponent seems to assume that it has some sort of de facto monopoly on logos involving the letter F, and its solicitors’ submission invited me to take cognizance of the opponent’s (asserted) reputation.  This is something that I will not do.  With all due respect to the opponent, it is not in the same category as Woolworths, of whose trade mark both Wilcox J and, on appeal, the Full Court of the Federal Court[3] were prepared to recognize the notoriety.  Nor is the opponent comparable to McDonald’s Corporation, which various administrative decisions have recognized as the owner of a family of Mc and Mac marks for particular goods and services[4].

    [3] Registrar of Trade Marks v Woolworths Ltd 45 IPR 411 at 431

    [4] McDonald's Inc v Future Enterprises Pte Ltd [2007] ATMO 22, McDonalds Corporation v David Bellamy [2004] ATMO 26, McDonald's Corporation v Macri Fruit Distributors Pty Ltd [2000] ATMO 37.

11. In this case, the opponent has filed and served no evidence at all.  There is thus nothing from the opponent that might underpin such a finding and I will not speculate on that issue further.  If there is potential for the applicant’s trade mark to be apprehended as one of the opponent’s “well-known stable of brands”, I would need evidence of this otherwise unsupported assertion, from which to gauge the likely effect of that knowledge on the minds and perceptions of the public in general.

12. Obviously, proper regard must still be had to the ordinary principles of imperfect recollection but the proper comparison in such a case is to compare, separately, each of the opponent’s trade marks to that of the applicant.  In doing so I am far from convinced that there is any real or significant risk of confusion. 

13. In 274997 the arrangement of the letters F is such as to give a very strong impression of a white maze with multiple irregular black borders.  This is not the impressions emerges from the graphic elements in the applicant’s mark, where the second (inverted) F is subordinated to the first, while the strong angularity of the “maze” is non-existent.  Rather, the white zig-zag line that is a strong feature of the centre of the applicant’s mark serves as an edging for the letter on the left, while rendering the inverted F as more of a background, leaving the first impression as being a single letter F on a black square.  The letter F is thus not a particularly obvious feature of the applicant’s trade mark.  Its presence is camouflaged, as it were, by the rendering of the cross-bar of the F at a low height, where it also functions as a highlight for the word FOX, the presence of which further reduces the visual impact of the second letter F, while leaving the white zig-zag above the word FOX quite notable.  Ultimately, no matter how such graphics may finally be categorized in the memory of customers, there are far more points from which they would be categorized as being different than similar.

14. Turning to 303042, the conclusion is the same.  The two letters F in the opponent’s mark stand free and clear.  This is enhanced by the shading that gives a three-dimensional view, giving rise overall, perhaps, to a secondary impression of notched arrowheads, pointing northwest and southeast, as it were.  Neither of those impressions arises from the applicant’s mark, which I have already discussed.  The end result, again, is two trade marks that are memorable in their own rights, without that degree of resemblance that is likely to deceive or cause confusion.

15. I do not, therefore, subscribe to Ms Gatford’s argument that the opponent’s trade marks are “weak”, or perhaps malleable, with their identity able to be readily countered by the addition of significant other material, here the word FOX.  In my view, it is more the case that each of the opponent’s devices is sufficiently strong and robust as not to be confusingly similar to the applicant’s trade mark in the first place.  Were there more initial similarity about the competing devices, and were the prominence of the letter(s) F pivotal in this, I would hesitate to say that appending a word beginning with that letter to the device of either camp (without the adopting of a different word by the other disputing party) could even potentially remove the conflict. 

Conclusion and costs

1. As deceptive similarity is not established neither the s 44 nor the s 60 grounds of opposition can succeed.  The trade mark application may therefore proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been discontinued or, in the event of a decision from the Court, unless the Court so orders.

2. I direct that the opponent pay the costs of the applicant to the limit of the official scale.

Terry Williams

Hearing Officer

Trade Marks Hearings

8 August 2007