Ferrari SpA v Wicara Enterprises - [2010] ATMO 96

TRADE MARKS ACT 1995

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

Re:Opposition by Ferrari SpA to registration of trade mark application 1268275(25) – Rearing Black Horse logo - filed in the name of Wicara Enterprises.

Delegate:

Deirdre O’Brien

Representation:

Decision on the written record

Decision:

2010 ATMO 96

S52 opposition to registration.

S44 ground established – substantially identical device trade marks. Registration refused.

Background

On 27 October 2008 Wicara Enterprises (‘the applicant’) applied to register the trade mark depicted below in respect of Men's clothing; occupational clothing; women's clothing.

Acceptance of the application was advertised in the Australian Official Journal of Trade Marks on 26 February 2009. Ferrari SpA (‘the opponent’) subsequently filed a notice of opposition to registration.
In the notice the opponent nominated the grounds of opposition pursuant to sections 39, 41, 42, 43, 44, 58, 58A, 59, 60, 61, 62 and 62A of the Trade Marks Act 1995 (‘the Act’).
To support its opposition the opponent filed and served declarations by Peter Lee made 3 July 1009 with Exhibits PL-1 to PL-5; Craig Raymond Douglas made 14 July 2009 with Exhibits CRD-1 to CRD-5; and Massimiliano Maestretti made 14 July 2009 with Exhibits MM-1 to MM-8. The applicant did not file or serve any evidence.
Neither party requested a hearing when given the opportunity to do so. The opponent filed written submissions.
I have been delegated by the Registrar of Trade Marks to decide the opposition pursuant to section 55 of the Act. Section 55(1) provides:
Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
My decision is based on the written record, namely the notice of opposition itself, the opponent’s evidence and its submissions. For convenience I will first consider the section 44 ground.

Section 44 – trade mark substantially identical or deceptively similar to an earlier trade mark

Section 44(1) provides:
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.

In its notice of opposition the opponent cited the following multi-class registration as the basis for this ground.

Regn no	805775
Priority date	24 June 1997
Trade mark

The cited registration includes goods in class 25 as follows:
Racing suits, bath clothes, overalls, gloves, shirts, blouses and blousons; shoes, boots, caps, ties, scarves, head scarves, skirts, trousers, bermuda shorts, waistcoats, jackets, belts, suspenders, bands, shirts, sweat shirts, polo shirts, T-shirts, roll-neck shirts, bath robes, socks, foulards, pyjamas, slippers, mantles, overcoats, parkas, trenchcoats, jeans, underwear, blazers, rain coats, wind resistant jackets, waterproof jackets, coats, pullovers, sweaters, leather jackets
The priority date of registration 805775 is earlier than the priority date of the applicant’s trade mark and its class 25 goods are the same as the applicant’s Men's clothing; occupational clothing; women's clothing. Accordingly, they meet the requirements for being ‘similar goods’ which section 14(1) of the Act defines as follows:
(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.

It only remains for me to consider whether or not the respective trade marks are substantially identical or deceptively similar.

The Act contains no definition for ‘substantially identical’. According to Branson J in Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411 at page 433:
The expression is … to be understood in its ordinary or usual sense of in substance, or essentially, the same.
As the opponent pointed out in its submissions, the accepted test for substantial identity was outlined by Windeyer, J in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 (‘Shell’). The trade marks in that case were ‘device’ marks, that is, trade marks without words. There have been very few cases since Shell where the substantial identity of device trade marks has been the subject of judicial consideration[1].
[1] Coca-Cola Company v All-Fect Distributors Ltd (1999) 47 IPR 481; Oakley Inc v Oslu Import and Export Pty Ltd (2000) 48 IPR 32; Global Brand Marketing Inc v YD Pty Ltd (2008) 76 IPR 161.
See Appendix A for some of the cases where the Registrar has considered the substantial identity of device trade marks.
Shell involved four instances of alleged infringement by the oil company, Shell Company of Australia Ltd, of the registered trade marks depicted below, in the name of Esso Standard Oil (Australia) Ltd.

Justice Windeyer described Esso’s trade marks as follows (at 409):
Both the marks are for a caricature of a man, having a large head, large hands and a comparatively small body – the whole being delineated in outline and with little detail. This figure was described during the argument as a “humanized oil drop”. In outline the head resembles a drop of fluid; and depicting inanimate objects with faces, arms and legs is, it seems, in the parlance of advertisers who make use of such pictures, called “humanizing” them.
Windeyer J then considered the evidence to see whether other traders had used ‘humanised’ oil drops in their advertising because, as he said at 410:
All questions concerning trade marks must be considered against the background of the usages in the particular trade.
He observed that:
[B]efore the date of registration advertisements had been published by various vendors of motor spirit and lubricating oils in which drops of oil with faces, arms and legs were represented as expressing sentiments or making statement extolling particular products. I refrain from describing all these as humanized drops, for in one case they seem to have wings in place of arms and are thus, it seems, not human but angelic, although capable of using oil cans while singing a non-celestial song.
He found at 411 that:
Most of the personified oil drops that appeared in the other advertisements are quite unlike the plaintiff’s marks. The significance of the evidence of these advertisements is that, in the light of them, the plaintiff’s trade mark cannot be regarded as giving an exclusive right to personified oil drops of all kinds. So that another mark that is or incorporates a device in the shape of an oil drop is not, on that account alone, an infringement of the plaintiff’s marks.
The plaintiff alleged its trade marks had been infringed in four advertisements. Justice Windeyer described the first advertisement at 411:
It consists of a caricature of a man with an outsize head that is apparently intended to represent a distorted oil drop. His body is clothed in the uniform of a seafaring officer; he is seen in profile not full-faced as is the plaintiff’s man; his mouth is wide open perhaps from cheerfulness perhaps from surprise at the odd dimensions of his ship. I see nothing in this picture, looked at as a whole, that resembles the plaintiff’s mark in any relevant sense, nor indeed anything which would call it to mind at all.
He described the second advertisement at 412:
It depicts two drops of oil, having faces and crudely drawn arms and legs, but without bodies separate from their heads. They are going through the mesh of a filter on an oil drum. Here, too, the picture, looked at as a whole, seems to me remote from the plaintiff’s marks and to convey no real impression of resemblance to them.
The third and fourth alleged instances of infringement involved television advertisements. Justice Windeyer described them at 413:
The first of the films here in question deals with the adventures of an oil-drop character who has a small badge on his jacket. He goes to the Patent Office and there receives a scroll called a patent, this falls on his head, turns into a woman’s hat, and he then becomes a female figure dressed apparently only in a hat; after dancing for a second or so the figure resumes male form, nails a document called an ICA patent on a wall and proudly points with one hand to the badge on his jacket. This badge then becomes enlarged by a process described technically as “zoom to ECU [meaning extra close-up] of badge”. It is then plainly a Shell badge.
…
During part of this drop’s brief career it clearly resembles in form and features the plaintiff’s oil-drop man as depicted in the trade marks. And, especially on a small screen, the badge it is wearing would, I think, enhance the resemblance until the extra close-up made it clear it is a Shell badge.
In the second film five drops appear on the screen. One having acquired a face and body has some similarity to the plaintiff’s mark. It steps forward. Suddenly it acquires the body of a kangaroo and hops onto a microscope. Then it resumes a more or less human body into something, presumably ICA, is injected by a syringe. It then puts up notices referring to Shell petrol. .. During some of its activities this drop assumes attitudes that give it momentarily some similarity to the plaintiff’s marks.
He observed that a finding of infringement was depending on a finding of use by a person other than the registered proprietor of a substantially identical or deceptively similar trade mark. He said at 414:
It is not suggested here that the defendant has used a mark that is exactly the same in all details as the registered mark. … [T]he question is whether there is either substantial identity or deceptive similarity.
He continued:
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 feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: De Cordova v Vick Chemical Co (1951) 68 RPC 103 at 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v Cody (1945) 70 CLR 100 at 114-14; [1945] ALR 186 per Latham CJ; and Ex parte O’Sullivan; Re Craig (1944) 44 SR(NSW) 291 at 298 per Jordon CJ, where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity, my opinion is that in each film there are one or more moments when the personified figure of the oil drop appears in a form that is substantially identical with the registered mark.
Shell was overturned on appeal but not on this point.[2]
[2] Windeyer J found the registered trade marks had been infringed by the use of the ‘personified’ oil drop in the television advertisements. On appeal it was held there had been no infringement as that use was not ‘use as a trade mark’: Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 1b IPR 523
At the time Shell was decided the Trade Marks Act 1955 was in force. But the next case where the substantial identity of device trade marks was considered judicially - Coca-Cola Company v All-Fect Distributors Ltd (1999) 47 IPR 481 – was decided under the current Act. The test for substantial identity was confirmed by the Full Bench of the Federal Court at 495:
In order to determine whether marks are substantially identical they should be compared side by side, their similarities and differences noted and the importance of these similarities and differences assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.
I turn now to the trade marks under consideration in this opposition. Each is a device trade mark consisting solely of a representation of a horse as shown below:

The applicant’s trade mark is on the left. The opponent’s trade mark is on the right. Both are for clothing. Unlike Shell I have no formal evidence before me about the use by other traders of representations of a horse or horses in trade marks for clothing. However I can take into account the state of the Register (reg 21.15(8)).
At the date of this decision there are 49 trade marks which consist solely of the representation of horses (with and without rider) registered for clothing. There are a further 228 trade marks which contain a representation of horses in addition to other material registered for clothing. The state of the Register shows the opponent’s registration does not give it exclusive right to the representation of a horse per se in relation to clothing.
The applicant’s trade mark is a two dimensional drawing of a rearing black horse. The drawing does not show any features of the horse other than its outline. The horse is drawn in a reasonably life-like manner and is turned to the right from the viewer’s perspective. Both its hind legs are on the ground and its forelegs are splayed. Its neck is arched and its tail is touching the ground.
The opponent’s trade mark is a three dimensional drawing of a rearing black horse. The horse is drawn in a reasonably life-like manner and is turned to the left from the viewer’s perspective. One of its hind legs is in contact with the ground. The other is in the air. Its forelegs are splayed. Its neck is arched and details of its mane and tail can be seen. Its tail is raised.
In considering these differences and similarities, the comments of Bennett J in Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd (2003) 59 IPR 318 at 326 are relevant:
It is not just a question of adding up and comparing the points of resemblance and dissimilarity, nor of portions of a word: Re William Bailey (Birmingham) Ltd’s Trade Mark Application [1935] 52 RPC 136 at 153. It is the general effect of “the respective wholes”: Clark v Sharp (1898) 15 RPC 141 at 146.
The purpose of a side by side comparison is to decide whether or not the trade marks are ‘essentially the same’. The Registrar’s delegate in Estar Online Trading Pty Ltd v Estar Ltd (2001) 53 IPR 583 commented at 588:
The fact that trade marks are not exactly identical does not necessarily mean that they are not substantially identical.
I find the side by side comparison of the trade marks in this opposition establishes that they are in essence the same. The general effect of “the respective wholes” is of a realistic drawing of a rearing black horse as seen from the side. The trade marks are substantially identical.
The opponent has thus established the section 44 ground and its opposition succeeds on that basis. It is unnecessary for me to consider any of the remaining grounds.

Decision

As one of the grounds of opposition has been made out, my decision is to refuse to register trade mark application 1268275.

Deirdre O’Brien

Delegate of the Registrar of Trade Marks

Trade Mark Hearings

29 September 2010

APPENDIX A

Trade marks substantially identical

[2002] ATMO 106

Trade marks not substantially identical but deceptively similar

Unpublished 2008 ATMO decision re trade mark no.1075172

[2004] ATMO 59

[2002] ATMO 112

(2000) 50 IPR 473

(1999) 49 IPR 665

Trade marks not substantially identical – deceptive similarity not considered

[2010] ATMO 66

Trade marks not substantially identical or deceptively similar

(2008) 77 IPR 614

[2008] ATMO 67

[2004] ATMO 70

[2004] ATMO 17

(2000) 49 IPR 151

(1996) 36 IPR 543