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…

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: [2010] ATMO 96
Decision Date: 29 September 2010

CaseChat Overview and Summary

Ferrari SpA (Ferrari) sought to prevent Wicara Enterprises (Wicara) from using the mark "FERRARI" in relation to its services, which included the provision of a dating and matchmaking service. Ferrari, the renowned manufacturer of luxury sports cars, argued that Wicara's use of the mark infringed its registered trademarks and constituted misleading and deceptive conduct under the *Trade Practices Act 1974* (Cth) (now the *Competition and Consumer Act 2010* (Cth)). The matter came before the Federal Court of Australia.

The primary legal issues before the court were whether Wicara's use of the "FERRARI" mark in relation to dating services was likely to cause confusion or deception among consumers, thereby infringing Ferrari's registered trademarks for identical or similar goods and services. Additionally, the court had to consider whether Wicara's conduct was misleading or deceptive under the *Trade Practices Act 1974* (Cth), given the distinct nature of the services offered by both parties.

The court found that while Ferrari's mark was well-known, the services offered by Wicara (dating and matchmaking) were sufficiently distinct from Ferrari's core business of manufacturing and selling luxury motor vehicles and related goods. The court applied the principles of trademark infringement, which require a likelihood of deception or confusion. It determined that consumers were unlikely to associate a dating service with a luxury car manufacturer, and therefore, there was no infringement of Ferrari's registered trademarks. Similarly, the court concluded that Wicara's use of the mark was not misleading or deceptive under the *Trade Practices Act 1974* (Cth) because the difference in the nature of the services was so significant that consumers would not be deceived into believing there was any connection between the two businesses.

Ferrari's application was dismissed.

Orders