Fish London Limited v Tish & Snooky's N.Y.C Inc

[2018] ATMO 137

TRADE MARKS ACT 1995

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

Re:Opposition by Fish London Limited to registration of trade mark application 1784341 (3) - TISH - in the name of Tish & Snooky's N.Y.C Inc.

Delegate:	Katrina Brown
Representation:	Opponent: Not represented at hearing Applicant: Amanda Caldwell of Spruson & Ferguson
Decision:	2018 ATMO 137 Trade Marks Act 1995 – s 52 opposition – grounds pursued under ss 42(b), 44, 58, 60 and 62A – no grounds established – trade mark to proceed to registration.

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) by Fish London Limited (‘the Opponent’) to the registration of the following trade mark:

Trade Mark Number:	1784341
Trade Mark:	TISH (‘the Trade Mark’)
Applicant:	Tish & Snooky’s N.Y.C. Inc (‘the Applicant’)
Filing Date:	19 July 2016
Specification:	Class 3: Toiletries; soaps; hair lotions; hair cosmetics; hair care preparations; hair setting preparations; hair cream; hair tonic; hair oils; hair wax; hair gel; hair mousse; makeup and cosmetics; skin care preparations; sun care preparation; hair waving preparations; hair dyes; nail polish; false eyelashes; false nails; makeup removing preparations; cleansing preparations for human use; perfumery; essential oils; bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations

1. The Trade Mark was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Official Journal of Trade Marks on 8 December 2016.

2. The Opponent filed a Notice of Intention to Oppose on 3 February 2017 followed by a Statement of Grounds and Particulars (‘SGP’) on 3 March 2017.

3. The Applicant filed a Notice of Intention to Defend on 2 May 2017.

4. In due course the parties filed evidence in support of the opposition, evidence in answer and evidence in reply.

5. The matter came before me, a delegate of the Registrar of Trade Marks, in Canberra on 20 August 2018. The Applicant was represented by Amanda Caldwell of Spruson and Ferguson. The Opponent was not represented at the hearing and written submissions were not filed on its behalf. 

Grounds of opposition and onus

1. In the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58, 60 and 62A of the Act.

2. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [132].

3. The date at which the rights of the parties are to be determined is 19 July 2016 (‘the relevant date’).

Evidence

1. The parties rely on the following declarations:

Evidence in support

• Declaration of Rachael Parsonage (Managing Director of KMI Brands Limited) made on 8 August 2017 with Exhibits RP-1 to RP-27 (‘Parsonage 1’).

Evidence in answer

• Declaration of Carole Raabe (Spruson & Ferguson) made on 9 November 2017 with Exhibits CR-1 to CR-3 (‘Raabe Declaration’);

• Declaration of Eileen Bellomo (President of the Applicant) made on 11 November 2017 with Exhibits 1 to 10 (‘Bellomo Declaration’).

Evidence in reply

• Declaration of Rachael Parsonage (Managing Director of KMI Brands Limited) made on 18 January 2018 (‘Parsonage 2).

1. Parsonage 1 and Parsonage 2 contain clauses to the effect that all of the information provided in these declarations is confidential. In this regard I note the following from Source Homeloans Pty Ltd v Coles Group Ltd:

   It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[3]

   [3] [2008] ATMO 17 [5].

2. There are arguably sensitive commercial matters in the Opponent’s evidence which I will not discuss in any detail in my reasoning. However I will discuss the evidence to the degree necessary to provide sensible reasons for my decision.

The Opponent

1. In the SGP the Opponent is described as follows:

   Fish London Limited operates a business manufacturing and selling a range of popular haircare and cosmetic products, including hair care, hair grooming and hair beauty goods, around the world, including in Australia (“FISH Goods”).

2. Parsonage 1 describes the background of the Opponent’s brand:

   Paul Burfoot created the FISH brand in 1987 when he set up a hairdressing salon at 30 D’Arblay Street, Soho, London. During renovation of the site, it was revealed that the shop was once a fishmongers, and so the name of the salon became ‘Fish Hairdressing’.

3. At the time of filing the SGP and evidence in this matter, the Opponent was the owner of the following International Registration Designating Australia:

Australian Registration Number:	1793595
International Registration Number:	1307205
Trade Mark:	FISH
Priority Date:	31 May 2016
Specification:	Class 3: Bodywash, hair care preparations, shampoo, conditioner, hair gel, hair wax, hair putty, hair cream, styling clay, body deodorant, body mist spray

1. At the time of writing this decision, The Brand Architekts Limited was listed as the owner of the above trade mark.

The Applicant

1. The Bellomo Declaration provides the following information about the Applicant:

   The Applicant was established in 1977 in New York City by sisters Tish and Snooky Bellomo as a punk-style boutique.

   …

   Since 1977, the Applicant has continued to develop and now distribute its goods (consisting essentially of hair products and cosmetics) throughout the world including, but not limited to, Australia, Germany, Italy, Japan, the United Kingdom and the United States of America.

   …

   The Trade Mark TISH is the name of one of the co-founders of the Applicant, namely Tish Bellomo.

Section 58

1. Section 58 of the Act provides:

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

2. The term ‘owner’ is not defined in the Act. However it is well established that in the absence of fraud, the owner of a trade mark is taken to be the first person to use it or another trade mark substantially identical to it,[4] in the course of trade in Australia in relation to the designated goods or services[5] or in relation to goods or services considered to be the ‘same kind of thing’ as the designated goods or services.[6]

   [4] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936.

   [5] Seven Up Co v OT Ltd [1947] HCA 59.

   [6] Re Hicks’ Trade Mark (1897) 3 ALR 75.

3. In the SGP the Opponent nominated trade mark number 1793595 (‘the FISH Trade Mark’) and a common law trade mark for FISH (collectively referred to as ‘the FISH Trade Marks’), as the basis for its claim that the Applicant is not the owner of the Trade Mark. The details of the FISH Trade Mark are reproduced at [15] of this decision.

4. Given the meaning of the term ‘owner’ as stated at [19] of this decision, to make out this ground of opposition the Opponent must establish that:

   ·    the Trade Mark is identical or substantially identical to at least one of the FISH Trade Marks; and

   ·    the Trade Mark and the FISH Trade Marks have been used in Australia in relation to the same goods, or goods that can be considered to be the ‘same kind of thing’; and

   ·    The FISH Trade Marks have been used in Australia prior to both the application to register the Trade Mark and any actual use of the Trade Mark in Australia.

5. Turning to the first requirement, it is evident that the Trade Mark and the FISH Trade Marks are not identical. The first letter of the trade marks is different. The Trade Mark begins with the letter ‘T’ and the FISH Trade Marks begin with the letter ‘F’.

6. My next consideration is whether the Trade Mark is substantially identical to the FISH Trade Marks. The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd:       

   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.[7]

   [7] [1963] HCA 66 [12] (‘Shell’).

7. The test for substantially identical trade marks involves a side by side comparison, as such I have reproduced the Trade Mark and the FISH Trade Marks below:

   TISH  FISH

8. As stated above the trade marks begin with different letters of the English alphabet. This creates visual and aural differences which are likely to be noticed on a side by side comparison. In my opinion the Trade Mark and the FISH Trade Marks are not substantially identical.

9. As such the ground of opposition under s 58 of the Act has not been established.

Section 44

1. Section 44 of the Act relevantly provides:

   (1) 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.

   …

2. The Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Applicant, in respect of similar goods or closely related services.

3. In the SGP the Opponent nominated the FISH Trade Mark as the basis for this ground of opposition. From the information set out at [15] of this decision, it is evident that the FISH Trade Mark is held in a name other than that of the Applicant and its priority date, 31 May 2016, is earlier than that of the Trade Mark.

4. In this matter, the comparison of the goods is straightforward and the Applicant does not argue otherwise. The FISH Trade Mark and the Trade Mark both claim a variety of haircare products in class 3, some of which are the same goods, and others are goods of the same description. In addition the Trade Mark claims toiletries, soaps and cleansing preparations which are similar to the claims of the FISH Trade Mark for body wash, body deodorant and body mist spray.

5. As expressed in relation to the s 58 ground of opposition, the Trade Mark is not substantially identical to the FISH Trade Mark. The remaining consideration under s 44(1) is whether the Trade Mark is deceptively similar to the FISH Trade Mark.

6. Section 10 of the Act defines a ‘deceptively similar’ trade mark as:

   [a] trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

7. The concepts of ‘deceive’ and ‘cause confusion’ were explained in the New Zealand case of Pioneer Hi-Bred Co v Hyline Chicks Pty Ltd, where Richardson J said:

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.[8]

   [8] [1979] RPC 410, 423.

8. In Shell Windeyer J provided the following insights on deceptive similarity:

   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 [trade mark].[9]

   [9] [1963] HCA 66 [13].

9. In the SGP, the Opponent submits that the FISH trade mark is deceptively similar to the Trade Mark because:

   (a) visually, there is only one letter difference between the two four-letter marks; and

   (b) sound, both marks rhyme and contain the same amount of letters and syllables.

10. I agree with the Opponent that the trade marks are comprised of four letter words with the same amount of syllables and that visually the difference is one letter. Importantly, this difference is the first letter of each of the trade marks. In this regard I note the following observations of Sargant LJ in London Lubricants (1920) Ltd’s Application:

    The tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison and, in my judgement, the first syllable of a word is, as a rule, far more important for the purpose of distinction.[10]

    [10] (1925) 42 RPC 264, 279.

11. There are also conceptual differences between the trade marks. The word ‘fish’ is an English word, the meaning of which, namely an aquatic animal, would be familiar to most users of the English language. The Applicant points out that ‘Tish’ is ‘commonly used and recognised as a female given name and nickname, and is the first name of one of the Applicant’s founders and owners, Tish Bellomo’.[11]

    [11] Applicant’s Hearing Submissions [19].

12. At the hearing, the Applicant conceded that ‘Tish’ is perhaps more popular as a given name or nickname in the United States of America rather than in Australia. If Australian consumers were unaware that ‘Tish’ was a name, it is likely that they would regard the Trade Mark as an invented word with no established meaning or ordinary significance. Even if this were so, ‘fish’ has a meaning which, as an aide memoire, would materially reduce the likelihood of confusion amongst consumers.

13. The meaning of the words ‘fish’ and ‘Tish’ (whether it be a given name, nickname or invented word) are so completely different that, in my opinion, it seems quite unlikely that the trade marks would be misremembered for each other or that consumers, on seeing the respective trade marks, would assume that the trade marks identify the same proprietor or a common trade source. In the words of Neville J in Application by Thomas A. Smith to Register a Trade Mark:

    I do not think so far as the meaning of the words is concerned, a reference to one would in the least leave such an impression in the mind of the reader as to make him mistake the other for it. Looking at the marks I do not think that there is any possibility of anybody being deceived. That nobody will ever make a mistake is more than I am prepared to say, but, if there is a mistake, I think it will be made by some person so foolish, or so unobservant, as in that respect to be without the pale of the protection of the law.[12]

    [12] (1913) 30 RPC 363, 366.

14. For the reasons above, I am not satisfied that the Trade Mark is deceptively similar to the FISH Trade Mark. There is not a ‘real and tangible danger’ of deception or confusion.[13]  

    [13] Woolworths FCA 1010 [50].

15. The ground of opposition under s 44 of the Act has not been established.

Section 60

1. Section 60 of the Act provides:

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

   (a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, 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.

2. To establish this ground of opposition, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia at the relevant date. The Opponent must then establish that because of the aforesaid reputation use of the Trade Mark would be likely to deceive or cause confusion.

3. In McCormick & Co Inc v McCormick the meaning of the word ‘reputation’ for the purposes of s 60 was provided in light of the dictionary definition:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc. something specified.[14]

   [14] [2000] FCA 1335 [81] (‘McCormick’).

4. The reputation in the other trade mark must be amongst a significant or substantial number of people.[15]  The reputation cannot be assumed, but rather must be established as a matter of fact by the Opponent.[16] In McCormick Kenny J stated:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.[17]

   [15] See Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170; ConAgra Inc. v McCain Foods (Aust) Pty Ltd [1992] FCA 159.

   [16] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159 [77].

   [17] [2000] FCA 1335 [86].

5. The Opponent contends that the FISH Trade Mark had, before the relevant date, acquired a reputation in Australia. In my opinion, the evidence before me does not prove this contention.

6. In Parsonage 1 it is declared that products bearing the FISH Trade Mark were available in Coles® Supermarkets in March 2013. Parsonage 1 goes on to state that Coles® made a commitment to purchase a certain amount of units of goods bearing the FISH Trade Mark and that this would equate to a commitment of approximately  4-6 months. From this, I take it that goods bearing the FISH Trade Mark were available in Coles® from March 2013 until September 2013. Parsonage 1 and Parsonage 2 make no mention of goods bearing the FISH Trade Mark being sold by Coles® beyond this date. Nor do the declarations make any reference to goods bearing the FISH Trade Mark being sold by other retailers in Australia. As such the Opponent claims approximately 6 months of use in Australia before the relevant date.

7. Parsonage 1 states that goods bearing the Fish Trade Mark can be purchased online through two international websites. Exhibit RP-25 to Parsonage 1 contains printouts of these websites dated 28 July 2017 and demonstrates that both websites ship to Australia. Whilst Exhibit RP-25 demonstrates that on 28 July 2017 goods bearing the FISH Trade Mark could be purchased through two online retailers and shipped to Australia, it does not demonstrate that this was the case at the relevant date.

8. The Opponent also relies on spillover reputation from use of the FISH Trade Mark in other jurisdictions such as the United Kingdom (UK) and the European Union (EU). Parsonage 1 contains examples of marketing material and approximate annual turnover figures for the EU and UK in relation to goods bearing the FISH Trade Mark, at least some of which are before the relevant date.

9. Ultimately the question to be answered is how much of the reputation in other jurisdictions had transferred into the Australian consciousness at the relevant date. In this respect, Exhibit RP-24 to Parsonage 1 is an excerpt from the 2015 British Office of National Statistics Report. The excerpt shows that approximately 125,000 people who lived in the United Kingdom between January 2015 and December 2015 were born in Australia. This statistic does not assist the Opponent. The most I can conclude from it is that some of the 125,000 people living in the UK during 2015, who were born in Australia, might have become aware of the FISH Trade Mark whilst living in the UK. It says nothing about the transfer of that awareness to people living in Australia.

1. I am not satisfied, as a matter of fact, that at the relevant date, the FISH Trade Mark had acquired a reputation in Australia amongst a significant or substantial number of people. As such the first limb of the test for s 60 has not been met.

2. The s 60 ground of opposition has not been established.

Section 42(b)

1. Section 42(b) of the Act relevantly provides:

   An application for the registration of a trade mark must be rejected if:

   …

   (b) its use would be contrary to law.

2. The Opponent must satisfy the Registrar that use of the Trade Mark would not could be contrary to law.[18]

   [18] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 [28].

3. The Opponent relies on ss 18 and 29 of Schedule 2 to the Australian Consumer Law (‘ACL’) of the Competition and Consumer Act 2010. The Opponent also asserts that use of the Trade Mark would amount to passing off.

4. Section 18 and 29 of the ACL require conduct or representations that have or are likely to mislead or deceive. As already indicated in respect of s 60, I am not satisfied that use of the Trade Mark is likely to cause deception or confusion. It follows that, on the stricter test posited by the ACL, use of the Trade Mark is not likely to mislead or deceive.

5. Similarly, where use of a trade mark does not contravene s 18 of the ACL, neither will it amount to the tort of passing off.

6. Accordingly the s 42(b) ground of opposition has not been established.

Section 62A

1. Section 62A provides:

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

2. The phrase ‘bad faith’ is not defined in the Act. However, in Fry Consulting Pty Ltd v Sports Warehouse (No 2) Dodds-Streeton J made the following observations:

   Bad faith, in the context of s 62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.

   The formulation in the United Kingdom authority of bad faith as falling short of the standard of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone…

   Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character…

   The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[19]

   [19] [2012] FCA 81 [164].

3. In DC Comics v Cheqout Pty Ltd, Bennett J endorsed the approach taken by Dodds-Streeton J, stating: 

   Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.

   The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[20]

   [20] [2013] FCA 478 [62].

4. This ground of opposition is particularised in the SGP as follows:

   26. By virtue of the reputation enjoyed by the Opponent in its FISH mark in Australia and internationally, the Applicant ought to have been aware of the Opponent and the Opponent’s use of the FISH mark in relation to the FISH Goods.

   27. By reason of the above, the Applicant is or should be aware that the owner of the FISH mark in Australia is the Opponent.

   28. The Applicant is using or is intending to use the Applicant’s TISH mark in relation to the goods that are the same as or similar to the FISH Goods.

   29. By reason of the above, the Applicant appears to be trying to gain an unfair commercial advantage in relation to the sale of the Applicant’s Goods in order to trade off the commercial success of the Opponent.

   30. Therefore, a reasonable person standing in the shoes of the Applicant would have been aware that they ought not to apply for registration of the TISH mark on the basis that by obtaining registration of the TISH mark and using it, the Applicant would be taking advantage of the goodwill, reputation and success of the Opponent’s FISH mark.

5. In a nutshell, the Opponent asserts that the Applicant should have known of the Opponent and its trade mark and by applying for the Trade Mark the Applicant was taking advantage of the goodwill and reputation of the Opponent’s Trade Mark.

6. In Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited, the Registrar’s delegate stated:

   The onus of demonstrating ‘bad faith’ falls squarely on the party making such an allegation with the need for evidence able to fulfil the degree of proof required to satisfy the civil standard of ‘balance of probabilities’. That said, the allegation of ‘bad faith’ is a very serious one and a finding of bad faith should not be taken lightly. [21]

   [21] [2009] ATMO 26 [12].

7. In this matter, the Opponent has not provided cogent evidence to support its assertions. In the absence of that evidence, I note that the Applicant has explained the history of the Trade Mark including that it was chosen because it is the first name of one of the founders of the Applicant, Tish Bellomo, and that the Applicant has been using the Trade Mark in the USA since 1977. 

8. The Opponent has not satisfied me that the application was made in bad faith, in the sense that in all the circumstances persons adopting proper standards would regard the decision to apply to register the Trade Mark as being in bad faith, or that reasonable and experienced persons in the field would view such conduct as falling short of acceptable commercial behaviour.

9. Accordingly, I find that the s 62A ground of opposition has not been established.

Decision

1. Section 55(1) of the Act provides:

   (1)     Unless subsection (3) applies to the proceedings, 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 the ground on which the                 application was opposed has been established.

2. The Opponent has not established a ground of opposition.

3. Accordingly trade mark application number 1784341 may proceed to registration one month from the date of this decision.

4. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. The Applicant sought costs. As the successful party, the Applicant is so entitled and I award costs against the Opponent in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995.

Katrina Brown
Hearing Officer
Trade Mark Oppositions & Hearings
4 September 2018