Ford Motor Company v Darryl Manning

[2010] ATMO 67

TRADE MARKS ACT 1995

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

Re:Opposition by Ford Motor Company to registration of trade mark application 1143966(25) - FALCONEDDIES - filed in the name of Darryl Manning.

Delegate:	Jock McDonagh
Representation:	Opponent: Benjamin Fitzpatrick of counsel instructed by Allens Arthur Robinson Patent & Trade Marks Attorneys Applicant: Self-represesented
Decision:	2010 ATMO 67 Section 52 opposition sections 42(b), 44, 59 and 60 – grounds not established – costs awarded against opponent

Background

1. Darryl Manning (‘the applicant’) is the applicant for registration of a trade mark, current details of which are:

   Application No:         1143966
   Priority Date:             31 October 2006
   Goods:  Class 25: Clothing, footwear, headgear
   Trade Mark:               FALCONEDDIES

2. Following examination, the application was accepted for possible registration and advertised as such in the Official Journal of Trade Marks on 1 March 2007.

3. On 1 July 2007, Ford Motor Company (‘the opponent’) filed a Notice of Opposition under section 52 of the Trade Marks Act 1995 (‘the Act’), opposing the registration of the trade mark. The Notice of Opposition cited most grounds of opposition available to the opponent under the Act.

4. The parties served and filed evidence as shown below:

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Christine Isobel Buckley	Marketing Services Manager	27.02.2009, Buckley	CIB-1 to CIB-16
Declarant	Status	Date, Known as	Exhibits
Evidence in Answer
Darryl James Manning	Applicant	1.06.2009, Manning	DJM-1 to DJM-6

1. The matter came before me as a delegate of the Registrar of Trade Marks, in Canberra on 17 May 2010. The opponent was represented by Benjamin Fitzpatrick of Counsel, instructed by Allens Arthur Robinson, patent & trade mark attorneys. The applicant appeared in person and represented himself.

2. I advised the parties that my household included two Ford Falcon motor vehicles; however, I did not believe that this would affect my impartiality. Neither party objected.

3. Mr Fitzpatrick advised that the opponent would be relying on the sections 42(b), 44, 59 and 60 grounds of opposition. For the sake of completeness, I treat the remaining grounds of opposition as having been abandoned and they are not established.

   Discussion

4. I shall discuss the grounds in the order that they were presented by counsel for the opponent.

   Section 44 – deceptive similarity

5. The opponent relied on its registration 1111119 FALCON lodged on 1 May 2006 in respect of clothing, headgear and footwear excluding ballet shoes in Class 25.

6. The relevant parts of section 44 of the Act provide:

   Identical etc. trade marks

   44.(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.

   Note 1:  For deceptively similar see section 10.

   Note 2:  For similar goods see subsection 14(1).
   Note 3:  For priority date see section 12.

7. As the goods of the opposed application are the same as those of the prior mark, the real issue is whether FALCONEDDIES is deceptively similar to FALCON. Counsel for the opponent did not suggest that substantial identity was in issue.

8. The opponent directed my attention to the definition of deceptive similarity in section 10 of the Act and to the classic test propounded by Windeyer J in Shell Co. of Australia v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415.

9. My attention was also drawn to the authorities holding that a mark will be found to be deceptively similar to another mark if it takes a prominent and distinct feature of that mark[1], that most persons recall a mark by general impression[2] and that commonality of the idea of a mark was important in such recollection[3].

   [1] Seven-Up Co v Bubble Up Co. Inc. (1987) 9 IPR 259; De Cordova v Vick Chemical Co. (1951) RPC 271; Saville Perfumery Ltd v June Perfect Ltd (1941) 1B IPR 44; Polaroid Corp. v Sole Pty Ltd [1981] 1 NSWLR 491 at 497-498

   [2] De Cordova v Vick Chemical Co. (1951) RPC 271.

   [3] Jafferjee v Scarlett (1937) 57 CLR 115, per Latham CJ at 121-2.

10. The opponent further submitted that the first portion of a word is by far the most important for assessing the likelihood of confusion[4] and that the assessment of deceptive similarity requires consideration of the use of the respective marks, including the nature of the trade involved[5].

    [4] London Lubricants (1920) Ltd’s Application (1925) 42 RPC 264; Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505

    [5] An Application by the Pianotist Company Ltd for the Registration of a Trade Mark (1906) 23 RPC 774.

11. The applicant also referred to the usual authorities and pointed out that the syllabic structure of the words needed to be taken into account, along with the notoriety of the opponent’s trade mark, citing C.A. Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539.

12. While it is the case that the applicant’s trade mark contains the word FALCON, I am not satisfied that the typical consumer would necessarily notice the word as being significant. I agree with the applicant’s argument regarding the emphasis placed on the syllables of the words. I am not satisfied that a number of persons would be caused to wonder if the goods under the respective marks came from the same trade source. I am not satisfied that there is likely to be any confusion in the marketplace. I find that this ground is not established.

    Section 59 – intention to use trade mark

13. The opponent contended that the applicant did not intend to use the trade mark on all the goods specified in the application.

    Applicant not intending to use trade mark

    59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

    (a) to use, or authorise the use of, the trade mark in Australia; or
    (b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

    in relation to the goods and/or services specified in the application.

    Note:  For applicant see section 6.

14. The opponent submitted that the intention must exist at the filing date, rather than at the time of filing the notice of opposition, citing Television Food Network, G.P. v Food Channel Network Pty Ltd (No 2) [2009] FCA 271 (27 March 2009) at [95] – [106]. This has been affirmed by the Full Federal Court, on appeal, in Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 at [74].

15. Counsel for the opponent submitted that the applicant’s evidence in Manning merely shows an intention to use the trade mark in relation to boots.

16. The applicant rejected that submission and stated that the evidence showed that although he had originally sought to deal in boots under the trade mark BULLWINKLE, when applying for the FALCONEDDIES trade mark he intended to provide fashion and footwear items for the “various music-inspired metal-heads, punks and Goths of the urban youth market”. At the time he applied for the trade mark he had boots and shoes in stock and intended to expand his range of goods.

17. I have examined the evidence in detail. There is no doubt that the applicant has always intended to use his trade mark in relation to footwear. While his intention with respect to clothing is not so clearly articulated, I am not satisfied that he did not intend to use the trade mark in relation to those goods. The evidence is sufficient to support the inference that his “fashion/footwear label” was always intended to cover all the goods specified in the application.

18. I find that this ground has not been established.

    Section 60 – use of the mark will be likely to deceive or cause confusion

19. As the application was filed after 23 October 2006, the provisions of section 60 as amended by the Intellectual Property Laws Amendment Act 2006 apply. The section reads:

    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.

    Note: For priority date see section 12.

20. To satisfy section 60 the opponent must establish, in relation to its FALCON trade mark:

    ·     Priority.

    ·     Reputation acquired in Australia before the applicant’s priority date.

    ·     Because of that reputation the use of the applicant’s trade mark would be likely to deceive or cause confusion.

21. There is no longer a need to establish the substantial identity or deceptive similarity of the trade marks to rely upon this ground of opposition, although such findings could be relevant to determining the likelihood of deception or confusion.

22. Counsel for the opponent submitted that the relevant tests for determining the likelihood of deception or confusion involves a notional use of the FALCONEDDIES mark in a normal and fair manner on any goods covered by the application.

23. Counsel for the opponent submitted that the opponent’s evidence establishes a highly significant reputation in its FALCON trade mark in Australia. That trade mark has also been extensively licensed in respect of a range of products including clothing, footwear and headwear. This licensed product, said counsel, has been extensively promoted by reference to the FALCON trade mark. Thus, argued counsel, as a result of FALCON’s reputation, use of the FALCONEDDIES trade mark in respect of the claimed goods would be likely to cause deception or confusion amongst Australian consumers.

24. I am satisfied that the opponent’s FALCON trade mark has acquired a reputation in Australia before the priority date of the applicant’s trade mark. It would be true to say that FALCON boasts an iconic status and is one of the best known models of motor vehicle in Australia and has held that status for generations of Australians.

25. The evidence, however, also includes some limitations to the reputation of the FALCON trade mark. The overwhelming majority of examples of trade mark use – for motor vehicles as well as on clothing, footwear and headwear – are in close proximity to the FORD device or word trade mark.

26. The examples of use of FALCON in regard to clothing, headwear and footwear appeared to me to be in the context of either promoting the FALCON motor vehicle or exploiting the motor vehicle’s popularity for the purposes of selling clothing, headwear and footwear. In no case did it appear that FALCON enjoyed its reputation in any context other than in relation to the iconic motor vehicle.

27. Additionally, there is no evidence to show FALCON being rendered other than as FALCON, unlike, say, the situation where the cheerleaders for the Sydney Swans Australian football team were called the “Swanettes”. Of course, if there were to be such a representation (such as FALCONETTES) there would need to be evidence of reputation applicable to it.

28. As I mentioned in the section 44 ground above, the fact that the FALCON trade mark is so well known and recognised as a model of motor vehicle makes it less likely that it would be confused with FALCONEDDIES.

29. I am not satisfied that Australian consumers are likely to be deceived or confused if the applicant uses the applied for trade mark in a fair and normal manner in respect of clothing, headwear and footwear.

30. I am not satisfied that the opponent has established this ground of opposition.

    Section 42(b) - contrary to law

31. The opponent has raised the ground of “contrary to law” as provided in section 42(b) of the Act. Specifically, this ground raises the issue of misleading or deceptive conduct pursuant to the consumer protection provisions of the Trade Practices Act, 1974, and the common law tort of passing off. Counsel referred to his submissions and the evidence supporting the section 60 ground.

32. In relation to the present matter, I find that this ground of opposition, insofar as it relies on breaches of the Trade Practices Act is not made out. The applicant is not a corporation subject to the Trade Practices Act, specifically sections 52 and 53.

33. I am not satisfied that the applicant’s use of his trade mark would amount to the tort of passing off. The evidence does not show that the applicant has represented either directly or indirectly an association between himself and the opponent, or between the parties’ respective goods, when such representation was either likely to mislead or deceive the relevant public or was false. Nor am I satisfied that adequate evidence has been provided to establish, either by fact or by inference, that a significant number of Australian consumers have been misled or are likely to be misled.

34. Accordingly, the opponent has not shown that use of the applicant’s trade mark would to be contrary to law. I am not satisfied that the opponent has established this ground of opposition.

    Decision

35. Section 55 of the Act 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.

36. I find that none of the grounds of opposition on which the opponent relied has been established.

37. 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 on or 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, that the application be subject to that decision.

    Costs

38. The parties sought their costs. Since costs usually follow the event, I award costs against the opponent pursuant to the official scale.

    Jock McDonagh
    Hearings Officer
    Trade Marks Hearings
    29 July 2010