Franchise Retail Brands Ltd v David Loh

[2020] ATMO 26

TRADE MARKS ACT 1995

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

Re:Opposition by Pirelli Tyre S.p.A to registration of trade mark application number 2011489 (7, 12, 37, 40, 41, 42) – FZERO - in the name of Rodin Cars Limited

Delegate:	Louise Tuohy
Representation:	Opponent: AJ Park Patent and Trade Mark Attorneys Applicant: HWL Ebsworth Lawyers
Decision:	2020 ATMO 26 Trade Marks Act 1995 (Cth) – opposition under section 52 – section 44, 60 and 42(b) – grounds under section 44 partially established – goods and services amended – trade mark to proceed to registration

Background

1. This is an opposition by Pirelli Tyre S.p.A (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the following trade mark application in the name of Rodin Cars Limited (‘Applicant’):

   Application Number:             2011489

   Trade Mark:  FZERO (‘Trade Mark’)

   Filing Date:  23 May 2019

   Specification:  Class 7: Parts, components and fittings for engines and motors in this class, including alternators, carburettors, brakes, exhausts and clutches; machines included in this class for use in the automotive industry; parts, components and fittings of vehicles in this class being exhaust pipes; components, parts and accessories for all the foregoing items

   Class 12: Vehicles; parts, components and fittings of vehicles in this class including motors and engines, transmission and suspension systems, brakes, shock absorbers, grilles, spoilers, bumpers, hoses, gear sticks, gear systems, steering wheels, steering columns and automotive interior systems products including seat assemblies, seat sub-components including cushions and inserts of foam, arm rests, pedal box assemblies and door trims; functional and decorative elements and fittings for vehicles including chairs, seat coverings for vehicles, seats for vehicles, arm rests and head rests, chair covers, seat and head rest covers and vehicle instrument knobs, handles and buttons, mirrors, airbag housings, horns, window lift and descent mechanisms; vehicle interiors; interior and exterior parts, components and accessories for vehicles in this class; pillows and cushions, adapted for use in vehicles for use as part of automotive interior fittings; bodies, chassis and other component and constructional parts of vehicles in this class including tyres, windscreens, windscreen wipers, dashboards, arm rests, seats, head rests, seat belts, seat belt retractors and fasteners; components, parts and accessories for all the foregoing items
   Class 37:  Services related to the maintenance and repair of motor vehicles in this class, being vehicle tuning, vehicle servicing, tyre repair and wheel repair; maintenance or repair of automatic vehicles; vehicle tuning; vehicle servicing; vehicle maintenance; vehicle repair; vehicle service stations (refuelling and maintenance); maintenance and repair of vehicles; advisory services for maintenance; advisory services relating to vehicle maintenance; advisory services relating to vehicle repair; provision of advisory, consultancy and information services in relation to the aforementioned services; provision of the foregoing services online and via the Internet
   Class 40: Manufacturing of goods or materials for others, including custom, bespoke and tailored manufacturing services; custom manufacture services, including in respect of vehicles and components, parts and accessories for vehicles; custom manufacture services relating to vehicles and components, parts and accessories for vehicles; provision of advisory, consultancy and information services in relation to the aforementioned services
   Class 41: Sporting services related to motor sports, including the provision of sporting facilities and the provision of sporting competitions; educational and training services, including education and training services relating to installation, assembly, modification, maintenance, servicing, repair and driving of vehicles and components; driver training services; hospitality services (entertainment); organisation of entertainment; organisation of competitions (education or entertainment); provision of entertainment facilities; provision of advisory, consultancy and information services in relation to the aforementioned services; provision of the foregoing services online and via the Internet

   Class 42: Scientific and technological services and research and design relating thereto; design and development of vehicles and components, parts and accessories for vehicles; design services; scientific testing services; technical testing services; mechanical engineering services (design); engineering services relating to the development of vehicles and components, parts and accessories for vehicles; development of computer hardware and software for use in or relating to vehicles and components; mechanical research; research services relating to the development of vehicles and components, parts and accessories for vehicles; advisory services relating to technological research; advisory services relating to the development of vehicles and components, parts and accessories for vehicles; provision of technical computer assistance and computer support services in respect of vehicles and components; provision of advisory, consultancy and information services in relation to the aforementioned services; provision of the foregoing services online and via the Internet (‘Goods and Services’)

2. The trade mark application was examined as required by s 31 of the Act and advertised as having been accepted for possible registration on 9 April 2020.

3. On 8 June 2020 the Opponent filed a Notice of Intention to Oppose the registration of the Trade Mark followed by its Statement of Grounds and Particulars (‘SGP’) on 29 June 2020. On 24 July 2020 the Applicant filed a Notice of Intention to Defend the opposition of the Trade Mark.

4. Thereafter the Opponent filed evidence in support in accordance with the provisions of the Trade Mark Regulations 1995 (Cth) (‘Regulations’). The Applicant did not file evidence in answer, thereby concluding the evidence phase of the opposition. The Applicant requested a hearing by way of written submissions only. The Applicant was the only party to file written submissions. The matter came before me, a delegate of the Registrar of Trade Marks, for a decision.

   Grounds of Opposition, Relevant Date and Onus

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

6. The date at which the rights of the parties are determined is 23 May 2019 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

7. The Opponent bears the onus of establishing at least one of the grounds of opposition.0F[1] The standard of proof is the ordinary civil standard of the balance of probabilities.1F[2]

   Evidence

   Evidence in Support

   ·Declaration of Giacomo Maria Marsaglia, Head of Intellectual Property Trade Mark & Licensing of the Opponent, made on 20 October 2020 with Exhibits GM-1 to GM-28 (‘Marsaglia declaration’).

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   The Opponent

8. The Marsaglia declaration submits that the Opponent, together with its parent company, Pirelli & C. S.p.A, is a global tyre producer. The Opponent was established in 1872 by Giovanni Battista Pirelli in Milan, Italy.

9. The Opponent supplies tyres to the car, motorcycle and bicycle industries. The Opponent has around 16,500 points of sale in over 160 countries worldwide, including Australia.

   The Applicant

10. The Applicant has not filed any evidence about itself however the Marsaglia declaration at paragraph 41 provides a screenshot from the Applicant’s website which describes it as an automotive manufacturer of high performance track cars, located in New Zealand.

    Legislative Background and Reasoning

    Section 44

11. Section 44 of the Act provides:

    44  Identical etc. trade marks

    (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)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

    (a)  it is substantially identical with, or deceptively similar to:

    (i)  a trade mark registered by another person in respect of similar services or closely related goods; or

    (ii)  a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

    (3)  If the Registrar in either case is satisfied:

    (a)  that there has been honest concurrent use of the 2 trade marks; or

    (b)  that, because of other circumstances, it is proper to do so;

    the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

    (4)  If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

    (a)  beginning before the priority date for the registration of the other trade mark in respect of:

    (i)  the similar goods or closely related services; or

    (ii)  the similar services or closely related goods; and

    (b)  ending on the priority date for the registration of the applicant’s trade mark;

    the Registrar may not reject the application because of the existence of the other trade mark.

12. In the SGP the Opponent particularises the ground of opposition under s 44 as follows:

    1. Pirelli Tyre S.p.A. (the opponent) is the owner of the following Australian trade mark registrations:

    (a) 741599 PZERO in class 12;
    (b) 764740 P ZERO ROSSO in classes 12, 35 and 37;
    (c) 877458 ZERO in class 12;
    (d) 877459 ZERO GIALLO in class 12; and
    (e) 877460 ZERO NERO in class 12 (collectively, the opponent’s ZERO trade marks).

    2. Pirelli & C. S.p.A, a sister company of the opponent and part of the Pirelli Group, is the owner of the following Australian trade mark registrations:

    (a) 948295 P ZEROTEMPO in classes 14, 18, 25 and 28;
    (b) 949277 P ZEROACQUA in classes 14, 18, 25 and 28 ;
    (c) 950878 P ZEROARIA in classes 14, 18, 25 and 28;
    (d) 1525711 BELIEVE IN P ZERO in class 12;
    (e) 1928922 P ZERO in classes 16 and 18;
    (f) 1970585 P ZERO in classes 16, 18 and 25; and
    (g) 2004224 P ZERO WORLD in classes 35 and 37 (collectively, the Pirelli Group ZERO trade marks).

    3. The opponent relies on the opponent’s ZERO trade marks and the Pirelli Group ZERO trade marks (collectively, the ZERO Trade Marks).
    4. Rodin Cars Limited (the applicant) has applied to register Australian trade mark 2011489 FZERO (the applicant’s mark) in classes 4, 12, 37, 40, 41 and 42: [...]
    5. The applicant’s trade mark application was filed on 23 May 2019 (the applicant’s priority date).
    6. The priority dates of the ZERO Trade Marks are before the applicant’s priority date.
    7. The applicant’s mark is deceptively similar to one or more of the ZERO Trade Marks.
    8. The applicant’s trade mark application covers goods and services that are closely related to the goods and services covered by the ZERO Trade Marks.
    9. Use of the applicant’s mark in respect of the goods and/or services covered by the applicant’s trade mark application is likely to deceive or cause confusion.

13. To satisfy the s 44 ground of opposition 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, and in respect of similar goods and/or services or goods and/or services which are closely related to the Applicant’s Goods and Services.

14. In the SGP the Opponent nominated the trade marks I have set out in Annexure A. The trade marks listed are all registered by a person other than the Applicant and have a priority date earlier than the Relevant Date. However, I note that Annexure A includes trade mark 877459 which has been removed from the Register of Trade Marks and therefore will be excluded from this discussion.

    Substantially identical

15. In the SGP the Opponent did not raise the issue of whether the trade marks are substantially identical. However, I will briefly note that the test for substantial identity requires that the trade marks be considered side by side having regard to the essential features of the trade marks.2F[3] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical.

    [3] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Windeyer J).

16. For the purposes of this comparison, I have reproduced the respective trade marks side by side:

Trade Mark

Opponent’s trade marks

FZERO

741599      PZERO

764740      P ZERO ROSSO

877458      ZERO

877460      ZERO NERO

Pirelli & C S.p.A (‘trade mark/s’)

948295      P ZEROTEMPO

949277     P ZEROACQUA

950878      P ZEROARIA

1525711    BELIEVE IN P ZERO

1928922    P ZERO

1970585    P ZERO and device

2004224    P ZERO WORLD

1. On a side by side comparison there are clear differences between the respective trade marks. All the trade marks share the word ZERO. The Trade Mark contains the letter F and the word ZERO. In comparison the Opponent’s trade mark 741599 and trade mark 1928922 contain the letter P and the word ZERO and trade mark 1970585 contains the letter P and the word ZERO with a device element. The Opponent’s trade marks 764740 and 877460 and trade marks 948295, 949277, 950878 1525711, and 2004224 all contain the letter P before the word ZERO and additional word elements. The Opponent’s trade mark 877458 consists of the word ZERO solus and its trade mark 877460 contains the word combination ZERO NERO. On a side by side comparison the letter F in the Trade Mark acts as a clear visual difference between the respective trade marks. For these reasons, I find that the compared trade marks are not substantially identical. The total overall impression emerging from a side by side comparison is not one of similarity.

   Deceptively similar

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

   10  Definition of deceptively similar

   For the purposes of this Act, 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.

3. 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.6F3F[4]

   [4] (1979) 96 RPC 410, 423.

4. The state of the law regarding confusion was neatly summarised by the delegate of the Registrar of Trade Marks in Kicking Horse Coffee Co Ltd:

   In Australian Postal Foundation Corporation v Digital Post Australia Pty Ltd it was noted that ‘the threshold for confusion is not high’. Importantly confusion can be established ‘even if [the] confusion is unlikely to persist up to the point of, and contribute to, inducing sale’. Also, confusion need not be a case of mistaking one trade mark for another; it can be wondering whether the trade marks, which might be readily distinguished from each other, nonetheless come from the same source. 7F4F[5]

   [5] [2018] ATMO 193, [46] (Delegate Brown) (Citations omitted).

5. When considering the concept of deceptive similarity ‘the marks are to be compared both visually and aurally’8F5F[6] and all the surrounding circumstances are relevant to the consideration:

   You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods.9F6F[7]

   [6] Optical 88 Ltd v Optical 88 Pty Ltd (No. 2) [2010] FCA 1380, [111] (Cowdroy, Middleton, Jagot JJ); see also Moroccanoil Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823, [173] (Katzmann J).

   [7] Pianotist Co.’s Application (1906) 23 RPC 774, 777.

6. The approach requires an appreciation that trade marks will be imperfectly recalled, as explained in Australian Woollen Mills Ltd v F.S. Walton and Company Ltd, where Dixon and McTiernan JJ stated:

   [T]he marks ought not … to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.10F7F[8]

   [8] (1937) 58 CLR 641, 658.

7. The Applicant’s written submissions argue8F[9] that the Opponent’s trade mark number 741599 PZERO is visually and phonetically distinguishable from the Trade Mark. The F and P prefixes are dissimilar visually and the trade marks are aurally dissimilar because the Trade Mark would be pronounced EFF ZERO and trade mark 741599 would be pronounced PEE ZERO. The Applicant further argues that it is well established that in the comparison of trade marks, the first syllable of a word is the most important for the purpose of distinction. People seeing or hearing the Trade Mark used in relation to the Goods and Services are therefore likely to place more significant emphasis on the F prefix, and are unlikely to be confused between the Trade Mark and trade mark 741599, or deceived by their common ZERO feature. Furthermore, it is submitted this is especially likely to be the case given that ZERO is a word spelling of a numeral, a feature of a trade mark which is usually considered to have a low degree of distinctiveness.  

   [9] Para 3.34.

8. I acknowledge the Applicant’s position that the prefixes in the Trade Mark and trade mark 741599 are different and that the trade marks are not phonetically similar. However, the respective trade marks both contain the word ZERO as the essential feature. Recognition of the significance for comparison purposes of trade marks sharing an ‘essential feature’ in common has a long pedigree.  As Sir Wilfred Greene MR of the English Court of Appeal put it in Saville Perfumery Ltd v June Perfect Ltd:

   Now the question of resemblance and the likelihood of deception are to be considered by reference not only to the whole mark, but also to its distinguishing or essential features, if any.9F[10]

   [10]  (1939) 1B IPR 440 at 453; (1941) 58 RPC 147 at 162.

1. In similar vein Lord Radcliffe observed in De Cordova v Vick Chemical Co:

   …that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.10F[11]

   [11]  (1951) 68 RPC 103; 1b IPR 496 at RPC 106; IPR 499.

2. In the present case, the word ZERO has a generally understood meaning by the average consumer and there is no evidence that the word has a meaning within the market for the relevant goods and services. The trade marks both prominently feature the identical element ZERO and it is by reference to this distinctive element that I think that both trade marks are likely to be recalled by potential users of the goods and services. I do not think that the addition of the letter F or P to the element ZERO significantly affects this assessment, nor would the visual impression of the letters F or P be observed or recalled by many consumers as a significant distinguishing factor.

3. The prominence of the word ZERO in the respective trade marks and the lack of distinctiveness of the single letters, increases the risk of deception or confusion between the trade marks as a whole. Despite the differences between the trade marks I consider there is a real likelihood that a significant number of potential consumers would wonder whether the Goods and Services sold under the Trade Mark originated from the Opponent or were connected with the Opponent in some way.  

4. As I have found that the Opponent’s trade mark 741599 is deceptively similar to the Trade Mark, I also consider that trade marks 1928922 P ZERO and 1970585 P ZERO with device are similar to the Trade Mark. Further I consider that the Opponent’s trade mark 877458 for the word ZERO solus is deceptively similar to the Trade Mark as the essential feature of the Trade Mark being the word ZERO is wholly encompassed within this trade mark.

5. In relation to the Opponent’s trade marks 764740 P ZERO ROSSO and 877460 ZERO NERO, and trade marks 948295 P ZEROTEMPO, 949277 P ZEROACQUA, 950878 P ZEROARIA, 1525711 BELIEVE IN P ZERO, and 2004224 P ZERO WORLD, I consider that the addition of the distinctive word elements in these trade marks would leave a significant impression on the minds of consumers. In my estimation confusion between the trade marks does not rise above mere possibility.

6. I must now consider whether the Goods and Services are either the same or are of the same description and/or closely related to the Opponent’s goods in classes 12, 16, 18 and 25.

7. The test for determining whether goods or services are similar is a practical judgement formed by looking at a number of factors, falling within the categories of the nature of the goods, their respective uses, and the trade channels through which they are sold, with no single factor being determinative.11F[12] The test for determining whether particular goods are closely related to services or vice versa, requires a different analysis. The relevant considerations and supporting authorities were recently reviewed and stated neatly by Hearing Officer Brown in Kicking Horse Coffee Co. Ltd:

   [12] Re Jellinek’s Application (1946) 63 RPC 59, 70.

   The words ‘closely related’ are not defined in the Act. In the Registrar of Trade Marks v Woolworths French J made the following observations:

   The term "closely related" recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word "similar" does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as "closely related"… it is a term of wider import than “similar”…

   In 1979 around the time when the concept of closely related was first introduced into Australian trade mark legislation, FJ Smith, the then Registrar of Trade Marks explained the nature of the relationship between goods and services that would support a finding that they were closely related:

   It will be an exercise of the Registrar’s judgement and ultimately of his discretion whether goods and services are closely related. The relationship would have to be close, not merely a tenuous or remote connection. Where the services are performed upon, or in relation to, or even by means of certain goods, this is a factor which would make deception or confusion between marks used in respect of those services and goods more likely.

   In Woolworths French J stated that the ‘relationships may, and in perhaps most cases will, be defined by the function of the service with respect to the goods’. Similarly, in Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co Lockhart J stated that ‘confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods’.12F[13]

   [13] [20198] ATMO 193, [19]-[21] (citations omitted).

8. I consider that the claims for tyres, and components, parts and accessories for tyres, insofar as these products are encompassed in the broad claims of Goods are all either the same or of the same description as the goods in class 12 covered by the Opponent’s trade marks 741599 PZERO and 877458 ZERO. In addition, the goods covered by the Opponent’s trade marks in class 12 are closely related to tyre repair and wheel repair services in class 37. This is because it is common for tyre manufacturers to provide repair services through their own dealerships and tyres are the prominent component of any wheel. 

9. Turning to trade marks 1928922 P ZERO and 1970585 P ZERO and device which cover goods in classes 16, 18 and 25, I do not consider those goods to be similar to the Goods and are not on face value closely related to any of the Services.

10. In summary, I have found that the Trade Mark is deceptively similar to the Opponent’s trade marks 741599 PZERO and 877458 ZERO with respect to the Goods tyres, and components, parts and accessories for tyres in class 12 and Services in relation to tyre repair and wheel repair in class 37.

11. I will now consider the other grounds of opposition in relation to the remaining Goods and Services in classes 7, 12, 37, 40, 41 and 42.

    Section 60

12. Section 60 of the Act provides:

    60  Trade mark similar to trade mark that has acquired a reputation in Australia

    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.

13. In the SGP the Opponent particularises the ground of opposition under s 60 as follows:

    10. The opponent repeats paragraphs 1 to 9 [in the SGP under s 44].
    11. The opponent, either itself or because of authorised use by another party (including use by Pirelli & C. S.p.A), has used the ZERO Trade Marks around the world, including in Australia.
    12. The ZERO Trade Marks represent a ‘family’ of trade marks.
    13. As a result of the opponent’s use of the ZERO Trade Marks around the world and in Australia, in respect of the goods and services covered by the ZERO Trade Marks, the opponent has acquired reputation in the ZERO Trade Marks in Australia, which is exclusively associated with the opponent.
    14. The opponent’s reputation in the ZERO Trade Marks predates the priority date of the application for the applicant’s mark.
    15. Use of the applicant’s mark in relation the applicant’s goods and/or services is likely to deceive or cause confusion.

14. To satisfy s 60 of the Act the Opponent must establish that a reputation existed in another trade mark in Australia at the priority date of the Trade Mark. The Opponent must then establish that because of the reputation use of the Trade Mark would be likely to deceive or cause confusion.

15. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition concluded that it means ‘the recognition of the [trade mark] by the public generally’,2F13F[14] quoting with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner…3F14F[15]

    [14] [2000] FCA 1335, [81].

    [15] [1992] FCA 159, [118].

16. Justice Kenny also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sale or turnover of goods sold under the trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum sale, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorship, cross-promotions, ‘contra deals’ and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sale may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an association of the trade marks with the goods or services themselves.4F15F[16]

    [16] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 436.

17. What constitutes a significant or substantial number of persons in the relevant market must be considered. Justice Heerey in Le Cordon Blue BV v Cordon Blue International Ltd provided some guidance:

    What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards^.16F[17]

    [17] [2000] FCA 1587.

18. In this case the Opponent’s goods and services include tyres, clothing, jewellery, luggage, sporting articles, retail stores and repair services. The Opponent’s goods and services are provided through a wide range of online and physical retailers including department stores, specialty stores, and vehicle repairers. As such the relevant market would conceivably be constituted by consumers around Australia from rally car drivers to teenagers.

19. The Opponent filed evidence that its trade marks had, before the Relevant Date, acquired a reputation in Australia that I assess below.

20. The Marsaglia declaration submits that the Opponent’s P ZERO tyres have been promoted and sold in Australia since at least 1997. The tyre products reach the Australian market via its over 1,000 Australian dealers and distributors. Exhibit GM-8 provides screenshots from the internet archiving service Wayback Machine, dated from 12 March 1998 to 12 March 2019. The archived pages feature four Australian tyre retailers: BobJane, Beaurepaires, Tyresales, and Tyroola. The screenshots show the Opponent’s tyres for sale under the P ZERO and P ZERO ROSSO trade marks.    

21. Further examples of third parties advertising the Opponent’s tyre goods include Exhibit GM-24 which provides examples of online advertising featuring the PZERO trade mark undertaken in Australia by CarAdvice and Carsales on 9 April 2008.

22. The Opponent’s social media presence includes its Facebook, Instagram, LinkedIn and You Tube accounts. Exhibit GM-25 provides examples of its activities on these platforms showing use of the PZERO trade mark on signage, cars and tyres. Exhibit GM-22 provides screenshots from the website showing examples of advertising undertaken by the Opponent in 2016 via its digital magazine and corporate presentations in relation to PZERO branded tyres

23. The Opponent’s marketing activities include sponsoring or supplying product for motorsport events in Australia and internationally. Since 2017 the Opponent has been the exclusive tyre supplier for the LIQUI-MOLY Bathurst 12 Hour event. Exhibit GM-11 is an online article from Bathurst 12 Hour which discusses the event and the agreement as well as the exclusive relationship between the Opponent and the International Automobile Federation Formula 1 World Championships, Australian Grand Touring (‘GT’) and the Australian Endurance Championships. Exhibit GM-14 provides photos extracted from the Opponent’s Facebook handle @pirelli of the Forumla 1 Australia Grand Prix 2012 showing track signage and competitors tyres bearing the PZERO trade mark. The Opponent has also been involved with the World Rally Championships17F[18] and has been the exclusive tyre supplier to the Electric GT Championship since 2017.18F[19] Events that the Opponent sponsors and/or supplies product to such as the Formula 1 are broadcast to television and digital audiences. Exhibit GM-15 provides viewership figures for the Formula 1, stating that Australian viewers are in the Top 20 markets. Exhibit GM-16 provides print-outs of the Formula 1 Activation Reports of the Australian Grand Prix for the years 2011, 2016, 2017, 2018 and 2019 which detail the PZERO brand exposure via different media channels.

    [18] Exhibit GM-18 and 19.

    [19] Exhibit GM-20 and 21.

24. Confidential Exhibit GM-C-9 provides Australian sales volumes and figures for the years 2006 to 2019.

25. Exhibit GM-10 provides independent Australian consumer reviews of the Opponent’s PZERO branded tyres. The reviews are from the websites of Tyre Review and Tyre Sales dated from October 2015 to May 2019.

26. In my assessment of the evidence, I note that each mark nominated in the SGP is separate when considering the operation of s 60 and it is appropriate to consider the use to which they have been put. The evidence before me shows use of the PZERO and the P ZERO ROSSO trade marks in relation to tyres before the Relevant Date in Australia.

27. The evidence shows that the Opponent’s tyre products have been sold throughout Australia through a network of Australian tyre retailers and distributors for the past 22 years. The Opponent is engaged in the sponsorship and the supply of tyre products to prestigious motor sporting events in Australia, and these events are broadcast to large audiences resulting in significant exposure of the Opponent’s PZERO trade mark. The Opponent’s tyre products have also been advertised extensively in catalogues, magazines, websites and social media.

28. The sales figures in relation to tyres sold under PZERO trade mark are commercially significant. Furthermore, consumer awareness of the PZERO trade mark is manifest in the consumer endorsements of the Opponent’s PZERO tyre products.

29. I am satisfied on the evidence before me that the PZERO trade mark had before the Relevant Date, acquired a very significant reputation in Australia for tyres and the supply of tyres to motorsports sufficient for the requirements under s 60 (a). I reach this conclusion noting the length of time the Opponent has used the P ZERO trade mark and the degree of advertising and sales under the PZERO trade mark as well as the evidence of esteem that the PZERO trade mark is held in Australia through the public motorsport events.

30. I am not satisfied that any reputation has been demonstrated in the P ZERO ROSSO trade mark as the use shown is limited to one advertisement on the BobJane website in 2019.

31. It is not sufficient that the Opponent merely establishes that the PZERO trade mark has a reputation; the Registrar must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

    An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.19F[20]

    [20] (1937) 58 CLR 641, 658.

32. In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:

    A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.20F[21]

    [21] (1999) 45 IPR 411, 428. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

33. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:

    The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.21F[22]

    [22] [2012] ATMO 124, [40] (Hearing Officer Thompson).

34. While it is not necessary to show that the trade marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark’.22F[23]

    [23] [2016] FCA 729, [142] (Yates J).

1. In the present case, I have already found that the Trade Mark is deceptively similar to the PZERO trade mark. The question I have to consider is whether by reason of the Opponent’s reputation in the PZERO trade mark, use of the Trade Mark would be likely to deceive or cause confusion in relation to the remaining Goods and/or Services.

2. Therefore, the first issue that needs to be resolved is the breadth of the specification of the remaining Goods and Services.  The Goods are essentially vehicles and automotive parts (classes 7 and 12) and the Services involve the maintenance and repair of motor vehicles (class 37), sporting services related to motor sports, education and training services related to the installation, assembly, modification, maintenance, servicing repair of vehicle components (class 41), custom manufacture of components, parts and accessories for vehicles (class 40) and the design and development of components, parts and accessories for vehicles (class 42).

3. In view of the above I must consider the manner in which the Opponent’s goods and services are sold in Australia. In the market, tyres will be acquired by consumers to fit their driving and vehicle requirements. The evidence before me is that the Opponent’s tyres are sold via tyre dealerships or retailers who provide fitting and repair services or partner with tyre shop and fitting centres. While I note that the Opponent’s PZERO tyres are supplied to motorsport events either under exclusive or non exclusive agreements, there is no evidence of the Opponent offering additional services in relation to these events.

4. In these circumstances, I consider the evidence of reputation in the PZERO trade mark is narrow and the Opponent has not shown it has a reputation generally outside the tyre business. Taking into consideration the extent of the Opponent’s reputation in the PZERO trade mark, and the differences in the trade marks and goods and services as a whole, I am not satisfied that confusion would result if use of the Trade Mark occurred outside of goods for or in relation to tyres and wheels, and components, parts and accessories for tyres and wheels in class 12 and services in relation to tyres and wheels, and components, parts and accessories for tyres and wheels in class 37.  

5. The Opponent has not established the ground for opposition under s 60 of the Act for the remaining Goods and Services.

   Section 42

6. Section 42(b) of the Act provides:

   42  Trade mark scandalous or its use contrary to law

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

   […]

   (b)  its use would be contrary to law.

7. In the SGP the Opponent particularises the ground of opposition under s 42(b) as follows:

   16. The opponent repeats paragraphs 1 to 15 [in the SGP under ss 44 and 60].
   17. By reason of the opponent’s reputation in the ZERO Trade Marks, use of the applicant’s mark for the applicant’s goods and/or services would mislead or deceive, or would be likely to mislead or deceive consumers to believe, and the applicant would thereby be representing, that:

   (a) the applicant’s goods and/or services are those of the opponent;
   (b) the applicant’s goods and/or services are being supplied by or under or with the authority of the opponent, or have the approval of the opponent; and/or
   (c) the applicant as being the opponent or as having the approval of the opponent or as being associated, affiliated or sponsored by the opponent.

   18. Each of the representations referred to in paragraph 17 above is false.
   19. By reason of the matters set out above, use of the applicant’s mark would contravene, and would therefore be contrary to at least, sections 18 and 29 of the Australian Consumer Law found in schedule 2 of the Competition and Consumer Act 2010 (Cth).
   20. Further, by reason of the matters set out above, use of the applicant’s mark would result in the applicant passing off:

   (a) the applicant’s goods and services as those of the opponent;
   (b) the applicant’s goods and services as being supplied by, or under, or with the authority of the opponent, or having the approval of the opponent; and/or
   (c) the applicant as being the opponent or as having the approval of the opponent or as being associated, affiliated or sponsored by the opponent.

   21. Such actions in paragraph 20 above have caused, or would be likely to cause, damage to the opponent.

8. As with all the grounds of opposition, the onus rests with the Opponent and in that regard the case law on s 42(b) requires it to show that use of the Trade Mark would be, rather than could or might be contrary to law.20F23F[24]

   [24] Advantage Rent a Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 (Madgwick J).

9. In this matter the Opponent has failed to establish a ground of opposition under s 60 in respect of the remaining Goods and Services. The test for s 18 of the Australian Consumer Law21F24F[25] (‘ACL’) is a more stringent one than that for confusion under s 60.22F 25F[26]I O Consequently, the Opponent’s reliance on s 18 cannot advance its case any further than that already established under s 60. I therefore find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark for the remaining Goods and Services would be contrary to s 18 of the ACL.

   [25] Competition and Consumer Act 2010 (Cth) sch 2.

   [26] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ). This case was decided under s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’), which was equivalent to s 18 of the ACL.

10. In relation to s 29 of the ACL it has been held that where a trade mark does not offend s 18 of the ACL, neither will it offend s 29 of the ACL23F26F[27] nor will it constitutepassing off.24F27F[28]

    [27] In Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, Beaumont J considered in connection with the TPA that ‘the Court’s conclusion on section 52 would necessarily carry with it a conclusion on section 53 (c) and (d).’ Sections 53(c)-(d) of the TPA are equivalent to ss 29(1)(g)-(h) of the ACL.

    [28] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [39] (French J).

11. For these reasons I am not satisfied that use of the Trade Mark by the Applicant for the remaining Goods and Services would be contrary to law.

12. The Opponent has not established the ground of opposition under s 42(b) for the remaining Goods and Services.

    Resolution of opposition

13. In Apple Inc. v Registrar of Trade Marks Yates J stated that:

    My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.28F[29]

    [29] [2014] FCA 1304, [232].

14. In circumstances where an opposition has been established in respect of some, but not all of an applicant’s goods or services the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has not been established.

15. In the present case, given the limited range of goods and services for which the Opponent had established a ground of opposition, I provided the Applicant with the opportunity to amend the application to remove all references to tyres and wheels in classes 12 and 37 and to apply the exclusion statement: 'all of the foregoing excluding tyres and wheels, and components, parts and accessories for tyres and wheels' to class 12 and ‘all the foregoing excluding services in relation to tyres and wheels, and components, parts and accessories for tyres and wheels’ to class 37. The Applicant agreed to the amendments and the amendments have now been made.

    Decision

16. Section 55 of the Act provides:

    55  Decision

    (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 any ground on which the application was opposed has been established.

17. Following the amendment referred to in paragraph 73, I find that the Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade Mark application number 2011489 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

    Costs

18. Both parties sought an award of costs. Given that each party has enjoyed partial success in this matter I make no order as to costs.

    Louise Tuohy
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    18 February 2020

    Annexure A

Pirelli Tyre S.p.A.
Number	Trade Mark	Priority Date	Specification
741599	PZERO (‘PZERO trade mark’)	15.8.1997	Class 12: Tyres; pneumatic, semi-pneumatic and solid tyres for vehicle wheels; wheels for vehicles, inner tubes, rims, parts and fittings for all the aforesaid goods
764740	P ZERO ROSSO (‘P ZERO ROSSO trade mark’)	15.6.1998	Class 12: Tires; pneumatic, semi-pneumatic and solid tires for vehicle wheels; wheels for vehicles, inner tubes, rims, parts and fittings for all the aforesaid goods in class 12 Class 35: Advertising business, commercial administration, office work in class 35 Class 37: Construction, repair and installation services pertaining to vehicles including those pertaining to vehicle service stations, and including repair services pertaining to tyre retreading and vulcanisation, roadside repair assistance, repair services during vehicle races; repair and changes of tires; car assistance services, wheel and tire changes during car races in class 37
877458	ZERO	30.5.2001	Class 12: Tyres; pneumatic, semi-pneumatic and solid tyres for vehicle wheels; wheels for vehicles, inner tubes, rims parts and fittings for all the aforesaid goods
877459 (REMOVED)	ZERO GIALLO	30.5.2001	Class 12: Tyres; pneumatic, semi-pneumatic and solid tyres for vehicle wheels; wheels for vehicles, inner tubes, rims parts and fittings for all the aforesaid goods
877460	ZERO NERO	30.5.2001	Class 12: Tyres; pneumatic, semi-pneumatic and solid tyres for vehicle wheels; wheels for vehicles, inner tubes, rims parts and fittings for all the aforesaid goods
Pirelli & C. S.p.A
948295	P ZEROTEMPO	3.12.2002	Class 14: Silver and gold-plated items, timepieces, jewelry Class 18: Luggage, leather goods not included in other classes Class 25: Clothing, footwear and headgear Class 28: Sports articles not included in other classes; toys
949277	P ZEROACQUA	10.1.2003	Class 14: Silverware, timepieces, jewellery, bijouterie Class 18: Luggage, leather goods not included in other classes Class 25: Clothing, footwear and headgear Class 28: Sports articles not included in other classes and toys
950878	P ZEROARIA	18.10.2002	Class 14: Silver and gold-plated items, timepieces, jewelry Class 18: Travel goods, leather goods, not included in other classes Class 25: Clothing, footwear and headgear Class 28: Sports articles not included in other classes; toys
1525711	BELIEVE IN P ZERO	25.6.2012	Class 12: Tires; pneumatic, semi-pneumatic and/or solid tires; wheels for vehicles and components and/or accessories thereof; rims; inner tubes and/or other supports to be inserted between tire and rim
1928922	P ZERO	5.3.2018	Class 16: Paper and cardboard not included in other classes; printed matter; stationery; articles of paper or cardboard, namely, boxes, bags, envelopes and pouches for packaging; wrapping paper; writing instruments; pouches for writing instruments; cases for writing instruments; inks and ink refills for writing instruments; desk sets; writing books; calendars, note books, indexes, covers [stationery], files [office requisites], announcement cards [stationery]; writing paper, envelopes, index cards [stationery]; business cards; writing pads; writing instrument holders; paperweights; diaries, cover for diaries, replacement papers for diaries; inkwells; check book holders, passport holders; document holders and cases; albums; bookends; money clips; writing cases (sets) Class 18: Leather and imitation leather not included in other classes, handbags, travelling bags, rucksacks, garment bags for travel, traveling sets (leatherware), bags for sports, wheeled bags, wallets, purses, name cards cases, briefcases, attache cases, key cases of leather or imitation leather; trays made of leather; travelling trunks; vanity cases (not fitted); evening purses (handbags); leather straps; boxes of leather or leather board, trunks and suitcases; credit card holders
1970585	20.2.2018	Class 16: Paper, cardboard; printed matter; stationery; articles of paper or cardboard, namely, boxes, bags, envelopes and pouches for packaging; wrapping paper; writing instruments; pouches for writing instruments; cases for writing instruments; inks and ink refills for writing instruments; desk sets; writing books; calendars, note books, indexes, covers (stationery), files (office requisites), announcement cards (stationery); writing paper, envelopes, index cards (stationery); business cards; writing pads; writing instrument holders; paperweights; diaries, cover for diaries, replacement papers for diaries; inkwells; check book holders, passport holders; document holders and cases; albums; bookends; money clips; writing cases (sets) Class 18: Leather and imitation leather; handbags, travelling bags, rucksacks, garment bags for travel, traveling sets (leatherware), bags for sports, wheeled bags, wallets, purses, name cards cases, briefcases, attache cases, key cases of leather or imitation leather; trays made of leather; travelling trunks; vanity cases (not fitted); evening purses (handbags); leather straps; boxes of leather or leather board, trunks and suitcases; credit card holders; document cases Class 25: Clothing, footwear, headgear; clothing of imitations of leather; leather clothing; gowns; robes; bathrobes; bandanas (neckerchiefs); berets; underwear; smocks; training shoes; stockings; slippers; socks; breeches; short-sleeve shirts; shirts; jackets (stuff-) [clothing]; top hats; coats; hoods [clothing]; belts [clothing]; belts (money-) [clothing]; tights; shoulder wraps; detachable collars; hats; suits; beachwear; neckties; ascots; headbands [clothing]; pocket squares; scarves; jackets [clothing]; skirts; gloves [clothing]; ready-to-wear clothing; knitwear [clothing]; jumpers; leg warmers; leggings (trousers); liveries; singlets; hosiery; swimsuits; sweaters; muffs [clothing]; maniples; mantillas; sleep masks; skorts; boxer shorts; bathing drawers; waistcoats; trousers; parkas; pelisses; shirt yokes; pyjamas; cuffs; ponchos; pullovers; brassieres; sandals; bath sandals; bath slippers; gymnastic shoes; beach shoes; training shoes; lace boots; outerclothing; petticoats; slips (undergarments); shirt fronts; ankle boots; boots; T-shirts; combinations [clothing]; uniforms; veils [clothing].
2004224	P ZERO WORLD	3.12.2018	Class 35: Retail and wholesale store services featuring automotive parts and accessories, horological and chronometric instruments, watches, key rings, clothing and related accessories, namely, shirts, skirts, dresses, pants, jackets, coats, suits, leggings, sweaters, belts, scarves, gloves, footwear, sunglasses, eyeglass frames, eyeglass cases, contact lens cases, umbrellas, electronics and accessories, namely, car chargers, AC adaptors/travel chargers, hands-free kits comprised of an earphone-type speaker, a microphone and a jack to plug into the phone and cradle units that plug into a car cigarette lighter, batteries, wireless headsets, wireless speakers, protective flip covers, cellular phones, leather cases, vinyl cases, plastic cases and replacement housings for cellular telephones, shoes, sports equipment, bracelets, printed matter, namely, photographs, stationery, calendars, post cards, posters, printed advertising boards, printed art reproductions, writing materials in the nature of writing instruments, cases, bags, furniture, household goods, handbags, wallets, credit card cases, leather key chains, luggage tags, luggage, tote bags, briefcases, document cases, toiletry cases sold empty; demonstration of general consumer merchandise; organization of exhibitions and trade fairs for business or advertising purposes; online retail store services featuring automotive parts and accessories, horological and chronometric instruments, watches, key rings, clothing and related accessories, clothing, namely, shirts, skirts, dresses, pants, jackets, coats, suits, leggings, sweaters, belts, scarves, gloves, footwear, sunglasses, eyeglass frames, eyeglass cases, contact lens cases, umbrellas, electronics and accessories, namely, car chargers, AC adaptors/travel chargers, hands-free kits comprised of an earphone-type speaker, a microphone and a jack to plug into the phone and cradle units that plug into a car cigarette lighter, batteries, wireless headsets, wireless speakers, protective flip covers, cellular phones, leather cases, vinyl cases, plastic cases and replacement housings for cellular telephones, shoes, sports equipment, bracelets, printed matter namely, photographs, stationery, calendars, post cards, posters, printed advertising boards, printed ad reproductions, writing materials in the nature of writing instruments, cases, bags, furniture, household goods, handbags, wallets, credit card cases, leather key chains, luggage tags, luggage, tote bags, briefcases, document cases, toiletry cases sold empty, cosmetic bags sold empty. Class 37: Vehicle service stations; repair, servicing and maintenance of vehicles, retreading of tires.