Fratelli Fantini SpA v Beverley Harris

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Fratelli Fantini SpA to registration of trade mark application 1781312 (11) - Santini - in the name of Beverley Harris.

Delegate: Iain Campbell Thompson

Representation: Opponent: Phillips Ormonde Fitzpatrick
Applicant: Self-represented

Decision: 2019 ATMO 44
Trade Marks Act 1995
Section 52 opposition to registration – grounds under sections 42, 43, 44, 58, 60, and 62A. Grounds not established.
Background

In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Beverley Harris (‘the Applicant’) has applied to register the trade mark which appears below:
Application No:         1781312
Priority Date:             5 July 2016
Goods:Class 11: Toilets; Bathroom fixtures; Bathroom furniture (sanitary ware); Bathroom installations; Fittings for the bathroom; Bathroom suites; Bath cabinets; Shower cabinets; Sanitary apparatus; Sanitary apparatus and installations; Bathroom basins (parts of sanitary installations); Bathroom wash basins; Fittings for basins; Basin taps; Taps (faucets); Water taps; Plugs for wash basins; Vanity unit tops being wash hand basins and surrounds (parts of sanitary installations); Vanity units incorporating basins (connected to the water supply); Sinks
(‘the Goods’)
Trade Mark:               Santini
(‘the Trade Mark’)
The Trade Mark was examined as is required by section 31 of the Act and advertised as accepted for possible registration on 1 December 2016 in the Australian Official Journal of Trade Marks.
On 30 January 2017, Fratelli Fantini SpA (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark.
On 28 February 2017, the Opponent filed a Statement of Grounds and Particular detailing grounds under sections 42, 43, 44, 58, 60, and 62A of the Act.
On 11 May 2017, the Applicant filed a Notice of Intention to Defend.
Thereafter, the parties have filed the following declarations in these proceedings:
Evidence in Support
Daniela Fantini, Managing Director and General Manager of the Opponent, made on 3 August 2017, with Exhibits DF 1 to DF 12;
Evidence in Answer
Beverley Margaret Harris, Sole Director and Owner of Harris Agencies Pty Ltd, trading as DevSpec, made on 28 September 2017, with Annexures A to G;
Evidence in Reply
Helen Nectaria Kavadias, Trade Mark Attorney, made on 4 January 2018, with Exhibits HNK-1 to HNK-3.
Both parties have been informed of their right to request to be heard or to make written submissions. Neither party has done either.
Now, in order that the Registrar may discharge her obligation under section 55 of the Act to decide the matter, it has been passed to me, one of her delegates, for my decision on the written record which is comprised of those materials mentioned in the foregoing paragraphs.
Onus and Relevant Date
The Opponent bears the onus of establishing a ground of opposition which is detailed in the Statement of Grounds and Particulars on the balance of probabilities.[1]
[1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132] to [133].
The relevant date (‘the Relevant Date’) at which the grounds must be considered is the filing date[2] of the opposed application and I note that where sections 44 and 60 specify the “priority date” that is here the same as the filing date.
Evidence
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.
The Opponent
Ms Fantini’s declaration establishes that the Opponent owns the following Australian trade mark registrations:
Registration No:         722352
Priority Date:             21 November 1996
Goods/Services:         Class 7: Metal taps and fittings for industrial use; machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements; incubators for eggs
Class 11: Metal taps and fittings for sanitary and hygienic apparatus and installations; apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes
Trade Mark:
Registration No:         1745058
IR No:  1002577
Priority Date:             18 December 2015
Goods/Services:         Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, apparatus water taps; hygienic and sanitary facilities
Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics
Class 24: Textiles and textile goods, not included in other classes; bed and table covers
Trade Mark:               FANTINI
I will term the above trade marks “the Opponent’s Trade Marks”.
Ms Fantini declares that the Opponent was:
… founded by Giovanni and Ersilio Fantini in the early years after World War II, and has been owned and operated by the Fantini family thereafter.
The Opponent is a company that designs, manufactures and distributes contemporary faucets, accessories and shower systems. Over the years, the range of goods sold under the trade mark FANTINI has expanded to include metal taps and fittings for industrial use; metal taps and fittings for sanitary and hygienic apparatus and installations; apparatus [for] water supply and sanitary purposes.
The Opponent has used the FANTINI trade mark in Australia since at least 1995, […] in relation to taps and other fittings, washbasins, washbasin mixers, hydrobrushes used for WC cleaning or personal cared if used with a shower mixer, bidet mixers, built-in shower mixers, basins, cartridges, built-in bathtub mixers, deck-mount bathtub mixer, showerheads, shower arms, shower sets, lateral body spray, flush actuator plate, washbasin plug, bottle trap for washbasin and bidet, filters, handles, shower fittings, bathtub fittings, (“the Opponent’s Goods”).
Ms Fantini states:
Annexed to me and marked Confidential Exhibit DF 6 is a table showing the Opponent’s total amount of advertising and promotion expenditure in Australia as of 2011.
[…]
The Opponent has generated significant revenue from the goods provided under the FANTINI Trade Marks. Annexed to me in Confidential Exhibit DF 10 is a table showing the approximate sales revenue generated by the Opponent from goods sold under the FANTINI Trade Marks throughout Australia since 2011.
However, Confidential Exhibit DF 10 is titled “Advertising/Promotion Expenditure” and Confidential Exhibit DF 6 includes “Value of Sales (Retail, AUD)”.
I infer that these Exhibits have been incorrectly identified in the declaration. In any event, I would describe the amount of sales revenue and advertising expenditure by the Opponent in relation to the Opponent’s Trade Marks as being relatively low.
The Applicant
The Applicant states that she has, since 1997, sold the Goods by tender to Commercial Multi Residential Developments and that prior to these proceedings she had never encountered goods sold under the Opponent’s Trade Marks.
Section 44
Statement of Grounds and Particulars
In its Statement of Grounds and Particulars the Opponent asserts:
The Opposed Trade Mark is substantially identical with or deceptively similar to one or more other trade mark/s in respect of the same goods or services or closely related goods or services (Prior Trade Mark/s) where the Prior Trade Mark/s has/have earlier priority date/s than the Opposed Trade Mark and is/are the subject of registration/s or protected international registration/s or of application/s or IRDA/s.
[The Opponent then details the prior rights which appear at paragraph [11] of this decision]
Further Particulars:
There has been no honest concurrent use of the Opposed Trade Mark with the Prior Trade Mark/s and no other circumstances exist such that the Registrar should be satisfied that it is proper to accept the Opposed Trade Mark subject to any conditions or limitations that the Registrar thinks fit to impose. The opposed trade mark was accepted without submissions to the Registrar that would allow for acceptance under s.44(3) or regulation 4.15A(3).
The provisions of subsection 44(4) of the Act should not be applied in favour of registering the Opposed Trade Mark in relation to any or all of the Goods and/or Services. The opposed trade mark was accepted without submissions to the Registrar that would allow for acceptance under s.44(4) or regulation 4.15A(5).
Section 44 - Framework
Section 44 of the Act relevantly provides:
44Identical 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.
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.
Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
To found the ground under subsection 44(1) the Opponent must establish each of the following:
that the Opponent’s Trade Marks have earlier priority dates than that of the Trade Mark; (‘the First Requirement’) and that,
the goods specified on the Opponent’s Trade Marks’ registrations are similar goods to the Goods; (‘the Second Requirement’) and that,
the Trade Mark is deceptively similar to the Opponent’s Trade Marks (‘the Third Requirement’).
The registrations upon which the Opponent relies have earlier priority dates than that of the Trade Mark – the First Requirement is thus satisfied.
Subsection 14(1) provides:
14Definition of similar goods and similar services
(1)For the purposes of this Act, goods are similar to other goods:
(a)if they are the same as the other goods; or
(b)if they are of the same description as that of the other goods.
Section 10 of the Act provides:
10Definition 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.
In respect of the expression “goods of the same description” within section 14 of the Act, in E & J Gallo Winery v Lion Nathan Australia Pty Ltd Moore, Edmonds and Gilmour JJ stated:[3]
The expression “goods of the same description” is a term of art which was found in the legislative predecessors to the TM Act. There is Full Court authority, MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236, that authorities predating the enactment of the TM Act in 1995 concerning the meaning and effect of the expression in a different context are apt to be applied in considering the meaning and effect of the expression in s 120(2). The fact that the Full Court was considering the expression “services of the same description” rather than “goods of the same description “does not appear to us to be a material difference. In this context, the Full Court referred to the judgment of the High Court in Southern Cross at 606. Considerations referred to in the passage from the judgment of the High Court include the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters, during the same seasons and to the same class or classes of customers and whether, by those engaged in the manufacture or distribution, they are regarded as belonging to the same trade.
[3] [2009] FCAFC 27; (2009) 175 FCR 386; [2009] AIPC 92-337 at [70].
And in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd Burchett J stated:[4]
In my opinion, the application of a principle so broadly stated requires some concentration upon the object which s. 23(2) exists to serve. That object seems plainly to be the avoidance of confusion and deception in the market place, which would be likely to arise should a mark become available for use by two or more different companies, which are unrelated, upon goods of the same description. From that point of view, the expression “goods of the same description” is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception. That approach would seem to me to accord with the common sense business view recommended by Lord Evershed. In its application to the present case, it would place weight on the fact that sheets and towels are both sold in the manchester goods sections of stores and fall within the generic description of manchester goods. I think I would be entitled to take judicial notice of this situation, but there is no need, since the evidence makes it abundantly clear.
[4] [1993] FCA 203; (1993) 42 FCR 227; 114 ALR 157; 26 IPR 246; [1993] AIPC 91-007 at [27].
The Applicant posits that the goods sold under the Trade Mark are sold by tender to Commercial Multi Residential Developments and that the Applicant’s goods are sold via retail outlets and that there is, accordingly, little chance of confusion. However, this is not the question which is before me: I am to weigh the parties’ specifications of goods at their widest and consider the use that can be made of the parties’ trade marks to the full extent of the respective specifications of goods. As it was put by Mason J in Berlei Hestia Industries Ltd v The Bali Company Inc:[5]
...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.
[5] [1973] HCA 43; (1973) 129 CLR 353 at 362.
Accordingly, read at the widest, the goods of the parties both include goods which might either, for example, be sold by tender to developers/builders or be sold through retail outlets.
The Goods are obviously both the same goods and “goods of the same description” as “apparatus [for] water supply and sanitary purposes, apparatus water taps; hygienic and sanitary facilities” are similar goods to the Goods and the Second Requirement accordingly established.
As to the Third Requirement, in discussing “substantial identity” in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd[6] (‘Shell’) Windeyer J said:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.
[6] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12].
Focusing on the trade marks SANTINI and FANTINI, they are obviously different and a total impression of dissimilarity emerges from the comparison. The difference between the Opponent’s logo trade mark and the Trade Mark is obviously greater.
Deceptive similarity is assessed according to the test in Shell where Windeyer J stated:[7]
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. 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 television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe 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”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “In deciding this question, the marks ought not, of course, 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” (1937) 58 CLR, at p 658.
[…]
The deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.
[7] Op cit at [13].
In Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd[8] Jacobson J summarised the principles of deceptive similarity with reference to the authorities as follows:
[8] [2012] FCA 1022, [38]-[46].
Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.
First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[9] at [49]; Australian Woollen Mills[10] at 658.
Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[11] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.
Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].
Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.
Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[12] at 594 – 595.
Sixth, 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 the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam’s Wines Pty Ltd v McDonald’s System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.
Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.
Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.
Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].
[9] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.
[10] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.
[11] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.
[12] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

And in Re Pianotist CoLtd’s Application,[13] endorsed by the High Court in Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd,[14] Parker J stated:
You must take the two words. You must judge of them, both by their look and by their sound. 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 of the respective owners of the marks. If, considering all those circumstances, you come to conclusion that there will be confusion—that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods—then you may refuse the registration, or rather you must refuse the registration in that case.
[13] (1906) 23 RPC 774 at 777.
[14] [1952] HCA 15; (1952) 86 CLR 536 at 538.
The issue of whether the trade marks here in question are deceptively similar is difficult and, in deciding this, I take the following factors into account:
·     There is one letter difference between the trade marks but this falls at the beginning of the words involved: the beginning of a trade mark is usually the most important for comparison: see London Lubricants (1920) Limited’s Application where Sargent LJ observed that:[15]
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 judgment, the first syllable of a word is, as a rule, far more important for the purpose of distinction.
·     An oblique reference to the words “sanitation” or “sanitary” may be perceived within the Trade Mark ‘Santini’ – such reference to the goods is absent from the Opponent’s Trade Marks.
·     The trade marks under consideration are otherwise phonetically very similar.
·     However, it is, in my consideration, less likely that the goods will be requested by oral reference to the trade marks rather than by visual inspection.
·     The words Fantini and Santini are both common Italian surnames (and are likely to be remembered and recalled as such), albeit they are relatively uncommon surnames in Australia where they both occur with a frequency of under 100 in a Search For Australian Surnames.[16]
·     The goods of the parties are ones of which people generally take some time and care over the purchase and there is a degree of deliberation involved – the goods are not ones which are, for example, casually bought from the shelves of supermarkets but neither do they attract the same attention as that given to the purchase of motor vehicles.[17]
[15] (1925) 42 RPC 264 at 279.
[16] This search is based on data from the Australian Electoral Roll in which surnames only appear.
[17] Compare Re Lancer Trade Mark (1987) RPC 303 (CA) (LANCER/LANCIA for automobiles) with Stuart Alexander & Co (Interstate) Pty Ltd v Blenders Pty Ltd [1981] FCA 152; 37 ALR 161; (1981) 53 FLR 307; [1981] TPRS 314319 (‘the Apothecaries Jars Case’ for coffee).
In the end, the issue is, in my view, finely balanced and, to my mind, the question is moot. There being a presumption of registrability, the question must be decided in the Applicant’s favour. Accordingly, the Opponent has not established the Third Requirement and I find that the trade marks of the parties are not deceptively similar.
The Opponent has not established its ground under section 44 of the Act.
Section 58
Statement of Grounds and Particulars
In the Statement of Grounds and Particulars the Opponent asserts:
The Applicant is not the owner in Australia, and is not entitled to claim to be the owner in Australia, of the Opposed Trade Mark in relation to any or all of the Goods and/or Services
Section 58 - Framework
Section 58 of the Act provides:
58Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note:For applicant see section 6.
In Polo/Lauren Co LP v Horse Australia Pty Ltd the Registrar’s delegate observed:[18]
The owner of a trade mark for particular good/services is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier. It is now well established that in order to succeed under this ground of opposition the Opponent must establish three factors. These are:
·that the Applicant’s Trade Mark is identical, or substantially identical, to the trade mark relied upon by the Opponent;[19] and
·that the Applicant’s Services are the ‘same kind of thing’ as the goods and services for which the trade mark relied upon by the Opponent was used;[20] and
·that a person other than the Applicant has the earlier claim to ownership of the Applicant’s Trade Mark based on use prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the trade mark by the Applicant.[21]
[18] [2018] ATMO 150 at [55].
[19] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 936; (1994) 31 IPR 375.
[20] Re Hicks’ Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636.
[21] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.
Section 58 - Discussion
As I have found that the trade marks under consideration are not substantially identical this ground cannot be established.
The Opponent has not established the ground under section 58 of the Act.
Section 60
Statement of Grounds and Particulars
In its Statement of Grounds and Particulars the Opponent asserts:
The Opponent has an established (and earlier) reputation from at least as early as 23 September 1997 in the FANTINI Trade Marks in relation to a broad range of - goods in classes 7, 11, 20, [and] 24 such that use of the Opposed Trade Mark in Australia in relation to some or all of the goods for which registration is sought would be likely to deceive and cause confusion.
I note now that the use of the Opponent’s trade marks has, in my consideration, been established in relation to faucets, accessories and shower systems, including metal taps and fittings for industrial use; metal taps and fittings for sanitary and hygienic apparatus and installations but that use of the Opponent’s trade mark in Australia has not extended to goods in Classes 20 and 24 as is asserted in the Statement of Grounds and Particulars.
Section 60 - Framework
Section 60 of the Act provides:
60Trade 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.
Note:For priority date see section 12.

The Opponent must therefore establish that the trade mark upon which it relies:
In McCormick & Co Inc v McCormick (‘McCormick’) Kenny J said of “reputation”:^[22]
What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:
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.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally.
[22] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].

In Le Cordon Bleu B.V. v Cordon Bleu International Ltee[23] Heerey J said that the reputation required to be demonstrated (albeit in relation to section 28(a) of the repealed Trade Marks Act 1955)[24] was to be:
... one of which a significant number of persons were aware...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.
[23] [2000] FCA 1587; (2000) 50 IPR 1.
[24] The word ‘reputation’ was not used in subparagraph 28(a) of the superseded Act. All that was required for subparagraph 28(a) was that use of the trade mark “be likely to deceive or cause confusion” and Heerey J imported the word “ reputation “ into his quoted remarks because he was following Gummow J’s judgment in Johnson & Johnson v Kalnin [1993] FCA 210; (1993) 26 IPR 435 at 438.
Kenny J explained in McCormick how the reputation of a trade mark is assessed by the decision-maker:[25]
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.
[25] Op cit at [81].
As to the assessment of the likelihood of deception or confusion, it is moderated by the factors discussed by French J in Registrar of Trade Marks v Woolworths.[26] Absent any requirement under section 60 that the trade marks under consideration be deceptively similar, these factors are:
[26] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [50].
(i) [...] it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) 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.
(iii) 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.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question [...] must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:
“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”
Further, the terms “deception” and “confusion” refer to two different mental states. The differences between “deception” and “confusion” were explained by Richardson J in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd:[27]
‘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 the 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.
[27] 1979] RPC 410 at 423.
Additionally, as Rich J said in Radio Corporation Pty Ltd v Disney:[28]
In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney.” The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney.” This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion.[29] It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.
[28] 1937] HCA 38; (1937) 57 CLR 448.
[29] I note that the onus is now on an opponent to establish the likelihood of deception or confusion.
It is also axiomatic that “confusion” may occur only when initially considering the purchase of the goods and might not persist: Dodds-Streeton J in Tivo Inc v Vivo International Corporation Pty Ltd observed:[30]
It is well established that trade marks may be deceptively similar for the purposes of ss 44(1) and (2) of the Act even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale.
[30] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 at [105]
Section 60 - Discussion
Here, again, the consideration is of the Applicant’s Goods at the full scope of the specification. I am to consider the Goods as stated within that specification and that includes goods sold in the same marketplace as the Opponent’s goods.
There is no evidence before me about the size of the marketplace in Australia for the Goods or the proportion of that market that the Opponent’s Goods occupy but, in view of the fact that every dwelling has sanitation fixtures, the potential market is enormous. With that in mind, I would assess the strength of the reputation of the Opponent’s Trade Marks in Australia as being slight at the Relevant Date. The Opponent’s goods bearing those trade marks were sold through a specialist retailer who had a number of outlets around Australia; the Opponent’s goods were amongst a range of goods sold by those outlets. On the other side of the coin is the probability that most purchasers of the Goods at a retail level do not buy such goods on a regular basis – the Goods are generally only bought when building or renovating a house or an apartment. This would suggest both that any reputation might be more difficult to build and that the probability of the Opponent’s Trade Marks being imperfectly remembered is higher.
In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the Registrar’s delegate observed:[31]
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.
[31] [2012] ATMO 124 at [40].
In balancing the degree of similarity of the trade marks discussed at paragraphs [33] and [34], above, the relative strength of the reputation of the Opponent’s trade marks and the features of the marketplace through which the parties’ goods are, or may be, sold, I am not satisfied that the Opponent has established its opposition to registration under this ground. The goods of interest are ones are likely to be subject to a degree of close examination prior to purchase. Under such conditions, in considering both the similarities and the differences of the parties’ trade marks, the differences between the trade marks are likely to be noticed.
The Opponent has not established its opposition under section 60 of the Act.
Section 42
Statement of Grounds and Particulars
In its Statement of Grounds and Particulars the Opponent asserts:
The Opponent has an established reputation in the trade marks FANTINI (Logo) and FANTINI (i.e. registrations 722352 and 1745058) in Australia. Use of the Opposed Trade Mark by the Applicant in relation to the goods for which registration is sought would be misleading and deceptive, contrary to s.18 of the Australian Consumer Law, and would result in the Applicant’s goods being mistakenly taken as the goods of, or associated with, the Opponent thereby constituting a passing-off.
Section 42 – Framework
Section 42 of the Act relevantly provides:
42Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a)the trade mark contains or consists of scandalous matter; or
(b)its use would be contrary to law.
In Ingeus Australia Pty Ltd and Ingeus Pty Ltd v Qantas Airways Ltd the Registrar’s delegate observed:[32]
In the present matter the Opponents failed to establish a ground of opposition under s 60 of the Act. As the test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘the ACL’) is a more stringent test than that for deception or confusion under s 60,[33] I am satisfied that the Opponents have also failed to establish that the use of the Applicant’s Trade Mark would be contrary to s 18 of the ACL.
Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act 1974 (‘the TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[34] Section 53(d) of the TPA is the equivalent provision to s 29(1)(h) of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:
The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[35]
[32] [2018] ATMO 23 at [29].
[33] See, eg: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, at [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, at p 198 (Gibbs CJ).
[34] [2003] FCA 104, at [107].
[35] [1989] FCA 506, at [40] (citations omitted).
Section 42 - Discussion

As the Opponent has not established its opposition under section 60 of the Act, neither can it establish its opposition to registration under section 42.
The ground under section 42 of the Act is not established.
Section 43
Statement of Grounds and Particulars
In its Statement of Grounds and Particulars the Opponent asserts:
The Opposed Trade Mark is likely to deceive or cause confusion as use of the Opposed Trade Mark by the Applicant would suggest that the goods claimed by the Applicant are connected, or associated with the Opponent.
Section 43 - Framework
Section 43 of the Act provides:
43Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
To establish a ground of opposition under section 43 of the Act, there must be a connotation inherent within the trade mark itself.
Gyles J in Pfizer Products Inc v Karam commented:[36]
‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question.
[36] [2006] FCA 1663; (2006) 70 IPR 599, at [53].
And in Winton Shire Council v Lomas Spender J said:[37]
Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.
[37] [2002] FCA 288; (2002) 119 FCR 416; (2002) 56 IPR 72, at [19].
Section 43 - Discussion
As the Opponent has not filed evidence of a connotation inherent in the Trade Mark and, as the Opponent depends on the comparison of the Trade Mark with other trade marks, this ground is without a foundation.
The Opponent has not established its ground under section 43.
Section 62A
Statement of Grounds and Particulars
In its Statement of Grounds and Particulars the Opponent asserts
The Applicant filed the Opposed Trade Mark knowing of the Opponent’s use and reputation in the FANTINI Trade Marks in connection with the same, similar, or closely related goods.
Section 62A - Discussion
The Opponent has not filed evidence which might be argued to support this ground and I find that it has not been established.
Decision
Section 55 of the Act relevantly provides:
55Decision
(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.
Note:For limitations see section 6.
The Opponent has not established a ground of opposition.
The trade mark application may then proceed to registration one month from the date of this decision. If the Registrar has been 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.
Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
2 April 2019

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Phillips Ormonde Fitzpatrick Applicant: Self-represented
Decision:	2019 ATMO 44 *Trade Marks Act 1995* Section 52 opposition to registration – grounds under sections 42, 43, 44, 58, 60, and 62A. Grounds not established.

[2019] ATMO 44

2 April 2019