Free v Dolina Fashion Group Pty Ltd

[2000] ATMO 57

TRADE MARKS ACT 1995

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

Re:Opposition by Free to registration of trade mark application number 769199 in the name of Dolina Fashion Group Pty Ltd for the words FREE WOMAN and  device in class 25.

Background

On 4 August 1998, Dolina Fashion Group Pty Ltd (the applicant) filed an application number 769199 to register the trade mark:

 

The goods claimed in the application are "clothing" in class 25.  The acceptance of the applicant's mark was advertised in the Australian Official Journal of Trade Marks of 3 December 1998. 

Registration of the mark was opposed by Free, a French company, by filing a notice of opposition on 2 March 1999. In the notice of opposition, the opponent has relied on the grounds of opposition under sections 44, 60, 41, 58, 42 of the Act and also what appears to be the ground based on section 43. The uncertainty as to the s.43 ground will be explained under the heading 'Submissions and discussion'.

A hearing on the opposition was held in Sydney.  At the hearing, the applicant was represented by Ms Julia Baird, of Counsel.  No representations, either oral or in writing, were made by, or on behalf of, the opponent. 

The evidence
All the evidence in support was filed on 8 July 1999.  This evidence comprises a statutory declaration, with exhibits 'A' to 'H', by Michael Zberro, the president of the opponent company.  The declarant refers to two trade marks owned by the opponent, the subject of pending applications for registration in Australia, which I note have now been registered.  Both of these registrations have dates prior to the present application.   In stating that one of the marks was first used in Australia since at least 1996, Mr Zberro refers to copies of invoices annexed to his declaration.  Under another annexure are included some samples in order to show how the mark is actually used, including clothing labels and a swing tag.  As the opponent's promotional material in relation to the mark, the declarant has provided copies of a magazine and a brochure.   A copy of the mark's registration in France is also annexed to Mr Zberro's declaration.  

Submissions and discussion
At the outset, with reference to the opponent not being represented in these proceedings, Ms Baird made the comment that, whilst the opponent had lodged a statutory declaration, it had not, at the hearing, sought to read the declaration.   Whilst  the present tribunal was not bound by the rules of evidence, nonetheless it had a procedure of conducting hearings and the conduct of hearings sought to enable the parties to go through that evidence and make submissions.  Simply by filing something did not necessarily mean that it must become the evidence that would be read at the hearing, Ms Baird said.  Her reading of s.55 of the Act relating to opposition procedures was that not only the grounds in a notice of opposition instituted the opposition, but that the grounds must also be established.  Under s.33 of the Act, at the examination stage and in line with what has been said in the Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411, it is clear that there is a presumption of registrability when considering s.44 under the Trade Marks Act 1995, Ms Baird submitted.  In her opinion, the position did not differ at opposition.  Thus, the opponent  must establish a ground and, unless the Registrar is not satisfied that the ground has been established, then the mark having been accepted proceeded to registration.  Contrary to the 1955 Act, it was for the opponent to establish a ground of opposition as specified in s.55.   The opponent not having read any evidence into the hearing, Ms Baird said, no ground was made out, and therefore the opposition must fail on all the grounds.  Ms Baird then proceeded to make submissions on the grounds of opposition set out in the notice of opposition, including the ground assumed to be in terms of s.43.

S.44 - substantially identical or deceptively similar marks
The grounds of opposition principally relied on two of the opponent's prior registrations, which were available to the examiner for citations, Ms Baird said, commenting that in Registrar v Woolworths, supra, and recently, in Ocean Spray Cranberries Inc. v Registrar of Trade Marks [2000] FCA 177 (25 February 2000), it had been observed that the views of the examiner, as an experienced officer, should be given weight. First, referring to the principles set out on substantial identity by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at 414-415, and the criteria on comparison for deceptive similarity, found in Pianotist Co's Appn (1906) 23 RPC 774 at 777, as well as to the tests to be applied in considering whether marks are deceptively similar - Australian Woollen Mills Ltd v F.S. Walton & Co Ltd  (1937) 58 CLR 641 at 658, Ms Baird proceeded to explain why, as the applicant saw it, the opponent's marks were neither substantially identical with, nor deceptively similar to, the applicant's mark. Ms Baird pointed to the visual differences between the marks, stressing the fact that each component of the mark, i.e. the word/s and device, be given due weight. Whilst conceding that the devices in the respective marks could be seen as leaves, she submitted that their depiction differed significantly, as did the representation of the word components. Commenting on the common word element FREE in the marks, Ms Baird relied on the Registrar v Woolworths decision, supra, submitting that, if one word was encompassed in another, it did not follow that the marks were substantially identical or deceptively similar.  The position was stronger against the words FREE WOMAN and THINK FREE, because the word element in each case did not necessarily have the same meaning, or the same emotive idea, Ms Baird said.  Further, in respect of deceptive similarity between the marks, it was important to consider the context in which the marks were to be used.  In purchasing clothing, customers were likely to examine the goods with some care; the marks would be closely observed and the differences noted.  Thus, the appearance of a mark as it would be seen in the ordinary course of trade was an important matter, Ms Baird said, citing Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505. In respect of the word FREE, which is common in the marks, Ms Baird submitted, it should be noted that the word is an ordinary English word which other traders may wish to use in the normal course of trade. As an ordinary word, its presence in both marks did not suggest identity or similarity of the marks. This meant that, although it should not be discounted, other components must also be taken into account, Ms Baird said. Even the presence of some common idea was not determinative of the likelihood of deception and confusion, particularly where that idea was itself commonplace or somewhat descriptive - Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1939) 86 CLR 115 at 121-122. Continuing the assessment of the marks, Ms Baird argued that the marks had stylistic differences, and each of the marks had different meanings and different central ideas, which directed the attention from each other; while the applicant's phrase conveyed the spirit of nature and femininity, the opponent's marks, in her opinion, were exhortatory, or demanding.

Section 44 of the Act reads:

44.(1)         Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a)   the applicant's trade mark is substantially identical with, or deceptively
       similar to:

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

(ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)    the priority date for the registration of the applicant's trade mark in
               respect of the applicant's goods is not earlier than the priority date for
               the registration of the other trade mark in respect of the similar goods
               or closely related services.
Note 1:  For deceptively similar see section 10.
Note 2:  For similar goods see subsection 14(1).
Note 3:  For priority date see section 12.

The opponent's marks bearing a priority date, identified in the notice of opposition as conflicting with the applicant's mark in terms of s.44 are:

 

769056  

769056  768502
                 ('FREE and logo' mark)        ('THINK FREE and logo' mark)

Both registrations cover identical goods in classes 3 and 25 which are:

Class 3:  Soaps; perfumery products, including perfumes, toilet waters, essential oils, cosmetics including creams, milks and lotions for care of the face, the skin and the hair, make-up products and make-up removers, mascaras, shampoos, toothpastes.

Class 25:  Clothing, including dressing gowns, bathrobes, lingerie, underwear, dresses, skirts, trousers, suits, coats, shirts, jackets, ties, scarves and stoles, gloves, rain coats, socks, stockings, pants, babywear; footwear, slippers, slipper-socks; belts; headgear.   

The marks of registrations 769056 and 768502 were filed on 30 July 1998 and 27 July 1998, respectively.  Registration 768502 is claiming  right of priority, under s.29, based on an application in France, dated 17 March 1998.     

In terms of s.14, goods are similar to other goods if they are the same goods as the other goods, or goods of the same description as the other goods.  In Jellinek's Appn (1946) 63 RPC 59, the factors to be taken into account for consideration as to whether the goods are of the same description were set down as: the nature of the goods, the purpose of those goods and the trade outlets through which the goods normally reach the consumer. When applying these criteria to "clothing", the goods of the subject application, and the goods in class 3 covered by the opponent's above-identified registrations, I do not regard the goods as being similar. In support of this contention, I refer to Potter & Moore Ltd's Appn (1939) 9 AOJP 3311, where perfumes and toilet articles were determined to be different from lingerie, hosiery and other articles of clothing.  The fact that clothing and cosmetics are not goods of the same description has been confirmed in a more recent decision - Inter-se Laboratories Pty Ltd v Puma AG Rudolf Dassler Sport (1993) AIPC 90-961. In the absence of any submissions convincing me that articles of clothing and any of the goods included in class 3 of the opponent's registrations 769056 and 768502 are similar goods, for the purpose of this decision, references to the opponent's goods will indicate the goods covered in class 25 of both of the opponent's registrations.

Comparing the marks side by side, as I must in terms of the guidelines of Windeyer J in Shell v Esso, supra, on substantial identity of conflicting marks, I  do not think that, by any stretch of imagination, the mark of the present application is substantially identical with either of  the two opponent's marks referred to earlier.  The only element in common in the marks is the word FREE, otherwise the marks, when viewed in their entirety, are totally different.   

The long-standing criteria as to deceptive similarity of marks, as submitted by Ms Baird, are outlined in Woollen Mills v Walton, supra.  There Dixon and McTiernan JJ stated at 658:

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.  The effect of spoken description must be considered.  If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound  and of meaning may play an important part.  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 observation of men considered in the mass affords the standard.  Evidence of actual cases of deception if forthcoming, is of great weight.     

Both the applicant's and the opponent's marks are composite marks comprising a word or words and a device of a leaf.  In the applicant's mark, the leaf, positioned above the words in the mark, creates an impression of the major portion of a simple elliptical leaf, the thick veins against the dark background suggesting what could be termed as the skeleton of a leaf.  The words FREE WOMAN, one underneath the other, are rendered in a fine cursive, flowing script.  In the opponent's marks, the leaf represents merely a stark outline of what resembles a stylized half of the edging of a Canadian maple leaf without any details.  The words FREE and THINK FREE in the respective marks are rendered in bold, large upper case letters, the words running into the irregular shape of the leaf.

The word FREE, of course, occurs in all three marks.  From my knowledge of the state of the Trade Marks Register, I am aware of a number of prior registrations to those of the opponent, in respect of goods falling in class 25, which feature FREE as the first of two words in a mark, for example: FREE SPIRIT (237279), FREE PEOPLE (626849), FREE PLUS (735319), FREE COUNTRY (738389), FREE SPIRIT (743884) and FREEZONE (761830).  Each of these six registrations is in the name of different owners.   It is well settled case law that, where an element is found to be in common use in trade marks, for the purpose of considering deceptive similarity, its presence should be given less weight than the other particulars contained in the mark, because the potential buyers will tend to be more discerning when selecting the goods bearing such marks.

I also take Ms Baird's point that the meanings conveyed by the well-recognized, ordinary word FREE solus are rather expansive and general.   When conjoined with a noun, on the other hand, where it qualifies that noun, the meaning becomes more specific, as it would in the term FREE WOMAN in the applicant's mark.  The meaning conveyed by the words THINK FREE, expressing what could be interpreted as a command or a slogan, is even further removed from the idea of, I suggest, an "independent" or "liberated" woman in the words FREE WOMAN.   I believe the styles in which the leaf devices are depicted in the respective marks, which I have attempted to describe earlier, are sufficiently different so as to avoid any misconception that there might be a connection between the applicant and the opponent.                   

Ms Baird has stressed the importance of the particular manner in which articles of clothing are generally selected for purchase with reference to the words of Burchett J in Conde Nast v Taylor, supra, at 510-511:

… in a case, such as the present, where the goods sold under a trade mark are goods likely to be subjected to a careful visual examination by any intending purchaser, or even by any person whose interest in them is at all aroused.  The appearance of ladies' clothing and men's casual wear is very important.  Consumers will not purchase these items over the telephone, or otherwise by a spoken reference to the mark, but will examine them and very often try them on in boutiques or shops.  Recognition of the mark will be visual.  Thus "the circumstances in which the goods will be bought and sold, and the character of the probable purchasers of the goods", mentioned by Kitto J, are factors which, in the present case, place particular emphasis on the appearance of the opposed mark, and the great difference between its impression of ornateness and the simplicity of the applicant's mark and title.  The importance of observing the impact that appearance may make is emphasised by the case Kitto J cites in the quoted passage: Jafferjee v Scarlett (1937) 57 CLR 115. There, Latham CJ (at 120-1) and Dixon J (at 126) make it clear that the appearance of the mark, as it would be seen in the ordinary course of trade, is an important matter - Dixon J describes it as "the most important" of the two considerations influencing his decision. See also Johnson & Johnson v Kalnin at 439, and the case there cited, Mars GB Ltd v Cadbury Ltd [1987] RPC 387 at 395.

I believe, his Honour's observations are equally relevant as far as they concern the present situation, where the goods would be inspected with some attention to detail and even tried on by the interested buyer, thus minimising any likelihood of deception or confusion of the marks.  Here again, I concur with Ms Baird's views.

Taking into account the above discussed factors and the lack of evidence to the contrary, I am not satisfied of a reasonable likelihood of deception and confusion between the opponent's marks of registrations 769056 and 768502 and the applicant's mark, if all the three marks are used in a normal and fair manner in respect of the nominated goods - see the test in this regard in  Smith Hayden & Co's Appn (1946) 63 RPC 97 at 101, and its modified version in Registrar v Woolworths, supra. Hence, in my estimation, the opposed mark does not offend against the provisions of s.44, and the opposition in relation to that section is not established.

S.60 - a mark similar to one that has acquired a reputation in Australia
Having made comments on the opponent's evidence concerning use of  the marks in Australia, which are identified in the evidence, Ms Baird said the opponent had failed to establish any use of, or reputation in either of its marks in Australia at the relevant date.

Section 60 of the Act provides that:

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

(a)it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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 1:For deceptively similar see section 10.

Note 2:For priority date see section 12.

Having found earlier, in relation to the s.44 ground, that the marks under consideration are neither substantially identical nor deceptively similar, I am not obliged to take the matter further by evaluating the opponent's evidence for reputation in the marks. However, for the sake of completeness, I will consider any reputation that the marks might have accumulated in Australia before the date of the subject application, which is the relevant date in terms of s.60.

According to Mr Zberro's statements in his declaration, use of the 'FREE and logo' and 'THINK FREE and logo' marks commenced in September 1995 and March 1998, respectively.  These dates do not appear to indicate first use in Australia, however, as the declarant explicitly states that the 'FREE and logo' mark has been used here since at least 1996 in relation to clothing.  No mention in this regard is made of the 'THINK FREE and logo' mark.  The declarant is silent on the extent and duration of the sales under the 'FREE and logo' mark and any amounts that would have been expended on advertising the mark in Australia.  Three copies of invoices in French, addressed to an opponent's distributor in Australia and bearing dates in April 1996, are purported to demonstrate use of the mark.  In the absence of an English translation of their contents as well as a confirmation from the distributor that the invoices relating to the relevant mark were received by it, only minimal weight can be given to this type of evidence.  A similar observation applies to the exhibits on the promotional material, which is also in the French language and, apparently, was supplied only to the opponent's distributor.  As the evidence does not extend to any use of the mark 'THINK FREE and logo' in Australia, it can only be assumed that no such use has occurred, at least as at the time of preparing Mr Zberro's declaration.  

It will be obvious that the opponent's filed evidence reflecting the situation of the marks on the Australian market is far too vague for drawing a conclusion as to any exposure of the opponent's marks in relation to clothing, or any other class 25 goods. This material is insufficient for met to draw the conclusion that the opponent has established a reputation in the marks in Australia at 4 August 1998. Accordingly, I dismiss the opposition as far as it relates to the s.60 ground.

S.41 - capacity to distinguish
In relation to the ground based on s.41, Ms Baird said that much of what she had submitted in relation to deceptive similarity also applied here, i.e. the applicant's mark taken as a whole had a capacity to distinguish. The criteria in ascertaining whether a mark was inherently adapted to distinguish, expressed by Kitto J in Clark Equipment Co v Registrar of Trade  Marks (1964) 111 CLR 511 at 514 was still apposite, she said. The principle that, if parts of a mark had some common usage did not mean that the whole mark lacked any inherent adaptability to distinguish had been established long ago in the Diamond T Motor Car Co's Appn case, 38 RPC 373. There was no reason why the idea created in the mark by the applicant would be something that other traders would wish to use in their ordinary signification in relation to clothing, Ms Baird submitted. At the very highest, the applicant's mark could have an emotive resonance, but nothing in particular with respect to clothing. The mark was not apt for normal description, Ms Baird asserted, and it did not even approach the allusive meaning of the TUB HAPPY mark considered in Mark Foys Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190, at 194. Further, a mark did not need to be absolutely unsuggestive of qualities of certain of the goods for which registration was sought; however, that was not to make the mark apt for normal description - Burroughs Wellcome & Co's Trade Mark (1904) 21 RPC 217 at 226; also J & P Coats Ltd's Appn (1936) 53 RPC 355.

In terms of s.41(2) -

41.(2)    An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons. 
Note:  For goods of a person and services of a person see section 6.

I am in total agreement with Ms Baird's submissions on this matter. The word FREE, as I observed in relation to s.44, is an element other traders have adopted in devising their trade marks, whereas the word WOMAN in respect of clothing is purely descriptive. The combination of the two words, however, creates a certain, meaningful idea which, while suggesting that the clothing may be suitable for women, does not state anything about the goods themselves, and, in my opinion, are not words which other traders might desire to use in respect of the same or similar goods. If they did so, their motives would be suspect - Clark Equipment v Registrar, supra.   Even if the words did describe the goods (which I do not accept), a combination of the various components comprising the mark: the cursive script of the words, the addition of the prominent decorative feature - the leaf device - together with the contrasting dark background behind the leaf and the words, renders the mark "capable of distinguishing" in line with the principles expounded in Diamond T case, supra. 

In view of the foregoing, I find the opposition in relation to s.41 ground to be unsuccessful.

S.58 - ownership
With reference to Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 491, Ms Baird reminded me that the making of, and the application itself, was prima facie evidence of an intention to use the mark. She also pointed out that the applicant's mark was not the same as either of the opponent's marks; it differed in material respects from the opponent's marks, Ms Baird said, citing in support Shell v Rohm Haas (1949) 78 CLR 601 at 625, 627 and Kendall Co v Mulsyn Paint & Chemicals (1963) 120 ALR 495 at 513.

In terms of s.58 -

58.  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.

For the opponent to upset the applicant's claim to ownership, the opponent would need to establish that the mark upon which it relies in respect of the ownership rights, is substantially identical with the mark the subject of the application for registration - Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) AIPC 91-049. Additionally, the goods or services involved must be the 'same kind of thing' - Re Hicks' Trade Mark (1897) 22 VLR 636 at 640 - and the use of the mark must pre-date the applicant's claim to ownership. An applicant could claim its ownership rights based on the date of its application, or the first use of the mark, whichever was the earlier date.

In considering the question of s.44, I determined that the applicant's mark is not substantially identical with either of the opponent's marks of registrations 768502 and 769056.

It follows that the opponent has failed in its challenge in terms of s.58 of the Act.     

S.42 - contrary to law
This section provides that -

42.  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.

The opponent has not filed any evidence to substantiate this ground, and I find no reason why the present application would contravene the provisions of s.42.

The opposition based on s.42 is therefore not justified.

S.43 - trade mark likely to deceive or cause confusion
Commenting that the applicant had some difficulty in understanding what section of the Act was encompassed in the second ground in the notice of opposition expressed simply as:

The use of the opposed trade mark would be likely to deceive or cause confusion,

Ms Baird said the wording had been interpreted by the applicant to relate to s.43.  In this regard, she submitted that 'connotation' referred to that which was implied within the trade mark itself as a secondary implied or associated meaning, referring to Down to Earth (Victoria) Co-Operative Society Ltd v Schmidt (1998) 41 IPR 632, and that there was no evidence from the opponent to reveal such a connotation.

S.43 states that:

43.  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.

Having assessed the applicant's mark and in the absence of any evidence to the contrary, I find no connotation in the applicant's mark within the meaning of s.43.  Accordingly, the opposition in relation to this grounds must fail.

Conclusions
In view of the foregoing, the opposition in these proceedings has been unsuccessful on all of the grounds upon which it has relied.  I therefore dismiss the opposition.

Costs
The applicant has sought costs in the matter.  The applicant having been successful is entitled to costs.  I therefore direct that the opponent pay the applicant's costs.

Vija Zars
Hearing Officer

15 June 2000