G-Star International Ltd v Just Jeans Pty Ltd

[2005] ATMO 61

TRADE MARKS ACT 1995

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

Re:Opposition by G-Star International Ltd to registration of trade mark application 912434(25) - B STAR - filed in the name of Just Jeans Pty Ltd.

Delegate:

Terry Williams

Representation:

Opponent:  Deborah Jackson, solicitor, Spruson & Ferguson, patent attorneys

Applicant: Colin Oberin, patent attorney, Allens Arthur Robinson, patent attorneys

Decision:

S.52 opposition: B STAR not deceptively similar to G-STAR - S 44 and 60 grounds accordingly fail, registration proceeding

Background

1. Just Jeans Pty Ltd has applied to register trade mark number 912434, the trade mark B STAR in respect of clothing, footwear and headgear.

2. The application, having been examined, was accepted by the Trade Marks Office for possible registration.  However, G-Star International Limited, (G-Star) the owner of a range of G-STAR trade marks, has opposed registration.  The subsequent opposition followed the process set out in Part 5 of the Trade Mark Regulations and ultimately I was assigned to hear the parties and decide the opposition.  As matters have turned out, very little of the evidence bears on the single issue by which this opposition is able to be decided and I will not review the evidence in detail except where necessary.  What follows are the reasons for my decision.

3. At the hearing, the applicant was represented by Colin Oberin of Allens Arthur Robinson, patent and trade mark attorneys.  G-Star was represented by Deborah Jackson of Spruson and Ferguson, also patent and trade mark attorneys. 

Single issue: deceptive similarity

1. Ms Jackson indicated that G-Star would rely only on sections 44 and 60.  These share a common hinge, the issue of deceptive similarity.  That issue is dealt with by s 10:

   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.

2. For section 44 purposes, the opponent relies on trade mark registrations that either comprise or include the trade mark G-STAR.  The details of the registrations in question are not critical for this purpose but let it be briefly said that the necessary elements of s 44, save for deceptive similarity, are all established by the existence of registration 722849.

3. Ms Jackson stressed, in her submissions, the phonetic similarity of the utterances of “G-star” and “B-star”.  There was also, she said, an obvious visual similarity.  This applied both to the marks in ordinary font and to the forms used by the parties.  However, I find this latter argument unconvincing.  The trade marks in question resemble each other because they end in “star” and start with a single letter of the alphabet.  However, I would have to say that the degree of visual similarity that ensues is but slight.  If this opposition is to be established, it will need more, and the “more” could only be the aural and conceptual similarities to which Ms Jackson pointed.

4. Ms Jackson noted the importance of the aural element particularly where the first elements were very close or identical.  She also noted the examples of A-MART and K-MART, found to be deceptively similar[1].

   [1] K Mart Corporation v A-Mart Allsports Pty Ltd, (1991) 23 IPR 161

5. Ms Jackson stressed that, in the present case, the letters B and G were given no work to do.  Such identity as they had within the trade marks was simply as appendages to the element STAR.  Both were single and isolated letters, with no context in themselves, that simply “hung off” star, to create trade marks that, while capable of distinguishing were also deceptively similar.  They were, moreover, letters of a similar sound.  Here she relied on Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658:

   An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark…for which the protection…is sought.  The impression or recollection which is carried away and retained is necessarily the basis for any mistaken belief that the challenged mark…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, then similarities both of sound and of meaning may play an important part.

6. This she fortified with reference to the conflict found between CRAZY JOHN’S and CRAZY RON’S[2]. The Full Court of the Federal Court observed that “the question of deceptive similarity involves factual issues in respect of which similarities of sound may be important…” (at par 75) and that the primary judge was entitled to take into account “the similarities in pronunciation of the expressions CRAZY JOHN’S and CRAZY RON’S and the difficulty in discerning the differences between the two when said quickly or loudly or in a cluttered or noisy environment” (at par 107).  She noted the primary judge’s decision, and that he had regard to the overall impression conveyed by each mark: 

   Even if this evidence [of actual confusion] had not been led I would have concluded that the use of CRAZY RON’S and CRAZY RON would in all the circumstances be likely to create in the minds of a not insignificant number of people a significant degree of confusion about which trade source was connected with what they were hearing or seeing – CRAZY JOHN or CRAZY RON…”

   [2] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd, [2004] FCAFC 196

7. Ms Jackson also noted that the examiner of trade marks had seen fit to extract the record of the opponent’s trade mark, showing that there was clear relevance in her argument.

8. She noted that in Chantelle v Kabushiki Kaisha Chandeal ATMO 3 December 1996 Deputy Registrar Hardie observed that “[m]any clothing items…are not purchased with the special care unless they are specialist or luxury garments…”.  In that case the verbal similarities between the respective marks (CHANTELLE and CHANDEAL) and the wide cross-section of the purchasing public who would buy clothing led Deputy Registrar Hardie to conclude that there is likely to be confusion “through an imperfect recollection of general encounters with the CHANTELLE trade mark…”

9. Ms Jackson argued that customers knowing of G-STAR and taking an “impressionistic” view of B-STAR would be misled, or at least confused. 

10. Ms Jackson reminded me that I approved of the comment in Chantelle, supra, when deciding Fashion Box International SA v Tamarind International Limited ATMO 17 June 1999:

    I am not convinced that Mr Callinan’s argument about the sounds of these marks (REPLAY and RELAY) will prove to be correct with sufficient regularity to preclude confusion.  Words are not always precisely articulated…

11. Again, she noted that Deputy Registrar Hardie had said, in Hugo Boss AG v World One Co Ltd ATMO 14 August 2000:

    [i]t is common knowledge that trade marks for clothing operate, in the main, in shopping centres, noisy or otherwise” and “[o]rdinary people, in the circumstances of purchasing clothes, will frequently be conducting their purchases against considerable background noise, and in those circumstances there appears to be real prospect that BOSS will be heard for WOSS: and conversely that WOSS will be heard for BOSS…In the normal course of business in the way of clothing…there are many situations where items are bought with very little forethought or caution.  The habits of ordinary people, in conducting purchases in such a setting, are relevant and in that context, I conclude that spoken use of the trade mark WOSS in relation to the application goods is, in respect of the trade mark BOSS, likely to lead to confusion.”

12. Mr Oberin, for his part, noted that there were many “star” marks on the register’ in particular SEA-STAR.  He also noted that G-STAR and B STAR coexisted in class 35 and that in New Zealand the comparable opposition in class 25 had failed.

13. Ms Jackson, however, maintained that the evidence going to the state of the register was not the full story.  I understand it showed that in class 25 nothing closer to G-STAR than SEA STAR and had been allowed to coexist[3].  She conceded that there had been no confusion in practice, but this was largely because the applicant – for the moment – chose to sell goods under its trade marks only through its own shops, at which the goods of third parties – such as the opponent - were no longer sold.  This would tend to mitigate the ordinary potential for confusion but she reminded me that I am to consider all the options that would be open to the applicant if it obtains registration.  She asserted that the co-existence of these trade marks in class 35 was irrelevant.

    [3] I take this to be a concession by Ms Jackson that the present state of affairs was due to actions taken by the opponent, not by the Registrar of Trade Marks in the course of examination.

14. Ms Jackson referred to the evidence of Peter Thirkell, Professor of Marketing at the Victoria University of Wellington and Head of the School of Marketing and International Business.  Professor Thirkell sets out his qualifications, which are impressive.  Essentially, however, he sets out at length arguments consistent with those that Ms Jackson articulated at the hearing, with more emphasis on the risk of “gestalt”, or shortcut, perception of both trade marks[4]. 

    [4] To judge from the decision in the New Zealand matter, Professor Thirkell’s evidence here is similar to that which proved unsuccessful there. 

15. The risk, he affirms, is that the ordinary consumer will have a less than perfect recollection of G-STAR.  This, he argues, will result in a gestalt recognition process, such that B-STAR will be wrongly recognised as being the desired trade mark.  Consumers wanting a particular and familiar trade mark, declares Professor Thirkell, will “simply glance at the brand name rather than make an in-depth and careful evaluation of the product for each and every purchase.”

16. Mr Oberin was very critical of this evidence, which he said should not and could not be a substitute for my own findings on the issue.  He argued that Professor Thirkell had not necessarily been fully briefed on one key fact.  This was that, in Australia, the applicant’s sales were, in the four years since B STAR was adopted, slightly higher per year than G-STAR’s.  In other words, both trade marks would be known quantities here in Australia.  He notes that Professor Thirkell has conceded that high involvement purchases – i.e. those where the goods were bought because of the brands they bore and the image and social recognition that attaches to them – would involve care and attention.  This, argues Mr Oberin, supports various findings in the Trade Marks Office that the look of a trade mark is of particular importance.  Mr Oberin referred to GAP (ITM) Inc v General Pants Co Pty Ltd ATMO 27 February 2004 for the proposition that, in the case of clothing, the visual impact of a trade mark can be more relevant than aural impact. 

17. Ms Jackson attempted to distinguish this decision on the basis that there was no contrary argument put to the delegate at the time.  Presumably, however, the hearing officer reached his conclusion in the face of submissions to the contrary by the opponent’s counsel.  Therefore, while I agree with Ms Jackson that the importance of the look of a trade mark cannot stand “unqualified” in light of, in particular Berlei, supra, I think it draws support from more recent authority such as the comments of Gummow J in Johnson and Johnson v Kalnin 26 IPR 435. In that case Justice Gummow first of all noted the English view, in Mars GB v Cadbury Ltd [1987] RPC 387:

    I have, of course, referred to those words of Parker J.[5] which deal with the need to consider not only the look of the marks but their sound.  However, in present day conditions, when all items of confectionery of this size   as is apparent from the evidence before me in this case   are sold packaged with the brand appearing clearly on the packaging, and when the goods are, for the most part, picked up by the customers, and on the goods as picked up the marks will be clearly visible, the question of sound is perhaps becoming of diminishing importance."

    I think it is a well known fact, and one of which I can take note, that retail outlets of the type referred to here operate on the principle that the customers select their purchases from display shelves with little or no intervention from sales staff, as one of the means whereby operational costs are reduced and product prices are kept as competitive as possible.

    [5] (in the PIANOTIST case, citation)

18. That principle seems to me to be equally applicable to clothing.  Justice Gummow continued:

    There is, I think, some force in this observation, but nevertheless, it must be kept in mind that, for example, both aural and visual presentation are combined in television advertising.

Justice Gummow went on, as Ms Jackson noted, to conclude that BAND-AID and BAND>>IT were deceptively similar.  However, as Mr Oberin noted, that was a case where the tail, not the beginning, was the only distinguishable element.

1. Ultimately, I am required to either form a conclusion broadly like that adopted in New Zealand in this matter, or to form a view consistent with the opinion of Professor Thirkell.  Ms Jackson urged that I take the latter course, arguing that the New Zealand view was “simplistic”.

2. I have come to the view that Professor Thirkell may well have failed to give proper weight to the extent to which trade marks for clothing are judged by their look, on the goods, at the time of purchase.  These are goods that are tried on or, if bought in sealed bags, as T-shirts may be, are almost always bought by self selection.  Clothing stores may, as Mr Oberin conceded, frequently be noisy or busy, but the former, in particular, will keep the consumer’s focus on the look of the mark, rather than its verbal elements.  In such a context, the key difference here is in the very first element of the mark.  This is not a case where the elements that differ are buried or obscured, unlike for instance Chantelle and Fashion Box, both supra. 

3. As to decisions like A-MART and K-MART, or indeed Hugo Boss AG v World One Co Ltd, I think some pause is called for.  As Mr Oberin argued, the former case was decided when MART, as an element in trade marks, was arguably less familiar to consumers than it appears to now be.  The latter decision, notoriously, was that BOSS and WOSS were deceptively similar when weight was put on the sound at the expense of the look of the mark.  I think perhaps the result was influenced by the authority of the expert evidence in that case but, here, I have chosen to give less weight to such evidence.  I am somewhat reassured that this leaves me in conformity with the view of the New Zealand hearing officer, J Walden, an Assistant Commissioner of Trade Marks, who concluded:

   Having considered the parties' submissions and evidence, my overall impression of G-STAR and B STAR (which I have also considered with a hyphen after the “B”) is that the marks look and sound different even though STAR comprises the second syllable or word.  I consider that it is significant that each mark has a different letter at the beginning of the mark and I consider that, taking into account imperfect recollection, an average consumer of clothing would be able to immediately differentiate between those letters, which are “G” and “B”, even if the consumer were in gestalt mode.  I consider, however, that when an average consumer purchases clothing that has esteem attaching to it as the G-STAR brand appears to have (a ‘high involvement’ purchase) the consumer is not likely to be in gestalt mode.

4. I note that the New Zealand decision might be seen as directing particular weight to the effect of consumers purchasing a known, high-involvement brand.  I think for my own part that it is not necessary to go this far.  It is sufficient to say that consumers probably tend to take clothing brands more seriously than those applied to soap powder or bags of sweets, and would be purchasing with due, though obviously not always with unduly high, attention to the look of the mark.  See also Taiwan Yamani v Giorgio Armani[6].

   [6] 17 IPR 92

5. Accordingly, the trade marks are not deceptively similar.  As a consequence, I find that no ground of opposition is established.

Conclusion

1. The trade mark application may 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.  I direct that the opponent pay the costs of the applicant up to the limit of the official scale.

Terry Williams

Hearing Officer

Trade Marks Hearings

31 October 2005