Gap (ITM) Inc v General Pants Co Pty Ltd

[2004] ATMO 12

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Gap (ITM) Inc to registration of trade mark application 804301(35) - GP - filed in the name of General Pants Co Pty Ltd.

Date of Decision:	27 February 2004
Delegate:	Jock McDonagh
Representation:	Opponent: Ms Julia Baird instructed by Davies Collison Cave Applicant: No appearance
Decision:	Section 52 opposition. Grounds of opposition under ss 41, 42, 44, 60 and 62. Grounds under ss 41made out., ss 42, 44, 60 and 62 grounds not made out - opposition successful - application refused - costs awarded against applicant

Background

1. The applicant General Pants Co Pty Ltd filed trade mark application number 804301 on 19 August 1999.  The application was in respect of Class 35 retailing of clothing, footwear and headgear for the following word mark:

   GP

2. Acceptance of the application was advertised in the Official Journal of Trade Marks on 28 March 2002.

3. The opponent, Gap (ITM) Inc, filed notice of opposition on 27 June 2002 pursuant to the Trade Marks Act 1995 (“the Act”), citing 12 grounds of opposition.  The opponent subsequently filed and served evidence in support of the opposition, which comprises the declarations of:

   ·     Siobhan Ryan, made 23 December 2002 and exhibits SR-1 to SR-5

   ·     Julie Gruber, made 13 May 2003 and exhibits JG-1 to JG-28

4. On 15 August 2003 the applicant filed notice stating that it did not intend to rely on evidence in answer.

5. The matter duly came before me, as a delegate of the Registrar, for hearing in Canberra on 12 November 2003.  Ms Julia Baird of counsel, instructed by Davies Collison Cave Patent and Trade Mark Attorneys, appeared for the opponent.  The applicant was not represented at the hearing and did not file written submissions for consideration.

   Evidence

6. In her declaration, Siobhan Ryan, solicitor and trade mark attorney for the opponent, exhibits trade mark registrations owned by the opponent, the Trade Mark Office examination file in respect of the opposed mark, and status reports for the applicant’s registrations 741616 and 778580.

7. The opponent’s marks relied upon were for the letters and word gap as follows:

TM No.	Date	Class	Goods/Services
317897	04.05.1978	25	men's and boys' clothing
318463 (‘gap’ fancy)	23.05.1978	25	all goods in this class including clothing and in particular pants, jeans, gauchos, skirts, vests, jackets, overalls, jumpers, dresses, jumpsuits, sweaters, t-shirts, belts, hats, suspenders in this class, shorts, ponchos and halter tops
559429	11.07.1991	18	tote bags, duffle bags, backpacks, handbags, bike bags and all other goods in this class
559430	11.07.1991	42	retailing services in relation to clothing and clothing accessories
559431	11.07.91	25	shirts, t-shirts, sweaters, vests, pants, shorts, skirts, dresses, jackets, belts, hats, swimsuits, socks, scarves, shoes, neckties, gloves, underwear, headbands and all other goods in this class
610607 (GAP fancy)	02.09.93	9	Optical frames, sunglass frames & sunglasses, with associated support materials in this class, cases for optical goods and all other optical goods in this class
673396	19.05.1993	42	wholesale, retail and direct marketing services in relation to clothing, footwear and accessories

1. Ms Ryan notes deficiencies in the search strategy used in examination of 804301, deficiencies in the evidence and submissions provided by the applicant’s trade mark attorneys in response to an objection raised by the first examiner under s41 of the Act.

2. In her declaration, Julie Gruber, Vice President and Associate General Counsel for the opponent, details the history of the gap logo and trade marks, both overseas and in Australia, since 1988.

   Grounds of Opposition

3. Although the notice of opposition specified 12 grounds of opposition, five were argued at the hearing; namely those under ss41, 42, 44, 60 and 62.

4. Counsel for the opponent made a number of preliminary submissions relating to presumptions, onus and inferences from failure to appear:

   · The presumption of registrability, did not provide warrant to import into the plain words of ss33 and 55 of the Act any higher presumption of registrability.

   ·     In the present opposition, the applicant has declined to lodge any evidence in answer and has stated that it does not intend to appear at this hearing and will not be relying on any written or oral submissions: letter to the opponent dated 16 October 2003.

   ·     The opponent, by its evidence, has identified serious defects and omissions in the applicant's evidence in the examination phase of the application for the Mark.  The onus has shifted to the applicant to respond to, explain or remedy those identified defects and omissions.  The applicant has not discharged that onus.  The clear inference must be that the applicant cannot improve on its evidence, nor substantiate any of the assertions in its evidence which are not supported by objective documentary evidence (e.g. advertising, sales figures, dates, locations and advertising schedules, advertising scripts, locations of cinemas, broadcasting reach of radio and television stations, continuity of usage in window displays).

   ·     The applicant has taken the deliberate and considered decision not to appear at this hearing of the opposition in circumstances where it is, and at all times has been, represented by experienced trade mark attorneys.  The applicant having taken this decision, it is not for the Hearing Officer to act de facto on behalf of the applicant and assume or argue positions or inferences favourable to the Applicant.

5. While it is up to the opponent to satisfy me that grounds for opposition are established, it is true that I can draw inferences from the failure of the applicant to adduce evidence when it has been given the opportunity to do so.  I also accept, of course, that it is not part of my duty to act as advocate for an unrepresented party.

   Ground 1 - s41 Trade mark not capable of distinguishing

6. Subsection 41(2) of the Act provides that 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 from those of other traders. Subsection 41(3) provides that in deciding the question, the Registrar must first consider the extent to which the trade mark is inherently adapted to distinguish. If the Registrar finds the trade mark is to no extent inherently adapted to distinguish, then it is to be considered under the provisions of subsection 41(6). If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish, but it is not capable of distinguishing on that basis alone, then it is to be considered under the provisions of subsection 41(5). If, after consideration under the provisions of subsections 41(5) or 41(6), the Registrar is still not satisfied the trade mark is capable of distinguishing, or does in fact distinguish, then the application must be rejected.

7. In determining whether or not a trade mark may be regarded as being adapted to distinguish, Kitto J, in Clark Equipment Co v Registrar of Trade Marks, (1964) 111 CLR 511) said:

   That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it.  The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing the goods from the goods of others.

   and in Registrar of Trade Marks v W. & G. Du Cros Ltd, (1913) 30 RPC 660, Lord Parker of Waddington, said in relation to whether or not a proposed trade mark is adapted to distinguish:

   The applicant's chance of success in this respect must, I think, largely depend upon whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods.

8. The Mark comprises two initials in simple typeface and is sought to be registered in respect of a very broad and common, or popular, class of services, namely ‘retailing of clothing, footwear and headgear’.

9. As was the case in the seminal decision of W. & G. du Cros, there is a general tendency by persons to use letters or initials in the course of their trading activities, including use in relation to goods or services: see also Effem Foods Pty Limited v Marks & Spencer Plc (1999) 47 IPR 213 at 220. This is particularly so where the letters are represented in plain type. There is thus the likelihood that other traders in the ordinary course of business and without any improper motive, will desire to use the Mark within the terms identified in Clark Equipment.

10. In relation to the services of the specification, the Mark does not represent itself as a word, but simply as two initials or letters.  There is no meaning which usurps the ordinary representation of the Mark as two letters: see discussion in I.Q. Trade Mark [1993] RPC 379 at 382‑383.

11. It follows that the Mark is not inherently adapted to distinguish within s41(3) and that the Registrar must apply the regime of s41(5).

12. Once the enquiry embarks upon the course chartered by s41(5), it is crucial to assess the use or intended use of the Mark, bearing in mind that by such use it must be established that the trade mark does or will distinguish the designated services as being those of the applicant, thereby derogating from the ability of other traders to use those letters in their own trade.

13. As noted above, the applicant has not lodged any evidence in this opposition.  To the extent that it may be inferred that the applicant seeks to rely on the evidence it filed during examination (and the applicant has not indicated in this opposition that it does so intend to rely), that evidence reveals:

    (a)a few intermittent uses of the initials 'G' and 'P' decoratively in window displays in one or two boutiques in George Street, Sydney, in the period 1973 - 1978;

    (b)no visible use of the Mark as a trade mark indicating the origin of services - the photographs of the window displays reveal that the Applicant's name 'General Pants' and that of its stores is very prominent as shop signage above the shop window;

    (c)alleged uses of slogans in radio, cinema and television advertising are unsubstantiated and stated without context.  The evidence can be afforded little weight and is of little, if any, probative value;

    (d)there is no evidence of any use of the Mark, whether as a trade mark or otherwise, in the period 1978 - 1998.  It is a reasonable inference that the Mark was unused;

    (e)as to recent uses, the 1998 summer and Christmas catalogues were launched less than a year before the application date and the few uses of the Mark in the catalogues are either in very close conjunction with the house mark 'General Pants Co', or as part of a phrase such as “GPsummer98” or “GPxmas98”.  The t-shirt use is as part of the phrase ‘GP crew’;

    (f)uses on the website cannot be identified as uses in existence before the Application Date.  Further, no such uses are in evidence.

14. The Summer 1998 and Christmas 1998 catalogues show that the applicant uses the Mark in close and reinforcing proximity to its house mark.  This makes it extremely difficult for the applicant to establish that the Mark is capable of functioning as a trade mark.  The uses on the catalogues do not readily translate into a badge of origin for retailing services.

15. The evidence does not establish that the initials 'GP' by the application date had acquired a discernable connection with the applicant.  I am not satisfied that consumers do or will recognise the initials 'GP' as the applicant's trade mark in respect of retailing services of the specification. 

16. Once an objection has been validly raised in terms of sub-s41(5), the onus is on the applicant to establish that the trade mark does or will distinguish the goods or services. While the evidence might have supported acceptance in light of sub-s33(1), it does not survive the rigours of a contested opposition in terms of s55: see Registrar of Trade Marks v Woolworths Limited (1999); 45 IPR 411, at 423.

17. I am satisfied that this ground of opposition has been established.

    Ground 2 - s44, Deceptive Similarity

18. To establish the s44 ground, the opponent must establish all of the following:

    ·     At the priority date

    ·     there was a substantially identical or deceptively similar trade mark application or registration

    ·     in respect of similar goods or closely related services

    ·     in the name of a person other than the applicant.

19. The test to be applied under s44 may be expressed as follows:

    'assuming use by the owner of the cited mark in a normal and fair manner of their mark in respect of any of the goods or services covered by the registration, is the Registrar satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of goods covered by the proposed registration.'

    Re Smith Hayden & Co’s Application (1946) 63 RPC 97, 101; Johnson & Johnson v Kalnin (1993) 26 IPR 435, 438, but subject to the caveat in Woolworths at 426.

20. In other words, the correct test of comparison under s44 is to compare the statutory rights of use of each mark conferred by registration or sought to be conferred pursuant to an application for registration (that is, the use to which a registered owner properly can put the mark within the ambit of the registration) rather than the actual modes of use of the marks.

21. The test to determine whether trade marks are 'deceptively similar' is set out in Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited (1961) 109 CLR 407 at 415:

    'The marks are not now to be looked at side by side [as for substantial identity].  The issue is not abstract similarity, but deceptive similarity … the comparison … 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 impression that such persons would get from the defendant's [trade mark]'

    The Court added at 416, that:

    '[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.'

22. The criteria for deceptive similarity have been set out in Australian Woollen Mills Limited v F S Walton & Co Limited (1937) 58 CLR 641 at 658 and by Parker J in Pianotist Co's Application (1906) 23 RPC 774 at 778 and reiterated in Registrar of Trade Marks v Woolworths Limited, supra.  The application of the criteria requires a practical assessment of the visual impression of the marks and the circumstances surrounding the way in which the Mark can be used in comparison to the opponent’s Marks within the compass of their respective registrations.

23. The Mark is sought to be registered in simple type.  On registration rights in the Mark will encompass uses in all other fonts: Morny Ltd's Trade Marks (1951) 68 RPC 51; (1951) 68 RPC 131; and with additions or alterations that do not substantially affect its identity. It was submitted that such uses may include elongation of the letters of the Mark to mimic the 'GAP' logo (see e.g. trade mark 610607 in class 9) and separation of the initials of the Mark so as to suggest a 'gap' between the 'G' and the 'P.' However, consideration of such usage would be outside the stricture of the “fair and normal manner” test in Smith Hayden.

24. Each mark must be considered as a whole and the appearance and idea of each mark considered.  The commercial reality today is that clothing, footwear and headgear and other personal items such as bags and sunglasses, the subject of the opponent's class 9, 18 and 25 registrations, are goods likely to be sold in boutiques and department stores, which provide the services of the specification of the Mark.  Further, the retailing services of the class 42 registrations of the opponent's Marks are the same services as encompassed by the specification.  The trade channels of goods/services of each of the marks will be very similar, indeed, possibly the same.

25. The visual impact of a trade mark can be more relevant than its oral impact when used in relation to clothing, as it is seldom the case that clothing is purchased over the counter or otherwise orally, rather than upon a visual inspection, including of the label. Excepting designer clothing, much clothing is not purchased with any special care: Fashion Box International SA v Tamarind International Limited [1999] ATMO 60 (17 June 1999) - (Relay and Replay). In these circumstances, the visual appearance of the Mark will be of considerable importance.

26. Both the mark and the opponent's Marks are short, simple grouping of letters with a common first letter.  However, gp has no immediately ascribable meaning as a word whereas gap does.  Even with imperfect recollection, the marks are likely to be remembered and recalled in different ways.

27. I am not satisfied that the Mark is deceptively similar. This ground of opposition under s44 has not been made out and I dismiss it.

    Ground 3 - s42: The use of the Mark would be contrary to law

28. Following Advantage-Rent-a-Car Inc v Advantage Car Rental Pty Limited [2001] FCA 683; (2001) 52 IPR 24, the Registrar must determine the issue whether the use of a trade mark would be contrary to law, notwithstanding that the particular law is a law other than the Act.

29. The opponent submitted that the use of the Mark by the applicant would be a contravention of s52 of the Trade Practices Act 1974 ('TPA'), namely, that the use of the Mark by the applicant in trade or commerce in respect of services within the Specification would be conduct that was misleading or deceptive or likely to mislead or deceive, as suggesting some association with the opponent or its goods and services.

30. In Equity Access Pty Limited v Westpac Banking Corporation (1989) 16 IPR 431 at 440-442, Hill J formulated a number of propositions as relevant to a determination of whether a contravention of s52 was made out in a name/getup type case, which may be summarised as follows:

    (a)for conduct to be misleading or deceptive it must convey in all the circumstances of the case a misrepresentation;

    (b)there will be no contravention of s52 unless the error or misconception results or would be likely to result from the conduct of the corporation and not from other circumstances for which the corporation is not responsible;

    (c)conduct will be likely to mislead or deceive if there is a ‘real or not remote chance or possibility’ of misleading or deception, regardless of whether it is more or less than 50%;

    (d)conduct causing mere confusion or uncertainty in the minds of the public, in the sense that there may be cause to wonder whether two products or services have come from the same source, is not necessarily co-extensive with misleading or deceptive conduct.  The court must consider whether a reasonably significant number of potential purchasers would be likely to be misled or deceived.  However, it is not necessary to show that all or substantially all persons in the market associate the name with the applicant/plaintiff’s goods/services, if it can be shown that if a substantial proportion of persons who are probable purchasers of the goods/services of the kind in question do so;

    (e)the applicant/plaintiff must establish that it has acquired the relevant reputation in the name, that is to say that the name has become distinctive of the applicant’s business or goods in a particular country or geographical area (the area may be local or Australia wide);

    (f)s52 is not confined to conduct which is intended to mislead or deceive, and a corporation that acts honestly and reasonably may nonetheless engage in conduct that is likely to mislead or deceive:

1. See also S&I Publishing Pty Limited v Australian Surf Lifesaver Pty Limited (1998) 168 ALR 396 at 402 - 403 where the principles have been restated by the Full Court of the Federal Court.

2. The misrepresentation need only be likely to mislead.  There is no requirement that actual deception be proven: Sydney Wide Distributors Pty Limited v Red Bull Australia Pty Limited (2002) 55 IPR 354 at [62].

3. The opponent submitted that it is a contravention of s52 if a misrepresentation is conveyed by the use of the Mark that there is an association of some kind between the supplier of the retail services of clothing, headgear and footwear in respect of which the Mark is used and GAP clothing, GAP stores or the opponent; that the retail services supplied under or by reference to the Mark were in 'some way' promoted or associated with the opponent or provided with the opponent's consent or approval, when in fact they are not: see Mark Foys Pty Limited v TVSN (Pacific) Limited (2000) 49 IPR 303 at [40], [57] and [59].

4. While I am satisfied that the use of the applicant’s Mark could be conduct that was misleading or deceptive or likely to mislead or deceive, I am not so satisfied that it would be so.  Therefore, I dismiss this ground of opposition.

   Ground 4 - s60: Prior reputation

5. To satisfy section 60, the opponent has the burden of establishing the following elements:

   ¨   a pre-existing trade mark;

   ¨   substantial identity or deceptive similarity between the applied for trade mark and the pre-existing trade mark;

   ¨   the acquisition of a reputation in Australia by the pre-existing trade mark; and

   ¨   a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

6. The opponent relied on the registrations tabled in paragraph 7, above.  I have already determined that the applicant’s trade mark is not deceptively similar to these marks.

7. This ground of opposition under s60 has not been made out and I dismiss it.

   Ground 5 - s62: The Application is defective

8. The Mark was accepted on the application of s41(5) and s44(4) of the Act. During examination the applicant provided evidence of use of the Mark seeking to overcome the objection that the Mark was not capable of distinguishing within s41. I have already discussed this evidence above.

9. The opponent submitted that it follows from the evidence before the Office during Examination that the Registrar accepted the application on the basis of evidence or representations that were false in material particulars, namely as to the claimed extent of use of the Mark and continuity of that use by the Applicant in respect of the services of the Specification and as to the existence of a family of marks.

10. The opponent submitted that ‘A representation may, under the general law, be held false because though it positively asserts a literally true proposition, it fails to say something which, if stated, would alter the meaning of the representation’:  JD Heydon, Trade Practices Law, Law Book Company Ltd, Vol 1, para 11.600.  The opponent submitted that applicant was at all times in a position to ‘say something which, if stated’ would have altered the nature of the representation upon which the Office acted in accepting the application.

11. The opponent submitted that where an applicant is represented at all times by experienced trade mark attorneys, it is incumbent upon the applicant through its attorneys to be precise, detailed and fair in the presentation of the material sought to persuade the Office, to substantiate with objectively verifiable evidence the assertions made and not to induce reliance on broad generalisations, half truths and misstatements.

12. Counsel for the opponent stated that the elisions and omissions of the statutory declarations were given a ‘spin’ that did not fairly represent the state of the evidence. 

13. It was submitted that the present is a situation analogous with the circumstances of Lee v Korean Air Lines Co, Ltd (2000) AIPC 91-557 and Opposition by Shawky & Yehia El Hgar to trade mark application 787068 in the name of Sam Ashry - Mr El Omda and Device ATMO 21 November 2002 (T Williams). 

14. It would be fair to say that all legal representatives put a “positive spin” or “gloss” on their clients’ evidence, and that there is a fine line between this and false representations.  I am conscious that one should not lightly make a finding that the line has been crossed.  This is particularly the case where the applicant has not made submissions on the issue.

15. I am not comfortably satisfied that this ground has been made out, and I dismiss it.

    Decision

16. The opposition has been successful and I refuse to register trade mark application number 804301.

    Costs

17. The opponent has sought its costs in this matter. As the opponent has been successful in its opposition, I award costs against the applicant and direct that the applicant pay the costs of the opponent in accordance with the official scale.

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    27 February 2004