General Sportcraft Company v Sportscraft Consolidated Pty Ltd

[1993] ATMO 14

trade marks act 1955

decision of a delegate of the registrar of trade marks

Re:Opposition by SPORTSCRAFT CONSOLIDATED PTY LTD to Trade Mark Application No. 452371 in the name of GENERAL SPORTCRAFT COMPANY, LTD

Application number 452371 was lodged on 19 September 1986 in the name of GENERAL SPORTCRAFT COMPANY, LTD (the applicant).  The application was for the word SPORTCRAFT and was advertised accepted in the Official Journal of 7 September 1989 for the statement of goods subsequently amended to read:

Equipment sold as a unit for playing badminton; equipment sold as a unit for playing tethered ball games; equipment for playing street hockey - namely, goals, pucks, sticks, gloves; boomerangs; golf balls, golf clubs, golf bags, tees; equipment for playing quoits; equipment for playing indoor shuffle board, soccer balls, volleyballs and volleyball nets and poles for supporting nets, equipment for playing softball; pool and billiards balls, sticks, cues, chalk; equipment for playing horse shoes; baseball and softball bats, balls, gloves and bases; equipment for playing lacrosse; equipment for playing paddle tennis; equipment for playing bocce; equipment for playing floor hockey; equipment for playing platform tennis; equipment for playing paddleball; equipment for playing toss games; equipment for playing rugby; darts; dartboards; shuttlecocks; tennis racquets and balls; tennis nets; footballs; playground balls, and equipment for playing handball; fencing equipment, soccer playing equipment, kick balls and basketballs; equipment for playing table tennis, all of the aforesaid goods as are included in class 28.

Notice of opposition to the mark's registration was lodged on 25 October 1989 by SPORTSCRAFT CONSOLIDATED PTY LTD (the opponent).  The main grounds of the opposition, as stated in the notice and later expounded at the hearing, are based on s.40 of the Act regarding disputed claims of proprietorship, s.33 that the mark is substantially identical to, or deceptively similar to, the opponent's own marks, s.28 that the mark's use would lead to deception or confusion, and that the applicant had not discharged its onus to show that it was entitled to registration of its mark.

Service and lodgment of the opponent's and applicant's respective evidence was completed by 25 June 1992 and consists of:

Evidence in support

Statutory Declaration by Michael Hayes, with Exhibits A (including video cassette), B and C; Statutory Declarations by D.W.A.N.Jones; Terrence Luke McCartney; and Brian Edward Martin.

Evidence in answer

Affidavit of Kenneth J. Edelson, with Exhibit A; Affidavits of Richard Phlegar and Michael Sloane; and Statutory Declaration by Robert John Oliver, and Exhibit RJO.

Evidence in reply

Statutory declarations by Todd Trevaks, with Exhibits TT1,2 and 3; Paul Fitz; John Sainty; Richard Anthony Payn; G.E.Coles; and Peter John Anderson.

The opponent requested a hearing in the matter and the case was set down before me as the Registrar's delegate in Melbourne on 17 September 1992.  Representing the opponent was Mr Trevor Stevens of Davies Collison Cave, while appearing for the applicant was Mr Ian Scott of Watermark.

I have outlined previously the main points of opposition.  In the interests of efficiency, I will, in setting down my decision, refer to each of the objections in turn.

Section 40

Mr Stevens said that the opponent already had its own trade mark and reputation in the word SPORTSCRAFT for sportswear established since before 1970 - the earliest the applicant's use of the subject mark could have occurred.  He said that this reputation extended beyond clothing to sports accessories such as belts, bags and sports caps etc.  As far back as 1914, the opponent had sold items such as jodhpurs and pleated skirts which related to sporting pursuits.  He referred to Rolewa Rentals Pty Ltd v Champagne Moet et Chandon (1985) ¶AIPC 90-238 (the Dom Perignon case), where it was contemplated that respective goods - in that case, cigars and smokers' requisites - might simply be of "the same description" to support a claim for ownership of a mark.  He further referred, in this regard, to Magic Marker Corp v Shachihata Industrial Co Ltd (1986) ¶AIPC 93-217 (the Magic Marker case) for the marks LIQUID CRAYONS for stationery supplies, pigmented coating materials and paint, as opposed to LIQUID CRAYON for felt pens.  He said that, in that case, it was held that it was important to look from a commercial point of view as to whether goods were to be considered as goods of the same description and also whether the same word was used for the same kind of thing.  Mr Stevens said that this was relevant in the present case, where the ownership of a mark for "sportswear" on one hand and "sporting goods" on the other was in dispute.  There was blurring of the line between these goods, especially in the market place and the reputation of the opponent for its mark did not only reside in clothing but also would readily extend into the sporting area.  He further referred to the Hicks' case (1897) 22 VLR 636 at 640, where Holroyd J referred to "use of the same word in application to the same kind of thing," to support this argument.

Mr Scott agreed that the opponent's mark was well known and that he had no dispute with its history which predated his client's use in Australia of its own mark.  However, he said that this reputation and history of use was restricted to clothing.  He said that most of the opponent's marks were registered for clothing, some of which he agreed could be referred to as "sportswear".  He disputed the emphasis placed on some of the opponent's evidence in support.  Although he agreed that all of the declarants were well known in the clothing industry, their responses to a somewhat leading question showed that they agreed that SPORTSCRAFT was a "famous" mark although they did not state why it was or for what goods.  The only inference was that it was well known for clothing alone.  None of the evidence showed any nexus of similarity between the goods of the applicant's and opponent's marks.  The respective goods were, he said, distinctly different; they could only be considered as items of a different nature.  The trade evidence only proved the reputation of the word SPORTSCRAFT for clothing and said nothing regarding sporting equipment.  On the other hand, the applicant's evidence showed that the mark SPORTCRAFT had been used on sporting goods since the early 1970s and there was no suggestion that it was offering clothing for sale or that it would ever be interested in doing so.

The provisions of s.40, so far as is relevant here, are that:

A person who claims to be the proprietor of a trade mark may make application to the Register for registration of that trade mark in Part A or Part B of the Register

Mr Justice McGarvie, at first instance in Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413 explained what is meant by proprietorship of a mark in the following way:

The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there: Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 203; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603; Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 59 ALJR 77 at 83. A person who becomes proprietor of a trade mark in this way is entitled at common law to restrain a person who later commences to use the trade mark.

...

In considering who, within s40(1) of the Act, was at the time of Settef's application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia: The Shell Co of Australia Ltd v Rohm & Haas Co (1949) 78 CLR 601 at 625 and 627. Settef claims to be the first person to have used the trade mark in Australia and therefore to have been proprietor at common law in Australia.

A successful claim to proprietorship in a mark (except where there has been no use at all of the mark) thus depends on the ability of the person to demonstrate first use in Australia.  Further, the use relied on must be shown to be for the purpose of indicating, or so as to indicate, a connection in the course of trade between the specified goods and that person: see section 6 of the Act and W D & H O Wills (Australia) Ltd v Rothmans Ltd (1956) 94 CLR 182 at 191; Estex Clothing Manufacturers Pty Ltd v Ellis & Goldstein Ltd (1967) 116 CLR 254 at 271.

There is no doubt that the words SPORTCRAFT and SPORTSCRAFT are almost identical.  I consider them to fall into the category of marks such as POLYKIN and POLYKEN, Kendall Co v Mulsyn Paint & Chemicals (1963) 109 CLR 300, in their relationship to each other. If the applicant's and opponent's goods were of the same description, I would have no hesitation in agreeing that proprietorship of the mark resided with the opponent following its first and extensive use. However, the goods are not the same. The opponent's use of the mark SPORTSCRAFT has been restricted to Class 25 goods, while the applicant has sought registration for SPORTCRAFT in Class 28. None of the opponent's evidence shows that it has used the mark, or established a reputation, in the sales of sporting equipment, despite the early sales of jodhpurs as shown in Mr Hayes' declaration. I cannot accept that, because the opponent's goods may include items of clothing which could be referred to as "sportswear", then this "spills over" into Class 28 to bestow ownership of the mark for sporting equipment. I believe that the meaning which the public would ascribe to the term "sportswear", for which the opponent has become well known for selling, would be "casual clothing" rather than items of equipment used, or worn, during the playing of sport. That some items such as caps and sweatshirts can be worn both as casual wear and while playing sport does not mean that a clothing retailer has an established reputation for the sale of sporting goods such as footballs or table tennis bats. One may wear almost any clothing to play sport - except in those sports which demand a uniform or protective gear - and there is no evidence to suggest that the opponent's goods are purchased with the express intention of using them exclusively for playing sport. On the other hand, the applicant asserts and the evidence would appear to indicate, that it is not in the business of selling clothing but equipment designed for playing sport.

In summary, then, I find that the opponent has not displaced the applicant's claim to proprietorship in the subject mark for the specified goods.  This ground of opposition is therefore dismissed.

Section 33

Mr Stevens said that, under this section, the opponent needed to establish not only that the trade marks were the same or deceptively similar but also that the goods of both marks were those of the same description.  He cited the words of Windeyer J in the case of Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd 1963 109 CLR 407 at p414, regarding the tests to be applied to determine whether marks were substantially the same or deceptively similar. Mr Stevens said, with respect to whether the goods of the applicant's and opponent's respective marks were "goods of the same description", that part of the application's statement of goods referred to "equipment sold as a unit". He referred to several dictionary meanings of the word "equipment" which, he said, showed that the word could be interpreted to encompass anything used for equipping a person for sport, including clothing. This was despite the fact that the application's goods were restricted to those in Class 28. He said a classic statement regarding what was to be considered in determining goods of the same description was contained in J.Lyons & Co Ltd's Appln (1959) RPC 120 at 128 where Lord Evershed said that each case must be decided on its own merits; that regard should be given to the nature and composition of the goods, their respective uses and the trade channels through which they pass; that the instances should be judged in a business sense; and that the words should not be given too rigid a construction. He said that the opponent's mark SPORTSCRAFT had been well known since 1914, compared with the minimal use of the applicant's mark SPORTCRAFT at the date of application, and that clothing and sportswear, and sports equipment are merging and becoming more or less the same kinds of goods. He further referred to an Australian decision in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 952 to further his argument in this regard, particularly in the consideration of commercial realities in determining goods of the same description. He said that there were many instances of sportswear and sporting equipment appearing together in retail outlets, on the sporting field and in advertising. The applicants' statement of goods included "equipment" for playing sport and, assuming notional use of the subject mark on all of the goods applied for, there was a real risk of deception and confusion between both marks on both sets of goods as contemplated by s.33.

Mr Scott, in reply, said he had no quarrel in relation to whether the marks themselves were deceptively similar.  However, he said that there was no suggestion that the applicant was using its mark on anything other than sporting equipment and it was not interested at all in clothing, the goods in which the opponent had an undoubted reputation.  He said that the applicant was willing to amend its statement of goods to clarify the situation if "equipment" could be said to be so broad as to include clothing but this was unnecessary as there was no way that any of the instances of "equipment" in the present statement of goods could include clothing.  He said that there was no one matter which was conclusive in determining what were goods of the same description.  Mr Stevens had placed great emphasis on the possibly common trade channels through which sportswear and sporting items could pass, but the nature of the two sets of goods and the uses to which they were put were different in this case.  This contrasted greatly with the Dom Perignon, supra, and Magic Marker v Magic Crayon, supra, cases where the goods were much more closely related to each other than the present case.

In considering the question of whether the mark in question offends the provisions of s.33, I must firstly determine whether it is substantially identical with, or deceptively similar to, the mark owned by the opponent.

Sub-section 33(1) reads:

Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, of goods of the same description as those goods, or of services that are closely related to those goods, unless the date of registration of the first-mentioned trade mark is, or will be earlier than the date of registration of the second-mentioned trade mark.

The opponent is the owner of a well known mark which has achieved a wide reputation for clothing.  This is well supported by the opponent's evidence.  To judge whether the subject mark is substantially identical to the opponent's mark, it is necessary to carry out a straight comparison of the two marks.  In the Shell case, supra, the words of Windeyer J. at p.414, as cited by Mr Stevens, are pertinent:

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 similarity that emerges from the comparison...

Sub-section 6(3) defines a mark as deceptively similar if it is likely to deceive or cause confusion.  To determine this, the marks should not be placed side by side but consideration should be given to any common net impression inferred from the two marks.  I refer here to the judgment in Australian Woollen Mills v F.S.Walton & Co Ltd (1937) 58 CLR 641, where 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.

In considering the marks in question in relation to these factors, the least that could be inferred is that they are deceptively similar.  The only difference in the marks themselves is the letter S contained in the middle of the opponent's mark.  This fact has been readily agreed to by the applicant's attorney.  The sole matter for decision here then, with respect to the objection under s.33, is whether the goods can be considered those of the same description.  I think that they cannot.

It is common knowledge that some manufacturers of certain sporting goods also apply their mark to clothing, eg tennis racquets and tennis clothing; golf clubs, golf bags and shirts for golf.  These goods, clothing and equipment, are also sold and stocked by the same sports stores and may also be found in specialist sporting departments in large department stores.  While it is clear that some weight must be given to these factors, it cannot be said that sportswear, or more particularly sports clothing, and sporting goods are usually produced by the same manufacturers nor that clothing which may be worn for sporting activities is only sold through the same outlets as the sporting goods.

The purpose and nature of the goods must also be considered.  The purpose of sports clothing is to clothe the person, while the purpose of sporting goods is to enable him or her to participate in a sport.  The first group of goods has no relationship to utilising the second group.  The nature of the sets of goods is different.  Clothing is manufactured from fabrics, while sporting goods may be manufactured from a variety of materials.  Where the goods use materials in common, eg riding boots and saddlery both made from leather, or sand shoes and cricket bags which may be made from canvas, those engaged in their manufacture would regard them as belonging to different trades.

Therefore, while sports clothing and sporting goods may have some trade channels in common (as demonstrated by the opponent's evidence) and even the same manufacturers, this connection is outweighed by the notable differences in their nature and purpose.  I do not think that this is at all clouded by the term "equipment", as it is used in the context of the present application's statement of goods, as any items of clothing, even gloves, which might be considered as part of that equipment would be properly classified under Class 25.  It would then be justifiably denied registration under s.33 if included in the statement of goods of another applicant's similar mark.

I therefore find that no ground has been made out under s.33 and the opposition, as it is based on that section, does not succeed.

Section 28

In his submissions with respect to this aspect of the opposition, Mr Stevens said that even the likelihood of confusion would be enough to apply s.28 to the present case.  He referred here to the words of Kitto J in the Southern Cross case at 595, supra, where he said that it was sufficient that use of the mark caused a number of persons to wonder whether it might not be the case that the two products came from the same source. Therefore, said Mr Stevens, it would be enough for a number of ordinary persons to wonder whether the respective goods of the opponent's mark SPORTCRAFT and the applicant's mark SPORTCRAFT came from the same manufacturer. The factors which could give rise to this possible deception or confusion included the existence of two similar marks for closely related goods, both of which included a stylised letter S when in use. The apparent lack of instances of actual confusion in the market place between the marks could be attributed to the minimal use of the applicant's mark, particularly in the early period.

He said that, in reference to s.28(d) which related to the issue of blameworthy conduct and, notwithstanding the confusion which had followed the High Court decision in New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Ltd 18 IPR 385 (the Moo case), this conduct was present if s.33 had been breached.  For support here he referred to the decision by of Hearing Officer Homann in a yet unpublished Office decision in the case of Opposition by Esprit de Corp to application No 441721 in the name of Greta Lingerie (Aust) Pty Ltd.  He said further that Davies J in the case of Anheuser-Busch Inc v Castlebrae Pty Ltd (1991) ¶AIPC 90-840 had appeared to reject the Moo decision on the interpretation of s.28 in distinguishing between matters which occurred post registration and those which applied at the time of registration.  He said finally that, because the opponent's mark SPORTSCRAFT had been famous for many years, the result of the adoption by the applicant of the mark SPORTCRAFT was an intentional and gradual dilution of the opponent's mark which constituted blameworthy conduct.

In reply, Mr Scott said the applicant's mark had been used in Australia since 1970, albeit not widely in the initial period.  During that time, there had been unfettered use of the mark with no complaints at all from the present opponent or from Wilton Distributors Pty Ltd, the proprietor of Trade Mark Registration No 86948 for the mark SPORT CRAFT for "sporting goods", in the face of which the opponent's own marks had been registered (86948 was removed from the Register under s.70(2) in July 1988).  The marks had therefore co-existed for at least 22 years with no apparent deception or confusion occurring.  The mark was not calculated to deceive, as the same mark was adopted in the Australian marketplace which had been used in the United States since the 1920s.  He said that the reference by Mr Stevens to any use of the mark with an S device was irrelevant, as the mark applied for was only SPORTCRAFT.

The provisions of s.28 of the Act read as follows:

A mark -

(a) the use of which would be likely to deceive or cause confusion;
     (b) the use of which would be contrary to law;
     (c) which comprises or contains scandalous matter; or

(d) which would otherwise be not entitled to protection in a court of justice,

shall not be registered as a trade mark.

The test to be applied under paragraph (a) of these provisions, on which the opponent partly relies, has been well established by cases such as the Southern Cross case, supra, as cited by Mr Stevens.  Following the High Court decision in the Moo case, supra, the Registrar now follows the practice as laid out in the decision of Hearing Officer Homann in Titan Manufacturing Co v John Terrence Coyne 22 IPR 613 - that is that paras (a) and (d) of s.28 should be read together. This means that, notwithstanding Mr Stevens' observations regarding the decision of Davies J. in the Anheuser-Busch case, supra, should I find that the marks are likely to deceive or cause confusion, then it will also be necessary to find whether there has been blameworthy conduct on the part of the applicant to disentitle the mark to protection in a court of law.

Despite Mr Stevens' assertions to the contrary, I do not think that an ordinary person would be confused as to whether the goods covered by both marks had a common source.  The opponent does have a reputation for its mark but only on clothing.  That reputation has not been shown by the evidence to extend into the area of sporting equipment.  The marks are different, albeit slightly, and although some clothing and sporting equipment can be sold in the same outlets, I am of the opinion that the public would make the distinction between the applicant's marks on clothing and the opponent's mark on the sporting items as specified in the application.  I do think it is significant that the opponent's marks achieved registration in the face of Registration No. 86948 for "sporting goods" and I do not think that the situation in the market place has altered to the extent that the public would now be deceived by the reverse situation occurring.

It therefore follows that I cannot find that the opponent's claim that use by the applicant of its mark is likely to lead to deception or confusion has been made out.  The first leg of the s.28 objection thus fails.

Although it is now not necessary to do so, I note for the record that, on the question of any alleged blameworthy conduct on behalf of the applicant, I do not believe that the opponent has shown that there has been any such action.  I have already found that s.33 has not been breached and there is no evidence of any intention by the applicant in its adoption of its mark to appropriate the reputation and goodwill of the opponent.  Any consideration of the Anheuser-Busch decision is now not relevant as I have already found that there was no wrong-doing by the applicant.

Onus on the applicant

Mr Stevens submitted that the applicant was in petitorio and must justify the registration of its mark by showing affirmatively that it was not calculated to deceive.  He referred here to the decision in Dunn's Trade Mark (1908) 7 RPC 311. He said that the decision in the Southern Cross case, supra, confirmed that the onus was on the applicant to satisfy the Registrar that there was no reasonable probability of confusion.  If the applicant could not do this, then the registration should be refused.  He concluded his remarks by saying that if the decision in the matter was to go to the opponent, then costs should follow the cause.

I believe that the applicant has, by its evidence and submissions, demonstrated that the likelihood of deception and confusion between its mark and the applicant's is low for its discrete statement of goods.  It has therefore discharged its onus in the matter to my satisfaction.

In summary, then, I find that the opposition has failed on all grounds relied upon.  I consequently dismiss the opposition and direct, subject to any appeal from this decision, that the application proceed to registration.  The applicant is entitled to its costs and I so award them to be taxed, allowed and certified in accordance with the Official scale.

Ian Forno
Hearing Officer

15 February 1993