Geoffrey Inc v Paul Fordham

[2006] ATMO 18

TRADE MARKS ACT 1995

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

Re:Opposition by Geoffrey Inc to registration of trade mark application 952093(28) - TreadmillsRUs - filed in the name of Paul Fordham.

Delegate:

Deirdre O’Brien

Representation:

Opponent

Andros Chrysiliou of Chrysiliou Law

Applicant

Unrepresented

Decision:

S52 opposition

Section 44 and 60 grounds made out. Registration refused.

Costs awarded against applicant

Background

1. Trade mark application 952093 was filed on 30 April 2003 by Paul Fordham (‘the applicant’) in respect of health and fitness equipment in class 28.  The trade mark, the subject of this application (‘the present trade mark’), is the expression TreadmillsRUs.  The application was examined and accepted for possible registration whereupon a notice of opposition was filed by Geoffrey Inc (‘the opponent’).  Both parties filed and served evidence pursuant to the Trade Marks Regulations 1995.  

2. The opponent then asked to be heard and the matter came before me, as the Registrar’s delegate, in Canberra on 21 November 2005.  Mr Andros Chrysiliou of the firm Chrysiliou Law made submissions by telephone on behalf of the opponent.  The applicant did not attend the hearing but relied on written submissions. 

3. The grounds of opposition pressed by the opponent at the hearing were those pursuant to sections 42, 43, 44, 58, 59 and 60 of the Trade Marks Act 1995 (‘the Act’).

Evidence

1. The evidence filed and served by both parties is summarised in the following table.

Declarant	Date made	Exhibits	Known as
Evidence in support	John Redenbach	23 02 2004	A to G JFR-1 to 14	Redenbach 1
John Redenbach	04 06 2004	JFR-15 to 22	Redenbach 2
John Redenbach	30 06 2004	JFR-23 to 31	Redenbach 3
Peter Collins	05 07 2004	PC1 to 2
Evidence in answer	Paul Fordham	11 11 2004	PF1 to 4	Fordham
Evidence in reply	Allan Tieste	31 03 2005	A and B

1. The opponent accepts the onus is on it to make out one or more of the grounds of opposition[1]. 

   [1] as recently confirmed in Kowa Co v NV Organon (2005) 66 IPR 131 at 153

Grounds under sections 44 and 60

1. Both these grounds require a finding that use of the present trade mark, TreadmillsRUs, is likely to result in deception and/or confusion, either because of its similarity to the opponent’s registered trade mark(s) (section 44) or because of the reputation of the opponent’s registered and/or common law trade mark(s) in Australia at the relevant date[2] (section 60). 

   [2] which is 30 April 2003, the filing date of the present application.

2. The applicant points to the decision by the Registrar’s delegate in Geoffrey Inc v Hoyle[3] as precedent for a finding that deception and/or confusion would not be likely.  In that case, when considering whether the trade marks TOYS “R” US (the opponent’s trade mark) and GLASS ‘R’ US were deceptively similar the delegate said (at 203):

   …while the trade marks are similar, they are not deceptively so, as the registrations may be taken as indicating that the public is well used to distinguishing between businesses which have coined trade marks based on the sign (GOODS) R US and do not regard the type of trade mark as indicating a particular trader.

   [3] (2004) 63 IPR 196. The decision comprises exhibit PF-4 to Fordham.

3. The registrations to which the delegate referred were 31 trade mark registrations owned by different parties for trade marks of the format (GOODS) R US.  Those registrations are not in evidence here.   However as the state of the register was given such weight by the delegate in coming to his decision, I searched the register for trade marks of the type (GOODS) R US in class 28 which is the class of the present application[4]. 

   [4] Regulation 21.15(8) gives me the authority to take this information into account.

4. My search revealed five registrations in class 28 for (GOODS) R US trade marks[5].  Four of them are owned by the opponent and the other registration (591198) is for the trade mark BALLOONS R US.  One registration in the name of another party does not support a finding that (GOODS) R US trade marks are commonly used in relation to class 28 goods.  The opponent points to the finding in Harrods Limited’s Application[6] that the presence of a common element can only be discounted if it is shown to be in extensive use in the same market. 

   Now it is a well recognised principle, that has to be taken into account in considering the possibility of confusion arising between any two trade marks, that, where those two marks contain a common element which is also contained in a number of other marks in use in the same market, such a common occurrence in the market tends to cause purchasers to pay more attention to the other features.  This principle, however, clearly requires that the marks comprising the common element shall be in fairly extensive use and, as I have mentioned, in use in the markets in which the marks under consideration are being or will be used. [emphasis added]

   [5] There are also two registrations where R US has been combined with a word alluding to the target market.  One is owned by the opponent (registration 403804 for KIDS “R” US) and one by another party (registration 474054 for a logo containing the expression PARTIES R US).

   [6] (1935) 52 RPC 65 at 70

5. In Geoffrey Inc v Hoyle[7] the applicant intended to use the trade mark GLASS ‘R’ US in relation to services pertaining to the manufacture, sale and installation of glass products.  The delegate found consumers were used to businesses in disparate fields using trade marks of the form (GOODS) R US and would not necessarily believe such trade marks indicated goods or services from the same trade source.  In other words consumers would not automatically expect a (GOODS) R US trade mark to be one of the opponent’s trade marks.  However I do not think the delegate’s finding can be extrapolated to say there will never be any likelihood of deception or confusion if a (GOODS) R US trade mark is used by a trader other than the opponent.  Each case has to be decided on its own facts. 

   [7] supra note 3

6. The facts of the present application are that the applicant will be using its trade mark on the same goods as those covered by the opponent’s registrations for the trade mark TOYS “R” US (see paragraphs 12 and 13 of these reasons).  The applicant’s health and fitness equipment is encompassed by the opponent’s claim for all other goods/all goods in class 28[8].  There is nothing before me to show that (GOODS) R US trade marks are in common use in this market.  Accordingly the present case can be distinguished from that in Geoffrey Inc v Hoyle[9].

   [8] in registrations 376289, 530103 and 534072

   [9] supra note 3

Section 44 ground

1. In support of the section 44 ground the opponent has cited the following trade mark registrations, all of which all have an earlier priority date than the present application.

Registration	Trade mark	Class 28 goods
376289	Games, toys and playthings and all other goods in class 28
403804	Games, toys and playthings and all other goods in Class 28 intended for children
530103	All goods in this class
534072	Games, toys and playthings and all other goods in class 28
847342	Toys, games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees

1. In order to make out the section 44 ground, the opponent has to show that the present trade mark is deceptively similar[10] to one or more of the cited trade marks.  For convenience I will refer to the opponent’s trade mark in registrations 376289, 530103 and 534072 as TOYS “R” US even though that is not strictly accurate as the letter R should be reversed.  However it is not easy to reproduce that manner of representation in these reasons.  In any event I consider the reversal of the letter R does not substantially contribute to the identity of the trade mark in registrations 376289, 530103 and 534072.  It is the unusual combination of the letter R and the word US which is the essential feature, not the letter reversal[11]. 

   [10] Section 10 gives the definition of deceptively similar as follows:

   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.

   [11] This may not be the case with the trade mark in registration 847342 where the reversed letter R appears within a star. In order not to complicate matters unnecessarily, I will not take registration 847342 into account when deciding whether or not the opponent has made out the section 44 ground.

2. As noted at paragraph 11 of these reasons, the goods of the present application are the same as those of the opponent’s registrations.

3. The test for deceptive similarity was described by Windeyer J in Shell Company of Australia Co Limited v Esso Standard Oil (Australia) Limited[12] as follows:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions.

   [12] (1963) 109 CLR 407 at 414

4. The opponent submits its TOYS “R” US trade mark creates a similar impression to the applicant’s TreadmillsRUs trade mark in that both trade marks consist of a word describing the goods followed by the expression R US.  The opponent says the latter is not in common use in the relevant trade and is, the opponent argues, separately registrable.  On that basis the opponent says the presence of R US in both trade marks cannot be discounted and it submits the two trade marks fall into the category of trade marks considered by the delegate in Automobiles Peugeot v Viva Time Corporation[13] as follows:

   There also exists, I believe, a likelihood of what is termed ‘contextual’ confusion which was explained in Re John Fitton & Co Ltd’s Application (1949) 66 RPC 110 at 113, where, in considering the trade mark EASYJEST in face of the registered trade mark JEST, the assistant comptroller said that no limitation was to be placed “upon the nature of the confusion or deception so envisaged, whether it be visual or phonetic confusion of the marks themselves, or what is termed contextual confusion, or deception as to the trade provenance of the goods”. In other words, it is quite likely that a prospective purchaser, noting the similarities of the trade marks will, notwithstanding any differences, believe that the goods are placed onto the market under the aegis of one trader or that the products are related in some way.

   [13] (2001) 54 IPR 568 at 579

5. Elsewhere contextual confusion has been said to occur because of the practice of 'traders adopting a certain word as a trade mark and constructing other trade marks for distinguishing characteristics of their goods by using such word as a basis and adding thereto prefixes of a qualifying nature'[14].

   [14] Kodak (A/asia) Pty Ltd's Appn (1936) 6 AOJP 1724

6. I agree with the opponent’s submission that R US, the common element in this case, is capable of being separately registered and that the other words in the trade marks, TREADMILLS and TOYS, describe the goods.  Consequently, when the trade marks are considered as wholes, I am satisfied there is a real likelihood of contextual confusion, that is, of consumers believing the trade marks indicate related products from the same trade source.

7. The applicant says deception and/or confusion are not likely and relies on Geoffrey Inc v Hoyle[15] but, as previously noted, that case is not on all fours with the present. I am satisfied from the facts before me that the opponent has made out the section 44 ground of opposition based on registrations 376289, 530103 and 534072.

   [15] supra note 3

Section 60 ground

1. In order to make out this ground the opponent first has to show that its TOYS “R” US trade mark had a reputation in Australia at 30 April 2003, the date on which the present application was filed.  The opponent’s evidence in support satisfies me the trade mark had (and still has) a reputation in Australia with respect to retail stores which principally sell toys, games and playthings for children and teenagers.  This finding will be no surprise to the applicant as the same finding was made in Geoffrey Inc v Hoyle[16].  I therefore do not intend to discuss in detail the opponent’s evidence as to reputation. 

   [16] supra

2. Having established the necessary trade mark reputation, the opponent then needs to show that, because of that reputation, the applicant’s use of the present trade mark would be likely to cause confusion.  The test I am required to apply in deciding this was described by Justice French in Registrar of Trade Marks v Woolworths Ltd[17] as follows:

   A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   [17] 45 IPR 411 at 426

3. The applicant says the opponent does not sell health and fitness equipment[18] and that its (the applicant’s) equipment[19] is not intended for children but rather for adults who wish to improve their health and fitness.  However the description health and fitness equipment is a broad one and encompasses goods such as bicycles and trampolines.  The opponent’s evidence shows that it has sold these goods in all its stores since 1993, including those for adult use[20].  In addition it has sold inline skates and scooters[21] which could arguably be considered to be health and fitness equipment.

   [18] Paragraph 2 of Fordham

   [19] which includes treadmills, exercise bikes, steppers, home gyms, air walkers and rowers.

   [20] Redenbach 3

   [21] The opponent says that in 2000 it sold more scooters to adults than to children.

4. The applicant’s target market currently comprises well informed, health conscious adults[22] who are likely to buy the applicant’s goods from a specialist retailer rather than a retailer of goods principally intended for children and teenagers.  However I must not base my consideration of the likelihood of confusion on the way the applicant currently uses the present trade mark.  I am obliged to take into account what the applicant (or its successor in title) can do if the present trade mark is registered.  In Berlei Hestia Industries Ltd v The Bali Company Inc[23] Mason J said at 362:

   …the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark.  The issue is whether that use would give rise to a real danger of confusion.

   [22] supra note 18

   [23] (1973) 129 CLR 353

5. The evidence shows that from 1993 when the opponent first opened its stores in Australia, it has constantly expanded the range of goods it sells[24].  Those goods include health and fitness equipment. At present the applicant is only using its trade mark in relation to specialized health and fitness equipment for adult use.  Registration will give it the right to use its trade mark on all sorts of health and fitness equipment, including treadmills of the kind consumers would expect to be sold by a general retailer such as the opponent.

   [24] Its stores now sell a range of goods for babies including furniture and strollers, children’s clothing, music CDs and a variety of electronic goods including CD and DVD players and sound systems. 

6. The opponent points to its history of adapting what it considers to be its ‘R US’ brand for use in relation to goods which do not fall into the TOYS description.  Its evidence shows use of the trade mark BABIES “R” US in relation to items for babies such as baby monitors, cots and strollers[25].  On that basis I am satisfied I am satisfied a substantial number of persons would regard TreadmillsRUs as the sort of trade mark the opponent would use in relation to treadmills.  The applicant’s use of TreadmillsRUs in relation to treadmills is therefore likely to result in confusion as to trade source. I find the section 60 ground has been made out.

   [25] JFR-7 and 10 to Redenbach 1

Other grounds of opposition

1. The opponent also relies on the grounds of opposition contained in sections 42, 43, 58, and 59 of the Act. As I have already found the opposition has succeeded on the basis of the section 44 and 60 grounds, I do not need to consider whether or not the other grounds have been made out.

Decision

1. As the opponent has made out the section 44 and 60 grounds of opposition, my decision is to refuse to register trade mark application 952093.

Costs

1. I award costs against the applicant according to the official scale.

Deirdre O’Brien

Hearing Officer

Trade Marks Hearings

23 February 2006