Gerry Webber International AG v Studio Ray LLC
[2024] ATMO 59
•3 April 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re: Opposition by Gerry Webber International AG to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 (Cth) of trade mark number 1754848 (International Registration number 1197519) (class 25) – GERRY - in the name of Studio Ray LLC
Delegate:
Anne Makrigiorgos
Representation:
Opponent: Spruson & Ferguson Pty Ltd
Holder: Herbert Smith Freehills
Decision:
2024 ATMO 59
Trade Marks Regulations 1995 (Cth) – opposition to extension of protection under reg 17A.33 – grounds of opposition pressed under reg 4.15A and ss 42, 44, 60 and 62A of the Trade Marks Act 1995 (Cth) – no ground established – protection granted.
Background
1. This is a decision in respect of an opposition by Gerry Webber International AG[1] (‘Opponent’) under reg 17A.33 of the Trade Marks Regulations 1995 (Cth)[2] to the extension of protection of the following International Registration Designating Australia (‘IRDA’):
International Registration number: 1197519
Australian trade mark number: 1754848 (‘Application’)
Trade mark: GERRY (‘Trade Mark’)
Holder: Studio Ray LLC (‘Holder’)
Filing Date and Priority Date: 5 February 2016 (‘Relevant Date’)
Specification: Class 25 - Clothing, namely, parkas, ponchos, pants, down vests, sweaters, hoods and raincoats; jackets, t-shirts, shirts, and caps; children's coats, hats, and shirts (‘Holder’s Goods’)
[1] While the Notice of Intention to Oppose refers to the Opponent as Gerry Webber International AG, all other documents in the opposition filed by the Opponent refer to the Opponent as Gerry Weber International AG, which appears to be the correct spelling of the Opponent’s name.
[2] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).
2. The Trade Mark was examined and advertised as accepted for possible extension of protection on 30 June 2016.
3. On 30 August 2016, the Opponent filed a Notice of Intention to Oppose the Trade Mark. On 30 September 2016, the Opponent filed its Statement of Grounds and Particulars (‘SGP’). The Holder filed a Notice of Intention to Defend the opposition on 17 November 2016.
4. The Opponent filed Evidence in Support (‘EIS’) on 17 February 2022.[3] The Holder filed Evidence in Answer (‘EIA’) on 23 May 2022. No Evidence in Reply was filed.
[3] The timeline gap from filing the Notice of Intention to Defend to the evidence stages is as a result of two cooling off periods and a number of suspensions of the opposition proceedings.
5. The parties were given the opportunity to either request an oral hearing or a hearing by way of written submissions. The parties requested a decision by way of written submissions. The Opponent filed written submissions on 17 November 2023 and the Holder filed its submissions on 24 November 2023. I have decided this matter based on the particulars set out in the SGP, the evidence of the parties, and the written submissions of the parties.
Grounds and Onus
6. Regulation 17A.34 provides that an extension of protection may be opposed on any of the grounds on which an IRDA may be rejected and on the grounds set out in ss 58 to 61 and 62A.
7. The SGP nominates grounds of opposition under reg 4.15A and ss 42, 44, 60 and 62A.
8. The Opponent carries the burden of establishing one or more of the grounds of opposition[4] on the balance of probabilities.[5] The rights of the parties are assessed as at the Relevant Date.[6]
[4] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[5] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
Evidence
9. The following evidence was filed:
EIS
Declaration of Claudia Ward, international wholesale account manager of the Opponent, made on 16 February 2022 with Annexures 3 to 15 and 18 and Confidential Annexures 1, 2, 16 and 17 (‘Ward Declaration’).
EIA
Declaration of Jeremy Herz, employee of Herbert Smith Freehills made on 23 May 2022 with Exhibits JH-1 to JH-10.
Summary of EIS
10. Ward states that the Opponent manufactures and sells clothing, shoes and accessories under three brands including GERRY WEBER (‘GERRY WEBER Mark’). The GERRY WEBER Mark was first used in Germany in 1986.
11. Ward asserts that first use of the GERRY WEBER Mark in Australia was 1987. Since this date until 15 February 2022, Ward claims the following goods have been offered in Australia under the GERRY WEBER Mark:
Parkas, pants, down vests, sweaters, hoods, raincoats, jackets, t-shirts, shirts and caps (‘Opponent’s Goods’)
12. After 15 February 2022, Ward claims that the Opponent’s range of goods expanded to include general items of ladies clothing, belts, scarves, bags, rucksacks and dog beds.
13. Ward provides the names of twelve independent retail outlets in all six states of Australia where Ward claims the Opponent’s Goods under the GERRY WEBER Mark have been sold. No details as to when these retailers began selling the Opponent’s Goods or for how long have been provided.
14. Ward annexes a nine page document claimed to be a list of delivery of clothing under the GERRY WEBER Mark to independent Australian and New Zealand retailers between 2015 to 2018. I note that the document is headed with the name of the Opponent in the following format , all column headings are in German and there is no reference to the GERRY WEBER Mark. I also note that three of the retailers referred to in paragraph 13 of this decision do not appear in the document. As there is no specific reference to the GERRY WEBER Mark, and the Opponent has a further 2 brands which do not include the words GERRY WEBER, I am unable to ascertain what data, if any, in the document refers to the GERRY WEBER Mark.
15. Ward annexes:
·a document providing details of the independent Australian retailers claimed to have sold goods under the GERRY WEBER Mark in 2013. I note that two of the retail outlets referred to in paragraph 13 of this decision do not appear in the document and one retailer is in New Zealand.
·a document providing details of the independent Australian and New Zealand retailers claimed to have sold goods under the GERRY WEBER Mark in 2022, which is after the Relevant Date. I note that three of the retailers referred to in paragraph 13 of this decision do not appear in the document.
·invoices dated between 2014 to 2016 addressed to three independent Australian retailers relating to the Opponent’s Goods sold under the GERRY WEBER Mark. I note the invoices refer to the GERRY WEBER Mark, a total of five invoices are dated in 2014 and 2015, the invoices from 2016 are dated after the Relevant Date and the Opponent’s Goods itemised in the invoices from 2014 and 2015 are ‘vest, pullover, trousers, skirt, T shirt, scarf, blouse, neckerchief and jacket’.
16. Ward claims that goods sold under or by reference to the GERRY WEBER Mark were previously distributed in Australia by Style HQ but no dates or distribution details have been provided. Ward annexes information about Style HQ from the website which I note is dated 8 April 2019, after the Relevant Date. I note there is reference to the GERRY WEBER Mark.
17. Ward provides the average price in 2022 for some of the Opponent’s Goods in Euros and declares that these prices were similar at the Relevant Date. The prices range from €17.59 (approximately $29 Australian dollars) for a shirt and €61.16 (approximately $100 Australian dollars) for an outdoor jacket. The prices displayed on the Opponent’s and third party distributor websites,[7] indicates that these prices are likely to be wholesale rather than retail.
[7] Ward Declaration, Annexures 9 and 10.
18. Ward declares that the Opponent has operated GERRY WEBER retail stores in Australia since 1990. Ward also declares that there was a GERRY WEBER retail store between 14 March 2012 to 15 March 2017 in Double Bay, Sydney and between 25 October 2013 and 1 May 2019 at Chatswood Chase Shopping Centre, Sydney. It appears these dates indicate when the retail stores began and ceased trading. In support, Ward provides photographs of and website printouts related to these stores, none of which are dated before the Relevant Date.
19. Ward states that the GERRY WEBER Mark is used on the Opponent’s Goods such as labels and swing tags, packaging of such goods, invoices, price lists, catalogues, shop signage and stationery. I note use of the GERRY WEBER Mark on labels and shop signage, which can be seen in the pictures of the GERRY WEBER retail stores.[8] In these pictures, swing labels can also be seen on some clothing items, but the labels are illegible. I also note use of the GERRY WEBER Mark on invoices.[9] There is however no evidence of use provided of packaging, price lists, catalogues or stationery.
[8] Ward Declaration, Annexure 6.
[9] Ward Declaration, Annexure 3.
20. Ward asserts that the Opponent has advertised and promoted the goods under the GERRY WEBER Mark in Australia since 1995 by way of pamphlets or flyers, posters, point of sale materials, promotional merchandise, catalogues and direct mail. No examples have been provided.
21. Ward claims to have promoted the Opponent’s Goods under the GERRY WEBER Mark in Australia via its Australian website and its international website In support, Ward annexes:
·screenshots from its Australian website dated in 2019, after the Relevant Date. I also note that some screenshots still refer to the Double Bay store which Ward claims was in operation until 2017.[10]
·archived extracts[11] from its Australian website from 2015. All pages show use of the GERRY WEBER Mark and refer to the retail stores in Chatswood Chase and Double Bay. No indication is provided as to the number of consumers in Australia who engaged with this website.
·screenshots of the Opponent’s international website dated 2019 and 2022 and archived extracts from its international website between 2004 and 11 July 2016. No indication is provided as to the number of consumers in Australia who engaged with this website and the majority of the screenshots are in German.
[10] Ward Declaration, [17].
[11] Taken from the Wayback Machine, a digital archive of the World Wide Web at Ward declares that Australian consumers were previously able to purchase goods under the GERRY WEBER Mark from the following third party websites:
· annexes screenshots from these websites dated 27 March 2019 and 8 April 2019, after the Relevant Date. I note that the retail price for a T shirt is around $150.
23. Ward claims that Australian consumers can still purchase goods under the GERRY WEBER Mark from the website Ward annexes screenshots from this website dated 5 February 2022, after the Relevant Date, which I note are actually from the website Ward asserts that Australian consumers can purchase goods under the GERRY WEBER Mark from websites of overseas stores including:
· annexes printouts from these websites all of which are dated after the Relevant Date.
25. Ward claims that promotion of the GERRY WEBER Mark has included:
·a celebrity partnership with the model Eva Herzigova, who was the face of the brand from 2017 to 2019, after the Relevant Date.
·a campaign with Anna Kraft, a German television presenter and former athlete in 2018, after the Relevant Date.
·sponsorship and naming of the former Halle Open - now Gerry Weber Open - a tennis tournament held in Halle, Germany. As part of the tennis tournament the Opponent holds the Gerry Weber Open Fashion Night with runway shows, music and entertainment.
·a fashion runway event organised by Chatswood Chase showcasing a number of brands including GERRY WEBER. Ward provides details of the runway event from the website dated 18 September 2016, after the Relevant Date.
·social media, including Facebook® lnstagram® and YouTube®. Ward annexes printouts from these pages, however, they are either undated or dated after the Relevant Date.
26. Ward provides a confidential table of advertising expenditure for Australia from 2006 to 2013 (excluding 2011) where I note that the figures range from low to negligible and a confidential table of sales figures for Australia from 2011 to 2016 where I note that the figures are reasonable.
27. Ward provides details of three Australian trade mark registrations owned by the Opponent (‘Opponent’s Marks’). Details appear in the table below.
Mark
Number
Priority Date
Class and Goods
GERRY WEBER
678828
21 November 1995
25 – ladies clothing
GERRY WEBER
961855
19 May 2003
25 - Footwear, headgear
1203806
30 August 2007
25 - Clothing, footwear, headgear
Summary of EIA
28. Herz provides a history of the development of the Trade Mark by the Holder’s predecessor and author of the brand GERRY, Gerald “Gerry” Cunningham, in 1946. The Trade Mark was initially used for outdoor equipment such as tents and later around 1960 for clothing. In 2010, the Trade Mark was acquired by the Holder who then introduced new outerwear clothing and accessories.
29. Herz claims that the Trade Mark features prominently on the Holder’s Goods and annexes examples of use from various websites which are either undated or dated May 2022. I note the Trade Mark appears on the Holder’s Goods.
30. Herz claims that given names are increasingly used in the branding of clothing labels around the world including Australia and provides a list of twenty seven clothing labels available in Australia which use given names as a badge of origin.
31. Herz states that GERRY is a well-known diminutive of the male given names Gerald and Gerard and the female name Geraldine. I note in this regard that the forename of the author of the Trade Mark is Gerald.
32. Herz provides a table of clothing brands that coexist in the Australian fashion industry despite sharing a common given name such as TIFFANY and TIFFANY KOURY.
33. Herz claims that there is no likelihood of deception or confusion between the Trade Mark and the GERRY WEBER Mark on the following bases:
·online Google® searches conducted in May 2022 of the Trade Mark do not return any results for the Opponent’s Goods under the GERRY WEBER Mark on the first page, nor does a search of the GERRY WEBER Mark return any results for the Holder’s Goods branded with the Trade Mark. Herz attaches the details of these searches.
·the Opponent’s Goods are only available to a very limited extent in Australia, with only one GERRY WEBER retail outlet in Australia located in Chatswood. In support, Herz attaches an extract of a Google® search conducted in May 2022 for “Gerry Weber Australia”.
·the Trade Mark is synonymous with outdoor excellence such that the Holder’s Goods are highly coveted by consumers of vintage goods and are sold across online marketplaces and e-commerce platforms for vintage goods, including eBay®, Etsy® and Base Camping Vintage. Herz annexes extracts from these websites dated February 2022.
34. Herz asserts that the Holder has used the Trade Mark continuously to advertise the Holder’s Goods via its websites at and since in or around November 2012. Herz annexes screenshots of these websites from May 2022 and archived extracts of these websites from the Wayback Machine between 3 November 2012 and 31 December 2015.
35. Herz claims that the Holder has a strong presence on social media and the Trade Mark prominently features on each of its social media feeds including Facebook®, Instagram®, Twitter® and Tumblr®. Herz annexes extracts taken in May 2022 from the Holder’s:
·Facebook® page at facebook.com/GerryOutdoors which includes examples of posts since 2013. Herz attests that in May 2022, the Holder’s Facebook® page had over 2,300 ‘followers’ and over 2,200 ‘likes’.
·Twitter® page at twitter.com/gerry_nyc, which includes tweets since August 2011. Herz attests that in May 2022 the Holder’s Twitter® page had 315 followers.
·Tumblr® page at gerry1946.tumblr.com/ which includes examples of content since August 2012. Herz attests that in May 2022 the Holder’s Tumblr® has over 1,200 followers.
36. Herz states that the Trade Mark features on the Holder’s merchandise and promotional materials and gives an example of two Instagram® stories from Outside Exp which are claimed to be in relation to exhibitions and events for outdoor sports and mountaineering from May 2022.
37. Herz declares that he is advised that the Holder is not aware of any instances of confusion in Australia or globally between the Holder’s business and the Opponent’s business.
Discussion and Reasons
Section 44
38. The relevant provisions of s 44 are reproduced below:
Identical etc. trade marks
(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.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
39. The SGP nominates the Opponent’s Marks as the basis for this ground of opposition, two of which are International Registrations designating Australia.
40. I am satisfied that the goods ‘clothing, ladies clothing and headgear’ covered by the Opponent’s Marks encompass the Holder’s Goods, which are all clothing and headgear. I am also satisfied that the Opponent’s Marks have an earlier priority date and are held in a name other than that of the Holder. Therefore, the consideration becomes one of whether the Trade Mark is substantially identical with, or deceptively similar to, any of the Opponent’s Marks.
41. The Opponent’s submissions contend that only the GERRY WEBER Mark is substantially identical to the Trade Mark.
Substantial Identity
42. The starting point of an analysis as to whether trade marks are substantially identical is the well-known dicta of Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’),[12] where his Honour stated:
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 dissimilarity that emerges from the comparison.[13]
[12] [1963] 109 CLR 407 (‘Shell’).
[13] Ibid 415.
43. Thus, if a total impression of similarity emerges from a comparison between the two marks, the marks are “substantially identical”.
44. In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’),[14] the Full Court clarified the way in which a “side by side comparison” of trade marks is to be carried out in order to determine whether the two marks are substantially identical. The Full Court identified that the proper approach for determining whether trade marks are substantially identical is an evaluative process which begins with a comparison of the essential elements of the marks, before considering the differences between them. This is explained in Pham Global at [52]:
The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person” (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.
[14] [2017] FCAFC 83 (Greenwood, Jagot and Beach JJ) (‘Pham Global’).
45. Whether there is substantial identity is a question of fact.[15] The comparison here is between GERRY and GERRY WEBER.
[15] Ibid [53].
46. The Opponent submits that on a side-by-side basis, GERRY is the essential element ‘striking the eye’ of the GERRY WEBER Mark. Given this fact, and the fact that the Trade Mark consists entirely of the word GERRY, a total impression of similarity emerges from a comparison between the two marks.
47. The Holder submits that on a side-by-side comparison, it is clear that the GERRY WEBER Mark is double the length of the Trade Mark in both character length (appearance factor) and syllables (sound factor).[16]
[16] The Holder claims that an analogy can be drawn between the decision in Tiffany and Company v Tiffany Koury [2009] ATMO 68 which held that TIFFANY KOURY was not substantially identical to TIFFANY.
48. I am not satisfied that the Trade Mark is substantially identical to the GERRY WEBER Mark. On a side-by-side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of the Trade Mark and the GERRY WEBER Mark. While the marks share the use of the word ‘GERRY’, the addition of the second word ‘WEBER’ operates to render the marks clearly different.
49. I move then to consider whether the Trade Mark and GERRY WEBER Mark are deceptively similar.
50. It is convenient to confine the following discussion to a comparison of registration 678828 for the GERRY WEBER Mark and the Trade Mark. The rationale being that if the GERRY WEBER Mark is determined not to be deceptively similar to the Trade Mark, logic dictates that the same conclusion will apply to the remainder of the Opponent’s Marks, given that registration 961855 is for an identical mark and registration 1203806 has additional points of dissimilarity.
Deceptive Similarity
51. Section 10 provides a definition of deceptively similar being that “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”.
52. Justice Windeyer outlined the approach for the assessment of deceptive similarity in Shell. His Honour observed:
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 [mark].[17]
[17] Shell (n 12) 416.
53. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[18] conveniently stated the relevant principles, which may be summarised as follows:
[18] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
(a)the resemblance between the two marks must be the cause of the likely deception or confusion;[19]
[19] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).
(b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[20]
[20] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).
(c)the marks should not be compared side by side;[21]
(d)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 (or services), then similarities both of sound and of meaning may play an important part;[22]
(e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[23]
(f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[24]
(g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[25]
(h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [26]
(i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[27]
(j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[28]
(k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[29] and
(l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[30]
[21] Australian Woollen Mills Ltd v F S Walton & Co Ltd (‘Woollen Mills’) (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).
[22] Ibid.
[23] Ibid.
[24] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).
[25] Shell (n 12) 415.
[26] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).
[27] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).
[28] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).
[29] Woollen Mills (n 20).
[30] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Woollen Mills (n 20).
54. The question is whether there is a real tangible risk that the result of the use of the Trade Mark will be that a reasonable person will be caused to wonder whether it might not be the case that clothing bearing the Trade Mark is from the same source as clothing bearing the GERRY WEBER Mark.
55. The potential purchasers of clothing are vast in number, covering all consumers in Australia. As a consequence, the fact that such a large class of people is involved in this assessment lends increased weight to the possibility for confusion to occur. However, clothing consumers tend to take time to assess a brand before purchase[31] and it is less likely that clothing will be requested by oral reference to the trade marks rather than by visual inspection. In my experience, trade marks for clothing are generally displayed on a sewn-in label, swing tag or even on the clothing itself e.g. emblazoned on the front of the clothing. Clothing is also selected by customers from racks and shelves or from photographs online with little or no intervention from sales staff other than to request a size or to try on the product. Therefore, for clothing, visual differences carry the greater weight.
[31] Suzanne Grae Corporation Pty Ltd v Design West Mode Pty Ltd [2019] ATMO 92, [44] (Hearing Officer Cooper); Autumnpaper Ltd v Maya McQueen Pty Ltd [2016] ATMO 53 (Hearing Officer Richards); Hugo Boss AG v Tagmill Pty Ltd [2000] ATMO 23 (Hearing Officer Forno).
56. As Burchett J said in Conde Nast Publications Pty Ltd v Taylor:
This aspect of the matter seems to me to have greater importance 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.[32]
[32] (1998) 41 IPR 505, 510.
57. The Opponent submits that when the Trade Mark is compared to the GERRY WEBER Mark, the overall impression is one of deceptive similarity based on the following:
·the essential element of the GERRY WEBER Mark is the GERRY element. The Trade Mark consists entirely of the word GERRY.
·the GERRY element is the feature that strikes the eye and fixes itself in the recollection of a consumer seeing the marks. It is visually prominent in the GERRY WEBER Mark.
·the GERRY element is the first word and comprises the first two syllables of the GERRY WEBER Mark.
·the additional word WEBER does not diminish or overwhelm the GERRY element such that the visual, aural, and conceptual impression is so far removed from the GERRY Mark that the overall impression of resemblance is sufficiently different. Rather, it reinforces the similarity between the marks because the GERRY element in both marks is visually and aurally identical and is therefore likely to cause confusion amongst consumers.
·even if consumers were to notice and attribute some significance to the difference between the appearance of the marks, having regard to the nature of their overall composition, they may still have cause to wonder whether the Holder’s Goods are a sub-brand or brand extension of the goods of the Opponent.
·purchase of goods for personal adornment is likely to involve attention to detail and the trade marks on such goods may be inspected and considered with care.
58. The Holder submits that:
·the Trade Mark and the GERRY WEBER Mark are significantly different in form and meaning. GERRY is a well-known diminutive of the male given name Gerald or Gerard and the female given name Geraldine. GERRY is not a descriptor of clothing and is not apt to suggest some kind of “qualifier” or product variant. In contrast, GERRY WEBER is a complete name, and will be perceived by consumers as a reference to a specific individual, particularly in the context of clothing.
·the Trade Mark and the GERRY WEBER Mark are significantly different in terms of their visual and aural components including length, syllables and pronunciation.
·there have been multiple office decisions where the difference in the surname of a personal name mark was held to be sufficient to distinguish, such that the marks were held to be not deceptively similar. On this point, the existence of these decisions alone does not determine whether the marks are deceptively similar as there are decisions in this office that have taken different approaches, based on the specific nature of the marks.[33]
·the pattern of using personal names within the Australian fashion industry forms part of the surrounding circumstances within which the marks will be encountered. The reasonable customer will identify fashion brands and labels containing personal names by their entirety to avoid confusion.
·application number 2363425 for the trade mark GERRY LLOYD in class 25 was accepted, notwithstanding the existence of the Application. While I may have regard to decisions made during examination, I am in no way bound by them and must take into account the particular evidence and submissions filed for this opposition.
[33] Such as Chloe SA v Lin Australia Pty Ltd [2006] ATMO 10, (Hearing Officer McDonagh) and Autumnpaper Ltd v Maya McQueen Pty Ltd (n 30).
59. I disagree with the Opponent’s submissions that the essential element of the GERRY WEBER Mark is only the GERRY element, that the GERRY element in the GERRY WEBER Mark is the feature that strikes the eye and fixes itself in the recollection of a consumer seeing the mark and that GERRY is visually prominent in the GERRY WEBER Mark. In my opinion the GERRY WEBER Mark has two essential elements – the forename GERRY followed by the surname WEBER. Both are as visually prominent as the other and both are features which strike the eye. Further, a surname is likely to be remembered more than a forename because surnames tend to have greater importance, providing a sense of identity, connection to family history, and cultural heritage and can be important for legal and administrative purposes, such as in official documents, inheritance, and property rights. Forenames on the other hand are usually a name chosen at the whim of parents.
60. The fact that the marks share the first word GERRY is not sufficient to make the trade marks deceptively similar. While the Trade Mark is wholly encompassed within the GERRY WEBER Mark and GERRY is the first part of the GERRY WEBER Mark, in my opinion, without the surname WEBER, the Trade Mark is different aurally and visually. The GERRY WEBER Mark signifies a person named GERRY WEBER. The Trade Mark however has no such signification. Rather, it signifies a random person called GERRY. From this, it is likely that a consumer of clothing imperfectly recalling the GERRY WEBER Mark is not likely to forget or downplay the significance of the surname WEBER.
61. Further, whilst it is correct that the GERRY element is the first word and comprises the first two syllables of the GERRY WEBER Mark, again this does not mean that the second element, and common surname WEBER, which is also two syllables, will be ignored and not recollected by a consumer.
62. While the Holder submits that there is a ‘pattern’ of using personal names within the Australian fashion industry and the current fashion environment is ‘saturated’ with personal name marks, where only twenty seven examples have been provided, and not all of these comprise just personal names, this does not allow a conclusion of a pattern nor saturation. Regardless, I am satisfied from the Holder’s evidence together with my own knowledge, that there are indeed a number of clothing brands which use personal names, be they one or more forenames or surnames or a combination of both forenames or surnames. As such, clothing consumers would appreciate differences between marks for which there may be overlap in a forename or surname and may therefore be less likely to be caused to wonder.
63. The test for confusion is whether a person ‘might be caused to wonder’ whether the goods originate from the same source, and there must be ‘a real, tangible danger’ of it occurring. The enquiry asks whether a prospective purchaser with an imperfect recollection of the GERRY WEBER Mark, upon seeing clothing offered under the Trade Mark, is likely to be caused to wonder whether those goods emanate from the Opponent (or vice versa). For example, if an ordinary consumer of ordinary intelligence bought a GERRY WEBER jacket in the immediate past, and a few weeks later saw a jacket labelled with the trade mark GERRY, is that consumer likely to assume a trade connection between the two? In my view, the answer to this is no. Nor do I consider a greater passage of time likely to materially affect this assessment: the WEBER element is likely to be recalled, even if imperfectly.
64. I therefore find that the Trade Mark is not deceptively similar to the GERRY WEBER Mark and that the Opponent has not made out a ground of opposition under s 44.
65. Having found that the Trade Mark is not deceptively similar to the GERRY WEBER Mark, given that the trade mark of registration 961855 is for the identical mark and registration 1203806 contains further distinguishing material, namely the letters G. W. and the word ‘by’, I am also satisfied that the Trade Mark is not deceptively similar to trade mark registrations 961855 and 1203806.
Section 60
66. The provisions of s 60 are reproduced below:
Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, 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: For priority date see section 12.
67. To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
68. The SGP identifies that the GERRY WEBER Mark has been continuously and extensively used throughout the world since 1986 and in Australia since at least 1990 and as a result, the the GERRY WEBER Mark has acquired a significant reputation in Australia such that use of the Trade Mark is likely to deceive or cause confusion.
Reputation
69. The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[34]
[34] [2000] FCA 1335, [81] (‘McCormick’).
70. Further, Kenny J stated in McCormick that:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product ... public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[35]
[35] Ibid [86].
71. The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[36] Here given the nature of the parties’ goods are clothing, the relevant market is considerable being Australians who purchase clothing. Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[37]
[36] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
[37] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [77] (Lockhart J).
72. In Rodney Jane Racing Pty Ltd v Monster Energy Company (‘Rodney’), it was observed that:
The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[38]
[38] [2019] FCA 923, [83] (‘Rodney’) (O’Bryan J).
73. The Opponent submits that the EIS establishes a reputation in the GERRY WEBER Mark in Australia as at the Relevant Date, in connection with clothing, footwear and headgear. I note however that nothing in the Ward Declaration shows use of the GERRY WEBER Mark on footwear.
74. The Holder submits that the Opponent has not established that the GERRY WEBER Mark had, before the Relevant Date, acquired a reputation in Australia. Moreover, even if reputation was made out, it cannot be argued that because of that reputation, use of GERRY on the Holder’s Goods by the Holder would be likely to deceive or cause confusion.
75. The Holder criticises much of the Opponent’s evidence as it is after the Relevant Date. I agree with the Holder and have provided my comments on the Opponent’s evidence when summarising the EIS. The evidence dated after the Relevant Date is of limited value in establishing a reputation within Australia at the Relevant Date.
76. The evidence which supports a claim to use of the GERRY WEBER Mark before the Relevant Date comprises:
·five invoices to three Australian retailers showing sales of limited clothing items.[39] While the Holder is critical of these invoices as they are not headed solely with the GERRY WEBER Mark but also display three of the Opponent’s other marks, this criticism is unfounded. I see that the invoice clearly displays the GERRY WEBER Mark as a subheading, under which the particular items of clothing and sales prices etc appear.
·lists of independent retailers in Australia.[40]
·use of the GERRY WEBER Mark on ladies clothing.[41]
·two GERRY WEBER branded retail stores in Sydney.[42]
·reasonable sales figures.[43]
·low to negligible advertising figures.[44]
[39] Ward Declaration, Annexure 3
[40] Ward Declaration, Confidential Annexure 2.
[41] Ward Declaration, [9].
[42] Ward Declaration, [17]-[19].
[43] Ward Declaration, Confidential Annexure 17.
[44] Ward Declaration, Confidential Annexure 16.
It is difficult to determine the breadth of the public that are likely to be aware of the GERRY WEBER Mark based solely on the above. While the sales figures are reasonable, the advertising figures are not. No strong evidence of advertising or promotion before the Relevant Date has been provided nor is there evidence of the awareness in Australia of any advertising or promotion, before or even after the Relevant Date.
As observed by O’Bryan J in Rodney,[45] the reputation of a trade mark has quantitative and qualitative dimensions. Here there is evidence from the Opponent of sales figures, advertising expenditure and evidence of use of the GERRY WEBER Mark. Given the limited outlets where the GERRY WEBER branded goods have been sold and given the Opponent’s Goods appear to be at the higher price point category of the clothing industry (between mass market and haute couture) based on the cost of a T shirt being $150, the breadth of the public here is likely to only be a subset of clothing purchasers per se, namely premium clothing purchasers.
It is the evidence relating to the qualitative dimension where the Opponent’s evidence is lacking in detail. There is little evidence which concerns the image and values projected by the GERRY WEBER Mark, and therefore the esteem or favour in which the GERRY WEBER Mark is held by the public generally.
In my assessment of the evidence, I am satisfied that the Opponent had a reputation in the GERRY WEBER Mark at the Relevant Date in the premium clothing fashion industry but not one sufficient to trigger s 60.
The Opponent has not demonstrated that the GERRY WEBER Mark has acquired a reputation in Australia because of which the use of the Trade Mark would be likely to deceive or cause confusion. For the same reasons detailed above under the s 44 ground of opposition, the GERRY WEBER Mark and the Trade Mark do not share a significant degree of similarity. The GERRY WEBER Mark has two essential and visually prominent elements which both strike the eye – the forename GERRY followed by the surname WEBER. The second element WEBER will not be ignored by a consumer. Visually and aurally the differences between the respective trade marks GERRY WEBER and GERRY are sufficient to differentiate the trade marks from each other. I do not believe that the reputation the Opponent holds in its GERRY WEBER Mark is sufficient to overcome the differences in the trade marks.
[45] Rodney (n 38) [83].
The Opponent has accordingly not established its ground of opposition under s 60.
Section 42(b)
83. Section 42(b) provides that a trade mark must be rejected if its use would be contrary to law.
84. The Opponent’s SGP asserts that use of the Trade Mark would be contrary to ss 18 and 29 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010 (Cth). Additionally, the Opponent asserts that use of the Trade Mark would amount to the common law tort of passing off and/or trade mark infringement.
85. The Opponent’s submissions are silent on trade mark infringement. While the Opponent’s submissions are silent, for completeness, pursuant to s 125, an action for an infringement of a registered trade mark may be brought in a prescribed court or any other court that has jurisdiction to hear the action. An opposition proceeding before the Registrar is not a proceeding before a court. As such:
[I]t is unlikely that the Delegate has the jurisdiction to hear a section 120 action by virtue of section 42(b). In any event, the wording and effect of section 120 is similar to sections 44 and 60 of the Act. If it were appropriate for me to determine s120 (and I am of the view that it is not), the issues have already been adequately covered by the other grounds of opposition.[46]
ACL and Passing Off
[46] Parkside Towbars Pty Ltd v Tow-Safe Pty Ltd [2011] ATMO 17, [38] (Hearing Officer Wilson).
86. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. These are stricter requirements than s 60 which can be established if the use is likely to cause confusion or wonderment.[47]
[47] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44 [8] (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).
87. Where use of a trade mark does not contravene s 18 of the ACL neither will it amount to the tort of passing off.
88. The Opponent seeks to rely on the reputation I have already discussed in relation to the s 60 ground of opposition. Where a ground of opposition under s 60 is unsuccessful, reputation-based claims under ss 18 and/or 29 of the ACL will also fail, as will proceedings for passing off.[48]
[48] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 (Hill J); Riding for the Disabled Association of Australia Limited v Pony Club Australia Pty Ltd [2019] ATMO 63, [63]-[64] (Hearing Officer Richards).
89. The Opponent has accordingly not established its ground of opposition under s 42(b).
Section 62A
90. Section 62A provides:
Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith
91. The SGP provides that the Opponent has made extensive use of its GERRY WEBER Mark throughout the world including Australia. Thus, the Holder would have been aware at the time of filing the IRDA of the Opponent’s prior rights.
92. For this ground of opposition, I am required to decide what the Holder knew at the time of filing the IRDA and then, in the light of that knowledge, whether the act of filing the IRDA fell short of acceptable commercial behaviour.[49]
[49] See Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [143]-[167] (Dodds-Streeton J).
93. The Holder claims the Trade Mark was adopted by the Holder’s predecessor in title in 1946 which is decades prior to the adoption of the GERRY WEBER Mark by the Opponent. There is no evidence that the Application was filed in bad faith.
94. I agree with the Holder. The Holder’s evidence provides details of the adoption of the Trade Mark in 1946 initially for outdoor equipment and later around 1960 for clothing. The GERRY WEBER Mark was only adopted in 1986. There is nothing in the Opponent’s evidence that might support an argument that the Holder filed the IRDA in bad faith. At any rate, ‘mere knowledge before the relevant date of another person’s trade marks, without more, does not in itself constitute the basis for a finding of bad faith’.[50]
[50] 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12, [64] (Hearing Officer Thompson).
95. As such, I am not persuaded that the Opponent has discharged the onus of establishing that the Holder applied for the Trade Mark in bad faith. Therefore, the Opponent has not established the ground of opposition under s 62A.
Decision
96. Section 55 relevantly provides:
Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
97. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade mark application number 1754848 may proceed to registration not less than one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the Application should be in accordance with the Court’s order or direction.
Costs
Both parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.
Anne Makrigiorgos
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
3 April 2024
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