Gilmar SpA v Bondi Iceburgs Club Co-Op Limited

[2008] ATMO 101

TRADE MARKS ACT 1995

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

Re:Opposition by Gilmar SpA to registration of trade mark applications 985201, 985203(25) - BONDI ICEBERGS, BONDI ICEBERGS DEVICE - filed in the name of Bondi Icebergs Club Co-Op Limited

Delegate:

Terry Williams

Representation:

Opponent: Margaret Ryan, solicitor, Phillips Ormonde Fitzpatrick, patent attorneys

Applicant: Julia Baird of counsel, Tyrilly Bolton, solicitor, Swaab attorneys

Decision:

2008 ATMO 101

S 52 opposition: s 44 deceptive similarity not established, s 58 not established, registration proceeding

Background

1. Bondi Icebergs Club Co-Op Limited (“the applicant”) has applied to register two trade marks.  Trade mark application 985201 is for the words BONDI ICEBERGS.  Trade mark application 985203 is for the following device:

1. Both applications are in class 25 and now seek registration in respect of “Clothing goods for men and women being swimming caps, t-shirts, long sleeved sweatshirts, jumpers, swimming costumes, casual and sports clothing”. 

Acceptance of applications

1. These applications have been examined at the Trade Marks Office and advertised as having been accepted for possible registration. The applications have been endorsed to show that they have proceeded to acceptance under the provisions of s 44(4)[1] of the Trade Marks Act 1995 (“the Act”).  Put simply, this provision, if correctly applied, would authorize the acceptance of these applications in the face of various prior and conflicting trade marks identified by the examiner of trade marks.  Relevantly, the examiner of trade mark identified the following trade marks:

   [1] It is not entirely clear if s 44(3), the honest concurrent use provision, was also involved.  The endorsement does not reflect this, but the provision was mentioned in correspondence sent to one of the owners of the trade marks in question, alerting them to the acceptances.

Number/relevant goods	Trade mark	Owner and priority date
844919 footwear	ICEBERG	Seminvest Investments B.V. ditto (priority date 16.11.79)
844920[2] footwear	ICEBERG	ditto (priority date 17.10.89)
340214 All goods in this class inclusive of articles of clothing but excluding footwear	ICEBERG	Gilmar S.p.A. ditto (priority date 16.11.79)
455168 Clothing, footwear, headgear	ditto (priority date 12.11.86)
455172 Clothing, footwear, headgear	ditto (priority date 12.11.86)
521214 All goods in class 25 excluding footwear	ICEBERG	ditto (priority date 17.10.89)
948262 Clothing, footwear, headgear, for men, women and children	ICE ICE ICEBERG*	ditto (priority date 14.1.03)

[2] Trade mark registrations 844919 and 844920 were created by the assignment of rights with respect to part of the goods formerly specified by registrations 340214 and 521214 respectively – s 106(2).  Despite their higher registration numbers, they have the dates of the registrations from which they were derived.

* This trade mark is a protected international trade mark.  It is not a series of trade marks, despite its appearance.

Opposition proceedings

1. Registration of the application is opposed by Gilmar SpA (“the opponent”). The terms of s 52 of the Act allow for such a contingency.

2. Both parties have used the process set out in the regulations under the Act to serve and file evidence to further their respective positions. Ultimately, I was assigned to hear and decide this matter under delegation from the Registrar of Trade Marks.

3. At the hearing, the applicant was represented by Julia Baird of counsel instructed by Swaab attorneys, the opponent being represented by Margaret Ryan, solicitor and trade marks attorney. 

4. At the hearing of this matter, I granted permission to the opponent to rely on, as further evidence, certain pages of a copy of a book entitled Bondi Icebergs, An Australian Icon, BB Publishing, 2004 (“the book”) by Malcolm Andrews.  The book was provided to them by the applicant’s lawyers in the run-up to the hearing, to show in greater clarity various photographs that are copied in their evidence.  The opponent also sought leave to introduce into the opposition proceedings the evidence relied on by the applicant at the examination stage.  It is said by Ms Ryan that the book would allow certain statements made by the applicant, during examination and in order to gain acceptance, to be seen as “false in material particulars”, pursuant to the ground of opposition under s 62.  Specifically, it is said that the applicant has not disclosed that the figure for “trophies prizes etc” includes goods other than clothing.  Perhaps more seriously, Ms Ryan noted that the applicant’s evidence in the present forum describes (now) as “Cost of merchandise given away as prizes" that which was described previously, by the applicant in the examination process, as being “the value of sales”.

5. However, I think that this search for falsehood is redundant in the present context.  I am required by s 55 to decide whether to register these trade marks or not, having regard to the extent to which a ground is established.  The mere fact of falsity in material particulars would not necessarily trigger a refusal.  While it is obviously undesirable, as Ms Ryan argued, that applicants put untruths or misdescriptions before the examiner, my enquiry under s 55 would still be, at the end, “Now that the truth can be better seen, should I register, or not?”  I was satisfied that this test would provide an adequate remedy in the present case and I refused permission for the material relied on before the examiner to come in.  As it has turned out, this will have no effect at all on the outcome, for reasons that will become apparent.

Grounds of opposition

1. In its notices of opposition the opponent specified the usual multiplicity of grounds.  However, before the hearing Ms Ryan indicated that the opponent would press only the grounds under sections 58, 44 and 60, and 62(b).  It will be convenient to deal with s 44 first of all, as my conclusions under this heading will dispose of all the grounds relied on.  For the sake of completeness I say now that the grounds not pressed have not been established.

Section 44

1. In its notices of opposition the opponent specified three trade mark registrations on which it proposed to rely:  521214, which it owns, and 844919 and 844920, the latter being registrations in respect of footwear only and now owned by a third party, Seminvest Investments B.V.  However, in her outline of submissions Ms Ryan stated that the opponent relies principally on registration 340214.  I will deal with the applicant’s two trade mark applications separately.

Application 985201 – BONDI ICEBERGS

1. The key element to s 44(1), since the other aspects of this ground are beyond dispute, is: that the applicant's trade mark is substantially identical with, or deceptively similar (s 10) to that of another party.  Those questions will also dispose of sections 58 and 60.

2. I note Ms Ryan’s argument that this trade mark is substantially identical to ICEBERG, the subject of, in particular, registration 340214.  She argued this by direct analogy with CHILL and CHOC CHILL, at issue in PBFoods Ltd v Malanda Dairyfoods Ltd (1999) 47 IPR 47. I think that this argument is extreme. It simply cannot be that the word “Bondi” is analogous to the element “choc”. The latter was unambiguously identified, in the registration relied on in that case, as a descriptive element that would be varied when the trade mark was used on other goods contained within the scope of the registration.

3. Ms Ryan subsequently argued that the element BONDI is evocative.  She drew analogy here with COLORADO, at issue in Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 74 IPR.  Ms Ryan further relied, on the question of deceptive similarity, on Polo Textile Industries Pty Ltd  v Domestic Textile Corporation Pty Ltd (1993) 26 IPR 246, to which I will come. Indeed, she said that this was a case much like VapoRub, found to be infringed by KARSOTE VAPOUR RUB, see De Cordova v Vick Chemical Co (1951) 68 RPC 103. As to this, she argued that Karsote added much to Vapo(ur) Rub, but that “Bondi”, notoriously a geographical name, added little or nothing to the word ICEBERGS. “Bondi”, she said, was utterly descriptive, evoking images of beach, sand, surf, swimming and a casual lifestyle.

4. However, I think that the isolated assessment of what Bondi might mean is not at the core of the issue.  What is at issue is how that element, in conjunction with ICEBERGS, might affect the comparison of the applicant’s trade mark with ICEBERG simpliciter.  Similarly in de Cordova v. Vick Chemical Co. supra.  There, the dispute was whether the expression "Karsote Vapour Rub" infringed the registered trade mark "Vicks VapoRub Salve".  Lord Radcliffe said, at 105-106:

   ...but a mark is infringed by another trader if, even without using the whole of it upon or in connection with his goods, he uses one or more of its essential features.  The identification of an essential feature depends partly on the Court's own judgment and partly on the burden of the evidence that is placed before it.  A trade mark is undoubtedly a visual device; but it is well-established law that the ascertainment of an essential feature is not to be by ocular test alone.  Since words can form part, or indeed the whole of a mark, it is impossible to exclude consideration of the sound or significance of those words. Thus it has long been accepted that, if a word forming part of mark has come in trade to be used to identify the goods of the owner of the mark, it is an infringement of the mark itself to use that word as the mark or part of the mark of another reader, for confusion is likely to result... [T]heir Lordships think that 'VapoRub' must be treated as an essential feature [of the trade mark], and that the Appellants have infringed the mark by selling their ointment under the designation 'Karsote Vapour Rub'; for the word 'Karsote' prefaced to 'Vapour Rub' is quite insufficient in itself to dissolve the confusion that is bound to arise from associating the Appellants' goods with a word so distinctive as 'Vapour Rub'.

5. For all that the word ICEBERG(S) forms part of the applicant’s trade mark, I do not accept that, when correctly seen, the trade mark ICEBERG is deceptively similar to BONDI ICEBERGS.  Bondi, a well-known Sydney beach, is new and striking in relation to the element “icebergs”.  I think it is obvious that Bondi is not a place where icebergs are found.  As a whole, BONDI ICEBERGS is a new and memorable “corporate” entity.  Even if that were not so from first principles, I think I could take note of the fact that the winter swimming activities that were the origin of the original expression BONDI ICEBERGS are well-known, and have been well-known for a considerable period of time, to what I am satisfied would be a wide cross-section of ordinary Australians[3]. 

   [3] See, for example, how questions of fame coloured the comparison of THORPEDO and TORPEDOES in Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd (2003) 59 IPR 318.

6. Leaving that aside, however, the ordinary rules of deceptive similarity need to be applied with care appropriate to each case.  It will not do to say that, since Bondi is descriptive of the location of the applicant’s headquarters, it somehow disappears from the applicant’s trade mark.  Far from it.  The applicant’s trade mark 985201 is not analogous to a “descriptive” expression, for example CHINESE ICEBERGS, which, perhaps, might mean, to the ordinary Australian, “an ICEBERG product (of the opponent) that is now made in China”.

7. The findings of Lord Radcliffe in De Cordova, supra, were applied by Burchett J in the Polo case supra, at 251, on which Ms Ryan relied. In doing so, his Honour was called upon to consider whether POLO, solus, had been infringed by POLO CLUB. He found that (my emphasis) "it is plain that the word 'Polo' must be an essential feature of the [registered owner's] mark, since it is the whole of the mark.”  Polo, in logic, is the essence of a Polo Club and, as Ms Baird argued, the first element in both trade marks there at issue was identical.  I do not think that the finding that was open to Burchett J there would authorize an equivalent conclusion here. 

8. I do not agree with Ms Ryan’s supplementary argument that BONDI ICEBERGS is the sort of quirky or humorous usage that the opponent is known to make, for example, with designs featuring the cartoon characters of the Pink Panther and Micky Mouse.  She took me to the detail of the opponent’s relatively modest Australian sales, and to its advertising.  While no doubt having a significant niche market in expensive clothing of the sort most typically advertised in overseas fashion magazines, the opponent’s trade marks are not, I believe, widely known to the ordinary Australian public in any context at all, humorous or otherwise.  It follows that I also do not believe that Ms Ryan was correct to argue that the evidence shows that the opponent is regarded, to any significant degree, as being the owner of a family of trade marks.  It has registered a number of trade marks but the evidence does not support the finding that the extent of usage of any of them would modify the ordinary or notional comparison of one trade mark with another. 

9. I note, in saying this, that the opponent complains of usage - there are many examples in the evidence - where the element BONDI is smaller than the ICEBERGS element.  That may be so, but its presence is still clear enough to strongly flavour the identity in question and preclude deceptive similarity.  I do not think that the applicant’s tendency to reduce the prominence of the BONDI element is anything more than a normal commercial tendency to vary the look of a trade mark as part of honest and ordinary usage of the whole trade mark.

10. Ms Ryan has noted the obvious tendency of the applicant to refer to both the swimming club and its members as “icebergs”.  I can appreciate how this would offend the sensibilities of the opponent, but I do not think that it overly colours the comparison of the trade mark as sought to be registered with those of others.  For all that there will, understandably, be a degree of abbreviation when the applicant is referred to in colloquial usage, the trade mark under which it relevantly seeks to trade in clothing and which it now proposes to register is BONDI ICEBERGS.

11. It is true, as the opponent’s evidence shows, that the applicant has apparently been quite reckless in allowing itself to become associated with the selling of clothing under the trade mark ICEBERGS.  That is something that it may perhaps wish to reassess.

Application 985203 - the applicant’s logo device

1. Ms Ryan did not argue that the applicant’s logo device was substantially identical to any of the trade marks registered either by the opponent or anyone else.  She relied, however, on deceptive similarity to, in particular, 455172, which I will refer to as the ICEBERG SPORT-ICE logo.  Here, she argued, there was a multiplicity of elements in common with the applicant’s logo device:  the word ICEBERG, the device of an iceberg, the device of a polar bear and, contextually, the word SPORT.  This latter, she argued, would interlock with the existence of CLUB within the applicant’s logo device, both trade marks therefore giving a broad context of “a sporting club”.

2. Ms Baird, in addressing this, stressed there were significant detail differences.  I will not list these, because the matter does not turn on detailed comparisons.  The effect of the element BONDI in this comparison cannot be ignored.  The prominent B device simply adds emphasis to this but ultimately the element BONDI speaks for itself.

3. I note Ms Ryan’s arguments that "While it [the device] cannot be ignored, consumers will more naturally refer to the word portion of the trade mark when ordering a product": Chris-Telle Pty Ltdv Australian Swimming Inc (2004) 64 IPR 110 at 117. Even where goods are selected by the customer rather than requested over a shop counter aural presentation is still important "as both aural and visual presentation are combined in television advertising". She noted also Johnson & Johnson v Kalnin (1993) 26 IPR 435 at 439; cf Havana Club Holding SA v Pac-Rim Management Services Ltd (1998) 43 IPR 177 at 180181. However, those cases go only so far.

4. In Chris-Telle, the delegate noted, of an application to register the following device:

   I agree that the word “dolphin” is a major part of both trade marks, in one case constituting the trade mark in total. However, I also agree that the device of three stylised dolphins cannot be simply ignored. While it cannot be ignored, consumers will more naturally refer to the word portion of the trade mark when ordering a product, and Dolphin versus Dolphins is close enough to give rise to deception even though the accompanying device in the subject trade mark is not an ordinary depiction of a dolphin. In considering this I am mindful of cases such as Leroy SA v Regal Grange Pty Ltd (2001) 51 IPR 199 where “leroy” and “lefroy valley plus device” were found to be in conflict, and Havana Club Holdings SA v Pac-Rim Management Services Ltd (1998) 43 IPR 177 wherein “havana club plus device” and “club havana of Canberra” were considered deceptively similar. I consider “dolphins and device” and dolphin to be in the same category of trade marks as these prior cases.

5. It will be recalled that, in Conde Nast Publications Pty Ltd v Taylor, (1998) 41 IPR 505, Burchett J was able to find that the registered trade mark VOGUE was not deceptively similar to the applicant’s trade mark, as follows:

1. Before going on to consider the Polo case, supra, he said:

   ‘Eurovogue’, though containing ‘Vogue’ as a syllable, does so in a new word with a new meaning.

2. I note that, in the current matter, the element ICEBERG is not reduced to a “syllable” of the applicant’s trade mark.  However, its presence, within the expression BONDI ICEBERGS, remains an example of what I described in Stokely-Van Camp, Inc v Alexander Hutton [1999] ATMO 123: a good example of how elements of one trade mark may safely consist of some that are in common with another mark, provided that they are safely defused and buried in a new composite[4]. Again, and without repeating the core of my previous comments in relation to application 985201, deceptive similarity is not established. In my view this is simply not a case that can be reduced to “dolphin versus dolphins is close enough”. Nor is it within the class of cases where similarity of broad impression would lead to confusion, unlike BANDAID and  [5].

   [4] Note also the relevance, now, of the onus being on the opponent to establish deceptive similarity, not on an applicant to negate it.

   [5] Johnson & Johnson v Kalnin (1993) 26 IPR 435

3. I find that the relevant trade marks of the applicant are not deceptively similar to those of the opponent or of Seminvest Investments B.V.  The section 44 ground has not been established.

4. Given the pre-amendment terms of s 60, that latter ground is also not established.

Ownership – section 58

1. This ground of opposition, which Ms Ryan relied on in relation only to application 985201, BONDI ICEBERGS, is contingent on my accepting Ms Ryan’s premise that this trade mark is substantially identical to ICEBERG.  I have found that this is not so, and accordingly the opponent has not established this ground.

Accepted on basis of false representations- section 62(b)

1. My finding that s 44(1) is not established renders any conclusions on this topic redundant, since the issue would hinge on the proper application of s 44(3) or (4), had it been necessary for me to do so.  The ground of opposition under s 62 is not established.

Conclusion and costs

1. No ground of opposition has been established. I will remove the endorsement referring to the provisions of s 44(4). The trade mark applications may thereafter proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal has been withdrawn or registration is so ordered by the court.

1. I direct that the opponent pay the applicant’s costs as per the scale in the regulations.

T. E. Williams

Hearing Officer

Trade Marks Hearings

18 December 2008