Giorgio Armani S.p.A v Arman's Fine Jewellery Pty Ltd
[2022] ATMO 198
•14 November 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Oppositions by Giorgio Armani S.p.A to registration of trade mark application numbers 2021554 – Arman's Fine Jewellery, 2021555 – Armans Jewellery, 2021556 – Arman Jewellery, 2021557 – Armans – all in classes 14 and 42 in the name of Arman's Fine Jewellery Pty Ltd
| Delegate: | Nicholas Barbey |
| Representation: | Opponent: Justine Beaumont of counsel instructed by Minter Ellison Applicant: Michael Hall SC of counsel and Jessie McKenzie of counsel instructed by Martin Street Lawyers |
| Decision: | 2022 ATMO 198 Trade Marks Act 1995 (Cth) – oppositions under s 52 – ss 42(b), 44, 58 and 60 pursued – s 44 established in respect of all trade marks – evidence insufficient – registration of trade marks refused. |
Background
This decision concerns oppositions brought by Giorgio Armani S.p.A (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade marks (collectively ‘Trade Marks’):
Trade Mark: Arman’s Fine Jewellery (‘54 Mark’)
Application Number: 2021554
Owner: Arman's Fine Jewellery Pty Ltd (‘Applicant’)
Priority Date: 8 July 2019
Specification: Class 14: jewellery
Class 42: design of jewellery
(‘Claimed GS’)
Trade Mark: Armans Jewellery (‘55 Mark’)
Application Number: 2021555
Owner: Applicant
Priority Date: 8 July 2019
Specification: Claimed GS
Trade Mark: Arman Jewellery (‘56 Mark’)
Application Number: 2021556
Owner: Applicant
Priority Date: 8 July 2019
Specification: Claimed GS
Trade Mark: Armans (‘57 Mark’)
Application Number: 2021557
Owner: Applicant
Priority Date: 8 July 2019
Specification: Claimed GS
The acceptance of each trade mark for possible registration was advertised on 10 January 2020. The Opponent filed notices of intention to oppose each of the trade marks on 10 March 2020 followed by Statements of Grounds and Particulars (‘SGPs’) on 9 April 2020. The Applicant filed notices of intention to defend on 7 July 2020.
Evidence in Support (‘EIS’) was filed by the Opponent and the Applicant filed Evidence in Answer (‘EIA’). In turn, the Opponent filed Evidence in Reply (‘EIR’) and an oral hearing was requested. Submissions were filed by the Opponent on 1 August 2022 (‘Opponent’s Submissions’) and by the Applicant on 8 August 2022 (‘Applicant’s Submissions’). In addition to its submissions, the Applicant filed additional evidence (‘Late Evidence’) which is addressed below.
As a delegate of the Registrar of Trade Marks, I heard this matter by video conference on 15 August 2022. Justine Beaumont of counsel presented submissions on behalf of the Opponent and Michael Hall SC and Jessie McKenzie, both of counsel, presented submissions on the Applicant’s behalf.
Grounds of opposition, onus and standard of proof
The SGPs nominated grounds of opposition under ss 42(b), 44, 58, 60 and 62A of the Act. However, s 62A was not pressed in the Opponent’s Submissions or at the hearing. As such, I treat the ground under s 62A as abandoned.
To be successful, the Opponent bears the onus of establishing at least one of the grounds.[1] If a ground of opposition is established in relation to all of the Trade Marks, consideration of the remaining grounds is not required. The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 8 July 2019 (‘Relevant Date’), being both the filing and priority date of each application.
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot
Evidence
The following declarations were filed as evidence:
| EIS |
|
| EIA |
|
| EIR |
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| Late Evidence |
|
[3] Mr Arzumanian declares that he is the sole director of the Applicant. However, as counsel for the Opponent highlighted at the hearing, the Australian Securities and Investments Commission extract exhibited to the Arzumanian Declaration also lists ‘Nadia Arzumanian’ as a director of the Applicant.
EIS
Croce 1 describes the Opponent as ‘a globally renowned luxury fashion house’ which ‘controls the various business entities globally that comprise the Armani Group’.[4] The Opponent first launched its ‘men's and women's ready-to-wear in line in 1975’ and since that time it has ‘continuously designed, manufactured, distributed or retailed a range of high-end fashion and lifestyle products worldwide under the ARMANI brand or brands that include the word ARMANI’.[5] It is declared that these products include ‘jewellery, watches, clothing, eyewear, fragrances and cosmetics’.[6]
[4] Croce 1, [13].
[5] Ibid [14]–[15].
[6] Ibid [16].
According to Croce 1, the Opponent ‘owns a number of registered and unregistered trade marks in Australia and worldwide containing the word ARMANI’.[7] This includes the registration of the ‘ARMANI trade mark in over 170 countries’.[8] Relevantly, the Opponent’s Australian trade mark registrations which incorporate the word ‘ARMANI’ include (collectively ‘Opponent’s Marks’):
[7] Ibid [21].
[8] Ibid [26].
| Number | Trade Mark | Class(es) | Priority Date |
| 318951 | GIORGIO ARMANI | Class 25: clothing articles for men and women, in particular suits and dresses, jackets, cloaks, coats, trousers, tailleurs, waistcoats, mantles, skirts, scarves, foulards, ties, belts | 8 June 1978 |
| 318954 | GIORGIO ARMANI | Class 14: imitation jewellery, in particular bracelets, eardrops, brooches, necklaces, rings, watches | 8 June 1978 |
| 755805 | ARMANI (‘Word Mark’) | Class 3: bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices Class 9: scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus Class 14: precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments Class 18: leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery Class 25: clothing articles, footwear, headwear | 24 February 1998 |
10. Goods bearing the words ‘GIORGIO ARMANI’ were first sold in Australia in 1976 and the Opponent currently provides various Armani branded goods in Australia including jewellery, clothing and eyewear.[9] These are sold via its website accessible at armani.com (‘Website’) as well as through 74 physical stores across Australia. Promotion of the Armani branded goods occurs via the Opponent’s social media accounts and also on the Website.
[9] Ibid [27]–[28].
11. Croce 1 details the Opponent’s revenue figures derived from ‘the provision of goods (including jewellery) in Australia by reference to the ARMANI Logo and ARMANI Trade Mark between 2014 and 2019’.[10] The figures, which are provided in Euros, are substantial. The same is true of the Opponent’s Australian advertising expenditure between 2014 and 2019. Croce 1 submits that ‘the ARMANI brand is well-known both internationally and within Australia’.[11] To this end, reference is made to its consistent placement on various global brand ranking lists as illustrating ‘the great extent to which consumers across the world connect with, value and recognise the ARMANI brand’.[12]
EIA
[10] Ibid [32].
[11] Ibid [51].
[12] Ibid [54].
12. According to the Prats Declaration, ‘ARMANS’ was first used by the Applicant in 1986 and it is an eponym for the Applicant’s founder, Arman Arzumanian.[13] Ms Prats declares that the Armans business is family owned and has traded from a physical Sydney city location since its inception. In Ms Prats’ view, the Armans business has a ‘reputation for fine jewellery and for engagement rings in particular’.[14]
[13] Prats Declaration, [9].
[14] Ibid [14].
13. The Prats Declaration addresses the grounds of opposition nominated in the SGPs and is better characterised as submissions rather than evidence. Broadly, Ms Prats contends the Opponent’s reputation in Australia is not in ‘ARMANI’ solus. Rather, any reputation enjoyed in Australia ‘is linked to the Giorgio Armani and Emporio Armani composite phrase trade marks’ and it does not extend to luxury jewellery.[15] Ms Prats undertakes a comparison of the relevant marks and claims that the Trade Marks are not substantially identical with, or deceptively similar to any of the Opponent’s Marks.[16] Regardless, Ms Prats opines that the Trade Marks would qualify for acceptance under the provisions of honest concurrent use or prior continuous use.[17] The Prats Declaration also rejects the contention that the Applicant is not the owner of the Trade Marks[18] and asserts that the EIS fails to establish that ‘ARMANI’ had acquired a reputation in Australia in respect of jewellery at the Relevant Date.[19]
EIR
[15] Ibid [29]–[31].
[16] Ibid [41]–[63].
[17] Ibid [65].
[18] Ibid [92].
[19] Ibid [103].
14. Croce 2 responds to the Prats Declaration. Emphasis is placed on the fact that the EIA is provided by the Applicant’s legal representative and not an officer of the Applicant.[20] In Mr Croce’s view, Ms Prats has failed to identify the source of the information disclosed in her declaration particularly in relation to the Applicant’s claimed turnover and marketing expenditure.
[20] Croce 2, [8].
15. Croce 2 is critical of the claimed use of ‘ARMANS’ and notes that the Applicant’s store is located approximately 500 metres away from the Opponent’s store.[21] Attention is drawn to the absence of any marketing materials or particulars in the Prats Declaration that would support the claimed expenditure.[22] Croce 2 asserts that all of the Opponent’s trade marks ‘belong under the ARMANI umbrella’ and submits that due ‘to the significant reputation that the Opponent's ARMANI trade mark has acquired it is commonplace for consumers to refer to any goods including jewellery that are provided by reference to any of these names as ARMANI goods’.[23]
[21] Ibid [10].
[22] Ibid [12].
[23] Ibid [13].
16. Croce 2 states that ‘due to the reputation that the Opponent's ARMANI trade mark has acquired in Australia and worldwide I would expect that consumers in general would consider that any ARMANI branded goods are luxury goods regardless of their price’.[24] It also claims that the Opponent ‘has extensively promoted its ARMANI jewellery through magazines in Australia for many years prior to 2012’ and this includes ‘well-known celebrities wearing the Opponent's ARMANI jewellery’.[25]
Late Evidence
[24] Ibid [22].
[25] Ibid [23]–[24].
17. The Arzumanian Declaration affirms the contents of the Prats Declaration and exhibits a document summarising the Applicant’s profit and loss ‘commencing from end of financial year 2017 to year 2022’ (‘Statement’).[26] At the hearing, the Opponent objected to the inclusion of the Late Evidence. Relevantly, it claimed that the Late Evidence, being filed approximately one week prior to the hearing, raised issues of procedural fairness. The Opponent further observed that the Statement rose no higher than a bald assertion that the disclosed figures relate to use made under one or more of the Trade Marks. In response, the Applicant submitted that consideration of the Late Evidence did not inconvenience the Opponent because, aside from the Statement, it merely corroborates the evidence set out in the Prats Declaration. In its view, the overlying public interest favoured consideration of the Late Evidence.
[26] Arzumanian Declaration, [3].
18. I consider the Opponent’s position to be more compelling particularly given the principal issue sought to be remedied by the Arzumanian Declaration was first raised in September 2021.[27] Additionally, the delay in filing the Arzumanian Declaration is largely unexplained. In any event, I have reviewed the Late Evidence and it is not crucial to the outcome of this opposition. As such, I give the Late Evidence no weight.
Discussion
[27] Being the month in which the EIR was filed and which put the Applicant on notice regarding the unidentified source of the Applicant’s internal business information disclosed in the Prats Declaration.
Section 44
19. Section 44 of the Act relevantly provides:
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.
...
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
…
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
...
(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
20. To establish this ground, the Opponent must identify at least one trade mark which satisfies the following requirements:
it is in the name of a person other than the Applicant (‘First Requirement’);
it has a priority date which is earlier than the priority date of the Trade Marks (‘Second Requirement’);
it is in respect of goods and/or services which are either similar and/or closely related to the Claimed GS (‘Third Requirement’); and
it is substantially identical with, or deceptively similar to, the Trade Marks (‘Fourth Requirement’).
21. The SGPs identified Australian trade mark registration 755805, being for the Word Mark detailed at [9] of this decision, as underpinning this ground of opposition. The Opponent’s Submissions also sought to rely on Australian trade mark registrations 318954 and 733892.[28] However, these registrations were not particularised in the SGPs and, for reasons that will become apparent, it is unnecessary to consider either registration in the circumstances.
[28] Australian trade mark number 318954 (‘GIORGIO ARMANI’) is registered for goods in class 14 and Australian trade mark number 733892 (‘ARMANI EXCHANGE’) is registered for goods and services in classes 9, 14, 18, 25 and 35.
22. The following discussion will first undertake a comparison between the Word Mark and the 57 Mark. If the Word Mark is not found to be at least deceptively similar to the 57 Mark, it stands to reason that the remainder of the Trade Marks are also not substantially identical with, or deceptively similar to, the Word Mark given their additional differences.
23. The Word Mark is registered by a person other than the Applicant and has a priority date earlier than 8 July 2019. The First and Second Requirements are satisfied. In relation to the Third Requirement, the Word Mark and the 57 Mark evidently claim similar goods. For example, each mark has a broad claim for ‘jewellery’. The Applicant did not dispute this.[29] However, it argued that services for the ‘design of jewellery’ are not closely related to ‘jewellery’ goods. The Applicant opined that ‘the price points of the Opponent’s goods are notably less than the jewellery produced by the Applicant’s services’ and concluded that ‘the nature of the engagement is entirely different’ because ‘jewellery design is a business-to-business encounter, not consumer and business interaction’.[30] Two significant difficulties arise from this line of argument.
[29] Applicant’s Submissions, [9].
[30] Ibid [32]–[33].
24. First, the actual use which each party has made of the respective trade marks is largely irrelevant because it is the notional scope of the goods and services claimed which must be considered.[31] Here, the relevant goods are ‘jewellery’. This claim is unqualified and would encompass all forms of jewellery ranging from inexpensive costume jewellery through to bespoke pieces. Second, the concept of ‘closely related’ concerns the relationship between goods and services. In Registrar of Trade Marks v Woolworths Ltd (‘Woolworths’), French J said:
The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets.[32]
[31] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43, [11] (Mason J).
[32] [1999] FCA 1020, [38] (‘Woolworths’).
25. It is a matter of common experience that traders who provide jewellery design services routinely provide the jewellery itself. Examples of such traders include Wallace Bishop, Cartier and Tiffany & Co. Indeed, the present applications typify this relationship given protection is sought in respect of jewellery goods and jewellery design services. Consumers would naturally expect these goods and services to originate from the same source because the rendering of the service invariably leads to the provision of the good. As such, I agree with the Opponent’s sentiment that ‘[p]lainly, “design of jewellery” is a service closely related to jewellery in the sense explained by French J (as his Honour then was) in Woolworths’.[33] The Third Requirement is satisfied.
[33] Opponent’s Submissions, [23].
26. Turning to the Fourth Requirement, the test for ‘substantial identity’ was explained by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):
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.[34]
[34] [1963] HCA 66, [12] (‘Shell’).
27. The Full Federal Court in Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd stated that:
A side-by-side comparison of two marks is a studied comparison. It highlights the differences between the marks just as much as it shows their sameness, in order to reach a conclusion as to whether the two marks are, in fact, substantially identical.[35]
[35] [2020] FCAFC 186, [98] (Middleton, Yates and Lee JJ).
28. The trade marks are reproduced below:
| Word Mark | 57 Mark |
| ARMANI | Armans |
29. The Opponent contends that the trade marks are substantially identical due to the visual and aural identicality that arises from the ‘positioning of the first five letters’ in each trade mark.[36] In the Opponent’s view, these letters constitute the dominant aspect of each trade mark. Conversely, the Applicant submits that a total impression of resemblance does not emerge from a side by side comparison of the trade marks. In particular, the Applicant highlights that the Word Mark is trisyllabic whereas the 57 Mark is disyllabic.[37]
[36] Opponent’s Submissions, [26].
[37] Applicant’s Submissions, [21].
In my assessment, the Word Mark is not substantially identical with the 57 Mark. Whilst each trade mark is comprised of 6 letters, a side by side comparison reveals a crucial spelling difference. The Word Mark ends with the letter ‘i’ and the 57 Mark ends with the letter ‘s’. Irrespective of upper or lower case depiction, the letters ‘i’ and ‘s’ bear no visual similarity and this changes the appearance of each trade mark. This difference also impacts on how each trade mark will be pronounced. The 57 Mark terminates with a sibilant sound which contrasts with the ‘ni’ (pronounced ‘nee’) sound in the Word Mark. As such, a total impression of dissimilarity emerges from a studied comparison of the trade marks.
31. Section 10 of the Act states 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’. The assessment of deceptive similarity was articulated by Windeyer J in Shell:
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].[38]
[38] Shell (n 34) [13].
32. The Full Federal Court in Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd observed:
The notional consumer’s imperfect recollection of the registered mark is central to the test for deceptive similarity. The authorities make clear it is the imperfect recollection of the mark as registered, not any knowledge about the actual use of the mark, or any reputation associated with the mark.[39]
[39] [2022] FCAFC 157, [77] (Yates, Abraham and Rofe JJ) (emphasis added).
33. The Opponent reiterates that the first five letters are the dominant aspect of each trade mark which consumers are likely to recall.[40] It points out that the first two syllables of each trade mark are identical and this is significant because the first syllable is generally the most important for purposes of comparison.[41] The Opponent asserts that ‘the natural pronunciation of both words is identical save for the “i” at the end of ARMANI and the “s” at the end of ARMANS’.[42]
[40] Opponent’s Submissions, [28].
[41] See, eg, London Lubricants (1920) Limited's Application (1925) 42 RPC 264, 279 (Sargant LJ).
[42] Opponent’s Submissions, [26(b)].
34. The Applicant submits that the trade marks must be considered in their entirety and that the ‘focus to be placed on particular syllables, letters or words depends on the facts of the case’.[43] The Applicant further submits that the surrounding circumstances of this matter ‘have a strong influence in this case’.[44] In short, it contends that the goods provided by each party and the trade context in which they are sold are disparate.
[43] Applicant’s Submissions, [15]–[16].
[44] Ibid [25].
35. For the reasons which follow, the 57 Mark is deceptively similar to the Word Mark. The trade marks share strong visual similarities. Both trade marks are comprised of six letters with the arrangement of the first five letters in each being sequentially identical. I do not accept the Applicant’s proposition that the trade marks are ‘materially distinguished’ by the different final letter.[45] There is nothing before me to indicate that ‘AR’ or ‘ARMAN’ is descriptive or commonly used in relation to the Claimed GS such that it ought to be discounted for comparative purposes. Nor has any cogent reason been put forward to suggest that a consumer’s attention would gravitate to the final letter of each trade mark.
[45] Prats Declaration, [52].
36. An aural comparison of the trade marks reveals further similarities. The Opponent contends that the first two syllables of each trade mark would be pronounced in an identical manner. The Applicant disagrees. It posits that that the 57 Mark would be pronounced without ‘significant inflection or focus’ similar to ‘almonds’ and this differs to the Word Mark which ‘is impacted by the hard final vowel and “ni” (knee) sound; second syllable “ma” is a long “mah” or “mar” sound’.[46] Neither party led evidence regarding the pronunciation of the trade marks. Based on the natural pronunciation of each, the Opponent’s interpretation is more plausible insofar as each trade mark would likely be pronounced ‘arh’ followed by a short ‘mah’ sound. Any difference between the pronunciation of the first two syllables would be slight. Turning to the differential ‘ni’ present in the Word Mark, it adds an extra syllable and forms a point of distinction between the trade marks. However, its overall significance is diminished when regard is given to its position at the tail end of the Word Mark together with the propensity of ordinary consumers to slur the termination of words.[47]
[46] Applicant’s Submissions, [21].
[47] London Lubricants (1920) Limited's Application (1925) 42 RPC 264, 279 (Sargant LJ).
37. Conceptually, neither trade mark is a common English word. As such, it is unlikely that either would convey an inherent meaning to ordinary consumers. Instead, each trade mark is likely to be perceived as an unusual surname or possibly as a foreign or invented word. The absence of an established meaning for either trade mark exacerbates the potential for confusion. This is because ordinary consumers would be unable to distinguish the trade marks based on different ideas being conveyed.[48]
[48] See, eg, Re McDowell (1927) 44 RPC 335, 341.
38. In assessing the likelihood of deception or confusion, the Applicant rightly points out that the surrounding circumstances must be considered. This includes the environment in which the goods and services are offered together with the character of the prospective purchaser.[49] Specific circumstances pressed by the Applicant included the high-end nature of the Applicant’s goods as well as the trade context in which the Claimed GS are provided.
[49] Woolworths (n 32) [50(iii)].
39. The price point of the goods was advanced as a circumstance that reduces the potential for confusion. The Applicant characterised its goods as high-end jewellery which necessarily requires the engagement of a ‘skilled salesperson’. Specifically, the jewellery is ‘“one of a kind”, “custom” pieces of jewellery that retail between AUD $5,000 and $450,000’.[50] By contrast, the Applicant described the Opponent’s goods as predominantly ‘off the shelf’ purchases which retail ‘at a lower price point’.[51] An implication being that the Applicant’s goods would be carefully inspected and any interactions consumers have with same ‘would not be fleeting or impulsive’.[52] Whatever the accuracy of these observations, they are not relevant for the purposes of comparison under s 44 of the Act. Again, it is the notional scope of use that must be compared.[53] Given both trade marks contain unqualified claims for jewellery, the notional scope encompasses goods ranging from the retail value of AUD $450,000 to inexpensive goods such as stud earrings retailing for as little as AUD $5. Consequently, the actual price point and purported prestige of the Applicant’s goods is not a circumstance which materially reduces the likelihood of deception or confusion.
[50] Applicant’s Submissions, [25] (emphasis in original).
[51] Ibid [25]–[28]. See also Prats Declaration, [55]–[59].
[52] Applicant’s Submissions, [28].
[53] See discussion at [24] of this decision.
40. I have also considered the character of the prospective consumer and the trade context in which the goods and services are provided. I acknowledge that ordinary consumers are likely to pay closer attention to the goods than, for example, supermarket staples. However, given the sheer breadth of goods encompassed by ‘jewellery’, the inference that ordinary consumers would routinely scrutinise the goods does not hold true for the diverse range of jewellery that must be considered. For inexpensive jewellery such as basic earrings or rings, consumers are able to simply purchase such goods ‘off the shelf’ and complete the transaction without engaging a salesperson. The latter consideration is particularly relevant given jewellery is widely available for purchase online. As such, these circumstances do not sufficiently mitigate the potential for deception or confusion between the trade marks.
41. Overall the trade marks share many common features. Undeniably, a spelling difference exists at the tail end of each trade mark. However, in the context of imperfect recollection, this sole difference is overwhelmed by the highly similar visual and aural construction of each trade mark. Whilst the nature of the Claimed GS reduces the likelihood of deception or confusion to an extent, I remain satisfied that that there is a real tangible danger of deception or confusion occurring. Notably, a trade mark ‘may be deceptively similar to another mark even if its use might not result in any deception or confusion that induces a sale or persists until the moment of sale’.[54] As such, the 57 Mark and the Word Mark are deceptively similar and the Fourth Requirement is established.
[54] Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159, [115] (Nicholas J).
42. The matters discussed above apply with equal force to the 54 Mark and the 55 Mark. ‘ARMANS’ forms the essential feature of these trade marks notwithstanding the presence of the apostrophe between the letters ‘N’ and ‘S’ in the 54 Mark. The Opponent did not assert that either of these trade marks were substantially identical with the Word Mark.[55] I agree. For the reasons set out at [30] of this decision, a total impression of dissimilarity emerges from a side by side comparison of the relevant trade marks. On the question of deceptive similarity, the addition of ‘FINE JEWELLERY’ in the 54 Mark and ‘JEWELLERY’ in the 55 Mark does not meaningfully reduce the likelihood of deception or confusion. This is because these additions are purely descriptive of the Claimed GS and do not materially alter the overall impression conveyed by either trade mark. It follows that the 54 Mark and the 55 Mark are deceptively similar to the Word Mark.
[55] Opponent’s Submissions, [20(b)].
43. With respect to the 56 Mark, the Opponent did not allege that it is substantially identical with the Word Mark.[56] I agree and am satisfied that a total impression of resemblance does not emerge from the requisite comparison. However, I consider that the 56 Mark is deceptively similar to the Word Mark for similar reasons outlined in the discussion of the 57 Mark.[57] The fact that ‘ARMAN’ is not pluralised or presented as a possessive pronoun in the 56 Mark does not result in any substantial visual, aural or conceptual differences arising between the relevant trade marks. Likewise, the inclusion of the descriptive word ‘JEWELLERY’ does not significantly alter the highly similar overall impression conveyed by the Word Mark and the 56 Mark. As such, I am satisfied that the trade marks are deceptively similar.
[56] Ibid.
[57] See discussion at [35] to [41] of this decision.
44. Accordingly, the Opponent has in principle established a ground of opposition under ss 44(1) and 44(2) of the Act in relation to each of the Trade Marks. However, ss 44(3) and 44(4) of the Act provide that the s 44 ground of opposition may be overcome if the Applicant is able to demonstrate prior continuous use, honest concurrent use and/or other circumstances.
Honest concurrent use and/or other circumstances
45. Broadly speaking, s 44(3)(a) of the Act provides that if the Registrar is satisfied there has been honest concurrent use of two trade marks, then the applied for trade mark may be accepted notwithstanding a finding under ss 44(1) and 44(2). The relevant date for determining honest concurrent use is the ‘priority date’ of the application.[58] It follows that use of the Trade Marks after 8 July 2019 is not relevant for considering the application of honest concurrent use.
[58] See, eg, Hills Industries Ltd v Bitek Pty Ltd [2011] FCA 94, [163]-[164] (Lander J); Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [244] (Dodds-Streeton J).
46. The Applicant submits that there has been honest concurrent use of the Trade Marks such that the provisions of s 44(3)(a) of the Act can be applied. In its view, the evidence shows that ‘the Applicant has carried on a business by reference to the name ARMANS since 1986’[59] and reliance is placed on various documents including the Applicant’s Articles of Association and screenshots of the Applicant’s website.[60] In contrast, the Opponent is critical of the EIA and contends that the evidence does not support the application of s 44(3)(a) of the Act in respect of any of the Trade Marks. In particular, the Opponent submits that the evidence demonstrates minimal use of the Trade Marks in respect of the Claimed GS prior to 8 July 2019.
[59] Applicant’s Submissions, [37].
[60] Ibid [36].
47. There is considerable merit in the Opponent’s position. The Applicant’s evidence contains notable deficiencies and it is convenient to consider the specific documents relied on by the Applicant. Exhibit AFJ-1 to the Prats Declaration contains an extract from the Australian Securities and Investments Commission which shows that the Applicant was incorporated in November 1991. It also contains the Applicant’s Articles of Association[61] and an undated photograph of its company seal. None of these documents constitute probative evidence that any of the Trade Marks were used as a trade mark in relation to the Claimed GS. Rather, they merely show use of the words ‘ARMAN’S FINE JEWELLERY’ as a corporate name.[62]
[61] The Articles of Association pertain to ‘Arman’s Jewellery & Diamond Setting Pty Ltd’ which was the Applicant’s former name.
[62] See, eg, Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation [2005] FCA 1278, [73] (Lander J).
48. Exhibit AFJ-3 to the Prats Declaration contains a letter from the Westpac Sydney Office dated 29 June 2021 which confirms that the Applicant held a Westpac bank account since ‘around the time of September 1991’. This document does not demonstrate use of any of the Trade Marks in relation to the Claimed GS nor does it establish that such use has occurred. As such, it does not assist in establishing honest concurrent use of any of the Trade Marks.
49. Exhibit AFJ-4 to the Prats Declaration contains a certificate issued by the Armenian Chamber of Commerce in Australia which states the Applicant and Mr Arzumanian were finalists in the ‘Business Awards for Excellence’ in 2004 as a ‘Jeweller Retailer’. As the Claimed GS do not include retail services, this award does not assist the Applicant. Exhibit AFJ-4 also contains two awards from the Diamond Guild of Australia to Levon Arzumanian and Arman’s Fine Jewellery in 2011 and 2015. These awards are not sufficiently contextualised to constitute compelling evidence that any of the Trade Marks have been used by the Applicant in relation to the Claimed GS.
50. Similarly, reference was made to two certificates which confirm that Levon Arzumanian completed a course of instruction in jewellery design and attended a diamond workshop in 2010.[63] These certificates do not reference any of the Trade Marks or, for that matter, even display the word ‘ARMANS’. It follows that these certificates do not assist the Applicant’s case.
[63] Prats Declaration, Exhibit AFJ-5.
51. The overarching problem faced by the Applicant is that the evidence filed simply does not disclose a sufficient amount of concurrent use of any of the Trade Marks in relation to the Claimed GS prior to 8 July 2019. Whilst it may well be the case that the Applicant has used the Trade Marks concurrently with the Word Mark, the evidence falls well short of substantiating this. Indeed, the evidence is largely comprised of postdated screenshots and it is devoid of any conventional examples of use such as dated invoices, receipts, brochures or appropriately particularised annual revenue and/or advertising figures relating to use of the Trade Marks. The latter are particularly relevant given it appears that a component of the Applicant’s services includes retailing jewellery made by third parties.[64] Retailing services obviously do not fall within the scope of the Claimed GS.
[64] See, eg, Prats Declaration, Exhibit AFJ-18 contains material which states that ‘Arman’s Fine Jewellery’ are stockists of ‘DORA Mens Wedding Rings’ and ‘Passion8 Diamonds Perfect Forever’ products.
52. I acknowledge that the EIS contains two screenshots of the Applicant’s website and two Facebook posts which are dated between March 2016 and October 2016. This material demonstrates use of the Trade Marks in relation to some jewellery items.[65] However, these examples are isolated instances contained in the Opponent’s evidence. At their highest, they simply demonstrate use over a 7 month period, approximately 3 years before the filing date of the applications. Whether considered individually or collectively, they do not constitute cogent evidence that would enable the application of the provisions of s 44(3)(a) of the Act to any of the Trade Marks. This is particularly so given the Applicant’s evidence indicates a monogram of the letters ‘AFJ’ was also used in close proximity to each of the Trade Marks for an indeterminate period of time.[66]
[65] Croce 1, Exhibit AC-1, Tab 20.
[66] See, eg, Prats Declaration, Exhibit AFJ-17.
53. Accordingly, as the evidence does not support concurrent use of any of the Trade Marks, it is not appropriate to apply the provisions of s 44(3)(a) of the Act. For completeness, I note that my attention has not been drawn to any other circumstances under s 44(3)(b) of the Act which would make it proper to accept the applications.
Prior continuous use
54. Contrary to the assertion made in the Prats Declaration, the evidence filed is not sufficient to apply the provisions of s 44(4) in respect of any of the Trade Marks. Put simply, there is no evidence that establishes that any of the Trade Marks were used in relation to the Claimed GS prior to 24 February 1998.
55. In light of the above, the s 44 ground of opposition has been established in relation to all of the Trade Marks.
Decision
56. Section 55 of the Act 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.
57. The Opponent has established a ground of opposition in relation to all of the Trade Marks. As such, I refuse to register trade mark application numbers 2021554, 2021555, 2021556 and 2021557.
Costs
58. Both parties have sought an award of costs. Costs usually follow the event. Accordingly, in respect of trade mark application number 2021554, I award costs against the Applicant per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).
59. In respect of trade mark application numbers 2021555, 2021556 and 2021557, I award reduced costs against the Applicant in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[67]
[67] [2001] ATMO 78.
Nicholas Barbey
Hearing Officer
Delegate of the Registrar of Trade Marks
14 November 2022
and Edelman JJ).
Key Legal Topics
Areas of Law
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Intellectual Property
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Statutory Interpretation
Legal Concepts
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Statutory Construction
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