Globe International Limited v Mossimo Development Pty Ltd

[2002] ATMO 39

TRADE MARKS ACT 1995

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

Re:Opposition by Globe International Limited to registration of trade mark 800543(9) – MOSSIMO – in the name of Mossimo Development Pty Ltd.

Background

This issue arises out of the filing, on 19 July 1999, by Mossimo Development Pty Ltd, (‘the applicant’) of Marrickville, New South Wales of application 800543 in Class 9 of the International (Nice) Classification of Goods and Services to register the word MOSSIMO, in respect of goods which read:

Class: 9 

Electrical goods, namely television apparatus, video recorders, video compact disk players, hi-fi stereos, digital visual disk players, compact disk players, radios, facsimile machines, amplifiers, loudspeakers, computers, and electronic labelling machines.

Following examination of the application, it was accepted by a delegate of the Registrar of Trade Marks and advertised as such in the Australian Official Journal of Trade Marks on 15 June 2001.

On 8 December 2000, after receiving an extension of time in which to do so to do so, Die Hard Pty Ltd of Abbotsford, Victoria, filed Notice of Opposition (‘Notice’) to the registration of the trade mark.  A letter dated 18 January 2002 advised that Die Hard Pty Ltd has changed its name to Globe International Limited.  I will refer to this party as ‘the opponent’ and as if it had been ‘Globe International’ throughout these proceedings.

The Notice cites various grounds, these being:

(a)     The use of the Trade Mark would be contrary to law and, therefore, registration of the Trade Mark is contrary to Section 42 of the Act;

b)      Due to the existence of the Opponent’s registered trade marks and the Opponent’s applications for trade marks, the use of the Trade Mark by the Applicant is likely to deceive or cause confusion and, therefore, the registration of the Trade Mark would be contrary to Section 43 of the Act;

(c)     The Trade Mark is substantially identical with, or deceptively similar to one or more trade mark applications or registrations owned by the Opponent and covers similar, or closely related, goods and/or services. The Trade Mark is, therefore, not a registrable trade mark within the meaning of Section 44 of the Act;

(d)     The Applicant is not the owner of the trade mark, and, therefore, the registration of the Trade Mark would be contrary to the provision of Section 58 of the Act;

(e)     The Applicant does not now or did not at the date of the application have the necessary intention to use or authorise the use of, or to assign the Trade Mark and, therefore, the registration of the Trade Mark would be contrary to Section 59 of the Act;

Reasons

Neither party has requested to be heard in this matter.  Section 55 of the Act provides:

55  Decision

Unless the proceedings are discontinued or dismissed, 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.

This issue has been referred to me, as a delegate of the Registrar of Trade Marks, to decide in terms of section 55 of the Act.

Evidence

The evidence in support of the opposition, served by the opponent on 6 October 2001, comprises a statutory declaration by Peter Hill, director, of the opponent. The opponent markets a range of clothing, skateboards, sunglasses and related goods.  The market that it seeks to engage are sports and fashion minded, young folk.  The opponent has a number of its own brands and, since 1989, has marketed clothing (predominantly swimwear) and sunglasses under the trade mark MOSSIMO.  Section 60 is not a head of opposition; accordingly, discussion of the use and reputation of the trade mark shown in the evidence serves no useful purpose.

Globe International is an authorised user of the following registered trade marks:

Number:  521495
Priority Date:             23/10/1989
Owner:  Mossimo Inc
Class:  25

Goods:Clothing, headwear and footwear, including casual, leisure, sports and beach clothing; surfwear, clothing for bicycling; shirts, T-shirts, sweat shirts, tank tops, vests, blouses, coats, jackets, sweaters, pullovers, skirts, dresses, pants, sweatpants, shorts, shoes, athletic shoes, sandals, beach footwear, socks, belts, hats, caps, visors, swimwear; wetsuits for water skiing; and all other goods in this class

Trade Mark:               

Number:600115

Priority Date:             13/04/1993

Owner:Mossimo Inc

Class:25

Goods:Clothing, including shorts, shirts, T-shirts, tank tops, jackets, sweatshirts, sweatpants, pants, swimwear, headwear footwear, and belts; and all other goods in this class

Trade Mark:               

Number:771288

Priority Date:             26/08/1998

Owner:Mossimo Inc

Class:25

Goods:Clothing, headgear and footwear

Trade Mark:               MOSSIMO

Number:796474

Priority Date:             04/06/1999

Owner:Mossimo Inc

Class:9

Goods:Eyeglasses, sunglasses, frames, eyeglass and sunglass retainers, and replacement parts and cases specially adapted for eyeglasses and sunglasses

Trade Mark:               

I note in passing that the relevant grounds in the Notice are incorrectly stated: the opponent does not own any of the trade marks on which it relies – it is an authorised user of them.  It is, of course, not necessary for an opponent to own the trade marks on which it relies to succeed under the Act.  Neither has the applicant cavilled at this inaccuracy and I treat this opposition as if the Notice had been correctly stated.

Section 42

Section 42 provides:

42  Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

(a)       the trade mark contains or consists of scandalous matter; or

(b)       its use would be contrary to law.

The opponent has not pointed to any law to which the use of the word MOSSIMO would be contrary.  Neither has the opponent led any evidence that the word MOSSIMO is scandalous.

Section 43

Section 43 provides:

43  Trade mark likely to deceive or cause confusion

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

In its operation, this section looks to the inherent qualities of the trade mark itself and does not compare the trade mark to another.  It is the connotation of the trade mark itself to which section 43 refers.  In the words of Wilcox, Kiefel & Emmett JJ in T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720 (31 May 2000) at paragraph 43:

The case on deception and confusion sought to be made by Big Country and Friday's Australia in the present proceedings is one that falls outside the reasons specified in those sections. It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others. So the alleged deception or confusion is not for a reason covered by section 43

In its ground, as stated, the opponent alleges, “Due to the existence of the Opponent’s registered trade marks and the Opponent’s applications for trade marks, the use of the Trade Mark by the Applicant is likely to deceive or cause confusion and, therefore, the registration of the Trade Mark would be contrary to Section 43 of the Act”.  In the formulation of this ground the opponent is, in light of the foregoing paragraph, wrong.  Neither has the opponent pointed to a connotation, native to the word MOSSIMO, which could disqualify it from registration.   Accordingly, the opponent has not established this ground.

Section 44

As the applicant has not provided evidence of use of the opposed trade mark, section 44 relevantly provides:

44  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.

Section 14 of the Act, referred to in Note 2, above, provides:

14  Definition of similar goods and similar services

(1)       For the purposes of this Act, goods are similar to other goods:

(a)       if they are the same as the other goods; or

(b)       if they are of the same description as that of the other goods.

(2)       For the purposes of this Act, services are similar to other services:

(a)       if they are the same as the other services; or

(b)       if they are of the same description as that of the other services.

Therefore, the issues that arise for consideration under section 44 are whether:

·     The priority dates of the trade marks on which the opponent relies are earlier than that of the opposed trade mark

·     The trade marks are substantially identical or deceptively similar

·     The goods are the same, or similar, goods to those of the prior trade marks on which the opponent relies.

For the opposition to be made out, each of above conditions must be established.  If one of the above conditions is not established, the opposition must fail.  Accordingly, for the sake of brevity and clarity, I will discuss this ground of the opposition only in terms of the similarity of the goods and observe that the trade marks are, at the least, deceptively similar and that the priority dates of the trade marks on which the opponent relies are earlier than that of the applicant.

The goods involved here are, on the applicant’s part:

Electrical goods, namely television apparatus, video recorders, video compact disk players, hi-fi stereos, digital visual disk players, compact disk players, radios, facsimile machines, amplifiers, loudspeakers, computers, and electronic labelling machines.

The opponent’s goods are all types of clothing, footwear and shoes in Class 25.  Also, in Class 9:

Eyeglasses, sunglasses, frames, eyeglass and sunglass retainers, and replacement parts and cases specially adapted for eyeglasses and sunglasses

The above two sets of goods are very obviously not ‘the same goods’.

The question of whether the goods of the parties are goods of the same description is resolved by reference to guidelines in decisions such as Southern Cross Refrigerating Co v. Toowoomba Foundry Pty. Ltd. (1954) 91 CLR 592, at 606, where Dixon, McTiernan, Webb, Fullagar and Taylor JJ said of the expression:

The fact that examination of the nature of the applicant's goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant's goods are not specified by the regulations as being within the same class of goods: see In re The Australian Wine Importers Ltd. (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd. v. Boden per Latham C.J. (1945) 70 CLR 84, at p 90 . There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek's Application (1946) 63 RPC 59 . Romer J. thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek's Case (1946) 63 RPC 59 the Assistant-Comptroller elaborated on the observations of Romer J. in the following manner: "In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application (1946) 63 RPC 59, Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are 'of the same description'": In re an Application by John Crowther & Sons (Milnsbridge) Ltd. (1948) 65 RPC 369, at p 372 . Much the same considerations are evident in the observation of Dixon J. (as he then was) in Reckitt & Colman (Australia) Ltd. v. Boden (1945) 70 CLR 84 when he said: "What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments" (1945) 70 CLR, at p 94 . (at p607)

The goods of the parties are not, by the above tests, goods of the same description.  The goods of the parties are usually made in different factories by people engaged in different trades, are distributed along different trade channels and are sold from different counters in different shops to different classes of customers for completely different purposes.  In their nature, the goods are quite different – the goods of the applicant are complex electronic devices, the goods of the opponent are protective eyewear and clothing and footwear of all types.  The goods are as different as chalk and cheese.

Accordingly, the opponent has not established this ground of opposition.

Section 58

Section 58 of the Act provides:

58  Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:For applicant see section 6.

In Hicks’ Trade Mark, (1897) 22 VLR 636 (at 640) Holroyd J stated:

In order to substantiate his application to be placed on the Register for this word, he must have claimed to be the proprietor, and the word "proprietor" must be taken to mean the person entitled to the exclusive use of that name. If there is anyone else who would be interfered with by the registration ... in the exercise of a right which such person has already acquired to use the same word in application to the same kind of thing, then Hicks ought not to have been put on the Register for that trade mark". [Stress added]

The expression used by Holroyd J, above, ‘the same kind of thing’ means the same kind of goods or services.  The goods of the parties are, as I have remarked above, very different.  This difference in the goods renders consideration of the other aspects of section 58 otiose.

Section 59

Section 59 of the Act provides:

59  Applicant not intending to use trade mark

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a)       to use, or authorise the use of, the trade mark in Australia; or

(b)       to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note:For applicant see section 6.

None of the evidence led by the opponent goes to this head of opposition.

Decision

The opponent has not established any of the grounds stated in the Notice.  Accordingly, I dismiss the opposition and the opposed trade mark may, if no appeal is filed within the requisite period, proceed to registration.

Ian Thompson
Hearing Officer

13 May 2002