Gotcha International LP v Craig a Heath

[2002] ATMO 30

TRADE MARKS ACT 1995

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

Re:Opposition by Gotcha International LP to registration of trade mark application 804215(25) - CORE - filed in the name of Craig A Heath

Background
On 19 August 1999, the applicant, Craig A Heath of Jan Juc, Victoria, applied for the following trade mark in class 25 for clothing, hats, and footwear:

CORE

The trade mark is a word trade mark.  There is no device or graphical embellishment.  The trade mark was accepted and advertised on 15 June 2000.

On 15 September 2000, Gotcha International LP ("Gotcha"), an entity located in California, filed a notice of opposition through their attorneys, Davies Collison Cave.  The notice of opposition set out 9 grounds, and sought an award of costs. I will set out and discuss these grounds in due course.

Gotcha filed evidence in support on 25 June 2001.  The evidence comprised a statutory declaration by Ms Barbara Jean Hainline dated 15 June 2001.  The declaration also contained 7 exhibits which will be referred to as Exhibits A through G.

No evidence in answer was filed by Mr Heath.  Nor is there any evidence in reply or further evidence by Gotcha.

The parties were invited to have the matter set down for hearing.  Neither party took up this invitation.  The matter then came before me as a delegate of the Registrar of Trade Marks for a decision on the written record.

The opponent relies on its registered trade marks:

Trade Mark Registration Number	Trade Mark	Priority Date
556497	MORE CORE DIVISION	27 May 1991
558187	21 June 1991
564167	21 June 1991

Grounds of Opposition

Gotcha relies on nine grounds of opposition. By way of summary, the grounds are based, in the order claimed, on sections 58, 59, 41, 43, 60, 42, 44 of the Trade Marks Act 1995.  Gotcha also asserts that the applied for trade mark does not comply with the requirements of section 17 of the Act and requests that I exercise my discretion under section 55 of the Act for various reasons including the conduct of the applicant and the nature of the trade mark.

Addressing the grounds in the order that they appear in the notice of opposition:

Section 58

Gotcha alleges that the applicant is not the owner of the trade mark.  There is no evidence before me that the opponent or any other person is the prior Australian owner of the trade mark CORE.  While Gotcha may have been the first user of MORE CORE DIVISION, this is not the same as CORE. In order for s.58 to be made out, the conflicting marks must be sufficiently close - per Gummow J in Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 34 IPR 375 at 391. In that case, Gummow J found that "Funship" was sufficiently close to "Fun Ship", "Fun Ships", and "The Funship". However, "Sitmar's Funship" and "Fairstar the Funship" were not. Here, I believe that the words "More" and "Core" mean that the conflicting trade marks are not sufficiently close for s.58 to be made out - they add something specific to the trade mark, rather than merely being a contraction, simple expansion or pluralisation.

I see no other basis on which the ground is claimed.  The ground is therefore rejected.

Section 59

There is no evidence before me that the applicant does not intend to use the trade mark in Australia. Accordingly, this ground is rejected.

Section 41

I am satisfied that the applied for trade mark does have the requisite inherent adaptation to distinguish.  There is no material before me which suggests otherwise.  This ground is rejected.

Section 43

Section 43 requires me to assess the connotation which arises from the trade mark itself. It is not open to me to consider extraneous factors, such as the existence or reputation of other trade marks. There is nothing in the applied for trade mark that would cause deception or confusion in the requisite sense. This ground is rejected.

Section 42

The opponent asserts that:

In light of the reputation the opponent has in its trade marks, the use of the trade mark the subject of the application in relation to the goods for which registration is sought would be likely to mislead or deceive and pass off the goods as being those of or associated with the opponent.

As such, the opponent appears to be asserting that use of the applied for trade mark would be contrary to law. This is dealt with in s.42(b) of the Act. In turn, the specific allegations made by the opponent appear to refer to the common law tort of passing off, s.52 of the Trade Practices Act 1974 (Cth), or, given that the applicant is an individual to whom the Trade Practices Act would not necessarily apply, s.9 of the Fair Trading Act 1999 (Vic).

While the Registrar is obliged to take potential breaches into account, the ground of opposition can only be made out where the Registrar is satisfied that the law would be breached.  It is not sufficient to establish that the law might be breached.  In the present case, there is no evidence before me that satisfies me that the allegation of passing off would be made out, or that the misleading and deceptive conduct provisions would be contravened. 

Therefore, this ground of opposition fails.

Sections 44 and 60

The relevant part of s.44 reads:

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.

Section 60 states:

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)it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, had 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 1:For deceptively similar see section 10.

Note 2:For priority date see section 12.

Sections 44 and 60 share the threshold tests of substantial identity and deceptive similarity. If the trade marks in question are neither substantially identical nor deceptively similar to each other, the balance of each section does not need to be considered.

Substantial identity is to be considered on a side-by-side comparison of the trade marks and is an objective test of similarity: Windeyer J in Australian Woollen Mills v F.S. Walton & Co. Ltd (1937) 58 CLR 641 at 658. As I have already indicated, the opponent relies on the following registered trade marks:

Trade Mark Registration Number	Trade Mark	Priority Date
556497	MORE CORE DIVISION	27 May 1991
558187	21 June 1991
564167	21 June 1991

Applying the Australian Woollen Mills test, the applied for trade mark is obviously different from 558187 and 564167 and is not substantially identical.  While each of these registered trade marks incorporate the word "CORE", they must be compared in there entirety.  In relation to 556497, this too has substantial differences.  While the applicant's trade mark is fully encompassed by 556497, the addition of the words "MORE" and "DIVISON" is a substantial embellishment.  On this basis, I am not satisfied that the marks are substantially identical.

The tests for deceptive similarity were laid down by Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641 at 658, where their Honours stated:

An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. 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, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.

and in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407, 415 where Windeyer J said:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is the 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 impression that such persons would get from the defendant's television exhibitions.

Accordingly, the comparison to be made is one between the impression based on the recollection of the opponent's trade marks that persons of ordinary intelligence and memory would have and the impressions those same persons would derive from the CORE mark.  This may be an imperfect recollection.  The test is to be applied without placing the trade marks side by side, and taking into account the market and other surrounding circumstances in which the goods are traded and trade marks are used - Pianotist Co's Appn (1906) 23 RPC 774.

Here, I believe that the overlap between the applied for trade mark and 556497 entails the essential trade mark element of 556497.  That mark comprises the three words MORE CORE DIVISION.  The more and division have significant descriptive meanings and may well be perceived in that way.  The word core, however, in the context of clothing, hats and footwear, has no significant relevance apart from its trade mark function and in my view it will be perceived as the essential element of this trade mark.  On that basis, I think the applied for trade mark core is likely to give rise to deception or confusion vis a vis the trade mark more core division.  I find therefore that the applied for trade mark core is deceptively similar to the opponent's earlier trade mark more core division.

In relation to 558187, I believe that it is the initials "MCD" that will be carried away and later recalled.  I think the same can be said in relation to 564167, however it is possible that the motif will also be carried away by those who view the trade mark.  In any event, I am not satisfied that the 558187 or 564167 give rise to the same impression as the applied for trade mark.

Section 10 confirms that the test for deceptive similarity must also take into account the likelihood of deception or confusion actually occurring.  There must be a real, tangible risk of deception or confusion occurring  - per French J in Woolworths v Registrar of Trade Marks 45 IPR 411. I believe, given the nature of the products, and the propensity for consumers to reduce longer trade marks down to their key elements, that the real, tangible risk does arise. It is easy to envisage situations where customers will recall the key element "Core" and buy or request goods on that basis.

Accordingly, I am satisfied that the applied for trade mark is deceptively similar to 556497.

I am also satisfied, given that the registration for 556497 covers all goods in class 25, and by implication, the goods sought by the applicant, that the balance of s.44 is made out.

There is no assertion by, or material from, the applicant which addresses either s.44(3) or (4). Accordingly, the s.44 ground of opposition is made out.

In relation to s.60, I note that the evidence of sales and advertising expenditure between 1992 and the priority date did not assist me in determining whether the reputation had been garnered in relation to 556497 as a separate or distinct trade mark or by all three trade marks. However, the examples of Gotcha's advertising and merchandise catalogues do show use of the relevant trade mark - "More Core Division" as a word mark. The advertisements were placed in what appear to be well-known and widely distributed surf magazines over a number of years before the priority date. The catalogues were distributed to suppliers and potential suppliers for three years before the priority date. On the strength of these advertisements and catalogues, and the figures relating to advertising expenditure and turnover in the relevant period, I am satisfied that the opponent is more likely to have had the requisite reputation as at the priority date, than not. I am also satisfied that, as the result of this reputation, the applicant's use of his trade mark is likely to cause confusion amongst consumers. At the very least, I believe that, without clarification, consumers will be unsure whether it is the applicant's or opponent's products that are being referred to. It may also be that consumers, on seeing the applied for trade mark, "Core" as a word mark, will be confused or deceived regarding the good's association with or manufacture by the opponent. This arises out of the reputation enjoyed by the opponent at the priority date. Therefore, the s.60 ground is also made out.

Section 17

Even if s.17 were a proper ground of opposition, there is nothing before me to indicate that the applicant does not intend to use the applied for word as a trade mark.  Therefore, I have no reason to find that the provisions of s.17 are not made out or that the application is defective in that respect.

Registrar's Discretion

I have found that the opponent has been successful in its ss.44 and 60 grounds. Accordingly, I exercise my discretion pursuant to s.55 to refuse to register the applied for trade mark.

Costs

The opponent seeks its costs of these proceedings.  I direct that the applicant pay the opponent's costs in accordance with Schedule 8 of the Trade Mark Regulations 1995.

Geoff Purvis-Smith
Hearing Officer
Trade Marks Hearings
8 April 2002