GSM (Trademarks) Pty Ltd and Mark Occhilupo v William Hitching

[2006] ATMO 24

TRADE MARKS ACT 1995

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

Re:Opposition by GSM (Trademarks) Pty Ltd and Mark Occhilupo to registration of trade mark application 956218(14) - OCCY - filed in the name of William Hitching.

Delegate:

Deirdre O'Brien

Representation:

Opponent

Helmut Eichberger of Cullen & Co, patent and trade mark attorneys

Applicant

Self-represented

Decision:

s52 opposition

Grounds under ss41, 42(b), 43, 44 and 58 not made out. Registration may proceed. Costs awarded against opponent.

Background

1. Trade mark application 956218 was filed by Mr William Hitching (‘the applicant’) on 3 June 2003.  The application was advertised on 2 October 2003 as having been accepted for possible registration.  Relevant details of the application are as follows[1]:

   Trade Mark:      OCCY

   Class:14

   Goods:Watches (chronometric instruments); jewellery; precious stones

   [1] The application originally included goods in class 18 but these were deleted subsequent to registration being opposed.

2. On 16 December 2003 the opponents, GSM (Trademarks) Pty Ltd and Mark Occhilupo, filed a notice of opposition to registration. After both parties had filed and served evidence pursuant to the Trade Mark Regulations 1995, I was delegated by the Registrar to hear the matter in Canberra on 12 December 2005. The opponents were represented by Mr Helmut Eichberger of Cullen & Co, patent and trade mark attorneys. Mr Eichberger appeared by telephone. The applicant was self-represented and appeared in person. The grounds pressed by the opponents were those pursuant to sections 41, 42(b), 43, 44 and 58 of the Trade Marks Act 1995 (‘the Act’).  The onus is on the opponents to make out at least one of these grounds[2]. 

   [2] as recently confirmed in Kowa Co v NV Organon (2005) 66 IPR 131 at 153

Evidence

1. The evidence filed and served by both parties is as follows.

Declarant	Date	Exhibits
Evidence in support	Mark Occhilupo Helmut Eichberger Elisa McCutcheon William Bass	04.05.2004 17.05.2004 17.05.2004 20.05.2004	MLO-1 to 2 HAE-1 EJM-1 to 2 WB-1 to 20
Evidence in answer	Michael White	16.02.2005	A

Grounds under sections 42(b) and 43

1. I consider the opponents’ case to be strongest with respect to these grounds. Section 43 of the Act reads:

   43. 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.

2. The opponents submit the word OCCY connotes Mark Occhilupo, a well-known Australian surfer.  They say OCCY is Mr Occhilupo’s nickname and that he is just as well known by his nickname as by his full name.  According to the opponents any use of the present trade mark by a person other than Mark Occhilupo would be likely to deceive or cause confusion. 

3. Section 42(b) reads:

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

   (a) …; or
   (b) its use would be contrary to law.

The opponents say use of the present trade mark would be contrary to the law of the Trade Practices Act and to the tort of passing off.  They contend such use would suggest ‘the applicant has endorsement, licence or approval from the famous person known as OCCY and that endorsement, licence or approval does not exist.’  On that basis, the opponents say, the applicant’s use of the trade mark would be deceptive and misleading conduct pursuant to sections 52 and 53 of the Trade Practices Act and constitute passing off at common law.

1. Both the section 43 and 42(b) grounds thus turn on whether the opponent can show that, at the date the present application was filed[3], the word OCCY was synonymous with Mark Occhilupo and that Mr Occhilupo is a famous person. 

   [3] 3 June 2003

2. I am satisfied from the opponents’ evidence[4] that at the relevant date Mr Occhilupo was famous among the surfing fraternity.  I am further satisfied that it was well known among that fraternity that he had been sponsored throughout his career by the makers of Billabong surfwear[5], a brand which a delegate of the Registrar has recently acknowledged to be famous[6].  In return for the sponsorship Mr Occhilupo promoted Billabong’s products which included, Mr Occhilupo says, watches and jewellery[7].

   [4] MLO-1 and 2 of Occhilupo declaration

   [5] Bass declaration

   [6] GSM (Trademarks) Pty Ltd v Blue Eye Holdings Pty Ltd (2005) ATMO 44

   [7] Paragraph 4 of Occhilupo declaration

3. I am also satisfied from the evidence that Mr Occhilupo was just as well known among the surfing fraternity by his nickname OCCY as by his full name.  But there is nothing before me to show the applicant’s goods are intended for sale to that fraternity.  Watches, jewellery and precious stones are, on the face of it, goods that will be sold to the general public, young and old, who may have little or no knowledge of Mr Occhilupo and his achievements in surfing. In order to make out these grounds the opponents need to establish that for a substantial number of the general public, OCCY means Mr Occhilupo. 

4. The evidence shows Mr Occhilupo’s win in 1999 of the world surfing championship was heralded in the mainstream media[8].  However the fame Mr Occhilupo may have garnered among members of the general public through that win is unlikely to have persisted for any length of time unless it was followed by frequent mention in the mainstream media.  There are such post-1999 references to Mr Occhilupo in evidence but these are not numerous and are always in connection with his professional surfing career[9]. 

   [8] MLO-2 contains a transcript of an interview with Mr Occhilupo on national ABC radio on 18 October 1999.  Mr Occhilupo is referred to in that interview as Occy.

   [9] Those references are seven newspaper articles over the period 2001 to 2004; four in exhibit MLO-2, two in exhibit WB-7 and one in exhibit WB-13.  There are also two references at the ABC and Fox Sports web sites (exhibit WB-12).

   Three of the newspaper articles refer to Mr Occhilupo by his nickname Occy.  The articles are taken from the sports sections of The Sydney Morning Herald, The Age, The West Australian, The Gold Coast Bulletin, The Sunday Mail and an untitled newspaper.   In addition a captioned photograph of Mr Occhilupo appeared in The Sydney Morning Herald on 18 July 2002.

   The references at the ABC and Fox Sports web sites are both from 13 May 2004 and both refer to Mr Occhilupo as Occy.

5. The present trade mark is the plain word OCCY and it is to be used in relation to goods that have no inherent association with surfing.  If the present trade mark had also contained surfing insignia or the photograph of a surfer, it is possible some members of the public would have been prompted to recall Mr Occhilupo and his achievements.   But in the absence of such insignia, I am not satisfied from the evidence that a substantial number of the general public would, firstly, recognise OCCY as the nickname of Mark Occhilupo, the surfer, and, secondly, assume its use in relation to watches, jewellery or precious stones indicated some sort of connection with him.

6. In summary, I find the present trade mark contains no connotation and possesses no reputation such that its use would be likely to deceive or cause confusion. The grounds under section 43 and 42(b) therefore fail.

Ground under section 41

1. In simple terms, section 41 provides that the present trade mark may not be registered if it is not capable of distinguishing the applicant’s goods. The opponents argue their use of OCCY as a trade mark and in the promotion of Billabong surfwear has rendered it incapable of distinguishing the goods of any other trader.

2. The accepted test in applying section 41 is that of Justice Kitto in Clark Equipment Co v Registrar of Trade Marks[10].  His Honour said (at 514) the question was “whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods.”

   [10] (1964) 111 CLR 511

3. This question goes to the inherent qualities of the trade mark.  It is not to be answered by reference to the effect one trader’s use of the trade mark may have had.  Rather  the answer requires a consideration of whether the ordinary meaning of the trade mark is such that other traders will have a genuine need to use it. 

4. Prima facie OCCY is an invented word.  It has no meaning in the Macquarie Dictionary although its phonetic equivalents, OCKIE cum OCKY have the meaning of ‘octopus’[11].  There is nothing in evidence to show that OCCY (or any phonetic equivalent of OCCY) is in common use in relation to watches, jewellery and precious stones.  As the opponents have pointed out, OCCY is not a known Australian surname[12]. I am satisfied OCCY is a trade mark that is inherently capable of distinguishing the applicant’s goods. The section 41 ground fails.

   [11] Regulation 21.15(8) gives me the authority to take this information into account.

   [12] EJM-1

Ground under section 44

1. In support of this ground the opponents rely on eight registrations for trade marks which they say are either substantially identical or deceptively similar to the applicant’s trade mark.  Relevant details of those registrations are as follows:

No	Trade mark	Goods
416935	OCCY	Class 25 Shorts and t-shirts
416936	OCCY	Class 28 Surfboards in this class, waxes for surfboards, leg ropes and waxes for skis, but excluding tennis, squash and other racquets and accessories for such racquets
887135	Class 25 Clothing, footwear, headgear
887136	Class 25 Clothing, footwear, headgear
887137	Class 25 Clothing, footwear, headgear
927284	Class 25 Clothing, footwear, headgear
948792	Class 25 Clothes, hats
955520	Class 25 Clothing, footwear, headgear

1. Section 44 requires a finding that the cited trade marks are for the same or similar goods as the present application which, as previously noted, are ‘watches (chronometric instruments); jewellery; precious stones’. The goods of the cited registrations are clearly not the same as those of the present application. Furthermore, applying the accepted test for determining whether goods are similar[13], I find none of the cited goods are similar to the applicant’s goods. Thus the section 44 ground fails.

   [13] John Crowther & Sons (Milnsbridge) Ltd's Appn (1948) 65 RPC 369

Ground under section 58

1. The opponents have not shown any prior public use by a party other than the applicant of the trade mark OCCY, or of a substantially identical trade mark, in relation to the same kind of thing[14] as ‘watches (chronometric instruments); jewellery; precious stones’. The section 58 ground accordingly fails.

   [14] Re Hicks’ Trade Mark (1897) 22 VLR 636 at 640

Decision

1. As none of the grounds pressed by the opponent have been made out, my decision is that trade mark application 956218 may 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 the appeal has been decided or discontinued.

Costs

1. I award costs against the opponent according to the official scale.

Deirdre O'Brien

Hearing Officer

Trade Marks Hearings

09 March 2006