GTFM Inc v Peter Geoffrey Brock

[2006] ATMO 13

TRADE MARKS ACT 1995

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

Re:Opposition by GTFM Inc to registration of trade mark application 940276(16, 26, 35, 41, 42) - 05 BROCK and device - filed in the name of Peter Geoffrey Brock.

Delegate:

Jock McDonagh

Representation:

Opponent: Paul Fong and Leane Oitmaa of Watermark Attorneys

Applicant: Graham Smith of counsel instructed by Keogh & Co Lawyers

Decision:

Section 52 opposition – ss44, 58 & 60 grounds unsuccessful – trade mark to proceed to registration s44(4) applied – costs awarded against opponent

Background

1. The applicant, Peter Geoffrey Brock, applied for registration of the following trade mark:

Application Number:	940276
Priority date:	15 January 2003
Goods:	Class: 16 Posters, photographs and the like and memorabilia for endorsement of products and services and for promotion of events Class: 25 Clothing, footwear, headgear Class: 35 Business management, running of race team; endorsement services namely promotion and marketing of products and services; promotion of events Class: 41 Consulting to sporting teams and to businesses associated therewith Class: 42 Authorising the licensing of model naming rights; licensing use of intellectual property
Trade Mark:
Advertised:	7 August 2003

1. The opponent, GTFM Inc, filed notice of opposition to the trade mark's registration on 6 February 2004.  That notice listed effectively all of the available grounds of opposition provided in the Trade Marks Act 1995 ("the Act").

2. The opponent duly served and filed evidence in support. The applicant did not serve or file any evidence.

3. The matter came to a hearing before me, as a delegate of the Registrar of Trade Marks, in Sydney on 18 October 2005. Mr Paul Fong and Ms Leane Oitmaa of Watermark, Attorneys, represented the opponent. Mr Graham Smith of counsel, instructed by Keogh & Co, Lawyers, represented the applicant.

Evidence

1. The evidence in support of the opposition is a declaration by Edward Silberman, the company secretary and principal shareholder of the Ugly Tribe Company Pty Ltd (“Ugly Tribe”).

2. Mr Siberman declares that Ugly Tribe is an importer, wholesaler and marketer of fashion clothing.  Ugly Tribe was granted an Australian distribution agreement by the opponent. The agreement gives Ugly Tribe the right to distribute products bearing the opponent’s trade marks.

3. Mr Silberman cites two trade marks owned by the opponent, both with a priority date of 14 June 2001, 965525 05 and 879203 fubu 05, both in Class 25: Clothing, namely shirts, vests, sweaters, shoes, caps, bandannas, shorts, sweat shirts, pants, belts for clothing, socks, swimwear, jackets, rainwear, blouses, dresses, footwear, hosiery, scarves, hats, head bands, pyjamas, underwear and sleepwear.

4. The declaration includes tables showing turnover figures for the financial years 1997/98 to 2003.04, expenditure on advertising and promotion for the financial years 1997/98 to 2002/03, and outlay on intellectual property protection for the financial years 1997/98 to 2002/03.

5. Exhibit ES-1 to the declaration is a collection of photographs of a variety of sports shirts emblazoned with the digits 05, and exhibit ES-2 is a sample of Ugly Tribe invoices from 2001 that include reference to description of goods including the digits 05.

Onus of Proof

1. It is necessary for the opponent to establish at least one of the grounds set out in its notice of opposition in order to succeed, and that the decision to reject must be made upon positive satisfaction that the ground has been made out.  The Registrar is required to approach the question of registration with the presumption of registrability in mind: Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, Lomas v Winton Shire Council [2003] AIPC ¶91-839, Kowa Company Ltd v N V Organon [2005] FCA 1282 paragraph [139].

Grounds of opposition

1. The opponent relied on three grounds of opposition, those under sections 44, 58 and 60 of the Act.

2. There is no evidence to support the remaining grounds in the notice of opposition, and I dismiss them.

Ground 1 – section 44: conflicting trade mark

1. The relevant parts of section 44 read:

   44.(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. Therefore, the issues that I need to consider are:

(a) the priority dates of the competing marks,

(b) whether the goods are similar goods, and

(c) whether the trade marks are substantially identical or deceptively similar.

1. I am satisfied that the opponent’s trade marks have earlier priority dates. 

2. It is also clear that the opponents class 25 goods are similar to those class 25 goods of the applicant.

3. It is an element of both the s44 and s60 grounds of opposition that the mark is ‘substantially identical with or deceptively similar to’ an opponent’s mark.  The opponent submitted that the marks are substantially identical with, or deceptively similar to, the opponent’s mark.

4. In considering whether marks are ‘substantially identical’, they are to 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 that comparison’

   Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited (1961) 109 CLR 407 at 414-415.

5. I am not satisfied that the applicant's device mark is substantially identical with the opponent's trade marks.  Side by side comparisons of the respective marks show the essential visual impressions to be quite different.

6. The test to determine whether trade marks are 'deceptively similar' is set out in Shell Company  v Esso at 415:

   'The marks are not now to be looked at side by side [as for substantial identity].  The issue is not abstract similarity, but deceptive similarity … the comparison … 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 [trade mark]'

7. The Court added at 416, that:

   '[The] deceptiveness that is contemplated must result from similarity; but the likelihoodof deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.'

8. As was also determined by a delegate of the Registrar during the examination of the applicant’s trade mark, I find the applicant’s mark to be deceptively similar to the opponent’s trade mark 965525: ‘05’.

9. In the applicant's marks a dominant feature is the number 05.  It is the only feature of the opponent’s ‘05’ trade mark 965525, and is a lesser feature in the fubu 05 mark.  . 

10. In terms of the doctrine of imperfect recollection, the consumer who has viewed the applicant's mark or the opponent's marks is likely to come away with retained (but imperfect) or recollection of the mark in each instance featuring ‘05’ or ‘O 5’.

11. During examination, the delegate took into account a declaration by the applicant, dated 14 July 2004 (“the Brock declaration”), which declared that the applicant had used the applied-for mark in respect of the applied for goods since 1975. The delegate applied the provisions of section 44(4) to allow the applicant’s trade mark to proceed to registration. The provisions read:

    (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.

12. Counsel for the applicant submitted that the Brock declaration should be taken into account again if I were to find deceptive similarity.

13. The opponent, unsurprisingly, submitted that the Brock declaration should not be taken into account at all as it was not filed and served in evidence in accordance with Trade Mark Regulations 1995 (“the Regulations”) or, in the alternative, that it be given no weight at all because it satisfies none of the statutory requirements of section 44(4).

14. Given the applicant’s declaration has already been taken into account in deciding its registrability, it would be unrealistic to ignore it if the Regulations allow me to do so.  Regulation 21.15(8) entitles me to inform myself on any matter before me in any way that I reasonably believe to be appropriate.

15. An appropriate means of me informing myself is one that does not deny procedural fairness to a party. Such fairness is provided where a party is aware of the information that is proposed to be taken into account and has had an opportunity to make representations in respect of it. This is consistent with the approach taken in Regulation 21.19, which provides:

    (1)  If:

    (a) information that is available to the Registrar is relevant to proceedings before the Registrar; and

    (b) the Registrar has reason to believe that the information is not known to a party to the proceedings; and

    (c) the Registrar proposes to take the information into account in making a decision in the proceedings;

    before making the decision the Registrar must:

    (d) provide the information to the party; and

    (e) give the party a reasonable opportunity to make representations about the information.

    (2) For the purposes of paragraph (1) (e), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

1. The opponent is aware of the Brock declaration and has made representations in respect of it. As it is a declaration, it is admissible as evidence as it does not offend Regulation 21.17.  The Brock declaration is relevant to the registrability of the applicant’s trade mark, and I intend to take it into account.

2. While the Brock declaration was inelegantly written, I am satisfied that it addresses each of the elements required to satisfy section 44(4). While the heading on the declaration, as pointed out by the opponent, refers to the opponents fubu 05 application number, which was cited against the applicant’s trade mark, I am satisfied that the Brock declaration is referring to the subject application.

3. The opponent has not provided any satisfactory reason why I should not accept the Brock application, as a previous delegate of the Registrar has already done.  Therefore, I dismiss this ground of opposition.

Ground 2 – section 58: Ownership of trade mark

1. Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. In order to establish this ground, it is incumbent upon an opponent to show that, in the time before filing, the applicant was not the first user in trade in Australia of the applied-for trade mark. To do so, an opponent must show, at a minimum, that not only is the applied-for trade mark substantially identical to the older trade mark, but that it is applied to the same kind of goods: Re Hicks’ Trade Mark (1897) 22 VLR 636 at 640.

2. I have already determined that the opposed marks are not substantially identical, so this ground cannot be made out.  I dismiss this ground of opposition.

Ground 3 – section 60: Reputation in a similar trade mark

1. Section 60 provides:

   60. 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.

1. To satisfy section 60, an opponent has the burden of establishing the following elements:

• a pre-existing trade mark;

• substantial identity or deceptive similarity between the applied-for trade mark and the pre-existing trade mark;

• the acquisition of a reputation in Australia by the pre-existing trade mark; and

• a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

1. It has already been established that the opponent’s pre-existing trade mark 05 is deceptively similar to that of the applicant. 

2. The next question in respect of the section 60 ground, is whether the opponent has shown a sufficient reputation in its trade mark to satisfy the requirements of subsection 60(b), such that the reputation is likely to deceive and cause confusion. The reputation must be shown to have existed at the priority date.

3. Reputation in Australia cannot be assumed - it must still be established as a question of fact - per Lockhart J in Conagra Inc v McCain Foods (Aust) Pty Ltd, (1992) 23 FCR 302. It is not necessary to prove reputation by direct evidence of consumer appreciation; it is commonplace to infer reputation from a high volume of sales, together with substantial advertising and other promotions: McCormick & Co Inc v McCormick (2000) 51 IPR 102, at 129.

4. While the opponent has provided evidence of substantial sales and advertising rebates in respect of its products, I am not satisfied that this is sufficient to support the necessary inference of reputation.  In Briginshaw v Briginshaw (1938) 60 CLR 336, at 361-362, Dixon J stated:

   “The truth is that, when the law requires the proof of any fact, the tribunal must feel actual persuasion of its occurrence or existence before it can be found. It cannot be found as a result of a mere mechanical comparison of probabilities independently of any belief in its reality…”

5. I am concerned that the opponent has not provided sufficient details of sales and other promotions with specific reference to the 05 mark.  Given the volume of turnover asserted, I would have expected that the opponent would have provided a breakdown of sales by trade mark/brand, and preferably with reference to retailer and/or geographical area.  Supporting documentation would have assisted in assessing reputation.

6. The evidence that has been provided by the opponent primarily relates to sales figures of sporting apparel, examples of which are contained in exhibit ES-1.  I am not satisfied that the numerals 05 in the examples provided amount to use as a trademark.  It is common for sporting apparel display numbers to identify a particular player; either relating to the player's position or position in a roster.  Numbers used in this way do not operate to indicate the origin of goods.  The there is no evidence that the numerals up appear on the labels of the goods.  If insofar as the goods display a trade mark, it appears to be the word the fubu.

7. The examples of use the opponent's mark are not use as a badge of trade origin of the goods, i.e. it is not use to distinguish goods dealt with or provided in the course of trade by a person from the goods  dealt with or provided by another person.

8. In the invoices contained in exhibit ES-2, of the numerals are arguably once again used to describe the type of decoration on the goods rather than to indicate their origin. 

9. While in McCormick, supra, Kenny J states that it is commonplace to infer reputation from a high volume of sales, etc, her Honour had also stated that the “assessment of the reputation of a trade mark goes far beyond mere examination of sales… figures”.  It is difficult clearly to infer sufficient reputation merely from the figures provided in this instance. The exhibited invoices, which are directed at retailers rather than consumers and are limited to under $3500 of sales, are insufficient to evidence a sufficient reputation amongst potential purchasers of the goods.

10. I am not satisfied that the opponent has established the acquisition of a reputation in Australia by the pre-existing trade mark or a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

11. Consequently I dismiss this ground opposition.

Decision and Costs

1. The trade mark application may then 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.

2. The applicant sought its costs in this matter. As the applicant has been successful in its opposition, I award costs against the opponent and direct that the opponent pay the costs of the applicant in accordance with the official scale.

Jock McDonagh

Hearing Officer

Trade Marks Hearings

27 January 2006