Guccio Gucci SpA v Guess?, Inc
[2015] ATMO 71
•11 August 2015
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Guccio Gucci SpA to protection of International Registrations Designating Australia 1419739 (IR 1071233) and 1448483(IR 1089141) - GG DEVICE held by Guess?, Inc.
Delegate:
Jock McDonagh
Representation:
Opponent: Luke Merrick, instructed by Corrs Chambers Westgarth Lawyers
Holder: Hamish Bevan, instructed by F.B. Rice, Patent and Trade Mark Attorneys
Decision:
2015 ATMO 71
Reg. 17A.29 opposition – Grounds pursued under sections 42(b), 44, 58 and 60 – section 60 ground established – no requirement to consider other grounds -- IRDA refused protection for all goods
Background
Applications 1419739 and 1448483 are International Registrations Designating Australia (“IRDA”). They were filed in the name of Guess?, Inc (“the Holder”) under the Madrid Protocol.
Details of the IRDA are as follows:
Trade mark:
Mark Description:
The mark consists of four sets of two interlocking "G"'s surrounded by four diamonds.
Trade mark No:
1419739
(IR 1071233)
1448483
(IR 1089141)
Filing Date:
11 March 2011
12 July 2011 (Convention priority date 12.01.12)
Goods:
Class 18: Backpacks, book bags, sports bags, bum bags, wallets and handbags; handbags; handbags, purses and wallets; Leather handbags; luggage
Class 9: Covers and cases for portable electronic devices, personal electronic devices, cell phones, mobile phones, telephones, computers, laptop computers, tablet computers, notebook computers, MP3 players, portable music players, personal digital assistants, electronic reading devices, digital cameras, and cameras; eyewear
Section 189A of the Trade Marks Act 1995 (“the Act”) governs the consideration of IRDAs. This section makes provision for the Trade Marks Regulations (“the Regulations”) to “provide for such matters as are necessary to enable the performance of the obligations of Australia, or to obtain for Australia any advantage or benefit, under the Madrid Protocol.”
Following examination, IP Australia advertised its intention to extend protection of the IRDA to Australia in the Australian Official Journal of Trade Marks on 26 July 2012.
On 26 October 2012, Guccio Gucci SpA (“the Opponent”) filed Notices of Opposition (“the Notices”) to extension of protection of the IRDA to Australia pursuant to Reg 17A.29 of the Regulations[1].
[1] References to the Regulations in this decision refer to them only as they were prior to the amendments that came into effect on 15 April 2013.
I heard the matter in Canberra on 19 May 2015 as a delegate of the Registrar of Trade Marks. Luke Merrick of Counsel instructed by Corrs Chambers Westgarth Lawyers represented the Opponent. Hamish Bevan of Counsel, instructed by F.B. Rice, Patent and Trade Mark Attorneys represented the Holder.
Grounds of Opposition
The Opponent nominated some 14 grounds of opposition in the Notice, but pursued only the grounds of opposition under sections 42(b), 44, 58 and 60 of the Act. The onus is upon the Opponent to establish one or more of its grounds of opposition on the ‘balance of probabilities’.[2]
[2] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 and Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891, (2009) 82 IPR 13 at [22] – [27]. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32]
The time at which the grounds of opposition must be established is the date of filing of the application[3].
[3] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595
Evidence
The evidence consists of the following declarations:
Declarant
Position
Date Made
Annexures
Evidence in Support
Hung Yan Yan Bernie (“Hung”)
Senior Legal Counsel of parent company of Opponent
5.07.13
BH-1 to BH-26
Louis S. Ederer (“Ederer”)
Lawyer and lead counsel for Opponent in trade mark infringement actions 2009 – 2012
19.07.13
Evidence in Answer
Theresa McManus (“McManus”)
Lawyer for Holder
10.12.13
A to H
David Marroso (“Marroso”)
US trial lawyer for Holder
2.10.13
Evidence in Reply
Jennifer Louise King (“King 1”)
Lawyer, Corrs Chambers Westgarth Lawyers
9.04.14
JLK-1
Jennifer Louise King (“King 2”)
As above
9.07.14
JLK-1 to JLK-3
Holder’s Further Evidence
Joanne Christine Martin (“Martin”)
Solicitor of Holder’s Attorneys
9.09.14
JCM1
Opponent’s Response to Further Evidence
Natalia Josephine Blecher (“Blecher”)
Associate Lawyer at Opponent’s Lawyers
11.12.14
NJB-1
Hung declares that the Opponent is a luxury fashion, leather goods and accessories company, established in 1921 in Florence by Guccio Gucci. The Opponent’s business was initially focused on leather goods and small luggage; however, it has expanded to include wallets and purses, covers and cases for portable electronic devices, and eyewear.
Hung states that since the inception of the Opponent’s business, its products have prominently featured the letter ‘G’, reflecting the initials of Guccio Gucci. Since the 1960s, the Opponent has used trade marks using a theme based on the initials ‘G’, with the second ‘G’ inverted and such inverted initials being displayed in a geometric pattern joined by two dots. Examples of the Opponent’s trade marks supporting these proceedings are shown below:
Registration No/Priority Date
Trade Mark
Class(es)
937361
26.07.02
18: Leather and imitation leather, goods made thereof not included in other classes; animal skins and hides; trunks and suitcases; umbrellas, parasols and walking sticks; whips and saddlery
25: Clothing, footwear, headgear
28: Games, toys; gymnastics and sports goods not included in other classes; Christmas tree decorations
1229135
12.03.08
Endorsements: The trade mark consists of a repeating geometric pattern applied to the goods, as illustrated in the representation
9: Glasses, sunglasses, eyeglasses, spectacle glasses, lenses, frames and parts and fittings thereof; mobile phones; cases and accessories for mobile phones; cases and accessories for technology items
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; belts; belts (leather); belts (animal skin); belts (hides)
24: Textiles and textile goods, not included in other classes; fabrics; bed and table covers
25: Clothing; footwear; headgear; fabric belts for clothing; belts (clothing); children's clothing; goods for pets in this class
attached to the application form
1401219
4.10.10
3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices
9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; 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; computer operating programs recorded
12: Vehicles; apparatus for locomotion by land, air or water
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
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
25: Clothing, footwear, headgear
In confidential exhibits, Hung demonstrates substantial sales in Australia of the Opponent’s class 9 and 18 products bearing both versions of its trade mark and also examples of extensive advertising, marketing and promotional activities in Australia featuring the above trade marks. Operating revenue from the sales has been in the tens of millions of dollars for several years prior to 2011. Since 2005, extensive advertising, marketing and promotional expenditure has been in the hundreds of thousands of dollars.
Ederer provides details of US trade mark litigation between the parties, regarding the Opponent’s trade marks shown above and a different interlocking ‘G’ device used by the Holder in the US. Of relevance to these proceedings, Ederer provides examples of the Holder using its interlocking ‘G’ device within a diamond pattern on its goods (in Ederer, it was shown on handbags and shoes).
McManus provides a history of the Holder and its clothing and fashion accessory products and various trade marks applied to them. McManus refers to the Holder’s IRDA as the G-Shine trade mark, and I will refer to it as G-Shine.
McManus details the history of the adoption of G-Shine and its registration in Australia and worldwide. McManus also provides details of the Holder’s sales and advertising expenditure in Australia. While the receipts appear substantial, they are not as substantial as those of the Opponent.
Annexes B to D of McManus provide examples of the Holder’s use of G-Shine on its relevant goods. I note that the application of G-Shine to goods is done in a very similar manner to that employed by the Opponent.
McManus provides examples of a multiplicity of Australian trade mark registrations of the Holder and a variety of trade mark owners that feature the letter ‘G’ and/or ‘GG’. Details are included of such registrations and annexures showing various goods bearing the marks are provided. Most of these registrations are quite different to the G-Shine in dispute here and to the Opponent’s cites trade marks, and fall in different classes of goods.
Discussion - Section 60 ground of opposition
Section 60 of the Act provides:
Trade mark similar to trade mark that has acquired a reputation in Australia
60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, 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.To satisfy section 60 the Opponent must establish:
· that another trade mark had, before 12 January 2012, acquired a reputation in Australia in respect of particular goods/services; and
· because of the reputation of that other trade mark, the use of G-Shine trade marks would be likely to deceive or cause confusion.
The Opponent relies upon the reputation of its registered trade marks detailed earlier.
The principles relevant to the assessment of the likelihood of deception or confusion, were set out by French J in Registrar of Trade Marks v Woolworths (1999) 45 IPR 411 at [50]:
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc :
"...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."
22. I will first determine if the Opponent’s trade marks have acquired a reputation in Australia.
23. In relation to reputation Kenny J states in McCormick & Co Inc. v McCormick, 51 IPR 102, at 128:
In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.
24. At 129, Kenny J continues:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: …
25. I am satisfied that Hung evidences a high volume of sales together with substantial advertising expenditures and other promotions by which I can infer the requisite reputation in the Opponent’s trade marks.
26. Having established reputation, I turn to the likelihood of deception or confusion. The likelihood of deception or confusion must be finite and not trivial[4], and there must be a “real tangible danger of its occurring”[5]. The test is whether a substantial number of people, judged in light of the size and nature of the market involved, will be deceived or confused.[6]
27. Confusion in the minds of the public might not always eventuate in mistaken purchase; however, as noted by the Full Federal Court in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd[7]:
A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales: Southern Cross at 495. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived: Re Hack's Application (1940) 58 RPC 9 at 103-104.
28. It is not necessary to show under section 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion. While it is self-evident that G-Shine was not rejected under section 44 of the Act for being deceptively similar to the Opponent’s trade marks, it should be noted that different tests are applied under section 44 than are applied for section. Whereas under section 44 both trade marks must be considered as being in "notional fair use", section 60 requires a consideration of the actual manner in which the earlier trade mark has been used, a notional use being postulated only for the applicant's trade mark. Under section 60, account may be taken of any peculiarity in the actual manner of use of the opponent's trade mark likely to increase or decrease the risk of confusion[8].
29. Hung and Edererr provide examples of the Opponent’s trade marks 937361 and 1401219 being applied to goods in a repeating manner similar to the effect in trade mark 1229135, albeit without the background shading.
30. It is apparent to me that the Opponent’s trade marks and the G-Shine share very similar design features, in particular the reversed and inverted ‘Gs’ and the geometric layout of such initials. The placement of the small diamond elements on G-Shine accentuates a diamond-shaped theme to the trade mark. While a side by side comparison of the respective marks would highlight the many differences between the marks, I can imagine customers with imperfect recollection could be misled or deceived into imagining that goods offered under the G-Shine mark were those of the Opponent.
31. Given the degree of similarity between G-Shine and the Opponent’s trade marks, the Opponent’s reputation in its trade marks, and the similarity in the respective goods, I consider that a significant number of Australian consumers would at the very least speculate as to some sort of connection between the Opponent’s trade marks and the Holder’s G-Shine trade marks. Particularly since the trade marks are similar, the degree of speculation would, in my assessment, amount to, at the very least, the reasonable doubt required to trigger section 60.
32. I note that Kenny J in McCormick & Company Inc v McCormick, supra, at [93] - [96], expresses the view that section 44(3) does not provide an exception to section 60, and I conclude that the same reasoning suggests that section 44(4) likewise does not provide an exception to section 60 of the Act.
33. Therefore, the opponent has established a ground of opposition under the provisions of section 60. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds set out in the Notice although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.
[4] Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411, at 428
[5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, at 597
[6] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641
[7] [1998] FCA 1704, citing Heerey J in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495, at 501
[8] Shanahan’s Australian Law of Trade Marks and Passing Off (Davidson and Horak, 5th ed, 2012, Thompson Reuters) [50.2420]
Decision and Costs
Regulation 17A.34 of the applicable Regulations provides:
(1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a) to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which the grounds on which the
IRDA was opposed have been established.
(2) The Registrar must notify the International Bureau of his or her decision.
I have found the opposition to be successful. Accordingly, I refuse to extend protection of the IRDAs to Australia in respect of all of the Goods. In accordance with regulation 17A.34(2), the International Bureau will be notified of this decision as soon as practicable.
As the successful party, the Opponent is entitled to its costs which I award against the Holder as per Schedule 8 of the Regulations.
Jock McDonagh
Hearings Officer
Trade Marks Hearings
11 August 2015
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