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Guccio Gucci SpA v Qui Chen

Guccio Gucci SpA v Qui Chen

Case [2011] ATMO 126 20 December 2011

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TRADE MARKS ACT 1995

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

Re:Oppositions by Guccio Gucci SpA to registration of trade mark applications 1267764(18) GUSSACI (word), 1267765(18) GC (device), 1325666(18) GUSSACI (device), 1333589(3) Gussaci (word), 1333594(14) Gussaci (word), 1333670(25) Gussaci (word), 1355018(9) Gussaci (word), 1383984(18, 25) By Gussaci (words) - filed in the name of Qui Chen.

Delegate:

Iain Thompson

Representation:

Opponent: Mr Tim Allen, solicitor, of Corrs Chambers Westgarth

Applicant: Not represented, did not appear or file written submissions

Decision:

2011 ATMO 126

S52 opposition – s44 and 60. Ground under section 44 established in relation to application 1267765; ground under section 60 established in relation to each application – registration refused.

Withdrawn applications: opponent entitled to its fees costs in relation to each of these oppositions

Background

In these matters Qui Chen of Firenze, Italy (‘the applicant’) has filed applications under the Trade Marks Act 1995 (‘the Act’) for the registration of the trade marks current details of which appear below:

Application No: 1267765

Priority Date: 16 October 2008

Goods:Class 18: Animal skins; imitation leather; purses; school bags; briefcases; handbags; travelling sets (leatherware); travelling bags; rucksacks; leather straps; umbrellas; school satchels; pocket wallets.

Trade Mark:

Application No: 1333589

Priority Date: 26 November 2009

Goods:Class 3: Cakes of toilet soap; essential oils; cosmetics; cosmetic preparations for skin care; incense; perfumes; perfumery; make-up preparations; make-up removing preparations; soap

Trade Mark:

Application No: 1333594

Priority Date: 14 February 2009
Goods:Class 14: Precious metals, unwrought or semi-wrought; charms (jewellery); jewellery; watches; chronometrical instruments

Trade Mark:

Application No: 1355018

Priority Date: 7 April 2010

Goods:Class 9: Eyeglasses; eyeglass frames; spectacle glasses; spectacle frames; spectacle cases; eyeglass chains; eyeglass cords; containers for contact lenses; contact lenses

Trade Mark:

Relevant to these matters, the applicant also filed applications (‘the withdrawn applications’) details of which appear below.

Application No: 1267764

Priority Date: 16 October 2008

Status: Withdrawn: 27 October 2011

Goods:Class 18: Animal skins; imitation leather; purses; school bags; briefcases; handbags; travelling sets (leatherware); travelling bags; rucksacks; leather straps; umbrellas; school satchels; pocket wallets
Trade Mark:

Application No: 1325666

Priority Date: 14 October 2009

Status: Withdrawn: 14 October 2009

Goods:Class 18: Animal skins; imitation leather; purses; school bags; briefcases; handbags; travelling sets (leatherware); travelling bags; rucksacks; leather straps; umbrellas; school satchels; pocket wallets.

Trade Mark:

Application No: 1333670

Priority Date: 26 November 2009

Status: Withdrawn: 3 November 2011

Goods:Class 25: Clothing; footwear; headwear; hosiery; neckties; scarves

Trade Mark:

Application No: 1383984

Priority Date: 16 September 2010

Status: Withdrawn: 27 October 2011

Goods:Class 18: Animal skins; imitation leather; purses; school bags; briefcases; handbags; travelling sets (leatherware); rucksacks; leather straps; umbrellas
Class 25: Clothing; footwear; headwear; hosiery; neckties; scarves

Trade Mark:

I will refer to both the applications at paragraph 1 and those at paragraph 2 of these reasons collectively as being ‘the opposed applications’ and those at paragraph 1 of these…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Guccio Gucci SpA v Qui Chen

Details

AGLC: Guccio Gucci SpA v Qui Chen [2011] ATMO 126
Case: [2011] ATMO 126
Decision Date: 20 December 2011

CaseChat Overview and Summary

Guccio Gucci SpA (the applicant) sought to register several trade marks, which were opposed by Qui Chen (the opponent). The decision was made by Iain Thompson, acting as the Registrar of Trade Marks. The Registrar was required to decide whether to register the trade marks or refuse registration, having regard to the grounds on which the applications were opposed.

The primary legal issue before the Registrar was to determine the extent to which the grounds of opposition had been established by the opponent. This involved assessing the evidence presented in support of the opposition and considering the impact of the applicant's withdrawal of some of its applications. The Registrar also had to determine the appropriate costs to be awarded to the opponent, considering both the successful oppositions and the withdrawn applications.

The Registrar reasoned that the opponent had succeeded in its opposition to the registration of trade marks 1267765, 1333589, 1333594, and 1355018. Consequently, the opponent was entitled to its costs in relation to these applications. For the withdrawn applications (1267764, 1325666, 1333670, and 1383984), the Registrar inferred that the withdrawal was due to the applicant's anticipation of likely failure. As the opponent was put to expense and inconvenience in opposing these applications before their withdrawal, the Registrar determined it was appropriate for the opponent to also be awarded costs in relation to the official fees for opposing each withdrawn application. The Registrar applied the principle that costs should follow the event where an opposition is successful or where a withdrawal suggests an admission of weakness in the application.

The Registrar ordered that the applicant pay the opponent's costs in relation to each of the opposed and withdrawn applications, with costs for evidence and hearings to be apportioned appropriately.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

Section 55 of the Act relevantly provides:55Decision(1)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. I refuse to register trade mark applications 1267765, 1333589, 1333594 and 1355018. Having succeeded in its opposition to registration in relation to applications 1267765, 1333589, 1333594 and 1355018, the opponent is entitled to its costs in relation to each of the applications with the costs of the evidence and hearing appropriately apportioned in relation to each of the applications.[3] (That is, the opponent is entitled to claim all of the official fees in respect of each successful opposition, the preparation of one statutory declaration being evidence in support and the hourly cost of the attendance of Mr Allen at the hearing in respect of all of the oppositions apportioned at one eighth in respect of each opposition including the withdrawn applications).[3] Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd [2001] ATMO 78 In relation to the withdrawn applications, those being 1267764, 1325666, 1333670 and 1383984, the late withdrawal of the applications was not made known to the opponent who was put to the expense and inconvenience of opposing each of them. As I have noted, it may be inferred that the applications were withdrawn because of the applicant’s perception that the opponent was likely to succeed – under such circumstances, it is appropriate that the opponent also be entitled to its costs relating to official fees in relation to its opposition of each withdrawn application. I award the opponent its costs as discussed in paragraphs 46 and 47, above, against the applicant.

Ratio Decidendi

Legal Principle Established

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Citations

AGLC Citation

Guccio Gucci SpA v Qui Chen [2011] ATMO 126

Most Recent Citation

Merial v Virbac [2012] ATMO 83

Cases citing this decision · 2 of 2 shown

Autumnpaper Ltd v Metropolitan Investment Group
[2015] ATMO 82 Para 14

…ACI was found to in respect of VERSACE and GUCCI[22]). [21] eBay Inc. v Tradiebay Pty Ltd [2013] ATMO 58 [22] Guccio Gucci SpA v Qui Chen [2011] ATMO 126. I note also that the assessment was made in the context of the applicant having filed a number of applications in respect of goods wherein the Opponent’s reputa…
Merial v Virbac
[2012] ATMO 83 Para 14

…re is no evidence or submission filed by the applicant which goes to counter such a conclusion. [9] Guccio Gucci SpA v Qui Chen [2011] ATMO 126 (at paragraphs 40 – 41).…

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Cases cited in this decision · 17 of 17 shown

NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited
[2011] FCA 1051 Para 1

…258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 at [22] to [26] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051.…
Chocolaterie Guylian N.V. v Registrar of Trade Marks
[2009] FCA 891 Para 1

…Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 at [22] to [26] and NV Sumatra Tobacco Trading Company v British America…
Campbell v Backoffice Investments Pty Ltd
[2009] HCA 25 Para 6

…oot question as to whether the confusion created by the similarity of the trade marks would persist to the point of sale. However, in Taco Co. (Aust) Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 Deane and Fitzgerald JJ said (of the different standard ‘mislead or deceive’)[2] at page 199: It is, in the circumstances, unnecessary tha…
Pfizer Products Inc v Karam
[2006] FCA 1663 Para 1

…The opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities. See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR…
Gianni Versace SpA v Monte
[2002] FCA 190 Para 6

…ed that (although not a trade mark case) judicial notice had been taken by Tamberlin J of the reputation of the VERSACE trade mark in Versace v Monte [2002] FCA 190. During the course of his judgment, His Honour observed at paragraph 10: The evidence, which I accept, is that the Versace brand is well known and es…
James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad
[2001] ATMO 78 Para 1

…at one eighth in respect of each opposition including the withdrawn applications). [3] Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd [2001] ATMO 78…
C A Henschke & Co v Rosemount Estates Pty Ltd
[2000] FCA 1539 Para 4

…s which could lead to their recognition and potentially give rise to confusion or deception. In C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; (2000) 52 IPR 42; [2000] AIPC 91-640; [2001] ATPR 41-793, Ryan, Branson and Lehane JJ said: Woolworths was not an infringement case and, of course, the noto…
McCormick & Company Inc v McCormick
[2000] FCA 1335 Para 3

…Concerning reputation, in McCormick & Company Inc v McCormick [2000] FCA 1335, Kenny J said, at 81: What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows: reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public…
Registrar of Trade Marks v Woolworths
[1999] FCA 1020 Para 1

…ed to the assessment of whether the trade marks are deceptively similar is that specified in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at paragraph 50 by French J who said: In Southern Cross Refrigerating Co v Toowoomba Foundr…
Taco Company of Australia Inc v Taco Bell Pty Ltd
[1982] FCA 170 Para 6

…er the confusion created by the similarity of the trade marks would persist to the point of sale. However, in Taco Co. (Aust) Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 Deane and Fitzgerald JJ said (of the different standard ‘mislead or deceive’)[2] at page 199: It is, in the circumstances, unnecessary that we form o…
Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd
[1982] HCA 44 Para 6

…tutory description and as to the relief, if any, which should be granted. [2] Parkdale Custom Built Furniture Pty. Limited v Puxu Pty Limited [1982] HCA 44; (1982) 42 A.L.R. 1 per Gibbs C.J. (at page 6)…
Berlei Hestia Industries Ltd v The Bali Company Inc
[1973] HCA 43 Para 1

…icant 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 [1973] HCA 43; (1973) 129 CLR 353 at 362: “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which th…
Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd
[1963] HCA 66 Para 7

…Deceptive similarity is to be assessed according to the tests set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at paragraph 13 per Windeyer J: On the question of deceptive similarity a different comparison must be made from that which is necessary wh…
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd
[1954] HCA 82 Para 1

…3 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at paragraph 50 by French J who said: In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The e…
Australian Woollen Mills Ltd v FS Walton & Co Ltd
[1937] HCA 51 Para 3

…icant believes that the creation is fit for the purpose for which it was created: in Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641 (‘Woolen Mills’ ) Dixon and McTiernan JJ said: The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of t…
Radio Corporation Pty Ltd v Disney
[1937] HCA 38 Para 5

…In Radio Corp Pty Ltd v Disney [1937] HCA 38; (1937) 57 CLR 448 Rich J, at 454, said of the word ‘confusion’: In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it i…
Registrar of Trade Marks v Woolworths Ltd
[1999] FCAFC 1020 Para 1

…dard which is applied to the assessment of whether the trade marks are deceptively similar is that specified in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at paragraph 50 by French J who said: In Southern Cross Refrigerating Co v…

Legislation cited in this decision · 2

Acts Interpretation Act 1901 (Cth)
1 mention (from Para 2)
Trade Marks Act 1995 (Cth)
1 mention (from Para 1)