Guccio Gucci SpA v Qui Chen
[2011] ATMO 126
•20 December 2011
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 Withdrawn applications: opponent entitled to its fees costs in relation to each of these oppositions |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Relevant to these matters, the applicant also filed applications (‘the withdrawn applications’) details of which appear below.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Status: Withdrawn: 27 October 2011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 reasons as being the ‘pending applications.’
The opposed applications were examined in compliance with section 31 of the Act, accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks. Guccio Gucci SpA (‘the opponent’) of Firenze, Italy, subsequently served and filed Notices of Opposition (‘the Notices’) to the registration of the opposed trade marks on the dates shown in the table below.
Application Number Dates Advertised Dates of the Notices 1267765 19 Feb 2009 18 May 2009 1267764 19 Feb 2009 04 Jun 2009 1333589 25 Mar 2010 25 Jun 2010 1333594 25 Mar 2010 25 Jun 2010 1355018 05 Aug 2010 06 Aug 2010 1325666 11 Feb 2010 11 May 2010 1333670 25 Mar 2010 15 Jul 2010 1383984 03 Feb 2011 03 Feb 2011
The Notices encompass reference to most of the available grounds of opposition, including those under sections 44 and 60 on which the opponent relied at a hearing of the matters. The hearing was before me as a delegate of the Registrar of Trade Marks in Melbourne on 16 September 2011. Mr Tim Allen, solicitor, of Corrs Chambers Westgarth represented the opponent. The applicant did not appear, nor did it rely on written submissions.
On 15 September 2011, the day before the hearing, the applicant withdrew the applications for registration listed at paragraph 2, above. The fact that these applications were withdrawn was not known to either Mr Allen or me at the hearing and the hearing was held on the basis that all of the opposed applications were still pending and were argued by Mr Allen as such. When it came to my attention that applications 1267764, 1325666, 1333670 and 1383984 had been withdrawn, I brought this to Mr Allen’s attention and he subsequently made written submissions concerning the withdrawal and seeking costs in relation to the opposition of those withdrawn applications.
Evidence
The evidence in support of the opposition consists of a statutory declaration by Hung Yan Yan Bernie who is Senior Legal Counsel of the opponent.
Briefly stated, Mr Bernie attests to the history, use and reputation of the opponent’s GUCCI trade marks. The opponent’s goods bearing the trade mark GUCCI have been sold in Australia since 1985 both through its own boutiques in Melbourne (two locations), Sydney (two locations), Perth, and Surfer’s Paradise and through the retail stores of third parties. The trade marks used by the opponent in Australia include the trade mark GUCCI and those which appear immediately below:
(‘Gucci 1’) (‘Gucci 2’)
The Gucci 2 trade mark above appears prominently in a repeating pattern on fabric used by the opponent in the manufacture of a range of goods including handbags, wallets, luggage and purses. The Gucci 1 trade mark also appears on fabric used by the opponent for similar purposes in the manufacture of a range of goods including handbags, wallets, luggage and purses.
The above trade marks have been registered in Australia by the opponent. Details of the opponent’s registrations attested to by Mr Bernie which are relevant to these proceedings are:
Registration No: 265544
Priority Date: 2 February 1973
Goods: Class 18: Leather goods, handbags and travel goods
Trade Mark: GUCCI
Registration No: 323413
Priority Date: 26 October 1978
Goods:Class 3: Soaps, perfumery, essential oils, cosmetics and hair lotions
Trade Mark: GUCCI
Registration No: 325814[1]
[1] Although the opponent relies on registration 325815, that particular registration is a registration ‘linked’ to 325814.
Priority Date: 16 January 1979
Goods:Class 14: Jewellery and articles from precious metal and their alloys
Class 18: Articles made of leather and imitations and substitutes for leather in Class 18; travelling bags and cases, umbrellas, parasols and walking sticks and handbags
Class 24: Textile articles in Cl. 24
Class 25: Clothing including boots, shoes and slippers
Class 34: Tobacco, smokers’ articles in this class and matches
Trade Mark: GUCCI
Registration No: 634918
Priority Date: 13 July 1994
Goods:Class 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
Trade Mark:
Registration No: 937361 (International registration 791674)
Priority Date: 3 October 2002
Convention Date: 26 July 2002 (Italy – based on TO2002 C002239)
Goods:Class 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
Class 25: Clothing, footwear, headgear
Class 28: Games, toys; gymnastics and sports goods not included in other classes; Christmas tree decorations
Trade Mark:
Registration No: 1229135
Priority Date: 12 March 2008
Goods:Class 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
Class 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)
Class 24: Textiles and textile goods, not included in other classes; fabrics; bed and table covers
Class 25: Clothing; footwear; headgear; fabric belts for clothing; belts (clothing); children’s clothing; goods for pets in this class
Trade Mark:
Endorsement: The trade mark consists of a repeating geometric pattern applied to the goods, as illustrated in the representation attached to the application form.
The opponent includes confidential details of amounts spent on advertising and promoting goods sold under its trade marks: the goods on which the trade marks have been used include goods within the specifications of goods of each of the opposed applications. The opponent also supplies confidential details of revenue from the sale of goods which bear its trade marks.
The applicant has not served and filed evidence in answer.
Onus
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 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.
Section 44
While the main thrust of Mr Allen’s submissions went to section 60 of the Act, my understanding is that the opponent also pursues grounds under section 44. Section 44 of the Act relevantly provides:
44Identical 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.
In order to establish a ground of opposition under subsection 44(1), the opponent thus must here demonstrate the existence of one or more registered or pending trade marks owned by a person other than the applicant:
·With an earlier priority date (or dates) than that of the opposed trade mark; which has
·Similar goods to those of the opposed trade mark; and
·A trade mark (or trade marks) which are deceptively similar.
As well as relying on its own trade marks, the opponent relies on several of those of Gainni Versace SpA (‘Versace’) which is a well-known Italian fashion house, alleging that the opposed trade marks which consist of the word GUSSACI ‘bridge over’ its own trade mark GUCCI and the VERSACE trade marks. These Versace registrations are:
Application No: 330597
Priority Date: 26 March 1979
Goods: Class 3: Cosmetics and perfumery
Trade Mark:
Application No: 511617
Priority Date: 26 May 1989
Goods:Class 18: Leather and imitation of leather and articles made from these materials and not included in other classes; skins, hides; trunks and travelling bags; umbrellas, parasols and walking whips, harness and saddlery
Trade Mark:
Application No: 560862
Priority Date: 1 August 1991
Goods: Class 9: Glasses and sunglasses
Trade Mark: GIANNI VERSACE
Application No: 647349
Priority Date: 1 December 1994
Goods:Class 18: Trunks and travelling bags; umbrellas, parasols and walking sticks
Trade Mark: VERSACE
Application No: 671091
Priority Date: 29 August 1995
Goods:Class 3: Cosmetics, including night and day cream, cleaning preparations for the face and body, bathfoam, shaving foam, aftershave, foundation makeup, nail polish, deodorants for men and women, hand and baby soap, hair shampoo and rinses, hair spray, toothpaste and fragrances, namely perfume, toilet water and essential oils for personal use for men and women
Trade Mark: VERSACE
Application No: 912308
Priority Date: 9 May 2002
Goods:Class 9: Optical instruments, apparatus and equipment; glasses; sunglasses; spectacles; spectacle frames; monocles; lorgnettes, parts, fittings, accessories, components and cases for all the aforesaid goods
Class 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
Trade Mark: VERSACE
Each of the registrations on which the opponent relies has a priority date which is earlier than the priority dates of the pending applications.
The goods in question are, in essence, similar goods or are goods of the same description.
The remaining question is whether the trade marks in question are deceptively similar.
Inherent within the ground of opposition under section 44 – that the pending trade marks which are comprised of the word GUSSACI are formed by ‘bridging over’ the trade marks VERSACE and GUCCI – is the pre-condition that for a person to recognize that the GUSSACI trade marks are so formed that the person be previously thoroughly acquainted with the GUCCI and VERSACE trade marks. In other words, it is only the reputation of the GUCCI and VERSACE registered trade marks 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 notoriety taken into account was not any notoriety attaching to marks already registered (or marks applications for which had been lodged before the Woolworths application); the notoriety attached to an element of the mark for registration of which Woolworths had applied. Nevertheless, in our view, Woolworths suggests a proposition for which the cases on which the appellants rely may be taken as authority. It is that, in assessing the nature of a consumer’s imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration. It is unnecessary to consider whether the cases are authority for precisely that proposition. All that is necessary for present purposes is to hold, as we would, that they are authority for no wider proposition in relation to the relevance, on a question of deceptive similarity in proceedings where it is alleged under s 120(1) that a registered mark has been infringed, of evidence as to the reputation attaching to the mark. A wider proposition would not, in our view, be consistent with the earlier, and binding, authority to which we have referred. It is unnecessary, in order to decide this case, to go further.
To take notice of the reputation of the registered trade marks upon which the opponent relies in relation to the section 41 ground and the pending trade marks which are comprised of the word GUSSACI is therefore inappropriate and the opponent cannot, therefore, establish its ground in relation to those trade marks under subsection 44 of the Act.
There remains pending application 1267765 (the letters GC inverted in relation to each other set within a pattern) to consider under this ground of opposition.
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 when substantial identity is in 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 impressions that such persons would get from the defendant’s television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106 . And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “In deciding this question, the marks ought not, of course, to be compared side by side. 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” (1937) 58 CLR, at p 658
I am to estimate the effect on the minds of potential customers – in other words, the assessment is to take place in the context of the marketplace for the goods. This contextual comparison was stressed in In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, above, where Parker J said:
You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.
The standard 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 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 essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(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 [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 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.”
Irrespective of the differences between the trade marks, the trade marks in question have strong visual and thematic similarities. The pending trade mark has a central element composed of the letters GC – these are inverted in relation to each other as are the letters GG within the opponent’s registered trade marks. The typeface, if not the same, is very similar and there is a strong visual similarity between the letters GC and GG particularly when the letters within each trade mark are inverted in relation to each other. The letters occur within a pattern. One of the uses to which the applicant could put its trade mark is as a repeating pattern over the surface of the goods – under such circumstances the resemblance would be strengthened both in the perceived relationship between the letters and the overall pattern formed by the repetition of those letters.
The resemblance between the trade marks is such that it appears probable that the opposed GC trade mark was coined with reference to one or more of the opponent’s trade marks. While this is not necessarily fatal to an application, such coinages run a risk that at the very least their use would give rise to a species of confusion – that of attracting a customer’s attention to the applicant’s goods as a passable iteration of the opponent’s goods. Such an ‘homage’ also gives rise to a perception that at least the applicant 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 the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive. Moreover, he can blame no one but himself, even if the conclusion be mistaken that his trade mark or the get-up of his goods will confuse and mislead the public.
The same is also true of trade marks which are likely to confuse. While the meanings of the expressions ‘deceive’ and ‘cause confusion’ are often merged, the word ‘confuse’ refers to a different state of mind than does the word ‘deceive.’ In Pioneer Hi-Bred Corn Co v Highline Chicks Pty Ltd [1979] RPC 410, at 423, Richardson J, in the New Zealand Court of Appeal, said:
‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.
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 is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney”. The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney”. This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.
I consider, as I have inferred above, that it is a moot 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 that we form or express any concluded view on the question whether it is a principle of the law of passing-off that deception must continue, or be likely to continue, to the “point of sale”. As a matter of principle and of logic, it is difficult to see why it should be. For the purposes of the present appeal, it suffices to say that, even if such a limitation should be recognized in the law of passing-off, we see no ground for importing it into the provisions of s 52 of the Act. In our view, it is sufficient to enliven s 52 that the conduct, in the circumstances, answers the statutory description, that is to say, that it is misleading or deceptive or is likely to mislead or deceive. It is unnecessary to go further and establish that any actual or potential consumer has taken or is likely to take any positive step in consequence of the misleading or deception. That is not to say that evidence of actual misleading or deception at the point of sale and of steps taken in consequence thereof is not likely to be both relevant and important on the question whether the relevant conduct in fact answers the statutory 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)
I consider that the resemblance between the GC trade marks and the opponent’s GG trade marks is such that a person seeing the GC trade mark is likely to be confused.
The opponent has established its ground of opposition under section 44 in relation to application 1267765.
Section 60
Section 60 of the Act provides:
60Trade 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)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.
Note:For priority date see section 12.
Where section 60, above, refers to ‘another trade mark’ the section is also to be read to refer to ‘other trade marks’: section 23 of the Acts Interpretation Act 1901:
23Rules as to gender and number
In any Act, unless the contrary intention appears:
(a)words importing a gender include every other gender; and
(b)words in the singular number include the plural and words in the plural number include the singular.
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 generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.
Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?
The trade marks on which Gucci relies have been used extensively in Australia and it is likely that most Australians recognize these trade marks.
At the hearing, Mr Allen submitted that the pending trade marks which comprise the word are portmanteau words coined with reference to the phonetics of the opponent’s well known GUCCI trade mark and the well known trade mark of Versace SpA which comprise the word VERSACE.
With regard to the latter trade mark, Mr Allen submitted 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 established in Australia as a luxury, quality brand as a consequence of its widespread promotion on a global scale and by the extensive marketing of Versace brand products through exclusive distributors and dedicated stores and other outlets. In 1998, the Versace group entered into a business partnership in Australia with Sunland Group Limited (“Sunland”), which has resulted in the Palazzo Versace Gold Coast Hotel in Queensland.
By way of background and history, I also note that His Honour also stated at paragraphs 1 to 3:
Gianni Versace (“Gianni”) was a famous fashion designer who had a long and successful career. He began his career as a designer in Tuscany in 1972. Accompanied by his brother, Santo Versace, (“Santo”), he moved to Milan in 1976 and together they planned the creation of the Gianni Versace fashion label, which was founded the following year. Gianni presented his first signature collection in Milan in March 1978. In that year, Donatella Versace (“Donatella”), the sister of Gianni and Santo, also began to take an active role in the creative side of the business. Later, she was to manage the Versace brand.
The Versace business has been carried out through a network of companies, the parent of which, Gianni Versace Srl, was subsequently transformed into Gianni Versace SpA, a company owned by shareholders. The first applicant is now the holding company of the Gianni Versace group of companies (“the group”). This organisation has developed a network of independent franchisees which, during the 1980’s, began to open exclusive points of sale under the Gianni Versace insignia. At the end of the 1980’s, the group took steps to develop a network of directly owned stores. In February 1988, the group brought back licensing rights to market and manufacture perfumes and cosmetics under the insignia. These were subsequently sold to a newly incorporated joint venture between the group and an Italian fragrance company.
From the early 1980’s, the group established operations in various fashion centres throughout the world, largely in the form of boutique stores in prestigious shopping areas. In 1993, the group diversified into the area of home accessories, including tableware and bedware. During 1996 and 1997, the group continued to expand and set up a new flagship boutique on Fifth Avenue, Manhattan. In 1997, the group set up a German company to regain control of its boutiques in Frankfurt and Hamburg, which had been previously managed by independent franchisees. Throughout these two decades, the group had relied on its recognition and repute in undertaking its expansion and achieving its success. Much of that was attributable to Gianni, who had won numerous fashion awards throughout his career. The collections presented by him both in men and women’s high fashion achieved a high level of success and popularity. It was clear from the evidence that by 1997, the group had become one of the pre-eminent international fashion houses. In some circles, the Versace label is a household name.
In the context of the confusing similarity of the opponent’s GG trade mark to the applicant’s GC trade mark I am inclined to accept Mr Allen’s submissions (that the opposed trade mark GUSSACI is a portmanteau formed with reference to the well known trade marks GUCCI and VERSACE) as having both substance and force. It would appear, prima facie, that the each of the opposed trade marks is an ‘homage’ to the well known trade marks of other fashion designers, sufficient to raise the ‘rule’ referred to by Dixon and McTiernan JJ in Woolen Mills, above.
There is no evidence or submission filed by the applicant which goes to counter such a conclusion.
I further note that the withdrawn applications were each filed in respect of goods where the reputations of the GUCCI and VERSACE trade marks are strongest – the withdrawal of these applications on the eve of the hearing could be objectively viewed as being the result of a conclusion by the applicant as to the merits of the opposition in relation to those trade marks (ie that the opposed trade marks were devised in the manner alleged by the opponent because of the reputations of the trade marks on which the opponent relies in order to confuse). I can see no reason, however, that a similar logical conclusion should not apply to the pending applications which are in respect of fashion items in Classes 14, 3, 14 and 9 of the International (Nice) Classification of Goods and Services.
I further note that my remarks and conclusion concerning the applicant’s GC trade mark a fortiori apply under section 60.
Section 55
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.
Costs
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.
Iain Thompson
Hearing Officer
Trade Marks Hearings
20 December 2011
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