Hawa Dane Pty Ltd v Gillin Pty Limited
[2024] ATMO 220
•13 November 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Hawa Dane Pty Ltd to registration of trade mark application number 2247364 (20) - EMPIRE - in the name of Gillin Pty Limited
Delegate: | Louise Tuohy |
Representation: | Opponent: Kellie Stonier of Griffith Hack Lawyers Applicant: Barry Newman of Armour IP |
Decision: | 2024 ATMO 220 Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 44, 58A, 60 and 42(b) grounds nominated – s 44 established – trade mark refused registration |
Background
This matter concerns an opposition by Hawa Dane Pty Ltd (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark application (‘Application’) in the name of Gillin Pty Limited (‘Applicant’):
Trade mark number: 2247364
Trade mark: EMPIRE (‘Trade Mark’)
Filing date: 7 February 2022
Specification: Class 20: Furniture; Furniture adapted for use outdoors; Furniture cabinets; Furniture fittings, not of metal; Furniture for bathrooms; Furniture for babies; Furniture for children; Furniture for computers; Furniture for domestic use; Furniture for kitchens; Furniture for offices; Furniture for sitting; Furniture for storage; Furniture for the bathroom; Furniture for the bedroom; Furniture for the home; Furniture for the living room; Furniture for the lounge; Furniture for use in relation to computers; Furniture for use on patios; Furniture incorporating beds; Furniture made of plastics; Furniture made of steel; Furniture made of wood; Furniture made principally of glass; Furniture of metal; Furniture shelves; Furniture units; Furniture units comprising tables and seating units; Furniture units for kitchens; Furniture upholstered in leather or imitation leather; None of the above being commercial office furniture (‘Applicant’s Goods’)
Endorsement: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.
[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
The Application was examined as required by s 31 and advertised for possible registration on 16 August 2022.
On 17 October 2022 the Opponent filed a Notice of Intention to Oppose the Application followed by its Statement of Grounds and Particulars (subsequently rectified by this office) (‘SGP’) on 17 November 2022. The Applicant filed a Notice of Intention to Defend the opposition on 23 February 2023.
Thereafter the parties filed evidence in accordance with the Regulations. The Opponent filed the following evidence in support:
- Declaration of David Anthony Waller, Executive Director of the Opponent, made on 6 June 2023 with Exhibits DW-1 to DW-19.
- Confidential declaration of David Anthony Waller, made on 6 June 2023.
The Applicant filed the following evidence in answer:
- Declaration of Barry Stephen Newman, Patent and Trade Mark Attorney of Armour IP for the Applicant, made on 8 August 2023 with Exhibits BSN-1 to BSN-10 (‘Newman’).
- Declaration of Elissa Coleman, Chief Executive Officer of the Applicant, made on 1 September 2023 with Exhibits EC-1 to EC-13 (‘Coleman’).
The Opponent filed the following evidence in reply:
- Declaration of David Anthony Waller, made on 25 October 2023, with Exhibit DW-20 (’Waller 3’).
Once the time for filing evidence had ended both parties were given an opportunity to either request an oral hearing or hearing by way of written submissions. Both parties requested to be heard by way of video conference. As a delegate of the Registrar of Trade Marks I heard the matter by videoconference on 3 October 2024. Kellie Stonier of Griffith Hack Lawyers observed by Tara Koh of Griffith Hack Lawyers appeared on behalf of the Opponent. Barry Newman of Armour IP appeared on behalf of the Applicant. The parties’ oral submissions were supported by written submissions filed prior to the hearing.
Grounds of Opposition, Relevant Date and Onus
In the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58, 58A and 60. The Opponent did not press the grounds of opposition under ss 44 and 58.
However, the Opponent has pursued its ground under s 58A and did not pursue its ground under s 44. Section 58A(1) only operates if the opposed application for registration has been accepted under sub-s 44(4) and/or reg 4.15A(5). The Trade Mark was accepted for possible registration subject to sub-s 44(4).
The Explanatory Memorandum to the amending legislation which inserted s 58A offers an insight into the purpose of the provision:
1. A person may obtain acceptance and registration for a trade mark under section 44(4) even though an earlier similar trade mark has been registered for similar goods and services. The person must be able to show that they have used the trade mark before the filing date of the earlier trade mark on those particular goods or services.
2. However the owner of the earlier trade mark may have used their trade mark before applying for trade mark registration and accrued common law rights. As it stands the owner of the earlier registered mark has no basis on which to oppose registration of a trade mark accepted under subsection 44(4), even where their use pre-dates that of the accepted application.
3. The new section will provide a basis for the Registrar to give consideration to these issues in opposition proceedings.[2]
[2] Explanatory Memorandum, Trade Marks Amendment Bill 2006 (Cth) 8 [4.9].
This explanation conveys an intention to permit the Registrar, during an opposition proceeding, to determine which of the trade marks before her has been the subject of the earlier use. In order to determine whether the opponent ‘first used the similar trade mark’[3] (and therefore may have obtained a proprietary interest at common law, such as under the tort of passing off), it is necessary to compare the timing of trade mark use of both parties.[4]
[3] Section 58A(2)(a).
[4] K-TEC, Inc. v Health Foods, LLC [2016] ATMO 4, [14] to [22] (Delegate Richards).
This is highlighted in the parties’ submissions regarding the first use of Trade Mark. The Opponent submits that the first evidence of use of the Trade Mark for a retail store was in 2012 and it is unclear if it is use by the Applicant. In response the Applicant submits that it has been using the Trade Mark since at least 1998. In this matter, as a question of fact, I have to be satisfied that s 44(4) applies. Therefore, I am not at liberty to consider s 58A unless I first consider the s 44 ground.
Therefore, this decision will address the ground under s 44.
The date at which the rights of the parties are to be determined is the filing date of 7 February 2022 (‘Relevant Date’) which is also the priority date for the purposes of s 44, 58A and 60.
The Opponent bears the onus of establishing at least one of the grounds of opposition.[5] The standard of proof is the ordinary civil standard of the balance of probabilities.[6]
[5] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[6] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Discussion
Both parties are competitors in the same market selling, amongst other things, furniture.
Section 44
In respect of this matter s 44 relevantly provides:
44 Identical 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.
…
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
(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.
To satisfy the s 44 ground of opposition the Opponent must establish that the Trade Mark is substantially identical, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, and in respect of similar goods or closely related services.
In the event that each of these requirements is satisfied it may still be possible for me to accept the Application (or allow it to proceed to registration) if I am satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make acceptance of the Application for registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon trade marks.
In the SGP the Opponent particularised the ground of opposition by reference to its trade marks listed below (collectively the ‘Opponent’s Registrations’):
Trade mark number: 1546717
Trade mark: EMPIRE (‘717 Registration’)
Filing date: 15 March 2013
Specification: Class 20: Office furniture, including metal, plastic and wood office furniture; Removable partitions or screens for office use; Office trolleys being articles of furniture; Office shelving; Storage apparatus (furniture)
(‘717 Goods’)
Endorsement: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied
And
Trade mark number: 1546724
Trade mark: (‘724 Registration’)
Filing date: 15 March 2013
Specification: Class 20: Office furniture, including metal, plastic and wood office furniture; Removable partitions or screens for office use; Office trolleys being articles of furniture; Office shelving; Storage apparatus (furniture)
(‘724 Goods’)
Endorsement: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied
From the information set out in the SGP and verified on the Register of Trade Marks it is evident that the Opponent’s Registrations are held in a name other than that of the Applicant and have a priority date earlier than the Relevant Date.
Similar Goods
Section 44 also requires that goods be similar. Section 14(1) states that goods are similar if they are the same or of the same description to other goods. The determination of whether goods are similar involves the consideration of a number of factors including the nature, use and trade channels of the goods.[7] In the present case the Applicant has a broad claim for furniture in class 20 as well as broad claims for groupings of furniture items according to purpose or material including but not limited to furniture for offices, outdoors, bathrooms, children, computers and sitting, and furniture made of metal, plastic and wood. The Opponent’s 717 and 724 Goods cover Office furniture including metal, plastic and wood office furniture; Removable partitions or screens for office use; Office trolleys being articles of furniture; Office shelving; Storage apparatus (furniture) in class 20.
[7] Jellinek’s Application (1946) 63 RPC 59 (Romer J);Beck, Koller & Company’s Application (1947) 64 RPC 76.
I consider the Applicant’s Goods are similar to the 717 and 724 Goods. The nature of office furniture covered by 717 and 724 used for a different purpose other than in the office is the same as the nature of furniture covered by the Applicant’s Goods; they are all pieces of furniture. These pieces of furniture would be bought and sold through the same trade channels whether they were for the purpose of office use or for use in the home. Moreover, the item storage apparatus (furniture) covered by 717 and 724 would include wardrobes or cabinets, bookcases, shelves, dressers, chests of drawers, containers, dressing tables and library bookcases, and anyone of these items would fall within every one of the furniture groupings claimed by the Applicant.
Before proceeding it is important to note that on 23 August 2022 after the Trade Mark was accepted for possible registration, the Applicant requested that the specification of goods in class 20 be amended to include the limitation ‘None of the above being commercial office furniture’. I do not consider the addition of this amendment differentiates the Applicant’s Goods from the Opponent’s 717 and 724 Goods. This is because even with the limitation, the Application still covers goods which are the same or similar to the Opponent’s 717 and 724 Goods which are not commercial in nature.
I now turn to whether the trade marks of the 717 and 724 Registrations are substantially identical or deceptively similar to the Trade Mark.
Substantially identical
The test for substantial identity requires that the trade marks are considered side by side while having regard to the essential features of the trade marks. Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical. [8] For the purposes of comparison I have reproduced the respective trade marks below:
[8] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Windeyer J) (‘Shell’).
Opponent’s Registrations
Trade Mark
717 Registration
EMPIRE
EMPIRE
724 Registration
On a side by side comparison I find that the Trade Mark and the 717 Registration are substantially identical as both trade marks consist of the word EMPIRE solus. However, I find there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of the Trade Mark and the 724 Registration. While both trade marks share the word EMPIRE the presence of the terms IT’S EASIER WITH, EST 1982 and OFFICE FURNITURE in the 724 Registration provides a significantly different visual impression. As such the remaining question is whether the Trade Mark is deceptively similar to the 724 Registration.
Deceptively similar
The expression ‘deceptively similar’ is defined by s 10:
10 Definition of deceptively similar
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell:
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 [trade mark].[9]
[9] Ibid [13].
The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[10] conveniently stated the relevant principles, which may be summarised as follows:
[10] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (‘Self Care’).
(a)the resemblance between the two marks must be the cause of the likely deception or confusion;[11]
[11] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ) (‘Swancom’).
(b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[12]
[12] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).
(c)the marks should not be compared side by side;[13]
[13] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).
(d)the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[14]
[14] Ibid.
(e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[15]
[15] Ibid.
(f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[16]
[16] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ) (‘Henschke’).
(g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[17]
(h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [18]
the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[19]
(j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[20]
(k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[21] and
(l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[22]
[17] Shell, (n 8), 415.
[18] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).
[19] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).
[20] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (‘Woolworths’) (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).
[21] Australian Woollen Mills (n 13).
[22] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 13), 657.
The test for deceptive similarity is not to be a side by side comparison and depends upon the recollection of the ordinary consumer. What is important is the impression of the ordinary consumer. Visually the main and distinguishing element of both trade marks is the word EMPIRE. Consumers are far more likely to notice and remember the common element EMPIRE and less likely to notice and remember the terms IT’S EASIER WITH, EST 1982 and OFFICE FURNITURE appearing in the 724 Registration because they are descriptive or generic terms. Because consumers are more likely to recollect and focus on the common element EMPIRE they are likely to be deceived or confused as to the trade source. I find that the Trade Mark is deceptively similar to the 724 Registration.
The Applicant has sought to have the Application accepted under the provisions of ss 44(3)(a), 44(3)(b) and 44(4).
Prior continuous use
Of note is that evidence of prior use was required to support the examiners acceptance of the Application, and the Applicant relies on some of the same evidence previously presented to the examiner[23] in these proceedings. I have summarised the Applicant’s evidence relied on in this proceeding at paragraphs [34] to [40] below.
[23] Declaration of Elissa Coleman made on 9 July 2022, Exhibit EC-1.
In Coleman, Ms Coleman the Chief Executive Officer of the Applicant states that the Applicant operates five furniture and homewares stores in Western Australia under the name EMPIRE HOME. This name was adopted in 2021.
Ms Coleman states that the Applicant’s EMPIRE furniture business was started by her father in 1993 with the first store opening in Subiaco, Perth under the trade mark (‘OLD EMPIRE’).[24] Ms Coleman states that in 1998 she moved to Sydney and opened a store on Oxford Street named EMPIRE HOMEWARES.[25] Ms Coleman states that in the next year or two (in or around 1999/2000) the Subiaco store was renamed EMPIRE HOMEWARES. In about 2001 a sceond Perth store was opened in Osbourne Park under the name EMPIRE HOMEWARES. Then over the course of the next two or three years, a further store was opened in Myaree, Perth.
[24] Coleman [4] to [7], Exhibits EC-1, 2, 3 and 4.
[25] Coleman [8], Exhibit EC-5.
Ms Coleman declares that in the early 2000s her sister opened a store named EMPIRE FURNITURE in Newcastle which was sold to a third party a few years later.[26] Ms Coleman attests that it is her understanding that the store continues to trade as EMPIRE FURNITURE. Exhibit EC-11 to Coleman comprises screenshots from the Internet Archiving Service, Wayback Machine of an unnamed website dated in 2011. The screen shot demonstrates a store operating under the name EMPIRE FURNITURE NEWCASTLE.
[26] Coleman, Exhibits EC-11 to 12.
Ms Coleman swears that the Oxford Street, Sydney store was closed in about 2004 and with the sale of the Newcastle store the Applicant’s operations were based entirely in Western Australia. Over the next decade the Applicant opened and closed a number of stores in Western Australia, including in Highgate, Freemantle and Claremont.
Ms Coleman declares that after the opening of the Applicant’s Myaree store it began advertsing its stores online using the domain names empirehome.com.au and worldofempire.com. Exhibit EC-9 to Coleman comprises screen captures from the Wayback Machine, for the worldofempire.com website (‘Website’)[27] dated between 2012 to 2020. The pages feature the names EMPIRE HOMEWARES and/or EMPIRE in relation to the retail sale of furniture and homewares.
[27] The Website is a .com domain, however all transactions are in AUD and
Ms Coleman states that the EMPIRE business going back to the OLD EMPIRE business was run under the family owned companies being the Applicant and Empire Pty Ltd.[28] Then in 2009 Empire Pty Ltd was deregistered with all assets being assigned to the Applicant.
[28] Waller 3, [3]. Exhibit DW-20.
Exhibits BSN-1 to BSN-10 to Newman comprises photographs of pages from the Perth Yellow Pages and White Pages from 2001 to 2016. The photographs of the Yellow Pages are taken from the ‘Furniture - Retail’ section and the photographs of the White Pages show alphabetical entries.
In my assessment of the Applicant’s evidence, I find that the Applicant has not used the Trade Mark in relation to the Applicant’s Goods prior to the priority dates of the 717 and 724 Registrations.
I am not satisfied that use of the OLD EMPIRE trade mark is use of the Trade Mark with additions or alterations not substantially affecting its identity. Section 7(1) provides:
(1) If the Registrar or a prescribed court, having regard to the circumstances of particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
In Sports Warehouse, Inc v Fry Consulting Pty Ltd, Kenny J said:
Adapting Windeyer J’s statement to the inquiry under s 7(1), whether a person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark requires a side by side comparison of the trade mark with the alleged use, assessing the importance of their similarities and differences having regard to the essential features of the trade mark and the total impression of resemblance or dissimilarity that emerges from the comparison.
On a side by side comparison the Trade Mark is for the word EMPIRE solus and the OLD EMPIRE trade mark consists of a crown device appearing above the stacked wording OLD and then EMPIRE. These additional elements in the OLD EMPIRE trade mark are unlikely to go unnoticed on a side by side comparison. The total impression emerging from a side by side comparison is not one of resemblance. As such, use of the OLD EMPIRE trade mark constitutes use of the Trade Mark with additions or alterations that do substantially affect its identity.
All of the Applicant’s stores opened from 1998 to 2021 were operated under the trade mark EMPIRE HOMEWARES. In this case I consider that the addition of the word HOMEWARES is descriptive and does not substantially affect the identity of the Trade Mark.
However, the Applicant has declared that the EMPIRE business going back to the OLD EMPIRE business was run under two family owned companies (Empire Pty Ltd and the Applicant) until 2009 when Empire Pty Ltd was deregistered. As such without evidence indicating which company operated which business during this time period, or documentation as to which company owned the Trade Mark or whether there were licence agreements in place or whether the two companies operated with a unity of purpose,[29] I am unable to assess use prior to 2009.
[29] Trident Seafoods Corporation v Trident Foods Pty Ltd (‘Trident’) [2019] FCAFC 100 (Reeves, Jagot and Rangiah JJ).
The evidence produced for the Sydney store is pre 2009 and comprises two magazine articles from interviews with Ms Coleman, and neither discuss furniture. Exhibit EC-5 to Coleman comprises a copy of an article by Belle magazine from 2000, where Elisa Coleman discusses her mantra for entertaining. Exhibit EC-7 to Coleman is a copy of an article published in Elle magazine from 2000. The article discusses Elisa Coleman’s job and her new range of store accessories including handbags, slippers, cushions and glass vessels.
The evidence produced for the Newcastle store is dated 2011. Given Coleman states that the Newcastle store closed a few years after it opened in early 2000s and the evidence does not include the website domain name, I am not satisfied that the evidence relating the Newcastle store is attributable to the Applicant.
The evidence from the Applicant’s Website dated between 2012 to 2020 demonstrates use of the Trade Mark in relation to online retail services. In particular the screen capture from 2012 shows prior use of the Trade Mark in relation to the retail sale of homewares. However, there are no screenshots of the Applicant’s furniture product catalogues to assess its range of furniture and whether it is the Applicant’s own furniture being sold or if the Applicant is simply selling furniture of third parties. There is no evidence the Applicant manufacturers its own goods, or that furniture items are offered for sale with use of the Trade Mark on or in physical or other relation to the goods other then use of the Trade Mark on its retail Website and physical stores.
The evidence of the Applicant’s entry in the Perth Yellow Pages appears under the ‘Furniture - Retail’ category and the entries under the Perth White Pages appear under the name EMPIRE or EMPIRE HOMEWARES. Neither of the entries provides information in relation to the nature of the furniture items sold.
The Applicant has claimed a wide range of furniture goods in class 20 and has not provided cogent evidence to demonstrate the range of furniture items its sells under the Trade Mark. I am not satisfied that the Applicant’s evidence establishes that the Trade Mark was used in relation to the Applicant’s Goods in Australia since before the priority dates of the 717 and 724. As such the provisions of s 44(4) were not properly applied.
Honest concurrent use and other circumstances
Turning to consideration of honest concurrent use or other circumstances under s 44(3), there is no use of the Trade Mark for the Applicant’s Goods and the Applicant has made no explicit statement regarding the honesty of use. However, Ms Coleman declares that the Applicant has been in business for over 25 years with physical stores in at least two States and has achieved significant sales.[30]
[30] Coleman, Confidential Exhibit EC-13.
The Applicant submits that co-existence of the trade marks has caused no actual instances of confusion and caused no prejudice or harm to the Opponent. The Applicant submits that the likelihood of confusion must be considered minimal given the clear differences in the market sectors in which the two parties operate. The Applicant claims that there will be large inconvenience to it if the Application were refused compared to the apparent lack of inconvenience to the Opponent. Furthermore, the Applicant submits that its trade mark registration 798904 for the word EMPIRE has been registered in class 20 for some 25 years, and that the Application represents at best a minor expansion of that existing registration.
In general, the Opponent submits that the decision of the Applicant to move into furniture goods in class 20 with an identical trade mark will cause confusion in the market given the trade marks are identical and the goods are similar.
In my view the Applicant has offered no compelling reason why the provisions of s 44(3) should be applied. The Applicant has been operating homeware stores under the Trade Mark from at least 2009 without any instances of customer confusion, however there is no evidence of use of the Trade Mark in relation to the Applicant’s Goods for a significant period concurrently with the Opponent’s Registrations. The Applicant’s confidential sales revenue is not broken-down and there is no way to determine how much of the annual revenue figures would relate directly to all the types of furniture claimed. Moreover, the sales figures are not supported by evidence of invoices or other sales transaction documentation which detail the goods sold.
In considering other circumstances, the Applicant contends that the Application would only be a minor expansion of the goods covered by its 798904 registration in class 20. However the 798904 registration covers utensils, fittings and practical or decorative accessories for use in the home in class 20 and not the wide range of furniture items claimed in the Application. Considering the differences in the goods I do not consider the Applicant’s Goods to be a minor expansion to its 798904 registration. While it is noted that all of the Applicant’s retail stores operate under the Trade Mark, there is no evidence of use of the Trade Mark in relation to the Applicant’s Goods, and there is no evidence of the prejudice that would incurred by the Applicant if the Trade Mark is refused as all the Applicant’s evidence is directed to its online retail services and physical stores rather than to the furniture goods claimed.
For these reasons given above, I do not consider that the Applicant has succeeded in establishing the provisions of s 44(3) should be applied to the Application.
Therefore, the s 44 ground of opposition has been established.
Decision
Section 55 provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, 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.
The Opponent has established a ground of opposition in respect of all the Applicant’s Goods. Therefore, I refuse to register trade mark number 2247364. If the Registrar is served with a notice of appeal, I direct that the disposition of the Application should be in accordance with the Court’s order or direction.
Costs
Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Applicant under s 221 in line with Schedule 8 of the Regulations.
Louise Tuohy
Hearing Officer
Delegate of the Registrar of Trade Marks
13 November 2024
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