Head Sport AG v Ahead Headgear Inc

[2003] ATMO 79

TRADE MARKS ACT 1995

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

Re:Opposition by Head Sport AG to registration of trade mark application 866890(25) - AHEAD - filed in the name of Ahead Headgear, Inc.

Delegate:

Terry Williams

Representation:

Opponent: Robert Kelson, solicitor, Callinan Lawrie Patent Attorneys

Applicant:  Russel Waters, Phillips Ormonde and Fitzpatrick, Attorneys

Decision:

S 52 opposition: s 44:  marks deceptively similar in view of rendition in application and of logical similarity between HEAD and (A)HEAD

Background

1. 
   Trade mark application 866890 was filed by Ahead Headgear, Inc.  The applicant seeks to register the following trade mark for "headgear, namely hats, bucket hats, earbands and visors".

1. The application was examined and has been advertised for possible registration.  Head Sport AG ("Sport") now opposes registration of the trade mark.  The opposition followed the procedures set out in part 5 of the Trade Mark Regulations, each party serving and filing evidence to support its position.  The applicant then requested to be heard.  At the hearing, the applicant was represented by Russell Waters, solicitor and trade mark attorney.  Sport was represented by Robert Kelson, solicitor.  I conducted that hearing and am now to decide the opposition under delegation from the Registrar of Trade Marks.

2. In his opening submissions on behalf of Sport, Mr Kelson indicated that Sport relied on only three grounds: s 44, s 58 and s 60.  I will deal with this matter under those headings.

Issues considered

S 44.  Conflicting trade mark application or registration

1. To establish this ground of opposition requires a prior and conflicting application or registration, for deceptively similar or substantially identical goods or services and for a trade mark that is either substantially identical or deceptively similar.

2. Mr Kelson pointed to three trade marks registered by Sport and having priority dates earlier than the opposed application.  These are:

• 
  

  419495, for the following device,

• 500718 and 579330, for the word HEAD.

1. 419495 and 500718 are registered in class 25 for goods specified as:

   Clothing, footwear, headgear; including sports clothing, sporting clothing, sports shoes, sporting footwear; tennis shoes, running shoes, exercise shoes, squash shoes, basketball shoes and boots, football boots and shoes, and all other footwear in this class for sporting purposes.

2. The third of the registrations, 579330, for the word HEAD can be put to one side immediately.  It is registered for:

   Tennis equipment, squash equipment and other racket sports equipment, ski equipment; golf equipment in class 28.

Such a registration cannot impede the present application because, for s 44 purposes, the goods are not of the same description (s 14) when the basic tests of nature uses and trade channels are applied.

1. Mr Kelson argued, as to the remaining registrations, that the applicant's trade mark was substantially identical to the word mark registered by Sport.  He noted, rightly, that the relevant standard is not absolute identity but substantial identity.  From Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375, he noted that points of difference must, when the marks are viewed side-by-side, be weighed against points of similarity. His written submissions note the relevant standard discussed by Gummow J in Carnival Cruises, from earlier law[1] "It requires a total impression of similarity to emerge from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible".

   [1] , Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414.

2. Sports' case at this point is no stronger than to say that "an impression of similarity emerges from a side by side comparison".  However, there are also factors that weigh heavily against that finding.  Mr Kelson referred to the opposition by New Tel Communications Pty Ltd[2] as an example of a case where, despite some differences that are not insignificant, a finding of substantial identity was made.  While these matters often require quite difficult balancing of such similarities and differences, I am prepared to say that, in the present case, the differences tell against the opponent.  The presently competing marks are simply not substantially identical, in that, to paraphrase Gummow J in Carnival Cruises, supra, a claim to ownership of one mark would not extend to the other.

   [2] New Tel Communications Pty Ltd v New Tel Limited [2002] ATMO 48

3. As to deceptive similarity, however, all of the relevant circumstances of the ordinary trade are to be allowed for.  The comparison between marks will not be side by side.  Mr Kelson referred me to Torpedoes Sportwear Pty Ltd v Thorpedo Enterprises Pty Ltd 2003 FCA 901.  As he noted, this sets out, at 78, the classical principles on this matter, and I will not draw the present reasons out by quoting at length.

4. I do not, despite the argument of Mr Kelson, regard the comparison of marks as being coloured by the notoriety of the HEAD trade mark.  Were such notoriety shown, it is certainly a circumstance that I could consider, though it is not clear to me that such an argument will always assist an opponent.  However, with all due respect to the opponent in this matter, I am not prepared to infer, from the evidence before me, that the opponent's trade mark is of the same genus as WOOLWORTHS or INTEL[3].

   [3]  I note that the reputation of the latter trade mark gave emphasis to similarities with the made up word INTELSIA  See opposition by Intel Corp to registration of application 810897 in the name of Andrew Tynan (publication pending)

5. The obscure typeface that the applicant has selected is the main driver for my finding that the applicant's trade mark is deceptively similar to the trade mark HEAD.  It will perhaps be clear to nearly all observers, after a brief period of analysis of the applicant's mark, that the presence of the word HEAD is only illusory, a result of the elision of the letter A in AHEAD.  However, the applicant's goods are not always bought with the discernment and attention to detail that may go with the self-selection[4] of selection of goods, particularly fashion attire[5].  I note this argument, pressed by Mr Waters, and agree with it but it cannot be taken too far.  Hats and caps have practical uses, are not always expensive, and will not always be bought by careful selection on the basis of trade mark.  Earbands and visors may also be bought with practical concerns first and trade mark selection second.  In such cases, the first impression delivered by the applicant's mark is, most obviously, the word HEAD.

   [4] Deeko Aust v Décor Corp (1988) AIPC 90-479 at 38,194-5

   [5] Taiwan Yamani Inc v Giorgio Armani SpA (1989) 17 IPR 92; (1990) AIPC 90-644

6. It follows that I am not convinced by the arguments presented by the applicant's attorney, Mr Waters.  It is true that the applicant's mark is an intricate graphic rendition.  It is also indisputable that "ahead" is a two-syllable word where "head" is only one syllable.  Mr Waters noted that in Thorpedo the difference was in the second letter, thorpedo v torpedo.  I would normally accede to the force of his argument that the present matter was a case where the first letter, typically of critical importance, was different and quite drastically changed the meaning of the two words.  However, as I have already indicated, I think the cleverness of the interlinking of the first three letters in the applicant's mark is such as to defeat the ordinary differences between the words HEAD and AHEAD.

7. Mr Waters emphasised that there must be a real likelihood of confusion - Registrar of Trade Marks v Woolworths (1999) 45 IPR 426. I am satisfied that this is the case. This is simply a matter where the first impression given by the applicant's mark is too like the word HEAD to be tolerable. It is true that the confusion will soon evaporate, and is unlikely to persist up to the time of sale[6].  However, the first hook, by which the customer's attention will be captured by the goods, may well be a misreading of the applicant's mark as HEAD rather than AHEAD.  The likelihood is, in the present case, sufficient to establish the ground of opposition.

   [6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592, Kitto J at first instance, p 595-6.

8. Also reinforcing this is an argument raised by Mr Kelson.  He argued that, by itself, there is a grammatical or conceptual similarity between "a HEAD cap" and "an AHEAD cap".  In the absence of the significant risk of misreading the mark at first instance, I would give such an issue little weight in the case of relatively short and simple word marks.  However, in this case it interlinks with the rendition of the applicant's mark and assists continuance of an initial wrong belief that a cap produced by the applicant is "a HEAD" cap.

Remaining grounds

1. I will say for the sake of completeness that the evidence relied on by Sport under s 60 does not satisfy me that the opponent had a sufficiently pervasive reputation in Australia at the relevant date to sustain its opposition under s 60.  Likewise, the lack of substantial identity precludes any success of the ground under s 58.

Conclusion

1. Sport has established a ground of opposition under s 44.  Accordingly, I refuse to register the application.

Costs

1. I direct that the applicant pay the costs of Sport to the limit set out in the official scale.

Terry Williams

Hearing Officer

17 December 2003