Head Sport v Head's Caps Marketing Pty Ltd

[2006] ATMO 44

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 952366(25) - HEAD'S CAPS AND DEVICE - filed in the name of HEAD'S CAPS MARKETING PTY LTD

Delegate:

Nathan Sinclair

Representation:

Opponent: Robert Kelson, Florence McFarlane of Callinan Lawrie appeared in person, Patent and Trade Mark Attorneys

Applicant: David Shanks, David Shanks & Associates – written submissions

Decision:

Section 52 opposition. Ground of opposition under s44 not made out – marks to proceed to registration – costs awarded against opponent

Background

1. Head’s Caps Marketing Pty Ltd ('the applicant') of Tullamarine, Victoria, has filed application to register a trade mark, current details of which are:

App No:  952366

Priority Date:  1 May 2003

Acceptance Advertised: 29 July 2004

Goods:Class 25: Headwear

Trade Mark:  

1. On 28 October 2004, Head Sport AG, ('the opponent'), filed Notice of Opposition (‘the Notice’) to the registration of the trade mark. The Notice includes most of the available grounds under the Trade Marks Act 1995 (‘the Act’).

2. Evidence in support was served and filed, as was evidence in answer.  The opponent has elected not to file and serve any evidence in reply and neither party has submitted an application to file further evidence. 

3. A hearing was held before me, as a delegate of the Registrar of Trade Marks, in Melbourne on 14 March 2006.  Mr Robert Kelson and Ms Florence McFarlane of Callinan Lawrie appeared in person to represent the opponent.  Mr David Shanks of David Shanks & Associates (for the applicant) did not appear but sought to rely on written submissions.

Evidence

1. The following table outlines the evidence filed in relation to this matter:

Evidentiary Stage	Declarant	Exhibits	Date filed
Evidence-in-Support	Florence McFarlane “FMF”	FMF1 – FMF6	7 December 2004
Evidence in Answer	Michael Leslie Cowan “MLC”	MLC1 – MLC8	12 September 2005

Grounds

1. Although the opponent nominated most of the available grounds for opposition, the opponent sought to rely only on the section 44 ground. For the sake of completeness, I now find that those other grounds listed on the Notice have not been established and dismiss them.

Section 44

1. Section 44 of the Act 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.

   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.

   (2)         Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a)         it is substantially identical with, or deceptively similar to:

   (i)           a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)          a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1:            For deceptively similar see section 10.

   Note 2:            For similar services see subsection 14(2).

1. The registrations on which the opponent refers to (as outlined in FMF-2) include 245393, 277058, 277059, 419495, 500718, 579330, 621367 and 818990. While I have considered the section 44 ground against of each of these marks, the opponent nominated 500718 and 419495 as the most relevant as shown below:

HEAD  

500718         419495 – HEAD and device

1. Both of these registrations are in the name of the opponent and possess priority dates that are clearly earlier than the present application.    Both marks are registered in Class 25 for a variety of goods that include “headgear”.  I am satisfied that the goods of the present application, namely “headwear”, fall within the scope of this broad term and that the goods are therefore closely related.  As a result, the present matter turns on the similarity or otherwise of the relevant marks.

2. Applying the standard test for substantial identity[1], I do not consider any of the marks to which the opponent has directed my attention to be substantially identical to the present application.  The opponent did not press the substantial identity of both marks to any great extent.  While both marks may share the term HEAD, a side by side comparison reveals numerous differences including a distinctive and memorable device of a person’s head grinning broadly.

   [1] Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd ((1961) 109 CLR 407 at 414-415:

3. During the hearing, the opponent focused the vast majority of their submissions towards establishing factors considered relevant to deceptively similarity. Comparing the marks for deceptive similarity traditionally[2] does not involve a side by side comparison of the relevant marks but rather a comparison of the impression (based on recollection) left by both marks on persons of ordinary intelligence and memory. 

   [2] Ibid.

4. Reference is made to a previous decision[3] made by a delegate of the Registrar in which the present opponent was a party.  For reference, I have included the relevant mark as shown below:

[3] Re: Opposition by Head Sport AG to registration of trade mark application 866890

1. I agree with the delegates statement that “the first impression delivered by the applicant’s mark is, most obviously, the word HEAD”.  I do not consider that the same can be said about the present application.  I note that the mark in question did not include a device element, unlike the present matter.

2. The opponent made submissions about consumers referring verbally to the relevant trade marks, particularly to the term HEAD which is common to both marks.  While I am inclined to accept the opponent’s submission that the inclusion of the descriptive term CAPS in the applicant’s mark places more emphasis on the term HEAD’S, I am not satisfied that the applicant’s mark so nearly resembles the opponent’s marks that it is likely to deceive or cause confusion.  While such deception or confusion may be possible, I am not convinced that there is a real tangible danger of this occurring.

3. The opponent has not established this ground of opposition and therefore I dismiss it.

Decision

1. Section 55 of the Act provides:

   55. 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.

2. 17. As the opponent has not discharged the onus upon it to establish one or more of the opposition grounds, I dismiss the present opposition.  The trade mark application may then proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

1. I order costs, as per the schedule to the regulations, against the opponent.

Nathan Sinclair

Senior Examiner

Trade Marks & Designs

Hearings & Legislation

31 May 2006