Health World Limited v Endura Ltd - [2015] ATMO 66

TRADE MARKS ACT 1995

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

Re:Opposition by Health World Limited to registration of trade mark application 1457065(25)(International Registration Designating Australia 844109) - ENDURA - filed in the name of Endura Ltd.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Ian Tannahill, trade mark attorney, of Ahearn Fox Holder: Virginia Beniac-Brooks, trade mark attorney, of Marks & Clerk Australia
Decision:	2015 ATMO 66 Section 52 opposition to registration; regulation 21.19 information; grounds under sections 60, 58, 44 and 42 unsuccessful Costs to be reduced because of regulation 21.19 information

Background

Endura Ltd, of the United Kingdom, (‘the Holder’) has requested protection in Australia for the following International Registration Designating Australia (‘the IRDA’):

Application No: 1457065 (IRDA No 844109)
Lodgement Date: 23 September 2011

Goods:Class 25: Articles of clothing, footwear and headwear for cyclists; arm, leg and body warmers for cyclists; cycling tops; cycling shorts; cycling longs; padded undershorts for cyclists; gloves for cyclists; jackets, hooded jackets, gilets, jerseys, tops, shirts, T-shirts, base layers, trousers, overtrousers, shorts, suits, knickers, pants, underwear, fingerless gloves, socks, neckwear, neck warmers, scarves, head bands, hoods, caps, beanies, balaclavas, shoes and overshoes, all for cyclists
(‘the Goods’)

Trade Mark: ENDURA
(‘the Trade Mark’)

Endorsements: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied

I note that the above endorsements reflect the written consents of the owners of cited registrations 659237(25) ROSSI ENDURA and 1307674(9, 25) INDURA to the use and registration of the Trade Mark in relation to the Goods.
Section 189A of the Trade Marks Act 1995 (‘the Act’) governs the consideration of IRDAs. This section makes provisions for the regulations to “provide for such matters as are necessary to enable the performance of the obligations of Australia, or to obtain for Australia any advantage or benefit, under the Madrid Protocol.”
Opposition to the protection of an IRDA is governed by the provisions of Part 17A of the Trade Marks Regulations 1995 (‘the regulations’). Regulation 17A.34 applies the grounds of opposition available under sections 58 to 61 and section 62A of the Act to oppositions to an IRDA.
The Trade Mark was accepted for possible protection and advertised as such in the Australian Official Journal of Trade Marks on 28 February 2015
On 28 May 2015, Health World Limited of Queensland (‘the Opponent’) filed Notice of Intention to Oppose and its Statement of Grounds and Particulars which are stated to be:
1. Use of the opposed trade mark would be contrary to law. (Section 42 (b))
2. The Holder's trade mark is substantially identical with, or deceptively similar to, a trade mark registered by another person in respect of similar goods or closely related services and the priority date for the registration of the Holder's trade mark in respect of the Holder'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. (Section 44 (1)).
3. The Holder's trade mark is substantially identical with, or deceptively similar to, a trade mark whose registration in respect of similar goods or closely related services is being sought by another person and the priority date for the registration of the Holder's trade mark in respect of the Holder'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. (Section 44 (1)).
4. The Holder of the opposed trade mark is not the owner of the trade mark. (Section 58).
5. Before the priority date for the registration of the opposed trade mark, another trade mark had acquired a reputation in Australia and because of the reputation of that other trade mark, the use of the opposed trade mark would be likely to deceive or cause confusion. (Section 60).
The Particulars allege that:
The trade mark ENDURA has been used continuously since 1987 throughout Australia, initially by Metagenics, Inc, and subsequently by the Opponent with the permission of Metagenics, Inc., in respect of nutrition related products. The target market for the nutrition related products has always been athletes, including cyclists.
The trade mark ENDURA has been used continuously since at least 2003 by the Opponent throughout Australia in respect of clothing.
The trade mark ENDURA has been used continuously since at least 2008 by the Opponent throughout Australia in respect of clothing designed to be worn by cyclists when riding a bicycle, including cycling shorts and cycling shirts.
The trade mark ENDURA has been used continuously since at least 2008 by the Opponent throughout Australia in respect of water bottles of the type typically used by cyclists, said water bottles being capable of being carried in a water bottle carrier that is designed for attachment to a bicycle frame.
The Opponent has since the mid 1990's promoted the trade mark ENDURA and their ENDURA branded products through the sponsorship of athletes, including paralympic cyclist David Nicholas, mountain bikers Shaun Lewis, Craig Gordon, Hamish Elliot and Troy Glen nan, and triathletes Tim Berkel, Caine Eckstein, Jason Shortis, Aaron Royle, Ashleigh Gentle, Emma Jackson, Felicity Abram.
The Opponent has since the mid 1990's promoted the trade mark ENDURA and their ENDURA branded products through the sponsorship each year of sporting events held throughout Australia, including many triathalons.
The Opponent has since the mid 1990's promoted the trade mark ENDURA and their [sic] ENDURA branded products through the supply of samples of ENDURA nutrition products to athletes who participate in sporting events sponsored by the Opponent.
The Opponent intends to lead evidence that supports the claims made [above] and that because of the extensive use by the Opponent of the trade mark ENDURA, use by the Holder of the trade mark ENDURA in respect of the goods covered by application No. 1457065 would be contrary to law.
The parties have filed their evidence (which is further discussed below) in accordance with the regulations. Subsequently the parties requested to be heard and the matter came before me as a delegate of the Registrar of Trade Marks for hearing in Canberra on 17 November 2014. The Opponent was represented by Ian Tannahill, trade mark attorney, of Ahearn Fox. The Holder was represented by Virginia Beniac-Brooks of Marks & Clerk Australia.

Onus and Relevant Date

The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1] The relevant date at which the grounds must be considered is the filing date of the application.[2]
[1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; 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 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12]; Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10]; Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; ( 2012 ) 94 IPR 551 per Dodds-Streeton J at [13]; DC Comics v Cheqout Pty Limited [2013] FCA 478 per Bennett J at [13]; and, most recently, Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373 per Murphy J at [30] to [37].
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; The Seven Up Company v O.T. Limited (1947) 75 CLR 203 at 211; Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 at 266.

Evidence

The parties have filed the following declarations:
Evidence in Support
Ian Robert Tannahill, trade mark attorney, made on 18 October 2013
Evidence in Answer
Jim McFarlane, Managing Director of the Holder, made on 21 January 2014
The Holder, shortly before the hearing, also sought to introduce the following declarations under the provisions of 21.19 of the regulations:
Rebecca Dutkowski, employee of Marks & Clerk Australia, made on 11 November 2014
Jim McFarlane (‘second McFarlane declaration’), made on 12 November 2014
There was some initial debate at the hearing concerning whether I should accept these latter declarations filed on behalf of the Holder.
Regulation 21.19 provides:
21.19Registrar may use information available
(1)If:
(a)information that is available to the Registrar is relevant to proceedings before the Registrar; and
(b)the Registrar has reason to believe that the information is not known to a party to the proceedings; and
(c)the Registrar proposes to take the information into account in making a decision in the proceedings;
before making the decision the Registrar must:
(d)provide the information to the party; and
(e)give the party a reasonable opportunity to make representations about the information.
(2)For the purposes of paragraph (1)(e), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
Regulation 21.19 is permissive and discretionary rather than prescriptive. It allows the Registrar to consider information relevant to a proceeding which has not been filed as evidence and (as its operation is not restricted) applies equally to all proceedings before the Registrar.
In essence, Mr Tannahill argued for a narrow interpretation of regulation 21.19 and asked me to limit its scope to information which is available to the Registrar (rather than that originating from a party to proceedings). He sought that I otherwise view the operation of regulation 21.19 as being limited by the amendments to the regulations which govern the filing of evidence that are contained in the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (‘the RTB Act’) which commenced on 15 April 2013.
Not unnaturally Ms Beniac-Brooks argued for a broader interpretation of regulation 21.19 and submitted that the regulation, in addition to information discovered by the Registrar, may also apply to information provided by one of the parties to the Registrar.
In agreeing with Ms Beniac-Brooks, I make the following observations.
The RTB Act did not amend regulation 21.19 or the way in which it operates. There is express guidance on the IP Australia website for the form in which such information is to be provided to the Registrar in the Registrar’s Direction (of 18 June 2014) Trade Marks (Filing Documents and Evidence—Opposition) Direction which makes provision, inter alia:
(a) for evidence in support - "Part/balance evidence in support" or "All evidence in support";
(b) for evidence in answer - "Part/balance evidence in answer" or "All evidence in answer";
(c) for evidence in reply - "Part/balance evidence in reply" or "All evidence in reply";
(d) for a summary of submissions for oral hearing-"Summary of submissions for oral hearing" followed by a description of the party filing the summary;
(e) for a summary of written submissions - "Summary of written submissions" followed by a description of the party filing the summary;
(f) for a document that has been produced under the Registrar's discretion under section 202 - "Produced document" followed by a brief description of the document being produced;
(g) for information available to the Registrar under regulation 21.19 - "Available information" followed by a brief description of the information; and for oppositions commenced before 15 April 2013:
(h) for further evidence - "Further evidence";
(i) for further evidence in response - "Further evidence in response".
[Stress added]
Accordingly, the interpretation of regulation 21.19 previously adopted by the delegates of the Registrar remains unchanged. This interpretation is exemplified in GTFM Inc v Peter Geoffrey Brock [2006] ATMO 13 where the Delegate, Mr Purvis-Smith said:
26.     Counsel for the applicant submitted that the Brock declaration should be taken into account again if I were to find deceptive similarity.
27.     The opponent, unsurprisingly, submitted that the Brock declaration should not be taken into account at all as it was not filed and served in evidence in accordance with Trade Mark Regulations 1995 ("the Regulations") or, in the alternative, that it be given no weight at all because it satisfies none of the statutory requirements of section 44(4).
28. Given the applicant’s declaration has already been taken into account in deciding its registrability, it would be unrealistic to ignore it if the Regulations allow me to do so. Regulation 21.15(8) entitles me to inform myself on any matter before me in any way that I reasonably believe to be appropriate.
29.     An appropriate means of me informing myself is one that does not deny procedural fairness to a party. Such fairness is provided where a party is aware of the information that is proposed to be taken into account and has had an opportunity to make representations in respect of it. This is consistent with the approach taken in Regulation 21.19, which provides:
[…]
30.     The opponent is aware of the Brock declaration and has made representations in respect of it. As it is a declaration, it is admissible as evidence as it does not offend Regulation 21.17. The Brock declaration is relevant to the registrability of the applicant’s trade mark, and I intend to take it into account.
31. While the Brock declaration was inelegantly written, I am satisfied that it addresses each of the elements required to satisfy section 44(4). While the heading on the declaration, as pointed out by the opponent, refers to the opponents FUBU 05 application number, which was cited against the applicant’s trade mark , I am satisfied that the Brock declaration is referring to the subject application.
Accordingly, in terms of regulation 21.19, I am to consider whether the information is relevant and ensure that the Opponent has both received the information and had adequate opportunity to make representations concerning it.
Here the Opponent has received the information, been offered an adjournment if necessary to allow time to properly address it and, indeed, has so addressed it.
Whether the information is ‘relevant’ will in large part depend on the degree to which it has the potential to affect the outcome of these proceedings. Ms Dutkowski’s declaration is not, in my consideration, relevant to the outcome of these proceedings (it merely adds corroboration to the McFarlane declaration which I accept at face value). However, the second McFarlane declaration alleges a use of the Trade Mark in Australia two years earlier than that previously claimed and that is directly relevant to the outcome of these proceedings.

The Evidence - Summary

Mr Tannahill claims confidentiality for information in his declaration in the following terms:
I say that the information contained in the paragraphs and exhibits which relate to the business activities of [the Opponent] is confidential and that disclosure of the information contained in either these paragraphs or exhibits would seriously and adversely affect the business activities of [the Opponent].
All of the information in the declaration relates to the business activities of the Opponent so it is impractical to adhere to the confidentiality request without affecting the Opponent’s prospects of establishing its opposition. There is a need for the opposition process to be open and transparent. I will abide with Mr Tannahill’s request where possible with the need to be transparent in mind.
The Opponent’s evidence shows that it primarily sells nutritional supplements under the trade mark ENDURA which it licenses from Metagenics Inc. This trade mark has several registrations but I will not dwell on them as they are not relied on in relation to the section 44 ground and are not otherwise relevant to my decision.
Metagenics first sold rehydration products under the trade mark ENDURA in Australia in 1987 and since then its authorized use by the Opponent has spread to other nutritional goods.
The Opponent first used the trade mark ENDURA on sun visors and caps in 2003.[3] Use of the trade mark ENDURA on sun visors and caps since 2003 until the filing date of the Trade Mark has been continuous.[4] This use has been solely common-law use and there is no registration by the Opponent of its ENDURA trade mark for these goods.
[3] Exhibit IRT-4
[4] Exhibit IRT-5
The Opponent first used the trade mark ENDURA on sports singlets and shirts in 2007[5] and that use has been continuous until the filing date of the Trade Mark.[6] This use has been solely common-law use and there is no registration by the Opponent of its ENDURA trade mark for these goods.
[5] Exhibit IRT-6
[6] Exhibit IRT-7
The Opponent first used the trade mark ENDURA on cycle pants and cycle shirts in 2008[7] and that use continued until the filing date of the Trade Mark.[8] This use has been solely common-law use and there is no registration by the Opponent of its ENDURA trade mark for these goods.
[7] Exhibit IRT-8
[8] Exhibit IRT-9
Mr Tannahill provides the retail value of ENDURA branded caps and visors sold by the Opponent for the period 2005 to 2012. The annual figures may be characterised as being low. Mr Tannahill also provides retail figures for shirts and singlets which confusingly start in 2005 – two years before 2007 when first use of the ENDURA trade mark is claimed by the Opponent. These figures are of the same order as those relating to the hats and visors.
And Mr Tannahill also provides a table listing the retail value of ENDURA branded cycling shirts and cycling pants sold by the Opponent from 2007 until 2012. Again, these figures commence before the first use of the ENDURA trade mark in 2008 is claimed by the Opponent.
Mr Tannahill also provides the retail figures for the sale of nutritional products under the trade mark ENDURA by the Opponent – these are in the order of low millions of dollars annually.
Mr Tannahill goes on to state that the Opponent “each year sponsor[s] over 100 sporting events throughout Australia under the trade mark ENDURA and have provided samples of their ENDURA sports nutrition products to over 200,000 participants at these sponsored events.”
The Opponent also sponsors athletes – Mr Tannahill states:
[The Opponent] has for many years promoted the trade mark ENDURA through the sponsorship of athletes. The sponsored athletes promote the trade mark ENDURA by wearing clothing bearing the trade mark and through Health World's website Attached hereto and marked Exhibit IRT-14 are printouts pertaining to athletes who are currently "ENDURA sponsored athletes".
And, concerning the advertising under the Opponent’s ENDURA trade mark, Mr Tannahill states:
I am instructed and verily believe that [the Opponent] has for many years promoted the trade mark ENDURA through advertisements published in national magazines.
I am instructed and verily believe that advertisements promoting the trade mark ENDURA currently appear on a regular basis in as many as thirty national magazines. By way of example, attached hereto and marked Exhibit IRT-16 are copies of advertisements promoting the trade mark ENDURA that are contained in the September/October 2013 edition of "Bicycling Australia".
The publication "Bicycling Australia" also contains numerous advertisements relating to cycling shirts and shorts, including an advertisement promoting the brand CAPO which appears on the page immediately following a page on which there is printed an advertisement promoting ENDURA sports nutritional products. Attached hereto and marked Exhibit IRT-17 are copies of some of these advertisements.

The Opponent does not provide details of exact annual expenditure on promotion and advertising but it is apparent that the advertising and promotion relate to nutritional supplements rather than to clothing or headwear.
Most relevantly, Mr McFarlane’s declarations establish that the Holder’s use of the Trade Mark in Australia started in 2005. The evidence which establishes this is a Wayback Machine printout of the type also relied upon by the Opponent to establish its use. This is a printout of the webpage ChainReactionCycles.com as it appeared on 11 December 2005. Mr Tannahill was, as might be expected, sharply critical of this page and submitted that it fails the test in Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471; 143 FCR 479; 215 ALR 716; (2005) 64 IPR 1; [2005] AIPC 92-087 in that the articles for sale on that website were advertised to the world at large rather than being targeted at Australians.
I disagree. The webpage (on which the prices of items are quoted in pounds sterling) bears three buttons by which potential buyers have the opportunity to convert the currency into three other currencies one of which is the Australian dollar. Thus the goods on the webpage are not offered to the world at large – the goods are offered to four specific target markets, one of which is Australian.
The Holder’s use of the Trade Mark prior to 2007 (when the Opponent first used its trade mark ENDURA on singlets and shirts) was in relation to clothing for cyclists including, shorts, shirts, jerseys, base layers, gloves, jackets, tights, overshoes, pants,
The Holder’s use of the Trade Mark prior to 2008 (when the Opponent first used its trade mark ENDURA on cycle shirts and pants) includes the goods in the paragraph above and also socks, gilets, leg warmers, cycle caps, headbands and arm warmers.
However, I will note now that the Opponent establishes use of its trade mark ENDURA on sun visors and caps since 11 July 2003.

Section 58

Section 58 of the Act provides:
Applicant not owner of trade mark
58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note: For applicant see section 6.
The principles of ownership are discussed in King Par, LLC v Brosnan Golf Pty Ltd [2014] FCA 795 by Greenwood J from [175], which where appropriate I paraphrase for, and adapt to, the matter before me:
Under the Act, a person is entitled to apply for the registration of [a] trade mark [...] in respect of particular goods if the person claims to be the owner of the trade mark and it intends to use the trade mark in relation to those goods the subject of the proposed registration: s 27(1)(a) and (b) of the Act.
The basis of a claim to ownership in a trade mark, unused in Australia at the date of the application lies in the combined effect of authorship of the mark, an intention to use it on the subject goods and the act of applying for registration under the legislation: Shell Co of Australia Ltd v Rohm and Haas Co [1948] HCA 27; (1948) 78 CLR 601 at 630, Dixon J.
Authorship as an element of a claim to ownership involves the notion of either origination or first adoption of the trade mark, as a trade mark. Although authorship is not dependent upon invention, and “local” authorship in Australia (that is, origination or first adoption) will be sufficient (even if the trade mark the subject of the application is a deliberate copy of a foreign mark for the same goods), “what is essential to a valid claim to ownership is that no other person has acquired a prior right to use the trade mark in Australia for the goods or services in question” [original emphasis]: Shanahan’s Australian Law of Trademarks and Passing Off (“Shanahan”), 5th Ed, para 10.510 at 63.
Section 58 provides that registration of a trade mark (once accepted by the Registrar) may be opposed, notwithstanding that the applicant claims to be the owner and asserts an intention to use the trade mark (in the course of trade in connection with the relevant goods the subject of the registration), on the ground that the applicant for the mark is not the owner of the mark.
[…]
For the purposes of s 58 of the Act, the term owner derives its content and meaning from its common law origins concerning prior use and thus the first user of the trade mark as a trade mark, in Australia, is entitled to claim to be the owner (whether or not that user is the author or inventor of the trade mark by origination). Moreover, if the [Holder] is shown not to be the first user of the trade mark in Australia, as a trade mark, the ground of opposition will be established. This proposition was accepted as a correct statement of the law in Food Channel Television v Food at [55], Keane CJ, Stone and Jagot JJ. As the editors of Shanahan, 5th Ed, observe at para 10.1505, p 73, “[e]ven a small amount of prior use should defeat a directly competing claim to statutory ownership”.
In Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) [1984] HCA 73; (1984) 156 CLR 414 at 433434, Deane J said this:
The cases establish that it is not necessary that there be an actual dealing in goods bearing the trade mark before there can be a local use of the mark as a trade mark. It may suffice that imported goods which have not actually reached Australia have been offered for sale in Australia under the mark (Re Registered Trade Mark “Yanx”; Ex parte Amalgamated Tobacco Corporation Ltd [1951] HCA 28; [(1951) 82 CLR 199 at 204205)] or that the mark has been used in an advertisement of the goods in the course of trade : Shell Co of Australia v Esso Standard Oil (Australia) Ltd [1963] HCA 66; [(1963) 109 CLR 407 at 422]. In such cases, however, it is possible to identify an actual trade or offer to trade in the goods bearing the mark or an existing intention to offer or supply goods bearing the mark in trade. In the present case, there was not, at any relevant time, any actual trade or offer to trade in goods bearing the mark in Australia or any existing intention to offer or supply such goods in trade. There was no local use of the mark as a trade mark at all; there were merely preliminary discussions and negotiations about whether the mark would be so used.
In order to establish use, it is not necessary that the goods themselves be “in Australia”: Settef SpA v RivOland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402. Moreover, the Courts will regard a small amount of use, or slight use, of a mark in Australia by an overseas proprietor as sufficient to establish proprietorship of the trade mark in Australia: Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391 at 400; Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) at 432; Malibu Boats West Inc v Catanese (2000) [2000] FCA 1141; 180 ALR 119 at 129 [28], Finkelstein J. In Seven Up Co v OT Ltd [1947] HCA 59; (1947) 75 CLR 203 at 211, Williams J said this:
The court frowns upon any attempt by one trader to appropriate the mark of another trader although that trader is a foreign trader and the mark has only been used by him in a foreign country. It therefore seizes upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of the goods of the foreign trader in Australia.
Further, for the opposition to be established, the Opponent needs to establish to my satisfaction not only first use by it before any use or the filing date of the Trade Mark but also that the goods in question are the same kind of thing. This principle was discussed in Colorado Group Ltd v Strandbags Group Pty Ltd [2006] FCA 160; 67 IPR 628; [2006] AIPC 92-182 by Finkelstein J at [25]:
It follows that proprietorship by first use is proprietorship in relation to the goods or classes of goods on which the mark has been used. The proprietor is entitled to have his mark registered in respect of those goods. This entitlement is not confined to identical goods or classes of goods. Registration may also be obtained for goods or classes of goods which is or are "a thing [or things] of the same kind" (Jackson & Co v Napper (1886) 35 Ch D 160, 178) or "like articles of production" (Columbia Mill Company v Alcorn, [1893] USSC 246; 150 US 460, 464 (1893)) or "articles of merchandise of the same kind" (Colman v Crump, 70 NY 573, 578 (1877)) or "kindred articles" (The Collins Co v Oliver Ames & Sons Corporation, 18 F 561, 570 (1882)), if there be any difference between these expressions. See also Edwards v Dennis (1885) 30 Ch D 454.
The Opponent’s evidence shows that its caps and sun visors are of the nature that they are intended to be worn by anyone, be they sports person or not.
Mr Tannahill submits that the Opponent’s sun visors and caps may be worn by sporting people, in particular cyclists and therefore such goods should therefore be considered to be the ‘same kind of thing’ as the Holder’s ‘headwear for cyclists’ and ‘headbands’. Mr Tannahill suggested that the compulsory helmet laws might not apply in a State or States of Australia and that cyclists might in that place, or those places, chose to wear a sun visor or a cap rather than specialized cyclists’ headwear.
That might be so but it does not, in my consideration, alter the fact that the goods I am considering on the one hand is specialised headwear for cyclists (which does not include helmets) and, on the other hand, ordinary caps and sun visors.
In considering whether these goods are ‘of like kind’ or ‘the same kind of thing’ the words of Stirling J in Jackson v Napper (1886) 35 Ch D 160 where he gave consideration to the difference between an axe and a hatchet are useful. He said (at 177-178):
[The Respondents] said there was a little difference in the size, as I understand, and a little difference in the shape; but can it be, that a man having made goods of a particular size, which might be designated as small axes – which in fact is the definition given in Johnson’s Dictionary of a hatchet – is to be precluded from putting his mark upon things of the same description or belonging to the same class of goods, but of a different size and a different shape? The objection of course is founded on Edwards v Dennis [30 Ch D 454], in which it was held that a man having registered a mark for iron goods and having manufactured, I think, sheet-iron, and applied his mark to that, was not entitled to stop another man from using the same mark in respect of iron wire which he had never used at all. That to my mind is a totally different thing from saying that a man who has used a mark on hatchets of a particular size and shape is not entitled to use a trade-mark as applied to an axe, which is a thing of the same kind but a little different in size and a little different in shape. No doubt at first the classes of goods under the Trade Marks Act were drawn too wide, and that has led to difficulty, but if I were to accede to this notion and say that because a man had merely manufactured small axes, he was not to be allowed to register in respect of axes, the logical consequence would be that he would have to register the shapes and sizes of everything to which he attached his mark. That was an inconvenience that was never intended to be imposed on an applicant, and I hold that a man who has manufactured and applied his mark to small axes is entitled to register it in respect of axes generally.
In my observations of the world, specialist headwear for cyclists is quite different from sun visors and caps that might be worn generally (even if those latter goods might occasionally be worn by cyclists). Cyclists’ headwear is generally made of specialist material and is seamless or with low profile seams so as to fit properly under cyclists’ helmets without chaffing or irritation and, if the caps have sun visors, those visors are much lower on the front of the cap so that they will fit properly under a cycle helmet. Such goods include caps, skull caps, balaclavas, etc made to be worn under cycling helmets and neck and face warmers. In contrast, the sun visors and caps on which the Opponent has used its trade mark ENDURA do not appear to have such adaption.
Further, while the Holder’s cyclists’ headwear is likely to be sold through specialist cycle stores, the Opponent’s sun visors and caps (although they could be sold through sports stores) are unlikely to be sold through specialist cycle shops. Accordingly, whatever superficial similarities might exist between these items of headwear, they are in reality at least as different, by analogy, as sheet-metal and wire or not as similar as axes and hatchets.
I therefore consider that headwear for cyclists are not goods of the same kind as sun visors and caps. To put this another way, I find that the Opponent has not established to my satisfaction that these goods are ‘the same kind of thing’. (I note, as a corollary of these observations, that the Opponent had the first use of the trade mark ENDURA in relation to sun visors and caps (not being cyclist headwear) and is thus the owner of the trade mark ENDURA in relation to those goods).
In respect of the other goods (sports singlets and shirts, cycle pants and cycle shirts) on which the Opponent has used its trade mark ENDURA prior to the filing date of the Trade Mark, the Holder has had the earlier use and has better claim to be the owner of the trade mark ENDURA than does the Opponent in relation to those goods.
It follows that the Opponent has not established its opposition to registration of the Trade Mark under section 58.

Section 44

Section 44 of the Act relevantly provides:
Identical etc. trade marks
44.(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.
[…]
(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.
Note: For limitations see section 6.
The Opponent here relies on the trade mark registrations in respect of which the provisions of paragraph 44(3)(b) were applied to allow the acceptance of the Trade Mark. Details of these registrations are:

Registration No:  659237
Priority Date:  21 April 1995
Goods/Services:  Class 25: Men's, women's and children's footwear

Trade Mark: ROSSI ENDURA

Registration No: 1307674
Priority Date: 3 July 2009

Goods/Services: Class 9: Articles of clothing for protection against fire; articles of fire resistant clothing; articles of industrial clothing for protection against injury; articles of protective clothing (against accident or injury); clothes incorporating reflective material for protection against accident; clothing for protection against fire; fireproof articles of clothing; protective clothing; safety clothing for protection against accident or injury; thermal clothing for protection against accident or injury
Class 25: Apparel (clothing, footwear, headgear)

Trade Mark: Indura

Mr Tannahill submits:
During examination the Registrar objected to the registration of the Holder's trade mark on the basis that said trade mark closely resembled the trade marks that are the subject of registrations Nos. 659237 (ROSSI ENDURA) and 1307674 (INDURA). The Registrar later withdrew the objections when provided with letters from the owners of registrations Nos. 659237 and 1307674 in which they gave consent to the Holder's use and registration of the trade mark ENDURA in respect of clothing for cyclists.
Notwithstanding the above, in our opinion the provisions of section 44 suggest that the role of the Registrar is to protect members of the public from the risk of being deceived or confused arising from the concurrent use of trade marks that are substantially identical or deceptively similar. By refusing to grant registration for a trade mark the Registrar is denying the owner of that trade mark a defence against infringement provided by section 122 of the Trade Marks Act.
The statement of goods for registration No. 659237 currently reads as follows:
"Men's, women's and children's footwear."
In our opinion, the statement of goods is broad enough to cover shoes for cyclists, being goods mentioned in the statement of goods of application No. 1457065 as accepted.
The Class 25 statement of goods of registration No. 1307674 currently reads as follows:
"Apparel (clothing, footwear, headgear)"
In our opinion, the statement of goods is broad enough to cover clothing, footwear and headgear for cyclists, being goods mentioned in the statement of goods of application No. 1457065 as accepted.
While it could be argued that the owners of registrations Nos 659237 and 1307674 have, in granting consent to the Holder's use and registration of the trade mark ENDURA, conceded that they have no intention of using their registered trade marks in respect of clothing, headgear and footwear for cyclists, nevertheless the fact remains that a person who may at some later date acquire registration 659237 or registration 1307674 has, by virtue of section 20 of the Trade Marks Act, the right to use the registered trade mark in respect of cycling related clothing that falls within the scope of their registration.
In our opinion the concurrent use of the trade marks ENDURA and ROSSI ENDURA, or ENDURA and INDURA, in respect of cycling clothing will lead to deception and all confusion. Accordingly, for the reasons expressed above we believe that registration of the [the Trade Mark] ought to be refused on the basis of section 44(1).
The Register of Trade Marks ought to be a reflection of the reality of the marketplace and the trade marks in use within it. The people who are best placed to judge the reality of the marketplace into which they put goods bearing their trade marks are the traders who do so. In the situation before me, the owners of the citations who are hard-headed business people have made practical judgments about their present uses of their trade marks and the likely future uses of their trade marks and consented to the use and registration of the Trade Mark for specified goods. I do not see it as the role of the Registrar of Trade Marks (or one of her delegates) to, in effect, rule that these business people might be wrong.
This situation is obviously distinct from those where, during examination or before a hearing officer, there is no consent from the owner of a cited trade mark and the principles of notional use must apply: Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; [1999] AIPC 91-499; (1999) 45 IPR 411 where French J said at [88]:
Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of [goods] covered by the proposed registration. See also Berlei v Hestia Industries Ltd [1973] HCA 43; (1973) 129 CLR 353 per Mason J at 362.

The Opponent has not established its opposition under section 44.

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.
Here the Opponent must establish both that the trade mark on which is relies had a reputation at the filing date in relation to nutritional supplements and that because of that reputation the Holder’s (or authorised user’s) use of the Trade Mark on the Goods would be likely to confuse or deceive.
In McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 (‘McCormick’) at [81] Kenny J said of reputation:
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?
Concerning the assessment of reputation, in McCormick Kenny J said at [86]:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 ("Gymboree"), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 ("Nettlefold"), in which Heerey J relied upon the public visibility of the applicant's mark over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.
Mr Tannahill’s declaration establishes both moderate use of its trade mark ENDURA in relation to nutritional supplements and the promotion of the Opponent’s trade mark ENDURA at sporting events and the sponsorship of athletes. The Opponent’s trade mark ENDURA has also been advertised in magazines.
I am satisfied that the Opponent’s trade marks had, at the filing date, a reputation in relation to nutritional supplements but am not satisfied that it then had a reputation in relation to any clothing or headwear.
It is not clear to me from the evidence the extent to which the parties’ trade marks might appear together in the same marketplace such that the use of the Trade Mark would be likely to deceive or cause confusion because of the reputation of the Opponent’s ENDURA trade mark. While it is possible that the Opponent’s ENDURA trade mark might be advertised at cycling events or triathlons in relation to nutritional supplements, such events do not, in my experience of the world, constitute marketplaces where the goods of either party are normally bought or sold.
In my consideration, and under normal circumstances, most people who are aware of reputation of the Opponent’s trade mark (as it was at the filing date) in relation to nutritional supplements would be unlikely to make the mental leap to connect that reputation to the Trade Mark when seeing it used in relation to specialist cycling clothing and headwear when seeing the Trade Mark in a retail environment or on the Internet. In Australian Woollen Mills Limited v. FS Walton and Co. Limited [1937] HCA 51; (1937) 58 CLR 641 where Dixon and McTiernan JJ said (at 658-9):
Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.
The trade marks of the parties have in fact been used in their respective marketplaces for some time and I would expect that if confusion or deception was likely to occur it would have occurred and the Opponent would have provided examples of such confusion or deception in its evidence.
The Opponent has not established its ground under section 60 of the Act.

Paragraph 42(b)

Paragraph 42(b) of the Act relevantly provides:
42Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
[…]
(b)its use would be contrary to law.
In regard to paragraph 42(b) Mr Tannahill submits:
Because use by the Holder of the trade mark ENDURA in respect of cycling clothing is likely to deceive or cause confusion, in our opinion, it follows that use by the Holder of the trade mark ENDURA will breech sections 18 and 29 of the Australian Consumer Law 2010 [‘the ACL’]. Therefore we believe that registration of the Holder's trade mark ought to be refused by virtue of section 42(b) of the Trade Marks Act.
In this, Mr Tannahill is in error as to the law because the Australian Consumer Law 2010 relevantly involves the higher standard of ‘mislead or deceive.’
In the circumstances of this matter, if the Opponent has not established that the use of the Trade Mark would be likely to deceive or cause confusion in terms of section 60, it follows that neither can it establish that the use of the Trade Mark would ‘mislead or deceive’ under the ACL, which is a higher standard. In Parkdale Custom Built Furniture Pty. Limited v Puxu Pty Limited [1982] HCA 44; (1982) 42 A.L.R. 1, Gibbs C.J. said (at page 6):
The words of s. 52 require the court to consider the nature of the conduct of the corporation against which proceedings are brought and to decide whether that conduct was, within the meaning of that section, misleading or deceptive or likely to mislead or deceive . . . . . The words “likely to mislead or deceive”, which were inserted by amendment in 1977, add little to the section; at most they make it clear that it is unnecessary to prove that the conduct in question actually deceived or misled anyone. In McWilliams v. McDonalds [1980] FCA 159; (1980) 33 A.L.R. 394 it was rightly held by Smithers J. and by Fisher J. that to prove a breach of s. 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty Ltd (1954) 91 C.L.R. 592, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable: I need not add to what their Honours said on this subject (33 A.L.R.) at 397-8 and 412-3. I agree too with those learned judges that the court must decide objectively whether the conduct is misleading or deceptive or likely to mislead or deceive, and that evidence that members of the public have actually been misled is not conclusive: see at 399-400 and 413-4. I would add that evidence that members of the public were misled, not by any conduct of the defendant, but by other circumstances for which the defendant was not responsible, would be quite irrelevant.”

In the same case Mason J. said (at page 15):

“. . . the onus is on the plaintiff to show that the conduct is likely to mislead or deceive. Therefore conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s. 52.”

The opposition under paragraph 42(b) is not established.

Decision

Section 55(1) of the Act provides
55Decision
(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.
Note:For limitations see section 6.
The Opponent has not established any ground of its opposition.
The IRDA may then proceed to protection 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 protection shall not occur until the appeal has been decided or discontinued and that the disposition of the IRDA be in accordance with the Court’s order or direction.

Costs

Having regard to the effect the Holder’s late filing of the regulation 21.19 may have had, I award costs against the Opponent (as it was the unsuccessful party). However, I award those costs reduced by any costs incurred by the Holder after its filing of its Evidence in Answer since, had the regulation 19.21 information been included in the Evidence in Answer, the Opponent might well have correctly concluded that continuing the opposition beyond that point was not worthwhile.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
9 July 2015