Hot Topic Australia Pty Ltd v Hot Topic, Inc

[2009] ATMO 92

TRADE MARKS ACT 1995

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

Re:Opposition by Hot Topic Australia Pty Ltd to registration of trade mark application 1026271(3, 9, 14, 16, 18, 25, 26, 28, 35) - HOT TOPIC - filed in the name of Hot Topic, Inc.

Delegate:

Iain Thompson

Representation:

Opponent: Ben Fitzpatrick instructed by Choy Lawyers

Applicant: Louise Emmett and Martin Pannall of Madderns

Decision:

2009 ATMO 92

S52 opp: sections 58 and 60 – use of opponent’s trade mark limited to logoform trade mark and not prior to the applicant’s first use of its trade mark in Australia. Sections 58 and 60 not established

Registration allowed.

Costs awarded to applicant

Background

1. In this matter Hot Topic, Inc (‘the applicant’) of City of Industry, California, has applied to register a trade mark, current details of which appear below:

Application No:  1026271

Priority Date:  22 Oct 2004

Goods:Class: 3 Cosmetics; face, eye and body make-up; lipstick; nail polish; glitter; artificial eyelashes; body lotion; soaps; shower gel; body powder; perfume; aftershave lotion; bath salts; creams; deodorants; depilatories; essential oils; eyebrow pencils; false nails; hair dyes; hair lotions; scented water; shampoos; shaving preparations; incense; cleansing preparations; tattoos in this class; hair spray, hair glitter

Class: 9 Sunglasses; compact disks (video and audio); digital video disks

Class: 14 Precious metals and their alloys and goods made of precious metals or coated therewith in this class; jewellery; clocks; watches; badges of precious metal; boxes of precious metal; bracelets; brooches; buckles of precious metal; chains; charms; tie clips; cuff links; cups of precious metal; earrings; figurines of precious metal; flasks and goblets of precious metal; key rings; medallions; necklace; ornamental pins; ornaments in this class; rings; snuff boxes; statues of precious metals; straps for wrist watches; table plates of precious metal; trinkets in this class; precious stones; imitation jewellery; body jewellery

Class: 16 Paper; cardboard; goods made from paper and/or cardboard (excluding any printed matter or publications), including stamps, envelopes, albums, bags, boxes of paper or cardboard, calendars, cards; drawing instruments; drawing materials, globes (terrestrial); glue; inks; lithographs; pictures; posters; printed matter; prints; stationery; stickers

Class: 18 Leather and imitation leather; goods made from leather and/or imitation leather in this class, including bags, belts, boots, collars for animals, leather straps, leather thongs, parasols, wallets, purses, whips; umbrellas

Class: 25 Clothing footwear, headgear including bath robes, sandals, bathing suits, beach clothes, belts in this class, suspenders, brassieres, capes, coats, corsets, masquerade costumes, cuffs, frocks, garters, gloves, hats, headbands, hoods, jackets, jerseys, neckties, pants, pyjamas, sleepwear, saris, sashes, scarves, shawls, shirts, shoes, skirts, slippers, slips, socks, stockings, suits, sweaters, tee-shirts, togas, trousers, underclothing, underwear, vests, veils, lingerie, jeans, dresses, raincoats, leotards, visors and babywear

Class: 26 Hair accessories in this class including scrunchies, barrettes, hairpins, clips, ribbons, rubber bands, hair sticks, headbands and wigs; badges in this class; pins; buttons, including pin-on buttons; brooches and buckles in this class; shoe laces

Class: 28 Games, toys and play things, including dolls, doll clothing and accessories therefor, stuffed toys; action figures and accessories therefor; board games; face masks in this class; confetti

Class: 35 On-line retail services for goods including clothing, footwear, headgear, eyewear, fashion accessories, jewellery, cosmetics, paper and cardboard products, and goods made of leather and imitation leather, CDs, videos, DVDs, lunchboxes

Trade Mark:  HOT TOPIC

(‘the opposed trade mark’)

1. Following examination, the application was advertised as accepted in the Australian Official Journal of Trade Marks on 9 March 2006.

2. On 21 April 2006, Hot Topic Australia Pty Ltd, (‘the opponent’), filed Notice of Opposition to the registration of the opposed trade mark.  The Notice is couched in broad terms and nominates all available grounds of opposition under the Trade Marks Act 1995 (‘the Act’).

3. As a delegate of the Registrar of Trade Marks, I heard the arguments of the opponent put to me by Ben Fitzpatrick instructed by Choy Lawyers.  The applicant was represented at the hearing by Louise Emmett and Martin Pannall of Madderns.

Evidence

1. The opponent’s declaration in support of the opposition is made by Kiro Stojanoski, Managing Director of the opponent.  The applicant has served and filed two declarations in answer to Mr Stojanoski’s declaration, these being by Christopher Kearns, Senior Vice President of the applicant and by Louise Emmett, trade marks agent at Madderns.  There is one further declaration by Kiro Stojanoski (for the opponent) in reply.  There is also a ‘supplementary’ declaration by Pat Ianuali who is a director of the opponent.

2. Mr Stojanoski explains in his first declaration that the opponent’s trade mark is used in the production and sale of licensed and non-licensed goods and giftware throughout Australia.  Mr Stojanoski avers that the goods include but are not limited to, soft toys, keys rings, jewellery, cups, glasses, stationery, mobile phone covers and accessories, towels, clocks, a range of manchester, mirrors, umbrellas, stickers, kitchen tools, insulated bags, hip flasks, bar accessories, can holders, pens pen cases and a range of clothing.

3. The opponent has applied to register its trade mark under trade mark application 1072354.  Details of this application are:

Appn No:  1072354

Priority Date:  29 Aug 2005

Goods/Services:              Class: 14 Precious metals and their alloys and goods made of precious metals or coated therewith in this class; jewellery; clocks; watches; badges of precious metal; boxes of precious metal; bracelets; brooches; buckles of precious metal; chains; charms; tie clips; cuff links of precious metal; earrings; figurines of precious metal; flasks and goblets of precious metal; key rings; medallions; necklaces; ornamental pins; ornaments in this class; rings; snuff boxes; statues of precious metals; straps for wrist watches; table plates of precious metal; trinkets in this class; precious stones; imitation jewellery; body jewellery

Class: 16 Paper, cardboard; goods made from paper and/or cardboard, including stamps, envelopes, albums, bags, books, magazines, boxes of paper or cardboard, calendars, cards, comic books, confetti, drawing instruments, drawing materials, globes (terrestrial); glue; inks; lithographs; pictures; posters; printed matter; prints; stationary; stickers

Class: 18 Leather and imitation leather; goods made from leather and/or imitation leather in this class, including bags, belts, boots, collars for animals, leather straps, leather thongs, parasols, wallets, purses, whips, umbrellas

Class: 25 Clothing, footwear, headgear including bath robes, sandals, bathing suits, beach clothes, belts in this class, suspenders, brassieres, capes, coats, corsets, masquerade costumes, cuffs, frocks, garters, gloves, hats, headbands, hoods, jackets, jerseys, neckties, pants, pyjamas, sleepwear, saris, sashes, scarves, shawls, shirts, shoes, skirts, slippers, slips, socks, stockings, suits, sweaters, T-shirts, togas, trousers, underclothing, underwear, vests, veils, lingerie, jeans, dresses, raincoats, leotards, visors, shoe laces and babywear

Class: 26 Hair accessories in this class including scrunchies, barrettes, hairpins, clips, ribbons, rubber bands, hairspray, hair glitter, hair sticks, headbands and wigs; badges in this class; pins; buttons, including pin-on buttons; brooches and buckles in this class

Class: 28 Games, toys and play things including dolls, doll clothing and accessories therefor, stuffed toys; action figures and accessories therefor; board games; face masks in this class

Trade Mark:  

(“the opponent’s trade mark”)

1. Mr Stojanoski appends documents to his declaration which he states show the use of his company’s HOT TOPIC trade mark.  These are, in his words:

   (a)             Opponent's letterhead listing its address as 198 Normanby Road, South Melbourne, Victoria (registered office and principal place of business from 3 May 2001 to 7 July 2003, refer exhibit KS-3 above);

   (b)             Opponent's letterhead listing its address as 16 Nyadale Drive, Scoresby, Victoria (registered office and principal place of business from 30 June 2003 to current, refer exhibit KS-3 above);

   (c)              Photograph of the Opponent's Scoresby office, 2005;

   (d)             Opponent's newsletter dated 1 April 2005;

   (e)             Photograph of the Opponent's stall at the Brisbane Gift Fair, 2002

   (f)              Photograph of the Opponent's stall at the Sydney Gift Fair, 2003;

   (e)             Photograph of the Opponent's stall at the Hong Kong Gift Fair, 2004;

   (f)              Photograph of the Opponent's stall at the Hong Kong Gift Fair, 2005;

   (g)             Photograph of the Opponent's stall at the Sydney Gift Fair, February 2005;

   (h)             2001 selling sheet for hand painted shot glasses distributed throughout Australia;

   (i)               2002 selling sheet for Playboy merchandise distributed throughout Australia;

   (n)             2002 Hard Goods Merchandise Program, Kmart Racing, October 2001;

   (o)             Opponent's 2003 selling sheets (booklet) distributed throughout Australia;

   (p)             Reed Gift Fair magazine, September 2003;

   (q)             Article from the Herald Sun Friday, January 16, 2004 referring to me in my capacity as managing director of the Opponent and identifying the Opponent by reference to the Opponent's Trade Mark;

   (r)              Myer Stationery Presentation, 12 July 2004;

   (s)              2005 Hong Kong Trade Fair flyer;

   (t)              Extract from "Milieu" Gift Magazine 2005 annual edition;

   (u)             Opponent's price list, February 2005 distributed throughout Australia;

   (v)             Promotional material from Hong Kong Playboy conference, July 2005;

   (w)            Extract from Take 5 magazine competition page, 2006.

2. Mr Stojanoski also appends materials to his first declaration which he states shows the trade mark HOT TOPIC in use upon, or in relation to goods.  These are:

   (a)             Hand painted champagne glasses marked "©2002 All Rights Reserved by Hot Topic Australia Pty Ltd";

   (b)             "The Secret Life of Handwriting" test kit;

   (c)              Ford Official Licensed Product conical glass listing the Opponent's address as 198 Normanby Road, South Melbourne, Victoria (registered office and principal place of business from 3 May 2001 to 7 July 2003, refer exhibit KS-3 above);

   (d)             Fone Fashion mobile telephone accessory strap;

   (e)             Jim, Beam licensed product golf kit; and

   (f)              Playboy licensed product key ring.

3. I will comment now that the exhibits to Mr Stojanoski’s first declaration show use of either the opponent’s trade mark, or its company name (Hot Topic Australia Pty Ltd) or a business name (Hot Topic or Hot Topic Australia – as in “Hot Topic has it all …” and “Betty Boop Love Packs from Hot Topic Australia”).  The exhibits do not show use of the trade mark HOT TOPIC as plain, unadorned, words on, or in relation to goods or services. 

4. A problem with this evidence is that it is (by and large) not possible to work out exactly when the opponent’s trade mark was first used in relation to specific goods and services.  The major use of the opponent’s trade mark appears, from this declaration, to be in relation to a wholesale service where it is used on catalogues, presentations, and trade stands to promote the goods to retailers. 

5. In his evidence in answer, Mr Kearns avers that the applicant has been selling clothing, fashion accessories and music and other goods under the HOT TOPIC trade mark since 1989.  The sales of goods under the trade mark have been primarily in the United States but also into Australia by sales via the Internet since at least 2001 – Mr Kearnes appends what appears to be ‘screen shots’ of computerised sales records dating from 3 February 2001 until 22 September 2006 showing sales of goods under the HOT TOPIC trade mark.  These goods include clothes, photographs, jewellery, pillows, books, tattoos, ties, arm warmers, buckles, belts, patches, wristbands, socks, fancy dress items, watches, novelty items, umbrellas, sheets, plush toys, rugs, chopsticks, eyelashes, clocks, wallets, videos and eyewear.

6. I will add that the goods have a strong emphasis on ‘Gothic’ or ‘Punk’ styles.

7. The applicant includes a product reference guide which shows how labels and swing-tags which bear its HOT TOPIC trade mark are to be affixed to all the goods it sells.

8. Mr Fitzpatrick submitted at the hearing that the sales made by the applicant into Australia were not directed at Australia and are thus not a use of the trade mark in Australia.  However, I think that whether or not sales into Australia are intentional is just one of the considerations of whether the use of the trade mark via the Internet is a use in Australia.  It is apparent that the applicant had a good many sales into Australia and that the offer on its website was not restricted to one country or a number of countries.  The fact is that Australians bought the goods being offered and to judge from the quantities ordered on some invoices it is also likely that these were being bought for resale within Australia.

9. I accept that the evidence shows that the applicant has used its HOT TOPIC trade mark from 3 February 2001 in relation to at least the goods listed at paragraph 12.  Until the filing date of its application to register the opposed trade mark, the quantum of the use had totalled some half million dollars Australian.

10. Mr Stojanoski’s second declaration attests to how he thought of the trade mark HOT TOPIC in 2001 in a brain storming session.  I note that an A4 sheet submitted to support this bears various handwritten ideas for trade marks does not bear a date, nor is an obviously contemporaneous diary entry and it is a photocopy.  I weight it accordingly.

11. Mr Stonjanoski also appends numerous tax invoices issued by the opponent.  The trade mark HOT TOPIC does not appear on these invoices, although the company name of the opponent, Hot Topic Australia Pty Ltd does.

The grounds

1. At the hearing, the opponent argued grounds under sections 58 and 60.

Section 58

1. Section 58 of the Act provides:

   58Applicant not owner of trade mark

   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.

2. To establish its ground under section 58 of the Act, the opponent must satisfy me that it has used a trade mark which is at least substantially identical to the opposed trade mark before the priority date of the opposed application (or the date of first use in Australia of the opposed trade mark, whichever is the earlier) for goods or services which are the same kind of thing.

3. Firstly, it is pertinent to note that the trade marks under consideration here are the opposed trade mark HOT TOPICS (plain words) and the opponent’s trade mark, below, which may have been used in respect of wholesale services:

1. I consider that the opponent’s evidence, considered in its totality, may establish that the opponent has used the above trade mark in relation to wholesale services since 2002 when it was used on a stand at the Brisbane Gift Fair and for a limited range of goods since that date – on a conical glass which is undated, on a mobile telephone sling which is undated, on a golf kit which is dated 2004 and on a key ring which is dated 2005.

2. I will leave aside the wide black border in the opponent’s trade mark since this might be how the trade mark is represented for convenience – the ‘black border’ might in fact be part of packaging.  Thus the opponent’s trade mark would appear more like this:

1. When comparing trade marks for the purposes of section 58, the establishment of nothing less than a substantial identity will suffice in order to establish this leg of the ground: in Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936; (1994) Aipc 91-049; (1994) 120 ALR 495, Gummow J said:

   When the decision is understood in this way, it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice. The phrase "substantially identical" as it appears in s. 62 (which is concerned with infringement) was discussed by Windeyer J in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited [1961] HCA 75; (1963) 109 CLR 407 at 414. 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.

2. I do not consider that the trade marks in question are substantially identical.  While it is true that the trade marks consist of the words HOT TOPIC, the device component of the opponent’s trade mark cannot be ignored, neither can the disparity in the size of the words HOT and TOPIC within the opponent’s trade mark; these differences combine to create the impression that the trade marks, while having marked similarities, are not substantially identical.  I note that, in arguing that the trade marks are substantially identical, Mr Fitzpatrick directed my attention to Austrac Holdings Pty Ltd v Mark Assetta [2002] ATMO 62 where I noted that cases where substantial identity had been found included:

   Kendall Co v Mulsyn Paint & Chemicals (1963) 109 CLR (POLYKIN and POLYKEN); Seven Up Company v O.T. Ltd (1947) 75 CLR 203 ('7UP in a circle' and '8UP in a square'); Pelican Trade Mark [1978] RPC 424 (PELICAN and PELIKAN); Pelikan International Handelsgesellschaft MbH & Co Kg v Lifinia Pty Ltd (1994) 30 IPR 615 (PELICAN and PELIKAN); Shachihata Industrial Co Ltd v Magic Marker Corp (1984) 3 IPR 519 (LIQUID CRAYON and LIQUID CRAYONS); Re Applications By Stratco Metal Pty Ltd (1984) 4 IPR 48 (CLICKFAST and KLICK-FAST); Michael Sharwoood & Partners Pty Ltd And Others v Fuddruckers Inc (1989) 15 IPR 188 (FUDRUKKERS and FUDDRUCKERS); Re Application By Jacuzzi Inc (1990) 17 IPR 414 (AERO and AEROSPA - on spa equipment); Re Application By Fastrack Racing Pty Ltd (1994) 29 IPR 193 (FASTRACK and FAST TRACK); Sportscraft Consolidated Pty Ltd v General Sportcraft Co Ltd (1993) 27 IPR 74 (SPORTCRAFT and SPORTSCRAFT); Alexander v Tait-Jamison (1993) 28 IPR 103 (ECO-FARM and ECO-FARMS); Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 (FUNSHIP and FUN SHIP); Warner-Lambert Co v Harel (1995) 32 IPR (DERMOFILM and DERMAFILM); Bull SA v Micro Controls Ltd (1990) 19 IPR 299 (MICROL and MICRAL); PB Foods Limited v Malanda Dairyfoods Limited [1998] ATMO 66 (15 December 1998) (CHILL and CHOC CHILL).

3. In contrast with the above list, however, the following trade marks have been found not to be substantially identical: "Otrivin" Trade Mark [1967] RPC 613, (OTRIVIN and OTRIVINE); Lonza Ltd v Kantfield Pty Ltd (T/A Martogg & Co) (1995) 33 IPR 396 (FORTEX and FOREX); Photo Disc Inc v Gibson And Another (1998) 42 IPR 473 ('PHOTO-DISK' - with descriptive phrase and arabesques and PHOTODISC), although in the latter decision, the Deputy Registrar observed that if the trade marks had been PHOTO-DISK and PHOTODISC, solus, she would have found that the trade marks were substantially identical.

4. I think that if comparisons are to be drawn, the opponent’s trade mark has much in common with the PHOTO-DISK matter, above.  The device component of the opponent’s trade mark is not readily dismissed or overlooked.

5. In addition, the use of the trade mark by the applicant in respect of its goods of interest in Australia, on the evidence before me, commenced before the use of the opponent’s trade mark.  The applicant used its trade mark on “clothes, photographs, jewellery, pillows, books, tattoos, ties, arm warmers, buckles, belts, patches, wristbands, socks, fancy dress items, watches, novelty items, umbrellas, sheets, plush toys, rugs, chopsticks, eyelashes, clocks, wallets, videos and eyewear” since 2001.  The opponent has demonstrated use in its evidence on ‘wholesale services’ (first use, 2002); a golf kit (2004); and, on a key ring (2005).

1. I do not think that the wholesale services offered by the opponent are the same kind of thing as the goods offered by the applicant and are, in any event, from a date after the applicant had started using its trade mark in Australia.

2. The opponent has thus failed to establish its ground under section 58 of the Act.

Section 60

1. At the relevant date, section 60 of the Act read:

   60  Trade 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)it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, had 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 1:For deceptively similar see section 10.

   Note 2:For priority date see section 12.

2. In order to found a ground under section 60 of the Act it is an essential precondition that the trade mark on which the opponent relies has a reputation in Australia as the deception or confusion must flow out of the reputation. In McCormick & Company Inc v McCormick [2000] FCA 1335, Kenny J said at paragraph 81:

   What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of theMcCormick & 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?

3. Kenny J, in McCormick, goes on to quote ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343, where Lockhart J said :

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner ... .

4. Reputation may also be inferred from the amounts of sales of goods or services provided under the trade mark and the amounts spent on advertising goods and services under the trade mark.

5. The opponent presents both wholesale and retail sales figures for goods sold under its trade mark.  However, there is no evidence that the opponent retails goods. It appears possible the retail sales figures which are supplied are estimates by the opponent of what its wholesaled goods should sell for in the retail market.  The tax invoices exhibited to Mr Stojanovski’s second declaration uniformly support the hypothesis that that opponent supplies goods (which generally carry such trade marks as SUPERMAN, FORD, PLAYBOY or JIM BEAM) to retailers and does not carry out any retail of goods itself.

6. It appears probable that the opponent performs a wholesale service and the figures supplied relate only to this.

7. Thus, if the opponent’s trade mark has a reputation, that reputation could only exist in relation to wholesale services – most particularly, the wholesale of souvenirs and novelties.  Additionally, this reputation would have existed only amongst those within the wholesale market for such goods – these people are the purchasers for retail stores.  I do not believe that the evidence establishes reputation amongst the general public for the opponent’s trade mark in respect of the few goods which are evidenced to have had the opponent’s trade mark on packaging (a conical glass which is undated and bore the more prominent trade mark FORD, on a mobile telephone sling which is undated, on a golf kit bearing the more prominent trade mark JIM BEAM which is dated 2004 and on a key ring bearing the trade marks ‘silhouette of a rabbit head’ and the word PLAYBOY which is dated 2005).

8. I have decided, above, that the trade marks are not substantially identical.  Deceptive similarity is to be assessed according to the tests set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at paragraph 13 per Windeyer J:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two  marks  side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the  marks  clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that  marks  are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106 . And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (1937) 58 CLR, at p 658

9. I consider that the trade marks are deceptively similar: however, the enquiry does not stop here.  The question is whether because of the reputation of the opponent’s trade mark, the use of the opposed trade mark would deceive or cause confusion.

10. This question comes under the kinds of consideration referred to be French J in Registrar Of Trade Marks v Woolworths [1999] FCA 1020 at paragraph 50:

    In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

    (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

    (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

    "...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

11. I do not consider that the purchasers of goods for retail stores who know of the applicant’s trade mark would be likely to be confused or deceived by the use of the opposed trade mark.  The opposed trade mark had been in use in Australia for some three years before the priority date of the application – and concurrently with the applicant’s trade mark for two years before the priority date.  There is no evidence of confusion or deception.

12. Alternatively, I am not satisfied that if there were to be confusion and deception, it could arise from the reputation of the applicant’s trade mark, rather than that of the opponent.

13. The opponent has not established its opposition under section 60 of the Act.

Decision

1. Section 55 of the Act provides:

55  Decision

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.

1. As discussed above, the opponent has not established its grounds of opposition.

2. 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 and that the disposition of the application be in accordance with the Court’s order or direction.

3. I award costs to the applicant as set out in the schedule to the regulations.

Iain Thompson

Hearing Officer

Trade Marks Hearings

17 November 2009