Hot Tuna IP Limited v Select GmbH Unternehmen Fur Zeitarbeit

[2014] ATMO 49

TRADE MARKS ACT 1995

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

Re:Opposition by Hot Tuna IP Limited to protection of International Registration Designating Australia 1468154 (25,32) – International Registration  1102054 – Stylised fish in a circle - in the name of Select GmbH Unternehmen fur Zeitarbeit

Delegate:	Debrett Lyons
Representation:	Opponent: Tim Allen of Corrs Chambers Westgarth, Solicitors Holder: Ian Tannahill of Ahearn Fox, Patent & Trade Mark Attorneys
Decision:	2014 ATMO 49 Regulation 17A.34 opposition: s 44 considered – trade mark deceptively similar to another trade mark registered for similar goods – extension of protection to Australia refused. Costs awarded against the holder.

Background

1.     Trade mark application number 1468154 is the Australian designation of International Registration number 1102054 made under the Madrid Protocol (“the IRDA”).   The holder of the international registration is Select GmbH Unternehmen fur Zeitarbeit

(“the holder”). 

1. Relevant details of the IRDA are as follows:

   Priority Date:             28 October 2011

   Goods:Class 25: Clothing, footwear, headgear

   Class 32: Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages     

   Trade Mark:                

2. Following examination, the IRDA was advertised as accepted for possible extension of protection to Australia in the Australian Official Journal of Trade Marks on 22 March 2012.  On 22 June 2012, Hot Tuna IP Limited (“the opponent”) filed a notice of opposition.

3. The parties filed and served evidence as described in more detail below after which a hearing was convened in Melbourne on 17 March 2014 where I, as a delegate of the Registrar of Trade Marks, took oral arguments from both sides.  The holder was represented by Ian Tannahill of Ahearn Fox, Patent & Trade Mark Attorneys and the opponent by Tim Allen of Corrs Chambers Westgarth, Solicitors.  Prior to the hearing and in accordance with my directions both sides provided written outline submissions which have also been taken into account in reaching my decision.

   Delegation, Scope of opposition, Onus and Standard of proof

4. I am to decide the opposition as required by the Trade Marks Regulations 1995 as follows:

   Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a) to refuse protection in respect of all of the goods or services listed in the IRDA; or
   (b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established. (Reg. 17A.34N)

   6. By way of Regulation 17A.28, the opponent has chosen to press only those grounds listed in the notice of opposition which are underpinned by sections 44 and 60 of the Trade Marks Act 1995 (“the Act”).  At the hearing the opponent also made it clear that the opposition was directed only against the class 25 goods, namely, clothing, footwear and headgear and not the class 32 goods.

5. The opponent bears the onus of proof which is to establish one of the grounds of opposition on the balance of probabilities at the priority date, 28 October 2011.

   The Evidence

6. The parties rely on the following Statutory Declarations or Declarations:

   Evidence in Support

   • Brendan Santamaria made 14 September 2012;        
   • Robert Mellors made 15 November 2012;
   • Neils Anders Juul made 16 November 2012;

   §Andre Reich made 21 November 2012.

   Evidence in Answer

   • Rudiger Probst made 10 March 2013;

   §Ian Robert Tannahill made 22 April 2013.

   Evidence in Reply

   • Robert Mellors made 8 July 2013.    

   Reasoning

7. The undisputed evidence is that the opponent established a clothing business in Australia in 1969 and began selling surfwear by reference to the trade mark “HOT TUNA”.

8. In 1979 the opponent devised and started to use the trade mark appearing below:

9. Over the following years, that trade mark took on other forms including those shown below but it is the form of the mark shown in paragraph 10 which is hereafter referred to as “the opponent’s trade mark”.

10. It is the opponent’s submission that the opponent’s trade mark “is instantly called to mind as an iconic retro Australian surfwear brand”. 

11. In a time when the word “iconic” is exhausted by misuse, it is harder to quantify that claim to fame, but from the evidence it is at least clear that during the late 1980s and early 1990s the opponent’s trade mark was very well known in Australia for beachwear and surfwear clothing.

12. Set within that broad context, the opponent’s ground for opposition under section 60 of the Act based on its claim to reputation in the trade mark and its submission that use of the holder’s trade mark would result in a likelihood of confusion or deception is well understood.

13. However, part of that context includes the admitted fact that at some point during the latter part of the 1990s the popularity of the opponent’s goods began to seriously wane and much of the discussion at the hearing concerned the nature of the reputation of the opponent’s trade mark at the priority date.

14. Involved with that question was consideration of the effectiveness of the renewed drive from 2005 onwards to restore the repute of the opponent’s trade mark to its former stature, together with the question of whether that (older) section of the Australian public still well familiar with the opponent’s trade mark constituted, at the priority date, the principal consumers for the purpose of determining a likelihood of confusion or deception.

15. Nonetheless, the opponent’s trade mark has been registered for many years and for the reasons which follow it has been unnecessary for me to deconstruct the residual or rejuvenated reputation at the priority date, since I have found the holder’s trade mark likely to cause confusion with, and thus deceptively similar to, the opponent’s trade mark, a determination which does not hinge on the reputation of the opponent’s trade mark, and I have found that the section 44 ground has been established.

    Section 44 – trade mark substantially identical with or deceptively similar to trade mark of earlier application or registration

16. Subsection 44(1) of the Act relevantly provides:

    (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.

17. In order to establish subsection 44(1) the opponent must show that there is an earlier trade mark application or registration in the name of person other than the applicant for similar goods and/or closely related services, where that trade mark is substantially identical with, or deceptively similar to, the trade mark being opposed.

18. The opponent’s section 44 ground is premised on its own two registrations, nos. 437143 and 1496136. Registration 437143 from 1985 covers all goods in class 25 and will hereinafter be referred to as “the registration”. Registration 1496136 has a priority date of 26 November, 2011 and so I must disregard it.

19. Since the registration covers goods identical to the class 25 goods of the IRDA, the parties’ goods are similar for the purposes of section 14(1)(a) of the Act[1].   Accordingly, the only matter[2] for determination is whether the compared trade marks are deceptively similar (the opponent making no argument for substantial identity).

    [1] Definition of similar goods and similar services

    [2] It is noted that the representation of the trade mark of regn. 437143 is very slightly different from the representation of the opponent’s trade mark in para 10 of this decision however for the purposes of the ensuing discussion nothing is found to turn on those very fine differences and the registered mark is treated as identical to the trade mark as defined.

20. In that regard, the opponent’s attorney’s submissions are that:

    Both marks consist solely of graphic depictions. Because there are no phonetic features by which the marks can be identified, consumers will necessarily identify the marks by reference to their visual features. In each case they will carry away with them an impression of the mark that derives exclusively from the mark’s visual indicia.

    The Opposed Mark and Hot Tuna’s Fish Device share key visual features. Both marks consist of cartoon renditions of the right-hand side profile of a small, fearsome-looking fish. In both marks, the fish’s eye is represented as round, open and oversized and its mouth is drawn agape with sharp, bared teeth. In both marks, multiple sets of fins are silhouetted. Both marks convey a sense of menace which is achieved by the depiction of bared teeth, sharp-looking fins (in the case of Hot Tuna’s Fish Device) and, in the case of the Opposed Mark, the depiction of a lowered “brow”.

21. By contrast, the holder’s attorney’s observations of the trade marks are that:

    The Hot Tuna Fish Device comprises an outline of a cartoon representation of a small emaciated fish. 

    The fish’s eyes include a thick, dark, boarder (sic.), and a relatively small pupil, which gives the impression of “sunken eyes”, (sunken eyes are usually caused by a dehydrated body.).  [The emaciated appearance and sunken eyes we believe would be typical of a fish that is severely dehydrated – ie. close to death.]

    The fish’s mouth is wide open revealing teeth that protrude from both the upper and lower jaw.  These teeth are quite long and appear to be very sharp, (Piranha’s have a single row of sharp teeth along their top and bottom jaws and whereby the teeth are both tightly packed and interlocking.

    Fins are the most distinctive features of fish.  They are either composed of bony spines protruding from the body with skin covering them and joining them together, either in a webbed fashion as seen in most bony fish, or are similar to a flipper, as seen in sharks.

    The Hot Tuna Fish Device includes a first dorsal fin, a second dorsal fin and a third dorsal fin, all of which appear to be quite bony, and whereby the second and third dorsal fins are both considerably larger than the first dorsal fin.

    The Hot Tuna Fish Device also includes a bony anal fin and a bony caudal fin or tail. Further, we note that the Hot Tuna Fish Device does not include a pectoral fin or a ventral fin.

    The Opposed Mark comprises a cartoon representation of a grotesquely overweight black fish.

    The fish of the Opposed Mark has large eyes, and lowered eyebrows, as if it is cross with someone. 

    The fish of the Opposed Mark has a mouth that is open, but unlike the Hot Tuna Fish device, it has no teeth along its bottom jaw and arguably just one front tooth depending from its top jaw.

    The fish of the Opposed Mark has just one dorsal fin.  It is not bony like the fins of the Hot Tuna Fish Device.  Instead it is of the “flipper” type referred to above.  Further, in our opinion, the fish’s dorsal fin resembles the first dorsal fin often associated with sharks, and marine mammals, such as dolphins and whales.

    The fish of the Opposed Mark, like sharks, dolphins and whales, has a “flipper” like pectoral fin.

    The fish of the Opposed Mark has a very small tail compared with the overall size of the fish.  Like most sharks dolphins and whales, the fish’s tail includes two very distinct lobes or flukes.

22. Section 10 of the Act defines a “deceptively similar” trade mark as follows:

    For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

23. In broad terms, a judgment about deceptive similarity is generally a matter of first impression rather than meticulous comparison.  The proper comparison is that of the impression left in the mind of ordinary persons by the opponent’s trade mark, with the impression such persons would get from the holder’s trade mark[3].

    [3] Windeyer J. in Shell Co.(Aust)Ltd  v Esso Standard Oil (Aust) Ltd, (1961) 109 CLR 407 at 415.

24. The opponent reminded me of Hearing Officer Thompson’s remarks in ThePolo/Lauren Company LP v Megan Philip and Rowena Sylvester [2012] ATMO 45 as follows:

    Here, the registered trade mark of the opponent is inherently adapted to distinguish – it is likely to be recognized as being distinctive of the opponent’s goods. What is likely to impressed (sic.) on the minds of people is that the opponent’s trade mark is a silhouette representation of a polo player bearing an uplifted mallet astride a cantering horse. However, this description exactly matches that of the opposed trade mark. Even without the trade marks of the parties before me, the general impression formed in my recollection of the trade marks is (apart from the letters CP) very much one which forms an identity and such differences which exist in the graphical elements are impossible to describe without both trade marks side by side for comparison.

25. In that case the differences between the compared trade marks included, in one case, the additional letters “C” and “P” flanking the image of the horse and rider.   It is the opponent’s submission that Hearing Officer Thompson’s remarks can be applied with greater force in the case before me where the compared trade marks consist only of graphic elements.

26. I agree with that submission and I regard the holder’s morphological observations of the trade marks compared here to be more in the nature of meticulous comparison than of help to me in deciding the impressions formed by ordinary persons.  I note that Hearing Officer Thompson went on the state that:

    It is, in my consideration, highly improbable that potential purchasers of the parties’ goods would remember and recall the precise orientation of the horses, the placement of their legs, the angle formed by the uplifted mallets or the particular poises of the riders and use those recollections as a basis for differentiation between the trade marks. Indeed, as I have indicated, such an analysis necessitates having the trade marks before the purchaser for a detailed side by side comparison of the type which would almost never occur when contemplating a purchase. These side by side comparisons are the familiar ones involved in consideration of substantial identity and not (as I am considering here) deceptive similarity. As observed by Latham CJ in Jafferjee v Scarlett [1937] HCA 36; (1937) 57 CLR 115; [1937] ALR 404 (‘Jafferjee’):

27. Moreover, in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 Mason J. observed 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.

28. Section 44 thus involves consideration of the “notional use” of both trade marks[4] but it is to be noted that the actual use of the opposed trade mark is one of the possible modes of use open to the holder.  The evidence from the 15 November 2012 declaration of Robert Mellors is indicative of one mode of use and seals my decision.   That declaration annexes several images of how the holder uses the trade mark.  The evidence shows repeated use of the trade mark in conjunction with the expression “Killerfish”.  The opponent’s argument is that the term “Killerfish” calls to mind a flesh-eating fish and reinforces the likely association with its own trade mark. 

    [4] Re An Application by  Smith Hayden  & Co Ltd (1945) 63 RPC 97 at 101.

29. Furthermore, those same materials show an energy drink marketed and promoted on goods including board shorts, bikinis, t-shirts, tank tops, jumpers, body suits, jackets, baseball caps and bags. There is frequent use of the expression “Hot Energy” in close association with both the drink and the affiliated goods.  Finally, it is plain there is, as the opponent submits, “a pattern of promotional activity that, like the Hot Tuna brand, targets the beach-going public.”

30. In short, that actual use of the trade mark is one example of the subset of notional uses to which the trade mark can be properly put.

31. Finally, although I am cautious not to stray from the section 44 analysis and risk treading ground properly part of the field of section 60[5], it can also reasonably be said that inclusion of the opponent’s trade mark within a circle (a mode of actual use of the opponent’s trade mark about which there is no need to speculate) is contemplated by the notional use of the opponent’s trade mark.

    [5] See, for example, Sym Choon & Co Ltd v Gordon Choons Nuts Ltd (1949) 80 CLR 65.

32. Whilst the holder’s evidence includes declaratory statements that it was unaware of the opponent’s trade mark, I find that evidence must be balanced against the opponent’s evidence that during the 1980s and 1990s a wide range of surfwear and casualwear for both men and women which bore the opponent’s trade mark was sold in 20 countries outside Australia.

33. McTiernan and Dixon JJ said in Australian Woolen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 657:

    The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive. Moreover, he can blame no one but himself, even if the conclusion be mistaken that his trade mark or the get-up of his goods will confuse and mislead the public.

34. French J explained in Registrar of Trade Marks v Woolworths (1999) 45 IPR 411 that:

    In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services.

35. I have found that the trade marks create the same net impressions on ordinary people. The goods are identical. The holder targets the same consumers. The risk of confusion is more than significant. For these reasons I find that the opposed trade mark is deceptively similar to the opponent’s trade mark and so the opponent has established its ground under section 44 of the Act.

    Decision

36. I have found the opposition succeeds on the ground raised pursuant to section 44 of the Act as far as the Class 25 specification of the IRDA is concerned. I accordingly refuse to extend protect of the IRDA (application number 1468154) to Australia in respect of the Class 25 goods. Extension of protection for the Class 32 goods is unaffected.

37. Either party may appeal this decision, provided the Registrar has been served with a notice of such appeal within one month from the date hereof.  If an appeal is filed and prosecuted, I direct that the disposition of the application then be in accordance with the Court’s direction or order.

    Costs

1. Having been successful in this matter the opponent is entitled to its costs at the official scale.  In that regard I note an earlier, thwarted attempt for the matter to be heard last year and make it clear here that there should be no duplication of costs because of the earlier attendance of the parties in Melbourne.

   Debrett Lyons
   Hearing Officer
   4 June 2014

   
   

          (1)  For the purposes of this Act, goods are similar to other goods:
                (a)  if they are the same as the other goods; or
                (b)  if they are of the same description as that of the other goods.