IFit Inc v Coles Group Limited

[2024] ATMO 194

TRADE MARKS ACT 1995

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

Re:Opposition by iFit Inc to registration of trade mark application number 2161050 (classes 21 and 28) – COLES PERFORM (figurative) - in the name of Coles Group Limited

Delegate:

Jonathon Galloway

Representation:

Opponent: Malcolm Bell of Phillips Ormonde Fitzpatrick

Applicant: Ben Fitzpatrick of Counsel, instructed by Tony Lolis and Nicholas Butera of Davies Collison Cave Pty Ltd

Decision:

2024 ATMO 194

Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42(b), 44, 60 considered – no ground established – trade mark to proceed to registration

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act1995 (Cth)[1] by iFit Inc (‘Opponent’) to registration of the following trade mark:

Trade Mark No: 2161050

Trade Mark:  (‘Trade Mark’)

Applicant: Coles Group Limited (‘Applicant’)

Filing Date: 5 March 2021

[1] Unless otherwise stated, each reference to a section or regulation is a reference to the Trade Marks Act1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’) respectively.

Specification:

Class 21: Household or kitchen utensils and containers; shakers, including shakers for mixing protein powders and powdered supplements; plastic water bottles; water bottles (containers); drinking bottles for sports; combs and sponges; bins; brushes (except paint brushes); brushware; brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes; cookware, tableware and kitchenware, except forks, knives and spoons; coffee cups; coffee mugs; coffee filters, non-electric; coffee grinders, hand-operated; coffee percolators, non-electric; coffee pots (non-electric); coffee services (tableware); coffee-pot stands; cosies for coffee-pots; hand operated coffee mills; non-electric apparatus for making coffee; non-electric coffee brewers; non-electric coffee makers; non-electric coffee percolators; non-electric coffee pots; steam controllers for coffee-makers; non-electric plunger coffee makers; coffee stirrers; non-electric coffee frothers; coffee servers, non-electric, of precious metal; coffee filters, non-electric; coffee services (tableware); coffee scoops; sticks for stirring coffee; drinking glasses; plastic cups; coffee capsule dispensers; coffee container; jars for household use; tooth brush holders; racks in this class, being clothes racks, ironing racks, towel racks and drying racks; containers in this class, being containers for beverages, cosmetics, domestic use, flowers, food, soap, storage purposes (household or kitchen use) and toothbrushes; pots, including, flower pots, pots made of plastic and pots made of earthenware; clothes horses (airers); buckets; containers made of mesh for domestic use; cages for household pets; food bowls for pets; litter boxes (trays) for pets; plastic containers for pets; tooth brushes, including, electric-operated toothbrushes and battery-operated toothbrushes; inter-dental brushes; holders for domestic use; carrying case for toothbrushes, mouth rinsing mugs; replacement brush heads for toothbrushes; dental floss; dental floss holders; toothpicks; dental picks for personal use; dental harps; tooth brush holders; pill boxes (not for medical purposes); tablet (pill) boxes not for medical purposes; place mats made of plastics; place mats, not of paper or textile; bar mats; bar mats for use in draining and drying cocktailware and glasses; table mats made of plastic; table mats not made of paper or textiles; baking mats; table mats of plastic; table mats not of paper or textile; parts, fittings and accessories in this class for any of the aforementioned goods.

Class 28: Gymnastic and sporting articles; articles, equipment, machines and apparatus for physical exercise; fitness articles, machines and apparatus; yoga and Pilates equipment and apparatus; machines incorporating weights for use in physical exercise; weights for physical exercise; weight lifting belts (sports articles); weight lifting gloves, weight belt straps and wrist straps; gymnasium equipment; weights for physical exercise (other than adapted for medical use); appliances for physical exercise (other than for medical use); articles for exercising the body (other than for medical purposes); body toner and body training apparatus (exercise); chest expanders (exercisers); exercise treadmills; hand exercisers (other than for therapeutic use); leg exercising apparatus, other than for medical use; machines for physical exercises; machines incorporating weights for use in physical exercise; manually operated exercise apparatus, other than for medical use; portable exercise apparatus, other than for medical use; rollers for stationary exercise bicycles; rowing machines for physical exercise (other than for medical use); stair climbing machines for physical exercise (other than medical therapeutic use); stationary exercise bicycles; treadmills for use in physical exercise; waist trimmer exercise belts; wrist bands for use in playing sports; sporting equipment for the disabled; sports gloves; balls for games, tennis rackets, cricket bats, cricket pads, golf clubs, hockey sticks, rackets for table tennis, badminton and squash; bags for carrying sports equipment and sports balls; roller skates and ice skates; surf boards; body boards; skate boards; tables and nets for table tennis; shin guards, elbow supports, knee supports, ankle supports; protective padding for playing sports; martial arts equipment and accessories; boxing equipment and accessories; apparatus for use in fishing; games, toys and playthings; video game apparatus; decorations for Christmas trees; parts, fittings and accessories in this class for any of the aforementioned goods.

2.     The Trade Mark was examined and advertised as accepted for possible registration on 6 August 2021.

3.     On 6 October 2021, the Opponent filed a Notice of Intention to Oppose the application. On 4 November 2021, the Opponent filed its Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the opposition on 17 December 2021.

4.     The Opponent filed Evidence in Support on 18 March 2022. The parties entered a 6 month cooling-off period on 31 May 2022. At the end of the cooling-off period, the Applicant filed Evidence in Answer on 1 March 2023. The Opponent filed Evidence in Reply on 8 May 2023. Both parties requested an oral hearing.

5.     A delegate of the Registrar of Trade Marks heard the matter by video conference, on 17 June 2024. Malcolm Bell and Marine Guillou, both of Phillips Ormonde Fitzpatrick attended on behalf of the Opponent. Ben Fitzpatrick of Counsel, instructed by Tony Lolis and Nicholas Butera of Davies Collison Cave Pty Ltd, attended on the Applicant’s behalf.

6.     The delegate who initially heard the matter took leave for an extended period of time. For that reason, the opposition has been handed to me to decide, in my capacity as a delegate of the Registrar of Trade Marks. I have read the submissions of the parties, viewed the recording of the hearing, and have examined all of the evidence on file. What follows is my decision, with reasons, based upon the submissions, the recording and the evidence.   

Grounds and Onus

7.     The SGP nominates grounds of opposition under ss 42(b), 44 and 60.

8.     The Opponent carries the burden of establishing one or more of the grounds of opposition.[2] The standard of proof is on the balance of probabilities.[3] The date at which the parties’ rights are assessed is 5 March 2021 (‘Relevant Date’), being the filing date of the Trade Mark and the priority of the Trade Mark for the purposes of ss 44 and 60.

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

Evidence

9.     The following evidence was filed:

Evidence in Support

·Declaration by Gary Weber, Financial Controller at iFIT Health & Fitness Australia Pty Ltd, a subsidiary of the Opponent, made on 17 March 2022 with exhibits 1 to 11 (‘Weber’).

Evidence in Answer

• Declaration by Tony Lolis, Senior Trade Marks Counsel at Davies Collison Cave Pty Ltd, made on 1 March 2023 with exhibits TL-1 to TL- 7 (‘Lolis’).
• Declaration by Simone Cote, Senior Marketing Manager of the Applicant, made on 1 March 2023 with exhibits SC-1 to SC-70 (‘Cote’).

Evidence in Reply

• Declaration by Richard Chang, Associate General Counsel of the Opponent, made on 3 May 2023 with exhibit RC-1.
• Declaration of Marine Anne Guillou, Principal at Phillips Ormonde Fitzpatrick, made on 8 May 2023 with exhibits MG-1 to MG-4 (‘Guillou’).

Opponent

10.    The Opponent is the owner of the following Australian trade mark registrations (collectively, the ‘Opponent’s Trade Marks’) 

Trade mark number	Trade mark	Priority date	Goods
445125	9 May 1986	Class 28: Exercising equipment including rowing machines, stationary cycling equipment, T-bar bench-type pulling and pushing machines
983541	31 December 2003	Class 25: Clothing, including T-shirts, hooded sweat shirts, hooded jackets, jackets, shorts, long pants, capri pants, sport bras, sport tops with shelf bras, socks; headgear, ball caps, hats made from micro fleece and or poly lycra; jackets with removable sleeves and pockets for accessories; sport tops with integrated heart rate monitors; underwear, sport bras with integrated heart rate monitors; T-shirts with integrated heart rate monitors; tank tops, and tank tops with integrated heart rate monitors; gloves
2174544 (IR 1588221)	8 December 2020	Class 27: Yoga mats. Class 28: Elliptical exercise machines; exercise balls; exercise doorway gym bars; exercise machines; exercise weights; manually-operated exercise equipment; physical fitness equipment, namely, treadmills, ellipticals, stationary exercise bicycles, stepping machines; vibrating apparatus used in fitness and exercise programs to stimulate muscles and increase strength and physical performance; wrist and ankle weights for exercise.

11.    Weber provides the background of the Opponent and its predecessor in title, as a developer, marketer and manufacturer of fitness and exercise equipment established in the United States of America in 1977. Weber declares that the Opponent first began selling its PROFORM branded exercise and fitness equipment and related accessories in Australia from 1998 onwards.

12.    The Opponent’s predecessor in title had previously sold exercise and fitness equipment and related accessories in Australia through a local distributor before setting up their own branch operation in 2008. Weber states that the Opponent is the largest developer, manufacturer and marketer of fitness equipment in the world and owns some of the best-known brands in fitness and exercise equipment including PROFORM.[4]

[4] Weber Exhibit 2.

Applicant

13.    The Applicant was incorporated in July 1921. The Applicant owns and operates a large number of supermarket stores and is engaged in the provision of various goods and services.

14.    Cote declares that the Applicant is one of Australia’s largest retailers and, together with Woolworths, forms ‘one of the “Big 2” supermarket chains in Australia’.[5] Cote declares that the Trade Mark has been used in respect of a range of sports nutrition products and supplements, including performance meals and soups, protein bars, powders and shakers,[6] and the Applicant is unaware of any instances of confusion between the goods offered under the Trade Mark and the Opponent or the goods offered by the Opponent under the Opponent’s Trade Marks.[7]

[5] Cote [29].

[6] Ibid [83].

[7] Ibid [88].

15.    Lolis details the history of the Applicant and its position as a well-known supermarket retailer in Australia. Lolis states that exercise and fitness equipment is routinely stocked in the Applicant’s supermarkets and summarises the Applicant’s position regarding the differences between the trade marks.

Discussion

Section 44/Regulation 4.15A[8]

[8] Regulation 4.15A is similar to s 44, but applies when the relied on mark is a protected international trade mark or a trade mark in respect of which the Registrar has received notification of an international registration designating Australia. For the purpose of clarity terminology relating to s 44 will be used throughout this decision.

16.    Section 44 relevantly provides:

Identical etc. trade marks

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

(a)  the applicant's trade mark is substantially identical with, or deceptively similar to:

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

(ii)  a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)  the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1:  For deceptively similar see section   10.

Note 2:  For similar goods see subsection   14(1).

Note 3:  For priority date see section   12.

Note 4:  The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part   17A.

17.    The Opponent relies on each of the Opponent’s Trade Marks as the basis for this ground of opposition.[9]

[9] Opponent’s submissions [43].

18.    I note that the Opponent’s Trade Marks have earlier priority dates than the Trade Mark.

Comparison of Goods

19.    Section 14 relevantly provides:

(1)For the purposes of this Act, goods are similar to other goods:

(a)   If they are the same as other goods; or

(b)   If they are of the same description as that of other goods.

20.    Relevant factors to be considered in determining whether goods are of the same description include, the nature of the goods, their uses and the trade channels through which they are bought and sold.[10]

[10] Re an Application by Ladislas Jellinek for the Registration of a Trade Mark (1947) 63 RPC 59, [64] (Romer J).

21.    It is clear from the submissions filed that neither party considers the goods in class 21 of the Trade Mark to be similar to any of the goods claimed in the Opponent’s Trade Marks.

22.    The Applicant’s class 28 goods comprise articles for sport, fitness and exercise equipment and related accessories. Such goods are similar to the class 28 goods in two of the Opponent’s Trade Marks, specifically trade marks 445125 and 2174544. In contrast, the goods claimed in trade mark 983541 are various clothing items in class 25. These types of goods are different in nature as well as in terms of the use to which they are put when compared to the goods claimed in the Trade Mark. Accordingly, it is not necessary to consider whether trade mark 983541 is substantially identical or deceptively similar.

23.    I will now consider whether the Trade Mark is substantially identical or deceptively similar to any of the remaining Opponent’s Trade Marks. I consider that trade marks 445125 and 2174544 are themselves substantially identical and both have broad claims for exercise equipment such that they are essentially registered in respect of the same goods in class 28. Rather than consider each trade mark in turn, I will proceed on the basis that the decision in respect of the degree of similarity for one of the trade marks would be the same for the other.

Comparison of Trade Marks

24.    The Trade Mark and the Opponent’s Trade Marks are set out below:

Trade Mark Opponent’s Trade Marks

25.    Whether two trade marks are substantially identical is determined on a side-by-side comparison having regard to the essential features of the trade mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[11] On a side-by-side comparison there are clear differences; these include the COLES element in the Trade Mark as well the aural difference between PER and PRO, being the prefixes which precede the common element, FORM. Having regard to the visual and aural differences as well as the different ideas conveyed in the trade marks, I am satisfied that there is not a total impression of resemblance between the Trade Mark and the Opponent’s Trade Marks.

[11] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J).

26.    Section 10 defines ‘deceptive similarity’ in the following terms:

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.

27.    The test for assessing deceptive similarity was set out by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd:

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 [mark].[12]  

[12] Ibid [13].

28.    The Opponent put forward a number of reasons as to why each of the Opponent’s Trade Marks should be considered deceptively similar to the Trade Mark, namely:

·The word FORM is the most memorable feature of the Trade Mark, due to the larger font size of that element and the relative positioning of the other elements within the Trade Mark.[13]

·COLES is not the dominant identifying element[14] and plays a secondary role in the ‘attractive ability’[15] of the Trade Mark.

·The class 28 goods claimed by the Applicant are the same as the class 28 goods claimed by the Opponent.[16]

·Each of the Opponent’s Trade Marks are phonetically, visually and conceptually similar to the Trade Mark.[17]

[13] Opponent’s submissions [23].

[14] Ibid.

[15] Ibid [54].

[16] Ibid [56].

[17] Ibid [59].

29.    The Applicant submits the differences in the Trade Mark and each of the Opponent’s Trade Marks are substantial, and maintains that:

·The common element of FORM has a low level of distinctiveness.[18] In the context of the goods claimed, FORM is commonly understood as referring to the method or technique of carrying out an exercise movement.  

·The Trade Mark, as a whole, would be seen by consumers as ‘COLES PerFORM’. That is, it is a trade mark comprising two words presented in a 3-tiered fashion.[19]

·PERFORM is a dictionary defined word, meaning: to carry out; execute.[20]

·FORM is also a dictionary defined word meaning inter alia, ‘the shape of a thing or person’, ‘a body, especially that of a human being’.[21]

[18] Applicant’s submissions [92].

[19] Ibid [32].

[20]Macquarie Dictionary (online at 20 September 2024) ‘perform’ (def 1).

[21] Macquarie Dictionary (online at 20 September 2024) ‘form’ (def 2); (def 3).

30.    I note the Opponent’s reference to Optical 88 Limited v Optical 88 Pty Ltd (No.2) in which the judge said:

When considering the question of deceptive similarity, each mark must be compared as a whole. … It is necessary to look at all these elements in their context. … The impression created by the mark, considered as a whole, can only be determined by doing this. However, in this connection, it is recognised that deceptive similarity may be established when an impugned mark uses an “essential” or “distinguishing” feature of the mark as registered.[22]

[22] [2010] FCA 1380, [100] (Yates J).

31.    I do not think that the Trade Mark is making use of the word FORM as a trade mark. Rather the Applicant is making use of the word ‘PERFORM’ as an essential or dominant element in the Trade Mark. When viewed as a whole it is more likely that the Trade Mark will be seen as a combination of two words, namely ‘COLES’ and ‘PERFORM’. While FORM is presented in large font and positioned prominently, it is necessary to view the Trade Mark as a whole. This approach would lead consumers to conclude that not only is the element ‘FORM’, part of the word ‘PERFORM’, but the Trade Mark also contains additional visual and aural points of difference.

32.    I note the Opponent’s submissions regarding the fact that the Applicant’s reputation in the word ‘COLES’ is not relevant to an inquiry under s 44.[23] While it would not be a correct application of the principles relating to the assessment of deceptive similarity to consider the reputation of the word ‘COLES’, it would also be a misapplication of the Act to wholly discount the existence of ‘COLES’ as an element of the Trade Mark. As discussed in SAP Australia Pty Ltd v Sapient Australia Pty Ltd, the Full Court agreed with the primary judge’s statement that the comparison is between the marks, as applied for, and not between one mark and a corruption or contraction of another.[24] As such, the word ‘COLES’ remains as a feature to be weighed in the whole of the Trade Mark, although I take no account of any reputation it may have.

[23] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

[24] [1999] FCA 1821, [27] (French, Heerey and Lindgren JJ).

33.    I note the Opponent’s reference to In-N-Out Burgers Inc v Hashtag Burger Pty Ltd where the common termination in the trade marks led to a finding of deceptive similarity.[25] In that case the judge compared two trade marks, “In-N-Out” and “Down-N-Out” with similar stylisation and found that the overall impression between the trade marks was sufficient to find a likelihood of deception or confusion. I do not think that the reference to this case assists the Opponent. In that case Katzmann J had regard to the nature of the goods, as well as the similarities and differences in the trade marks in the context of fast-food services, and determined that none of the differences affected the impression created by the sound of the trade marks having regard for consumers with imperfect recollection.[26] In the current matter the Trade Mark and the Opponent’s Trade Marks do not share a sufficient degree of aural and visual similarity when viewed as a whole.

[25][2020] FCA 193 (Katzmann J). The Full Court affirmed on appeal the necessary consideration is the impression the impugned mark would have on consumers of ordinary intelligence with an imperfect recollection of the registered trade marks, Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235 (Nicholas, Yates and Burley JJ).

[26] Ibid [159].

34.    The Opponent submits that PRO-FORM is similar to PERFORM which it says is the dominant element in the Trade Mark. Notwithstanding the other elements in the Trade Mark, I cannot see how PRO-FORM and PERFORM would be thought of as creating similar impressions. PERFORM is a defined and common English word, which creates a different idea when compared to the Opponent’s Trade Marks. As stated above, FORM in the context of the class 28 goods commonly refers to the method or technique used to carry out an exercise and, PRO is commonly used as an abbreviation of professional.[27] The impression, as a whole, therefore is in relation to carrying out exercise technique as a professional or in connection with equipment that is designed or suitable for professionals. In relation to the aural similarity, it is well established that differences in the first syllable of words are generally more important than the termination of words for the purposes of distinction.[28] With that in mind I consider that the first part of the Trade Mark incorporates ‘COLES’ and the prefix ‘PER’ while the leading element in the Opponent’s Trade Marks is ‘PRO’. This creates strong aural and visual differences between the trade marks.

[27] Macquarie Dictionary (online at 20 September 2024) ‘pro’ (adj, def 2)

[28] London Lubricants (1920) Limited’s Application (1925) 42 RPC 264, [279] (Sargant LJ).

35.    I note the Opponent’s submissions concerning the presentation of the Trade Mark and potential visual similarity arising from the font size of the word FORM. While FORM is presented in the Trade Mark and the Opponent’s Trade Marks as a somewhat separate element it is not the sole element in either. The Trade Mark, when considered as a whole is a combination of two words COLES and PERFORM, which is aurally and visually different and creates an overall sufficiently different impression to the Opponent’s Trade Marks. In addition to the differences between the trade marks, many of the class 28 goods are large and often expensive pieces of equipment. They are at a price point that suggests consumers would have greater regard for the differences in the trade marks.

36.    The Opponent has not established the ground of opposition under s 44.

Section 60

37.    Section 60 provides:

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.

38.    To establish this ground of opposition, the Opponent must demonstrate:

• A reputation was acquired by another trade mark in Australia before the Relevant Date; and
• That because of the reputation of the other trade mark, use of the Trade Mark would be likely to deceive or cause confusion.

39.    The Opponent relies on its use of the Opponent’s Trade Marks and contends that as at the Relevant Date, the Opponent’s Trade Marks had established a reputation in Australia in connection with exercise and fitness equipment and related accessories through 20 years of continuous use in Australia.

40.    The Opponent also relies on the following unregistered trade marks which it says are ‘contemporary’ versions of the registered trade mark 983541:

41.    In the SGP the Opponent particularises the s 60 ground of opposition as follows:

The Opponent has been using in Australia the PROFORM Trade Marks, in connection with exercise and fitness equipment, and related accessories (the Opponent’s goods) for at least the past 20 years. The use of the Opponent’s PROFORM Trade Marks has been throughout all of Australia and sales of the Opponent’s goods for the past ten years have been significant.

The Opponent’s goods are available through numerous retailers throughout Australia and customers have been able to purchase the Opponent’s goods directly from the Opponent for more than 10 years. As a result of the extensive use of the Opponent’s PROFORM Trade Marks, the Opponent has acquired a reputation and, because of that reputation, the use and registration of the Opponent’s [sic] Trade Mark would be likely to deceive or cause confusion.

Reputation

42.    Reputation in the context of s 60, refers to the ‘recognition of the [mark] by the public generally’.[29] Reputation is not assumed, it must be established by the Opponent as a matter of fact.[30]

[29] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).

[30] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) (‘ConAgra’).

43.    The relevant reputation must be amongst a significant or substantial number of persons.[31] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[32]

[31] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

[32] Le Cordon Bleu Bv v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

44.    There are a number of factors that are relevant in establishing reputation, such as demonstrating that a large number of people have been exposed to the trade mark,[33] evidence that demonstrates high sales volumes,[34] and expenditure in relation to advertising and promotion of goods bearing the trade mark.[35] There are also qualitative aspects to the reputation of a trade mark, these concern the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[36]

[33] ConAgra (n 30) [118].

[34] McCormick (n 29) [86].

[35] Ibid.

[36] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).

45.    The Opponent relies on five separate trade marks and asserts that the evidence demonstrates a reputation in each of them. At its highest, the evidence filed indicates the existence of a reputation in at least one of the Opponent’s Trade Marks before the Relevant Date. However, as it will become apparent, it is not necessary to consider whether the evidence is sufficient to demonstrate that the Opponent has established a reputation at the Relevant Date in relation to any of the Opponent’s Trade Marks.

46.    The Opponent’s evidence, attesting to its reputation in the Opponent’s Trade Marks includes consistent use of the Opponent’s Trade Marks in the Australian market place from 1998.[37] The annual revenue outlined in Weber is substantial and consistent over a 10 year period from 2011-2021.[38] The evidence relating to promotion and advertising of the Opponent’s Trade Marks shows considerable expenditure in promoting the Opponent’s Trade Marks through direct advertising,[39] and indirect advertising in the form of sponsorships and endorsements.[40] In addition the Opponent submits that a significant number of consumers are likely to be exposed to the goods that are displayed on the floor of various retail stores such as Rebel Sport, and that this is a form of promotion that cannot be quantified but may be significant in terms of consumer exposure to the Opponent’s Trade Marks. The evidence relates to a range of exercise equipment in class 28 such as stationary bikes, treadmills, ellipticals and similar pieces of equipment.[41]

[37] Weber [5]-[6].

[38] Weber Confidential Exhibit 5.

[39] Weber Confidential Exhibit 7.

[40] Opponent’s submissions [17].

[41] Weber Exhibit 3.

Likelihood of Deception or Confusion

47.    The likelihood of deception or confusion is not automatically established upon the opponent demonstrating a reputation in the relied upon trade mark. Under s 60(b), the Opponent is required to establish a causal connection between the reputation of the Opponent’s Trade Marks and the likelihood that use of the Trade Mark will deceive or cause confusion.

48.    The test for deception or confusion turns on whether use of the trade mark would result in a reasonable number of people being caused to wonder whether the Applicant’s goods are from the same trade source as another trade mark.[42] This determination is informed by a number of relevant factors, including, the strength of the reputation of the other trade mark, the similarity between the Applicant’s goods and the goods associated with the reputation of the other trade mark, and the degree of similarity between the relevant trade marks.[43] In Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd, a delegate of the Registrar explained:

Confusion can not arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the Opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[44]

[42] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50] (French J).

[43] Qantas Airways Limited v Edwards [2016] FCA 729, [142] (Yates J).

[44] [2010] ATMO 5, [39] (Hearing Officer Lyons) (emphasis in original).

49.    The Opponent claims that the likelihood of deception and confusion is demonstrated through the results of online searching, set out below, which show the Opponent’s Trade Marks on various items of exercise equipment. Annexed to Guillou are screenshots and results of search terms entered into the Google search engine including:

·    PERFORM treadmills.

·    PERFORM exercise bikes.

·    PERFORM rowers.

·    PERFORM ellipticals.

50.    The Applicant submits that this does not assist the Opponent because the search terms do not include COLES. By leaving out this element of the Trade Mark, the Applicant claims the Opponent is not searching for the Trade Mark that was actually filed. In addition, the Applicant submits that these results suggest Google is using an autocorrect function which would skew the results because Google would search for PROFORM branded goods rather than use the search terms that were actually entered. Finally, the Applicant submits the search terms are all for large more expensive pieces of equipment, which do not give a true indication of the Opponent’s reputation in the context of a broad range of fitness and exercise equipment.

51.    I note the Opponent’s references to decisions that contemplate how the strength of the reputation may be so great that deception and confusion is likely despite obvious differences in the trade marks under consideration.[45] While reputation is a highly relevant factor, the likelihood of deception or confusion must also be assessed with some regard to the similarity of the trade marks.

[45] Red Bull GmbH v Altanea Gida Anonim Sirketi [2012] ATMO 120 (Hearing Officer Lyons); Sanofi v Eremad Pty Ltd [2013] ATMO 94 (Hearing Officer Murray).

52.    In Qantas Airways Limited v Edwards, Yates J commented that s 60 is not based on the requirement that the allegedly conflicting trade marks are substantially identical or deceptively similar, however the degree of similarity between the trade marks is a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed trade mark.[46]

[46] [2016] FCA 729, [142].

53.    For the reasons provided in relation to the s 44 ground of opposition, I consider the differences between the Trade Mark and each of the Opponent’s Trade Marks are too significant for the Opponent to establish a likelihood of deception or confusion irrespective of the alleged reputation acquired by each of these trade marks within Australia. Consumers who encounter exercise equipment or related goods bearing the Trade Mark would not likely be confused or deceived as to the origin of those goods due to the Opponent’s Trade Marks.

54.    Accordingly, I am not satisfied that there is a real, tangible danger that use of the Trade Mark would be likely to deceive or cause confusion amongst a significant or substantial number of relevant consumers.

55.    The ground of opposition under s 60 is not established.

Section 42(b)

1. Section 42 relevantly provides:

   An application for the registration of a trade mark must be rejected if:

   (a)   …

   (b)   its use would be contrary to law.

   57. The Opponent relies on ss 18 and 29 of the Australian Consumer Law (‘ACL’) of Schedule 2 of the Competition and Consumer Act 2010 (Cth).

   58. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representation that are false or misleading.

   59. In order to establish an opposition under s 42(b), the Opponent must demonstrate on the balance of probabilities that use of the Trade Mark would, as opposed to could or might, contravene ss 18 or 29 of the ACL.[47]

   [47] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

   60.    For the reasons outlined in relation to the s 60 ground of opposition, in my view it is not likely that use of the Trade Mark would be likely to mislead or deceive an ordinary or reasonable consumer of the relevant goods into believing that the Trade Mark and any of the Opponent’s Trade Marks are related.

   61.    The ground of opposition under s 42(b) is not established.

   Decision

2. Section 55(1) relevantly provides:

   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.

   63.    The Opponent has not established any of the nominated grounds of opposition. Accordingly, trade mark application 2161050 may proceed to registration one month from the date of this decision.

   64.    Should the Registrar be served with a notice of appeal before registration of the Trade Mark, I direct that the registration of the Trade Mark not occur until the appeal has been decided or discontinued, and that any disposition of the application be in accordance with the Court’s orders or direction.

   Costs

   65.    Both parties sought costs. As the Opponent has not established a ground of opposition, I award costs against the Opponent under s 221 in accordance with Schedule 8 of the TradeMarks Regulations 1995 (Cth).

   Jonathon Galloway

   Hearing Officer

   Oppositions and Hearings

   Trade Marks and Designs

   8 October 2024