Imperial S.p.A. v Alliance Apparel Group, Inc

[2018] ATMO 62

TRADE MARKS ACT 1995

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

Re:Opposition by Imperial S.p.A. to registration of trade mark application 1775923 (25) (IR 1299226) PRIVACY PLEASE in the name of Alliance Apparel Group, Inc.

Delegate:	Michael Kirov
Representation:	Opponent: Relied on written submissions prepared by its attorneys Spruson & Ferguson Holder: Edwina Whitby of Counsel, instructed by Melissa Preston of Ashurst Australia
Decision:	2018 ATMO 62 Opposition under reg. 17A.33 of the Trade Marks Regulations 1995: ss 42(b), 44, 58, 60 and 62A of the Trade Marks Act 1995 considered –– opposed trade mark not substantially identical with or deceptively similar to Opponent’s trade mark so neither s 44 ground nor s 58 ground established - reputation of Opponent’s trade mark insufficient to enliven s 60 or s 42(b) grounds – no evidence to support s 62A ground - opposition not established.

Background

1. Trade mark application number 1775923 is the Australian designation of an application under the Madrid Protocol by Alliance Apparel Group, Inc. (“the Holder”) to extend protection of the trade mark subject of its international registration 1299226 to Australia (“the IRDA”).  After examining the IRDA, IP Australia advertised on 7 July 2016 its intention to extend protection for goods in Class 25 (“the Designated Goods”), as detailed below:

Application No:         1775923

Priority Date:             16 September 2015 (Based on U.S. application 86759088)

Goods:Class 25: Clothing, namely, tops, bottoms, dresses, skirts, rompers, tank tops, pants, trousers, capris, leggings, shorts, skorts, overalls, shortalls, t-shirts, sweatshirts, blouses, shirts, jackets, coats, sweaters, vests, cardigans, underwear, lingerie, panties, bras, undergarments, swimwear

Trade Mark:              PRIVACY PLEASE   (“the Opposed Mark”)

1. On 7 September 2016 Imperial S.p.A. (“the Opponent”) filed a formal Notice of Intention to Oppose extension of protection pursuant to reg. 17A.33 of the Trade Marks Regulations 1995 (“the Regulations”).

2. On 7 October 2016 the Opponent filed a Statement of Grounds and Particulars (“SGP”) specifying five grounds of opposition and on 14 November 2016 the Holder filed a Notice of Intention to Defend the IRDA.

3. For their evidence the parties then filed the following declarations, all made pursuant to the Act and reg. 21.6 of the Regulations:

Evidence in Support

▪ Adriano Aere made 17 February 2017, with Exhibits A to E (“Aere”)

▪ Daniel James Wilson made 22 February 2017, with Exhibit DJW-1 (“Wilson”)

Evidence in Answer

▪ Melissa Louise Preston made 31 May 2017, with Annexures A and B (“Preston”)

▪ Michael Karanikolas made 1 June 2017, with Annexures A to Q (“Karanikolas”)

1. I heard the matter as a delegate of the Registrar of Trade Marks in Canberra on 21 March 2018.  Edwina Whitby of Counsel, instructed by Melissa Preston of Ashurst Australia, appeared for the Holder via video link from Sydney.  The Holder also filed written submissions prior to the hearing.  The Opponent relied on written submissions only, these having been prepared by its attorney, Daniel Wilson of Spruson & Ferguson.

Grounds of Opposition, Onus and Standard of Proof

1. The SGP lists grounds corresponding to ss 42(b), 44, 58, 60 and 62A of the Act, all of which were pressed by the Opponent. Nevertheless, Mr Wilson’s submissions only in fact address the s 44 and s 60 grounds of opposition, otherwise simply noting that:

   Without abandoning any grounds of the opposition as pleaded, the Opponent primarily relies upon the following grounds:

   1. [the s 44(1) ground]

   2. [the s 60 ground].

2. To succeed the Opponent bears the onus of establishing at least one of its five grounds, with the standard of proof required being the ordinary civil standard based on the balance of probabilities.[1]

   [1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26], affirmed by the Full Federal Court (Besanko, Jagot & Edelman JJ) in Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) 116 IPR 207 at [132]-[133].

3. The date for assessing the registrability of the Opposed Mark in this case is the priority date, 16 September 2015 (“the Relevant Date”).[2]

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, Kitto J at 595.

Overview of the Evidence

1. It is convenient to commence with an overview of the parties’ evidence.  Adriano Aere has been Chairman of the board of Directors of the Opponent, an Italian based company with some 200 employees around the world, since it was founded in 1978.  He begins by noting that the Opponent is the owner of the Australian registration detailed below:

Registration No:         1402362

Registration Date:      23 December 2010

Goods:Class 25: Clothing for men, ladies and children, including suits, skirts, trousers, shirts, jackets, sweaters and pullovers, bomber jackets, coats, overcoats, raincoats, furs (clothing), track suits, close fitting jackets for wind protection; scarves, headscarves, shawls; neck ties, gloves, stockings, socks; belts (clothing); bathing costumes and bathing trunks, beach robes and beach clothes; bathrobes; pyjamas and dressing gowns, underwear, brassieres, vests, underpants; hats; shoes, gym shoes, boots, sandals, clogs, slippers

Trade Mark:              (“the PLEASE Logo”)

1. I note that in addition to referring to the PLEASE Logo in his declaration, Mr Aere also refers to “the PLEASE brand,” “the mark PLEASE” and “[the Opponent’s] brand,” stating:

   7. [The Opponent] began offering goods under the PLEASE brand in 1993 in Italy when Emilia Giberti and Adriano Aere established the Italian contemporary fashion brand.

   8. [The Opponent] first used the mark PLEASE in relation to clothing and trousers in Italy in September 1993.  Use of the [PLEASE Logo] began in Australia in October 2001.

   9. The [PLEASE Logo] has been used in substantially the same format over the years.  However, on occasion the [PLEASE Logo] has been used in the following format:

   10. [The Opponent] offers the goods under the [PLEASE Logo] (and brand) in more than 75 stores worldwide and through a network of direct product distributors.

   11. The [PLEASE Logo] is applied to the goods offered under the [Opponent’s] brand as well as the packaging of the goods and the labels and/or swing tags attached to the goods.

2. I mention that nothing in this decision turns on the differences between the various stylised formats in which the Opponent may have used its PLEASE trade mark over the years.

3. Mr Aere goes on to say that Australian consumers are able to purchase the Opponent’s goods via its website at <pleasefashion.com>, the domain in question having been registered since 2002, and he exhibits several pages downloaded from the website in 2017 on which the PLEASE Logo can be seen.  I note that the last of the exhibited webpages is a “store locator” search facility and that this appears to show actual bricks and mortar stores can only be found in western Europe.

4. He also exhibits confidential figures for Australian sales of the Opponent’s clothing for the years 2001 to 2016.  While there have been sales in each of these 16 years, I would characterize the figures as reflecting very modest sales in this country, in contrast to the figures for the Opponent’s worldwide sales from 2012 to 2016 also provided by Mr Aere, which are considerable indeed.

5. Mr Aere concludes:

   16. In addition to the [Opponent’s] Website, the Opponent promotes and advertises the goods offered under the [PLEASE Logo] through the use of social media pages, including Facebook and Instagram.  Now shown to me and marked Exhibit E are printouts, which I caused to be made on the dates indicated, of these social media pages.

   17. As a result of the reputation which the Opponent has in the [PLEASE Logo], I am of the opinion that any use of the Opposed Mark in respect of the Opposed Goods is likely to cause confusion in the minds of a significant number of members of the relevant public in that such members of the public are likely to believe, contrary to fact, that such goods are somehow connected with the owner of the [PLEASE Logo].

6. Daniel Wilson, as mentioned, is the Opponent’s attorney.  In his brief declaration he simply exhibits six “photographs of the [Opponent’s Mark] as applied to swing tags and clothing labels of [the Opponent’s] goods.”

7. Turning to the evidence in answer, Melissa Preston is a senior associate with the Holder’s Australian attorneys.  She exhibits the results of (a) “a search of the Australian Trade Marks Register for all pending and registered trade marks in Class 25 for marks containing the word ‘PLEASE’” and (b) “a google search of the internet for the word ‘PLEASE’ and the word ‘CLOTHING’.”  The results of the Trade Marks Register search, to which Ms Whitby referred in her submissions discussed later in this decision, are reproduced below in a redacted form.  I note that at the time the declaration was made all the marks identified apart from the opposed IRDA itself were registered[3] and that all are in separate ownership notwithstanding all cover, inter alia, “clothing” in Class 25:

   [3] Registration 1152344 a MUSE please had expired following its non-renewal and has since been removed from the Register.

Number	Mark
639587
1152344	a MUSE please
1402362
1417673	Two Sugars Please
1426808	(Contains the text “Please check the proper washing instructions on your garment.”)
1564388
1575252	PLEASE LIKE ME
1775923	PRIVACY PLEASE

1. The second declaration completing the evidence in answer is by Michael Karanikolas, who is based in the United States.  Mr Karanikolas is “one of the founders and owners” of the Holder and has been its Secretary since its incorporation in January 2014.  He describes the Holder as:

   5. …an industry leading fashion design and production house based in Los Angeles.  Founded In 2014, and acquired by Revolve on 20 March 2015 (subject to an operating agreement), the [Holder] specialises in contemporary apparel and footwear, and currently designs and distributes its distinct brands to over 400 retailers worldwide.

2. Mr Karanikolas goes on to provide further details of the Holder’s activities generally and of its use of the Opposed Mark in Australia and elsewhere since 22 July 2015.  It is however unnecessary to record this information here as it is not relevant to my decision.  Mr Karanikolas concludes by saying:

   33. As far as I am aware, there have been no instances of actual confusion in the Australian marketplace (or elsewhere in the world) between the [Opposed] Mark and the [PLEASE Logo].

   34. I believe that the co-existence of the [Opposed] Mark and the [PLEASE Logo] is unlikely to cause confusion.  This is based on the fact that there have been no instances of actual confusion, as well as the differences in the brands themselves, and in the differences of the marks.  In addition, there are a number of PLEASE marks already co-existing on the Australian Trade Marks Register in Class 25 that cover “clothing”, for example:

   [Mr Karanikolas then adds a table of registered “PLEASE trade marks” in Class 25 which is essentially the same as that exhibited by Ms Preston, redacted at paragraph 16 above.]

Discussion

Section 44

1. Only s 44(1) of the Act is relevant to the present matter and this is reproduced below:

Identical etc. trade marks

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

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

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

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

Note 1:  For deceptively similar see section 10.

Note 2:  For similar goods see subsection 14(1).
Note 3:  For priority date see section 12.

1. The ground based on s 44 is indicated in the SGP as follows:

   Substantially identical/deceptively similar trade marks Section 44/Reg 4.15A

   The Opponent is the owner of Australian Trade Mark Registration No. 1402362 PLEASE Logo, which is substantially identical or deceptively similar to the [Opposed] Mark, pre-dates the filing of the [Opposed] Mark and covers the identical goods in Class 25 as the [Opposed] Mark.

2. Details of the Opponent’s registration 1402362 were set out at paragraph 9 above.  I am satisfied that it has an earlier priority date than the opposed IRDA and that the IRDA covers “similar goods”[4] to those of the registration. To establish its s 44(1) ground, then, it remains for the Opponent to establish on the balance of probabilities that the Opposed Mark is “substantially identical with,” or “deceptively similar to,” the PLEASE Logo.

   [4] As defined in s 14(1) of the Act, namely the same goods and/or goods “of the same description.”

3. In submitting that the parties’ marks were substantially identical Mr Wilson began by citing the well known words of Windeyer J at first instance in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (“Shell”), where his Honour said:[5]

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

   [5] (1961) 109 CLR 407 at 415; (1963) 1B IPR 523 at 528; See also Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658.

4. Mr Wilson’s submission based on Windeyer J’s words was brief, namely that “On a side-by-side comparison, it can be seen that the [Opposed Mark] is substantially identical to the [PLEASE Logo].”  I do not agree.  The parties’ marks are set out side-by-side below:

   PRIVACY PLEASE  

5. Clearly the two marks differ significantly, whether visually, aurally or semantically, and a total impression of dissimilarity undoubtedly emerges in my estimation.

6. In the alternative Mr Wilson submitted the parties’ marks were at least “deceptively similar.”  As he noted, s 10 of the Act provides that “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”.  The marks under comparison should not be looked at side by side and the possible imperfect recollection of the PLEASE Logo by relevant consumers when they encounter the Opposed Mark must accordingly be given due weight.  Guidance in assessing deceptive similarity is also generally found in the words of Windeyer J in Shell, where his Honour said at 529:[6]

   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 [Opponent’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 [Opposed Mark].  To quote Lord Radcliffe again [de Cordova v Vick Chemical Co (1951) 68 RPC 103 at 106; 1B IPR 496 at 499]:

   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.

   [6] Again, see also Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658.

7. Based on principles formulated by Kitto J in Southern Cross, French J conveniently restated the major considerations involved in assessing deceptive similarity under the Act in Registrar of Trade Marks v Woolworths Ltd (“Woolworths”)[7] at [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) 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.”

   [7] (1999) 45 IPR 411.

8. Rather than comparing the parties’ respective trade marks side by side then, I should instead attempt to assess the effect or impression produced on the mind of potential purchasers, who know of the PLEASE Logo in connection with clothing (and perhaps have an imperfect recollection of the mark), when they encounter such goods being offered under the Opposed Mark.  As indicated in the above quote from Woolworths, it is enough if the person of ordinary intelligence and memory would be caused to wonder, or be left in doubt, about whether the goods in question come from the same source.

9. After considering the issues identified in Woolworths and the related submissions of Mr Wilson and Ms Whitby, I find I am not satisfied that there is a real tangible danger of deception or confusion occurring in the present case.  In this regard it is difficult to take issue with the following points made by Ms Whitby:

   19. [The PLEASE Logo comprises] an oval which wholly contains the word “PLEASE” in stylised font.  The positioning of the stylised font leaves the consumer with a visual representation of an elongated word, with the oval device used to closely frame the word.

   20. The [Opposed Mark] contains the word[s] “PRIVACY” and “PLEASE”.  The essential feature of the [Holder’s] mark is the noun, “PRIVACY”, being the state of being private, in retirement or seclusion.  “PLEASE” is an ordinary expression of courtesy, which modifies a command, desire or request.

   21. The combination of the words “PRIVACY PLEASE” resonates with the reader as a strong verbal command, or put another way, a demand for privacy.  The alliteration of the two “P” sounds only enhances that meaning and effect.

   22. Visually, the [Opposed Mark] as a whole, being a two word mark, is noticeably longer than the [PLEASE Logo].

   23. Aurally, the [Opposed Mark] sounds significantly longer than the [PLEASE Logo], with three times the number of syllables.

   24. Furthermore, the presence of the element “PRIVACY” cannot be simply dismissed or ignored when considering the overall visual impression of the [Opposed Mark], given its prominent positioning at the front of the [Holder’s] mark.  The PRIVACY component has no equivalent in the [PLEASE Logo].

   25. As the [PLEASE Logo] is a highly stylised representation, [this] renders it even more distinguishable in overall visual impression from that of the [Opposed Mark].

   26. The only element in common between the two marks is the word “PLEASE” which is an ordinary expression and an established part of the English language.  In the context of the [Opposed Mark], that expression is subsumed in the overall totality so that it is the composite expression “PRIVACY PLEASE”…

   …

   36. Plainly, the essential feature of the [Opposed Mark] is the word PRIVACY.  Consumers with an imperfect recollection of the [Opposed Mark] are likely to recall the noun “PRIVACY”, being the component of the mark that has substantive meaning.

   …

   43. It is therefore most unlikely that the reasonably well informed, reasonably circumspect and observant consumer would reasonably believe that the goods offered by reference to the [Opposed Mark] come from the same or economically linked undertakings as clothing goods offered by reference to the [PLEASE Logo].  Clearly, the word “privacy” is not a qualifier in the context of clothing.

   …

   46. As recognised in decisions such as Taiwan Yamani Inc v Giorgio Armani SpA [(1989) 17 IPR 92] and Levi Strauss & Co. v Vivat Holdings Plc (2001) 49 IPR 15, goods for personal adornment such as clothing invariably tend to be handled and inspected by consumers, who will usually try them on for size and appearance before purchase. The purchase of clothing goods is therefore likely to involve greater care and attention to detail, including attention to trade marks, than for other goods, and consumers of clothing goods will tend to be brand-aware: Levi Strauss & Co. v Vivat Holdings Plc.  Therefore, the visual differences between the PRIVACY PLEASE trade mark and the [PLEASE Logo] as articulated above will even be more noticeable to consumers such that there is unlikely to be a danger of confusion or deception between the marks or their origins.

   47. The Preston Annexure A search of class 25 for trade marks containing the word “PLEASE” in class 25 demonstrates that:

   (a) The Opponent has no exclusive right to the word PLEASE;

   (b) The co-existence of several marks containing the word “PLEASE” that evoke different impressions: including PLEATS PLEASE; a MUSE please; Two Sugars Please; PLEASE LIKE ME.

   48. The [Holder’s] trade mark PRIVACY PLEASE can likewise join the register.

1. As foreshadowed, I agree in the main with these submissions.  Although the parties’ marks both contain the word “please,” I do not on balance think there is a real likelihood that a significant number of ordinary consumers would wonder, or be left in doubt about, whether the Class 25 goods sold under those marks come from the same source.

2. To conclude, the Opponent has not established its ground based on s 44(1) of the Act.

Section58

1. Section 58 is reproduced below:

Applicant not owner of trade mark

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:  For applicant see section 6.

1. The ground based on s 58 is indicated in the SGP as follows:

   Applicant not the owner of the trade mark – Section 58

   The Opponent first used the [PLEASE Logo] in Australia around 2001 in relation to the same goods in Class 25 as those covered under the [IRDA].  Further, the [PLEASE Logo] is substantially identical, or deceptively similar, to the [Opposed] Mark.  Accordingly, the Opponent is the first user, and therefore, owner of the [Opposed] Mark in Australia.

2. Whereas the SGP refers to the PLEASE Logo being “substantially identical, or deceptively similar, to the [Opposed] Mark,” success under s 58 is in fact contingent on the parties’ marks being at least substantially identical.[8] As already discussed at paragraphs 22 to 24 above in connection with the s 44 ground, I do not consider the marks to be substantially identical and accordingly the Opponent’s s 58 ground is not established.

   [8] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at 414; (1963) 1B IPR 523 at 528; Carnival Cruise Lines v Sitmar Cruises Ltd (1994) 31 IPR 375.

Section 60

1. Section 60 of the Act is reproduced below:

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)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)  because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

Note:  For priority date see section 12.

1. The ground based on s 60 is indicated in the SGP as follows:

   Mark is similar to mark which has acquired a reputation in Australia – Section 60

   The Opponent has been continuously using [the PLEASE Logo] worldwide since 1993 and in Australia since at least 2001.  As a result of the use of the PLEASE Logo trade mark by the Opponent, the Opponent has acquired a reputation in [the PLEASE Logo].  As a result of this reputation, the use of the [Opposed] Mark would be likely to deceive or cause confusion.

2. To rely successfully on s 60 the Opponent must, as a threshold issue, firstly establish through its evidence that the PLEASE Logo had acquired a “reputation” as at the Relevant Date. Nevertheless, as the authors of Shanahan put it, s 60 “envisages some substantial likelihood of deception or confusion and thus more than a minimal reputation for the prior mark.”[9]  I note too the following observation by the Hearing Officer in Sara Lee Corporation v Bali Blue Pty Ltd:[10]

   The reputation in Australia cannot be assumed – it must still be established as a question of fact – per Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302; 106 ALR 465; 23 IPR 193 [“ConAgra”].

   [9] Shanahan’s Australian Law of Trade Marks and Passing Off, 4^th ed, at [50.2400].

   [10] (2003) 59 IPR 619 at [25].

3. Moreover, as Heerey J said in Le Cordon Bleu B.V. v Cordon Bleu International Ltee:[11]

   …the reputation contended for by the [opponent] would have to be one of which a significant or substantial number of persons were aware: ConAgra at FCR 346.[12]  What is “significant” or “substantial” will depend on the nature of the goods or services in question.  For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

   [11] (2000) 50 IPR 1 at [91]. His Honour’s observation was in the context of s 28(a) of the Trade Mark Act 1955 which, in the circumstances of that case, also required reputation to be established.

   [12] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193.

4. In the present case I proceed on the basis that the target market for the Holder’s Class 25 goods, being “clothing” items of many kinds not limited in any way by gender, age, price-point or otherwise, would in principle include almost all Australians old enough to buy clothes.

5. As far as assessing the reputation of the PLEASE Logo amongst a significant or substantial number of this very broad cohort is concerned, both Ms Whitby and Mr Wilson referred to the well known words of Kenny J in McCormick & Co Inc v McCormick (“McCormick”):[13]

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, eg, Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd(1999) 47 IPR 198; Marks & Spencer Plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson(1998) 42 IPR 473; and RS Components Ltd v Holophane Corp(1999) 46 IPR 451.  This court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, among other things.  Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd(2001) 51 IPR 1, Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd(1997) 38 IPR 495 (Nettlefold), in which Heerey J relied upon the public visibility of the applicant's marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

   [13] (2002) 51 IPR 102 at [86].

6. The evidence before me going to reputation of the PLEASE Logo amongst relevant Australian consumers is contained in Aere, which I summarized at paragraphs 9 to 14 above.  Based on this evidence Mr Wilson’s brief submission maintains:

   4. [The McCormick] judgment and its consequence that reputation may be inferred has been followed by the courts and the Trade Marks Office and should also apply in this matter.

   5. Applying this reasoning, the Opponent submits that the Aere Declaration establishes clearly and beyond dispute that, as at the relevant date, the Opponent has acquired a substantial, established and formidable reputation in Australia in respect of its PLEASE trade mark as:

   (a) the Opponent has engaged in broad and substantive advertising and promotion of its PLEASE branded goods, including through its website and various social media outlets; and

   (b) the Opponent has enjoyed consistent sales of its PLEASE branded goods in Australia and worldwide over the course of many years (as noted in Confidential Exhibits C and D of the Aere Declaration).

   6. Overall, the Aere Declaration outlines the long-standing use of the PLEASE trade mark by the Opponent in Australia.  The PLEASE trade mark has been used in Australia since 2001.  As a result of this use, the Opponent holds a reputation in its PLEASE trade mark in respect of fashion clothing.

7. Not surprisingly, Ms Whitby took a different view of the cogency of the evidence contained in Aere.  Her assessment of the evidence in question, with which I again find I am in substantial agreement, was that:

   52. As with s 44, a likelihood of confusion exists if there “is a real likelihood that some people will wonder or be left in doubt about whether the two sets [of goods] come from the same source”: [Woolworths] at [50](ii).

   53. The word “reputation” in s 60 means recognition of the trade mark by the relevant sector of the public – here, persons in the fashion industry: [McCormick] at [81]. A reputation can be proved by a variety of means, including evidence of promotion in advertisements and other marketing materials: ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343. It is “commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions”: McCormick at [86]

   54. The evidence of the Opponent is insufficient to establish the requisite level of reputation for section 60:

   (a) The Australian sales figures are de minimus, having regard to the total figures (Aere Conf Exhibit C);

   (b) No evidence is provided to demonstrate how the goods are sold by the Opponent into the Australian marketplace (via its website or by any other means) prior to the [Relevant] Date, and there is no reference to any Australian stores, distributors, re-sellers, etc (Aere and Aere Exhibit B);

   (c) There is no evidence of any advertising or marketing undertaken by the Opponent in Australia prior to the [Relevant] Date that would assist in establishing reputation, or even spill-over reputation in Australia;

   (d) There is no evidence of any consumer awareness of the Opponent’s cited mark in Australia (for example, media articles, consumer blogs, reviews) prior to the [Relevant] Date that would assist in establishing reputation, or even spill-over reputation in Australia;

   (e) The Global sales figures are irrelevant to the question of reputation in Australia (certainly in circumstances where there is no evidence of any spillover reputation) (Aere Conf Exhibit C);

   (f) The Social media pages of the Opponent are principally in the Italian language, priced in euros and directed at Italian consumers, and are dated after the [Relevant] Date  (Aere Exhibit E);

   (g) The Please Website at is in the Italian language (Aere Exhibit B), does not reference Australia, and is dated after the [Relevant] Date;

   (h) There is no evidence filed by the Opponent of any Australian traffic to the Please Website at or any evidence as to the appearance of this website as at the [Relevant] Date.

   55. Accordingly, there is no protectable reputation in the Opponent’s trade mark. The section 60 Ground is not made out.

8. As Ms Whitby’s submission indicates, the evidence going to reputation in Australia relied on by the Opponent is weak and the Australian sales figures provided, as I noted earlier, are very modest. As she observed, whereas Mr Aere says the Opponent “offers the goods under the [PLEASE Logo] (and brand) in more than 75 stores worldwide and through a network of direct product distributors,” none of these stores or distributors appears to be located in Australia. While most if not all of the claimed exposure of the PLEASE Logo in Australia was apparently via the Opponent’s website or via (mainly foreign) social media, I am unable to say from the information provided to what extent these platforms may have been visited by Australian consumers. Mr Wilson’s submissions notwithstanding, I cannot simply infer a significant or substantial number of Australian consumers would have come to know the mark by these means. In summary, I am not satisfied on the evidence before me that the PLEASE Logo had the kind of reputation amongst Australian consumers as at the Relevant Date contemplated by s 60.

9. The Opponent has accordingly not established its ground of opposition under s 60.

Section 42

1. It is apparent from the SGP that the Opponent is specifically relying upon s 42(b) of the Act and this is reproduced below:

Trade mark scandalous or its use contrary to law

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

(a) …

(b) its use would be contrary to law.

1. The ground based on s 42(b) is indicated in the SGP as follows:

   Trade mark is scandalous or contrary to law –s 42

   The Opponent has been continuously using [the PLEASE Logo] worldwide since 1993 and in Australia since at least 2001.  As a result of the use of the PLEASE Logo trade mark by the Opponent, the Opponent has acquired a reputation within [sic] [the PLEASE Logo].  As a result of this reputation, the use of the [Opposed Mark] would amount to a breach of the Australian Consumer Law or passing-off at common law.

2. My findings in relation to the Opponent’s s 42(b) ground, contingent as they are upon my being satisfied the PLEASE Logo had a significant reputation in Australia as at the Relevant Date, essentially reflect my above conclusion on the s 60 ground.

3. While Mr Wilson made no submissions on the s 42(b) ground, presumably the reference in the SGP to the Australian Consumer Law (“ACL”) is to s 18 of that legislation, which sanctions conduct that is misleading or deceptive or is likely to mislead or deceive. It is generally the case that where an opponent is unsuccessful in establishing its s 60 ground, it would inevitably also be unable to establish s 18 of the ACL had been breached in circumstances where the reputation of the very same trade mark is relied on.

4. Unlike s 60 of the Act discussed earlier, s 18 of the ACL is not concerned with behaviour that “would be likely to deceive or cause confusion.” The relevant provision of the ACL requires that I be satisfied there is a likelihood that relevant consumers would be misled or deceived as to the true origin of the Holder’s apparel or as to its having some connection with the Opponent, rather than mere confusion or simply being caused to wonder as is the case with s 60 of the Act. More is thus required to establish a likelihood of misleading or deceptive conduct (or, similarly, conduct amounting to passing off at common law) than is the case with trade marks likely to deceive or cause confusion under s 60.[14]

   [14] See for example Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 1A IPR 684 per Gibbs CJ at 688.

5. In the present matter I consider the reasoning set out earlier in rejecting the Opponent’s case based on s 60 of the Act is no less applicable to its claims that use of the Opposed Mark would have breached s 18 of the ACL or amounted to passing off.

6. The Opponent has accordingly not established its ground of opposition under s 42(b).

Section 62A

1. Section 62A of the Act is reproduced below:

Application made in bad faith

The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

1. The ground based on s 62A is indicated in the SGP as follows:

   Application made in bad faith –s 62A

   The Opponent has been continuously using its PLEASE Logo trade mark worldwide since 1993 and in Australia since at least 2001 in respect of the same Class 25 goods as those covered by the [Opposed Mark].  The [Holder] would have been aware of the Opponent and its use of its PLEASE Logo trade mark in Australia prior to filing and has, therefore, acted in bad faith by filing a substantially identical, or deceptively similar, trade mark for the same goods as those covered, and used, by the Opponent.

2. While there are no submissions before me from the Opponent on this ground, I note that the scope of s 62A was discussed in some detail by Dodds-Streeton J of the Federal Court in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (“Fry”),[15] followed by Bennett J in DC Comics v Cheqout Pty Ltd.[16]  In Fry at [165] Dodds-Streeton J considered, inter alia, that:

   The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone.

   [15] (2012) 94 IPR 551.

   [16] (2013) 101 IPR 334.

3. While confirming the standard of proof required of an opponent to establish bad faith is on the balance of probabilities rather than beyond reasonable doubt, Dodds-Streeton J nevertheless also acknowledged in Fry at [145] that

   …the seriousness of an allegation of bad faith that “impugns the character of an individual or the collective character of a business…” requires correspondingly cogent evidence.

4. The Opponent’s case based on s 62A does not however rely on any direct evidence of unacceptable commercial behaviour by the Holder. It merely suggests, again without any supporting evidence, that the Holder “would have been aware of the Opponent and its use of its PLEASE Logo trade mark in Australia prior to filing…a substantially identical, or deceptively similar, trade mark for the same goods.” That said, even if there were evidence that the Holder knew of the Opponent’s mark this would be insufficient for me to infer bad faith, as is clear from Dodds-Streeton J’s ultimate determination in Fry.

5. I would only add that, as my finding on the Opponent’s s 44 ground indicates, I do not consider the Opposed Mark to be substantially identical with, or deceptively similar to, the PLEASE Logo in any event. The Opposed Mark is sufficiently different from the PLEASE Logo in my view as to render the Opponent’s claim of bad faith based on their alleged close similarity unsustainable.

6. I accordingly find that the Opponent has not established its ground based on s 62A of the Act.

Decision

1. Reg 17A.34N(1) of the Regulations provides:

   (1) 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 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.

2. I have found that none of the grounds relied on by the Opponent has been established and as the Registrar’s delegate in this matter I thus direct that protection of the Opposed Mark be extended to Australia one month from the date of this decision in respect of all of the goods listed in the IRDA.  If the Registrar has been served with a notice of appeal before that time, I direct that extension of protection shall not occur until the appeal has been decided or discontinued or, if this decision be successfully appealed, that the IRDA be dealt with as the Court sees fit.

Costs

1. In the event of success, Ms Whitby sought costs on the Holder’s behalf. As the successful party, the Holder is so entitled and I accordingly award costs against the Opponent as per Schedule 8 of the Regulations.

Michael Kirov
Hearing Officer
Oppositions and Hearings
2 May 2018