Industria De Diseño Textil, S.A. v King Furniture Australia Pty Ltd
[2019] ATMO 162
•12 November 2019
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Industria De Diseño Textil, S.A. to registration of trade mark application number 1806396 (classes 20, 24 and 27) - ZAZA - in the name of King Furniture Australia Pty Ltd
Delegate: | Jock McDonagh |
Representation: | Opponent: Shauna Ross of Counsel, instructed by IP Solved, Attorneys Applicant: No appearance and no submissions |
Decision: | 2019 ATMO 162 Trade Marks Act 1995 (Cth) - Section 52 opposition: s 42, 44, 58 & 60 grounds of opposition pressed – section 60 ground established – registration refused |
Background
This is an opposition brought by Industria De Diseño Textil, S.A. (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark that is the subject of the application detailed below in the name of King Furniture Australia Pty Ltd (‘Applicant’):
Trade Mark: | ZAZA (‘Trade Mark’) |
Application Number: | 1806396 |
Filing Date: | 1.11.2016 |
Goods: | Class 20: sofas |
Following the advertisement on 23 March 2017 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 23 May 2017. The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 21 June 2017 raising grounds of opposition under ss 42(b), 43, 44, 58, 60, and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 28 July 2017. The parties then filed evidence as detailed further below.
I heard the matter in Canberra on 13 May 2019 as a delegate of the Registrar of Trade Marks. Shauna Ross of Counsel, instructed by IP Solved, Intellectual Property Advisors & Attorneys appeared by video link for the Opponent. The Applicant did not appear at the hearing, nor did it file any submissions.
Grounds of Opposition
The Opponent pressed the following grounds of opposition under the Act:
·Section 42(b): Use of the Trade Mark would be contrary to law;
·Section 44: The Trade Mark is substantially identical with or deceptively similar to a prior application or registration;
·Section 58: Applicant not owner of trade mark; and
·Section 60: The Trade Mark is similar to a trade mark that has acquired a reputation in Australia.
To succeed in its opposition the Opponent bears the onus of establishing at least one of these four grounds on the ‘balance of probabilities’.[1]
[1] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26], affirmed by the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].
The time at which the grounds of opposition must be established is the date of filing of the application for registration.[2]
[2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592, 595
Evidence
The following evidence was filed in the opposition:
| Declarant | Status | Date | Exhibits |
| Evidence in Support | |||
| Antonio Abril Abadin (‘first Abadin declaration’) | General Counsel and Secretary of Opponent | 27.10.17 | 1 to 21 |
| Evidence in Answer | |||
| Anna Carrab (‘Carrab declaration’) | Chief Executive Officer of Applicant | 8.02.18 | A and B |
| Joanne Christine Martin (‘Martin declaration’) | Trade Marks Attorney and partner of FB Rice Patent and Trade Mark attorneys | 8.02.18 | JCM-1 to JCM-5 |
| Evidence in Reply | |||
| Antonio Abril Abadin (‘second Abadin declaration’) | General Counsel and Secretary of Opponent | 13.04.18 | 1 to 11 |
The first Abadin declaration provides evidence of the establishment of the Opponent and its global activities, including in Australia.
Exhibit 1 to the first Abadin declaration provides the details of hundreds of trade mark registrations of ZARA and ZARA HOME worldwide, including 11 prior registrations in Australia based on the ZARA trade mark.
The first Abadin declaration provides that the Opponent was established in Spain in 1963, its activities predominantly being the production of women’s clothing. From 1975, the Opponent applied the trade mark ZARA with respect to the manufacture, supply and sale of clothing.
The declaration continues to explain that in 2003, the Opponent commenced offering goods and services under the ZARA HOME trade mark in respect of household products, furniture, homewares, bedding, tableware, home decorations and related goods and accessories.
According to the first Abadin declaration, the Opponent opened its first ZARA store in Sydney, which sold clothing, footwear, and a range of fashion accessories under the ZARA mark
The declaration continues to advise that in 2015 the Opponent the first household products, furniture homewares, bedding, tableware, home decorations and related goods and accessories.stores were opened in Australia, offering a range of household products, furniture (including sofas), homewares, bedding, tableware, home decorations and related goods and accessories under the ZARA HOME trade mark.
The first Abadin declaration states that as at 2017, the Opponent had 19 ZARA stores and three ZARA HOME stores in Australia.
The first Abadin declaration also states that there has been a worldwide dispute between the Opponent and the Applicant regarding the Trade Mark.
Other details in the declaration will be provided, as required, under the relevant ground of opposition.
In Evidence in Answer, the Carrab declaration deposes to the ZAZA being a sofa stocked and sold by the Applicant’s King Living stores, launched in Australia in June 2017. It deposes that about 220 units (at about $6,000 each) of the ZAZA have been sold in Australia since the launch.
The Carrab declaration states that the Opponent’s evidence does not disclose any use of ZARA or ZARA HOME in Australia in relation to furniture including sofas.
Annexures to the Carrab declaration show the ZAZA sofas in various brochures and magazine features.
The Martin declaration provides details of the results of various searches conducted by the Applicant, with accompanying analysis claiming that none of the results (including the Opponent’s registration 802819 ZARA in classes 20, 35 and 42) conflicted with the Trade Mark.
The Martin declaration also deposed to the declarant’s visit to the Opponent’s ZARA HOME store in the Pitt Street Mall, where the declarant did not observe any furniture of any kind for sale.
In the second Abadin declaration, the deponent exhibits details of refusals of the Applicant’s applications for the Trade Mark in New Zealand and China based on the Opponent’s prior registrations. This is not strictly in reply to the evidence in answer, nor specifically relevant to the grounds of opposition, so I do not intend to consider Exhibit 1.
However, further exhibits to the Abadin declaration cross-reference relevant invoices to depictions of various furniture goods, including sofas and plush chairs, being offered for sale in Australian ZARA HOME stores.
Section 60: Trade mark similar to trade mark that has acquired a reputation in Australia
Section 60 of the Act 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.
Note:For priority date see section 12.
It is not necessary to show under section 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion. I do note that there an element of similarity between ZAZA and ZARA, that could influence prospective consumers who retain an imperfect recollection of either mark.
Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick (2000) 51 IPR 102, by Kenny J at [81] – [82]:
What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.
Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?
Further, at [86] , Kenny J said:
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.
The Opponent’s evidence establishes that prior to its launch in Australia, the Opponent’s ZARA brand enjoyed a substantial international reputation for its various goods, including being listed in 2009 as one of the 100 most mentioned brands on Twitter,[3] and featured in the exhibited 2010, 2015, and 2016 Interbrand reports of most valued trade marks in the world.[4]
[3] Second Abadin declaration, Exhibit 4.
[4] First Abadin declaration, Exhibits 3 and 4.
The first Abadin declaration provides a narrative of a print and online media campaign leading up to the opening of ZARA and ZARA HOME stores in Sydney and Melbourne. This resulted in significant crowds of shoppers attending the opening.
Confidential exhibits to the first Abadin declaration evidence significantly high volumes of sales with reference to the ZARA trade mark. Both Abadin declarations provide evidence of substantial direct advertising, promotions, and online advertising of its goods, including furniture and homewares.
While the Opponent’s reputation overseas is not directly relevant to its reputation in the Australian market, it would be unrealistic to ignore the Opponent’s evidence of its global reach to scores of significant overseas markets. This is particularly so given the reach of electronic media. Many of the Opponent’s web pages available overseas also include links to the Australian stores and Australian prices for a wide range of furniture products, including sofas.
The likelihood of deception or confusion must be finite and not trivial[5], and there must be a “real tangible danger of its occurring”[6]. The test is whether a substantial number of people, judged in light of the size and nature of the market involved, will be deceived or confused.[7]
[5] Registrar ofTrade Marks v Woolworths Ltd (1999) 45 IPR 411, at 428.
[6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, at 597.
[7] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641
Confusion in the minds of the public might not always eventuate in mistaken purchase; however, as noted by the Full Federal Court in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd[8]:
A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.
[8] [1998] FCA 1704, citing Heerey J in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495, at 501 (citations omitted).
I am satisfied that because of the reputation of the Opponent’s ZARA and ZARA HOME trade marks in Australia, combined with the general similarity of those two trade marks with the Trade Mark, are likely to deceive or confuse prospective consumers that sofas bearing the Trade Mark come from or are otherwise connected with the Opponent..
Therefore, the opponent has established a ground of opposition under the provisions of s60. Having found in favour of the opponent in terms of s60 there is no need for me to discuss the other grounds set out in the SGP although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.
Decision
Section 55(1) of the Act applicable to this matter provides:
Unless the proceedings are discontinued or dismissed, the Registrar
must, at the end, decide:
(a) to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then
specified in the application;
having regard to the extent (if any) to which any ground on which the
application was opposed has been established.
Note: For limitations see section 6.
I have found the opposition to be successful on the ground raised pursuant to section 60 of the Act. I accordingly refuse to register trade mark application number 1806396.
Costs
It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Applicant under section 221 of the Act in the terms of Schedule 8 of the Trade Marks Regulations 1995 (Cth).
Jock McDonagh
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
12 November 2019
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