Intercast Europe Srl v Next Holdings Limited

[2018] ATMO 1

TRADE MARKS ACT 1995

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

Re:Opposition by Intercast Europe Srl. to registration of trade mark application 1325398 (9, 14, 18, 25, 35) - NEXT - filed in the name of Next Holdings Limited

Delegate:

Nicholas Smith

Decision on the Written Record

Decision:

2018 ATMO 1

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 44, 60 and 62A considered – none established – trade mark to proceed to registration

Background

1.  This is an opposition brought by Intercast Europe Srl. (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Next Holdings Limited (‘Applicant’). 

Application Number:	1325398
Filing Date:	13 October 2009
Goods and Services:	Class 9: Nautical, surveying, photographic, cinematographic, weighing, measuring, signaling, checking (supervision), and life-saving apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; computers; fire-extinguishing apparatus Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery Class 25: Clothing, footwear, headgear Class 35: Retail services, including retail services offered via a general merchandising and clothing store, mail order catalogue, online, via television channel, via mobile phone and by direct marketing, all connected with the sale of clothing, headgear and footwear, jewellery, watches, fashion accessories, household articles, towels, bedding, textiles, furniture, lighting apparatus, toys, cosmetics, non-medicated toilet preparations, carrying cases, leather goods, handbags, sports bags, travel bags, shopping bags, toiletry bags, messenger bags, carrier bags, document bags and children's bags, kitchenware, paints, wallpaper, wall stickers and borders, pictures, picture frames, cameras; the provision of information and advice in relation to retail services relating to the aforesaid goods; business management consultancy including giving assistance and advice in the management of retail stores in the field of the aforesaid goods (‘Applicant’s Goods and Services’)
Trade Mark:	NEXT	(‘Trade Mark’)

2.  Following a prolonged examination process, including multiple amendments of the Applicant’s Goods and Services and various deferments, the application’s acceptance for possible registration was advertised on 24 December 2015 in the Australian Official Journal of Trade Marks.  The Opponent filed a Notice of Intention to Oppose on 24 February 2016.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 24 March 2016. The SGP raised grounds of opposition under ss 42(b), 44, 60 and 62A of the Act[1].  The Applicant filed a Notice of Intention to Defend on 5 May 2016.   

[1] As noted later in the decision, the Opponent does not press the s 42(b) ground of opposition.

3.  On 6 October 2016 the Applicant filed an amendment to the Applicant’s Goods and Services, removing some goods and services from the specification.  On 24 April 2017, the Applicant, previous known as Next Group PLC, filed a notification that it had changed its name to Next Holdings Limited.  On 17 August 2017, the Applicant sought a minor amendment to the Applicant’s Goods and Services to correct a typographical error.

Evidence and Submissions

4.  The Opponent filed Evidence in Support of its opposition (‘EIS’) on 29 August 2016.  This evidence consists of a declaration made on 25 August 2016 by Claude Joulot, Vice President Performance Sun Plano Lenses for Essilor Group and Proxy for Essilor Italia S.p.A., with Exhibits CJ-1 to CJ-15 (‘Joulot Declaration’) and a declaration made on 24 August 2016 by Jennifer Ann Mackie, Principal of Pizzeys Patent and Trade Mark Attorneys, the representatives of the Opponent, with Exhibits JAM-1 to JAM-3 (‘Mackie 1’). 

5.  The Applicant filed Evidence in Answer (‘EIA’) on 5 December 2016.  This evidence consists of a declaration made on 2 December 2016 by Sarah Louise Waterland, Company Solicitor of Next Retail Limited, a wholly owned subsidiary of the Applicant, with Annexures SLW-1 to SLW-22 (‘Waterland Declaration’). 

6.  The Opponent filed Evidence in Reply (‘EIR’) on 8 February 2017.  This evidence consists of a declaration made on 8 February 2017 by Jennifer Ann Mackie (‘Mackie 2’).

7.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  Neither party chose to avail themselves of these opportunities at that time.  By letter issuing from IP Australia on 7 April 2017 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon.  The Opponent filed written submissions on 8 May 2017 (‘Opponent’s Submissions’) and the Applicant filed written submissions on 1 June 2017 (‘Applicant’s Submissions’). 

8. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide on the basis of the written record, comprised of the materials mentioned in the preceding paragraphs:

(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.

The Opponent

9.  The Opponent is a company based in Italy, founded in 1975 engaged in the production, supply and marketing of organic lenses and optical filters to protect and improve vision.  The Opponent was acquired in 2014 by Essilor International, part of the Essilor Group, a French optical eyewear company.  At the relevant date the Opponent was the owner of the trade mark listed in the table below (‘Opponent’s Trade Mark’), although on 2 March 2016 this mark was subsequently assigned to Essilor Italia S.p.A.  The goods for which the Opponent’s Trade Mark is registered are collectively referred to as the (‘Opponent’s Goods’). 

Number	Trade Mark	Priority Date	Goods and Services
955679	19 Sep 2002	Class 9: Lenses for spectacles and lenses for sunglasses

1. The Joulot Declaration contains the following claims/statements:

   ·     As at 2006, shortly prior to the relevant date, the Opponent was the world’s largest manufacture of hard resin sun lenses and supplied products for fashion and performance eyewear to leading sunglass companies worldwide through its manufacturing and distribution units in Italy, Thailand and Hong Kong.

   ·     In 2001, PPG Industries, the then owner of the Opponent, developed a material known as Trivex for use in eyewear lenses.  From 2002 the Opponent developed and marketed lenses composed of the Trivex material under the Opponent’s Trade Mark and a word mark consisting of ‘NXT’ (the ‘NXT Mark’).  These marks are collectively referred to as the (‘NXT Marks’).

   ·     The NXT Marks are incorporated into eyewear products made by third party eyewear companies feature lenses made by the Opponent.  They are displayed on authenticity certificates that accompany glasses, the packaging for the glasses and in some case as a sticker on the glasses.  

   ·     Prior to the filing date there were numerous references to the NXT Marks on various consumer websites in Europe.  Prior to the filing date there were websites offering eyewear products displaying the NXT Marks for sale in Australia.  As a result of the unique and desirable qualities of the lenses and their high standard the NXT Marks have become well known around the world and are considered with high regard within the sports and fashion industries as well as within the protective forces products industry.

   ·     The Applicant trades within the fashion industry and the Deponent considers it very unlikely that it was unaware of the NXT Marks at the time it sought to register the Trade Mark.

2. Makie 1 contains the following claims/statements:

   ·     On 24 August 2016 the Deponent visited the website of the Applicant at She did a search using the NXT Mark and was directed to products sold under the Trade Mark.

3. Makie 2 contains the following claims/statements:

   ·     The Deponent, despite having frequently travelled internationally and being in London during the 2012 Olympics, was not aware of the Trade Mark until these proceedings.

The Applicant

1. The Applicant is a company based in the United Kingdom, originally known as J Hepworth & Son but then changed its name to Next Group PLC in 1986.   

2. The Waterland Declaration contains the following claims/statements set out below.  I note that much of the Declaration relates to information regarding the Applicant that post-dated the relevant date and hence is of limited relevance to my decision.  To the extent that such information is not relevant I have not summarised it below.

   ·     The Applicant and its related entities first used the Trade Mark for a retail concept trading in womenswear in 1982.  By the end of 1982 there were over 70 NEXT stores in the United Kingdom and by the end of 1984 a further 50 stores previously selling menswear under the ‘J Hepworth & Sons’ names had been converted to NEXT menswear stores.  The Applicant continued to expand its business under the Trade Mark and in 1988 launched a detailed catalogue of clothing under the Trade Mark, first in magazine form, and from 1999 online at its website at At the relevant date the Applicant offered mens, womens and childrens wear as well as flowers, fashion and homewear under the Trade Mark.

   ·     The Trade Mark has been used continuously internationally since the 1980s with clothing bearing the Trade Mark having been been manufactured in China, Taiwan, Indonesia and Hong Kong since 1985.

   ·     The Applicant has used the Trade Mark on retailing services in Australia since at least 1999 and for clothing items since at least 2010.

   ·     The Applicant has engaged in significant international promotion of the Trade Mark through brochures, posters, magazines, publications, press releases, news articles, digital media and through its website which Australians travelling overseas would have been exposed to. 

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 60 and 62A however in its submissions it indicated that it would not be pursuing the s42(b) ground of opposition. To successfully oppose the application the Opponent needs to establish at least one of the remaining 3 grounds.

2. The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined is 13 October 2009 (‘relevant date’), being the filing date of the application in Australia (except in circumstances, not present here in which a different priority date is provided for in the Act).[4]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

Discussion

Section 44

1. The relevant provisions of the Act with respect to the ground pursuant to s 44 are reproduced below:

Section 44 - 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)it 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.

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

   (a)it is substantially identical with, or deceptively similar to:

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

   (ii)a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1: For deceptively similar see section 10.

Note 2: For similar services see subsection 14(2).

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.

1. If the Registrar in either case is satisfied:

   (c)that there has been honest concurrent use of the 2 trade marks; or

   (d)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

2. If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (e)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)              the similar goods or closely related services; or

   (ii)             the similar services or closely related goods; and

   (f)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.

   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   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.

3. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods/services, and/or goods/services which are closely related to, the Applicant’s Goods and Services (‘the third requirement’).

4. In the event that each of these requirements are satisfied by the Opponent it may be possible for the Registrar to accept the application if the Registrar is satisfied that there has been honest concurrent use, other circumstances or that the Applicant has continuously used the trade mark beginning before the priority date of the Opponent’s relied upon mark, pursuant to ss 44(3) and s44(4) of the Act.

5. The Opponent has particularised the ground of opposition in the SGP by reference to trade marks with the registration numbers 655982, 955679, 1122839, 1169987 and 1288269.  Trade Mark 1169987 has been removed from the Register so I do not need to consider this mark.  Details of the remaining marks (the ‘s44 Marks’), each of which has an earlier priority date than the Trade Mark, hence satisfying the first requirement, are set out in the table below

Number	Trade Mark	Priority Date	Goods and Services
655982	16 Mar 1995	Class 9: Eyewear in this class; optical instruments and apparatus; lenses; spectacles and sunglasses; frames for spectacles and sunglasses
955679	19 Sep 2002	Class 9: Lenses for spectacles and lenses for sunglasses
1122839	10 Jul 2006	Class 9: Telecommunications and communications equipment, apparatus and systems; telephone cards, debit and credit cards, machine readable apparatus, such as telephone and calling cards, and apparatus which include integrated circuits, magnetic strips and memory chips; telephone equipment, apparatus and systems; facsimile equipment, apparatus and systems; computer equipment, apparatus and systems; computer hardware; computer software; computer peripheral devices; modems; transmission, receiving and storage equipment, apparatus and systems; publications in electronic form supplied on-line from databases or from facilities provided on the Internet (including web sites); publications in electronic format; apparatus and instruments for recording, transmission, reception, processing, retrieval, reproduction, manipulation, analysis, display and print out of sound, images and/or data; CD-ROMs; discs and tapes; video and audio equipment, apparatus and systems; all associated parts, accessories and fittings in this class Class 38: Telecommunication and communication services; telecommunication of information (including web pages), computer programs and any other data; local, long distance and international voice, text, facsimile, video and data telecommunication services; television broadcasting including pay, free to air and cable; broadcasting services; data casting services; telecommunication services for the collection, transmission, processing and storage of messages and data; telecommunication services to automate outbound dialling functions; electronic mail services; voice mail and messaging services; SMS services; audio and video conferencing; provision of telecommunication access and links to computer databases and the Internet; rental of telecommunications apparatus, equipment and systems; provision of telecommunications networks; telecommunications information services; providing information services concerning all of the foregoing; transmission of information on a wide range of topics, including on-line transmission; provision of telecommunications networks; telecommunications consultancy; providing access time to computer databases and the Internet; Internet service provider services; providing access to and leasing access time to the Internet; providing access to computer databases Class 42:Research services; computer programming services; leasing access time to computer databases; computer rental; design, drawing and commission writing all for the compilation of web pages on the Internet; design and implementation of IT solutions; design of telecommunications networks; network outsourcing, being the technical management and operation of networks for others; providing of information services on all of the foregoing; computer hardware and software consultancy services; provision of web hosting services; maintenance of computer software (‘Telstra Goods and Services’)
1288269	6 Mar 2009	As above

Similar goods and similar services

1. Section 14 of the Act relevantly provides:

   14Definition of similar goods and similar services

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

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

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

   (2)For the purposes of this Act, services are similar to other services:

   (a)if they are the same as the other services; or

   (b)if they are of the same description as that of the other services.

2. McCormick & Company Inc v McCormick summarises the legal principles applicable when determining if the goods and services for which the s44 Marks are registered are goods (and services) of the same description as the Applicant’s Goods and Services as follows:

   Whether the relevant goods are of the same description is essentially a question of fact.

   The authorities establish that there are three principal factors to be considered in this regard.  They are:  (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold.  As to the last-mentioned matter, it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade:  see In Re Jellinek’s Application (1946) 63 RPC 59 at 70-72; In Re John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 (“Crowther’s Application”) at 372; In Re Frank George Whiting’s Application (1952) 69 RPC 219 at 221; and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 94. As the High Court stated in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 606-607:

   The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive.  Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods:  see In re The Australian Wine Importers Ltd (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84, at p 90 per Latham CJ. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In re Jellinek’s Application (1946) 63 RPC 59. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case … the Assistant-Comptroller elaborated on the observations of Romer J in the following manner:  ‘In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade.  In the case of Jellinek’s Application …, Romer J classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold.  No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description”’:  Inre an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 when he said: ‘What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments’ (1945) 70 CLR, at p 94.

On the one hand, goods are not necessarily of the same description simply because they are sold for human consumption and in common trade channels: see, for example, In Re J & J Colman Ltd’s Application (1929) 46 RPC 126, where mustard and semolina were held not to be goods of the same description. See also G Wood, Son & Co Ltd v McVitty & Co Pty Ltd (1964) 34 AOJP 2601 and In Re Chan Li Chai Medical Factory (HK) Ltd’s Application (1990) 19 IPR 140 at 144. On the other hand, the expression “goods of the same description” is not construed restrictively and regard is paid to the commercial context in which the goods in question are bought and sold: see Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 546 and Dinning v New Balance Athletic Shoe Inc (1992) AIPC 38,719 at 38,725. [5] 

Closely related goods and closely related services

[5] [2000] FCA 1335 [17].

1. The recent case of Paypal, Inc v Braintree Communications Pty Ltd[6] summarises the legal principles applicable when determining if the goods services for which the Trade Mark is sought to be registered are closely related to the goods and services for which the s44 Marks are registered as follows:

   [6] [2017] ATMO 90.

   In Qantas Airways Ltd v Edwards[7] Yates J quoted from the judgment of French J in Registrar of Trade Marks v Woolworths Ltd[8]:

   [7] [2016] FCA 729 at [111].

   [8] (1999) 93 FCR 365; [1999] FCA 1020 at [37].

   ... The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”. ...

   Yates J continued:

   His Honour also said in this connection that “closely related” was of wider import than “similar”.

   Woolworths was a case arising under s 44(2) of the Act. Thus, the question was whether, in the case of a mark for services, there was conflict with a previously registered mark for “closely related goods”. His Honour gave (at [38]) the following illustrations where goods and services might be “closely related”:

   Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets. ...

   His Honour also made reference to Caterpillar Loader Hire (Holdings)Pty Ltd v Caterpillar Tractor Co (1983) 77 FLR 139; [1983] FCA 143 (Caterpillar) in which Lockhart J said (at 150):

   ... It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related. Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programs) on the other.

   Significantly, in Woolworths, French J (at [38]) also said that the range of relationships between goods and services which may support the designation “closely related” will be “limited by the requirement in s 44(2) that there be a substantial identity or deceptive similarity between the potentially conflicting marks which attach to them”. This observation might suggest that his Honour had in mind that, in a case arising under s 44 of the Act, the determination of whether the goods and services are “closely related” will be informed by the determination of whether the competing marks are, in fact, deceptively similar.

   However, at [38] his Honour continued by stating that “[t]he relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods” (emphasis added). It was in this context that his Honour gave the examples quoted at [113] above and referred to the examples given by Lockhart J in Caterpillar. This part of his Honour’s reasoning suggests that the question of whether goods and services are “closely related” is a discrete question within the injunction against registration provided by s 44 of the Act.

   This understanding is supported by the following passage in [39] of his Honour’s reasons:

   ... Apposite to the present case is the question whether a retailer of various classes of goods provides a service to customers which warrants the description of the goods for sale as “closely related goods” in respect of that service. The characterisation of the relationship between services and goods in this way is evaluative. The logic of s 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as “conceptually distinct” but accepted that one could not be addressed in isolation from the second: “The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive.” This approach is not greatly assisted by the language of s 10 which, like s 6(3) of the 1955 Act, defines deceptive similarity solely in terms of the degree of resemblance of the trade marks in question and whether that degree of resemblance is “likely” to deceive or cause confusion. But that definition must, in the context of s 44, be applied to the case of “closely related” goods and services.

   His Honour concluded at [40]:

   In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant’s marks would be likely to deceive or to cause confusion.

   The practical judgment to which his Honour referred in the last passage is, quite clearly, the judgment involved in determining whether the two marks are deceptively [similar]. The passage marks his Honour’s acceptance that the question of deceptive similarity between allegedly conflicting marks will be informed, in part, by the closeness of the relationship between the goods and services in respect of which the marks severally are, or are sought to be, registered. I do not accept that his Honour was there directing attention to the judgment involved in determining whether given goods and services are “closely related” as such. [9] 

   [9] [2017] ATMO 90, [28]-[29].

2. I fail to identify any of the Applicant’s Goods and Services that are similar or closely related to the goods for which trade marks 655982 and 955679 are registered, being eyewear products.  The Applicant’s Goods and Services are goods and services of a different nature for a different purpose and sold in different channels from the eyewear products for which trade marks 655982 and 955679 are registered. 

3. The Opponent has argued that the eyewear products for which trade marks 655982 and 955679 are registered are closely related to the retail services for which the Trade Mark is sought to be registered including retail in respect of fashion accessories.  In Woolworths Ltd v Registrar of Trade Marks[10] Wilcox J noted that while there may be a connection between retail services and a good that may be sold in that particular retail store, it is not of the same order of closeness as the examples cited by Lockhart J in Caterpillar, referred to above.  In order to establish that a retail service is closely related to a particular good it is necessary to establish that consumers expect that that particular good and their retail typically originate from the same source.  In the present case there is simply not a sufficiently close connection between eyewear products and the general retail services and retail services relating to fashion accessories for me to conclude that those services are closely related to the eyewear products for which trade marks 655982 and 955679 are registered.

   [10] 42 IPR 615, 624.

4. With respect to the Telstra Goods and Services, I find the following subset of the Applicant’s Goods and Services to be similar to certain goods registered in class 9 of the Telstra Goods and Services: apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; computers; (‘Similar Goods’).  The third requirement is thus satisfied for a subset of the Applicant’s Goods and Services in respect of trade marks 1122839 and 1288269 (the ‘Next G Marks’)

Substantially identical or deceptively similar

1. The Opponent does not press its claim that the Opponent’s Trade Marks are substantively identical to the Trade Mark.  It is therefore only necessary to consider whether the Trade Mark is deceptively similar to either of the Next G Marks.  The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

   Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[11]

   [11] Ibid [13].

2. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[12] at [49]; Australian Woollen Mills[13] at 658.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[14] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[15] at 594 – 595.

   Sixth, 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 the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[16]

   [12] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [13] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   [14] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

   [15] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

   [16] [2012] FCA 1022, [38]-[46].

3. The Trade Mark and the Next G Marks are set out below:

NEXT     

1. I do not find that the respective marks are deceptively similar.  While the Next G marks do contain the word ‘next’ in them, the strong ‘g’ device contains creates a significant visual difference which is immediate and striking.  The focus of the reader is on the ‘g’ device both visually and conceptually (with ‘next’ operating to refer to and modify the letter ‘g’).  While there is some aural similarity with the marks sharing the word ‘next’, the letter ‘g’, pronounced ‘gee’ is a distinct word and is unlikely to be slurred or merge into the word ‘next’.

2. I find that as a result of the significant visual and conceptual differences between the marks when considered as a whole, even allowing for imperfect recollection, it is in my view unlikely that the use of the Trade Mark will deceive or cause confusion because of any similarity it has to the Next G Marks.

3. I find that the Opponent has failed to establish the ground of opposition under s 44.

Section 60

1. Section 60 of the Act is reproduced below:

   Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)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.

2. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.[17]

   [17] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

3. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[18]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[19]

   [18] [2000] FCA 1335, [81].

   [19] (1992) 33 FCR 302, 343.

4. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[20]

   [20] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

5. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[21] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

   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 … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[22]

   [21] (2000) 50 IPR 1.

   [22] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

6. Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[23]

   [23] Mark Davison, Shanahan’s Australian Law of Trade Marks and Passing Off Online Westlaw AU, [50.2415] <

7. The Opponent has particularised the ground of opposition in the SGP in respect of each of the Opponent’s Trade Marks and then states: 

   Before the priority date of the Opposed Trade Mark the Opponent had established a reputation in Australia and in a number of countries overseas, including the United States and Europe, for the trade marks NXT and [the Opponent’s Trade Mark] which are associated with spectacle and sunglass lenses, goggles, eyewear and associated frames and cases. Because of the mentioned reputation, use of the Opposed Trade Mark in respect of the goods claimed would be likely to deceive or cause confusion.

8. As at the relevant date the Opponent had been using the NXT Marks internationally for approximately 7 years.  The Opponent has not provided any evidence of sales of goods bearing the NXT Marks, nor has it provided any evidence of revenue for those goods.  In particular the EIS does not indicate how many lenses were sold bearing the NXT Marks between 2002 and the relevant date and how many of the subsequent eyewear products were exported to and sold in Australia.

9. Much of the evidence of the Opponent as to the reputation of the NXT Marks and how they are used is either undated or postdates the relevant date. The marketing and promotional activities carried out by the Opponent using the NXT Marks are carried out almost entirely outside Australia and/or are not targeted at Australian consumers. While I accept the evidence that as of the relevant date the NXT Marks were held in some esteem internationally in the absence of any sales figures, consumer reputation or evidence of advertising spending in Australia there is simply insufficient evidence of the reputation of the NXT Marks in Australia to satisfy the requirement under s60(a) of the Act.

1. I am not satisfied that as at the relevant date either of the NXT Marks had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act.

Section 62A

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

   62A 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.

2. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

• persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

• persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

• persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

1. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on this section.  In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[24]:

   Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

   … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[25]

   [24] [2004] EWCA Civ 1028; [2005] FSR 10.

   [25] [2012] FCA 81, [147].

2. Her Honour continued later in the same decision:

   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. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

   Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[26]

   [26] Ibid [165]-[166].

3. The Opponent has particularised the ground of opposition in the SGP as follows: 

   The Applicant was aware at the time of filing the Opposed Application of the Opponent’s prior rights in its trade marks being or containing “e” logo in Australia and overseas.

   4.1. Before the priority date of the Opposed Trade Mark the Opponent had established a reputation in Australia and in a number of countries overseas, including the United States and Europe for the trade marks NXT and which are associated with spectacle and sunglass lenses, goggles, eyewear and associated frames and cases.

   4.2. The trade mark in the Opposed Trade Mark is one which is likely to be confused with the Opponent’s well known trade marks and is for goods and services which are likely to be considered to be related or associated with the Opponent’s goods in which it has a significant and established reputation.

   4.3. Due to the reputation established by the Opponent and the degree of similarity in the respective trade marks, the Applicant was more likely than not to have been aware of the existence and appearance of the Opponent’s trade marks at the time of filing the Opposed Application.

   4.4. Additionally prior to the filing date of the Opposed Trade Mark, the Opponent was involved in a trade mark dispute with the Applicant in another jurisdiction with respect to the same or similar trade marks. Accordingly the Applicant would have at the time of the filing of the Opposed Trade Mark known of the Opponent’s reputation and trade marks.

   4.5. The filing of a trade mark to exploit the reputation of another trader’s product indicates that the application was made in bad faith.

4. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[27] In the present case the allegations made by the Opponent in its particulars and submissions do not fall within the non-exhaustive examples set out in the Explanatory Memorandum referred to in paragraph 44 above. More relevantly, the EIA establishes that the Applicant has traded under the Trade Mark in the UK since the 1980s. While I accept the Opponent’s Submissions that the Applicant would have been aware of the Opponent at the relevant date, the proper characterisation of the Applicant’s conduct is that it applied to register a trade mark in Australia that it had used in the UK and online for a long time. In circumstances where the evidence in support of the s 62A ground of opposition is very limited and the Opponent bears the onus, I am not satisfied the Applicant’s conduct in filing the application was unscrupulous, underhanded or unconscientious in character. Consequently I find that the Opponent has failed to establish the ground of opposition under s 62A of the Act.

   [27] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26,[12].

Decision

1. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade Mark application no. 1325398 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

Nicholas Smith

Hearing Officer

Oppositions and Hearings

9 January 2018