Internet Services Australia 1 Pty Limited

[2022] ATMO 84

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2081999 (classes 14, 18, 25) – COMMUNE – in the name of Internet Services Australia 1 Pty Limited

Delegate:	Nicholas Barbey
Representation:	Applicant: Bird & Bird
Decision:	2022 ATMO 84 Trade Marks Act 1995 (Cth) – section 33 proceeding – section 44 considered – trade mark deceptively similar to earlier registered trade mark – no evidence of use filed – amendment to specification – trade mark application accepted.

Background

1. On 16 April 2020, Internet Services Australia 1 Pty Limited (‘Applicant’) filed an application to register the following trade mark:

   Trade Mark:               COMMUNE   (‘Trade Mark’)

   Application no.:         2081999

   Priority Date:             16 April 2020

   Specification:             Class 14: hat jewellery; imitation jewellery; jewellery; jewellery chain; jewellery made of non-precious metal; jewellery made of precious metals; jewellery made of semi-precious materials; precious stones; semi-precious stones; horological instruments; chronometric instruments; jewelry hat pins; watches

   Class 18: handbags; carrying bags (other than disposable carrier bags); briefcases; purses; leather wallets; luggage; luggage bags; imitation leather; leather; travelling sets (leatherware); umbrellas; walking sticks

   Class 25: apparel (clothing, footwear, headgear); belts (clothing); clothing; scarves; swimwear; sportswear; headwear

   (‘Goods’)

2. The application was examined as required by s 31 of the Trade Marks Act 1995 (Cth) (‘Act’) and a first examination report identifying the following grounds for rejection under s 44 of the Act was issued to the Applicant:

   Your trade mark closely resembles the earlier trade marks because the main and most memorable feature in each trade mark is the word COMMUNE. I note the additional material in the earlier trade marks being the descriptive word element LUX in each of the earlier trade marks and the additional graphic elements in trade mark 2049473. These are insufficient to prevent confusion in the marketplace because the predominant element in each trade mark remains the word COMMUNE.

   Consumers who are familiar with the earlier trade marks are likey [sic] to infer that your goods arise from the same or a related trade source as those claimed by the earlier trade marks.

   AND

   The goods are similar because your broad claims for clothing in Class 25 are similar to equally broad claims in the same Class claimed by the earlier trade marks.

3. Relevant details of the earlier trade marks (together ‘Cited Marks’) are reproduced below:

   Trade Mark:               LUX COMMUNE     (‘Word Mark’)

   Application no.:         2049473

   Owner:  Emily Cunich

   Priority Date:             11 November 2019

   Specification:             Class 25: canvas shoes; dress shoes; esparto shoes or sandals; flat shoes; leather shoes; shoes; shoes for casual wear; shoes for leisurewear; slip-on shoes; apparel (clothing, footwear, headgear); clothing; women's clothing; footwear for women

   Trade Mark:  (‘Device Mark’)

   Application no.:         2049474

   Owner:  Emily Cunich

   Priority Date:             11 November 2019

   Specification:             Class 25: canvas shoes; dress shoes; esparto shoes or sandals; flat shoes; leather shoes; shoes; shoes for casual wear; shoes for leisurewear; slip-on shoes; apparel (clothing, footwear, headgear); clothing; women's clothing; footwear for women

4. The Applicant responded with submissions asserting that the Trade Mark was not substantially identical with, or deceptively similar to, either of the Cited Marks. On this basis, it submitted that the grounds for rejection should be withdrawn. The examiner was unpersuaded and, notwithstanding a further round of submissions from the Applicant, the grounds for rejection were maintained. The third examination report invited the Applicant to amend its application by deleting class 25 or to supply evidence of use of the Trade Mark. This invitation was declined and instead the Applicant exercised its right to be heard.

5. A hearing was scheduled and the Applicant was given the opportunity to file additional submissions and/or evidence. Written submissions (‘Submissions’) were filed and, as a delegate of the Registrar of Trade Marks, I heard this matter by video conference on 21 February 2022. Lynne Lewis of Bird & Bird presented oral submissions on the Applicant’s behalf.

6. At the outset, I note that the grounds for rejection must be considered afresh and s 33 of the Act embodies a presumption of registrability which provides that the Registrar must accept an application for registration, unless satisfied that there are grounds under the Act for rejecting it or the application has not been made in accordance with the Act.

   Section 44

7. Section 44 of the Act relevantly provides:

   Identical etc. trade marks

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

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

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

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

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

   …

   (3) If the Registrar in either case is satisfied:

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

   (b) 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.

   ...

   (4) 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:

   (a) 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

   (b) 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.

8. The Cited Marks contain essentially identical elements apart from the rope border depicted in the Device Mark. The following discussion will therefore undertake a comparison of the Word Mark in relation to the Trade Mark. If the Word Mark is determined not to be at least deceptively similar to the Trade Mark, it stands to reason that the same result will arise in respect of the Device Mark given it is more dissimilar to the Trade Mark due to its additional point of differentiation.

9. Section 44 of the Act constitutes a valid ground for rejection if the Word Mark satisfies the following requirements:

   (i)it is in the name of a person other than the Applicant;

   (ii)it has a priority date which is earlier than the Trade Mark’s priority date;

   (iii)it is in respect of similar goods and/or closely related services to the Goods; and

   (iv)it is substantially identical with, or deceptively similar to, the Trade Mark.

10. The Word Mark is registered by another person and it has a priority date of 11 November 2019 which is earlier than 16 April 2020. It has achieved registration for a broad range of class 25 goods including ‘apparel (clothing, footwear, headgear)’ which are plainly similar to all the class 25 goods claimed by the Trade Mark.[1] Requirements (i), (ii) and (iii) above are satisfied and this was conceded in the Submissions.[2]

    [1] I do not consider the goods claimed in classes 14 and 18 of the application to be similar to the class 25 goods. These goods generally do not have the same nature and use as the class 25 goods for which the Word Mark is registered.

    [2] Submissions, [10]–[11].

11. Accordingly, this matter turns on satisfying requirement (iv) as detailed at [9] of this decision. The long-established test for ‘substantial identity’ was articulated by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):

    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 features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[3]

    [3] [1963] HCA 66, [12] (‘Shell’).

12. In Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd, the Full Court of the Federal Court clarified that:

    A side-by-side comparison of two marks is a studied comparison. It highlights the differences between the marks just as much as it shows their sameness, in order to reach a conclusion as to whether the two marks are, in fact, substantially identical.[4]

    [4] [2020] FCAFC 186, [98] (Middleton, Yates and Lee JJ).

13. Reproduced below are the trade marks:

Trade Mark Word Mark

1. A side by side comparison reveals a clear difference. The Trade Mark is constituted by the solitary word element ‘COMMUNE’ whereas the Word Mark is comprised of two word elements – namely, ‘LUX’ and ‘COMMUNE’. Whilst the additional word ‘LUX’ retains a degree of descriptiveness in the context of apparel, it is not a wholly descriptive element in the same ilk as, for example, shirt for clothing or radiology for radiological services. In my assessment, the inclusion of ‘LUX’ contributes to a total impression of dissimilarity emerging from a studied comparison of the trade marks and provides a sufficient basis to conclude that the trade marks are not substantially identical.

2. Turning to the question of deceptive similarity, 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 assessment of deceptive similarity was considered in Shell wherein Windeyer J said:

   The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[5]

   [5] Shell (n 3) [13].

3. More recently, the Full Court of the Federal Court in Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel explained:

   The distinction between consideration of whether one mark is deceptively similar to another, rather than substantially identical, lies in the point of emphasis on the impression or recollection which is carried away and retained of the registered mark. In this context, allowance must be made for the human frailty of imperfect recollection.[6]

   [6] [2021] FCAFC 8, [27] (McKerracher, Gleeson and Burley JJ). See also Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235, [64] (Nicholas, Yates and Burley JJ).

4. Several lines of argument were advanced as to why the Trade Mark was not deceptively similar to the Word Mark. The Submissions placed emphasis on the depiction of the Trade Mark with attention being drawn to the ‘bolded lettering depicted in uniform capitalised letters’ which is ‘evocative of a rectangular shape’.[7] At the hearing, Ms Lewis submitted that the minimalistic font is ‘no frills’ and the Trade Mark conveys a masculine impression which contrasts the alleged feminine impression left by the Cited Marks.

   [7] Submissions, [25].

5. With respect to ‘LUX’, the Submissions contend that it is the prominent feature of the Word Mark because of its positioning as the first element.[8] In the Applicant’s view, emphasis would fall on ‘LUX’ when the Trade Mark was pronounced by the ordinary consumer. Reference was made to C A Henschke & Co v Rosemount Estates Pty Ltd wherein it was observed that ‘particular attention ought be paid to the first part of a name for generally the first word or syllable provides the most important means of distinguishing marks’.[9] In this context, the Applicant reiterated that ‘LUX’ is essential to the identity of the Word Mark and sufficiently distinguishes the respective trade marks.

   [8] Ibid [26].

   [9] [1999] FCA 1561, [35] (Finn J).

6. Evidently, the force of the Applicant’s case hinges on what weight ‘LUX’ should be given within the context of the Word Mark as a whole. It is, after all, the only material difference between the trade marks. The Submissions state that ‘LUX’ refers to a unit of luminance[10] but subsequently accepted that it is ‘sometimes confused with the word “luxe” meaning expensive and of high quality’.[11] As a general principle, descriptive elements of a trade mark should be afforded less weight for the purposes of comparison.[12] In the context of apparel, it is unlikely that ordinary consumers would perceive ‘LUX’ as denoting a unit of luminance. Rather, it is more probable that they would understand ‘LUX’ as indicating that the goods are luxurious or better quality. As such, ‘LUX’ retains a descriptive quality in relation to the class 25 goods. In contrast, ‘COMMUNE’ may be defined as ‘any community of like-minded people choosing to live independently of the state’.[13] It does not describe any characteristic or quality of the class 25 goods and thus ‘COMMUNE’ is inherently adapted to distinguish same.

   [10] See Macquarie Dictionary (online at 20 April 2022) ‘lux’ (def 1) may be defined as ‘the derived SI unit of illuminance, defined as an illumination of one lumen per square metre. Symbol: lx’.

   [11] Submissions, [27] which also state ‘In the context of the goods in class 25 claimed by the [Cited Marks], it is likely that the word “Lux” is associated with opulence and luxury’.

   [12] Re Broadhead's Application (1950) 67 RPC 209, 215 (Evershed MR).

   [13] See Macquarie Dictionary (online at 20 April 2022) ‘commune’ (def 4).

7. Bearing the above in mind, the Trade Mark is deceptively similar to the Word Mark for the following reasons. Visually, the trade marks share obvious similarities insofar as ‘COMMUNE’ comprises the entirety of the Trade Mark and it forms the significant element of the Word Mark. The Word Mark does not contain equally weighted elements nor has its depiction accentuated one element over the other. Instead, ‘LUX’ and ‘COMMUNE’ are both presented in capitalised letters in the same font size and type. Whilst ‘LUX’ appears as the first element, it is plain that ‘COMMUNE’ forms the visually dominant element of the Word Mark by virtue of its seven letter length which is more than double that of ‘LUX’.

8. An aural comparison of the trade marks reveals further similarities. It is true that ‘LUX’ appears at the commencement of the Word Mark and, broadly speaking, ordinary consumers retain a propensity to slur the ending of words.[14] However, I do not accept that ‘LUX’ substantially dilutes the aural similarities which naturally arise from the shared element of ‘COMMUNE’ in each trade mark. This is particularly so given the Trade Mark is devoid of any additional element. ‘LUX’ is a monosyllabic word which does not overwhelm or disrupt how the second element of the Word Mark would be expressed. Contrary to the Applicant’s position, I do not consider the Word Mark lends itself to being shortened to ‘LUX’ solus especially given the descriptive quality of this element. In my view, ‘COMMUNE’ would still be recalled and articulated, albeit imperfectly, by ordinary consumers when referring to the Word Mark.   

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

9. The trade marks also share a degree of conceptual similarity. The Trade Mark can only be recalled as ‘COMMUNE’ and it is this idea which it conveys.[15] The addition of ‘LUX’ to ‘COMMUNE’ in the Word Mark does not combine to create a different overall meaning. The Applicant’s proposition that the Word Mark conveys the idea of ‘a gathering of people who are enlightened’ is tenuous at best.[16] Meanwhile, its alternative submission that the Word Mark conjures the idea of ‘a group of people who are associated with luxury and opulence’[17] does not substantially differ to the meaning of ‘COMMUNE’ which refers to a group of people associated with a common purpose. Put another way, ‘COMMUNE’ retains its identity within the Word Mark despite being preceded by ‘LUX’.

   [15] Per the definition as detailed at [19] of this decision.

   [16] See response to first examination report dated 21 August 2020, [12.2].

   [17] Ibid.

10. In assessing the likelihood of deception or confusion, all the surrounding circumstances must be considered including the environment in which the goods are offered together with the character of the prospective purchaser.[18] Apparel encompasses common everyday products such as clothing, footwear and headgear which are generally inexpensive and purchased by a wide cross section of the public. Indeed, it is common ground that purchasers are unlikely to scrutinise such products prior to purchase.[19] Naturally, this increases the likelihood for deception or confusion to occur. Likewise, it has been recognised that apparel is normally selected upon visual inspection rather than by verbal request.[20] Given the trade marks share a strong visual similarity, the potential for deception or confusion between the trade marks is further exacerbated. As such, the surrounding circumstances do not assist in diminishing the potential for deception or confusion between the trade marks.

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

    [19] See, eg, response to first examination report dated 21 August 2020, [21] wherein the response states ‘Whilst it is not generally thought that consumers of clothing, apparel and footwear engage in considered decision-making before purchasing a product’.

    [20] Taiwan Yamani Inc v Giorgio Armani SpA (1989) 17 IPR 92, 96.

11. Reference was also made to Internet Services Australia 1 Pty Ltd (‘ISA’)[21] wherein ‘            ’ was held not to be deceptively similar to ‘LOCAL LUXE’ in relation to class 25 goods.[22] In the Applicant’s view, ISA is analogous to the present matter and illustrates that the trade marks under consideration are sufficiently different. I do not agree and consider ISA can be distinguished. First, the allegedly common element in ISA involved two discrete English words (i.e.: ‘LOCAL’ and ‘LOCALE’) with different meanings and pronunciations.[23] The present matter concerns a common element which is identical. Second, the delegate in ISA found that the combination of ‘LOCAL’ and ‘LUXE’ created a different overall meaning that was ‘unlikely to be confused or associated’ with the word ‘LOCALE’ simpliciter.[24] Here, for the reasons outlined above, I do not consider the Word Mark conveys a substantially different overall meaning to the Trade Mark. It follows that ISA is not on all fours with the present matter.  

    [21] [2020] ATMO 193 (‘ISA’).

    [22] See response to second examination report dated 11 February 2021, [18].

    [23] ISA (n 21) [23]–[24].

    [24] Ibid [25].

12. In light of the above, I am satisfied that there is a real and tangible danger of confusion between the Trade Mark and the Word Mark. In my assessment, it is likely that ordinary consumers would, at the very least, entertain a reasonable doubt as to whether apparel sold under the Word Mark originated from the same source as apparel sold under the Trade Mark, or whether there was a commercial connection between the trade marks. This is particularly the case when the descriptive quality of ‘LUX’ and the imperfect recollection of a consumer are accounted for. The Applicant has not filed any evidence which would enable a finding of honest concurrent use or prior use under the Act.[25] Nor has my attention been drawn to any other circumstances under s 44(3)(b) of the Act which would make it proper to accept the application.

    [25] Act ss 44(3)(a), 44(4).

1. Accordingly, I am satisfied that a ground for rejection exists under s 44 of the Act in relation to the goods claimed in class 25 of the application.

   Decision

2. Section 33 of the Act provides:

   Application accepted or rejected
   (1)  The Registrar must, after the examination, accept the application unless he or she is satisfied that:

   (a)  the application has not been made in accordance with this Act; or

   (b)  there are grounds under this Act for rejecting it.

   Note: For this Act see section 6.           
   (2)  The Registrar may accept the application subject to conditions or limitations.
   Note: For limitations see section 6.
   (3)  If the Registrar is satisfied that:

   (a)  the application has not been made in accordance with this Act; or

   (b)  there are grounds under this Act for rejecting it;

   the Registrar must reject the application.

   (4)     The Registrar may not reject an application without giving the applicant an opportunity of being heard.
   Note: For applicant see section 6.

3. I am satisfied on the balance of probabilities that there is a ground for rejecting the application to register the Trade Mark under s 44 of the Act.

4. On 4 May 2022, I informed the Applicant’s representative that it was my intention to reject the application unless class 25 was deleted from the application.

5. On 23 May 2022, the Applicant agreed to remove the class 25 claims from the application. The Goods have been amended.

6. Accordingly, I accept for possible registration trade mark application number 2081999.

   Nicholas Barbey
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   24 May 2022