Intersport Limited v Nike International Limited

[1996] ATMO 64

TRADE MARKS ACT 1955
DECISION OF A DELEGATE OF THE REGISTRAR OF
TRADE MARKS, WITH REASONS

Re:Opposition by Nike International Ltd to the registration of trade mark application number 565862 in the name of Intersport Limited.

Background:
After examination, trade mark application 565862 was advertised by the Trade Marks Office as having been accepted for registration.  The applicant is Intersport Limited, which I will refer to simply as “the applicant” from this point.

The mark in question is: 

.

The applicant seeks to register that trade mark for “clothing, headgear and footwear”.

Registration of the application is opposed by Nike International Ltd (“the opponent”) on the ground of a conflict with its own registered trade mark:

As well as the outline form shown above, the opponent has also registered the trade mark in solid black, in conjunction with the word NIKE.  Both representatives accepted that the risk of conflict is highest when the opponent’s mark is rendered in outline form.  This is the manner in which the mark is shown in registrations 284352 and 355649.  In that form, the opponent’s trade mark is registered for goods which overlap or entirely encompass those specified by the applicant.  However, for the sake of completeness, I will also note the registrations of the solid black form, as per numbers 489050 and 489051, of which I reproduce the former:

The opposition process has followed the course set out in the regulations.  Both sides served evidence to support their positions and the opposition came on for hearing and decision by me, as a delegate of the Registrar of Trade Marks.

At the hearing, the opponent was represented by David Wilson, a patent attorney of the firm Shelston Waters.  The applicant was represented by its patent attorney, Claude Anese, of the firm of Cullen and Co.

Mr Wilson pressed an argument, made under s 33 of the Trade Marks Act 1955. I will say at this point that, as set down in the transitional provisions of Part 22 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to govern this opposition.  Accordingly, the provisions to which I will refer, below, are those of the 1955 act.

Section 33 provides, as far as is relevant:

33. (1) Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, of goods of the same description as those goods or of services that are closely related to those goods, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.

Mr Wilson also raised a second argument which might be of relevance if I found, under s 33, that the applicant’s and opponent’s marks were substantially identical. This argument strikes at the applicant’s entitlement to claim to be recorded as proprietor of the mark. However, while I will deal with the issue of substantial identity below, let me say now that I do not make such a finding. Thus, the applicant’s claim to ownership of its mark is not put at risk by the claim that the opponent has made earlier use of the same mark.

It was not in dispute that the opponent’s mark is well-known in the trade. However, that is irrelevant to s 33, with deals with the comparison of one mark and another in the ordinary circumstances of trade, on the basis of notional (or hypothetical) fair use by both applicant and opponent for the goods specified in the relevant application and registration.

As I have said, there is a complete overlap of the applicant’s and opponent’s goods. Thus, the matter can be tested, under s 33, by two questions, as follows. Are the marks substantially identical? If not, are they deceptively similar?

Substantially identical
Mr Wilson adopted the formulation set out in Shell Co of Australia v Esso Standard Oil, (1963) 109 CLR 407, as follows - per Windeyer J at p 414:

... (the two marks) 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

Mr Wilson argued that in the present case, where both marks were devices which could not readily be ascribed names, the matter was not a simple one.  With this I agree.  However, for all that it is important to look at the “total impression” of resemblance or otherwise, the test is still a side-by-side comparison.  Mr Wilson was able to describe the applicant’s mark as being the opponent’s “with a twist in it”.  It is just that twist, however, which defeats the opponent’s argument under this heading.

Deceptively similar
Mr Wilson relied on the opponent’s evidence in support to draw out some of the issues that are the background of this comparison.  In particular, he noted that it was common for trade marks to be used on articles worn by famous athletes, and for such use to be noted by the public, from photographs in the media or elsewhere.  The public, he argued, were aware of the trade marks displayed by athletes.  This was because, despite there being many items which sold on price alone, the market in footwear, particularly athletic footwear, put a great weight on image.  A significant portion of customers, in Mr Wilson’s view, would enter the market wanting to be associated with a particular brand simply on the basis of the image it presented from its association with a particular athlete.  Mr Wilson therefore laid great stress on some of the evidence which, he argued, tended to show that, when used on the sporting field, or when seen on television, the marks could be confused.

Mr Anese, for his part, argued that this was a remote possibility.  For all that promotion of the trade mark might occur on a sporting field, the promoter, to succeed, had a vested interest in making sure that the trade mark was also able to be seen clearly.  The trade marks in question would ordinarily be used, for buying, selling and promotion, in ways which allowed them to be seen with reasonable clarity.  He argued that, in any such normal circumstance, the overall differences would emerge.  This was consistent with the fact that, in the opponent’s evidence, there was only one anecdotal reference to any actual confusion.  This despite the fact that the applicant’s evidence shows that its own mark has been fairly widely used and promoted.  Here I refer to the declaration of Peter Milone, the applicant’s vice president.  Mr Milone notes that the applicant’s marks have coexisted in the U.S. market since 1991.  However, it is clear that, at least some of the time, both the applicant and the opponent have used the devices in question with word identifiers, LANZERA and NIKE respectively.  This would obviously reduce the number of instances of confusion.

The most relevant part of the opponent’s evidence consists of the declaration of Thomas Niebergall, the Assistant General Counsel and Assistant Secretary of the opponent.  Mr Wilson relied on one element of his evidence, to which I will turn in more detail.  This is simply a second-hand allegation that a nameless Nike employee, watching a soccer match from the stands, apparently saw the applicant’s mark and allegedly took it for the opponent’s.  At what time in the game this happened, and for how long the confusion lasted, is not said.  Quite obviously, from the other end of a soccer field, nearly any stripe or simple graphic could be mistaken for the opponent’s trade mark.  Such vague evidence, which Mr Anese dismissed as completely anecdotal, is in my view, unsatisfactory.  I can give it no weight at all.

There is also another exhibit relevant to s 33. Mr Niebergall refers to exhibit six of his declaration. This shows a photograph of two sports shoes. The shoes themselves are not in clear focus, though there is no apparent reason for this as both are resting on a paper or fabric background. Each shoe displays a white logo on the black background of the shoe itself. In one instance it is the solid version of the opponent’s trade mark that is displayed, on the other it is the applicant’s mark.

The distance involved is not great, but the shoes are probably about as far from the camera than they would be, at maximum, from interested buyers when on typical store displays, on shelves or on display stands.  Despite this, and despite the blurring, the two marks are, in my opinion, readily distinguishable.  At more considerable distances, as the applicant’s evidence asserts, any two logos can be confused.

I appreciate Mr Wilson’s argument that promotion of a trade mark does take place on the sporting field, at distances which may prevent marks from being clearly seen.  None the less, where this happens, the promoter will usually be more than keen to make up the deficit with publicity shots, television appearances and the like.  It seems to me that, if the marks displayed by athletes were not ordinarily seen and known, manufacturers would not be ready sponsors of those athletes in the first place.  It would surely be unusual for a buyer, knowledgeable enough to want to enter this image-conscious market, to rely on only a brief or distant view of the desired mark, as seen in motion, on the flying feet of a champion athlete.

As Mr Anese argued, stripes of various sorts are exceedingly common on clothing and on footwear in particular, and known to be common.  In a crowded field such as this, the marks in suit should be looked at narrowly.  This was so, Mr Anese argued, among the discerning buyers at the top end of the market and among those who bought more mundane products.

I think Mr Anese may have put too much weight on the care and attention that is normally placed on the buying of clothing, particularly footwear. While good fit may require care and attention, there is nothing to convince me that this care will flow over to the trade marks applied to the goods at the bottom of the market. In such a case, the trade mark may well be given no more weight than it would in the purchase of any other low-price consumer item. Neither the applicant nor the opponent make such items but, under s 33, I must consider the full spectrum of the market, not just the part or parts of it in which the parties presently operate. None the less, to the extent that promotion of trade marks by champion athletes is a factor, it is not one which tells against the applicant.

Both representatives made an analysis of coexisting trade marks, here and overseas.  I would give some weight to a decision in a comparable jurisdiction where it was clear that the issues had been fully argued.  However, that is not clear in this case and I will have to take the matter on its own merits.

To make a long matter short, let me say that it would not be impossible for the two marks to be confused.  However, the sort of mistakes and confusions urged by Mr Wilson are not an ordinary or a reasonably likely outcome.  When used with the ordinary - and they are sometimes quite ordinary - levels of attention applied to the buying of clothing, and of footwear in particular, I am satisfied that there is not a level of risk of confusion that would require me to refuse to register the application.

As both representatives agreed, the onus is on the applicant to negate any reasonable possibilities.  This it has done.  I therefore dismiss the opposition.  I direct that, in the absence of an appeal from this decision, the application proceed to registration.  In doing so, I award costs, in accord with the official scale, to the applicant.

T. Williams
Hearing Officer

16 December 1996