J. Choo Limited v Choo La La Pty Ltd

[2024] ATMO 116

TRADE MARKS ACT 1995

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

Re:Oppositions by J. Choo Limited to applications under regulation 17A.48C of the Trade Marks Regulations 1995 by Choo La La Pty Ltd for cessation of protection of Protected International Trade Mark number 1383508 (IR 1048272) CHOO in classes 14, 18 & 25, 1710940 (IR 1257825) CHOO in class 35, 1759615 (IR 1257825) CHOO in classes 18 & 25 and 1982345 (IR 1443377) CHOO (fig.) in classes 14, 18 & 25 – all in the name of J.Choo Limited

-and-

Opposition by J. Choo Limited to registration of trade mark application number 2184103 (class 25) – Choo La La – in the name of Choo La La Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Ben Fitzpatrick of Counsel instructed by Davies Collison Cave Pty Ltd

Applicant: Marcus Fleming of Counsel instructed by Richards & Evans Commercial Lawyers

Decision:

2024 ATMO 116

Trade Marks Act 1995 (Cth) – application under regulation 17A.48C – ss 92(4)(a) and (b) considered – use of the trade marks established for subset of goods – intention to use found in respect of registration 1982345 – discretion not exercised - trade marks to be removed for some goods and all of the registered services; and s 52 opposition to registration of trade mark – no grounds established – trade mark to proceed to registration

Background

1. This decision concerns an opposition by J. Choo Limited (‘Opponent’) under s 52 Trade Marks Act 1995 (Cth)[1] to registration of the trade mark which is the subject of application 2184103 in the name of Choo La La Pty Ltd (‘Applicant’) and the Opponent’s oppositions to the applications filed by the Applicant under s 92(4) to remove four of the Opponent’s registrations for CHOO in word or logo form.

   [1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) (‘Act’) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Regulations’).

   Background to Removal Applications

2. The Opponent is the registered holder in Australia of the following trade marks covering a range of clothing, footwear, headgear, leather goods and fashion accessories and the sale of such goods (‘Registered Goods and Services’):

Number (collectively ‘Registrations’)	Trade Mark (collectively ‘Trade Marks’)	Filing /Priority Date	Class[2]
1383508[3] (IR 1048272)	11 August 2010	14, 18 & 25
1710940 (IR 1257825)	18 December 2014	35
1759615 (IR 1257825)	(‘CHOO Word Mark/s’)	2 February 2016	18 & 25
1982345 (IR 1443377)	(‘CHOO Logo’)	8 October 2018 (‘Relevant Date’)	14, 18 & 25

[2] The specifications of goods and services are set out in Annexure A of this decision.

[3] This registration is subject to an endorsement that ‘Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied’.

1. On 29 March 2022, the Applicant filed applications under reg 17A.48C seeking the cessation of protection of the Trade Marks, pursuant to  reg 17A.48D, with respect to the grounds under ss 92(4)(a) and (b) in relation to all of the protected goods and services for the CHOO Word Marks and s 92(4)(a) for the CHOO Logo for all of the goods (collectively the ‘Removal Applications’).  

2. The Opponent opposed the Removal Applications filing Notices of Intention to Oppose on 3 June 2022 and Statements of Grounds and Particulars (‘SGPs’) on 1 July 2022.  The Applicant filed Notices of Intention to Defend the Removal Applications on 4 August 2022.

3. The parties then proceeded to file their evidence in accordance with the Regulations. The Opponent’s evidence in support (‘EIS’) of its oppositions to the Removal Applications was filed on 8 November 2022 followed by the Applicant’s evidence in answer (‘EIA’) on 10 February 2023. No evidence in reply was filed.

   Evidence in Removal Applications

4. The following evidence was filed in relation to the Removal Applications:

   EIS

   ·Declaration of Lindsay Clifford-Smith, Senior Director, eCommerce (APAC) and Retail Omnichannel (Australia and New Zealand) for the Opponent, made on 8 November 2022 with Exhibits LCS-1 to LCS-10 and Confidential Exhibits LCS-11 to LCS-13 (‘LCS’); and

   ·Declaration of Tony Victor Lolis, lawyer employed by Davies Collison Cave, made on 5 November 2022 with Exhibits TVL-1 and TVL-2.

   Exhibit TVL-1 comprises:

   ·Declaration of Tony Victor Lolis made on 5 August 2022 with Exhibit TVL-1 (‘Lolis’); and

   ·Declaration of Hannah Lucy Merritt, General Counsel and Company Secretary of the  Opponent, made on 4 August 2022 with Exhibits HLVM-1 to HLVM-24 (‘Merritt’).

   EIA

   ·Declaration of Isabelle Charlotte Tye, associate solicitor employed at Richards & Evans Commercial Lawyers, made on 10 February 2023 with Exhibits ICT-1 and ICT-2.
   
   

   The Exhibits consist of:

   • Exhibit ICT-1: Declaration of Mark Johnathon Cherrett, sole director of the Applicant, made on 10 November 2022 with Annexures MJC-1 to MJC-8 (‘Cherrett’).
     
     
   • Exhibit ICT-2: Declaration of Isabelle Charlotte Tye made on 10 November 2022 with Annexures ICT-1 to ICT-4 (‘Tye’).

   Background to the opposition to application 2184103

5. The Applicant is the owner of the application detailed below (‘Application’) in the name of Choo La La Pty Ltd (‘Applicant’):

   
   
   

Number	Trade Mark	Filing/Priority Date	Specification
2184103	Choo La La (‘Applicant’s Mark’)	16 June 2021	Class 25: Jackets (clothing); Dance clothing; Bath robes; T-shirts; Shorts (‘Applicant’s Goods’)

1. Following the advertisement of acceptance of the Application, the Opponent filed a Notice of Intention to Oppose registration of the Choo La La mark on 17 January 2022 followed by its Statement of Grounds and Particulars on 17 February 2022.  The Applicant filed a Notice of Intention to Defend the opposition on 3 May 2022.

2. The parties then proceeded to file their evidence in accordance with the Regulations. The Opponent’s Evidence in Support (‘EIS’) was filed on 5 August 2022, followed by the Applicant’s Evidence in Answer (‘EIA’) on 10 November 2022. The Opponent filed Evidence in Reply (‘EIR’) on 25 January 2023.

   Evidence in opposition to application 2184103

3. The evidence filed in the opposition to application 2184103 and the oppositions to the Removal Applications is essentially the same.

4. As EIS, the Opponent filed the Merritt and Lolis declarations.

5. As EIA, the Applicant filed the Cherrett and Tye Declarations.

6. As EIR, the Opponent filed a Declaration of Tony Victor Lolis, lawyer employed by Davies Collison Cave, made on 25 January 2023 with Exhibit TVL-1 being the LCS declaration.  The Applicant objects to the filing of LCS on the basis that the evidence is not in reply to its EIA.  In general, the opportunity to file evidence in reply is not an opening for an opponent to file evidence that should have properly been filed as evidence in support.  It is accepted that the LCS declaration was not correctly filed as evidence in reply; however, LCS was filed as evidence in support of the oppositions to the Removal Applications and much of LCS confirms the contents of Merritt.  Further, I do not consider that the Applicant is significantly disadvantaged by the filing of the LCS Declaration as EIR in this matter.  For these reasons, it is my intention to take the LCS declaration into account here as permitted by reg 21.15(4).

   Request to be heard and hearing

7. Once the time for filing evidence had ended in each proceeding, the parties were given the opportunity to be heard. Both parties requested an oral hearing and I heard these matters as a delegate of the Registrar of Trade Marks on 6 May 2024.  Prior to the hearing, the parties filed a written summary of their submissions.  At the hearing, Ben Fitzpatrick of Counsel instructed by Tony Lolis of Davies Collison Cave made oral submissions on behalf of the Opponent and Marcus Fleming of Counsel instructed by Greg Tye of Richards & Evans Commercial Lawyers (observed by Cartia Farmer of Richards & Evans Commercial Lawyers, and Mark and Melanie Cherrett of the Applicant) made submissions for the Applicant.  I make this decision based on the aforementioned materials and oral and written submissions of the parties.

   Summary of evidence

   Opponent’s evidence

8. The Opponent is a luxury fashion brand which first adopted the mark JIMMY CHOO, being the name of one of the Opponent’s founders, for luxury shoes in 1996.  In 2003, use of JIMMY CHOO expanded to bags, then other leather goods in 2004 and from 2009 to fashion accessories such as sunglasses, scarves and jewellery.  In 2011, perfume and beauty products were added, and a men’s range was launched which now includes shoes, leather goods, sunglasses and cosmetics.  More recently, pet collars have been offered under the mark JIMMY CHOO.

9. The Opponent opened its first JIMMY CHOO store in London in 1996, expanded internationally in 1998 and now has over 200 JIMMY CHOO stores across 44 countries and territories particularly in fashion capitals such as London, Los Angeles (Beverley Hills), Paris, Milan, Hong Kong, Tokyo and Sydney.  In Australia, the Opponent opened its Sydney store at the MLC Centre in 2008, at Chadstone shopping centre in 2009 and at Bondi Junction Westfield in 2010.  The Opponent’s goods are also sold through leading department stores and retailers in Australia and overseas such as Saks Fifth Avenue in New York and David Jones in Australia.  In addition, the Opponent’s website at (‘Opponent’s Website’) has been accessible since 2006 and has an Australian specific section which offers the Opponent’s goods for sale in Australian dollars.  Confidential sales figures for goods sold in Australia are provided in Merritt.

10. In 2014, the Opponent listed on the London Stock Exchange with an initial equity value of £546 million.  The Opponent was later acquired by Capri Holdings Limited, a global fashion luxury group listed on the New York Stock Exchange, for £896 million (AUD1.6 billion) making it ‘one of the most valuable shoemakers in the world’. 

11. Merritt declares that before the Opponent was founded, Jimmy Choo already had a reputation as a designer of luxury shoes.  Jimmy Choo ‘achieved international fame when his creations were featured in a record eight pages of a 1988 issue of the internationally published Vogue magazine’.  Further, Jimmy Choo was the official shoemaker for Princess Diana of Wales from 1990 until her death in 1997.  Nowadays, numerous celebrities wear the Opponent’s JIMMY CHOO shoes and bags including the Duchess of Cambridge, Beyonce, Kim Kardashian, Kendall Jenner, Dua Lipa, Michelle Obama, Margot Robbie, Nicole Kidman, Michael B Jordan and Leonardo DiCaprio. The Opponent’s Website, and Australian specific portion, has a section ‘In my Choos’ featuring celebrities wearing the Opponent’s products.

12. Both Merritt and LCS claim that the JIMMY CHOO brand is iconic. Merritt attests that as a result of its celebrity appeal, JIMMY CHOO has entered the realm of popular culture.  For example, the brand JIMMY CHOO has featured in songs and song titles including by well-known artists such as Lady Gaga, Beyonce, Pitbull and Kayne West.  The JIMMY CHOO Brand has also featured in various movies and television shows such as Sex and the City when the main character Carrie Bradshaw announced ‘I lost my Choo’, The Devil Wears Prada, Ugly Betty, Gilmore Girls, NCIS, The Sopranos, House of Cards and High School Musical 2.

13. Both LCS and Merritt state that it is common for fashion brands to adopt the full name of the founder/designer and the last name only as trade marks such as ERMENEGILDO ZEGNA and ZEGNA, GIORGIO ARMANI and ARMANI, HUGO BOSS and BOSS, TOMMY HLFIGER and HILFIGER.  Further, consumers often use only the surname even when referring to products branded with the full name.  Merritt attests to seeing this practice in relation to its JIMMY CHOO products with consumers and the media often referring to JIMMY CHOO branded goods as ‘CHOOs’ or, for example, a CHOO handbag.   Various examples of JIMMY CHOO products being referred to in this manner are provided.  In particular, the Opponent notes that Cosmopolitan Netherlands magazine in 2011 used the phrase CHOO LA LA in relation to JIMMY CHOO perfume.

14. In 2010, the Opponent launched its CHOO 24:7 collection of footwear promoted as ‘perfect for day to evening, 7 days a week’.  The range expanded to include bags, phone covers, laptop cases, wallets and luggage before being discontinued in 2016.

15. In 2014, the Opponent launched a collection of urban style footwear, handbags and small leather goods under the mark CHOO.08°. 

16. Since May 2018, the Opponent has used the mark CHOO (in both word and stylised form) on products including shoes, key rings, bags, belts, wallets, document holders, sunglasses, pashminas, t-shirts, hats and scarves.

17. Lolis attests to the results of searches undertaken intended to demonstrate that Australia has a significant population of people of Chinese descent but that there are relatively few people with the surname CHOO.  In this regard, there 422 entries for CHOO as a surname on the Australian Electoral Roll according to the Search for Australian Surnames of the Australian Trade Marks Office records and 917 entries at the website

18. Lolis 2 simply annexes the LCS Declaration, much of which confirms the contents of Merritt.  The LCS declaration also includes a confidential internal spreadsheet of sales of products featuring the Trade Marks (‘Spreadsheet’) and images of the products sold based on the model names listed in the Spreadsheet;[4] selection of invoices for wholesale of CHOO branded products to Australian retailers (‘Wholesale Invoices’); [5] details of packing lists for products to be sold in Australia with images of the products that align with the model names in the packing lists (‘Packing Lists’);[6] and visits by Australians to the Opponent’s Website which receives reasonable web traffic annually and has a section ‘In my Choos’.[7]

    [4] Ibid Confidential Exhibit LCS-11.

    [5] Ibid Confidential Exhibit LCS-12.

    [6] Ibid Confidential Exhibit LCS-13.

    [7] Ibid, HLVM-9

    Applicant’s evidence

19. Mr Cherrett and his wife operate a number of businesses in the field of performing arts, entertainment and fitness.  As part of its Soul Train business, Mrs Cherrett began offering a ‘Choo La La Burlesque Fusion’ class in 2013.  The Choo La La mark was chosen as the class name to reflect the ‘train’ theme the Cherretts had across their businesses at the time and ‘la la’ in reference to the French expression ‘Ooh la la’ which suggested the burlesque nature of the class.  As a result of the success of the class, the name of the Soul Train business was changed to Choo La La in 2017.

20. In 2018, the Applicant was incorporated to carry out the various business ventures of the Cherretts including the Choo La La business.  The Applicant registered the Choo La La mark under number 1942536 in July 2018 in classes 16 and 41 and has been providing ‘dance-based activity and performance programs’ under that mark since that time as well as various merchandise including t-shirts, tank tops, jackets, dance shorts and dance costume robes.  The Applicant intends to expand its merchandise range to other dance and performance clothing. 

21. The Applicant has provided extracts from its website at (‘Applicant’s Website’) about its business and undated photographs of the Applicant’s Goods bearing the Applicant’s Mark.

22. In addition to promoting its business on the Applicant’s Website, the Applicant advertises its business under the Applicant’s Mark on its various social media accounts and has received third party media coverage.

23. Cherrett attests that the Applicant’s Mark was honestly adopted without reference to the Opponent’s brands, that the Applicant’s Goods are directed to a different class of consumer and sold through different trade channels at a different price point, the Applicant is unaware of any instances of confusion with the Opponent and has never been informed by the Opponent of any confusion. 

24. Tye outlines searches undertaken of the Australian portion of the Opponent’s Website which revealed that cosmetics, shoes, handbags and fashion accessories are offered for sale under the marks JIMMY CHOO or JC at a variety of price points from $260 for a hair scrunchie to $6275 for a tote bag.  There is no section for ‘clothing’ nor any apparel offered on the Opponent’s Website.  In particular, Tye attests that she could not locate any of the CHOO items identified in Merritt.  Tye declares that ‘In my Choos’ was the only use of CHOO disclosed.

25. Tye notes that in May 2022, the Opponent filed an International Registration Designating Australia in respect of International Registration 1554945 (‘IRDA’). The IRDA is for the trade mark CHOO in classes 14, 18 and 25 and was given the Australian designation 2277361. In the same month, the Opponent filed standard Australian application 2270243 to register the same trade mark in classes 3, 9 and 35.  Both of these marks proceeded to protection/registration without encountering a citation of the Application.

    Consideration of Oppositions to the Removal Applications

    Legal Framework

26. Regulation 17A.48D provides that Part 9 of the Act applies to the cessation of protection of international trade marks with all references to the removal of a trade mark being taken as a reference to the cessation of protection of that trade mark. As such, in summarising the relevant provisions, all references below to the removal of a trade mark should be read as ‘cessation of protection of an international trade mark’.

27. Section 92(4) relevantly provides:

    92  Application for removal of trade mark from Register etc.

    (4)  An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

    (a)  that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

    (i)  to use the trade mark in Australia; or

    (ii)  to authorise the use of the trade mark in Australia; or

    (iii)  to assign the trade mark to a body corporate for use by the body corporate in Australia;

    in relation to the goods and/or services to which the non‑use application relates and that the registered owner:

    (iv)  has not used the trade mark in Australia; or

    (v)  has not used the trade mark in good faith in Australia;

    in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;

    (b)  that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

    (i)  used the trade mark in Australia; or

    (ii)  used the trade mark in good faith in Australia;

    in relation to the goods and/or services to which the application relates.

28. Under s 92(4)(a) the Opponent must establish that at the relevant date, the Opponent had an intention in good faith to use the CHOO Logo in Australia for all of the registered goods, or authorise the use of the Trade Mark in Australia or to assign the Trade Mark to a body corporate for use by the body corporate in Australia, or that it had in fact used the CHOO Logo in good faith before 28 February 2022 being one month before the Removal Application was filed. 

29. An application under s 92(4)(b) with respect to a trade mark may not be made before a period of five years has passed from the filing date of the trade mark[8] and I confirm that this period has elapsed for each of the registrations for the CHOO Word Mark.  

    [8] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1, pt 3) as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.

1. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the CHOO Word Mark is the three year period ending on 28 February 2022.

2. The relevant periods for proving use of the CHOO Logo and CHOO Word Marks are collectively referred to as the ‘Relevant Periods’.  A reference to the Relevant Period for the CHOO Logo is a reference to any time before 28 February 2022 and for the CHOO Word Mark is the period 28 February 2019 to 28 February 2022.

3. Pursuant to s 100(1), the Opponent bears the onus of rebutting an allegation made under ss 92(4)(a) and (b) by establishing, on the balance of probabilities,[9] that it has used the Trade Marks for the Registered Goods and Services during the Relevant Period or, in relation to the CHOO Word Mark, that there were circumstances that were an obstacle to use in the Relevant Period.  If there has been no use of the CHOO Logo, the Opponent must establish on the balance of probabilities that it had the requisite intention to use the CHOO Logo at the time of applying for registration.

   [9] Pfizer Products Inc. v Karam [2006] FCA 1663; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.

4. In Woolly Bull Enterprises Pty Ltd v Reynolds,[10] Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92, namely it is ‘real, as opposed to token, use in a commercial sense’. Provided the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use,[11] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[12]

   [10] [2001] FCA 261, [16].

   [11] Ibid [17].

   [12] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

5. The principles regarding use as a trade mark were recently summarised in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, in which the High Court noted the following:

   Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.

   Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.

   The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[13]

   [13] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (‘Self Care’) [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).

6. In accordance with s 101, I may decide to remove the Trade Marks from the Register for some or all of the Registered Goods and Services or if satisfied it is reasonable to do so, decide not to remove the Trade Marks even if the grounds under which the Removal Applications were made are established.

7. Furthermore, s 101(4) provides:

   (4)  Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

   (a)  similar goods or closely related services; or

   (b)  similar services or closely related goods;

   to those to which the application relates.

   Discussion on Oppositions to the Removal Applications

8. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. However, paragraph (a) is considered to effectively merge with paragraph (b) once a trade mark sought for removal has been registered for a period longer than five years.[14]  Hence for the CHOO Word Marks, I need only consider the applications for removal under s 92(4)(b).

   [14] M Davison and I Horak Shanahan’s Australian Law of Trade Marks and Passing Off 6th edition, 2016 Thomson Reuters, [70.510].

9. In each case, the Opponent claims in its SGPs that it has used, or authorised use, of either the Trade Marks, or a mark with additions or alterations not substantially affecting the identity of the Trade Marks, or marks containing the Trade Marks, in Australia for the Registered Goods and Services.

10. The Opponent argues that the CHOO Logo is a mark with additions or alterations not substantially affecting the CHOO Word Mark.  A trade mark ‘with additions or alterations that do not substantially affect the identity of the trade mark’ has been interpreted to mean that the trade marks being compared must be substantially identical.[15]  The test for whether marks are substantially identical was set out by Windeyer J in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited as follows:

    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.[16]

    [15] PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128, [161] (Jagot, Nicholas and Burley JJ) (‘Wicked’).

    [16] (1963) 109 CLR 407, 415.

11. More recently, the Full Federal Court considered the test for substantial identity in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd[17] (‘Accor’) and Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd,[18] finding that the test requires that the trade marks are considered side by side while having regard to the essential features or dominant cognitive cues of the marks.  

    [17] [2017] FCAFC 56 (Greenwood, Besanko and Katzmann JJ).

    [18] [2017] FCAFC 83 (Greenwood, Jagot, and Beach JJ).

12. The marks for comparison in this instance are:

    and      

13. In both cases, the essential element and dominant cognitive cue is CHOO.  This is the manner in which both marks will be pronounced and recalled.  I consider the stylisation of the ‘OO’ in the CHOO  Logo to be slightly more than a ‘change of style’[19] but less than the changes in the relevant marks considered in Wicked where the stylised tail in the letter ‘d’ formed a significant part of the registered mark and the new mark incorporated new embellishments as well as a change in font.  In my view, the stylised ‘OO’ in CHOO is not an embellishment that alters the total impression of similarity.  I consider that the stylisation is slight in the overall context of the mark, and I am satisfied that the CHOO Logo and Choo Word marks are substantially identical.  Accordingly, if the Opponent establishes use of the CHOO Word Mark or CHOO Logo in the Relevant Periods for the Registered Goods and Services, this is sufficient for the Opponent to rebut the non-use allegation under s 92(4)(a) for the CHOO Logo and under s 92(4)(b) for the CHOO Word Marks.

    [19] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135, [117] (Bennett J).

    Use of the Trade Marks in the Relevant Periods

14. The Opponent asserts that its evidence establishes that it sold ‘headgear, handbags, purses, casual footwear, hiking boots, duffel bags, sunglasses’ under the Trade Marks in Australia during the Relevant  Periods.   In support of this contention, the Opponent points to the following:

    ·assertion by Ms Clifford-Smith that CHOO products were sold into Australia at both a wholesale and retail level;[20]

    ·undated examples of CHOO branded products;[21]

    ·the Spreadsheet detailing sales of products featuring the Trade Marks and images of the products sold based on the model names listed in the Spreadsheet;[22]

    ·Wholesale Invoices for sales of CHOO branded products to Australian retailers; [23]

    ·Packing Lists for products to be sold at the JIMMY CHOO flagship store in Chadstone Shopping Centre, Melbourne with images of the products that align with the model names in the packing lists;[24]

    ·third party use of CHOO or Choos in media to refer to the Opponent’s shoes;[25]

    ·visits to the Australian portion of the Opponent’s website at which receives reasonable web traffic annually and has a section ‘In my Choos’.[26]

    [20] LCS Declaration [31].

    [21] LCS Declaration Exhibit LCS-10.

    [22] Ibid Confidential Exhibit LCS-11.

    [23] Ibid Confidential Exhibit LCS-12.

    [24] Ibid Confidential Exhibit LCS-13.

    [25] Merritt Declaration for example Exhibits HLVM-1 p 20, 50, 52, 105; HLVM-3 p 151, 156, 166, 183, 185; HLVM-5 p 425; HLVM-6 promoting CHOO 24:7, HLVM-7 promoting CHOO.08°, HLVM-8 p 511; HLVM-12 p695; HLVM-13 p709. 

    [26] Ibid, HLVM-9

15. The Applicant criticises the above as mere assertions, often relating to use of JIMMY CHOO rather than the Trade Marks, is use outside Australia, undated and/or outside the Relevant Period.  In particular, the Applicant asserts that the Spreadsheet is not limited to sales of goods in Australia and the Wholesale Invoices all relate to sales to the Opponent’s Chadstone store.  Whilst the Applicant acknowledges that the Spreadsheet refers to Australian Dollars, the Applicant argues that no other primary business records are provided to support the allegation that the Spreadsheet sales occurred here.

16. Ms Clifford-Smith attests that the Spreadsheet details ‘the date and manner of sale (either e-commerce or retail from a bricks & mortar store) of products which feature the CHOO trade mark generally together with an image of the product sold which aligns with the model name appearing in the spreadsheet’.  All of the sales are recorded in the Spreadsheet as either being ‘Online/E-Commerce’ or ‘Australia/Retail’ (which I consider a clear reference to a physical store in Australia) and are charged in Australian dollars.  The products recorded as sold are RAINE sneakers and RAINE SOCK sneakers, SONIA handbags, JONI FLAT sandals, BETTINA purses/wallets, FAYE belt bags, GWENEVERE FLAT, SANTINI bag, JADEN FLAT shoes, SONIA shoes, JUNO bucket bags, BALTI bags in different colours, JAS FLAT sandals, JAS 50 sandals, INCA hiking boots, ANTO caps, MICHIGAN sneakers, HEDON 40 boots, RUTH cap, NORD boots and REESE caps.  An image for each product listed in the Spreadsheet is provided which matches the model name and colour description in the Spreadsheet. 

17. Further, evidence that the products sold are those depicted in the images is found in the Wholesale Invoices and Packing Lists.  The Wholesale Invoices and Packing List show that the Opponent’s Hong Kong company sent various products to Luxtralia Pty Ltd in Chadstone and Sydney.  There is no evidence that Luxtralia Pty Ltd is related to the Opponent.  The Packing Details include illustrations of the products shipped which match the descriptions in the Wholesale Invoices.  Moreover, the products illustrated in the Packing Details match the model names in the Spreadsheet and images provided in Exhibit LCS-11 of LCS.  For example, on 7 July 2020, the Spreadsheet lists a ‘Australia/Retail’ sale of GWENEVERE FLAT in ‘silver’, ‘washed metallic Nappa.’[27]  The image provided for this product is shown below on the left.  The Packing Lists show the shoe described as GWENEVERE FLAT WIP (Washed Metallic Nappa) having the image on the right.  In my opinion, the products depicted as being those listed as sold in Australia in the Spreadsheet are in fact the products that were sold, that each product identified as bearing the CHOO Logo does in fact bear that mark and that these goods were sold in Australia in the Relevant Periods.

    [27] Line 134 Spreadsheet.

18. The courts have found that it is unnecessary for an Opponent to establish that a mark has been used on every type of product falling within a particular term or description of goods in the specification[28] and that it is inappropriate to draw ‘fine distinctions’ between goods.[29]  Various footwear has been sold including boots, flats, sneakers, sandals and hiking boots.  I consider ‘footwear’ to be an appropriate description of these goods and it is inappropriate to limit the registrations to the particular types of footwear.

    [28] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [138] (Bennett J).

    [29]McHattan v Australian Specialised Vehicle Systems Pty Ltd  [1996] FCA 481 (Drummond J).

19. Some of the Opponent’s products in the Spreadsheet may fall within a number of descriptions in the specification of the Registrations.  For example, in my view, the BETTINA product illustrated below may be described as a purse, wallet or clutch bag.

20. I do not believe that any of the products listed in the Spreadsheet can be described as ‘duffel bags’.  A duffel bag is defined as ‘a cylindrical canvas bag used for carrying personal effects’[30] and historically closed at the top with a drawstring or zipper.[31]  Whilst I consider that consumers would regard a similar shaped bag made from leather or other materials as a duffel bag, I do not believe that the bag shown below or any of the Opponent’s bags listed in the Spreadsheet can properly be described as ‘duffel bags’.

    [30] Macquarie Dictionary (online at 7 June 2024) ‘duffel bag’.

    [31] Wikipedia, The Free Encyclopedia (online at 7 June 2024) ‘duffel bag’.

21. On my assessment of the Opponent’s evidence and bearing in mind my comments at [54], I am satisfied that the Opponent has used the CHOO Logo in Australia before the Relevant Date for ‘handbags, clutch bags, belt bags, purses, wallets, footwear and headgear’ (‘Used Goods’).  As I have found the CHOO Logo and CHOO Word Mark to be substantially identical, I similarly find that the Opponent has used the CHOO Word Mark for the Used Goods in the Relevant Period.

22. In my view, the Opponent’s evidence does not establish use of the CHOO Word Mark or CHOO Logo in Australia for the other goods and services covered by the Registrations.  Accordingly, I turn to a consideration of whether the Opponent had the requisite intention to use the CHOO Logo for those other goods and to whether it is appropriate to exercise my discretion not to remove the Registrations for those goods and services for which use of the Trade Marks has not been established.   

    Section 92(4)(a) Intention to use the CHOO Logo

23. In the present case, the Opponent has established use of the Trade Marks for the Used Goods.  The CHOO Logo goods for which use has not been established are:

    
    Class 14:  Precious metals and their alloys; jewellery; jewellery in the nature of jewellery ornaments; jewellery for use on shoes and handbags; jewellery in the nature of clip-on jewellery for use as fashion accessories; costume jewellery; costume jewellery in the nature of jewellery ornaments; costume jewellery for use on shoes and handbags; costume jewellery in the nature of clip-on jewellery for use as fashion accessories; earrings, bracelets, chains, necklaces, clip on jewellery, arm cuffs (jewellery), wrist bands (jewellery); jewellery made of leather; key rings (trinkets or fobs); key fobs; trinkets of metal; key fobs of leather or imitations of leather incorporating key rings; horological and chronometric instruments; watches, bracelets and straps for watches, cases adapted to contain watches; jewellery boxes, presentation boxes for jewellery, boxes of precious metals; tie clips, cufflinks; shoe ornaments and handbag ornaments of precious metal; ornaments (jewellery); key rings; key chains; key holders; parts and fittings for the aforesaid goods.

    Class 18:  Travelling bags, weekend bags, trunks, trunks for storing shoes, travel wallets, luggage tags, luggage label holders, cosmetic bags, make-up bags, vanity bags, vanity cases not fitted, pouches, cases, bags (other than handbags, belt bags and clutch bags), shoe bags, cloth bags, backpacks, garment bags, beach bags, briefcases, suitcases, attaché cases; cases of leather or leather board; key cases, key bags; card cases; card holders, credit card holders, debit card holders, bank card holders, business card cases; document cases; hat boxes made of leather or imitations of leather; parasols, umbrellas, walking sticks; parts and fittings for the aforesaid goods; laces (leather); leashes; collars and leads for animals; garments and clothing for pets.

    Class 25:  Clothing; scarves; gloves, belts, swimming hats; raincoats, hosiery, sashes for wear, wedding dresses, fur stoles, stoles of imitation fur, fur muffs, muffs of imitation fur, ear muffs, fur coats, coats of imitation fur; kaftans; swimwear; underclothing; outerclothing.

    (‘Unused Logo Goods’)

24. The Opponent bears the onus of establishing that it had the requisite intention to use the CHOO Logo at the Relevant Date, but that burden is not arduous.  The filing of the Application is prima facie evidence of its intention to use the CHOO Logo in respect of all of the goods claimed.[32]  The Applicant disputes that in the context of s 92(4)(a) the filing of an application is prima facie evidence of an intention to use the mark but submits that it is for the Applicant to establish its intention from the outset.  In support of this argument, the Applicant relies on Goodman Fielder Pte Ltd v Conga Foods Pty Ltd.[33]  In my view, this case does not support the Applicant’s proposition that filing an application is evidence of an intention to use the subject mark for the purposes of s 59 but not s 92(4)(a).  Justice Burley’s findings in Goodman Fielder were the same in respect of s 59 and s92(4)(a).[34]  He cited with approval the proposition in Aston v Harlee that the filing of an application is prima facie evidence of an intention to use the mark and noted that the onus then shifts to the other party (in that case, the applicant for rectification) to establish a lack of intention.[35]  However, where a trade mark owner is on notice that its intention to use the mark is in issue, the court may infer a lack of intention if the trade mark owner fails to respond to the other party’s evidence.[36] 

    [32] Aston v Harlee Manufacturing Co [1960] HCA 47, [21] (Fullagar J) (‘Aston v Harlee’).  While this case concerned a standard mark, I proceed on the basis that the same principle applies to an internation registration whose protection has been extended to Australia and the associated Application.

    [33] [2020] FCA 1808; [126] and [19] (Burley J) (‘Goodman Fielder’).

    [34] Ibid [157].

    [35] Ibid [118]; see also Structureco Inc v Starite Distributors Pty Ltd [2000] ATMO 31 (Hearing Officer I. Forno).

    [36] Ibid.

25. In Goodman Fielder, based on actual use of the mark for chilled bread products, Burley J characterised the mark as having been used for ‘bread and bread products’ and based on that use inferred that the applicant had an intention to use the mark in question for ‘pizza bases’ and ‘pizza dough’ being ‘outliers of bread and bread products’.  However, the applicant was found not to have the requisite intention to use the mark for ‘foodstuffs having a base of rice, of flour or of cereals, also in the form of ready made dishes’ for a number of reasons, including that before the proceedings the registration covered an even broader range of goods and the applicant lacked the capacity to produce goods beyond bread products at the filing date.

1. The Opponent has established use of the CHOO Logo for the Used Goods and that same evidence also shows use of the mark in Australia for sunglasses.  All of the Unused Goods covered by the CHOO Logo registration can be broadly categorised as fashion and fashion accessories.  The Opponent sells almost all of the registered goods under its mark JIMMY CHOO which demonstrates that the Opponent has the means to produce the Unused Logo Goods (cf Goodman Fielder).

2. In my opinion, in all the circumstances including the filing of the application for the CHOO Logo, the use of the mark for the Used Goods and sunglasses, and the fact that most of the products fall within the product range offered by the Opponent under JIMMY CHOO, is sufficient to establish on the balance of probabilities that the Opponent had the requisite intention to use the CHOO Logo for the registered goods at the time of filing the application.  The Applicant has not adduced any evidence to suggest otherwise.

3. Accordingly, the Opponent has rebutted the allegation of non-use with respect to registration 1982345 for all of the Unused Logo Goods.

   Discretion – CHOO Word Mark

4. Having found that the Opponent has used the CHOO Word Mark (or a mark with additions or alterations not substantially affecting its identity) and in the absence of any arguments that there were obstacles to use of the mark for the other registered goods and services, I now turn to a consideration of whether it is appropriate to exercise my discretion under s 101(3) not to remove the CHOO Word Mark registrations for those other goods and services.  The goods for which the CHOO Word Mark has not been used are essentially the same as the Unused Logo Goods and the class 35 services covered by registration 1710940 predominantly being the retail of luxury goods (‘Unused Services’).

5. The policy of the Act is to facilitate the removal of an unused trade mark and the public interest in the integrity of the Register will generally demand the removal of an unused trade mark.[37] In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court provided the following observations regarding the discretion under s 101(3):

   [37] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2022 Thomson Reuters, [70.2505].

   The following propositions are relevant to the exercise of this discretion:
   
   

   (1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act.

   (2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. ...

   (3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. ...

   (4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.

   (5) The range of factors considered in the exercise of the discretion has included whether or not:

   (a) there has been abandonment of the mark;

   (b) the registered proprietor of the mark still has a residual reputation in the mark;

   (c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;

   (d) the applicant for removal had entered the market in knowledge of the registered mark;

   (e) the registered proprietors were aware of the applicant’s sales under the mark;

   (f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[38]

   [38] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).

6. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’, the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.  Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[39]

   [39] [2008] FCA 934, [210] (emphasis in original).

7. The Opponent argues that I should exercise discretion to retain the registrations for the CHOO Word Mark in their entirety because of the Opponent’s extensive reputation in the mark JIMMY CHOO for footwear and fashion generally, use of CHOO or ‘Choos’ by the Opponent and third parties to refer to JIMMY CHOO as well as use of the Trade Marks overseas for a wide range of goods particularly for clothing, belts and scarves.  The Opponent contends that if the CHOO Word Mark registrations are not retained there is a risk of confusion to consumers if another trader was to use CHOO for other goods particularly those in class 25.  Finally, it would be contrary to the public interest and integrity of the Register to remove the Registrations allowing other traders to register ‘CHOO’ marks for the same or similar goods.

8. The Applicant argues that there is no evidence that the Opponent intends to use the Trade Marks for a broader range of goods and services than the Used Goods, the JIMMY CHOO mark has similarly been used on a limited range of goods and use of that mark is not relevant to the present matter and there is no consumer evidence that purchasers use CHOO to refer to JIMMY CHOO products.  The Applicant also contends that the Opponent’s reliance on use for similar goods is generalised and registration of the Trade Marks for any goods affords protection for similar goods or closely related services in both opposition and infringement proceedings.  Hence, there would not be consumer confusion if the Registrations are removed and the public interest in removing the Registrations for unused goods or services outweighs any interest in retaining the Registrations.

9. On my assessment of the evidence, the Opponent has a reputation in the mark JIMMY CHOO for footwear and handbags but I am not satisfied that the Opponent’s reputation extends to fashion and fashion accessories generally amongst a significant proportion of Australian consumers.  The Opponent’s evidence shows that the use and promotion of JIMMY CHOO is predominantly of its footwear and handbags, particularly in Australia.  Whilst the Opponent sells other goods, these are a relatively small proportion of its range and receive significantly less promotion.  

10. Further, I do not believe that the Opponent has a substantial reputation in the Trade Marks.  Whilst the Opponent’s evidence shows that the term ‘Choo’ or ‘Choos’ is used by media and in popular culture as an abbreviation of JIMMY CHOO, these references are almost exclusively in relation to the Opponent’s footwear.  Consumers may well understand that a reference to Choos for footwear is a reference to JIMMY CHOO but I am not convinced that this would extend to the unused goods and services particularly given that use of the Trade Marks in this country has been quite limited.

11. The Opponent has not demonstrated use of the Trade Marks on the vast majority of the registered goods and services.  Further, there has been little promotion of CHOO branded goods in Australia and Tye suggests that the CHOO products which are sold here are not on, or at least not easily located on, the Opponent’s Website.  Whilst some products bearing the Trade Marks are sold overseas, there is no indication of if or when these products may be sold in Australia nor is there any evidence as to the extent of these sales overseas. 

12. There is no evidence that the Trade Marks have ever been used in relation to the Unused Services but rather the CHOO branded goods are retailed under JIMMY CHOO.  I note that the Opponent has used #IWANTCHOO and #IDOINCHOO to promote its footwear on social media but in my view, this use is not sufficiently widespread to justify retaining registration of the CHOO Word Mark under registration 1710940.

13. Given the limited use and promotion of the Trade Marks, I do not consider that it is appropriate to exercise my discretion to retain protection of the CHOO Word Mark for any of the unused goods or services.  In my view, the public interest in the integrity of the Register outweighs the private interest in retaining protection for a broader range of goods and services.

    Decision on Oppositions to Removal Applications

14. The Opponent has rebutted the allegation of non-use under s 92(4)(a) with respect to registration 1982345 and I decline to remove that registration.  Registration 1982345 is to remain registered for all of the goods outlined in Annexure A.

15. The Opponent has not rebutted the allegation of non-use under s 92(4)(b) for any of the services covered by registration 1710940 and I direct that this registration be removed from the Register one month from the date of this decision.

16. With respect to the non-use applications under s 92(4)(b) against registrations 1383508 and 1759615, the Opponent has partly established its opposition to the removal applications.  Accordingly, I direct that protection remain for the registered goods as amended below (note: items struck through are deleted, items underlined are added):

Registration 1383508

Class 14:Precious metals and their alloys and goods in precious metals or coated therewith; jewellery, costume jewellery, arm cuffs (jewellery), wrist bands (jewellery); key rings (trinkets or fobs); precious stones; horological and chronometric instruments; parts and fittings for the aforesaid goods

Class 18:Leather and imitations of leather, and goods made of these materials; trunks, travelling bags, Goods made of leather or imitations of leather being belt bags and clutch bags; handbags, purses, wallets, hat boxes, umbrellas, parasols, walking sticks; parts and fittings for the aforesaid goods

Class 25: Clothing, footwear and headgear

Registration 1759615

Class 18:  Goods made of leather and imitations of leather; handbags, travelling bags, trunks, purses, wallets, clutch bags, travel wallets, luggage tags, luggage label holders, cosmetic bags, vanity bags, pouches, carrying cases, attache cases, cases of leather or leather board, vanity cases not fitted and business card cases, belt bags, leather or imitations of leather cases for keys; leather key holders, key cases, key bags, card cases; card holders, credit card holders, business card cases; document cases; boxes of leather or leather board; hat boxes made of leather or imitations of leather; parasols, umbrellas, walking sticks; clothing for pets, collars and leads for animals; parts and fittings for the aforesaid goods

Class 25:  Clothing, footwear and headgear; scarves; gloves, hats, swimming hats; raincoats, hosiery, sashes for wear, wedding dresses

1. In the event of any appeal of this decision, the disposition of the Registrations shall instead be subject to the decision of the Court.

2. Both parties have requested an award of costs.  Each of the parties has been successful in one removal application and both parties have had a degree of success in the other two removal applications.  In the circumstances, I decline to award costs against either party.

   Consideration of Opposition to application 2184103

   Grounds, onus and relevant date

3. In its SGP, the Opponent particularised grounds of opposition under reg 4.15A and ss 42(b), 43, 44, 60 and 62A.  At the hearing, the Opponent advised that it was only pursuing the grounds of opposition under reg 4.15A and s 60. 

4. The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[40]  The standard of proof is the ordinary civil standard of the balance of probabilities.[41]

   [40] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [41] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

5. The rights of the parties are to be determined as at the filing date of 16 June 2021 (‘Relevant Date’) which is also the priority date.

   Section 60

6. Section 60 provides:

   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.

7. 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.

8. In McCormick & Co Inc v McCormick (‘McCormick’),[42] Kenny J considered what is intended by the word ‘reputation’ as used in s 60.  Her Honour consulted the Macquarie Dictionary and based on the definition provided, she concluded that it was ‘the recognition of the [trade mark] by the public generally’.[43]  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 …[44]

   [42] [2000] FCA 1335.

   [43] Ibid, [81].

   [44] [1992] FCA 159, [118].

9. However, Kenny J in McCormick also noted the following comments of the Registrar’s delegate in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sale or turnover of goods sold under the 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 sale, 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 sponsorship, 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 sale 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 association of the trade marks with the goods or services themselves.[45]

   [45] [1999] ATMO 23; (1999) 47 IPR 423, 436.

10. For the purposes of s 60, reputation must be established as a matter of fact by the Opponent[46] and must be amongst a ‘significant’ or ‘substantial’ number of Australian consumers[47] although this is tempered by the nature of the relevant market.  In the context of the Applicant’s Goods, consumers of clothing constitute a very large proportion of the Australian population.

    [46] Ibid [77].

    [47] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

11. Consumers need not be actually confused but rather ‘it is sufficient that consumers might wonder whether the respective goods might be connected in the course of trade.’[48]  Further, as the Full Court noted in Australian Postal Corporation v Digital Post Australia Pty Ltd:

    “... the threshold for confusion is not high. Courts must compare the marks visually and aurally in the context of how the marks are used, and decide if there is a reasonable probability that the ordinary person to whom the marks are targeted, entertains a reasonable doubt as to the relationship between the marks’.[49]

    [48] Rodney Jane Racing Pty Ltd v Monster Energy Company (‘Rodney Jane’) [2019] FCA 923, [84(e)] (O’Bryan J).

    [49] [2013]

12. In its SGP, the Opponent claims that its JIMMY CHOO and CHOO brands (‘Opponent’s Marks’) have achieved iconic status with widespread recognition amongst Australian consumers due to longstanding use and promotion of the marks in Australia and internationally, a loyal following by celebrities and entry of the brands into popular culture.

13. The Opponent contends that it has sold a wide range of JIMMY CHOO products in Australia for close to 20 years through prominent third party retailers and has had its own boutiques in Australia for over 15 years.  The JIMMY CHOO products have also been promoted and offered for sale through the Opponent’s Website since 2006, which website also features celebrities wearing the Opponent’s products, and which site receives reasonably significant Australian traffic.  Sales of goods under the Opponent’s Marks in Australia are substantial.  The Opponent’s evidence shows that its goods are featured in well-known international and Australian fashion magazines such as Australian Vogue, Marie Claire, InStyle Australia, Madison Australia and Harper’s Bazaar Australia.[50]  In addition, the Opponent notes that it has engaged in various collaborations or partnerships with other brands including H&M,[51] UGG,[52] Carrera,[53] Timberland,[54] Billy Porter (an actor and activist)[55] and fashion house Mugler.[56]  Consequently, the Opponent asserts that it has developed a substantial reputation in the mark JIMMY CHOO for fashion products and accessories.

    [50] Clifford-Smith [27] and Exhibit LCS-9; Merrett [53] and Exhibit HLVM-24.

    [51] Merritt, Exhibit HLVM-14.

    [52] Ibid Exhibit HLVM-15.

    [53] Ibid Exhibit HLVM-16.

    [54] Ibid Exhibit HLVM-17.

    [55] Ibid Exhibit HLVM-18.

    [56] Ibid Exhibit HLVM-19.

1. In addition, the Opponent claims that it also has a significant reputation in the mark CHOO due to industry practice of using full names and surnames as trade marks, the tendency of media and consumers to refer to a brand simply by the surname, the use of CHOO in Australia and overseas including in variations such as 24:7 CHOO and CHOO.08°, use of #idoinchoo to promote JIMMY CHOO bridal products and #iwantchoo for social media campaigns which campaign included use of IWANTCHOO on products. 

2. The Applicant accepts that the Opponent has a reputation in JIMMY CHOO for high-end footwear but disputes that this reputation extends to fashion products generally or to the mark CHOO solus.  Moreover, the Applicant argues that the Opponent’s reputation in JIMMY CHOO does not extend to consumers generally but only those with an interest in or the financial means to purchase luxury footwear.

3. I agree that the Opponent’s mark JIMMY CHOO had acquired a substantial reputation for footwear in Australia at the Relevant Date.  In addition, I consider that this reputation extends to handbags which goods also feature prominently in the promotion of the Opponent’s goods.  Further, I believe that a significant proportion of the Australian public would be familiar with JIMMY CHOO footwear, bags and the retailing of such goods as a result of its longstanding use and promotion in Australia and overseas.  Whilst the price point for the Opponent’s products may mean that some people cannot or choose not to spend this sort of money on their shoes and bags, this does not mean that such consumers would not be aware of the brand for footwear and handbags. 

4. However, I am not satisfied that the Opponent’s reputation in JIMMY CHOO extends to fashion and fashion accessories generally.  Whilst it may be the case that many fashion designers of clothes expand their range to include jewellery, sunglasses, belts and other fashion accessories, I am not convinced that this is a common practice for shoe manufacturers.  The Opponent’s evidence shows that the use and promotion of JIMMY CHOO is predominantly of its footwear and handbags, particularly in Australia.  Whilst the Opponent sells other goods, these are a relatively small proportion of its range and receive significantly less promotion.

5. In relation to the CHOO mark, this mark has been used in Australia for a significantly shorter period of time and to a much lesser extent than JIMMY CHOO.  The range of CHOO products is more limited and based on the Spreadsheet, sales of goods under this brand are not significant.  Although some consumers seeing the mark CHOO on shoes or bags may wonder or assume there is some connection with the JIMMY CHOO brand, this does not amount to a reputation in the CHOO mark itself particularly in relation to other goods or services.  I also note that I think there would be little if any awareness of the Opponent’s use of 24:7 CHOO or CHOO.08° which goods appear to have only been available overseas.  In my view, the Opponent has not established that it had a reputation in the mark CHOO at the Relevant Date.

6. Having found that the Opponent’s mark JIMMY CHOO has a reputation for footwear, handbags and the sale of these goods, I must consider whether as a result of that reputation, use of the Choo La La mark is likely to deceive or cause confusion. 

7. The likelihood of deception or confusion from the use of the opposed mark must arise because of the reputation of the other mark. The relevant comparison is between the reputation of the JIMMY CHOO mark and a notional normal and fair use of the Applicant’s Mark for the Applicant’s Goods.[57]

   [57] M Davidson, I Horak Shanahan’s Australia Law of Trade Marks & Passing Off (7^th edition online), 2022 Thomson Reuters, [50.240].

8. Whilst there is no requirement to demonstrate that the trade marks in question are substantially identical or deceptively similar within the meaning of Act, it has been observed that:

   Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[58]

   [58] Qantas Airways Ltd v Edwards [2016] FCA 729 [142] (Yates J).

9. In the present case, there are obvious differences in the marks JIMMY CHOO and Choo La La.  Although the marks share the element CHOO, this element does not create the impression of a surname in the mark Choo La La.  The marks create different ideas with the Opponent’s mark clearly being a name and the Applicant’s Mark suggesting a play on the French phrase ‘Ooh la la.’ Visually, phonetically and connotatively, the two marks are different.  In addition, whilst not entirely unconnected, the Applicant’s Goods are not the same in which the Opponent has a reputation.  In all the circumstances, I am not satisfied that there is a real danger of confusion to consumers if Applicant’s Mark is used for the Applicant’s Goods.

100.Accordingly, the s 60 ground of opposition is unsuccessful.

Regulation 4.15A

101.Regulation 4.15A relevantly provides:

4.15A  Grounds for rejection—trade mark identical etc to trade mark protected under Madrid Protocol

(1) For section 189A of the Act, and subject to subregulations (3) and (5), 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 protected international trade mark; or

(ii) a trade mark in respect of which the Registrar has received notification of an IRDA;

held by another person in respect of similar goods or closely related services; 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 other trade mark in respect of the similar goods or closely related services.

102.In support of this ground of opposition, the Opponent relies on its registrations for the CHOO Word Mark and CHOO Logo for various fashion and fashion accessories in classes 14, 18 and  25 and services in class 35 (‘Opponent’s Registrations’).[59] 

[59] Other registrations were particularised in the SGP but at the hearing, the Opponent relied only on its registrations for CHOO (word and logo).

103.Each of the Opponent’s Registrations is in the name of a person other than the Applicant and has an earlier priority date than the Application. 

104.The Opponent does not argue that the CHOO Word Mark or CHOO Logo (collectively ‘Opponent’s CHOO Marks’) are substantially identical to the Applicant’s Mark.  For completeness, I note that I concur that the marks in question are not substantially identical.  On a side by side comparison of the marks, the additional element ‘La La’ in the Trade Mark creates an obvious difference such that there is not a total impression of resemblance.

105.Turning to the question of deceptive similarity, s 10 provides that a trade mark is deceptively similar to another trade mark if it so nearly resembles that other mark that it is likely to deceive or cause confusion.   In determining the question of deceptive similarity, I must compare the respective trade marks as wholes,[60] with regard to essential or distinguishing features,[61]  and consider them visually, aurally and contextually, in the context of the relevant surrounding circumstances.[62]  Further as the Full Court of the Federal Court in Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel (‘Combe’) explained:

[60] Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50] (French J) (‘Woolworths’)

[61] Crazy Ron’s Communications v Mobileworld Communications [2004] FCAFC 196, [77]-[88] (Moore, Sackville and Emmett JJ).

[62] New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549, 589 (Gummow J).

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.[63]

[63] [2021] FCAFC 8, [27] (McKerracher, Gleeson and Burley JJ).

106.The reputation of a trade mark or the owner is not relevant.[64]  Ultimately, I must decide whether there is ‘a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source’.[65]

[64] Self Care (n 13), [3], [36] and [50].

[65] Woolworths (n 60), 382 (French J);

107.The Opponent argues that the Applicant’s Mark is deceptively similar to the Opponent’s CHOO Marks as the Applicant’s Mark incorporates the distinctive word/surname CHOO as the first and most memorable element.  This element is likely to be retained and the laudatory words ‘La La’ do not change the impression or meaning of the mark but instead emphasise the distinctive word CHOO.  Consumers who recognize the Applicant’s Mark as a play on the phrase ‘Ooh la la’ will understand the importance of the first element CHOO.  Hence, the Opponent argues consumers who hear or see the Applicant’s Mark used for the Applicant’s Goods would be caused to wonder whether those goods have the same origin or trade source as the similar goods of the Opponent’s CHOO Marks.

108.The Applicant contends that the Trade Mark is visually, aurally and conceptually different from the Opponent’s CHOO Marks in that the Applicant’s Mark is a play on the phrase ‘Ooh la la’ whereas the mark CHOO suggests a surname or the sound of a train.  Moreover, the Applicant submits that CHOO is not as ‘highly distinctive’ as the Opponent claims.  Although CHOO is not a sufficiently common surname to warrant an objection under s 41, the Applicant contends its commonality as a surname means CHOO solus is ‘less likely to be inherently adapted to distinguish any one trader’s goods or services’.  

109.Although the element CHOO is wholly contained in Choo La La, this is not determinative on the question of deceptive similarity.  The marks must be considered as wholes and similarity is not based on only part of a mark.[66]  I consider that the addition of ‘La La’ is significant in that it alters the impression of the Applicant’s Mark as compared to the Opponent’s CHOO Marks.  The clear recollection which consumers are likely to take away is that the Applicant’s Mark is a play on the phrase ‘Ooh la la’ and this recollection is different to that created by the surname CHOO.  The additional element ‘La La’ also changes the Applicant’s mark visually and aurally from the Opponent’s CHOO Marks.  In all the circumstances, I have reasonable doubt that use of the Applicant’s Mark will cause a real tangible danger of confusion to consumers and taking into account the presumption of registrability, I find that the Applicant’s Mark is not deceptively similar to the Opponent’s CHOO Marks.

[66] Starr Partners Pty Ltd v Dev Prem Pty Ltd [2007] FCAFC 42, [22] (Lindgren, Emmett and Finkelstein JJ).

110.Accordingly, the Opponent has not succeeded on the s 44 ground.

Decision on opposition to application 2184103

111.The Opponent has not established a ground of opposition. Accordingly, trade mark number 2184103 may proceed to registration one month from the date of this decision.

112.If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should otherwise be in accordance with the Court’s order or direction.

113.The parties have sought an award of costs. Costs usually follow the event and therefore, I award costs against the Opponent pursuant to s 221 in accordance with the amounts set out in Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

26 June 2024

Annexure A

Trade Marks

Number	Trade Mark	‘Registered Goods and Services'
1383508 (IR 1048272)	Class 14:  Precious metals and their alloys and goods in precious metals or coated therewith; jewellery, costume jewellery, arm cuffs (jewellery), wrist bands (jewellery); key rings (trinkets or fobs); precious stones; horological and chronometric instruments; parts and fittings for the aforesaid goods Class 18:  Leather and imitations of leather, and goods made of these materials; trunks, travelling bags, handbags, purses, wallets, hat boxes, umbrellas, parasols, walking sticks; parts and fittings for the aforesaid goods Class 25:  Clothing, footwear and headgear
1710940 (IR 1257825)	Class 35:  Advertising and marketing services; sales promotion for others; procurement services for others; retail services in relation to luxury goods (not including coffee, tea, beverages, foods, coffee machines or goods for use with food or beverages), lifestyle (not including coffee, tea, beverages, foods, coffee machines or goods for use with food or beverages) and personal products including, soaps, perfumery, fragrances, perfume in solid form, essential oils, body oils, cosmetics, hair lotions, body lotions, foot lotions, nail care preparations, nail varnish, nail polish, nail varnish and polish removing preparations, talcum powder, sunscreen preparations, sun-tanning preparations, pumice stone, emery boards, dentifrices, shoe cream, shoe polish, shoe wax, cleaning and polishing preparations, (including cleaning and polishing preparations for leather, footwear, handbags, sunglasses), candles and wicks for lighting, Christmas tree candles, nightlights (candles), scented candles, grease for shoes, oil for the preservation of leather, small items of metal hardware, buckles, metal name plaques, key rings, key fobs, eyewear, sunglasses, spectacles, sunglasses and spectacles cases and frames, optical frames, pouches adapted to carry sunglasses and spectacles, encoded bank cards, bags made of leather or imitations of leather adapted for electrical apparatus and instruments, electrical apparatus and instruments, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, pre-recorded CDs, CD-ROMs, tapes and discs, protective footwear, goods made of precious metals or coated therewith, jewellery, costume jewellery, arm cuffs (jewellery), wrist bands (jewellery), jewellery made of leather, key rings (trinkets or fobs), key cases, key bags, precious stones, horological and chronometric instruments, printed matter, stationery, photographs, posters, prints, books, magazines, brochures, calendars, catalogues, goods made of leather and imitations of leather, handbags, travelling bags, trunks, purses, wallets, clutch bags, travel wallets, luggage tags, laptop cases, laptop bags, document folders, mobile phone cases all made of leather or imitations of leather, cosmetics bags, vanity bags, pouches, bags and notepad holders, key fobs of leather or imitations of leather incorporating key rings, key cases, card holders made of leather or imitations of leather, business card holders, hat boxes made of leather or imitations of leather, umbrellas, parasols, walking sticks, textile piece goods, towels, bath linen, face towels of textile, napkins or tissues of textile for removing make-up, handkerchiefs of textile, bed linen, bed spreads, mattress covers, pillow cases, quilts, sheets, table linen, table napkins, table runners, table mats, table cloths, travelling rugs, furniture covers, shower curtains, fabric for boots and shoes, lingerie fabric, homeware, cup holders, cup holders made of leather, clothing, footwear, headgear, scarves; advice and assistance in the selection of goods; including, but not limited to, all the aforesaid services provided via the Internet, the world wide web and/or via communications networks
1759615 (IR 1257825)	Class 18:  Goods made of leather and imitations of leather; handbags, travelling bags, trunks, purses, wallets, clutch bags, travel wallets, luggage tags, luggage label holders, cosmetic bags, vanity bags, pouches, carrying cases, attache cases, cases of leather or leather board, vanity cases not fitted and business card cases, bags, leather or imitations of leather cases for keys; leather key holders, key cases, key bags, card cases; card holders, credit card holders, business card cases; document cases; boxes of leather or leather board; hat boxes made of leather or imitations of leather; parasols, umbrellas, walking sticks; clothing for pets, collars and leads for animals; parts and fittings for the aforesaid goods Class 25:  Clothing, footwear and headgear; scarves; gloves, hats, swimming hats; raincoats, hosiery, sashes for wear, wedding dresses
1982345 (IR 1443377)	Class 14:  Precious metals and their alloys; jewellery; jewellery in the nature of jewellery ornaments; jewellery for use on shoes and handbags; jewellery in the nature of clip-on jewellery for use as fashion accessories; costume jewellery; costume jewellery in the nature of jewellery ornaments; costume jewellery for use on shoes and handbags; costume jewellery in the nature of clip-on jewellery for use as fashion accessories; earrings, bracelets, chains, necklaces, clip on jewellery, arm cuffs (jewellery), wrist bands (jewellery); jewellery made of leather; key rings (trinkets or fobs); key fobs; trinkets of metal; key fobs of leather or imitations of leather incorporating key rings; horological and chronometric instruments; watches, bracelets and straps for watches, cases adapted to contain watches; jewellery boxes, presentation boxes for jewellery, boxes of precious metals; tie clips, cufflinks; shoe ornaments and handbag ornaments of precious metal; ornaments (jewellery); key rings; key chains; key holders; parts and fittings for the aforesaid goods. Class 18:  Handbags, travelling bags, weekend bags, trunks, trunks for storing shoes, purses, wallets, clutch bags, travel wallets, luggage tags, luggage label holders, cosmetic bags, make-up bags, vanity bags, vanity cases not fitted, pouches, cases, bags, shoe bags, cloth bags, backpacks, garment bags, beach bags, briefcases, suitcases, attaché cases; cases of leather or leather board; key cases, key bags; card cases; card holders, credit card holders, debit card holders, bank card holders, business card cases; document cases; hat boxes made of leather or imitations of leather; parasols, umbrellas, walking sticks; parts and fittings for the aforesaid goods; laces (leather); leashes; collars and leads for animals; garments and clothing for pets. Class 25:  Clothing, footwear and headgear; scarves; gloves, hats, belts, swimming hats; raincoats, hosiery, sashes for wear, wedding dresses, fur stoles, stoles of imitation fur, fur muffs, muffs of imitation fur, ear muffs, fur hats, hats of imitation fur, fur coats, coats of imitation fur; kaftans; swimwear; underclothing; outerclothing.