Jockey International Inc v Darren Wilkinson

Case •

[2010] ATMO 22

•

17 March 2010

TRADE MARKS ACT 1995

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

Re:Opposition by JOCKEY INTERNATIONAL, INC. to registration of trade mark application 1127359 (25) – THROTTLE JOCKEY - filed in the name of DARREN WILKINSON

Delegate: John Spence
Representation: Opponent: Simon Williams, Solicitor, of Spruson & Ferguson, Patent and Trade Mark Attorneys
Applicant: Pipers, Patent and Trade Mark Attorneys. No appearance at the hearing and no written submissions provided.
Decision: 2010 ATMO 22
Section 52 Opposition – Sections 42(b), 44, 60 and 62A pressed – effect of Amendment Act on Section 60 considered - registration refused under amended Section 60 – the effect of international reputation considered – grounds under Sections 42(b), 44 and 62A rejected - costs awarded in favour of the Opponent.

Background

  1. The company Jockey International, Inc. (“the Opponent”) is recorded as the registered owner or applicant in Australia of a multiplicity of trade marks in Class 25 of the International Classification of Goods and Services which feature the word “JOCKEY” as a component, including Nos. 72033 “JOCKEY”, 78636 “JOCKEY MIDWAYS”, 215425 “JOCKEY ELANCE”, 500212 “JOCKEY SCANTS”, 904687 “JOCKEY Y-GEN”, 916242 “JOCKEY Y-GENERATION”, 1028523 “JOCKEY ALMOST NOTHING”, 1239460 “JOCKEY”AND DEVICE and 1246090 “JOCKEY” AND DEVICE. The earliest of those registrations, being No. 72033, dates from 8 March 1931. Since at least 1947 the “JOCKEY” trade mark has been continuously used in Australia either by the Opponent itself, by its predecessors in title, or by licensees, distributors and authorised users who are permitted or appointed by the Opponent for that purpose.

  2. Overseas, the “JOCKEY” trade mark was first adopted and used in the U.S.A. in 1929 and by a predecessor in title of the Opponent. The company, formerly known as S.T. Cooper and Sons and later as Coopers Underwear Company, was reincorporated on 1 May 1972 and since then it has operated under the new (and still current) trading style Jockey International, Inc. .

  3. On 2 August 2006 an application for registration of the trade mark “THROTTLE JOCKEY” (as a word mark) was filed under No. 1127359 in Class 25 and in respect of “T-shirts, caps, beanies, head bands, sweat bands” in the name of Darren James Wilkinson (“the Applicant”). Upon examination this application was accepted for possible registration on 31 October 2006 and the advertisement of acceptance in respect of same took place in the Australian Official Journal of Trade Marks dated 7 December 2006.

  4. Pursuant to the provisions of Section 52 of the Trade Marks Act 1995 (“the Act”), on 7 March 2007 the Opponent filed a notice of opposition to the granting of registration in respect of the Applicant’s trade mark “THROTTLE JOCKEY”.

  5. The Opponent duly filed and served its evidence in support of the opposition proceedings on 7 September 2007. That evidence in support comprises the Statutory Declaration of Mark Steven Jaegar made on 20 August 2007 (“the first Jaegar Declaration”) together with the supplementary Declaration of Mr. Jaegar made on 27 August 2007 (“the second Jaegar Declaration”). After the obtaining of appropriate extensions of time within which to do so, on 4 June 2008 the Applicant filed its evidence in answer comprising the Statutory Declaration of Darren Wilkinson made on 2 June 2008 (“the Wilkinson Declaration”). Evidence in reply, comprising the Statutory Declaration of Simon Dudley Williams made on 7 July 2008 (“the Williams Declaration”) was filed on 8 July 2008.

  6. The matter came before me, as a delegate of the Registrar of Trade Marks, for a hearing in Sydney on 16 October 2008. At that time Mr. Simon Williams, Solicitor, of Spruson & Ferguson, Patent and Trade Mark Attorneys, represented the Opponent. There was no appearance at the hearing by or on behalf of the Applicant.

  7. At the hearing, a detailed written document entitled “Opponent’s Outline of Submissions” (“the written Submissions”) together with a copy of supporting materials was handed up by Mr. Williams. Those written Submissions and the relevant issues raised by them were further addressed and clarified in the course of the oral submissions which were made by Mr. Williams at the hearing. There were no submissions, written or oral, before me on behalf of the Applicant.

    Grounds of Opposition

  8. The Opponent nominated ten separate grounds of opposition involving nine different sections of the Act. However, both in its written Submissions and at the hearing, the Opponent indicated that it would be relying only on four of the grounds as set out in the notice of opposition and relating to Sections 42(b), 44, 60 and 62A of the Act. The remaining grounds as set out in the notice of opposition (that is, pertaining to Sections 41(2), 43, 58, 59 and 62) were not pressed or pursued and no submissions were put forward in respect of same. For the sake of completeness, I find that none of those grounds has been established and I now dismiss the opposition so far as they are concerned. The only issues which then remain for determination relate respectively to each of the four individual sections of the Act on which the Opponent continues to rely and which I propose to consider separately in due course.

    Preliminary Matters

  9. There are several issues of an underlying and fundamental nature which can be dealt with on a preliminary footing, namely:

    (a)       Presumption of registrability

  10. By virtue of Section 33 (1) of the Act, the Registrar must accept an application unless satisfied that there are grounds for rejecting it. The Registrar should approach the question of registration with the presumption of registrability in mind (per Justice Lander in Kowa Co. Limited v. N. V. Organon (2005) 66 IPR 131 at para. 139). In Blount v. Registrar of Trade Marks (1998) 40 IPR 498 at 503, Justice Branson observed that Section 33 “has, in effect, altered the burden of proof generally so far as acceptance of applications is concerned” and that the terms of Section 33 (1) were presumably intended to reflect the introduction of a presumption of registrability (that is, a presumption in favour of the Applicant).

    (b)       Onus

  11. In Opposition proceedings, the onus is on an opponent to establish the grounds of opposition upon which reliance is placed (Section 55 of the Act; Medley Distilling Company v. Croakers Gully (Australia) Pty. Limited (2000) 53 IPR 430; Kowa Co Limited v. NV Organon (2005) 66 IPR 131 at paragraph 141; Pfizer Products Inc. v. Karam (2006) 70 IPR 599 at paragraph 26). It is only necessary and sufficient for one ground to be made out in order for an opponent to succeed in Opposition proceedings (Section 57 of the Act).

    (c)        Standard of Proof

  12. There continues to remain a live issue as to how the onus is to be judged. The currently-prevailing view (as expressed by Justice Gyles in Pfizer Products Inc. v. Karam (2006) 70 IPR 599) is that the ordinary test of the civil standard of proof (that is, on the balance of probabilities) should be applied. Submissions to that effect were accepted in the decision of Justice Jagot in Kimberly-Clark Worldwide, Inc. v. Goulimis (2008) AIPC 92-307 (but in the absence of argument to the contrary). More recently, the finding of Justice Gyles has been discussed with approval by Justice Sundberg in Chocolaterie Guylian NV v. Registrar of Trade Marks  [2009] FCA 891. The view which is presently accepted by delegates of the Registrar is that there is no special or high standard of proof which is imposed on an opponent.

    (d)       Relevant Time

  13. In relation to each of the four grounds of opposition which presently arise for determination, and those corresponding Sections to which they relate (but not extending to include certain other provisions of the Act, notably Section 59), the time at which a ground of opposition must be established is the date of filing of the application for registration which is being opposed, that date being the priority date of the said application (see Sections 12 and 72 of the Act and Southern Cross Refrigerating Company v. Toowoomba Foundry Pty. Limited (1954) 91 CLR 592 at 595). In this instance, the relevant priority date (and the date at which each ground of opposition must be made out) is 2 August 2006 being the filing date of the “THROTTLE JOCKEY” application No. 1127359.

    Reasons

  14. By virtue of Section 55 of the Act, I am required to decide whether to refuse to register the “THROTTLE JOCKEY” application or whether to register that mark having regard to the extent (if any) to which any ground of opposition has been established. In so doing, I propose to consider separately each of the four grounds of opposition which are maintained by the Opponent and in the numerical order in which those grounds appear in the Act.

    Section 42(b)

  15. This section of the Act provides that an application for registration of a trade mark must be rejected if its use would be contrary to law. The expression “contrary to law’ is not defined in the Act,[1] but it is clearly established that the Section 42(b) provision extends to include contraventions of the Trade Practices Act 1974 (Cth.) and specifically the provisions of Section 52 (prohibiting conduct that is misleading or deceptive) and Section 53 (relating to false representations of sponsorship, affiliation or approval) together with the corresponding provisions of the Fair Trading Acts in each State or Territory as well as the common law tort of passing-off. With the exception of Sections 52 and 53 of the Trade Practices Act, the Opponent specifically relies on each of these areas of the law in alleging a contravention of Section 42(b) by the Applicant. Further, the Opponent argues that use of the trade mark “THROTTLE JOCKEY” by the Applicant would constitute infringement of one or more of the Applicant’s “JOCKEY” trade mark registrations and thus be contrary to law by virtue of being in breach of Section 120 of the Act. In relation to the alleged breaches of the fair trading legislation, the point should be made that whereas the Trade Practices Act is federal legislation which applies throughout Australia, the fair trading legislation is State law and a separate Fair Trading Act applies in each State and Territory of Australia. When Mr. Williams submits on behalf of the Opponent that use of the “THROTTLE JOCKEY” trade mark “would contravene Section 42 and 44 of the Fair Trading Act”, presumably he means to refer to the Fair Trading Act 1987 (N.S.W.). I make the further presumption that by this reference Mr. Williams intends to include the corresponding fair trading provisions in each State and Territory.[2]

    Misleading or deceptive conduct

    [1] The scope and extent of the operation of this provision in proceedings before the Registrar have been considered in Advantage-Rent-A-Car Inc. v. Advantage Car Rental Pty. Limited (No.2) (2001) AIPC 91-724 where Justice Madgwick determined that “contrary to law” means “contrary to all laws” and that the Registrar may be required to “look at questions of law outside his or her expertise”.

    [2] The comparative provisions in each State and Territory are Sections 56 and 58 of the Fair Trading Act 1987 (South Australia), Sections 10 and 12 of the Fair Trading Act 1987 (W.A.),  Sections 38 and 40 of the Fair Trading Act 1989 (Qld.), Sections 14 and 15 of the Fair Trading Act 1990 (Tasmania), Sections 42 and 44 of the Consumer Affairs and  Fair Trading Act 1990 (N.T.), Sections 12 and 14 of the Fair Trading Act 1992 (A.C.T.) and Sections 9 and 12 of the Fair Trading Act 1999 (Victoria).

  16. In relation to Sections 42 and 44 of the Fair Trading Act 1987 (N.S.W.) together with the corresponding provisions of the fair trading statutes of other States and Territories and Sections 52 and 53 of the Trade Practices Act, the extent to which the notion of “reputation” is relevant and the similarities and differences between misleading or deceptive conduct and an action in passing-off have been the subject of much debate. In this regard, it has been pointed out on a number of occasions (for example, by Justice Stephen in Hornsby Building Information Centre Pty Limited v. Sydney Building Information Centre Pty Limited (1978) 140 CLR 216 at 227) that while some of the principles relevant to passing-off may be applicable in proceedings instituted under Section 52, the statutory background to that Section differs greatly from that relevant to the law of passing-off, and the purposes and interests which both bodies of law primarily protect are said to be “contrasting”. Notwithstanding the differences, however, there is generally regarded as existing some element of overlap between a claim under Section 52 and a passing-off case (such as this present matter).

  17. In Cadbury Schweppes Pty Limited v. Darrell Lea Chocolate Shops Pty Limited (2007) 72 IPR 261, in the Full Federal Court, Tamberlin J stated (at para39):

    There is an overlap between causes of action arising under Pt V of the Trade Practices Act and the common law tort of passing off. However, the causes of action have distinct origins and the purposes and interests that both bodies of law primarily protect are contrasting. Passing off protects a right of property in business or goodwill whereas Pt V is concerned with consumer protection. Part V is not restricted by common law principles relating to passing off and provides wider protection than passing off. Whether or not there is the requirement of some exclusive reputation as an element in the common law tort of passing off, there is no such requirement in relation to Pt V of the Trade Practices Act. The question is not whether an applicant has shown a sufficient reputation in a particular get-up or name. The question is whether the use of the particular get-up or name by an alleged wrongdoer in relation to his product is likely to mislead or deceive persons familiar with the claimant’s product to believe that the two products are associated, having regard to the state of knowledge of consumers in Australia of the claimant’s product.

  1. In that case, their Honours indicated obiter that whether or not there was a requirement for some exclusive reputation as an element in the common law tort of passing-off, Part V of the Trade Practices Act did not include such a requirement. Under that Act, the question is whether the use of the particular get-up or name by an alleged wrongdoer in relation to its product is likely to mislead or deceive persons familiar with the claimant’s product to believe that the two products are associated, having regard to the state of knowledge of consumers in Australia of the claimant’s product. For a contravention of Section 52 to occur, the defendant must make a false representation that its goods or services are the plaintiff’s goods or services or are associated in some way with the plaintiff.  The focus of Section 52 is on the misleading of others, rather than upon an injury to a competitor. In Hansen Beverage Company v. Bickfords(Australia) Pty Limited [2008] FCAFC 181 (on appeal), Justice Tamberlin further observed (at paragraph 46):

    There is no foundation in the language of s52 of the TPA to require that a reputation exist among any particular class or group of persons (particularly as defined by advertising objectives) before a breach of that provision can be made out. The provision is designed to regulate conduct which can be characterised as misleading and to protect consumers. In our view, the language of the section and its purpose do not require the Court to select any particular group as targeted by advertisers when assessing whether a breach has occurred. The fact that certain pieces or strategies of advertising may target a particular class of people as potential customers of the relevant product does not justify the conclusion that a significant number of persons in that class must be shown to be aware of the reputation before a claim under s52 is made out. The question which must be answered can properly be framed as being whether a not insignificant number of persons in the Australian community, in fact or by inference, have been misled or are likely to be misled.

    His Honour was supported in this regard by Justice Siopsis (at para 73).

  2. It is clear that in establishing a likelihood of misleading or deceptive conduct something more is required than the possibility that instances of deception or confusion might be said to occur. The relevant test is said to be stricter than that which would be applicable in relation to Section 60 of the Trade Marks Act. In Parkdale Custom Built Furniture Pty. Limited v. Puxu Pty. Limited (1982) 149 CLR 191, Chief Justice Gibbs stated:

    In McWilliams Wines Pty. Limited v. McDonald’sSystem of Australia Pty. Limited (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty. Limited (1954) 91 CLR 592, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.

  3. That reasoning has been taken up by Justice French in Registrar of Trade Marks v. Woolworths Limited (1999) 45 IPR 411 at 427 (para. 47) where he said:

    The trade mark law concept of confusion in the sense of mere wonderment as to common origin or connection has little part to play in the consumer protection statutes.

    In Red Hat Inc. v. Mary-Ann Martinek (2002) 56 IPR 292 Hearing Officer Purvis-Smith observed:

    Mere wonderment does not necessarily rise to the level required to satisfy S. 42(b)

  4. So, assertions that use of a trade mark by persons other than the Opponent might be misleading or deceptive are required to be supported by evidence, and that evidence must go beyond establishing “mere wonderment”. In this instance, the evidence of the Opponent does have shortcomings. In particular, while there is substantial evidence on the part of the Opponent as the parent company, there is no evidence by way of corroboration from any Australian licensee or authorised user. No Licensing Agreement is exhibited. The assertion of use by distributors and licensees is unsubstantiated. More importantly, there is no evidence from consumers or from within the trade, so that the public perception of the “THROTTLE JOCKEY” trade mark is not addressed. There is no evidence before me as to the likelihood that members of the public would be misled or deceived, nor is there evidence that establishes any incidents of misleading or deceptive conduct having occurred or any conduct on the part of the Applicant which satisfies the requirements of Sections 42 or 44 of the Fair Trading Act.

  5. Having regard to the respective trade marks and the inherent nature of same, it is apparent to me that there is a significant element of difference between them and a distinction to be drawn so that the prospect of consumers being misled or deceived as the result of use by the Applicant of the “THROTTLE JOCKEY” trade mark is by no means certain or established. In particular, the inclusion in the Applicant’s mark of the qualifying word “THROTTLE” (when no equivalent appears in the Opponent’s “JOCKEY” mark) at the very least serves to give cause for doubt or uncertainty in this regard. To my mind, the impressions which are created and conveyed by the respective expressions “THROTTLE JOCKEY” and “JOCKEY” are significantly different. In its particular combination form, the Applicant’s expression “THROTTLE JOCKEY” might well be said to be adequately differentiated from the “JOCKEY” trade mark of the Opponent. Certainly I do not think it likely that, upon encountering the “THROTTLE JOCKEY” trade mark, one could draw the inference that that expression has an association with the “JOCKEY” mark or that it necessarily serves to indicate an affiliation with or the approval of the Opponent. At the very least, arising from those differences of appearance between the respective marks, there is room for the existence of an element of doubt. Even allowing for the Opponent’s reputation in the “JOCKEY” name, I do not accept that the Applicant’s use of the expression “THROTTLE JOCKEY” would result in a situation where consumers would be likely to be misled or deceived. There is no evidence before me which establishes such a situation.

  1. In the decision of Kimberly-Clark Worldwide, Inc. v. Goulimis (2008) AIPC 92-307 Justice Jagot reached the finding (at paras. 47-8) that, in the face of the opponent’s “HUGGIES” trade mark, the “HUGGIE” MUMMY mark of the applicant did fall within the scope of Section 42(b). That conclusion relied on the finding by his Honour that the essential feature of the application is the word “HUGGIE” and that the applicant’s “HUGGIE” MUMMY mark would be likely to cause consumers in the relevant market to wonder whether the opponent is the source of those services which are provided by the applicant. From that finding, Justice Jagot was able to accept that use of the applicant’s “HUGGIE” MUMMY mark would be likely to mislead and deceive consumers in relation to the supply of the nominated goods. He observed that:

    . . . the circumstances described above mean that some consumers confronted by the “HUGGIE” MUMMY mark in the course of the respondent’s authorised use will be likely to identify the opponent as the source of the goods or think that there is an affiliation between the opponent and the respondent’s services.

    In the opinion of his Honour, that conclusion was sufficient to satisfy the requirements of Section 42(b).

  2. In relation to the Section 42(b) issue, I would distinguish the “HUGGIE” MUMMY case from the present situation. The finding in that case is restricted to its particular facts, and it seems to me that the same reasoning does not apply in relation to the “THROTTLE JOCKEY” trade mark. In particular, the respective expressions “THROTTLE JOCKEY” and “JOCKEY” are much more clearly differentiated and readily distinguishable both visually and phonetically than the corresponding “HUGGIE” MUMMY and “HUGGIES” trade marks. While in that case the first word “HUGGIE” is the essential feature and the component which directly links to the opponent’s “HUGGIES” mark, in the present instance the inclusion of the “THROTTLE” component (rather than the common element “JOCKEY” appearing within the mark) serves to distinguish or differentiate the respective marks. Moreover the composite expression “THROTTLE JOCKEY” when considered as a whole is susceptible of a meaning or significance which, whatever that meaning might be, is different from the meaning of the word “JOCKEY”. For these reasons, I consider that the “HUGGIE” MUMMY decision is of limited assistance or application in relation to the Section 42(b) ground.

  3. In relation to this matter generally, my finding is that the ground of opposition relating to the submission that use of the Applicant’s trade mark would be contrary to Sections 42 and 44 of the Fair Trading Act 1987 (N.S.W.) (or its equivalents) is not made out. Simply stated, those provisions would be contravened if, in offering its goods, the Applicant were to represent either directly or indirectly an association between itself and the Opponent when such representation is false. The evidence does not show that the Applicant has engaged in any such conduct or that any such misrepresentation has been made. Nor am I satisfied that adequate evidence has been provided to establish, either by fact or by inference, that a not insignificant number of persons in the Australian community has been misled or deceived or is likely to be misled or deceived.

    Passing-off

26. In relation to the availability of passing-off as a means for satisfying the ground of opposition under Section 42(b), there is a preliminary difficulty which arises for the Opponent. In Reckitt & Colman Products Limited v. Borden Inc. (1990) 17 IPR 1, Lord Oliver set out the elements of passing-off in the form of the so-called “classical trinity”, namely:

(i)        reputation (in the relevant mark);

(ii)       misrepresentation (leading to deception);

and

(iii)      damage to goodwill (or the likelihood thereof).

Accordingly, it is well-established that in order for passing-off to occur there must be present the elements of misrepresentation and damage. As expressed by Lord Parker in A. G. Spalding & Bros. v. A.W. Gamage Limited (1915) 32 RPC 273 at 284:

The basis of a passing-off action being a false representation by the defendant, it must be proved in each case as a fact that the false representation was made.

In the present instance, there is no evidence of any actual use of the “THROTTLE JOCKEY” trade mark by the Applicant having occurred. On a technical basis alone and without needing to give consideration as to whether the use of that expression as a trade mark contravenes the common law rights of the Opponent, it cannot be maintained or substantiated that there has occurred any misrepresentation in the material sense or that any damage has to date been suffered by the Opponent. In this instance, there is no activity or conduct on the part of the Applicant which threatens the goodwill or reputation of the Opponent, which contravenes the Opponent’s common law rights, or which invokes the operation of the law of passing-off. For that reason, relief pursuant to the tort of passing-off is not possible because the fundamental threshold requirements of that action are not able to be satisfied or made out.

  1. However the matter does not end there. Section 42(b) of the Act states that an application must be rejected if its use would be contrary to law (namely, in this instance, the law of passing-off). At least on one interpretation, Section 42(b) requires us to have regard to the notional use of the trade mark in question, that is, to assume that the relevant application is in actual use. Even on that basis, it seems to me that the action of passing-off would be likely to fail in this instance. As I indicate elsewhere in this decision (at the preceding paragraph 24 and the following paragraphs 34 to 39), there are clear points of differentiation which exist between the present “THROTTLE JOCKEY’ application and the Opponent’s trade mark “JOCKEY”. It by no means follows that a misrepresentation could be said to be likely to occur as the result of use of the expression “THROTTLE JOCKEY” by the Applicant. In this regard there exists a sufficient element of doubt or uncertainty that the expression “THROTTLE JOCKEY’ would be seen by ordinary members of the public as being something different and distinct from the “JOCKEY” trade mark of the Opponent (and thereby as not being associated with the Opponent) as to cast doubt on the prospect that an action in passing-off, if it were to be commenced on the part of the Opponent, would be successful. I do not accept that ordinary members of the public, on seeing use of the expression “THROTTLE JOCKEY” by the Applicant, would necessarily presume that mark to indicate a connection with the Opponent or would be deceived by such use. Rather, those points of difference which exist between the respective marks would serve to render remote the likelihood of confusion. In the words of Justice Parker (as he then was) in Burberrys v. Cording (1909) 26 RPC 693 at 704:

    . . . But whatever be the nature or history of the word or name, in whatever way it has been used, either by the person seeking the injunction or by others, it is necessary where there has been no actual deception, to establish at least a reasonable probability of deception.

    In my view, that probability is not adequately made out in the present instance. So, the argument that the “THROTTLE JOCKEY” trade mark fails under Section 42(b) because the use of that mark by the Applicant would constitute passing-off is unsuccessful.

    Infringement

  2. The Opponent further raises the issue of trade mark infringement pursuant to Section 120 of the Act. In this regard, I note that there is no evidence before me of any use to date of the “THROTTLE JOCKEY” trade mark by the Applicant having taken place, so that there is no possibility of actual infringement having occurred as at the present time. As to what may or may not happen in the future, the position is entirely conjectural. However, as with the issue of passing-off, Section 42(b) requires me to consider use in a notional sense, that is, to assume that use has occurred and to determine whether such use would constitute infringement. In this regard, I am aware that there are defences which would be potentially available to the Applicant in meeting an action for infringement. Those defences have not been raised, argued or even considered, and their prospects have not been assessed in the conduct of this matter so that I am in the position where I am not able to make any assumption or draw any inference in relation to same. At the very least, I am able to state that there exists an element of doubt that an action for infringement would be successful for the Opponent and as against the Applicant. The existence of that element of uncertainty is sufficient to cause this contention to fail and to mean that the requirements of Section 42(b) are not met or satisfied in this instance by the Opponent’s reliance on the infringement provisions. On the basis of those materials which are before me, I am unwilling to presume that use of the Applicant’s trade mark would amount to infringement

  3. In relation to the Section 42(b) ground of opposition generally, while I am obliged to take into account those potential breaches of the law which have been raised by the Opponent in this instance (namely, misleading or deceptive conduct, passing-off and trade mark infringement), this ground can only be made out where I am satisfied that the law would be breached. It is not sufficient to establish that the law might or may be breached. In the present instance, the evidence which the Opponent has placed before me and the submissions which have been made do not satisfy me that the law would be contravened in the manner as required by Section 42(b). In particular, I am not convinced, despite the contentions which have been put by the Opponent, that the mere inclusion and appearance of the word “JOCKEY” as a component or element in the Applicant’s “THROTTLE JOCKEY” trade mark is sufficient to establish the necessary contraventions of the law on which the Opponent seeks to rely. In any event, there exists ample precedent (in the form of decided cases) from which I am able to derive support for my finding in relation to this matter.[3] I will return in more detail to this aspect (that is, the effect of the appearance of the word “JOCKEY” as a component in the Applicant’s mark) when considering the Section 44 ground, where the same issues arise in another context.

    [3] In this regard I draw attention to Shanahan’s Australian Law of Trade Marks and Passing Off, 4th edition, 2008, at pp. 364 to 367 inclusive. I refer to the decisions of Australian Olympic Committee Inc. v. Courier Luggage Pty. Limited (2002) AIPC 91-806 and Subafilms Limited v. Tenancy Management Pty. Limited (2006) 68 IPR 196 as being particularly apt.

  4. Having regard to the relevant facts and circumstances of this matter (at least so far as they are presently understood by me), and whether or not it might be open to me to postulate that the Applicant’s conduct in seeking to register the “THROTTLE JOCKEY” trade mark could be contrary to law, I am unable to arrive at the end result that there is conduct which would be so contrary. On balance, I am not satisfied that the totality of the evidence is sufficient to establish that the relevant laws would be contravened. Accordingly, in this instance I find that the ground of opposition pursuant to Section 42(b) has failed to be established and is not made out.

    Section 44

  5. The relevant part of this provision is worded as follows:

    44Identical etc. trade marks

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

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

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

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

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

    The expression “deceptively similar” appearing in Section 44 is defined in Section 10 of the Act as follows:

    10Definition of deceptively similar

    For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

    The expression “similar goods” appearing in Section 44 is defined in Section 14 of the Act as follows:

    14Definition of similar goods and similar services

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

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

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

    There is no definition in the Act of the expression “substantially identical”.

  6. The separate elements of this Section, all of which must be satisfied and met by the Opponent if it is to succeed in establishing this ground of opposition, are as follows:

    ·    there must be a trade mark which is substantially identical with or deceptively similar to the applicant’s trade mark;

    ·    that trade mark must be a registration or an application for registration;

    ·    that trade mark must be in the name of a person other than the Applicant;

    ·    the relevant goods or services of the respective marks must be similar;

    and

    ·    the relevant date at which these circumstances must be established is the priority date of the application (that is, in this instance 2 August 2006).

    I accept that as at the priority date the Opponent held registrations in respect of the expression “JOCKEY” or in relation to a family of marks which included that expression. Further, I accept that those trade marks are registered in respect of goods which are similar in nature to the specification of goods as stated in the “THROTTLE JOCKEY” application and in this regard I concur with the arguments which have been put to me by the Opponent. The issue which remains for determination is whether that mark is substantially identical with or deceptively similar to the expression “JOCKEY” as it is registered by the Opponent.

    “Substantially identical with”

  7. At the Hearing, the Opponent maintained its submission that the respective trade marks are substantially identical. In support of this view, the Opponent relied upon the decision of Seven-Up Company v. Bubble Up Company Inc. (1987) 9 IPR 259. In that case, registration of the expression “BUBBLE UP” was refused because it contained the component “UP” as a prominent and distinct feature when that expression was the subject of registration by the appellant (opponent). However I am of the view that that authority is readily able to be distinguished from the matter which is presently before me. In particular, I note that the law has changed significantly since that decision was issued. The “BUBBLE UP” case was decided under the provisions of the previous (and now superseded) Trade Marks Act 1955 so that the presumption of registrability did not apply (see page 266 of that decision at lines 5-11). Moreover that decision related to Sections 28 and 33 of the former Act, and no exact equivalent to the present Section 44 was before the Judge. The relevant considerations in that case were different, namely whether the application in question was likely to deceive or cause confusion and whether the expression “BUBBLE UP” was distinctive or capable of becoming distinctive. In addition the decision of Justice King is restricted to the particular facts and circumstances of that matter. The “BUBBLE UP” case is relevant in relation to the making of a comparison of the respective marks and in considering the potential significance of overseas use and reputation. However its ultimate finding is placed in considerable doubt given the current state of the law and in particular the line of authorities which have superseded it.

  8. In considering the meaning and application of the expression “substantially identical with” as it appears in Section 44(1)(a) of the Act, reliance is usually placed upon the oft-quoted test as stated by Justice Windeyer in Shell Company (Australia) Limited v. Esso Standard Oil (Australia) Limited (1961) 109 CLR 407 at para.12, namely:

    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.

    Applying that test to the present situation and conducting an appropriate side by side comparison between the respective expressions “JOCKEY” and “THROTTLE JOCKEY”, I find there to be significant differences between the two marks. In particular I consider that the dominant part or essential feature of the “THROTTLE JOCKEY” trade mark is the “THROTTLE” component which has no equivalent in any of the trade marks of the opponent. The only element in common between the two marks is the word “JOCKEY” which is an ordinary expression and an established part of the English language. However, in the context of the Applicant’s trade mark, that expression is subsumed in the overall totality so that it is the composite expression “THROTTLE JOCKEY” when considered as a whole which occupies one’s attention and to which appropriate weight is given. The mere inclusion of the common component “JOCKEY” and its appearance as one part or element in the composite expression “THROTTLE JOCKEY” is not sufficient, in my view, to satisfy the test of the “substantially identical” requirement. The present application “THROTTLE JOCKEY” indicates something distinct from the word “JOCKEY” as it appears in the trade marks of the Opponent, and that expression conveys a different impression entirely. For the reasons expressed above, I find that the present application is not “substantially identical” with any of the existing registrations on which the Opponent seeks to rely.

    “Deceptively similar to”

  9. Turning to a consideration of the expression “deceptively similar to”, a very different approach is taken to the interpretation of the words and a different comparison must be made from that which is necessary when substantial identity is in question. The expression “deceptively similar to” has been the subject of considerable and extensive judicial deliberation. The relevant principles which are applicable are familiar and well-established.[4] The most frequently-quoted judicial pronouncement in this regard is found in the following words of Justices Dixon and McTiernan in Australian Woollen Mills Limited v. F.S. Walton & Co. Limited (1937) 58 C.L.R. 641 at 658, namely:

    In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the minds of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their  desire to have the goods, their similarities both of sound and meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. . . .

    The test of whether a trade mark application is “deceptively similar” to a registered trade mark within the meaning of Sections 10 and 44(1) of the Act is a test concerned with the inherent qualities of the two marks seen in the light of the proper uses that may be made of them. Applying and paraphrasing the statement of Justice Evershed in Re Smith Hayden and Company Limited’s Application (1946) 63 RPC 97 at 101 but giving due regard to the presumption of registrability, the relevant test under Section 44 can be expressed as follows:

    Assuming use by the proprietor of the cited trade mark in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of [goods and] services covered by the proposed registration” (per Justice Branson in Woolworths, op. cit., at paragraph 88).

    In stating above the summary of the relevant general principles, I do not consider myself to be greatly at odds with the submissions made by the Opponent.

    [4] Those principles are to be found enunciated in the collective thoughts and pronouncements of the following authorities, namely Pianotist Company’s Application (1906) 23 RPC 774 at 777 (per Justice Parker); Australian Woollen Mills Limited v. F.S. Walton & Company Limited (1937) 58 CLR 641 at 658 (per Justices Dixon and McTiernan); Southern Cross Refrigerating Company v. Toowoomba Foundry Pty. Limited (1954) 91 CLR 592 at 594-5 and 607; Re Smith Hayden & Company’s Application (1946) 63 RPC 97 at 101 (per Justice Evershed); Cooper Engineering Company Pty. Limited v. Sigmund Pumps Limited (1952) 86 CLR 536 at 538; Berlei Hestia Industries Limited v. The Bali Company Inc. (19730 129 CLR 353 at 362 (per Justice Mason); and Registrar of Trade Marks v. Woolworths Limited (1999) AIPC 91-499 at 36,697-8 (per Justice French).

    Comparison of the Marks

  1. There exists a multitude of decided cases and authorities in which the issue of deceptive similarity is considered and which provide illustrative examples of actual instances where potentially conflicting trade marks have been ruled to be either too similar or sufficiently different. Those cases line up some on one side of the question and some on the other side. Generally, their findings are limited to the particular facts and circumstances in each instance and they are often not of universal application or value as statements of relevant or binding principle. The drawing of distinctions between those cases and the relevant trade marks can be confusing and difficult. Nonetheless a reference to the decided cases is often useful. In relation to the relevance of such cases and the value of a comparison between them, Lord Justice Luxmoore made observations in Rysta Limited’s Application (1943) 60 RPC 87 at 108 where he said:

    It is not possible to discover from the decided cases any standard as to the amount of resemblance which will suffice to cause the rejection of a mark; as Lord Cranworth said in Seixo v. Provezende (1866) 1 Ch. App. 192 ‘What degree of resemblance is necessary . . . is from the nature of things incapable of definition a priori’, but it is instructive to consider the list of contrasted words set out on pages 300 to 304 of Kerly on Trade Marks (6th edition), and the extra list in Bray and Underhay’s Trade Marks Act, 1938, page 61.

  2. In terms of modern equivalents, I make reference to the comparison of marks as set out in Shanahan’s Australian Law of Trade Marks and Passing Off (2008) 4th edition, at page 266, footnote 120, pages 268-9, footnote 135, and pages 955-982, Appendix; Australian Industrial and Intellectual Property, CCH (loose-leaf service), Volume 1, at pages 28,235 to 28,254; and Kerly’s Law of Trade Marks (2005) 14th edition, Appendix 31 at pages 1268-1287. Of the extensive range and dichotomy of decided cases which are available, I find it particularly apposite and helpful in this instance to draw on the decisions of Harrods Limited’s Application (1935) 52 RPC 65 (“HYDE PARK” and “PARK DRIVE”), Enoch’s Application (1947) 64 RPC 119 (“VIVICILLIN” and “CYLLIN”) and Conde Nast Publications Pty. Limited v. Taylor (1998) 41 IPR 505 (“EUROVOGUE” and “VOGUE”) as being analogous and relevant to the matter which is presently before me. Having regard to the present matter, it seems to me that the mere possession of the commonly-shared element “JOCKEY” in the trade mark “THROTTLE JOCKEY” is not of itself enough and that there must be established something more before the ground under Section 44 is made out.

  3. In the decision of C.A. Henschke & Company v. Rosemount Estates Pty. Limited (2000) IPR 42, an infringement case, it is observed (at para. 44) that essentially what is required is a comparison of the respective marks in order to ascertain the impression based on recollection (which may be imperfect) that persons of ordinary intelligence and memory would have. When such a comparison is carried out in relation to this matter the following observations come to mind, namely:

    (i)The Applicant’s trade mark “THROTTLE JOCKEY” consists of two distinct components or parts whereas the trade mark of the Opponent essentially comprises the single word “JOCKEY”.

    (ii)While it is comprised of two words, the particular combination “THROTTLE JOCKEY” is one concept and not two, and it has one meaning. It is unusual and striking and a clever and original use of the English language. As such it is an expression which stands out and which is more likely to be distinguishable from other uses of the word “JOCKEY”.

    (iii)It is well-established that, when conducting a comparison of the relevant trade marks, due weight and significance should be attached to the first part of the mark and that the end part of the mark should carry less weight (see London Lubricants (1920) Application (1925) 42 RPC 264 and Enoch’s Application (1947) 64 RPC 119). The first-occurring element of the Applicant’s trade mark (being the word “THROTTLE”) has no equivalent or corresponding component in the “JOCKEY” trade mark or indeed no close parallel in the family of marks owned by the Opponent.

    (iv)The component “THROTTLE” is the dominant part of the Applicant’s mark. The weight and the emphasis falls on that part of the mark. In this regard I disagree with the submission of the Opponent that the “JOCKEY” element is the essential feature of the mark.

    (v)There is a clear notional difference (that is, a difference at the level of meaning) between the respective marks. The word “JOCKEY” is an ordinary English expression with a common, accepted and established dictionary meaning. In contrast, the expression “THROTTLE JOCKEY’ has no established meaning and it is not found as an entry in dictionaries.

    (vi)The expression “THROTTLE JOCKEY” operates at the level of metaphoric utterance rather than in a literal sense, and its meaning as a totality or unitary expression is something more than the sum of its individual parts. So, a “THROTTLE JOCKEY” is one who “rides” the accelerator (or throttle), and notably it denotes the user of a motorcycle or motor vehicle. The single word “JOCKEY” does not carry that significance or meaning. The connotation and association of the expression “THROTTLE JOCKEY” is markedly different to the single word “JOCKEY”. Whatever  the precise meaning of that expression might be, it is clear and self-evident that a “THROTTLE JOCKEY” is something very different to a jockey.

    (vii)There is a difference as to the origin and derivation of the respective expressions. By its own admission, the Opponent acknowledges that its use of the “JOCKEY” mark was derived historically from the expression “jock strap” (or athletic supporter) and not from the word denoting the rider of a horse. The “THROTTLE JOCKEY” mark is of an entirely different nature and origin.

    (viii)Due consideration must be given to the “THROTTLE JOCKEY” mark when considered as a whole. In that regard, it would be wrong merely to dissect the mark into each of the individual elements or components of which the mark is comprised and then to place undue weight or emphasis on one of those elements in isolation. There are other established expressions (such as “Disk Jockey”, “Desk Jockey” and “Space Jockey”) which provide examples of use of the word “JOCKEY” in combination form and in a similar fashion to the Applicant’s mark.

    (ix)There is no logical nexus or normal association between the ordinary words “throttle” and “jockey”. In the Applicant’s “THROTTLE JOCKEY” trade mark, the component “JOCKEY” is subsumed in the totality and the impression that it conveys is qualified by the effect of the accompanying word “THROTTLE”.

    (x)In the present instance, the “THROTTLE JOCKEY” trade mark makes a strong impression which enables it to stand out in its own right from any direct association with the Opponent’s “JOCKEY” trade mark that may be contended. The mere inclusion and appearance of the shared element “JOCKEY” within the Applicant’s trade mark is not enough to render that mark deceptively similar to the Opponent’s marks.

  4. In short, after comparing the respective trade marks, I reach the conclusion that the Applicant’s “THROTTLE JOCKEY” trade mark would be unlikely to be mistaken for the expression “JOCKEY” (and vice versa) in normal use. In my view, the “THROTTLE JOCKEY” mark gives rise to an entirely different connotation, construction and interpretation than the word “JOCKEY” (see Conde Nast Publications Pty. Limited v. Taylor, op. cit. – the “EUROVOGUE” case). I do not consider that a reasonable person on seeing the trade marks “THROTTLE JOCKEY” and “JOCKEY” even in respect of identical or corresponding goods would assume those marks to denote the same proprietor or a common trade source. As in the “EUROVOGUE” case, I arrive at the conclusion that there is no “real, tangible danger” of confusion occurring, taking account of all the surrounding circumstances, including the reputation acquired by the Opponent in respect of the name “JOCKEY” and the nature of the relevant trade.

  5. I take issue with the significance which is placed by the Opponent on the function of the expression “JOCKEY” as part of a family or series of marks. The point which seems to be put is that, in the context of Section 44, the use of the composite mark “THROTTLE JOCKEY” by the Applicant would be likely to be seen erroneously as an extension of the Opponent’s “family” of trade marks. In this regard, the usual approach would be for me to presume that an argument based on the existence of a “family” of marks is more likely to be a submission which would carry weight in the context of Section 60 of the Act and not with regard to Section 44 where reputation is not a relevant factor. Indeed, in the course of his submissions, Mr. Williams recognised that ordinary care must be taken not to allow questions of reputation to infiltrate into the consideration of the deceptive similarity of two competing marks, and he referred to the decision of C.A. Henschke & CO. v. Rosemount Estates (2000) 52 IPR 42 at 44 and 52 in this regard. However, that point notwithstanding, Mr. Williams contended that “there is an exception where the mark relied upon, or at least an important element of it, is so notorious or ubiquitous that evidence of its reputation will be received and taken into account in assessing consumers’ likely reaction to the impugned mark . . . ”.

  6. In support of his view that the existence of a “family” of marks as a factor can have a bearing in relation to the issue of deceptive similarity (and hence as a consideration in applying Section 44), Mr. Williams relied upon the decisions of Application by Beck, Koller & Company (1947) 66 RPC 76 at 83, SEMIGRES Trade Mark [1979] 96 RPC 330, UNIMAX Trade Mark [1979] 96 RPC 469 and Re Derria A.G. (1984) 41 IPR 433. As well, he referred to the Henschke decision (op. cit.) at paragraph 46. Those cases ultimately are of limited assistance to the Opponent in the present instance. In the Beck, Koller decision the Assistant-Comptroller (at page 80, line 47) came to the conclusion that the respective marks “must be considered as wholes, even though they contain elements in common” so that when applied to the present matter that decision would seem to assist the Applicant and to reinforce the approach which I propose to adopt in relation to this issue. The position is appropriately summed up by the words of Hearing Officer Myall in the SEMIGRES Trade Mark case (op. cit., at 340), namely:

    I have come to the conclusion that so far at any rate as concerns section 12(1) the opponents have not sufficiently established user of any particular mark on conflicting goods for it to have any bearing on the matter, so that each comparison must be made on the assumption that the opponents’ mark has been used but without taking any other registered mark into account. On this basis I do not think that it can seriously be argued that there is likely to be any risk of oral or visual confusion between the applicants’ mark or, considered separately, any of the opponents’ marks. The applicants’ mark is well separated phonetically from each of the opponents’ marks and this separation is helped by the fact that the suffixes in the opponents’ marks are more or less descriptive while the meaning of “gres” is not so obvious.”

  7. Even allowing for the sake of argument (and while not conceding its validity) the point of Mr. Williams in relation to the applicability of a “family” of marks in relation to the Section 44 ground, the difficulty which I have with this proposition is that with each of the individual members of the “JOCKEY” family the word “JOCKEY” invariably appears first and with the qualifying word following after. With the Applicant’s mark, by comparison, the word “JOCKEY” appears last. In the “family”, none of the other marks of the Opponent has any feature or characteristic which would link those marks to motorcycles, motor vehicles or the operators of same, so that thematically or notionally there is no common element (other than the word “JOCKEY” itself) between the “JOCKEY” family of the Opponent and the Applicant’s mark. Further, and in passing, it seems to me as a general proposition that reliance on a “family” of marks in relation to Section 44 might more persuausively be said to be a factor in applying imperfect recollection as a relevant circumstance, but in this instance Mr. Williams has not sought to argue the point on that basis. Accordingly, while I take note of the Opponent’s point, I do not place undue weight or significance on it.

  8. The Opponent relies on the decision of Registrar of Trade Marks v. Woolworths Limited (1999) 45 IPR 411 to support its contention as to the notoriety of the “JOCKEY” trade mark. However I would distinguish that authority. The expression “WOOLWORTHS” can only have one meaning as denoting the name of the owner, and that expression does not have a meaning or a significance in Australia other than in indicating the company Woolworths Limited. The “JOCKEY” trade mark is in a different position entirely, because it is a word with a potential range of possible meanings. I do not accept, either generally or for the purposes of Section 44, that such element of notoriety as might be argued to exist in respect of the “JOCKEY” trade mark corresponds with that degree of familiarity which has been held to attach to the “WOOLWORTHS” name.

  9. The word “JOCKEY” is, first and foremost, an ordinary English expression with an established and well-known meaning. Moreover, in relation to the present application, the expression “JOCKEY’ is one part of the composite expression “THROTTLE JOCKEY” and as such it is appropriately qualified so as to be differentiated from that word when used on its own.

  10. In the end result, and after considering those factors and circumstances which are indicated above, I find that the Applicant’s trade mark “THROTTLE JOCKEY” is not deceptively similar to the “JOCKEY” trade mark and the related family of marks of the Opponent. On that basis, the requirements which need to be met pursuant to Section 44 of the Act have not been satisfied and the ground of opposition under that Section is not made out.

    Section 60

  11. The Trade Marks Amendment Act 2006 (“the Amendment Act”) amended Section 60 of the Act with effect from October 23 2006 (the “Date of Effect”). There were no application provisions in relation to the Section 60 amendment (see Items 31 and 32 of Schedule 1) and as distinct from other Sections (compare, for example, Items 29 and 30 and Items 35 and 36), raising the question of which version of the Section should apply. This issue has received attention in a number of cases where both the application and the notice of opposition were lodged prior to the Date of Effect.[5] However, in the present case, while the application was lodged prior to the Date of Effect, the Notice of Opposition was lodged after that date.

    [5] Apple Computer Inc. v. Todaytech Group Limited [2007] ATMO 40 per Hearing Officer Lyons (the MACRON case) and in Health World Limited v. Shin-Sun Australia Pty. Limited [2008] FCA 100 per Justice Jacobson (the HEALTHPLUS case). This issue was also considered by Justice Jagot in Kimberly-Clark Worldwide, Inc. v. Goulimis (2008) AIPC 92-307 at paragraph 4.

  12. This position mirrors the fact situation in Television Food Network, G.P. v. Food Channel Network Pty. Limited (No. 2) (2009) 80 IPR 314 where Justice Collier (at page 350, paragraph 156) indicated that “It is not in contention that the amended version of s 60 is relevant in these proceedings”.

  13. At the Hearing, Mr. Williams for the Opponent submitted that the Act in its amended form is applicable to these proceedings and he has presented his arguments on that assumption. As the matter was not in contention I proceed on that basis.

  14. Section 60 in its amended form relevantly provides as follows:

    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.

  15. The elements of Section 60 which need to be made out are:

    ·there was another trade mark;

    ·which had acquired a reputation in Australia;

    and

    ·such that use of the opposed trade mark would be likely to cause instances of deception or confusion to occur amongst a significant section of the public

    (see Shanahan, op. cit., at page 390). The requirement which formerly existed of establishing that the Applicant’s trade mark is substantially identical with or deceptively similar to the “JOCKEY” trade mark of the Opponent is no longer applicable since the adoption of the Amendment Act which removed this element as from 23 October 2006.

  16. When considering the relevant test in relation to Section 60, I take the following course, namely:

    a.I accept the substantial and extensive reputation of the Opponent that exists, both in Australia and internationally, in respect of the “JOCKEY” trade mark and the application and relevance of that reputation for purposes of Section 60. When the element of reputation is given due consideration, the situation becomes altered and a different view must be taken of it.

    b.For the purposes of Section 60, I accept the existence of that family of “JOCKEY” marks which are held by the Opponent and the relevance of same. In this regard, I refer to the decision of Hearing Officer Thompson in McDonalds Corporation v. Bellamy (2004) 62 IPR 133 at paragraph 28.

    c.While it was decided on the basis of the wording of the relevant Section as it existed prior to the Amendment Act, I accept in part the decision of Kimberly-Clark Worldwide, Inc. v. Goulimis (2008) AIPC 92-307 to the extent to which it is presently applicable in relation to Section 60. In particular, I refer to the wording of Justice Jagot as follows:

    Section 60 involves deceptive similarity by reason of reputation. The evidence establishes that the opponent’s trade mark HUGGIES has acquired a reputation in Australia. The opponent’s trade marks (registered and unregistered) involve both the word HUGGIES alone and the word HUGGIES with other words. HUGGIES is the dominant brand in the market for baby-toddler personal care items in the form of disposable nappies, liners, and ancillary items (such as wipes, cloths, and lotions). I accept the opponent’s submission that HUGGIES is a household name with a substantial degree of notoriety or familiarity in Australia; HUGGIES automatically brings to mind baby-toddler personal care items, particularly nappies.

    The same reasoning and the same elements are applicable in respect of the present matter and in relation to the “JOCKEY” trade mark. The Opponent’s “JOCKEY” trade mark has acquired a reputation in Australia. The Opponent’s trade marks (registered and unregistered) involve both the word “JOCKEY” alone and that word in combination with other words, where the “JOCKEY’ component invariably appears first. “JOCKEY” is a dominant brand in the market for underwear and clothing. The “JOCKEY” mark is a household name with a substantial degree of notoriety or familiarity in Australia.

  17. In relation to the expression “reputation” as it is used in Section 60, the meaning of that word was considered by Justice Lockhart in ConAgra Inc. v. McCain Foods (Australia) Pty. Limited (1992) 23 IPR 193 at 234 where he stated:

    (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.

    The consideration of reputation was taken further by Hearing Officer Thompson in Hugo Boss v. Jackson International Trading Company Kurt D. Bruhl Gmbh & Co. KG (1999) 47 IPR 423 at 426 where he said:

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

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

  1. Both those statements were quoted with approval by Justice Kenny in McCormick & Company Inc. v. McCormick (2000) 51 IPR 102. In that case, her Honour (at 127) considered what might be intended by the word “reputation” and having consulted the Macquarie Dictionary she decided that in Section 60 reputation is “the recognition of the [trade mark] by the public generally”. Her Honour went on to observe:

    In practice, it is commonplace to infer a reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

  2. There remains to be considered the issue as to whether use of the opposed trade mark would be likely to deceive or cause confusion and whether that element is able to be made out. In this regard, the Applicant submits that he has “not made a great number of sales” and that his full range of clothing “is due to be released” (the Wilkinson Declaration at paras. 3.xi and 3.xiii). In other words, the Applicant places reliance on the fact that there are no actual instances of deception or confusion having occurred. For its part, the response of the Opponent is to argue that because the Applicant has made little or no use of the “THROTTLE JOCKEY” trade mark, the absence of any evidence of actual deception or confusion is not relevant. In clarifying this issue, assistance is derived from the decision of Berlei Hestia Industries Limited v. The Bali Company Inc. (1973) 129 CLR 353 where Chief Justice Barwick observed:

    But the question whether a mark is likely to confuse is not limited to whether there has been actual confusion in the use of the mark. The question is whether its use is likely to confuse. In answering that question, the capacity of the respondent to apply its mark to merchandise of the same kind as that sold by the appellant must be borne in mind even though as yet it has not done so. The answer to the question cannot be confined to the circumstances of the trade presently obtaining.

    In relation to Section 60, having regard to the substantial and undisputed reputation of the Opponent in respect of the expression “JOCKEY”, the test of the likelihood of deception or confusion is made out and satisfied.

  3. Weighing up and assessing those considerations which are raised above, I am satisfied that the necessary elements are met and I am led to the conclusion that because of the reputation acquired by the Opponent in respect of its “JOCKEY” trade mark and in relation to items of clothing and underwear, the use of the Applicant’s trade mark “THROTTLE JOCKEY” would be likely to deceive or cause confusion. Accordingly, I find that the ground of opposition pursuant to Section 60 has been made out.

    Section 62A

  4. This Section provides that the registration of a trade mark may be opposed on the ground that the application was made in bad faith. Section 62A is a relatively new provision which was included as part of those changes implemented as from 23rd October 2006 and by virtue of the Amendment Act. As at the time of issuing this decision, Section 62A and the application of same has not received any notable consideration or attention from the Courts and there is not at present any judicial pronouncement specifically relating to the interpretation of this provision. At the hearing, Mr. Williams provided me with a copy of the article by Paul Sumpter entitled “Section 62A: Pandora’s box for trade mark practitioners” (2007) 18 Australian Intellectual Property Journal 110 which is of general interest and assistance. Moreover since the date of the hearing there have issued three decisions of the Trade Marks Office in which Section 62A is considered, namely Hard Coffee Pty. Limited v. Hard Coffee Main Beach Pty. Limited [2009] ATMO 26, Bombala Council v. Peter Wilkshire [2009]ATMO 33 and Shane Hobbs v. TBP Baking Pty. Limited [2009] ATMO 50. In each of those decisions, the ground of opposition pursuant to Section 62A was held to be established. The common ground between them seems to be the recognition that for an assessment of “bad faith” to be made in any instance there needs to be an element of intentional dishonesty or a deliberate attempt to mislead the Registrar of Trade Marks or the public in some way.

  5. The submission of the Opponent in relation to the Section 62A ground is that the “JOCKEY” trade mark is so well-known and has already established such a significant reputation and goodwill in its favour that any third party who seeks to register and adopt the expression “THROTTLE JOCKEY” in the light of the existing use and reputation could only be acting knowingly and in a deceptive manner. That circumstance, it is argued, adequately demonstrates the basis upon which the Applicant chose its trade mark and it establishes that the issue of “bad faith” has at all times been in play. I regard this submission as being seriously flawed and I am unable to accept it. Any finding to that effect would be at best inferential in nature, and it would require the reaching of a broad conclusion to which, despite the encouragement of the Opponent, I am not prepared to jump. Further, the drawing of that inference assumes on the part of the Applicant the existence both of a state of knowledge as to the “JOCKEY” trade mark and an intention to appropriate that mark. The practical difficulty, of course, is that there is no evidence (as distinct from conjecture) as to the state of mind of the Applicant. It is not established or made out by any of the materials which are before me that there was in fact any intention on the part of the Applicant to imitate the “JOCKEY” trade mark. It may well be that in adopting the expression “THROTTLE JOCKEY” the Applicant gave no thought whatsoever to the “JOCKEY” trade mark or to the rights of the Opponent in respect of same and that he arrived at his mark in an entirely independent manner. The situation is that we simply do not know. There are no materials before me of a factual or evidentiary nature which establish the situation, and in the absence of something further I am not prepared to adopt the assumption which the Opponent would have me make.

  6. In relation to the matter presently before me there is nothing to establish that the Applicant, in adopting the expression “THROTTLE JOCKEY”, has sought to copy the “JOCKEY” trade mark of the Opponent or has acted deliberately in so doing. Moreover, even if I were to accept the submission of the Opponent in this regard, it does not necessarily follow that in so doing the Applicant has acted in bad faith. In determining this matter, there is nothing before me which would justify a finding of “bad faith” on the part of the Applicant or which would warrant the exercise of this Section in favour of the Opponent. The onus of establishing the assertion of “bad faith” has not been satisfactorily met or overcome by the Opponent in this instance. Accordingly, I find that the ground of opposition relating to bad faith pursuant to Section 62A which has been raised by the Opponent is not established.

    Decision

  7. On the reasoning which has earlier been set out, I find that the Opponent has established its opposition so far as the Section 60 ground is concerned. In the circumstances, the Opposition succeeds and I refuse registration of the trade mark application No. 1127359 “THROTTLE JOCKEY”.

    Costs

  8. The Opponent has requested an award of costs in its favour in this matter. I see no reason as to why the general rule should not apply and why costs should not follow the cause. The Opponent having been successful, I award costs against the Applicant in accordance with Schedule 8 of the Trade Mark Regulations.

    John Spence
    Hearing Officer
    Trade Marks and Designs Hearings & Oppositions
    17 March 2010


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Cases Cited

27

Statutory Material Cited

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Kowa Co Ltd v Organon [2005] FCA 1282
Unilever Plc v Beiersdorf AG [2017] ATMO 25
Aston v Harlee Manufacturing Co [1960] HCA 47