John Galliano S.A v Jan Pola Ricigliano

[2000] ATMO 130

TRADE MARKS ACT 1995

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

Re:Opposition by John Galliano S.A. to registration of trade mark application 777554(3 and 25) - GLIANO and encircled letter G- filed in the name of Jan Pola Ricigliano.

Background

Application 777554, a representation of which is shown below, was filed by Jan Pola Ricigliano (the applicant) on 6 November 1998 in respect of goods in classes 3 and 25.

Following amendment to the specification of goods, the application was accepted and advertised in the Australian Official Journal of Trade Marks of 11 March 1999 in respect of 'clothing, footwear, headgear' in class 25 and 'perfumery, soaps, cosmetics, essential oils, hair lotions' in class 3. A French company, John Galliano S. A., (the opponent) filed a notice of opposition on 10 June 1999. All of the evidence in support of the opposition was filed and served by the opponent by 10 March 2000. The applicant chose not to provide any evidence in answer to the opposition. The matter came before me in Sydney on 15 November 2000. Mr Wayne Willis of F.B. Rice & Co. represented the opponent, whilst the applicant, Ms Jan Ricigliano, was self-represented.

The Evidence

The evidence in support of the opposition consists of a single declaration, dated 31 January 2000, together with exhibits 'A' to 'D', and attested by Gerard Bouet, a legal representative of the opponent. This declaration details a history of fashion designer John Galliano, the founder of the opponent company. It goes on to provide a history of the John Galliano trade mark worldwide - including a list of the opponent's registered trade marks and pending applications. The Bouet declaration also states that the opponent uses marks in the form JOHN GALLIANO and GALLIANO and provides copies of various articles and advertisements to support this statement. The opponent provides eight copies of newspaper and magazine articles using the word Galliano and in excess of 60 using the words John Galliano which all appear to be from foreign sources. The declaration also claims use of the JOHN GALLIANO mark in Australia from 1986 and provides actual sales figures for the years 1996 to 1999. The evidence also shows that the mark JOHN GALLIANO has been used in Australia on a range of goods including jackets, skirts, pants, shirts, dresses, cardigans, sweaters, leather bags, jeans, singlet tops, ties, tank tops, videotapes, photographs, belts and earrings.

I note that some minor portions of the exhibits to the Bouet declaration are neither in English nor have they been translated into English, and so in accordance with Regulation 21.18, I afford no weight to those portions.

Submissions

At the commencement of the hearing, Mr Willis indicated that the opponent only intended to rely on opposition grounds under s.58, s.44 and s.60.

In terms of s.58, Mr Willis commented that although this ground may not be the strongest of the claims made by the opponent, it still formed a valid barrier in view of the opponent's prior use of the mark GALLIANO - a circumstance that produced common law rights in the mark. He went on to contend that the respective marks of the applicant and the opponent were sufficiently similar to trigger s.58. Mr Willis submitted that the addition of superfluous material, such as the encircled letter G in the applied for mark, did not add any significant element to differentiate the marks. Such decorative features, he added, should not produce a finding that the marks did not possess a total impression of similarity.

In relation to the s.44 ground, Mr Willis said that the opponent relied, in particular, upon the trade mark numbered 714534, which is registered in classes 3, 14, 18 and 25. He said that the goods specified in classes 3 and 25 of this registration included some items identical with goods in those same classes of the present application. As this registered mark held a priority date of 29 March 1996, resulting from a claim for a previously applied for mark in France, this registration pre-dated the present application, he added. Mr Willis stated that although the opponent would not seriously claim that the present mark is substantially identical with JOHN GALLIANO, it does contend that the respective marks are deceptively similar. By use of s.10 of the Act, Mr Willis argued that the type of deception or confusion envisaged was not limited to merely possible uncertainty as to the source of the goods, but could encompass such concepts as quality of the goods involved. Mr Willis used several citations from decided cases[1] to support the opponent's contention that the marks are deceptively similar. Relevant to s.44, he also submitted that I should consider that the 'ordinary consumer' of the goods involved for the application would have no prior knowledge of either trade mark and no prior knowledge of non-English surnames and that I should look at the imperfect recollection of the opponent's mark on identical class 3 and class 25 goods. Mr Willis commented that because GALLIANO and GLIANO are both words without a dictionary meaning and are words not familiar to the bulk of the English-speaking public in Australia, then an imperfect recollection of the trade marks will be more likely than for well known dictionary words.

Mr Willis's remarks under s.60 were prefaced by the comment that the opponent has demonstrated, in the evidence, a modest but reasonably long-standing reputation of the JOHN GALLIANO trade mark as at the date of the present application. He added that because of that use and the manner in which the mark is presented to the public, then simultaneous use of the mark GALLIANO is also claimed by the opponent. He also submitted that although the meaning of 'deceptively similar' for both s.44 and s.60 of the Act is the same, the way in which it is to be assessed for these two sections of the Act should differ. He argued this on the basis that such deceptive similarity should be assessed in the light of the reputation in the opponent's mark under s.60 but not so assessed under s.44. He contended that there could be a whole range of ways that a consumer would be deceived or confused apart from merely being confounded as to the source of the goods.

Mr Willis also submitted that, in terms of s.60, it is necessary to assess the level of the reputation acquired, in Australia, by the opponent in its trade mark rather than to concentrate merely on use of the opponent's mark in Australia. He also encouraged me to consider the opponent's reputation in its mark in my assessment of the possible deceptive similarity of the respective trade marks, claiming that it was quite artificial that deceptive similarity should be assessed independently. He added that especially is this the case in comparing trade marks for similarity in the fashion industry because of the nature of that industry.

Mr Willis finalised his submissions, on behalf of the opponent, with the comment that s.60 gives the Registrar the opportunity to look at all of the conditions and circumstances and give an expansive scope to the meaning of 'would be likely to deceive or cause confusion' for the respective marks. This especially should occur, he said, where one mark is already known, and the applicant's mark introduces sufficient common elements to fit the pre-existing pattern of the opponent's mark, so as to lead to confusion.

Ms Ricigliano represented herself at the hearing. Although some matters that she alleged in her submissions would have required evidence for me to give weight to their validity, other matters, particularly those involving an argued comparison of the marks, I can consider for my decision. After providing a brief summary of her own work history and her reason for choosing the mark, the applicant stated that she is unaware of any actual cases of deception or confusion having occurred between the respective marks, JOHN GALLIANO and GLIANO. She claimed that no person had mentioned any confusion between her trade mark and the opponent's mark in her four years in her shop. Ms Ricigliano stated that her mark is not a made up word, but part of her surname which she used on many occasions in place of her surname, so that she could be more easily referred to by customers, as simply Jan Gliano. The applicant also commented on the lack of similarity between the respective marks with comments on phonetic and visual differences. She stated that for Australian speakers with English as a first language, the words are pronounced very differently. This she demonstrated in the manner of GALLIANO being pronounced 'galley-arno' and GLIANO being pronounced 'glee-arno'. She added that she disagreed with the opponent's comments that for non-English speakers the difference in pronunciation is slight by quoting the pronunciation of the words by a native Italian speaker. Although Mr Willis had indicated that the only difference in pronunciation for the words GALLIANO and GLIANO, by a non-English speaker, would be the soft "a" sound, the applicant disagreed. Ms Ricigliano, who claimed fluency in the Italian language, pronounced GLIANO with a virtually silent 'G', whereas the 'G' in GALLIANO she pronounced with strong definition. Ms Ricigliano also submitted that not only were the words pronounced differently but were also quite different visually.

Discussion

Although grounds of opposition under ten sections of the Act had been claimed in the notice of opposition, the opponent only maintained three of these grounds at the hearing, those taken under s.58, s.44 and s.60. Thus, I formally dismiss those grounds of opposition claimed under ss.39, 41, 42, 43, 59, 61 and 62.

(a) Section 58 - Applicant not owner of trade mark

The legislation for this section reads:

[1] Australian Woollen Mills v F S Walton & Co Ltd (1937) 58 CLR 641 at 658,

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:  For applicant see section 6.

It is well settled law that the term 'owner' under the Trade Marks Act 1995 is to be read in the same sense as it was under s.40 of the Trade Marks Act 1955. A person who claims ownership rights in a mark may apply to register the mark. These provisions are expressed in s.27:

27.(1)   A person may apply for registration of a trade mark in respect of goods and/or services if:

(a) the person claims to be the owner of the trade mark; and

(b) one of the following applies:

(i) the person is using or intends to use the trade mark in relation to the goods and/or services;

(ii) the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

(iii) the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

In order to consider the issue concerning ownership in opposition proceedings, it must be shown that the opponent's mark, upon which it relies to claim ownership rights, is substantially identical with the mark the subject of the application for registration - Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (31 IPR 375). Additionally, the goods or services involved must be the 'same kind of thing' - Re Hicks' Trade Mark (1897) 22 VLR 636 at 640 - and the use of the opponent's mark, or application to register the mark, must pre-date the applicant's claim to ownership. An applicant can claim its ownership rights based on the date of its application, or the first use of the mark, whichever is the earlier date.

In relation to the accepted test for substantial identity of trade marks, this has been set out in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd 109 CLR 407 at 414 where Windeyer J said:

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.

Similarities in the present case, by such visual comparison, include all six letters of the word GLIANO being contained within the word GALLIANO. The major visual differences include the extra letters AL being included in the word GALLIANO and the addition of the encircled letter G within the applicant's GLIANO mark. Although Mr Willis has submitted that the encircled letter G did not add any significant element to differentiate the marks, in relation to a visual comparison, I must disagree. In my opinion, in a side by side comparison of the marks, the letter provides a clear dissimilarity. On balance, I believe that these differences are sufficient to find that the marks are not substantially identical - that they do not give a 'total impression of resemblance' on a side by side comparison.

On this basis, in accord with the principles laid down in Carnival Cruise Lines v Sitmar Cruises, supra, I find that the s.58 ground of opposition is not successful.

(b) Section 44 Identical etc. trade marks

This section of the Act deals with registered or pending trade marks that may be in conflict with the applicant's trade mark. The opponent has three registered marks for the words JOHN GALLIANO that were identified in the evidence. These are numbered 714534(3, 14, 18, 25), 718290(24, 40, 42) and 728762(9). At the hearing, the opponent stated that it sought to rely principally on 714534 because this registration included the two classes co-incident with the present application, and if either 718290 or 728762 proved to provide a valid barrier in terms of s.44 then 714534 must also do so.

The legislation, insofar as it is relevant to the issue of comparison of the present application with 714534, reads:

44.(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 ...

(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 ....

Note 1:  For deceptively similar see section 10.

Note 2:  For similar goods see subsection 14(1).
Note 3:  For priority date see section 12.

The present application was filed on 6 November 1998 and has been accepted in respect of 'clothing, footwear, headgear' in class 25 and 'perfumery, soaps, cosmetics, essential oils, hair lotions' in class 3. The opponent's JOHN GALLIANO mark, number 714534, has a priority date from 29 March 1996 for goods which include 'Soap, perfumes, essential oils, cosmetics, hair lotion, and toothpastes' in class 3 and 'Clothing, footwear and headgear' in class 25. From this information it is obvious that the goods are similar (several items being identical) and that the opponent's registration has a date of registration earlier than the present application. Thus, 714534 fulfils at least two of the legs necessary to support a valid opposition ground under s.44.

The remaining leg to be considered concerns the degree of similarity of the respective trade marks. The opponent's mark is simply the word trade mark JOHN GALLIANO, whilst the applicant's mark, for ease of comparison I once again reproduce below.

The legislation in s.44(1)(a) calls for a comparison of the applicant's mark with the opponent's mark to determine whether or not the marks are either 'substantially identical' or 'deceptively similar'. I have already looked at the question of 'substantial identity' in relation to s.58 above, in comparing the applied for mark with the opponent's GALLIANO mark, and there I found the respective marks not to be substantially identical. In relation to s.44, the comparison to be made involves the applied for mark with the opponent's JOHN GALLIANO mark. The additional element in the opponent's mark, being the word JOHN, creates an even greater separation between this mark and the applicant's mark than for my earlier assessment of substantial identity, under s.58.

The comparison required for the question of 'deceptive similarity' of two trade marks differs from that for 'substantial identity' as shown in the words of Justice Windeyer in Shell Co. v Esso Standard Oil, supra, at 415:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions.

Moreover the above test must be also be approached with the doctrine of imperfect recollection in mind, as outlined in Rysta Limited's Application (1943) 60 RPC 87 where Luxmoore LJ stated at 108 that:

It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.

The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants.

Thus, it is with these principles in mind that I must compare the respective marks. In this exercise, I must consider a variety of possible means by which deception or confusion could occur. These means include visual, phonetic or even contextual uncertainties produced by way of spoken descriptions, meanings or ideas of the respective marks.

I must also bear in mind the recent directives of Justice French in Registrar of Trade Marks vWoolworths Limited, 45 IPR 411, a judgement of the Full Court, where he considered the words 'reasonable likelihood of deception and confusion' - as had been set out in Smith Hayden, supra, at 101 - with the words:

The position now is that the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

Although this judgement in the Federal Court concerned the acceptance of a trade mark rather than opposition of an accepted trade mark, the issue still involves the operation of s.44 of the Act. The only change in approach, as I see it, is that the opponent has the opportunity to show, by evidence or submission, why there exists a 'reasonable likelihood of deception or confusion' - rather than, as in Registrar v Woolworths, supra, the Registrar being required to find sufficient reason independently.

The opponent's mark, JOHN GALLIANO, clearly provides an impression of the name of a person. The fact that GALLIANO does appear on the Australian Electoral Register as a surname, albeit only seven times, adds some further weight to that understanding. The mark JOHN GALLIANO, in my opinion, will therefore provide the purchasing public with a very clear understanding that it is a person's name. The word GLIANO may, for some, give the appearance of a surname. For others it may appear to be a foreign word and for others as a purely invented word. However, because it is actually not a surname, or at least is not recorded as such on the Australian Electoral Register, there must be doubt in the minds of the relevant purchasing public in assigning some meaning for the word. In addition, the word GLIANO is not the only element in the mark, as is the case for the words in the opponent's mark, because the encircled letter G also provides an element of differentiation. Taken together I cannot perceive that any sort of contextual confusion could be produced by a similarity of meanings, ideas or spoken descriptions for the applicant's and the opponent's marks.

Visually, the marks are quite different. The opponent's mark consists of two words, whilst the applied for mark consists of one word and an encircled letter G. The words in the marks that the opponent alleges to have some resemblance, being GALLIANO and GLIANO, contain eight and six letters respectively. Even allowing for an imperfect recollection of the opponent's mark, I do not believe that any level of deception or confusion could occur in a visual sense for prospective purchasers, if their perceptions may be assumed to be governed by the 'usual manner in which ordinary people behave'[2].

A phonetic consideration of the words JOHN GALLIANO and GLIANO (even ignoring the encircled letter G in the mark) leads me to a similar conclusion. There are simply too many differences phonetically between two words containing a total of 12 letters and a single six letter word to envisage that possible deception or confusion would be likely. The fact that the word JOHN concludes with a consonant and the word GALLIANO begins with a consonant creates a natural pause between the words, to reduce the risk of slurring of the words and thereby to creating a sound anything like GLIANO.

During part of the submissions, in relation to s.44, the opponent had encouraged me to make comparison of the words GLIANO against GALLIANO for similarity, rather than GLIANO and encircled letter G against JOHN GALLIANO. This submission was made on the basis that the other elements in each mark, the encircled letter G in the applicant's mark and the word JOHN in the opponent's mark, are inconsequential elements. However, as it is the statutory rights of use that must be compared under s.44 rather than any possible actual modes of use, the comparison of the respective trade marks must be as applied for and as registered. If a valid ground of opposition exists for comparison of GLIANO and GALLIANO then it would appear that s.60 - based on the reputation held by the opponent in the GALLIANO mark - may be a more appropriate forum.

From the above, I find that the applied for mark is not deceptively similar to the opponent's registered JOHN GALLIANO trade marks. Thus, I also find that opposition under the s.44 ground is not successful.

[2] Australian Woollen Mills Ltd v F. S. Walton & Co. Ltd. (1937) 58 CLR 641 at 658.

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

This opposition ground is particularly designed to afford protection to trade marks that are sufficiently similar to the applied for mark and which have acquired a reputation, as at the application date for the present mark, but may not fall under the protection of s.44, because they are both/either unregistered and/or the goods of the parties are not similar.

The relevant legislation reads:

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

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

Mr Willis has pressed the issue that an applied for trade mark could be found to be deceptively similar to the opponent's mark in terms of s.60 after the s.44 assessment had found the marks not to be so. He cited an earlier decision[3] for which I had been the delegate of the Registrar and had briefly discussed the issue. The part of that decision to which Mr Willis's comments refer reads, at 37,978:

[3] Skycoaster Inc. v Fairmile Pty Ltd (2000) AIPC ¶91-612 at 37,973.

In considering whether marks are deceptively similar in terms of an opposition matter under s.60, different circumstances may need to be considered. I can readily imagine situations whereby two trade marks may not be considered deceptively similar in terms of fair and reasonable notional use, as per the test under s.44 as set out in Smith Hayden & Co. Ltd'sApplication 63 RPC 97 at 101, but a different conclusion is reached when the actual use of the opponent's mark is unveiled by means of evidence. A possible example of this could involve a device mark that is used so that it is actually known in the market place in a way that could not reasonably be anticipated in theory.

In the passage above, I commented that it is possible that a different conclusion may be reached on the issue of deceptive similarity 'when the actual use of the opponent's mark is unveiled by means of evidence'. If such a circumstance occurs as a result of evidence submitted in opposition proceedings under s.60, then that finding of deceptive similarity will also then apply to the assessment of deceptive similarity under s.44. This situation could most readily occur where an assessment occurs that two trade marks are not deceptively similar in the course of the initial examination of the application, without the benefit of any evidentiary material from a possible opponent, and later that assessment is reversed for either s.44 or s.60 at the opposition stage - as a result of the submitted evidence.

To this point, in my discussion in relation to s.58 and s.44 above, I have found that the applied for mark, for the word GLIANO and the encircled letter G, is not substantially identical to the mark GALLIANO (under s.58), and that it is neither substantially identical with, nor deceptively similar to, the mark JOHN GALLIANO (under s.44).

Relevant to s.60, the opponent, in the evidence submitted, claims reputation in two trade marks - JOHN GALLIANO and GALLIANO. The issues of both substantial identity and deceptive similarity of the applicant's mark, in relation to both of these marks must be made under s.60. However, only one of these tests - the issue of deceptive similarity in relation to the opponent's GALLIANO mark - has not already been determined in favour of the applicant under either s.58 or s.44 above.

As for s.44, under s.60 I must be aware of a range of possible types of deception or confusion - whether visual, phonetic or contextual. Mr Willis has contended that in circumstances where one trade mark is already known in the minds of prospective purchasers, then deception or confusion will be likely if, when the applicant's mark is viewed or heard, sufficient elements fit that pre-existing pattern. He has also submitted that because neither the applicant's mark, nor the opponent's mark, had dictionary meanings - and both gave the appearance of surnames - confusion would be more likely.

Visually, the marks are necessarily a different shape - forced, particularly, by the extra element of the encircled letter G above the word GLIANO in the applicant's mark, but also by the extra letters in the opponent's GALLIANO mark. In my view, this is a key difference to provide a cue against an imperfect recollection of the two marks, one for the other. Visual deception or confusion with the opponent's GALLIANO mark would clearly be more likely had the applied for mark consisted of the word GLIANO, solus. Even in that circumstance, the two words alone are, in my opinion, visually sufficiently separated because of such factors as the double 'L' appearing as a major feature near the centre of the opponent's mark and the difference in the overall lengths of the words. These factors set up differences in impression for later recollection. The evidence does not provide any particular circumstances, either by means of the normal practices in the trade for class 25 or class 3 goods, or specific information concerning how the opponent's marks are known and used in the marketplace or any other circumstances, for me to find that these marks would be likely to confuse or deceive prospective purchasers in a visual sense. I believe that the opposite is more likely for both class 25 apparel and class 3 personal care products, due to the increased awareness in the general population in respect of fashionable clothing and items for grooming and also of the general cognisance of modern trade mark usage. Most people living in Australia now choose their clothing, footwear, headgear and personal care items with a recognition of the quality, the cost and the trade mark involved - due in part to the pressures exerted by the fashion industry itself but also by an increase in self-awareness promoted by the mores of the society in which we live.

In relation to possible phonetic deception or confusion, I accept Ms Ricigliano's submission that the general population of Australian speakers would differentiate GLIANO and GALLIANO with usual pronunciations of close approximations to 'glee-arno' and 'galley-arno' respectively. In this regard, the statement of Sargent L.J. in London Lubricants (1920) Ltd's Application (1925) 42 RPC 264 at 279 is applicable, where he comments:

... the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.

This leads me to the conclusion that an Australian, for whom English is their first language, would not be at all likely to cause any deception or confusion by the pronunciation of these words to produce phonetic similarity.

Both parties made submissions in relation to the usual means of pronunciation by a non-English speaker. Mr Willis indicating that such persons would be likely to pronounce the initial 'A' in GALLIANO as a soft sound, so that the '-LIANO' suffix would be emphasised and Ms Ricigliano indicating that, at least for a native Italian speaker, the 'G' in GLIANO is virtually silent whilst the 'G' in GALLIANO is heavily emphasised. Neither party provided evidence of their assertions. I do not believe that I am in a strong position to make anything of these counter claims, and so I give them little weight in the matter.

Thus, in terms of any possible phonetic deception or confusion, I find nothing sufficient to trigger s.60.

Mr Willis has encouraged me to consider a comparison of whether the respective marks are deceptively similar by reference to s.10 of the Act. If the applied for mark is likely to deceive or cause confusion due to a resemblance to the opponent's GALLIANO mark, he argued, due to any circumstance whatsoever, then I should find the marks to be deceptively similar. The circumstance that Mr Willis particularly wanted me to consider concerns the reputation in the mark held by the opponent. If, by means of evidence, the opponent can demonstrate that such deception or confusion would be likely, then I have no difficulty accepting the concept that Mr Willis proposed. However, such a situation producing deception or confusion would need to be clearly shown by means of evidence - not merely a 'tipping of the scales' based simply on the size of an opponent's reputation.

I do not believe that the lack of dictionary meanings for these marks provides any compelling reason for me to accept that deception or confusion would be likely between the respective marks. Nor can I envisage any situations or circumstances of confusion of a contextual nature between the marks, such as recognition that the marks are actually different but a belief that they referred to the same source.

Thus, I find that the applied for mark, consisting of the word GLIANO and encircled letter G, is not deceptively similar to the opponent's GALLIANO mark. For the sake of completeness I must add one other observation, concerning the reputation in the GALLIANO mark held by the opponent, in relation to the opponent's case under s.60.

The evidence indicates, by means of sales figures, customer invoices and the trade mark registration details in Australia, that the opponent has a modest reputation in its JOHN GALLIANO trade mark as at the filing date of the present application. The evidence concerning advertising and newspaper articles appears to all be from overseas jurisdictions - and some of it, is in fact, in the French language. Mr Willis has submitted that the legislation under s.60 does not require commercial use of the opponent's mark in Australia in order for the mark to acquire a reputation on which a s.60 opposition may be based. On this score I agree with Mr Willis - it is immaterial how the opponent gains the reputation, but it is the reputation that exists in Australia, as at the filing date, that is relevant to the assessment under s.60. Additionally, Mr Willis has encouraged me to use the opponent's reputation in its JOHN GALLIANO mark in relation to a consideration for GALLIANO, simpliciter. However, nothing presented to me in the evidence suggests such a course is appropriate. From the material before me, I am not convinced that the opponent has shown any sort of reputation in its GALLIANO mark that could be considered under s.60. No evidence of use, in terms of sales figures or advertising, for the GALLIANO mark has been provided and of the eight media articles using the word GALLIANO, none appear to originate in Australia, or be for Australian audiences. From the material before me, it is quite possible to infer that the word GALLIANO, alone, has never been used as a trade mark in Australia. If the reputation exists in the opponent's JOHN GALLIANO mark, then that is the mark for which comparison needs to be made under s.60.

In supporting his proposition that I should consider s.60 in the broadest terms, Mr Willis also directed my attention to the difficulties for the U. K. Office in harmonising their legislative provisions with the European system, and suggested that I consider the test for deceptive similarity in relation to the degree of the opponent's reputation in the mark. However, as the present matter is to be decided under current Australian Trade Mark law with relevant Australian legal precedent, I do not intend to make allowance for readjustments of the laws in other jurisdictions.

From the above, I have found that the applied for mark is neither substantially identical with, nor deceptively similar to, either of the opponent's trade marks JOHN GALLIANO or GALLIANO. As a result the opposition ground taken under s.60 has not succeeded.

Conclusion

From the foregoing, I have found that none of the grounds relied on by the opponent at the hearing, under s.58, s.44 and s.60 have succeeded. Thus, as the Registrar's delegate in this matter, I dismiss this opposition to registration and direct that, on payment of the registration fee that this application may proceed to registration.

Don Nancarrow
Hearing Officer

11 December 2000

The Shell Company of Australia Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at 415,
Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411,
C A Henschke & Co &Ors v Rosemount Estates Pty Ltd [2000] FCA 1539 (31 October 2000),
Esselte Meto International Produktions GmbH v Mita Industrial Co Ltd (2000) AIPC 91-610,
Smith Hayden & Co Ltd's Application (1946) 63 RPC 97 at 101.