Jones Investment Co. Ltd v Bonny Lawrence and Michael Burge - [2003] ATMO 14

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Jones Investment Co. Inc to registration of trade mark application 872607(25) LEI THONG & device and 872608(25) - LEI THONG - filed in the names of Bonny Lawrence and Michael Burge.

Date of decision:  5 March 2003
Delegate:  Hearing Officer Mary Skivington
Representation:  Opponent:
Elisa McCutcheon of Cullen & Co, Patent & Trade Mark
Attorneys

Decision:Section 52 opposition - opposition unsuccessful - costs awarded against the opponent.

Background
Bonny Lawrence and Michael Burge, ('the applicants'), filed trade mark applications 872607 and 872608 to register two trade marks, on 12 April 2001. The nominated goods for both applications, clothing, footwear and headgear, are in class 25. Trade mark number 872608 is for the word mark LEI THONG and 872607 is for a stylised rendering of the same words and a flower device reminiscent of an azalea, as depicted below.

Both applications were accepted at the first report and their acceptances were advertised in the Official Journal of Trade Marks on 20 and 29 September 2001 respectively. R.S.V Sport, Inc. filed notices of opposition on 3 December 2001. Numerous grounds of opposition were listed in the notice but the only grounds pursued come under the provisions of sections 44, 58 and 60 of the Trade Marks Act 1995, ('the Act'). Each party filed and served its evidence and on 17 December 2002 the opponent requested a hearing. On 11 February 2003 R.S.V Sport, Inc, assigned the trade marks cited in the notice of opposition to Jones Investment Co Inc. and requested that this entity's name be substituted as the opponent. The matter came on for hearing before me, as a delegate of the Registrar of Trade Marks, on 18 February 2003, in Canberra. The opponent is the owner of the four registered trade marks shown below, all of which have earlier priority dates than the subject applications.

Trade mark No.

Priority date

Trade Mark

Goods

782897

13/01/99

Apparel including jeans, shirts, jackets, vests, pants,sweaters, jump-suits, shorts, skorts, overalls, shortalls, dresses, skirts, T-shirts and sweatpants; footwear; headgear

799361

05/07/99

Clothing including jeans, shirts, jackets, vests, pants, sweatpants, jumpsuits, shorts, skorts, overalls, shortalls, dresses, skirts, T-shirts, tops, bottoms, lingerie, socks, belts, coats, jackets, hats, swimwear, underwear, tank tops and pyjamas; footwear and headgear

799362

23/02/99

Clothing including jeans, shirts, jackets, vests, pants, sweatpants, jumpsuits, shorts, skorts, overalls, shortalls, dresses, skirts, T-shirts, tops, bottoms, lingerie, socks, belts, coats, jackets, hats, swimwear, underwear, tank tops and pyjamas; footwear and headgear

799363

03/02/99

L.E.I.

Clothing including jeans, shirts, jackets, vests, pants, sweatpants, jumpsuits, shorts, skorts, overalls, shortalls, dresses, skirts, T-shirts, tops, bottoms, lingerie, socks, belts, coats, jackets, hats, swimwear, underwear, tank tops and pyjamas; footwear and headgear

The Evidence
Evidence in support

Declarant

Referred to as:

Date made

Exhibits

Melvin B. Geliebter

Geliebter

27/6/02

MBG-1 to MBG-10

Evidence in answer

Declarant

Referred to as:

Date made

Exhibits

Bonny Lawrence

Lawrence

25/9/02

BL-1 to BL-9

Opponent's declaration
Melvin B.…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Jones Investment Co. Ltd v Bonny Lawrence and Michael Burge

Details

AGLC: Jones Investment Co. Ltd v Bonny Lawrence and Michael Burge [2003] ATMO 14
Case: [2003] ATMO 14
Decision Date: 5 March 2003

CaseChat Overview and Summary

This matter concerned an opposition by Jones Investment Co. Inc. (the opponent) to the registration of two trade mark applications, 872607 (a device mark) and 872608 (a word mark), both for the mark LEI THONG and device, filed by Bonny Lawrence and Michael Burge (the applicants). The applications were for goods in class 25, namely clothing, footwear, and headgear. The opposition was brought under sections 44, 58, and 60 of the *Trade Marks Act 1995* (Cth).

The delegate was required to determine whether the applicants' trade marks were substantially identical with or deceptively similar to the opponent's registered trade marks, whether the goods were similar, and whether the opponent's trade marks had acquired a reputation in Australia such that the use of the applicants' marks would be likely to deceive or cause confusion. The delegate also considered an argument that the applicants were not the joint owners of the trade marks, which was dismissed.

The delegate reasoned that while the goods were similar and the opponent's marks had earlier priority dates, the applicants' trade marks were neither substantially identical nor deceptively similar to the opponent's marks. The delegate found that the opponent's marks, primarily consisting of the letters L.E.I., created a different impression from the applicants' marks, LEI THONG, which were two common English words. The delegate concluded that consumers were unlikely to mentally insert punctuation to transform "LEI" into "L.E.I." and that the additional word "THONG" and the floral device in one of the applicant's marks further distinguished them. Consequently, the grounds of opposition under sections 44 and 60 were not established.

As the opponent had not established any of its grounds of opposition, the delegate directed that the trade mark applications could proceed to registration, subject to payment of outstanding fees and any pending appeal. The opponent was also ordered to pay the applicants' costs.

Orders