Karen Adele Doble v Guess? Inc

[1996] ATMO 67

TRADE MARKS ACT 1955

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

Re:Opposition by GUESS? INC. to registration of trade mark application number 631739 in the name of KAREN ADELE DOBLE

Background

As provided for in the transitional provisions of Part 22 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to govern this opposition.  Accordingly, unless otherwise specified, any reference to the Act in this decision is a reference to the Trade Marks Act 1955.

Application number 631739 was lodged, on 9 June 1994, in the name of Karen Adele Doble (the applicant).  The application was for registration of the trade mark, as shown below, for the statement of goods, “All goods in this class including men’s, women’s and children’s clothing plus headwear and footwear” in Class 25.

The mark was advertised as accepted in Part A of the Register in the Official Journal of 6 April 1995.

Notice of opposition to the mark's registration was lodged, following the granting of an extension of time to do so, on 27 September 1995, by Guess? Inc., (the opponent).  The primary grounds of the opposition, which were pursued at the hearing, were based on s.33 of the Trade Marks Act, that the present trade mark was substantially identical or deceptively similar to a prior registered trade mark owned by the opponent; and on s.28, that use of the mark by the applicant would be likely to cause deception and confusion.

The evidence

The service and lodgment of the evidence in support relied upon by the opponent in the matter was completed by 22 April 1996.  That evidence comprised a statutory declaration by Timothy J. Oswald dated 5 April 1996 and exhibit 1.  In that declaration, Mr Oswald, the General Counsel/Licensing of the opponent, stated that his company was the proprietor of trade mark registration number 390430 for the mark, as shown below, in respect of, “Men’s, women’s and children’s clothing and all other goods in this class”, in class 25.

Also included in the declaration were sales and advertising figures in relation to goods sold under that mark from July 1992 to February 1996.  Exhibited to the declaration were samples of packaging and advertising used by the opponent in respect of its goods.

The applicant did not serve any evidence in answer.

The opponent requested a hearing in the matter and it came before me, as a delegate of the Registrar, in Sydney on 17 October 1996.  Mr Peter Marsh of F.B. Rice & Co appeared on behalf of the opponent.  The applicant did not appear, or have representation, at the hearing.

Submissions
Mr Marsh said that the opponent was principally relying upon its prior registration, number 390430, in its opposition to the present mark’s registration.  He said that the opponent, although not alleging that the marks were substantially identical, felt that the portion of the applicant’s mark comprising a triangular flag device containing a question mark was deceptively similar to the opponent’s own GUESS? mark.  He submitted that the resemblance of the marks in this respect was sufficient to cause deception and confusion if the present mark was registered.  This was especially so if the goods bearing that mark were displayed with the portion of the mark comprising the question mark device in a triangle being the only part visible.  He said that the evidence showed that the opponent’s mark had achieved a reasonable amount of exposure in the market place as at the date of the present mark’s lodgment.

Discussion
Section 33 - Substantially identical or deceptively similar

Sub-section 33(1) reads:

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

There is no doubt that the respective sets of goods covered by the marks are of the same description.  That being the case, in considering the question of whether the mark in question is caught by the provisions of s.33, I must firstly determine whether it is substantially identical with, or deceptively similar to, the mark owned by the opponent.

Mr Marsh conceded that the marks were not substantially identical although he maintained that, because of the shared elements of a triangle and a question mark, they were deceptively similar.  Sub-section 6(3) defines a mark as deceptively similar if it is likely to deceive or cause confusion.  Here, the marks should not be placed side by side but consideration should be given to any common impression carried away from the two marks.  I refer here to the judgment in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd (1937) 58 CLR 641, where Dixon and McTiernan JJ. said:

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 mind 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 of 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.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.  Evidence of actual cases of deception, if forthcoming, is of great weight.

In the present case, there has been no evidence adduced of instances of actual confusion and so I will have to consider the matter from a theoretical viewpoint.

The question here is whether the marks, considered as wholes, are deceptively similar.  It is true that both marks share triangle and question mark devices.  However, overall, they are different.  I am of the opinion that the opponent’s mark would be referred to as the GUESS mark, that word being the single most dominating feature.  The triangle and question mark devices do have some visual impact but I believe that the main device element, the question mark, simply adds an interrogative aspect to the overall mark.  On the other hand, the applicant’s trade mark comprises a great number of individual elements.  The first and most striking element is, I believe, the device of a golf ball face wearing sunglasses above a cone or golf tee.  Next in prominence is the flag device, similar to that found on golf courses to indicate a golf hole.  I think that the flag device is suggestive of such a meaning, rather than being merely a triangle.  The golf ball is surmounted by the words PLAY-A-ROUND and the tee device below contains the word CLOTHING.  This leaves the question mark portion which is, to my mind, merely a minor part of the mark - perhaps indicating a question about which hole is being played.  Therefore, in relation to the tests laid out by Dixon and McTiernan JJ. in the Australian Woollen Mills case, supra, I am of the opinion that the net impressions left by both trade marks would be sufficiently unalike each other so as to differentiate them.  Although the goods sold under the respective marks might not be expensive, I feel that potential buyers of those goods would take some care in their selection.  Clothing, generally, is not cheap and I am aware from my own experience that the opponent’s mark is considered, by young people in particular, as denoting “trendy gear”.  Given the other material in the marks, I do not believe that purchasers would find the marks deceptively similar.

I am of the opinion that this would be so, even taking into consideration the doctrine of "imperfect recollection".  For the foregoing reasons, I find that the opponent's objection, as it is based on s.33, must fail.

Section 28 - Deception and confusion

The provisions of this section of the Act read as follows:

A mark -

(a) the use of which would be likely to deceive or cause confusion;
           (b) the use of which would be contrary to law;
           (c) which comprises or contains scandalous matter; or

(d) which would otherwise be not entitled to protection in a court of justice,

shall not be registered as a trade mark.

The test to be applied under paragraph (a) of these provisions, on which the opponent partly relies, has been well established by cases such as Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, (1954) 91 CLR 592, where it was said:

Registration should be refused if it appears that there is a real risk that the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case the two products come from the same source.

However, that risk must extend to a substantial number of people likely to be concerned in the purchasing of the goods: Kendall Co v Muslyn Paint and Chemicals (1963) 109 CLR 300.

In assessing the reputation of the opponent’s marks in Australia, the relevant date is that of the lodgment of the opposed application - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, supra.   The opponent’s reputation at that date in this country, with respect to its own mark and goods, is undisputed.  From the evidence and also from my own observations, the opponent had, at the appropriate date, a fairly strong reputation in this country.  However, I think that the opponent’s main reputation lies in the word GUESS, with the question mark device merely lending that word a quizzical element.  As I have previously said, the opponent’s own reputation for its mark means that purchasers would be more conscious of the image being projected and would ensure that the “correct” goods bearing the mark were chosen.  From my own experience, woe betide a parent who purchases clothing for a child or teenager bearing the “wrong” brand.  I accordingly believe that the relevant public would not be caused to wonder as to the origin of the two marks.

Notwithstanding the above, it is true that there are cases, such as De Cordova v Vick Chemical Co. (1951) 68 RPC 103 and Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, where it was found that, if the later mark incorporates the essential or distinguishing feature of the earlier mark, then confusion is likely to result. However, as I have previously said, I do not agree that the present case falls into this category. The only common elements are the question mark and triangle devices which I have said are relatively minor - particularly in the applicant’s mark. Taking all of the preceding factors together into consideration, I am satisfied that use of the applicant's mark will not lead to deception or confusion. I therefore find that the requirements of paragraph 28(a) have not been made out.

Given that I have found as I have with respect to s.28(a), I need no longer pursue the matter of considering all of the s.28 objection.  However, for the sake of completeness, I will briefly discuss the opponent’s claim that the present mark is one which would not be entitled to protection in a court of justice.  Following the High Court decision in New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Ltd 18 IPR 385, the Moo/Moove case, the Registrar now follows the practice as laid out in the decision of Hearing Officer Homann in Titan Manufacturing Co v John Terrence Coyne 22 IPR 613 - i.e., that all paras of s.28 should be read together. This means that, had I found that the mark was likely to deceive or cause confusion, then it would also have been necessary to find that it would not have been entitled to protection in a court of law before an opposition could succeed under s.28. This interpretation has recently been endorsed by Justice Tamberlin of the Federal Court in Sydney in a yet unpublished decision of 28 August 1996, Canon Kabushiki Kaisha v Robert James Brook and Rachel Brook trading as The Cannon Watch Company.

In any event, in the present case, I note that there is nothing before me to show that there has been any blameworthy conduct on the part of the applicant, nor any other circumstance which would disentitle the mark to protection in a court of justice.  I do not think that, by applying for the present mark in the face of the opponent's registration, the applicant has committed a blameworthy act.  I find, therefore, the requirements of paragraph 28(d) have also not been made out.  The opponent's case, in terms of its objection under s.28, must therefore fail.

Conclusion
I find that the opponent has failed on all of the grounds relied upon in the notice of opposition.  I therefore dismiss the opposition and, subject to any appeal from this decision and the appropriate fees being paid, the mark should proceed to registration.  The applicant did not appear at the hearing nor make any representations as to costs.  I therefore do not make any award in this matter.

Ian Forno
Hearing Officer

23 December 1996