Karen Bazzan v Hitchley & Harrow Pty Ltd

[2019] ATMO 120

TRADE MARKS ACT 1995

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

Re:Opposition by Karen Bazzan to registration of trade mark application 1802201 (25) – H&H HITCHLEY&HARROW EST 1928 LONDON (Figurative) – in the name of Hitchley & Harrow Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: Self-represented

Applicant:  Rostron Carlyle Lawyers

Decision:

2019 ATMO 120

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 44, 58A, and 60 considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Karen Bazzan (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Hitchley & Harrow Pty Ltd (‘Applicant’): 

Application Number:

1802201

Filing Date:

17 October 2016

Goods:

Class 25: Apparel (clothing, footwear, headgear); Articles of clothing made from wool; Articles of clothing made of leather; Articles of water-resistant clothing; Articles of waterproof clothing; Articles of weatherproof clothing; Articles of windproof clothing; Babies' pants (clothing); Belts (clothing); Casual clothing; Children's clothing; Clothing; Clothing for babies; Clothing of imitations of leather; Clothing of leather; Denims (clothing); Girl's clothing; Infants' clothing; Jackets (clothing); Jerseys (clothing); Jump suits (clothing); Knitted clothing; Knitwear (clothing); Ladies clothing; Leather belts (clothing); Linen articles of clothing; Men's clothing; Pants (clothing); Rainproof clothing; Ready-made clothing; Ready-to-wear clothing; Silk clothing; Stuff jackets (clothing); Water-resistant clothing; Waterproof clothing; Weather resistant outer clothing; Weatherproof clothing (not specifically adapted for protection against accident or injury); Women's clothing; Woollen clothing; Woven articles of clothing; Clothes

(‘Applicant’s Goods’)

Trade Mark:

(‘Trade Mark’)

2.  Following the advertisement on 9 March 2017 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose registration on 21 March 2017.  The Opponent then filed a Statement of Grounds and Particulars on 24 April 2017 (‘SGP’), which following an application to extend the time for filing the SGP, was accepted by this office. The SGP raised grounds of opposition under ss 44, 58A and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 26 June 2017.

Evidence

1. The Opponent filed no evidence in this matter.

2. The Applicant filed Evidence in Answer (‘EIA’) on 15 January 2018.  This evidence consists of a declaration by Melanie Wellsteed, director of the Applicant, made on 12 January 2018 with Exhibit MW-1 (‘Wellsteed Declaration’). 

   5.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  By letter issuing from IP Australia on 5 June 2018 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions upon which they wished to rely.  On 13 June 2018 the Applicant filed its submissions (‘Applicant’s Submissions’).  The Opponent did not file any submissions.

   6. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the   application was opposed has been established.  

   In doing so I take account of       the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

   7.  As the Opponent has not provided any evidence, I cannot provide any information about the Opponent.

   8.  In the SGP, the Opponent refers to and asserts that it is the registered owner of the trade mark set out below (‘HH Trade Mark’). While not strictly relevant for the s 44 ground of opposition, I note that the HH Trade Mark is owned by House of Hampton and Harlow Pty Ltd and the Opponent has provided no evidence explaining the connection between the Opponent and the registered owner of the HH Trade Mark.

Number	Trade Mark	Priority Date	Goods
1781890	7 July 2016	Class 25: Clothing, including jodhpurs, jackets, shirts; headgear including caps, hats; footwear

The Applicant

9.  The Applicant is an Australian company that was incorporated on 18 May 2015 and specialises in the manufacture and sale of clothing, apparel and accessories primarily designed for women, girls and infants.

10.     The Wellsteed Declaration contains the following claims/statements:

·     The Applicant is the successor entity to a clothing retail business operated by the declarant, which commenced under the name ‘Black Label Equestrienne’ in 2009.  In 2014 the declarant’s clothing retail business rebranded and commenced trading under the name Hitchley and Harrow.

·     Since 2009 the Applicant and its predecessor in title have used the trade mark ‘Hitchley and Harrow’ for its clothing line.  In March 2013 the declarant engaged a graphic design company to design the Trade Mark which it adopted for its clothing line in the same month.  

·     The Applicant advertises using the Trade Mark through various formats but primarily through the use of direct marketing, its website and Facebook page.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 44, 58A and 60 of the Act. To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

   12.     The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 17 October 2016 (‘relevant date’), being the filing date of the application in Australia.[3]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Following Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

   13. As the Opponent has filed no evidence and provided no submissions to support the particulars in the SGP I have no hesitation deciding that the Opponent has not discharged the onus on it and has consequently not to any extent established the ss 58A and 60 grounds of opposition nominated in the SGP since these grounds require evidence of use of or a reputation in a nominated mark.

   Discussion

   Section 44

2. The relevant provisions of the Act with respect to the ground of opposition pursuant to s 44 are reproduced below:

   Section 44 - Identical 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)it 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.

   Note 1: For deceptively similar see section 10.

   Note 2: For similar goods see subsection 14(1).

   Section 10 - Definition 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.

   15. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

3. In the event that each of these requirements is satisfied by the Opponent it may be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4) of the Act, that there has been honest concurrent use of the Trade Mark, other circumstances exist which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.

4. I note that while the Trade Mark is subject to an endorsement under the provisions of s 44(3)(b) of the Act this endorsement relates to a different mark raised during examination.

5. The Opponent has particularised the ground of opposition in the SGP by reference to the HH Trade Mark.  The HH Trade Mark has a priority date that is earlier than the priority date of the Trade Mark.  I consider, indeed it is conceded by the Applicant in the Applicant’s Submissions, that the goods for which the HH Trade Mark are registered are similar to the Applicant’s Goods, as both marks are registered for, in essence, clothing, footwear and headgear.  The first and third requirements are satisfied in respect of the HH Trade Mark. 

   Substantially identical and/or deceptively similar

6. I will now consider whether the Trade Mark is substantially identical to the HH Trade Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd 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.[4]

   [4] (1963) 109 CLR 407, [12].

   20.       The Trade Mark and the HH Trade Mark are set out below:

   21.       On a side by side comparison there are very clear differences between the respective trade marks. The Trade Mark contains the letters ‘HH’ separated by an ampersand, the words ‘Hitchley & Harrow est 1928 London’ and a floral bloom vine element.  The HH Trade Mark contains the letters ‘HH’ without an ampersand, the words ‘Hampton Harlow’ and ‘est MMXVI’ in very small font, the word ‘equestrian’ and a very differing device which includes a thick central ring, gum tree branches, a crown, a ribbon banner and polo sticks.  The differences between the respective trade marks are sufficient for me to conclude that they are not substantially identical.  I move then to consider whether the Trade Mark and HH Trade Mark are deceptively similar.

   22.       The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   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 [trade mark].[5]

   [5] Ibid [13].

   23.       Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[6] at [49]; Australian Woollen Mills[7] at 658.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[8] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[9] at 594 – 595.

   Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[10]

   [6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [7] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   [8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

   [9] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

   [10] [2012] FCA 1022, [38]-[46].

   24.     By reason of the differences between the respective marks set out in paragraph 21 above, I do not consider the marks to be deceptively similar.  Other than the shared use of the letters ‘HH” (albeit separated by an ampersand in the Trade Mark) the marks are significantly dissimilar, both aurally and vidually.  While I note that there is some similarity between the use of the words Hitchley & Harrow in the Trade Mark and Hampton Harlow in the HH Trade Mark the words Hampton Harlow are displayed in such a small font as to leave no impression on the consumer, as opposed to the words Hitchley & Harrow which are displayed in large, prominent font.  I consider that the overall difference between the marks is such that when considered as a whole, even allowing for imperfect recollection, it is unlikely that the use of the Trade Mark will deceive or cause confusion because of any similarity it has to the HH Trade Mark.

7. I find that the Opponent has failed to establish the ground of opposition under s 44.

   Decision

8. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application no. 1802201 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

   Costs

   27. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

   Nicholas Smith

   Hearing Officer

   Oppositions and Hearings

   6 August 2019