Katie Echeverry v Unique Vintage Pty Ltd

[2022] ATMO 57

TRADE MARKS ACT 1995

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

Re:Opposition by Katie Echeverry to registration of trade mark application number 1911074 (class 35) – Unique Vintage - in the name of Unique Vintage Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Martin Earley, Baxter Patent Attorneys Pty Ltd

Applicant: Michael Paphazy

Decision:

2022 ATMO 57

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pursued under ss 42, 43, 44, 58, 58A, 60, 62A and 62(b) – ss 58 and 58A considered and established – registration refused.

Background

1. This is a decision on the opposition by Katie Echeverry (‘Opponent’) to the registration of trade mark application number 1911074 (‘Application’) in the name of Unique Vintage Pty Ltd (‘Applicant’) for: 

   Trade Mark:       Unique Vintage                (‘Trade Mark’)

   Filing Date:         4 March 2018                   (‘Relevant Date’)

   Specification:     Class 35: Wholesale and retail of second hand clothing, footwear & headgear (‘Applicant’s Services’)

   Endorsement:   Evidence and/or other circumstances provided under subsection 41(4).

   Provisions of subsection 44(4) and/or Reg 4.15A applied.

2. As required by the Trade Marks Act 1995 (Cth)[1], the Trade Mark was examined and during examination, objections were raised under s 41(4) and reg 4.15A based on International Registration 1369546 (Australian trade mark application 1879484) UNIQUE VINTAGE in class 25 in the name of the Opponent.  Following the filing of evidence by the Applicant and an amendment to the services claimed, the Trade Mark was accepted for possible registration and advertised for opposition purposes on 4 May 2020. The Opponent filed a Notice of its Intention to Oppose registration of the Trade Mark on 3 July 2020 and a Statement of Grounds and Particulars (‘SGP’) on 3 August 2020. The Applicant filed Notice of its Intention to Defend the Trade Mark from opposition on 7 September 2020.

   [1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

3. The parties then filed evidence in accordance with the timetable set out in the Regulations concluding with the Opponent’s evidence in reply on 10 May 2021.

4. The parties were given the opportunity to request a hearing.  The Opponent elected to be heard by video conference and filed written submissions prior to the oral hearing.  The Applicant did not exercise its right to be heard.  This matter was allocated to me to determine in my capacity as a delegate of the Registrar of Trade Marks based on the oral submissions and the material filed during the proceedings as outlined above.

Grounds and Onus

1. The SGP nominated grounds of opposition under ss 42(b), 43, 44, 58, 58A, 60, 62(b) and 62A of the Act.

2. The Opponent bears the onus of establishing one or more of the grounds of opposition[2] on the balance of probabilities[3].   The rights of the parties are assessed as at the Relevant Date, being the filing date of 4 March 2018.

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32] (Keane CJ, Stone and Jagot JJ).

   [3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [133] (Besanko, Jagot and Edelman JJ).

Evidence

1. The following evidence was filed:

   Evidence in Support (‘EIS’)

Declaration of Isabelle Andrea Guzman, trade mark attorney for the Opponent, made on 8 December 2020 with Exhibits IAG-1 to IAG-5; and

Declaration of Katie Echeverry, founder and CEO of the Opponent, made on 4 December 2020 with Exhibits KE-1 to KE-59 (‘First Echeverry Declaration’).

Evidence in Answer (‘EIA’)

Declaration of Eddy Podlubny, Managing Director of the Applicant, made on 24 February 2021 with Exhibits EP-1 to EP-8.

Evidence in Reply (‘EIR’)

Declaration of Isabelle Andrea Guzman made on 27 April 2021 with Exhibits IAG-6 to IAG-8;

Declaration of Katie Echeverry made on 4 May 2021;

Declaration of Carolyn Hanlon,  Managing Director of Atomic Cherry Pty Ltd, wholesale customer of the Opponent, made on 4 May 2021;

Declaration of Karen J Drew, Director of Drewfamily7 Pty Ltd atf Drew Family Trust trading as That Shop, wholesale customer of the Opponent, made on 5 May 2021; and

Declaration of Tracey Spencer, owner of Lana-Rose Fashion, wholesale customer of the Opponent, made on 5 May 2021.

The Opponent

1. The Opponent’s evidence totals over 400 pages and therefore, only a summary of the most relevant information is set out below.

2. The Opponent is the owner of International Registration 1369546 designating Australia under Australian application 1879484 UNIQUE VINTAGE (‘Opponent’s Mark’), filed on 7 September 2017 in Class 25 for “Bathing suits; belts; blouses; bridesmaid dresses; capelets; coats; corsets; dress suits; dresses; dressing gowns; evening dresses; fur stoles; gloves; hats; headbands; jackets; pants; scarves; shawls; shirts; shoes; short-sleeved shirts; skirts; skirts and dresses; skirts and dresses; slips; stoles; tee shirts; tunics; vests; wedding dresses; bridesmaid dresses; evening dresses; fur stoles” (‘Opponent’s Goods’).

3. In 2000, the Opponent founded Unique Vintage Inc (‘Opponent’s Company’), a manufacturer, retailer and wholesaler of clothing and apparel including women’s clothing, accessories and swimwear (‘Opponent’s Goods and Services’).  The Opponent has used the Opponent’s Mark continuously since January 2000 in relation to the Opponent’s Goods and Services. 

4. Since at least June 2001, the Opponent’s Goods have been offered for retail sale at the Opponent’s Company’s website at (‘Opponent’s Retail Website’).  Extracts from the homepage of this website from 2001-2019 using the Wayback Machine have been provided showing use of the Opponent’s Mark.  The Opponent has provided details of the total number of views of this website globally and from Australia since the Opponent commenced tracking this information in 2005.  The Opponent has offered its goods for shipping internationally since at least 30 June 2004 to hundreds of countries. The Opponent also has a website for wholesale customers where the Opponent’s authorised retailers can create an account, access catalogues, browse products and order the Opponent’s Goods at (‘Opponent’s Wholesale Website’).  The Opponent has over 500 retailers of the Opponent’s Goods internationally including in Australia.  Since 2007, the Opponent has also operated a retail store under the Opponent’s Mark in California.

5. The Opponent has provided its worldwide turnover for the last financial year which is tens of millions of Australian dollars; details of advertising expenditure globally for the last five years and in Australia; articles and advertisements in third party magazines including InStyle, TeenVogue, redbook, and People; the Opponent’s Goods and Services have been promoted on various television shows such as E!News, The Today Show and Good Morning America. The Opponent’s Goods have been worn by celebrities and in TV shows such as Pretty Little Liars, True Blood and American Horror Story which screen in Australia and those clothes have featured on the websites of these television shows promoting the Opponent’s Mark.  The Opponent has publicised its goods and services on social media including on Facebook since February 2009 (with approximately 650,000 likes/followers), Instagram since at least October 2012, Twitter since June 2009 and Pinterest. 

6. The Opponent’s Mark is also advertised in website banners of other companies that have been accepted to the Opponent’s Affiliate program which includes Australian retailers.

7. The Opponent has teamed up with famous brands to create exclusive collections including:

   ·    Mad Men costume designer, Janie Bryant, to produce the Janie Bryant x Unique Vintage collections since 2012 promoted on the Opponent’s Australian Pinterest account and featured in an online Australian article.

   ·    Mattel to create the Barbie x Unique Vintage collections since March 2018 sold by various Australian retailers.

   ·    Coca Cola for the Coca-Cola by Unique Vintage collection.

   ·    Disney to create The Happiest Collection on Earth based on Disney characters such as Mickey and Minnie Mouse.

8. The first sale of the Opponent’s Goods in Australia occurred in around May 2005.  The Opponent’s Mark has been used continuously since that time and copies of orders from Australia in 2015-2018 have been provided. Ms Echeverry has provided information about the Opponent’s annual revenue for the Opponent’s Goods and Services in Australia since 2014 and advertising expenditure, a list of over 40 Australian retailers of the Opponent’s Goods and examples of emails between the Opponent and Australian retailers from 2013.

9. Ms Hanlon attests to using the Opponent’s retail and wholesale services since at least 2012, Ms Drew has used the Opponent’s services since August 2014 and Ms Spencer avers that she has used the Opponent’s services since July 2014.

The Applicant

1. The Applicant was founded in April 2010 and declares that since May 2010, the Trade Mark has been continuously used in relation to the sale of second-hand clothes and related products.

2. In September 2010, the Applicant registered the domain name uniquevintage.com.au and commenced retail and wholesale sales of second hand clothing under the Trade Mark.  Since 2011, the Applicant has held warehouse sales events of second hand clothes to the general public.  A list of these warehouse events since 2012 has been provided.  Annual turnover for financial years 2010-2018 is provided and approximate annual advertising expenditure since financial year 2011.

3. In 2011, the Applicant established a Facebook page at uniquevintagewholesale which has 20,000 likes/followers.  On 30 October 2017, the Applicant began promoting its business on Instagram.

4. The Applicant declares that it was not aware of the Opponent’s brand for some years after the Applicant commenced business and once it became aware, did not appreciate that the Opponent used the UNIQUE VINTAGE mark in Australia.

Discussion

Section 58

1. Section 58 allows for opposition to a trade mark on the grounds that the applicant is not the owner of the trade mark.

2. The owner of a trade mark in Australia is the first to use the mark or apply for registration, whichever is the earlier. 

3. To establish this ground, the Opponent must show use in Australia, by some person other than the Applicant, of a trade mark that is substantially identical to the Trade Mark[4] and which has been used for goods or services that are the ‘same kind of thing’ as the Applicant’s Services.[5]

   [4] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495, 513 (Gummow J).

   [5] Re Hicks's Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, 640 (Holroyd J).

4. The Opponent conducts its business under the Opponent’s Mark which is identical to the Trade Mark. 

5. Since 2000, the Opponent has operated an online retail business selling the Opponent’s Goods.  The Opponent sells clothes it manufactures in a vintage or retro style but also sources second hand vintage products including from Hollywood and television production studios.[6] 

   [6] First Echeverry Declaration, Exhibit KE-11.

6. Although initially the website was not specifically addressed to Australian consumers and retailers, the Opponent’s business and reputation grew rapidly and by 2004, the Opponent was shipping the Opponent’s Goods internationally.  On 15 June 2005, the Opponent made its first sale of clothing to an Australian consumer.[7] The Opponent’s Retail Site appears to have initially focused on vintage clothing and its own clothing products but by 2001, the site featured footwear and accessories[8]. The evidence shows that by 2006, the Opponent was retailing accessories such as hats, by 2007 featured wedding dresses and by 2008 sold swimwear[9].  By at least 2007, the Opponent’s Retail Website featured a phone number for customers outside the US to call and was promoting international shipping on the homepage.[10]  Millions of Australians have viewed the Opponent’s Retail Website site since tracking of visits commenced on 1 January 2005.  By 2009, the Opponent had established its Facebook profile (which provides a link to the Opponent’s Retail Website) and Twitter account.

   [7] First Echeverry Declaration, Exhibits KE-8 and KE-9.

   [8] First Echeverry Declaration, Exhibit KE-13.

   [9] First Echeverry Declaration, Exhibit KE-11.

   [10] Ibid.

7. All of the above activities occurred prior to the Applicant’s adoption and use of the Trade Mark.  In Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2),[11] Deane J discussed the nature of use required to establish ownership and commented:

   The prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of “proprietor” of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods with respect to which the mark is used and that person.  The requisite use of the mark need not be sufficient to establish a local reputation and there is authority to support the proposition that evidence of but slight use in Australia will suffice to protect a person who is the owner and user overseas of a mark which another is seeking to appropriate by registration under the Trade Marks Act 1995.

   [11] [1984] HCA 73, [21] (Gibbs CJ, Mason, Wilson and Deane JJ).

8. Presenting a trade mark on a foreign website can amount to use of that mark in Australia, provided that there is a sufficient connection with Australian purchasers.[12]  In the present case, the Opponent’s Retail Website was directed to consumers outside the USA in that it promoted international shipping and provided a specific telephone number for non-US consumers to contact the Opponent.  Further, in 2005, an order was placed and received by an Australian consumer.

   [12] Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471 (Merkel J).

9. I am satisfied that the Opponent is the first user of the trade mark UNIQUE VINTAGE in Australia for clothing and retail services in relation to clothing, footwear, headwear and accessories including second-hand items, and that use occurred well before the Relevant Date or use of the Trade Mark by the Applicant.  The retail services of the Opponent are the same kind of thing as the retail services provided by the Applicant.

10. Although the Opponent claims to have offered wholesale services since 2000, the Opponent’s evidence suggests that these services may not have been offered until 2012.  Exhibit KE-16 of the First Echeverry Declaration refers to the commencement of the Opponent’s wholesale services selling goods it manufactures in January 2012 which is supported by the Wayback Machine extracts of the Opponent’s Retail Website.[13]  The Opponent bears the onus of establishing the ground of opposition on the balance of probabilities.  In my opinion, Ms Echeverry’s claim to have offered wholesale services of apparel in Australia prior to 2010 is not established by the evidence. 

    [13] First Echeverry Declaration, Exhibit KE-11.

11. I must now consider whether clothing and/or retailing of clothing, footwear and headgear including secondhand items are the ‘same kind of thing’ as the Applicant’s “wholesale of second hand clothing, footwear & headgear”. 

12. The test for whether goods and/or services are ‘the same kind of thing’ is a narrower assessment than whether they are goods or services ‘of the same description’ or are ‘closely related’.[14]  Essentially, the two sets of goods or services must be “true equivalents”.[15]

    [14] Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184, [12]-[13] (Kenny J).

    [15] Ibid, [89].

13. The Opponent referred to the recent decision of Hearing Officer Knowles in Andrew Scott v The Line II Pty Ltd[16] which held that “clothing” in class 25 and “retailing of clothing” in class 35 were not the ‘same kind of thing’.  The Opponent argued that the present case is different because the Applicant is not a traditional ‘bricks and mortar’ retail or wholesale business but instead operates substantially online, provides second-hand products so the Applicant does not provide intermediary services between manufacturers and retailers in terms of ordering services, return procedures and warranties.  I agree with my colleague Hearing Officer Knowles that clothing and ‘retailing of clothing’ are not the ‘same kind of thing’.  Clothing are goods to be worn by individuals whereas retail services generally involve the bringing together of a range of items, whether manufactured by the retailer or a third party.  The goods are not a substitute for the service or vice versa. 

    [16] [2022] ATMO 9.

14. The next question is whether the Opponent’s retailing services of clothing, footwear and headgear including second hand items are the same kind of thing as the Applicant’s services ‘wholesale of second hand clothing, footwear & headgear’. By definition retail and wholesale services are different.  Retail is the “sale of commodities to household or ultimate consumers, usually in small quantities”[17] whereas ‘wholesale’ is the “the sale of commodities in large quantities, as to retailers or jobbers rather than to consumers directly”.[18]  Hence, retail services and wholesale services are not ‘true equivalents’ in that the class of consumer is different, the volume of goods sold is not the same and generally the pricing is not the same in that a discount is offered for wholesale services due to the bulk nature of goods sold.  Whilst the Applicant and the Opponent both engage in wholesale and retail services, each of the parties offers their retail services through a different trade channel to their wholesale services.  The Opponent has separate retail and wholesale websites, whereas the Applicant’s website is for wholesale customers only and retail sales are made at intermittent warehouse sales events.  In my view, retail of clothing, footwear and headgear is not the same kind of thing as the wholesale of clothing, footwear and headgear.

    [17] Macquarie Dictionary (online at 11 April 2022) ‘retail’ (def 1).

    [18] Macquarie Dictionary (online at 11 April 2022) ‘wholesale’ (def 1).

15. Accordingly, the Applicant is not the owner of the Trade Mark in Australia for retail services of second-hand clothing, footwear and headgear. I note the Applicant’s claimed use since 2010 but s 58 does not provide an exception from refusal based on honest concurrent use, and therefore the Applicant cannot rely on its alleged use of the Trade Mark to remedy its lack of proprietorship in relation to the claimed retail services[19]. The s 58 ground of opposition has been established with respect to “retail of second hand clothing, footwear & headgear” but is not established with respect to “wholesale of second hand clothing, footwear & headgear”.

    [19] Martin Richards v Black Star Pastry Pty Ltd [2022] ATMO 1, [69] (Hearing Officer Knowles).

Section 58A

1. To establish this ground, the Application must first have been accepted for registration under s 44(4) or reg 4.15A in the face of the Opponent’s Mark, on the basis of prior and continuous use. If that is the case, the ground of opposition under s 58A can be established if the Opponent demonstrates that there has in fact been continuous use of the Opponent’s Mark for similar services or closely related goods commencing prior to the date of first use of the Trade Mark.

2. The Opponent is the owner of International Registration 1369546 designating Australia under Australian application 1879484 for the Opponent’s Mark covering the Opponent’s Goods which has an earlier priority date than the Trade Mark. The Trade Mark was accepted for registration in the face of this earlier application under the provisions of reg 4.15A.  

1. As noted above at [26]-[29], the Opponent has established first use of the Opponent’s Mark for clothing and retail of clothing, footwear and headgear.  The evidence establishes that this use has been continuous to the present time.  Accordingly, I must consider whether clothing and/or retailing of clothing, footwear and headgear (including second hand clothing) are closely related goods or similar services to the wholesale of secondhand clothing, footwear and headgear.

2. Clothing is regarded as closely related to retailing and wholesaling of clothing[20].    It is usual practice for many manufacturers of clothing, footwear and headgear to offer their goods for retail sale online and/or through a bricks and mortar store.  They also sell their goods wholesale to other retailers such as department stores.

   [20] Richard James Pty Ltd v Grant Olver Investments Pty Ltd [2005] ATMO 18 (Hearing Officer R. Dunn); Andrew Scott v The Line II Pty Ltd [2022] ATMO 9 (Hearing Officer Knowles).

3. I turn now to the issue of whether retailing of clothing, footwear and headgear (including second hand products) are similar services to wholesale of second hand clothing, footwear and headgear. Services are similar if they are the same or of the same description. Whilst I found that these services are not the ‘same kind of thing’ for the purposes of s 58, the test for whether services are of the same description is broader and involves the application of the same principles as goods of the same description[21] namely consideration of the nature of the services, their uses and trade channels.    

   [21] MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236, 243 (Burchett, Sackville and Lehane JJ).

4. Firstly, it is common for retailers of clothing, footwear and headgear to host warehouse sales offering goods including overstocked and sample products, at a discount.  These warehouse sales are substantially similar to those held by wholesalers.  These sales are generally promoted by both retailers and wholesalers online and on social media.

5. Also, the relationship between retailing and wholesaling of clothing, footwear and headgear is, in my view, more pronounced in the case of vintage or second hand items.  As both parties have attested, it is difficult to source vintage items and hence retail and wholesale services of vintage and second hand clothing, footwear and headgear may be directed to the same persons.  Wholesalers of vintage and secondhand clothing, footwear and headgear are likely to purchase their stock from various sources including retailers.  Vice versa, wholesalers are likely to be one of the outlets from which retailers of vintage and second hand items acquire their goods.  Both are engaged in the same business of providing vintage and second hand clothing, footwear and headgear and due to the difficulty in sourcing products, the volume of goods sold at wholesale and retail level are likely to be less disparate for vintage and second hand goods than new goods.  I am satisfied that retailing of clothing, footwear and headgear (including second hand products) are similar services to wholesale of second hand clothing, footwear and headgear.

6. The s 58A ground of opposition has been established with respect to “wholesale of second hand clothing, footwear & headgear”. Accordingly, the Opponent has succeeded on this ground.

Decision and Costs

1. The Opponent has established grounds of opposition under s 58 and s 58A. Accordingly, I refuse to register trade mark number 1911074. Noting the appeal period, this refusal will be recorded one month from the date of this decision unless the Registrar of Trade Marks is served with a notice of appeal. If an appeal is filed, the disposition of this opposition will be for the court. Otherwise, the disposition of the Application should be in accordance with the Court’s order or direction.

2. Both parties requested an award of costs. As costs generally follow the event, I see no reason to depart from that rule. I award costs against the Applicant under s 221 in the applicable amounts set out in Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

13 April 2022