Ken Done & Associates and Kenneth Stephen Done v Janet Teuma

[2000] ATMO 66

TRADE MARKS ACT 1995

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

Re:Opposition by Ken Done & Associates Pty Limited and separate opposition by Kenneth Stephen Done to registration of trade mark applications 755754(25) and 755755(25) - JIM & GORDON DOWN UNDER, AUSTRALIA and JIM DOWN UNDER with KOALA device respectively - both filed in the name of Janet Teuma.

Background

Janet Teuma (the applicant) filed both of the above numbered applications on 25 February 1998 in respect of 'clothing, footwear, headwear'. Application 755754 is a word trade mark JIM & GORDON DOWN UNDER, AUSTRALIA whilst application 755755 is the composite trade mark represented below.

Both applications were examined and accepted without objection and advertised as accepted in the Australian Official Journal of Trade Marks (the Journal) of 25 June 1998. On 25 September 1998, opposition to both trade marks was filed by two separate opponents - Ken Done & Associates Pty Limited and Kenneth Stephen Done.

All notices of opposition, from both opponents, in relation to both trade mark oppositions, are identical. These notices outline grounds of opposition in terms of s.57 of the Act in relation to s.41, s.42, s.43 and s.44, and also grounds under s.58, s.59, s.60, s.61 and s.62.

All of the evidence in support of the opposition was filed and served concurrently for both opposition matters by both opponents by 6 August 1999. The applicant chose not to submit any evidence in answer and the opponents then requested to be heard in both matters. The matters were heard in Canberra on 28 March 2000. The opponents were represented via telephone by Ms Fleur Hinton of PricewaterhouseCoopers Legal, whilst the applicant was not represented at the hearing. From this point in these reasons for my decision, until the award of costs, I intend to refer to the opponents in the singular - as though a single party had brought the opposition - although both are identically involved.

The Evidence

The evidence in support consists of three declarations, all attested by Paul Lister, General Manager of Ken Done & Associates Pty Limited. The first Lister declaration, of 5 May 1999, with exhibits 'PL1' to 'PL12' inclusive annexed, goes toward providing details of the trade marks that are relied upon by the opponent in its case. These marks include koala device marks, DOWN UNDER word marks, combination trade marks of the koala devices and words DOWN UNDER and combinations of the words DOWN UNDER and AUSTRALIA. The information submitted includes the goods on which marks are used, the time periods of use of certain marks, examples of advertising under the marks, order forms including unit prices and examples of the marks in use.

The second Lister declaration, of 24 June 1999, with exhibits 'PL1' to 'PL4' inclusive annexed, adds further detail to the above material and also provides retail sales figures for the month of March 1999 in relation to the opponent's 'winter koala' collection.

The third Lister declaration, of 5 August 1999, with exhibits 'PXL1' to 'PXL4' inclusive, provides more detailed information on the combined sales figures for its koala device and DOWN UNDER word trade marks for each of the years 1983 to 1998. Figures for the combined advertising expenditure for these marks in those years are similarly treated. Also in evidence, in the exhibits to this declaration, are documents to support the initial acceptances and registrations of the opponent's DOWN UNDER trade marks.

Submissions

At the hearing, Ms Hinton began her submissions by stating that the opponent only intended to rely on two of the grounds listed in the notice of opposition, those under s.43 and s.60.

In relation to s.43 she said that both of the opposed marks had a connotation in relation to the opponent's prior reputation in its trade marks, particularly those for which the opponent had now made application under numbers 782096 and 782121. Ms Hinton submitted that although these trade marks did not constitute a barrier under s.44, because the date of application was later than the present applications, they did provide a barrier in terms of both s.43 and s.60. She claimed that both the koala device and the words DOWN UNDER found in the composite mark of the applicant, number 755755, connoted that the mark was part of the family of marks owned by Ken Done & Associates, especially in view of the use that this opponent had made of these two features in many of its marks. Ms Hinton cited an earlier, as yet, unpublished decision of Deputy Registrar Hardie issued on 19 January 2000, in relation to material in a trade mark being associated with another party in the minds of the general public, to support her contention that s.43 applied in the present circumstances. Ms Hinton conceded that although this connotation was not as strong for the applicant's other trade mark, number 755754, nevertheless the connotation still existed. This was so, she argued, because of the common elements in the two applications of the words JIM and DOWN UNDER. She said that this provides a chain of connotation, linking firstly the opponent's marks to 755755 and then, because of the obvious connection between 755755 and 755754, to a further association of the opponent's marks with 755754.

In terms of s.60, Ms Hinton submitted that the two presently applied for marks were deceptively similar to a range of the opponent's marks containing either, or both, of the elements of a koala device and the words DOWN UNDER. The most notable of these, she said, were the two marks (representations of which appear below in the Discussion section of these reasons) now applied for, under numbers 782096 and 782121. She said that the evidence showed that these two marks owned by the opponent had been used as unregistered trade marks from 1985, in the case of 782121, and from 1987, in the case of 782096. The reputation acquired by these two marks, Ms Hinton claimed, provided a sufficient cause for the likelihood of deception or confusion.

Although the applicant did not appear at the hearing, some written submissions had been provided during the evidence phase of the opposition, on 18 May 1999, and also prior to the request to be heard from the opponents, on 4 November 1999. These submissions had been provided by the agent for the applicant, Mr Allen Evans of Evans & Rose, Solicitors, and he had argued that the opponent sought to enforce unrealistic monopolies in the words DOWN UNDER and in any koala device. These elements were common to the clothing and footwear trades, he had submitted, and other traders should not be prevented from the use of such elements in their trade marks.

At the hearing Ms Hinton denied that this was the case. She submitted that some, but not all, trade marks containing both koala devices and the words DOWN UNDER were objectionable to her client, and that the present applications fell into the category of being too similar.

Both parties requested their costs if successful in the matters.

Discussion

As listed above, the notice of opposition detailed grounds of opposition in terms of s.41, s.42, s.43, s.44, s.58, s.59, s.60, s.61 and s.62 of the Act. No support, either in the evidence or in the submissions, is supplied for those grounds under s.41, s.42, s.58, s.59, s.61 or s.62. Thus, in relation to those grounds, I find the opposition not successful.

Of the remaining three grounds, under s.43, s.44 and s.60, the attorney for the opponent argued only those under s.43 and s.60. Some of the evidence, however, may also provide support for a ground under s.44, thus for the sake of completeness, I intend to deal with this ground also.

(a) Section 43 - Trade mark likely to deceive or cause confusion

The legislative framework for this ground of opposition reads:

43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

The opponent sought to show that a 'connotation in the mark' existed for application number 755755, by means of the elements of the koala device and also by means of the words DOWN UNDER within the mark. This application, depicted in the Background section of these reasons, contains a cartoon of a koala standing upright with hands on hips. The figure is shown in front view, from head to foot, with a slightly bemused or even amused expression on its face.

In relation to the concept of what constitutes a 'connotation' in a trade mark, I turn to some recent decisions issued from this Office.

In the CONFEST decision, Down to Earth (Victoria) Co-Operative Society Ltd v Schmidt, (1998) 41 IPR 632 Hearing Officer Forno observed, at 643:

"Connotation" is a new term in trade mark legislation and as such has not yet been interpreted by the courts.  The following are two dictionary definitions which define the ordinary meaning:

Macquarie Dictionary:

1. the act or fact of connoting.  2. that which is connoted; secondary implied or associated meanings(as distinguished from denotation): for example the word "bum" has connotations of vulgarity.

Oxford English Dictionary

1. The signifying in addition; inclusion of something in the meaning of a word besides what it primarily denotes; implication.

Therefore it can be said that the word connotation refers to that which is implied in a trade mark - in addition to its essential or primary meaning.  A connotation can result from the trade mark as a whole, or can result from a sign contained within the trade mark.  The prominence and context of the potentially deceptive or confusing element in the trade mark is important in deciding whether the trade mark is likely to deceive or cause confusion.  Considerations under s.43 concentrate on the matter within the trade mark that could cause deception or confusion in the mind of the relevant buying public.  For example, deception or confusion could arise in regard to the character of the services, or the implied endorsement or licence of services by a person or organisation.

Hearing Officer Zars, in her decision on the HERO trade mark, N. V. Sumatra Tobacco Trading Co v Philip Morris Products Inc. [1998] ATMO 69 (30 December 1998), also comments concerning s.43:

With reference to the first point argued by Mr Burley, I will not be able to place much weight on it, as it is the Registrar's understanding that the provisions of section 43 were intended to allow a ground of rejection concerning possible deception or confusion arising from the nature of the mark itself when applied to the goods or services. The provisions exclude deception or confusion likely to be caused by a conflict between the marks. This was set out in an appendix to a recent, as yet unpublished, Trade Marks Office decision Down to Earth (Victoria) Co-operative Society Limited v George Schmidt, issued 9 April 1998, where the hearing officer stated the following:

The provisions of this section as explained in:

* The Working Party's Recommended Changes to the Australian Trade Marks Legislation - a report to the Hon. Ross Free MP, Minister for Science and Technology, July 1992,

* The Explanatory Memorandum, circulated by the authority of the Minister for Small Business, Customs and Construction, Senator the Hon. Chris Schacht, and

* The Trade Marks Office Draft Manual of Practice and Procedure,

provide that an application for registration must be rejected if the trade mark, because of some signification inherent to it, would be likely to deceive or cause confusion because of its use on the relevant services [or goods].

As explained in the above Draft Manual of Practice and Procedure, connotations of the kind that would debar a trade mark from registration under the provisions of s.43 may result from the whole trade mark or a part thereof. Grounds for rejection under s.43 are, however, absolute grounds in that the likely deception or confusion must arise from the trade mark itself. The provision does not apply to deception or confusion that might arise from conflict between two trade marks.

The legislation at s.43 only directly involves one trade mark - the application. It sets out a path for the possible rejection of a trade mark application based on the consideration of that mark alone. The assessment involves a determination of not only the trade mark in its entirety, but also each element and their combinations, to assess the likelihood that the mark suggests (or connotes) a meaning that will produce deception or confusion in the minds of the purchasing public.

As recorded above in the CONFEST decision, Hearing Officer Forno observed, 'the word connotation refers to that which is implied in a trade mark'. Hearing Officer Zars, in the HERO decision, concurs with the words 'the provisions of section 43 were intended to allow a ground of rejection concerning possible deception or confusion arising from the nature of the mark itself when applied to the goods or services'. This line of reasoning has also been examined by Justice Branson in Registrar of Trade Marks v Woolworths Limited [1999] 45 IPR 411 at 434-435:

79 The broad provision contained in s 28 (a) of the 1955 Act is now reflected in two separate sections of the Act - ss 43 and 60. Section 43, which is a ground for the rejection of an application for registration of a trade mark, looks to the inherent qualities of the trade mark of which registration is sought for the purpose of identifying whether the use of the trade mark would be likely to deceive or cause confusion. Section 60, which is a ground of opposition to registration, is concerned with whether the use of the trade mark of which registration is sought would be likely to deceive or cause confusion by reason of the reputation in Australia of another trade mark.

It seems to me, from these comments, that if a connotation (or implied meaning) does exist for a particular trade mark, that could lead to deception or confusion in the minds of the purchasing public, then it must be possible to identify that meaning from that trade mark alone. Simply by a consideration of the mark applied for alone, it must be the case that a sufficiently strong meaning, from the inherent characteristics of the mark itself, would be apparent for a substantial number of Australians - if s.43 were to operate in favour of the opponent. The Trade Marks Office Draft Manual of Practice and Procedure in Part 29 at paragraph 1.4, in dealing with s.43 states as a guide:

Considerations under [s43] concentrate on the matter within the trade mark that could cause deception and confusion in the mind of the relevant buying public. For example, deception or confusion could arise in regard to:

·Character of the goods and/or services including their composition, nature or other properties

·Quality or quantity of the goods and/or services

·Geographical origin of the goods and/or services

·Intended use or purpose of the goods and/or services

·The endorsement or licence of a product or service by a person or organisation.

The opponent had submitted that the present trade mark did possess a connotation and invited me to consider a number of the opponent's trade marks, both registered and unregistered, to verify that contention. As I have described above, I do not accept that s.43 operates in that manner. Section 60 of the Act exists for an examination of possible conflict with another trade mark, that could lead to deception or confusion, brought about by the use of the applied for trade mark.

In the present circumstances, I do believe that there does exist some 'connotation' in relation to the applicant's marks. Application 755754 contains the words DOWN UNDER, AUSTRALIA whilst application 755755 contains the words DOWN UNDER and the device of a KOALA. These elements in the trade marks indicate to me that the goods involved have an Australian connection in some way. The connotation that the opponent sought to establish, however, is that elements of the mark implied a connection with the artwork of Ken Done and thus a connection with trade marks owned by the opponent. Ms Hinton submitted that Deputy Registrar Hardie, in the as yet unpublished BRAVEHEART office decision[1], provided support for this contention. In the BRAVEHEART case, Ms Hardie had found that the trade mark BRAVEHEART THE MUSICAL would deceive or cause confusion in the face of the word BRAVEHEART, which had attained 'significant currency' as being the name of a successful film. No competing trade marks were involved. As Ms Hardie states:

[1] Twentieth Century Fox Film Corporation v Michael F Durkan [2000] ATMO 5 (19 January 2000)

The operation of section 43 does not, however, depend on the existence of a conflicting trade mark.  The purpose of the section is to exclude from registration any trade mark which, in respect of the nominated goods or services, conveys a meaning which, in respect of those goods or services, is likely to deceive or confuse. This does not require the existence of a conflicting trade mark.

On this basis, for me to find that the present trade mark offended under s.43, in the manner suggested by the opponent, I would have to find that an inspection of the trade mark brought to mind a connotation that this trade mark revolved around the style of artwork of Ken Done. I do not believe this to be the case. In my opinion, the style of the lettering of the words DOWN UNDER and of the drawing style of the koala in the present applications differ markedly from the upside down lettering of the words DOWN UNDER and the drawing style of the koalas in the opponent's marks.

It seems to me that the contention, that the present applications indicate a connotation that the artwork in the trade marks is that of Ken Done, may be better pursued under either s.60 or through the provisions of other legislation.

Accordingly, I find that the ground relied upon under s.43 has not been established and the opposition in relation to it is not successful.

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

The relevant section of the Act 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.

Success under this ground of opposition depends on the opponent establishing its case on three legs, viz. the similarity of the applied for mark with the opponent's mark, a reputation for the opponent's mark prior to the date for registration of the applicant's mark and a likelihood of deception or confusion that would be produced were the applicant's mark used in the face of that reputation.

The opponent did not contend that it owned marks substantially identical to the present application, but that it did own marks that are deceptively similar. The familiar test for deceptive similarity of trade marks is found in Australian Woollen Mills Ltd v F. S. Walton & Co. Ltd. (1937) 58 CLR 641 where the judgement of Dixon and McTiernan JJ at 658 reads:

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.

The opponent presented a host of its marks that it claimed conflicted with the two present applications. Firstly, two registered marks numbered 782121 and 782096, respectively, as shown.

Secondly, 24 unregistered koala device marks as shown below.

1. 2   3   4

2. 6   7         8

3. 10    11 12

1314  15 16

1. 18 19     20

2. 22   23           24

I note that six of the above koala device marks also incorporate the words DOWN UNDER, scripted upside down.

Thirdly, four registered DOWN UNDER trade marks, depicted upside down under numbers 492150, 492151, 498260 and 498261. I note, however, that these trade marks of the opponent gained registration under the repealed Act and that all carry endorsements. These endorsements read:

Registration of this trade mark shall give no right to the exclusive use of the words DOWN UNDER except as represented in the mark. It is a condition of registration that the mark will only be used in relation to goods produced in Australia, New Zealand and/or adjacent Pacific Islands. Accepted on provision of evidence of use.

These four registrations have identical representations as shown.

Fourthly, the other trade marks put forward by the opponent as being in conflict with the present applications involve a series of DOWN UNDER marks. The opponent has claimed use of a series of trade marks written in the same script as for the DOWN UNDER mark depicted upside down above.

The only differences between the opponent's series and the opponent's mark depicted above is that the letter O is normally scripted in the series of marks (rather than having the appearance of a representation of the sun) and that the series of marks contain orientations that are both the right way up and upside down, in lettering of both black on white and white on black.

Despite a claim for use of the above series of marks, the evidence - with literally dozens of examples showing actual use of the opponent's marks - does not show use of the mark DOWN UNDER with a normal orientation, except in two instances of newspaper advertising and in one instance of the typed description of the goods on an invoice. The opponent has shown use on T-shirts of a mark that is a combination of the head of a koala together with the words AUSTRALIA above the representation and DOWN UNDER scripted upside down below the representation. Combinations of a koala device with the words DOWN UNDER scripted upside down are also in evidence, as shown in the representations of the registered marks 782121 and 782096 and also those numbered 4, 9, 19 and 20 from the 24 unregistered koala device marks shown above. Thus, for purposes of comparison with the present applications, my further discussion of the opponent's DOWN UNDER marks is, therefore, limited to the versions that are lettered upside down.

I note two earlier decisions[2] of Hearing Officer Hardie, as she then was, in relation to the words DOWN UNDER. These decisions both issued on 13 December 1990 as a result of two separate ex-parte matters related to registrability under the Trade Marks Act 1955. Willow Lea Pastoral Company Limited had made application to register the words THE DOWN UNDER for specific goods in class 7 and Chubb Australia Limited had made application to register a series of trade marks, DOWN-UNDER, DOWNUNDER and DOWN UNDER, for specific goods in class 6.

[2] Re Application by Willow Lea Pastoral Co Pty Ltd 20 IPR 180;

Re Application by Chubb Australia Ltd 20 IPR 175

In her decisions, Ms Hardie looked at dictionary definitions of the words DOWN UNDER and concluded, in the Willow Lea decision, 20 IPR 180 at 183 that:

The fact that 'down under' is authoritatively recorded by contemporary sources as an English term which means Australia or Australia and New Zealand is, I consider, sufficient ground to find that the term will be required by others in the normal course of promoting their business and that it is therefore devoid of inherent distinctiveness.'

A similar conclusion is also drawn by Ms Hardie in the Chubb Australia decision. I am in agreement with this approach despite different tests imposed under the Trade Marks Act1995. Nevertheless, since those decisions the opponent has registered the words DOWN UNDER. Against these registrations, registered under the 1955 Act, numbered 492150, 492151, 498260 and 498261, a specific disclaimer of exclusive use of the words DOWN UNDER is recorded. Clearly, the opponent's rights in these trade marks do not extend to a monopoly in the words DOWN UNDER, per se. The opponent's mark was found to be capable of becoming distinctive, in terms of s.25 of the repealed Act, and registered in the former Part B of the Register, on the basis, not only of evidence of use, but also on the fact that the words are written upside down in a stylised form.

(i) Deceptive similarity in relation to 755754

Application 755754 is a word-only trade mark, for the words JIM & GORDON DOWN UNDER, AUSTRALIA. The common elements, between it and some of the opponent's marks, are the words DOWN UNDER, or in one case, DOWN UNDER, AUSTRALIA. In the present applications, the words DOWN UNDER are neither upside down nor in a script anything like the script used by the opponent. The recollection or impression of the present application would, in my opinion, encompass a recall that the mark contains the names of two men - whether or not the names Jim and Gordon were accurately remembered. The words DOWN UNDER will provide an impression of an Australian connection. I believe that the overall impression inferred from the mark will revolve around a recollection of two names of men and a connection with Australia. The actual names may not be perfectly remembered, but the concept of names, I believe, would prevail. I am further of the opinion that the main recollection from the opponent's DOWN UNDER marks will be that they indicate an Australian connection in some way and that the words DOWN UNDER are lettered upside down. The style of cursive script in the opponent's marks may or may not be clearly recalled. However, the common element(s) involving the words DOWN UNDER (and AUSTRALIA) are far outweighed by the differences between both parties' marks. The most memorable elements in both the applicant's mark and the opponent's marks are not to be found in the other. Here I speak of the two names of men in the present application and the words DOWN UNDER being upside down in the opponent's marks. As discussed above, the words DOWN UNDER should remain in the public domain in view of their normal usage as a geographical description and, therefore, be available to any trade mark owner. This notion provides even greater support to the concepts or ideas that will be most readily recalled as trade mark material by the general public. In my view, the other elements in the present mark, being JIM & GORDON, and the fact that the words in the opponent's marks are upside down provide sufficient material to clearly differentiate this trade mark from the opponent's marks - visually, aurally and contextually. I find, therefore, that this trade mark is not deceptively similar to any of the opponent's marks and, consequently the ground of opposition taken, in respect of this mark, under s.60 fails.

(ii) Deceptive similarity in relation to 755755

The second application involved in this matter concerns a composite trade mark. It consists of the words JIM DOWN UNDER and a koala device and is depicted in the Background section of these reasons. The opponent's 26 koala device marks (two being registered and 24 being unregistered), that it claims are in conflict with this application, are shown before in the present section of these reasons. The opponent also claimed that both the four registered marks and the unregistered series of DOWN UNDER trade marks are deceptively similar to the present mark.

In terms of the test for deceptive similarity of trade marks, the general impression or recollection of the applicant's mark must be assessed. I am of the opinion that the most rememberable features, for the purposes of general recollection of this trade mark, are the koala device and the name JIM. The words DOWN UNDER provide a third element, giving the mark an Australian 'flavour' and serving to reinforce this idea from the presence of the koala.

I will firstly compare the opponent's DOWN UNDER trade marks with application 755755. The DOWN UNDER marks, as I stated in dealing with the co-pending application above, provide two features that would be readily recalled. The first is that the words are scripted upside down and the second that there is some sort of Australian connection for the goods involved. The single, direct similarity between the present application and the opponent's marks lies in the presence of the words DOWN UNDER. In my view, the strength of the differences between the applicant's mark (the name of a man and the koala device) and the opponent's marks (the upside down script) far outweigh this similarity to provide a sufficient buffer to ensure that the level of deception or confusion would be negligible.

Turning to the opponent's koala device marks, the opponent has argued that the present application is deceptively similar to the claimed 'family' of the opponent's marks, and more particularly to the opponent's two registered koala marks, numbered 782121 and 782096.

This group of the opponent's koala marks covers a wide variety of representations. I also note that for class 25 goods - being clothing, footwear and headgear - the Register contains 84 registrations or pending applications for koala devices. I believe that, where a device that is incorporated in trade marks for particular goods exhibits this level of popularity among trade mark owners, the purchasing public will quickly recognise the fact. In my view, the respective koala devices would need to exhibit more common characteristics for the public to hold an expectation that two evidently different koalas indicate the same trade source, than may be the case for less popular device elements.

The opponent has shown use of koala device marks, together with the words DOWN UNDER lettered upside down, on the front of the shirt on the koala. The opponent has also used a device of the head of a koala with the words DOWN UNDER lettered upside down underneath the head. The opponent has also shown use of koala devices alone. I am of the opinion that, if a prospective purchaser intended to use a koala device alone to differentiate between the goods of various traders, given the number of koala devices used for these goods, it would need to be cognisant of the need to recall some of the salient features. In this regard, the general recollection in the minds of the purchasing public of the opponent's trade marks will encompass the drawing style of Ken Done. The cartoon style used by Mr Done is by no means an attempt to capture a realistic representation of the koala. His koalas are (with one obvious exception) all smiling broadly and exude an attitude that 'all is well with the world'. They display friendly, innocent, and 'cuddly' dispositions and are executed in a rather naïve style. The general public will carry elements of this general attitude away after having observed the opponent's trade marks. The applicant's koala device displays a rather different attitude. Firstly, the drawing technique conveys a different style of representation of the head of the koala and the displaying of the fingers and toes on the arms and legs also provides variation from the opponent's marks. Secondly, the animal has what appears to be an 'attitude'. It is standing with hands on hips, unsmiling. This facial expression could indicate several possible demeanours - none of them linked to the obvious happy friendliness of the opponent's koalas. It may indicate mild amusement, even bemusement or a disposition that suggests a confrontation. The drawing, moreover, while simple could not be termed a cartoon in a naïve style. The general perception of the mark that will be recalled is, in my opinion, a koala with 'attitude' - and the name JIM. Whether or not the name Jim was accurately recalled would not detract from the recollection that it had the name of a man. Both of these factors differentiate the applied for mark from the marks of the opponent.

Another matter that I have not mentioned, in relation to this application, concerns the use of the words DOWN UNDER lettered upside down on six of the opponent's marks. Despite being used in conjunction with the opponent's koala devices, I am of the opinion that the use of these words in this way tends to separate the applicant's and the opponent's marks further. The reason for this is that the orientation of the lettering differentiates, in the minds of the general purchasing public, the marks owned by the opponent from the present application. Marks with the words DOWN UNDER lettered upside down are all associated with the koala devices in the style of Mr Done - and this tends to reinforce the double requirement, upside down lettering and the Done drawing style, for a prospective purchaser to link a koala device with the opponent. The present application with lettering JIM DOWN UNDER in normal orientation, therefore, tends to reinforce the concept that the drawing style of application 755755 is not that of Mr Done. In comparing these particular marks of the opponent with the present application, there are two cues rather than only one - as in cases where the upside down lettering does not appear with the opponent's koala devices - that the goods sold by the applicant and by the opponent under their respective marks derive from different sources.

Weighing the common elements (the koala device and the presence of the words DOWN UNDER) against the dissimilar elements (the style of representation of the device elements, the variation in dispositions of the koalas and the orientation of the lettering) I am of the opinion that the respective trade marks of the applicant and of the opponent are not deceptively similar.

Thus, I have found that none of the opponent's koala device marks or DOWN UNDER word marks, or their combinations are deceptively similar to the present application. This being the case, I find that the opponent has not established the first leg of the requirements under s.60 and, therefore, the opposition under this ground in relation to this application is not successful.

(c) Section 44 - Identical etc. trade marks

The legislation insofar as it is relevant here reads:

Identical etc. trade marks

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 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).
Note 3:  For priority date see section 12.

Here again it is necessary for the opponent to establish that the applied for trade marks are at least deceptively similar to trade marks (which have a prior date for registration) owned by the opponent. The opponent's trade marks with a priority date are those registered under numbers 492150, 492151, 498260 and 498261 for the scripted words DOWN UNDER lettered upside down. I have already found that neither of the applied for trade marks are deceptively similar to the above registered marks in my consideration of the ground of opposition taken under s.60. This being the case, I also find that the ground of opposition taken under s.44 is not successful.

Conclusion

I have found that the opposition has not succeeded under any of the grounds set out in the notice of opposition. As a delegate of the Registrar, I dismiss this opposition and, subject to payment of the registration fees, I direct that these applications may proceed to registration.

Costs

In written submissions of 4 November 1999 the applicant requested its costs in the matter. The applicant having succeeded in this opposition is entitled to its costs. It is somewhat of a mystery to me as to why the opponents chose to run two identical opposition actions on these trade mark applications - under both Ken Done & Associates and Kenneth Stephen Done. The trade marks themselves are sufficiently different to generate a separate set of costs. However, in the circumstances, I do not believe that the second opposition action created further work for the applicant above that already required for the first opponent. Thus, in my capacity as a delegate of the Registrar, I direct that the opponents each pay half of the costs of the applicant's costs for a single opposition action on each trade mark application according to the Official scale.

Don Nancarrow
Hearing Officer

5 July 2000