Kenneth & Debbie Shirvington v Funtastic Limited

[2007] ATMO 18

TRADE MARKS ACT 1995

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

Re:      Opposition by Kenneth & Debbie Shirvington to registration of application 1010409(12) QuickSmart (Word) - in the name of Funtastic Limited.

Delegate:	Iain Thompson
Representation:	Opponent: Kenneth & Debbie Shirvington attended the hearing but did not make representations Applicant: Celia Davies of Freehills
Decision:	2007 ATMO 18 Section 52 opposition – sections 43, 44 and 60. Evidence does not establish reputation of the opponents’ trade mark – trade marks QUICKSMART and QUICKSILVER not deceptively similar – no connotation established in the opposed trade mark, opposition not established. Costs ordered against opponents

Background

1.       Funtastic Limited (hereinafter ‘the applicant’), has applied to register the following trade mark:

Reg No:  1010409
Priority Date:             9 July 2004

Goods/Services:         Class: 12 Baby carriages, prams, pushchairs, strollers, cycles, bicycles, tricycles, trolleys, carts, golf carts and covers and accessories for all the foregoing

Trade Mark:               QUICKSMART

2. The application has been examined and accepted for possible registration. Kenneth & Debbie Shirvington (‘the opponents’) filed Notice of Opposition on 11 February 2005 citing grounds of opposition under sections 43, 44 and 60 of the Trade Marks Act 1995, (‘the Act’). 

3.  The opponents filed evidence in support of the opposition.  The applicant did not file or serve evidence in answer and the opponents have filed further evidence.  

4.  As a delegate of the Registrar of Trade Marks, I heard the matter in Sydney on 14 February 2007.  Celia Davies of Freehills, Patent & Trade Mark Attorneys, represented the applicant.  The opponents attended the hearing as observers and did not make submissions.

Evidence

5.  The evidence filed in the matter is as follows:

Declarant	Details	Date made	Exhibits
Evidence in support
Debbie Ann Shirvington	Opponent	17 March 2006	KWS-1 to KWS-7
Further Evidence
Kenneth William Shirvington and Debbie Ann Shirvington	Opponents	31 July 2006	Exhibits 1 to 20

6.  At the outset of my discussion of the evidence and the grounds of opposition in this matter I will stress that the relevant date of my considerations of the evidence as far as it relates to the reputation of the opponents’ QUICKSILVER trade mark is the priority date of the opposed application – 9 July 2004.  I would also stress that this date is not arbitrarily arrived at but is dictated by subparagraph 60(a) of the Act:

60  Trade mark similar to trade mark that has acquired a reputation in Australia

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.

7.  In other words, in order to establish the reputation of its trade mark at the priority date, the opponents must show me the sorts of facts that go to the establishment of the reputation of their trade mark before 9 July 2004.  These facts include the kinds of elements referred to in McCormick & Company Inc v McCormick [2000] FCA 1335 by Kenny J at the paragraphs indicated below:

81. What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:

reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".

85. It may be correct to say, as counsel for Mary McCormick did, that the volume of the company's sales does not directly establish that a significant number of people held the McCormick & Co marks, as distinct from the company's products, in favourable regard. It does not follow, however, that the volume of sales and promotional expenditures are irrelevant. As Hearing Officer Thompson observed in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 ("Hugo Boss") at 436:

[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the `recognition' component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the `esteem' component of the reputation as do the public events and other trader's marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, `contra deals' and so forth.

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

86. In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC ¶91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 ("Gymboree"), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 ("Nettlefold"), in which Heerey J relied upon the public visibility of the applicant's marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

8.  There is little in the evidence in support by which the extent of use of the opponents’ QUICKSILVER trade mark before the priority date of the opposed application is established or can be inferred.  The opponents appear in the 2001 Bicycling Year Book as ‘Quicksilver Australia’ but this may refer to a business name.  And there is no concrete evidence of the types mentioned above, such as the yearly number of units sold, the cost of the items, the amounts of revenue or those spent on advertising, which would allow me to gauge the extent to which the opponents’ QUICKSILVER trade mark is generally known to Australians.  And most, if not all, of the materials which show the opponent’s trade mark in use are dated after the filing of the opposed application, or cannot be readily dated.

9. The further evidence is no assistance in this regard either. The further evidence mentions various other dealings between the parties; opposition by the opponents to registration of a trade mark by a third party; and, use of the trade marks QUICKSILVER and QUICKSMART on boats and dive services by third parties. However, what I must do is consider this matter on its own merits. I am left with the feeling that the opponents must have used their trade mark but factual data such as the extent as far as geographical area, amount of sales, advertising expenditure and so forth is not stated and cannot be ascertained from the evidence. The opponents have not, thus, established that its trade mark had a reputation before the priority date of the opposed application. The ground of opposition under section 60 cannot, therefore be established.

10. The evidence is not relevant to the other grounds of opposition under sections 43 and 44.

Section 43

11. Section 43 of the Act provides:

43  Trade mark likely to deceive or cause confusion

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.

12.                  It is not suggested or shown that there is a connotation inherent in the opposed trade mark that would, by its use, confuse or deceive.  It is possible that the opponents invoke this ground as they believe that the use of the opposed trade mark would confuse or deceive by virtue of its alleged similarity to their trade mark.  However, it was affirmed by the Full Court in T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720 at paragraph 43 by Wilcox, Kiefel & Emmett JJ:

The case on deception and confusion sought to be made by Big Country and Friday's Australia in the present proceedings is one that falls outside the reasons specified in those sections. It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others. So the alleged deception or confusion is not for a reason covered by section 43.

13. Section 43 does not, therefore, allow for the comparison of the parties’ trade mark in the way in which the opponents apparently invite me to do.

Section 44

14. Section 44 of the Act relevantly provides:

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)       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.

15.                  The registrations on which the opponents rely are:

Reg No:  725257
Priority Date:             8 January1997

Goods/Services:         Class: 12 Bicycles, bicycle frames, bicycle parts and accessories

Trade Mark:               QUICKSILVER

Reg No:  962184
Priority Date:             18 July 2003

Goods/Services:         Class: 12 Race cars, go karts, mobility vehicles, push and motorised scooters, motor bikes; parts and accessories for items listed; excluding all items to do with water or sea craft

Trade Mark:               QUICKSILVER

16.                  As the goods of the parties are, essentially, the same goods, and the priority dates of the registration on which the opponents rely are before that of the opposed trade mark, and (absent submissions that the trade marks are substantially identical) the issue that remains to be addressed is whether the trade marks in question are deceptively similar in the context of the goods of the parties – bicycles.

17.                  Deceptive similarity is defined within section 10 of the Act:

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.

18.                  French J considered the above provisions in Registrar of Trade Marks v Woolworths [1999] FCA 1020, at paragraph 50 where he said:

In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

(ii) 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 it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

(iv) The rights of the parties are to be determined as at the date of the application.

(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:

"...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

19.                  French J also stated at paragraph 43 of Woolworths, above:

For there to be a deceptive similarity between a service mark and a mark in respect of closely related goods the degree of resemblance must be such that the service mark is "likely to deceive or cause confusion". The use of the word "likely" in this context does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a "real tangible danger of its occurring" - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 529 at 594-5 per Kitto J.

20.                  In Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 at 658, Dixon and McTiernan JJ. said of the comparison of the trade marks:

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.

1. And the comparison is to be in the context of the goods in question.  In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, above, Parker J, as he then was, said:

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

2. As the applicant observes, the word QUICKSILVER is one of the English language: it means:

   quicksilver
   

   → n.

   1.

   liquid mercury.

   
   2.

   [as modifier] moving or changing rapidly and unpredictably: his quicksilver wit.

   
   The Concise Oxford English Dictionary

   , Eleventh edition revised . Ed. Catherine Soanes and Angus Stevenson. Oxford University Press, 2006. Oxford Reference Online. Oxford University Press.

3. As the word QUICKSILVER is a word in the English language, it is likely to be remembered and recalled as such – by reference to either of its meanings.  The word QUICKSMART is not a word in the English language – it is (conjoined) an invented word compounded out of the words QUICK and SMART.  If it is looked at as two words with an elision, QUICK SMART, it is a colloquialism that means to do something promptly.  It is likely to be remembered and recalled on this basis.

4. As the opponents observe in their further evidence, both trade marks start with the word QUICK; however, the word QUICK is not one without some facility in relation to bicycles.  As was observed by Burchett J in Conde Nast Publications Pty Ltd v Virginia Taylor [1998] 864 FCA concerning the comparison of the trade marks VOGUE and EUROVOGUE:

   At the same time, it should be borne in mind that "vogue" is neither a made-up word nor a word wholly without any direct application, in the ordinary use of language, to the goods in question. A trader is not entitled to monopolize such a word, denying its use entirely to other traders. Deceptive or confusing use is barred by the applicant's registration, but the Court should be careful not to shut out inappropriately other traders from the fair use of the language in ways that will not in reality deceive or confuse.

5. I note that the element in common between the trade marks occurs at the beginning of the trade marks.  In In the Matter of London Lubricants (1920) Limited's Application to Register a Trade Mark (1925) 42 RPC 264 at 279, Sargant LJ made the observation:

   "But the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction."

1. However, I do not think that the opponents can take much consolation from this.  The trade mark on which they rely is not susceptible to this sort of analysis – it is a word in the English language and dissecting in this way is entirely artificial.  If slurring does occur, this will not affect the clear and obvious visual, phonetic and conceptual differences between the trade marks.

2. In their further evidence, the opponents also speculate about what the effect of the opposed trade mark might be if it were used with one letter unstressed or in different fonts which might be similar to the fonts that they use.  However, I must consider what the effect of the trade mark might be if it were used fairly and normally: In Re Smith Hayden and Co's Application (1946) 63 RPC 97 at 101.8:

   "Assuming a use by the proprietor of each of the cited trade marks in a normal and fair manner in respect of any of the goods and services covered by those registrations, is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration (the respondent to this application) also uses its mark normally and fairly in respect of services covered by the proposed registration."

3. In my consideration, the trade marks are not deceptively similar.  The assessment takes place in the context of the goods which are bicycles – such goods are not items which are bought casually or lightly such as biscuits or confectionery from the shelves of supermarkets.  The goods are items of some worth and are bought deliberately.  And, if the trade mark informs the purchase, it is considered carefully.  The word QUICK, if it is to be artificially dissected from the parties’ trade marks, is one which describes a desirable attribute of the goods – in the circumstances of this matter, it is not a word to which any one trader can, prima facie, lay claim.

4. As the trade mark are not deceptively similar, the opponents have not established their opposition in terms of section 44.

   Decision

   30.  Section 55 of the Act provides:

   55  Decision

   Unless the proceedings are discontinued or dismissed, 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.

   Note:For limitations see section 6.

5. I have found that the opponents have been unsuccessful under each of the grounds listed on the Notice of Opposition. I therefore direct that the trade mark application may proceed to registration 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 the appeal has been decided or discontinued.

   Costs

   32.  The applicant sought its costs and I order costs at the official scale against the opponents.

   Iain Thompson
   Hearing Officer
   Trade Marks and Designs Hearings
   19 April 2007