Kenny Ng & Peter Wu v Aussie Dazzling Life Pty Ltd
[2018] ATMO 136
•4 September 2018
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Kenny Ng & Peter Wu to registration of trade mark application 1742442 (25) – UGG AUSSIE BOOTS and device - in the name of Aussie Dazzling Life Pty Ltd
Delegate: | Nicholas Smith Decision on the Written Record |
Decision: | 2018 ATMO 136 Trade Marks Act 1995 (Cth) - Section 52 opposition: s 44 considered – not established – trade mark to proceed to registration |
Background
1. This decision concerns an opposition brought by Kenny Ng & Peter Wu (‘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 Aussie Dazzling Life Pty Ltd (‘Applicant’):
Application Number:
1742442
Filing Date:
21 December 2015
Goods:
Class 25: Athletics shoes; Ballet shoes; Basketball shoes; Bath shoes; Bathing shoes; Beach shoes; Canvas shoes; Dance shoes; Deck shoes; Dress shoes; Esparto shoes or sandals; Flat shoes; Football shoes; Formed shoe parts; Golf shoes; Gymnastic shoes; Heels for shoes; Hiking shoes; Hockey shoes; Leather shoes; Men's shoes; Rubber shoes (other than for protection against accident or injury); Rugby shoes; Running shoes; Shoes; Shoes for casual wear; Shoes for infants; Shoes for leisurewear; Shoes for sports wear; Shower shoes; Slip-on shoes; Snowboard shoes; Soccer shoes; Sporting shoes; Sports shoes; Squash shoes; Tennis shoes; Toe shoes; Training shoes; Walking shoes; Wooden shoes; Working shoes (other than for the prevention of accident or injury); Ankle boots; Arctic boots; Army boots; Boots; Boots (non-slip, non-reinforced); Boots for sports; Climbing boots; Desert boots; Fishing boots; Football boots; Half-boots; Hunting boots; Lace boots; Mountaineering boots; Outdoor boots (other than for protection against accident or injury); Polo boots; Riding boots; Rugby boots; Shower boots; Ski boots; Snow boots; Snowboard boots; Studs for football boots; Trekking boots; Valenki (felted boots); Waterproof boots; Wellington boots; Wet boots
(‘Applicant’s Goods’)
Trade Mark:
(‘Trade Mark’)
2. Following the advertisement on 12 May 2016 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose and Statement of Grounds and Particulars (‘SGP’) on 18 July 2016. The filing of the Notice of Intention to Oppose and SGP was technically after the 2 month deadline to file a Notice of Intention to Oppose however following submissions from both parties, on 19 September 2016 this office granted an extension of time under regulation 5.9 of the Trade Marks Regulations 1995. The SGP raised a ground of opposition under s 44 of the Act. The Applicant filed a Notice of Intention to Defend on 17 October 2016.
Evidence
3. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 21 January 2017. This evidence consists of a declaration made on 20 January 2017 by Peter Yingzhao Wu, which refers to 6 exhibits filed on 14 January 2017 on Objective Connect. I will treat this declaration and the earlier filed documents as a single declaration, being the ‘Wu Declaration’.
4. The Applicant filed Evidence in Answer (‘EIA’) on 21 April 2017. This evidence consists of a declaration made on 20 April 2017 by Yini Xia, the director of the Applicant, with Exhibits A-M (‘Xia Declaration’). The Opponent did not file any evidence in reply.
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. Neither party chose to avail themselves of these opportunities at that time. By letter issuing from IP Australia on 22 August 2017 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 they wished to reply upon. Neither party filed 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. The EIS is very limited. From it I can determine that the Opponent is an Australian company that produces ugg boots and related products, which it sells under the trade mark set out below, for which it is the registered owner (‘Opponent’s Trade Mark’).
| Number | Trade Mark | Priority Date | Goods |
| 1616328 | 11 April 2014 | Class 25: Athletics shoes; Basketball shoes; Bath shoes; Bathing shoes; Beach shoes; Canvas shoes; Dance shoes; Deck shoes; Dress shoes; Esparto shoes or sandals; Flat shoes; Football shoes; Golf shoes; Gymnastic shoes; Heel protectors for boots and shoes; Heels for shoes; Hiking shoes; Leather shoes; Men's shoes; Midsoles for boots and shoes; Pads for shoes (other than orthopaedic); Reinforcements of metal for shoes; Reinforcements of non-metallic materials for shoes; Rubber shoes (other than for protection against accident or injury); Rugby shoes; Running shoes; Shoes; Shoes for casual wear; Shoes for infants; Shoes for leisurewear; Shoes for sports wear; Shower shoes; Slip-on shoes; Snowboard shoes; Soccer shoes; Sporting shoes; Sports shoes; Squash shoes; Toe shoes; Training shoes; Walking shoes; Wooden shoes; Working shoes (other than for the prevention of accident or injury) |
The Applicant
8. The EIA consists mostly of submissions and photographs of footwear depicting the Trade Mark. The Xia Declaration states that the Applicant commenced the production of shoes bearing the Trade Mark in January 2016 without knowledge of the Opponent’s Trade Mark and is unaware of any confusion between the Trade Mark and Opponent’s Trade Mark.
Grounds of Opposition, Onus and Standard of Proof
9. As indicated above in the SGP the Opponent nominated the ground of opposition under s 44 of the Act. To successfully oppose the application the Opponent needs to establish this ground.
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 21 December 2015 (‘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) 70 IPR 599, [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).
Discussion
Section 44
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
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.
To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), namely that the trade mark 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’).
In the event that each of these requirements are satisfied by the Opponent it may be possible for the Registrar to accept the application if the Registrar is satisfied 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, pursuant to ss 44(3) and 44(4) of the Act.
The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark, which is registered for goods that I would broadly characterise as footwear which are similar goods to the Applicant’s Goods. The Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Mark. The first and third requirements are satisfied.
Substantially identical or deceptively similar
I will now consider whether the Trade Mark is substantially identical to the Opponent’s 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].
The Trade Mark and the Opponent’s Trade Mark are set out below:
On a side by side comparison there is a clear difference between the respective trade marks, including the different words ‘boots’ and ‘connection’ and the different devices and fonts used in the respective trade marks. 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 Opponent’s Trade Mark are deceptively similar.
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].
In the present case the elements shared between both marks are the words ‘ugg’ and ‘aussie’. An ugg boot, sometimes abbreviated to ugg, is a unisex style of sheepskin boot originating in Australia and/or New Zealand. In the context of the goods for which the Trade Mark and the Opponent’s Trade Mark are registered/sought to be registered (being footwear in Australia) the words ‘ugg’ and ‘aussie’ are completely descriptive and common to the trade.[6] In such circumstances the presence of these common elements ought to be discounted to some extent in considering whether the respective marks are deceptively similar.
[6] See Deckers Outdoor Corporation v B&B McDougal [2006] ATMO 5, [34].
The present proceeding is similar to Australian Homestay Network Pty Ltd v Homestay Network Pty Ltd[7] which involved the comparison of two device marks that shared the descriptive expression ‘homestay network’ but had different device elements. At [21-22] the Hearing Officer stated:
Consequently, words within composite trade marks, such as the Expression, that are unadapted to distinguish the particular goods or services in relation to which they are used, are not prima facie registrable in their own right and only function in those trade marks to state the nature of the goods or services.
Hence, the more that words within a composite trade mark only function to state the nature of the goods or services, the less that the owner of the trade mark will be able to found a ground alleging confusion or deception arising from the existence of another trade mark based on only those words. And, as Stephen J observed[8] in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd [1978] HCA 11; (1978) 140 CLR 216; (1978) 18 ALR 639; (1978) 52 ALJR 392; [1978] ATPR 40-067; [1978] ASC 55-010; (1978) 3 TPC 244; (‘Hornsby’) at page 229:
There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words - “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.” The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.
[7] [2015] ATMO 28
[8] Albeit in relation to trade practices.
At [31] the Hearing Officer stated:
This ground is dependent in part upon the alleged deceptive similarity of the Trade Mark to the Opponent’s registered 2007 AHN trade mark. As discussed above under the heading The Expression, a finding of deceptive similarity would in effect infer that the Opponent has a monopoly in an entirely descriptive term. The Opponent does not have such a monopoly. Any confusion that might occur stems only from the prominence of that descriptive term in the Opponent’s 2007 AHN trade mark and not from a deceptive similarity of the parties’ trade marks within the meaning of the Act. I note that this observation is in accordance with previous decisions of the Registrar such as Watches of Switzerland Pty Ltd v Mappin & Webb Limited [2015] ATMO 23 (commonality of expression ‘Watches of Switzerland’) and Cars on Demand IP Pty Ltd v Cars on Demand Limited [2014] ATMO 87 (commonality of the expression ‘Cars on Demand’).
I adopt the same reasoning as that of the Hearing Officer above. The common elements in the respective marks (‘ugg’ and ‘aussie’) are descriptive and there are sufficient differences in the manner in which those elements are displayed in the respective marks. A finding of deceptive similarity in this case would in effect provide the Opponent with a monopoly on registrations of devices for footwear containing the word ‘ugg’. The Opponent has no such monopoly. Although the marks share the words ‘aussie’ and ‘ugg’ I find that, 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 Opponent’s Trade Mark; such confusion will only arise as a result of the presence, in both marks, of the descriptive words.
I find that the Opponent has failed to establish the ground of opposition under s 44.
Decision
The Opponent has failed to establish the ground of opposition it nominated in the SGP. Trade Mark application no. 1742442 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.
Nicholas Smith
Hearing Officer
Oppositions and Hearings
4 September 2018
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