Kenzo SA v Kenzo Tsujimoto

[2012] ATMO 58

TRADE MARKS ACT 1995

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

Re:Opposition by Kenzo SA to extension of protection to International Registration Designating Australia 1276909(33) - KENZO ESTATE – (International Registration No. 953373) filed in the name of Kenzo Tsujimoto.

Delegate:

Iain Thompson

Representation:

Opponent:  Written submissions by Corrs Chambers Westgrath

Holder:  Ben Fitzpatrick of Counsel instructed by Michael Wolnizer of Davies Collison Cave

Decision:

2012 ATMO 58

S52 proceedings: s44 not established – goods not similar.  s60 – opponent did not establish that reputation of opponent’s trade mark was such that the use of the trade mark KENZO ESTATE on wines, etc by a person other than the opponent is likely to cause deception or confusion.

Background

1. In this matter, Kenzo Tsujimoto of Osaka, Japan, (‘the holder’) has requested extension of protection under the Trade Marks Act 1955 (the Act’) to an international registration designating Australia (‘IRDA’); current details of the IRDA appear below:

Application No:                1276909

International Reg No:                    953373

Filing Date:  21 August 2008

Goods:Class 33: Wine; alcoholic beverages of fruit; western      liquors (in general)

Trade Mark:  KENZO ESTATE

1. The IRDA was examined in compliance with regulation 17A.12 and advertised as accepted for possible protection in the Australian Official Journal of Trade Marks on 21 January 2010.  On 21 May 2010 (after seeking and receiving an extension of time in which to do so) Kenzo SA (‘the opponent’), of 18 rue Vivienne, Paris F-75002, France, served and filed Notice of Opposition (‘Notice’) to the protection of the IRDA.  Subsequently, the opponent filed an amended Notice which is couched in the same terms as the original but specifies the Australian trade mark registration numbers on which it relies in terms of section 44 of the Act.

2. The Notice includes, inter alia, the grounds under section 44 and 60 that the opponent subsequently argued at a hearing.  For the sake of completeness, I find the other grounds listed in the Notice are not established.

3. The registered trade marks upon which the opponent relies are listed both in the amended Notice and submissions as:

Registration No:              262022

Priority Date:  21 September 1972

Goods:  Class 14: Horological and chronometric instruments; jewels;   jewellery and imitation jewellery

Trade Mark:  KENZO

Registration No:              262038

Priority Date:  21 September 1972

Goods:  Class 3: Soaps, perfumery, cosmetics, preparations for the hair,   dentifrices

Trade Mark:  KENZO

Registration No:              262039

Priority Date:  21 September 1972

Goods:Class 18: Leather and leather articles made wholly or principally therefrom; imitation leather and articles made wholly or principally therefrom; bags, cases, wallets and purses; umbrellas, parasols and sun-shades

Trade Mark:  KENZO

Registration No:              262040

Priority Date:  21 September 1972

Goods:Class 25: Articles of clothing for women and girls all made wholly or principally of silk leather; boots, shoes, slippers and sandals

Trade Mark:  KENZO

Registration No:              383436

Priority Date:  4 November 1982

Goods:Class 24: Tissues, bed and table covers, bed sheets, textile articles, curtains, face flannel, towels, all being goods included in this class

Trade Mark:  KENZO

Registration No:              383437

Priority Date:  4 November 1982

Goods:Class 9: Optical apparatus, spectacles, spectacle glasses, frames and cases

Trade Mark:  KENZO

Registration No:              1133990

International Reg:           892870

Filing Date:  16 May 2006

Goods:Class 18: Leather and imitation leather, travelling bags, travelling sets (leatherware), trunks and suitcases, garment bags for travel, vanity cases (not fitted), rucksacks, shoulder bags, handbags, attache cases, document wallets and briefcases made of leather, clutch bags (small handbags), wallets, purses, key cases; umbrellas

Class 25: Clothing and underwear including sweaters, shirts, T-shirts, lingerie, belts (clothing), neckscarves, ties, shawls, waistcoats, skirts, raincoats, overcoats, braces, trousers, denim trousers, pullovers, dresses, jackets, scarves, gloves, tights, socks, swimming costumes, bath robes, pyjamas, nightdresses, shorts, pocket handkerchiefs (clothing); shoes, boots, slippers; headgear

Trade Mark:  (‘ the KENZO Logo’)

1. The hearing was before me as a Delegate of the Registrar of Trade Marks in Melbourne on 17 May 2012.  The opponent relied on written submissions by its attorneys, Corrs Chambers Westgarth.  Mr Ben Fitzpatrick of Counsel instructed by Michael Wolnizer of Davies Collison Cave represented the holder.

Onus

1. The opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.  See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 at [22] to [26] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051.

Evidence

1. Both parties have served and filed evidence.  This comprises:

   ·Evidence in support of the opposition is the statutory declaration of Noeila Martinez made 19 October 2010 with accompanying exhibits NM-1 to NM-20.

   ·Evidence in answer to the opposition is the statutory declaration of Kenzo Tsujimoto made 13 June 2011 with accompanying exhibits KT-1 to KT-8 and the statutory declaration of Cheryl Hrvoj made 20 June 2011 (“Hrvoj”) with accompanying exhibits CH-1 to CH - 5.

   ·Evidence in reply is the statutory declaration of Christina Rose Linforth-Barker made 21 September 2011 with accompanying annexures CLB-1 to CLB-3.

   ·The holder has filed as further evidence the statutory declaration of Michael Charles Wolnizer made 14 December 2011 and the statutory declaration of Isobelle Clare Fabian made 14 December 2011 with accompanying exhibits ICF-1 to ICF-5.

   ·The opponent has filed as further evidence in response the statutory declaration of Christina Rose Linforth-Barker made 9 March 2012 with accompanying annexure CLB-1.

2. Ms Noeila Martinez’s declaration is aimed at establishing the reputation of the opponent’s trade mark KENZO (word) in relation to a range of products being “clothing, headwear, footwear, clothing accessories, bags, jewellery, perfumery and skincare products, all of which are sold both in Australia and internationally.”  Sales and advertising figures are supplied by Ms Martinez in relation to those particular goods which she states are sold through a variety of retail stores and also Internet websites which are based within Australia.  I have inspected the Internet websites nominated by Ms Martinez: consists of a map showing the location of a Kenzo shop in Melbourne; and sells only perfumery and skincare products; however I note that a fuller range of KENZO branded products are available in Australia from a variety of third-party websites.

3. Ms Martinez goes on to state:

   It is relatively common for the promotion and marketing of fashion brands and beverages (particularly alcoholic beverages) to be merged.

   The Opponent’s KENZO brand was applied to a cognac product (as a joint activity with Hennessy)[1] in 1997 and again in 1999 following the success of the 1997 release. This KENZO branded cognac was available for sale in shops in Australia, New Zealand, Singapore, Hong Kong, Indonesia, Taiwan and the United States. Annexed to this declaration and marked NM-16 are copies of a press release and media articles (including approximate English translations of those originally appearing in French) as well as other internet references relating to this KENZO branded cognac.

   [1] Jas Hennessy & Co., (‘Hennessy’), is a large cognac producer with headquarters in Cognac, France.  In 1971 Hennessy merged with Moët et Chandon, which created Moët Hennessy.  Moët Hennessy became part of Louis Vuitton in 1987, creating the large luxury brand conglomerate LVMH.  Since 1993 the opponent’s brand KENZO has been owned by LVMH.

   The article titled “DFS brings fashion concept to liquor” in Annexure NM-16 refers to the KENZO branded cognac as being available for sale in DFS stores throughout Australasia. Annexed to this declaration and marked NM-17 are printouts from DFS Galleria’s website showing that it has stores located in Sydney, Cairns and the Gold Coast.

   Annexed to this declaration and marked NM-19 are the global sales figures for each of the first and second vintages of the KENZO branded cognac referred to in paragraphs 24-26 above.

   Annexed to this declaration and marked NM-20 are documents evidencing other examples of the co-marketing of fashion brands and beverages, including:

   ·Wine and champagne marketed by fashion designer Christian Audigier

   ·Chivas Regal whisky bottle designed by fashion designer Alexander McQueen

   ·Veuve Clicquot champagne bottle case designed by fashion house Emilio Pucci

   ·Clan Campbell whisky bottle designed by fashion designer Paco Rabanne

   ·Moet et Chandon champagne bottle designed by fashion designer Camille Toupet

   ·Suze aperitif bottle designed by fashion designer Alexis Mabille

   ·Piper Heidsieck champagne bottle and glass designed by shoe designer Christian Louboutin

   ·Dom Perignon champagne case designed by Karl Lagerfeld

   ·Hennessy cognac bottle case designed by Berluti (shoemaker)

   ·G.H. Mumm champagne bottle cases designed by leather house Dardel Paris

   ·Dom Perignon champagne glass designed by fashion designer Karl Lagerfeld

   ·Charles Heidsieck champagne sold with a jewel by designer Lorenz Baumer

   ·Piper Heidsieck champagne sold with a pendant and cufflinks by designer Arthus-Bertrand

   ·Pommery champagne sold in packaging by fashion house Shanghai Tang

   ·Evian water bottle designed by Jean-Paul Gaultier

   ·Evian water bottle designed by Christian Lacroix

4. In his evidence in answer Mr Kenzo Tsujimoto states that he is the sole owner of the KENZO ESTATE winery at 3200 Monticello Road, Napa, California, United States of America.  Kenzo Estate Inc was established in August 1990 and Mr Tsujimoto became CEO of Kenzo Estate Inc in December 2007.

5. Mr Tsujimoto states that the word KENZO appearing in the opposed trade mark is his forename.  He declares that approximately US$2.4 million retail value of wine produced by Kenzo Estate Inc is sold in Japan and the United States of America annually.  In Japan in particular the holder promotes the wine heavily.

6. Mr Tsujimoto states that the trade mark KENZO ESTATE has been registered by him in a number of countries, details of which he supplies.  Of these I note that the trade marks KENZO ESTATE and KENZO have both been registered by Mr Tsujimoto in the United States in Class 33 (registrations 3580716 and 3577396 respectively) where they co-exist with the opponent’s USA trade mark registrations 4113661(14) KENZO; 3352592(18)(25) KENZO (Graphic) and 3933848(3) KENZO Logo.

7. Cheryl Hrvoj states that she is a current practitioner of the Supreme Court of South Australia and a solicitor in the employ of Davies Collison Cave, Patent and Trade Mark Attorneys, of 1 Nicholson Street, Melbourne, Victoria 3000, Australia.

8. In her evidence in answer Ms Hrvoj gives the numbers of American and Japanese tourists who visit Australia each year (470,600 and 393,400 respectively).

9. Ms Hrvoj goes on to report the results of her research[2] into the word KENZO.  She states:

   [2] The source for this research is Wikipedia.

   Kenzō or Kenzo or Kenzou is a common masculine Japanese given name as exemplified by the following,

   ·Emperor Kenzō (born 5 AD), 23rd Japanese imperial ruler

   ·Adachi Kenzō (1864–1948), Japanese politician

   ·Kenzo Fujisue (born 1964), Japanese politician

   ·Kenzo Nakamura (born 1973), retired judoka

   ·William K. Nakamura (1922–1944), United States Army soldier

   ·Kenzo Okada (1902–1982), American painter of Japanese birth

   ·Kenzo Oshima (born 1943), Permanent Representative of Japan to the United Nations

   ·Kenzo Suzuki (born 1974), Japanese professional wrestler

   ·Kenzo Suzuki (astronomer), a Japanese astronomer

   ·Kenzo Takada (born 1939), Japanese fashion designer

   ·Kenzo Tange (健三, 1913–2005), Japanese architect

   ·Kenzo Yokoyama (born 1943), retired Japanese football player

   ·Kenzō Masaoka (1898–1988), 1930s-1940s animation creator

   ·Kenzo Taniguchi (born 1988), Japanese football player for FC Kagoshima

   ·Kenzo Ohashi (born 1934), Japanese football player

   ·Kenzo Mori (1914–2007), Japanese-Canadian journalist and editor

   ·Kenzo Kitakata (born 1947), Japanese novelist

   ·Kenzō Kotani (1909–2003), last Yasukuni Shrine swordsmith

10. Ms Hrvoj also states that it is not uncommon for well-known trade marks to be owned by third parties in unrelated classes such as Class 33 and she cites the following occurrences on the Register of Trade Marks as instances:

Trade Mark	Registration No	Owner	Goods
Hermes	245937	Suntory Holdings Limited	All kinds of alcoholic beverages including brandy, vermouth, liqueurs, rum, gin, Japanese sake
Lotus	1017402	Drinx Pty Ltd	Alcoholic beverages
Diesel	1011663	David Plush	Alcoholic beverages
GANT	1258689	Matthew Gant	Wine Winemaking services
JAG Wines	884404	Grant Anthony White	Wines

1. Ms Christina Rose Linforth-Barker is a trade mark attorney employed by Corrs Chambers Westgarth, solicitors for the Opponent.

2. In her declaration in reply Ms Linforth-Barker refers to the trade marks listed in the table at paragraph 16, above, and states that these details indicate that no oppositions have been filed against these registrations and therefore the Trade Marks Office has not been required to assess the registrability of the marks with respect to prior rights held by others arising from use and/or reputation.  I note this is correct in as far as it goes; however, it is also true that if the owners of those well known fashion trade marks believed that it was likely that confusion or deception was likely to arise from the use of those listed trade marks they would have opposed the registration of those trade marks.

3. Ms Linforth-Barker also attaches to her declaration as exhibit CLB-2 a printout from the Australian Trade Mark Office’s ATMOSS database, dated 21 September 2011 showing the results of a search across all classes for all live registrations and applications for marks comprising or containing the word KENZO.  Apart from the opposed application, all of the registrations and applications listed in the search results are in the name of the opponent.

4. In her declaration, which was served and filed as further evidence for the holder, Isobelle Clare Fabian states that she is a current practitioner of the Supreme Court of Victoria and was at the time of making the declaration seconded to Davies Collison Cave, Patent & Trade Mark Attorneys of 1 Nicholson Street, Melbourne, Victoria 3000, Australia.

5. On 14 November 2011, Ms Fabian performed a search of the Australian Securities and Investment Corporation Register for the word KENZO occurring as or within a company/business name. Details of the results and the date of each which are registered incorporating the word KENZO are set out in the table below, and company extracts are attached as Exhibit ICF-1.

Name	ACN/ARBN	Date of registration
Kenzo Automotive Pty Ltd	147 811 041	10 December 2010
Kenzo Concreting Pty Ltd	118 173 765	3 February 2006
Kenzo Melbourne	Vic Business Name B1833024B	22 November 2002
Sushi Kenzo	NSW Business Name 98566031	5 November 2011
Kenzo Parfums	NSW Business Name 98287312	19 November 2007

1. Ms Fabian states that she conducted a further search of the Australian Business Names Register and, in addition to the business names included above, found the business names:

   ·KENZO’S SURF AND TURF (NSW Business name)

   ·KENZO HOME SERVICES (WA Business name)

   ·KENZO MOTORSPORT (NSW Partnership)

   ·KENZO CAFÉ (SA Trading Name)

   ·KENZO KAKU (Qld sole trader)

2. Ms Fabian also declares that, on 14 November 2011, she conducted internet searches for use of KENZO in Australia by parties other than the Opponent.  These searches disclosed a number of furniture and design companies using the word KENZO as a brand for their goods.  The results of Ms Fabian’s research are tabulated below:

COMPANY	ITEM	, WEB ADDRESS
Impressions Furniture Galleries	Kenzo  Modular (sofa)
Pullins Carpets	Kenzo (carpet)
Coco Republic	Shinto Kenzo (desk)
Design Furniture	Kenzo (chair)
Oz Lighting	Mercator Kenzo Exterior Wall Light (light)
Oz Mart	Kenzo (sofa bed)
Livingedge	Kenzo Dining Table and Kenzo Wide Dining Table	cl---11593
South Pacific Fabrics	Kenzo fabric collection	com.au/c/South-Pacific‑Fabrics/Donghia-furniture-and-Kenzo-fabric-collection-from-South-Pacific-Fabrics-n768322

1. In the opponent’s further evidence Ms Linforth-Barker refers to the last entry in the table, above, being a “Kenzo” fabric collection supplied by South Pacific Fabrics, and states that the KENZO brand applied to goods distributed by South Pacific Fabrics belongs to the opponent.

Reasons

Section 44

1. Section 44 of the Act relevantly provides:

   44Identical 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.

   Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

2. With the exception of registration 1133990(18)(25) ( the KENZO Logo), the trade marks of the parties are substantially identical[3] and the priority dates of the registrations on which the opponent relies predate that of the opposed application.  The holder does accepts that registration 1133990(18)(25) KENZO Logo is deceptively similar to the opposed trade mark.

   [3] See PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602; 47 IPR 47; [1999] AIPC 40,117: the word ESTATE in the opposed trade mark functions in a similar manner to the word CHOC within the trade mark CHOC CHILL and does not contribute substantially to the identity of the opposed trade mark.

1. Thus, the sole issue to be decided in relation to this ground is whether the holder’s goods in question are similar goods to those in respect of which the opponent’s trade marks are registered.  At the hearing I told Mr Fitzpatrick that it was not necessary to present me with detailed argument on this point as the ground quite clearly could not be established and I now give my reasons for doing so.

2. Subsection 14(1) of the Act relevantly provides:

   14Definition of similar goods and similar services

   (1)For the purposes of this Act, goods are similar to other goods:

   (a)if they are the same as the other goods; or

   (b)if they are of the same description as that of the other goods.

3. The expression ‘goods of the same description’ was considered by the Court in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; (2009) 175 FCR 386; [2009] AIPC 92-337 at [70]:

   The expression “goods of the same description” is a term of art which was found in the legislative predecessors to the TM Act. There is Full Court authority, MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236, that authorities predating the enactment of the TM Act in 1995 concerning the meaning and effect of the expression in a different context are apt to be applied in considering the meaning and effect of the expression in s 120(2). The fact that the Full Court was considering the expression “services of the same description” rather than “goods of the same description” does not appear to us to be a material difference. In this context, the Full Court referred to the judgment of the High Court in Southern Cross at 606. Considerations referred to in the passage from the judgment of the High Court include the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters, during the same seasons and to the same class or classes of customers and whether, by those engaged in the manufacture or distribution, they are regarded as belonging to the same trade.

   It is true, as Lion Nathan submitted, that s120(2) requires a number of discrete questions to be asked and answered. One which may emerge in a particular factual context is whether the alleged infringing trade mark is deceptively similar to the registered trade mark. Another is whether it is used by the alleged infringer on goods of the same description as that of the registered trade mark. However these discrete questions arise in the context of determining, as the ultimate question, whether there has been infringement of the registered trade mark and, to that end, the object or purpose of the statutory prohibition on infringement is relevant. It is to protect the statutory monopoly the registered owner has to use the registered trade mark as a badge of origin. In the context of goods sold in the course of trade to the public, the question of whether the alleged infringement has arisen by the affixing of a deceptively similar trade mark is not divorced from the question of whether the alleged infringement has arisen by doing so in relation to goods of the same description. One would have thought both questions necessarily require consideration of what members of the consuming public might perceive as a result of the use of the alleged infringing mark on the goods in question and whether they might be led to believe they were goods of the registered owner. In this way, the following observations of Burchett J, relied on by Gallo, in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203; (1993) 42 FCR 227 at 240 are relevant to the present enquiry, even though made by reference to provisions concerning the removal of a trade mark:

   In my opinion, the application of a principle so broadly stated requires some concentration upon the object which s 23(2) exists to serve. That object seems plainly to be the avoidance of confusion and deception in the market place, which would be likely to arise should a mark become available for use by two or more different companies, which are unrelated, upon goods of the same description. From that point of view, the expression “goods of the same description” is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception. That approach would seem to me to accord with the common sense business view recommended by Lord Evershed.

4. Thus, the consideration involves the nature of the goods, their place of origin or manufacture, the trade channels through which they are bought and sold, the class of customers who purchase such goods, and what the purpose of the goods might be.  I am also to consider what the members of the consuming public might perceive as a result of the use of the opposed trade mark on the goods in respect of which protection is sought.

5. The opponent submits in particular, “registration no. 383436 (KENZO word mark in class 24) encompasses textile articles such as drink coasters, drink mats and bar cloths.  It is very common for such goods to bear the brand names and logos of particular alcoholic beverages. Accordingly, the [holder’s] use of KENZO ESTATE in respect of the designated goods, alongside the use of the opponent’s KENZO mark in respect of such textile goods, would risk a high likelihood of confusion (even without taking into account the opponent’s extensive reputation in KENZO).”

6. I am aware that it is commonplace for the makers of beers (which are goods in Class 32) to place their trade marks on paper coasters (which are goods in Class 16) and on bar cloths.  The opponent has not established that it is in any way normal for makers of goods in Class 33 to place their trade marks on textile coasters (Class 24 goods) or bar cloths nor am I aware that this alleged practice is in any way commonplace.  However, even if this were a common practice amongst the makers of wines and spirituous liquors, I do not consider that this would lead to a finding that the goods ‘textile coasters and bar cloths’ and ‘wine and spirituous liquors’ are goods of the same description – in fact the goods are completely different in their inherent nature, trade channels, uses and ultimate consumers.

7. The opponent has not established its opposition under section 44 of the Act.

Section 60

1. Section 60 of the Act provides:

   60Trade 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)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, 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:For priority date see section 12.

2. Under section 60 of the Act the onus is on an opponent to establish that at the priority date its trade mark had acquired a reputation in Australia such that the use of the opposed trade mark on the particular goods for which registration (or protection) is sought would be likely to deceive or case confusion.

3. Concerning ‘reputation’ in McCormick & Company Inc v McCormick [2000] FCA 1335, Kenny J said, at 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”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

4. It is, I consider, also important to consider the nature and extent of the reputation of an opponent’s trade mark.  The greater the reputation, the larger the shadow it will cast.  Additionally, the quality and shape of the shadow cast by the reputation of a trade mark will depend on how that reputation is likely to be perceived by relevant consumers as relates to the nature and type of goods in relation to which that reputation has arisen.  The particular images associated with the trade mark that the owner of the trade mark has chosen to project will also affect the consideration.

5. In my assessment of the opponent’s evidence of reputation by way of sales and advertising figures and the supporting materials, and if they indicate that the opponent’s KENZO trade mark is recognised by the Australian public generally, I find that such materials indicate that the opponent’s trade mark has an degree of reputation which lies somewhere on the scale between modest and moderate in relation to perfumery, clothing and handbags.  Probably, considering the nature and scope of the evidence, a conclusion is apt that the opponent’s trade mark projects images of Eastern tradition and design wedded to Western non-conformity and novelty and (while men’s fragrances and footwear and clothing carry the opponent’s trade mark KENZO) the trade mark is likely to be better known amongst fashion conscious females but not males.

6. The assessment of the likelihood of deception and confusion is moderated by principles enunciated in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at paragraph 50 by French J, albeit with references to ‘deceptive similarity’ redacted:

   (i) 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.

   (ii) 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 [have been or] will be used, the circumstances in which the goods or services [have been or] will be bought and sold and the character of the probable acquirers of the goods and services.

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

   (iv) The question […] 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] HCA 43; (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.”

7. The principles are also akin to those enunciated by Hill J in Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506; (1989) 16 IPR 431; [1990] ATPR 40-994 at [41]-[42] with suitable references to ‘use of a trade mark’ rather than ‘conduct’, and ‘confuse’ instead of ‘mislead’.

8. The opponent’s viewpoint might be summarised as being that the trade mark KENZO is unique to the opponent and very well known to the extent that the use of the opposed trade mark in relation to wines and spirituous liquors by the holder is likely to deceive or cause confusion.

9. The holder’s position is the opponent’s trade mark KENZO is not unique to the opponent, and that while it has a reputation there are no circumstances which would lead to confusion or deception.  Mr Fitzpatrick also submitted that the word ESTATE within the opposed trade mark functions to set the opposed trade mark apart from the opponent’s trade marks where the reputation resides in the word KENZO only.

10. The opponent does not appear, from the evidence, to have a pattern of brand extension but it cooperated with Hennessy in placing the KENZO trade mark on cognac in 1997 and again in 1999 (and these goods were available in shops in Australia).  However, this was apparently an exercise in co-branding rather than brand extension and it is not obvious from the evidence what quantity, if any, of the co-branded KENZO/HENNESSY goods were sold in Australia.

11. The trade mark KENZO is not unique to the opponent.  It appears to be a comparatively common Japanese forename and, the evidence shows, a part of the name of a number of Australian businesses and/or trade marks (albeit ones which do not appear on the Australian Register of Trade Marks).  Although it is not clear to me how well known these other significances of the word KENZO are to Australians, it is clear that the word is not solely connected with the opponent as its trade mark.

12. The opponent has shown that a number of fashion designers have designed bottles for prestige liquor traders but it is not clear that this practice, if it be such, has extended to those fashion designers using or licensing their names as trade marks in respect of the goods within the bottles.  Neither is it obvious from the evidence the extent to which such liquors with designer bottles have been sold within Australia.

13. Additionally, I note that both the opposed trade mark KENZO ESTATE and the opponent’s trade marks co-exist on the USA Register of Trade Marks and that the parties’ trade marks are concurrently used in the United States of America in relation to the same goods without any confusion detailed in the evidence before me.

14. Neither do I consider that the degree and extent of the reputation of the opponent’s KENZO trade marks is so large that it is, on its own, likely to lead to confusion or deception.  Thus, while it might be that the use of some particularly well-known fashion brands in relation to wines by persons other than the brand owners might well deceive or cause confusion, I am not persuaded by the evidence that such is likely to be the case here.

15. In my consideration, it is not likely that a member of the public when seeing the opposed trade mark KENZO ESTATE will be caused to wonder if the wine originates from the opponent or is marketed under its aegis.  I think that it is likely that the similarity of the opposed trade mark to the opponent’s trade marks might be noticed.  However, I consider that it is not likely that the reputation of the opponent’s trade marks would lead a member of the public to take the further step and wonder about some connection between the opposed trade mark and the opponent or form a belief that the goods are those of the opponent or are marketed under its aegis.

16. The opponent has not established its opposition under section 60.

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

   (1)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.

2. The opponent has not established its opposition under either of the grounds under which it was argued or as previously noted, the other grounds listed in the Notice.

3. The IRDA may proceed to protection 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 protection shall not occur until the appeal has been decided or discontinued and that the disposition of the IRDA be in accordance with the Court’s order or direction.

Costs

1. The holder is entitled to its costs, which I award at the official scale against the opponent.

Iain Thompson

Hearing Officer

Trade Marks Hearings

22 June 2012