KERIOMET, S.L v Stoked Adventure Group Ltd

[2024] ATMO 247

TRADE MARKS ACT 1995

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

Re:Opposition by KERIOMET, S.L. to registration of trade mark application number 2278427 (class 39 and 43) – Stoked Surf Adventures - in the name of Stoked Adventure Group LTD

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Angela McDonald of Counsel instructed by LegalVision ILP Pty Ltd

Applicant: Sonia Stewart of Counsel instructed by Adams Pluck

Decision:

2024 ATMO 247

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, 58 and 60 pursued – no ground of opposition established – trade mark to proceed to registration

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by KERIOMET, S.L. (‘Opponent’) to registration of the following trade mark:

[1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).

Trade mark number:  2278427 (‘Application’)

Trade mark:  Stoked Surf Adventures (‘Trade Mark’)

Applicant:  Stoked Adventure Group LTD (‘Applicant’)

Filing Date:  25 June 2022 (‘Relevant Date’)

Specification:              Class 39: Agents for arranging travel; Booking and reservation services for transportation for travel tours; Booking of tickets for travel; Services for the booking of travel; Travel agency services for booking travel; Booking agency services for travel; Booking agency services relating to travel; Agency services for arranging travel; Tourist agency services (travel); Travel agency services for arranging travel

Class 43: Agency services for booking hotel accommodation; Booking of hotel accommodation; Booking services for hotels; Travel agencies for arranging accommodation; Travel agency services for making hotel reservations; Travel agency services for reserving accommodation; Travel agency services for reserving hotel accommodation; Travel agency services for booking accommodation; Booking of accommodation for travellers

(‘Applicant’s Services’)

2.       The Trade Mark was examined and advertised as accepted for possible registration on 26 November 2022.

3.       On 25 January 2023, the Opponent filed a Notice of Intention to Oppose the Application. On 24 February 2023, the Opponent filed a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the opposition on 20 June 2023.

4.       The Opponent filed Evidence in Support (‘EIS’) on 21 September 2023. The Applicant filed Evidence in Answer (‘EIA’) on 2 January 2024. The Opponent filed Evidence in Reply (‘EIR’) on 8 March 2024.

5.       The parties were given the opportunity to either request an oral hearing or to file written submissions. Both parties elected to be heard by video conference. I heard this matter as a delegate of the Registrar of Trade Marks via video conference on 6 December 2024. Prior to the hearing, both parties filed a written summary of their submissions. At the hearing, Angela McDonald of counsel instructed by Sophie Pemberton of LegalVision ILP Pty Ltd (observed by Tobias Paramor, an officer of the Opponent) appeared on behalf of the Opponent and Sonia Stewart of counsel instructed by Dunja Poljak of Adams Pluck (observed by Christopher Stevens, an officer of the Applicant) appeared on the Applicant’s behalf. I have decided this matter based on the particulars set out in the SGP, the evidence of the parties and the written and oral submissions of the parties.

Grounds and onus

6.       The SGP nominates grounds of opposition under ss. 42(b), 44,[2] 58, 59 and 60. The Opponent advised in its written submissions that it was not pressing the s 59 ground of opposition. I therefore treat this ground as abandoned.

[2] As the Opponent relies on an international trade mark registration which is protected in Australia (‘PITM’) (defined later in this decision) as the basis of this ground of opposition, the technical ground of opposition is under reg 4.15A rather than s 44. However, as the terms are substantively identical for all relevant purposes and for ease, I have retained the reference to s 44 in this decision. References to s 44 as considered in the present decision should be taken to read to reg 4.15A.

7.       The Opponent carries the burden of establishing at least one ground of opposition[3] on the balance of probabilities.[4] The date at which the rights of the parties are to be determined is the Relevant Date.[5]

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

[4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelmann JJ).

[5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’).

Evidence

8.     The following evidence was filed:

EIS

·Declaration of Tobias Paramor, CEO and Director of the Opponent dated 20 September 2023 with Annexures TP-1 to TP-32 (‘Paramor 1’).

EIA

·Declaration of Christopher Ryan Stevens, Director of the Applicant dated 23 December 2023 with Exhibit CRS-1 (‘Stevens’).

EIR

·Second declaration of Tobias Paramor dated 7 March 2024 with Annexures TP-1 to TP-4 (‘Paramor 2’).

Summary of EIS

9.     Paramor 1 can be categorised and summarised under the following headings:

Opponent’s background and services

10.    The Opponent was incorporated in 2017 in Spain and its predecessor, SIROWEK S.L., established in 2009, ceased operation upon the Opponent’s incorporation. Paramor 1 claims the Opponent provides the following range of recreational and leisure goods and services under the parent brand ‘THE STOKE BRANDS CO’ worldwide including Australia:

·booking and information services relating to travel, accommodation, surfing and recreational activities

·entertainment and event management

·the provision of food and drink and the hire and rental of food and drink facilities, such as food trucks

·the design, provision and retail of clothing

(together ‘Opponent’s Goods and Services’).

11.    Paramor 1 claims the Opponent owns and uses a variety of sub-brands and trade marks in connection with the provision of the Opponent’s Goods and Services, many of which contain the element ‘STOKE’ or ‘STOKED’ including STOKE and STOKE TRAVEL.

12.    Paramor 1 details the Opponent’s PITM number 1962611 (‘Opponent’s Registration’) for the trade mark  (‘Registered Mark’) which appear below:

Filing and priority date - 28 March 2018

Services - Class 39: Travel booking agency services; organization and reservation of trips and cruises; transport reservations; tour organization; professional consulting and information relating to the services provided by travel agencies or intermediaries securing reservations for travel, cruises and passenger transport, as well as advice and information regarding travel, travel reservations, tourism and transport; computerized travel reservation services; transport; packaging and storage of merchandise

Class 41: Education; training; amusement; sporting and cultural activities; rental of sports equipment, sports training camps, organization of sports competitions, information regarding education, entertainment, recreation, activities for sports and leisure; organization and conducting of colloquiums and conferences, publication of books

Class 43: Accommodation reservation services for travelers, mainly provided by travel agencies or brokers; accommodation agencies (hotels, boarding houses); reservation of temporary accommodation; hotel and boarding house reservation; tourist homes; rental of conference rooms; reservation of accommodation and services provided by travel agencies or intermediaries ensuring reservations of accommodation and advice and information relating to accommodation reservations; services provided by bars, restaurants, cafeterias; restaurant services; temporary accommodation and hotel services

(‘Registered Services’)

Marketing, promotion and advertising

13.    Paramor 1 claims the Opponent has promoted and provided the Opponent’s Goods and Services under STOKE, STOKE TRAVEL and the Registered Mark (together ‘Stoke Marks’) in Australia since as early as 2009, and has a reputation for organizing and providing thrilling travel experiences and adventures.

14.    Paramor 1 declares that the Opponent has advertised and promoted the Opponent’s Goods and Services as follows:

·Opponent’s website at (‘Opponent’s Website’) annexing Wayback Machine[6] screenshots of the website from 19 May 2009 to 6 February 2022. In respect of the screenshots, I note there is use of the Stoke Marks,

[6] claimed to be in operation since 2009 and to have approximately 66,000 likes and 66,000 followers in 2023, annexing seven screenshots from the Facebook page dated between 2009 and 2021. Paramor 1 annexes five posts dated between 2012 and 2019. I note that only three of the posts reference Stoke Travel at the top of each page.

oas of 24 July 2023, 12.4% of the Opponent’s Facebook followers across the world were based in Australia with the top cities being Melbourne and Sydney, annexing a screenshot of social media analytics.

·Instagram:

o@ stoketravel claimed to be in operation since 2017 and to have approximately 19,700 followers in 2023 annexing seven screenshots from the Instagram page dated between 2015 and 2022. I note reference to stoketravel at the top of each page and various references to Stoke in the posts.

oas of 24 July 2023, 12.6% of the Opponent’s Instagram followers across the world were based in Australia with Melbourne and Sydney being in the top five cities, annexing a screenshot of social media analytics.

·third party online news and industry publications annexing five screenshots dated between 2013 to 2019 and two screenshots dated after the Relevant Date or undated. I note that none of the publications are from Australian sources and no Australian reader number are provided.

·Influencer posts dated after the Relevant Date.

·Year 13 website, an Australia online platform designed to support students leaving high school, annexing an undated screenshot of the Stoke Travel information page from the website.

·Opponent’s ‘Stoke Travel Magazine’ in connection with Student Flights Australia annexing an undated example of the Australian edition claimed to be from 2019. I note all prices in this edition are in Euros. No indication of Australian reader numbers is provided.

·Opponent’s events including running:

o‘Island Vibe Festival Camping by Stoke Travel’ in Queensland in October 2020 annexing details of the event.

oStoke Soundcheck musical event in Sydney in April 2019 annexing details of the event.

·Promotion of two third party events annexing undated copies of posters advertising the events.

Customers

15.    Paramor 1 states that since at least 2015, the Opponent’s ‘STOKE TRAVEL’ brand has attracted thousands of Australian nationals and residents. Paramor provides a table of the number of Australian clients the Opponent has engaged with since 2015 (with an obvious dip in 2020-2021 due to COVID-19). Ignoring both the figures in 2020 and 2021, and the figures after the Relevant Date (being half of 2022 and 2023), I note that over the nine years there was a total of 42,462 customers. The average number of customers per year (after removing the anomalies in 2020 and 2021 and figures after the Relevant Date) is 5714.

16.    Paramor 1 provides customer analysis figures from third party booking accommodation provider Hostelworld which shows the number of bookings made by Australians for the following overseas events provided by the Opponent:

·‘All-inclusive Pamplona Camping’ - 80 bookings from 1 June 2017 to 1 June 2023

·‘Munich All-Inclusive Campsite’ - 159 bookings from 20 July 2017 to 21 July 2023

·‘San Sebastian Surf Camp’ - 71 bookings from 1 January 2017 to 21 July 2023

No reference is made to any of the Stoke Marks in the Hostelworld figures.

Awards and reviews

17.    Paramor 1 declares that the Opponent consistently receives positive reviews and recognition associated with the Stoke Marks exhibiting screenshots from the Go Overseas website of various reviews of ‘Stoke Travel’ left by the Opponent’s customers since as early as 2014, only three of which are by Australians.

18.    Paramor 1 provides details of Stoke Travels’ listing as a favourite festival operator finalist in 2012 in the TNT Golden Backpack Awards annexing a copy of an online article from the website use of the Trade Mark

19.    Paramor 1 states that the Applicant is a UK company providing information, tips, advice and stories about surf resorts, surf camps, surf adventures and surf instructor training courses in, inter alia, Australia and that the Applicant uses the Trade Mark to promote the Applicant’s Services via its website (‘Applicant’s Website’).

20.    Paramor 1 states the Applicant uses the Trade Mark in the following form:

(‘Device Mark’).

Summary of EIA

21.    Stevens can be categorised and summarised under the following headings:

Background and adoption of the Trade Mark

22.    Stevens states that the Applicant provides travel and tourism-related services include arranging surf camps and accredited surf instructor courses, including accommodation and travel in a number of countries including Australia.

23.    Stevens claims the Trade Mark was first used in Australia in connection with the Applicant’s Services in February 2019. Stevens declares that the Trade Mark was chosen as the core part of the company name as the word ‘stoked’ is so ingrained in the language of surfing and is a core term in surf culture. Stevens exhibits copies of articles resulting from online searches for the term ‘stoked’ in connection with surfing. Stevens also declares that at the time the Trade Mark was chosen, online research was conducted into variations of the Trade Mark when in use with travel. The enquiries included variations such as ‘stoked surf travel’, ‘stoked surf trips’ and ‘stoked surf camps’.

24.    Stevens states that since the Applicant launched the Trade Mark, the Applicant has not become aware of any instances of confusion.

25.    Stevens attests that the Applicant also uses the Device Mark.

Advertising, marketing and promotion

26.    Stevens provides details of the Applicant’s promotion of the Applicant’s Services on social media, the Applicant’s Website, mentions in online articles, Google reviews and a table of confidential advertising and marketing figures.

Revenue and customers

27.    Stevens provides the price range for the Applicant’s travel and surf course products and a table of confidential revenue figures.

Confusion

28.    Mr Stevens declares that he has not been made aware of any confusion among members of the public between the Applicant’s Services and those of any other person, including the Opponent either by way of email or website enquiries, social media or in any customer or public reviews.

Summary of EIR

29.    Paramor 2 states that the Applicant’s Website does not appear to have been active until 11 August 2020.

30.    Paramor 2 claims that a Google search of ‘stoke surf travel’ would have revealed the Opponent’s active presence.

31.    Paramor 2 annexes copies of eighteen invoices from the Opponent to Australian individual customers and Australian based travel agencies such as Flight Centre Australia and Global Work & Travel for the period 2015 and 2019, which I note display the Registered Mark. While the invoices are addressed to an Australian address, they are for travel services provided outside Australia.

Discussion and reasons

Section 44

32.    Section 44 relevantly provides:

Identical etc. trade marks

(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) 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 services or closely related goods; or

(ii)a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1:For deceptively similar see section 10.

Note 2:For similar services see subsection 14(2).

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.

(3)If the Registrar in either case is satisfied:

(a)that there has been honest concurrent use of the 2 trade marks; or

(b)that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:For limitations see section 6.

(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a)beginning before the priority date for the registration of the other trade mark in respect of:

(i)the similar goods or closely related services; or

(ii)the similar services or closely related goods; and

(b)ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:For predecessor in title see section 6.

Note 3:For priority date see section 12.

33.    The SGP nominates the Opponent’s Registration as the basis for this ground of opposition.

34.    As a starting point, to successfully oppose the Application pursuant to s 44, the Opponent must establish that:

·the Opponent’s Registration has a priority date which is earlier than the Relevant Date and is held in a name other than that of the Applicant (‘the first requirement’);

·the Applicant’s Services are similar to the Registered Services (‘the second requirement’); and

·the Trade Mark is substantially identical with or deceptively similar to the Registered Mark (‘the third requirement’).

35.    I am satisfied that the priority date of the Opponent’s Registration is earlier than the Relevant Date and is in a name other than the Applicant. Therefore, the first requirement is satisfied.

36.    The next consideration is whether I am satisfied that the Applicant’s Services are similar to the Registered Services.

37.    Section 14(2) defines ‘similar services’ as services which are the same or of the same description. The Applicant’s Services are various travel related services which are clearly the same as the Registered Services or are at least of the same description. Therefore, the second requirement is satisfied.

38.    The next consideration is whether I am satisfied that the Trade Mark is substantially identical with or deceptively similar to the Registered Mark.

Substantial identity

39.    The starting point of an analysis as to whether trade marks are substantially identical is the well-known dicta of Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’),[7] where his Honour stated at 414:

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.

[7] (1963) 109 CLR 407 (‘Shell’).

40.    Thus, if a total impression of similarity emerges from a comparison between the two marks, the marks are ‘substantially identical’.

41.    In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd[8] the Full Court clarified the way in which a ‘side by side comparison’ of trade marks is to be carried out in order to determine whether the two marks are substantially identical. The Full Court identified that the proper approach for determining whether trade marks are substantially identical is an evaluative process which begins with a comparison of the essential elements of the marks, before considering the differences between them:

The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person” (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.[9]

[8] [2017] FCAFC 83 (Greenwood, Jagot and Beach JJ).

[9] Ibid [52].

42.    Whether there is substantial identity is a question of fact.[10]

[10] Ibid [53].

43.    The respective marks appear below:

.  Stoked Surf Adventures

44.    The Opponent’s submits that there are striking similarities between the Registered Mark and the Trade Mark, the essential feature of the Registered Mark is only the word STOKE and the Trade Mark only the word STOKED and the words STOKE and STOKED sound very similar.

45.    The Applicant submits that a dominant cognitive cue of the Registered Mark includes the four feet element and it is impermissible to elevate the word STOKE to undue and artificial prominence and erroneously disregard the four feet element and other features of the Registered Mark.

46.    On a side-by-side comparison I consider there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of the Registered Mark and the Trade Mark. While they each share a visually similar but not identical word element STOKE or STOKED, the presence of the words THE, TRAVEL, CO. and the four feet element in the Registered Mark and the lack of the words SURF and ADVENTURES which appear in the Trade Mark provide a significantly different visual impression. I move then to consider whether the Trade Mark and Registered Mark are deceptively similar.

Deceptive similarity

47.    Section 10 provides a definition of deceptively similar being that ‘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’.

48.    Justice Windeyer outlined the following approach for the assessment of deceptive similarity in Shell:

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 [mark].[11]

[11] Shell (n 7), 416.

49.    The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[12] conveniently stated the relevant principles, which were summarised in The Agency Group Limited v H.A.S. Real Estate Pty Ltd[13] as follows:

[12] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

[13] [2023] FCA 482, [55] (Jackman J).

·the resemblance between the two marks must be the cause of the likely deception or confusion;[14]

[14] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).

·in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[15]

[15] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

·the marks should not be compared side by side;[16]

·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 (or services), then similarities both of sound and of meaning may play an important part;[17]

·the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[18]

·the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[19]

·the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[20]

·“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers;[21]

·the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[22]

·it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[23]

·evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[24] and

·any intention to deceive or cause confusion may be a relevant consideration but is not required.[25]

[16] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

[17] Ibid.

[18] Ibid.

[19] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).

[20] Shell (n 7), 415.

[21] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

[22] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

[23] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (French J) restating principles from Southern Cross (n 5) 594-595.

[24] Australian Woollen Mills (n 16).

[25] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 16), 657.

50.    In light of the authorities, I must decide whether there is a real, tangible danger of deception or confusion by reason of the use of the Trade Mark, having regard to the imperfect recollection of the notional consumer. That is not to be judged by a side-by-side comparison of, on the one hand, the Trade Mark, and on the other, the Registered Mark. Rather, I am required to take all of the surrounding circumstances into consideration, including those in which the Trade Mark and the Registered Mark are used and the circumstances in which the services are and will be provided.

51.    The Opponent submits that the Trade Mark is deceptively similar to the Registered Mark for the following reasons:

·the Trade Mark can be represented in any style including identical or similar to the Registered Mark or emphasising the word STOKED significantly as per the Device Mark.

·the essential feature of each mark is the word STOKE or STOKED meaning happy, excited etc and STOKED being the past tense of STOKE. The meaning of the words STOKE or STOKED are similar and aurally the words are almost identical.

·the other words in the marks are descriptive of travel related services.

·the four feet element is descriptive of surf culture namely surfers having bare feet and is not a dominant feature of the Registered Mark.

·the notional consumer would recollect the word STOKE or words STOKE TRAVEL and none of the other features as they are descriptive.

52.    The Applicant submits that the trade mark is not deceptively similar to the Registered Mark for the following reasons:

·the four feet element has sexual connotations and is a striking and essential feature which would be remembered when the marks are considered as a whole.

·the four feet element does not refer to surfing as the word SURF does not appear in the Registered Mark.

·the Trade Mark refers directly to surfing and the idea of the mark is different to the Registered Mark.

·the words SURF ADVENTURES in the Trade Mark cannot be discounted.

·the words STOKE and STOKED are not associated with any single trader, annexing a table of brief details of Australian trade mark registrations with STOKE or STOKED as an element.[26]

·the idea of the marks differ.

[26] None of which are in respect of travel related services.

53.    In my view, the Trade Mark is not deceptively similar to the Registered Mark. While a slight degree of visual and aural similarity naturally arises between the Trade Mark and the Registered Mark given they contain a similar word element STOKE or STOKED, this alone is not enough to establish that the trade marks are deceptively similar. The Trade Mark consists of three words. The Registered Mark is a composite mark which contains four words. While STOKED is similar to STOKE visually and aurally, neither the Registered Mark or the Trade Mark are comprised solely of this one word. The Trade Mark contains the other words SURF ADVENTURES which are absent from the Registered Mark in the same way that the words THE, TRAVEL and CO. and the four feet element in the Registered Mark are absent from the Trade Mark. These other elements of the Registered Mark, in combination, cannot be ignored. To consider the mark otherwise would be to extend its scope well beyond the monopoly that has been granted to the respondent by registration.[27]

[27] Australian Meat Group Pty Ltd v JBS Australia Pty Ltd [2018] FCAFC 207, [78] (Allsop CJ; Besanko and Yates JJ).

54.    Further, I agree with the Applicant that the four feet element is an essential feature of the Registered Mark and is an element which is striking to the eye and is highly likely to be remembered by a consumer with an imperfect recollection. I also agree with the Applicant that the four feet element has a sexual connotation. The consumer would not perceive the four feet element as anything other than a smaller footed person, likely to be a woman, lying atop a larger footed person, likely to be a man. As submitted by the Opponent, I do not consider that a consumer would see the connotation of the four feet element as a surfer. In my experience, while surfers maybe barefoot on the beach, and often elsewhere, it is not the norm to see smaller footed surfers lying atop larger footed surfers.

55.    In addition, the Applicant’s Services and the Registered Services are not limited to surfing travel related services and nor are the consumers to which these services are directed limited to surfers.

56.    Visually and aurally, I consider the respective marks compared as a whole are significantly different, even after discounting but not ignoring descriptive matter in the marks such as the words THE, TRAVEL, SURF, ADVENTURES and CO.

57.    I also consider that the respective marks express quite different ideas. Even though the words STOKE and STOKED are known English words with well known meanings,[28] I believe that when the marks are viewed as a whole, the meaning and impression of the marks differ. To me, the combination of the words in the Registered Mark coupled with the four feet element implies travel related services with a sexual connotation whereas the combination of the words in the Trade Mark imply travel services which are thrilling adventures, particularly surf adventures.

[28] The Macquarie Dictionary Online defines STOKED as ‘thrilled and delighted’ whereas STOKE is defined as ‘to poke, stir up, and feed (a fire), to tend the fire of, supply with fuel, to shake up the coals of a fire, to tend a fire or furnace and to act as a stoker’.

58.    The potential purchasers of travel related services in Australia are vast in number, covering most consumers in Australia. As a consequence, while such a large class of people is involved in this assessment lends increased weight to the possibility for confusion to occur, consumers of travel related services tend to take time to assess what they are purchasing and from whom. Therefore, for travel related services, visual differences are likely to carry the greater weight.

59.    The question is whether there is a real tangible risk that the result of the use of the Trade Mark will be that a reasonable person will be caused to wonder whether it might not be the case that travel services bearing the Trade Mark is from the same source as travel related services bearing the Registered Mark. This consideration is not concerned with the mere possibility of deception or confusion between trade marks but a real, tangible danger of it occurring.

60.    After consideration of the differences in the respective marks, taken together, and even allowing for imperfect recollection, as a matter of impression and common sense they generate an overall visual, aural and conceptual impression of difference. A consumer would not confuse the Registered Mark with the plain word Trade Mark.

61.    I am not satisfied that consumers viewing or hearing the Trade Mark would be caused to wonder whether the Applicant’s Services originate from the same trade source as the Opponent, or that the trade marks are otherwise connected in some way. I find that there does not exist a real, tangible danger of deception or confusion between the two. The s 44 ground is therefore not established.

Section 58

62.    Section 58 of the Act provides:

Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:          For applicant see section 6.

63.    The term ‘owner’ is not defined in the Act. However, it is well established that in the absence of fraud, the original owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application for it in Australia, whichever is earlier.[29]

[29] Shell Co of Australia Ltd v Rohm & Haas Co (1949) 78 CLR 601.

64.    To succeed on this ground of opposition, the Opponent must establish:

·that the Trade Mark is identical, or substantially identical, to a trade mark(s) relied upon by the Opponent (‘First Element’);[30]

·that the Applicant’s Services are the ‘same kind of thing’ as the services for which the trade mark(s) relied upon by the Opponent have been used (‘Second Element’);[31] and

·that a person other than the Applicant has an earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to the Application or any actual use of the Trade Mark by the Applicant, whichever is earlier (‘Third Element’).[32]

[30] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936.

[31] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640.

[32] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.

65.    The SGP identifies a number of trade marks which the Opponent claims were used in respect of the Opponent’s Goods and Services since as early as 2008. However, in the Opponent’s oral submissions, the Opponent claims that it is only relying on the use of the Stoke Marks. I shall therefore confine my analysis to the Stoke Marks.

66.    The Act provides for registration of ownership and not ownership by registration.[33]  Ownership of a trade mark may be established ‘either by reason of authorship and prior use or by reason of authorship, filing the application and an intention to use’.[34]

[33] [33]Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [170] (Greenwood, Besanko and Katzmann JJ). See also PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602, [78]-[80] (Carr J).

[34] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [29] (Greenwood, Jagot and Beach JJ).

67.    The right to registration under the Act depends upon ownership of the trade mark and this requirement must be satisfied at the filing date of the application,[35] which in this case is 25 June 2022.

[35] Ibid [14].

68.    The concept of trade mark ownership was discussed in Anchorage Capital Partners Pty Limited v ACPA Pty Ltd wherein the Full Court of the Federal Court observed:

[O]wnership may be acquired by the act of applying for registration of a trade mark even though the applicant has not previously used the mark and the mark has already been used outside Australia by someone else. However, the applicant’s claim to ownership of the mark may be defeated if another person has previously used the mark, or a substantially identical mark, in Australia as a trade mark in relation to the same goods or services, or goods or services of the same kind, as those that are the subject of the application for registration.[36]

[36] [2018] FCAFC 6, [49] (Nicholas, Yates and Beach JJ).

69.    This ground of opposition will be established if it is found the Applicant is not the owner of the Trade Mark in respect of the Applicant’s Services.

70.    The use must be use as a trade mark, namely as a ‘badge of origin’ to indicate a trade connection between goods and services and the trade mark owner and the prior use must be in the course of trade in Australia.[37] The ‘course of trade’ has a broad meaning, consistent with ‘for the purposes of trade’.[38]

[37] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ and Sundberg and Finkelstein JJ).

[38] W.D. & H.O. Wills (Australia) Ltd v Rothmans Ltd (1956) 94 CLR 182, 191 (Dixon CJ, McTiernan, Williams, Webb and Taylor JJ).

1. The principles for determining substantial identity are discussed at [39] to [42] of this decision.

2. In respect of the Registered Mark, which is one of the Stoke Marks, I have already concluded at [46] of this decision that the Trade Mark is not substantially identical to this mark.

3. In respect of the STOKE and STOKE TRAVEL marks, the Opponent submits that the Trade Mark and these marks have striking similarities, the essential feature of the STOKE and STOKE TRAVEL marks is the word STOKE, and the Trade Mark the word STOKED, and the words STOKE and STOKED sound very similar.

4. The Applicant submits that the STOKE and STOKE TRAVEL marks are not substantially identical and refers to the decision of Yates J in Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3)[39] where his honour held that ORO BAR was not substantially identical to ORO.

5. I do not accept the Opponent’s submissions. On a side-by-side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of the STOKE and STOKE TRAVEL marks and the Trade Mark. While they each share a similar word element STOKE or STOKED, the Trade Mark includes the additional two words SURF ADVENTURES. This creates a trade mark which is significantly different visually and aurally to the STOKE and STOKE TRAVEL marks.

6. I am satisfied, when making a side-by-side comparison, cognisant of the essential elements of each mark, that the Trade Mark is not substantially identical to the STOKE and STOKE TRAVEL marks.

   [39] [2023] FCA 1258.

7. As the First Element of substantially identity has not been satisfied for the Stoke Marks, the ground under s 58 is not successful.

   Section 60

   78.    The provisions of s 60 are reproduced below:

   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)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.

   79.    To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.

   80.    The SGP identifies a number of trade marks which the Opponent claims were used in respect of the Opponent’s Goods and Services since as early as 2008 in Australia. The Opponent claims that through use of these marks, the Opponent has acquired a substantial reputation in these marks amongst a significant section of the Australian public. The Opponent and Applicant provide their goods and services to the same target markets and have the same clientele. Therefore, the use of the Trade Mark is likely to deceive or cause confusion.

   81.    In the Opponent’s oral submissions however, the Opponent claims that it is only relying on the use of the Stoke Marks. Further it its written submissions, the Opponent only claims use of the Stoke Marks in respect of the Registered Services and only since as early as 2009.

   Reputation

   82.    The reputation of the Trade Mark must be in Australia.

   83.   The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[40]

   [40] [2000] FCA 1335, [81] (‘McCormick’).

   84.    Further, Kenny J stated in McCormick that:

   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 ... 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.[41]

   [41] Ibid [86].

   85.    The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[42] Here the relevant market is the travel market and is likely to include many Australians, given the popularity of travel in this country. Meanwhile, the ‘existence and extent of reputation’ in Australia must be established as a matter of fact by the Opponent.[43]

   [42] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

   [43] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [57].

   86.    In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:

   The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[44]

   [44] [2019] 142 IPR 275, [83] (O’Bryan J).

   87.    While the Opponent bases the s 60 ground on the Stoke Marks, notably, each is considered a separate trade mark for the purposes of s 60.[45]

   [45] Ibid [89]; Qantas Airways Ltd v Edwards (2016) 338 ALR 134, [160] (Yates J) (‘Qantas’).

   88.    There are weaknesses in the Opponent’s evidence as much of the Opponent’s evidence is undated or dated after the Relevant Date and Opponent has not provided advertising and promotional expenditure for any travel services under any of the Stoke Marks in Australia. While there are weaknesses in the Opponent’s evidence, the Opponent’s evidence shows that it has been providing travel related services in Australia for over 10 years and in the period between 2015 and 2020, the Opponent’s customer numbers averaged 5714 per year. The Opponent also provides copies of invoices to Australians which bear the Registered Mark. Further the Opponent has run events in Australia promoting its services under the Stoke Marks such as ‘Island Vibe Festival Camping by Stoke Travel’ and Stoke Soundcheck.

   89.    In my assessment of the evidence, I am not satisfied that the Opponent had a reputation in the STOKE mark as there is minimal reference to the STOKE mark alone in the evidence dated before the Relevant Date. I am however satisfied that the Opponent had a reputation in the Registered Mark and the STOKE TRAVEL mark at the Relevant Date in respect of travel related services but not one in either mark sufficient to trigger s 60. The Opponent’s reputation must be amongst a significant or substantial number of consumers in the relevant market, which in this case is the market for travel services. The Australian Bureau of Statistics web site shows that the number of Australians who travelled overseas between 2014 to 2023 (excluding COVID-19 affected years) was over 8 million per year, and approximately 50% of those were on holiday.[46] In my opinion capturing less than 0.2 percent of the Australian travel market is not a significant or substantial number of consumers in the relevant market.

   [46] Australian Bureau of Statistics website at In the end, the evidence is insufficient to establish, as a matter of fact, that any of the Stoke Marks had acquired a reputation in Australia amongst a significant or substantial number of consumers.

   91.    As I have found that the Stoke Marks have not acquired a reputation in Australia before the Relevant Date, there is no need for me to consider the second limb of s 60 and the ground of opposition under s 60 has not been established.

   Section 42(b)

   92.    Section 42(b) provides that a trade mark must be rejected if its use would be contrary to law.

   93. The Opponent asserts that use of the Trade Mark would be contrary to ss 18 and 29 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010 (Cth). Additionally, the Opponent asserts that use of the Trade Mark would amount to the common law tort of passing off.

   ACL

   94. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. These are stricter requirements than s 60 which can be established if the use is likely to cause confusion or wonderment.[47]

   [47] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).

   95. Where a ground of opposition under s 60 is unsuccessful, reputation-based claims under ss 18 and/or 29 of the ACL will also fail.[48]

   Passing Off

   [48] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 (Hill J); Riding for the Disabled Association of Australia Limited v Pony Club Australia Pty Ltd [2019] ATMO 63, [63]-[64] (Hearing Officer Richards).

   96. Where use of a trade mark does not contravene s 18 of the ACL neither will it amount to the tort of passing off.

   97. The relationship between passing off and s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’) was addressed in Re Equity Access Pty Ltd v Westpac Banking Corporation:

   The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[49]

   [49] [1989] FCA 506, [40] (Hill J).

   98. Section 18 of the ACL is the equivalent of s 52 of the TPA.[50] The above comments are equally applicable to the relationship between s 18 of the ACL and the tort of passing off.

   [50] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [410] (Rangiah J).

   99. As I have found that s 18 of the ACL has not been contravened, it follows that use of the Trade Mark does not amount to passing off.

   Decision

   100.Section 55 relevantly provides:

   Decision

   (1)Unless subsection (3) applies to the proceedings, 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.

   101.The Opponent has not established a ground of opposition. Accordingly, trade mark number 2278427 may proceed to registration one month from the date of this decision.

   102.If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should otherwise be in accordance with the Court’s order or direction.

   Costs

   103.Both parties have sought an award of costs. Costs usually follow the event. Accordingly, I award costs against the Opponent per s 221 in the amounts set out in Schedule 8 of the Regulations.

   Anne Makrigiorgos

   Hearing Officer

   Oppositions and Hearings

   Trade Marks and Designs

   17 December 2024