Koshito Confecciones C.A. v Oshkosh B'Gosh, Inc

[1995] ATMO 49

TRADE MARKS ACT 1955

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

Re:Opposition by OSHKOSH B'GOSH, INC. to the registration of trade mark application number 533271 in the name of KOSHITO CONFECCIONES C A

Application No. 533271 was lodged on 26th April 1990 in the name of KOSHITO CONFECCIONES C A, ("the applicant"), a company of the Republic of Venezuela.  It seeks to register the mark as shown here:

Registration is sought in respect of "clothing, including boots, shoes and slippers and all other goods in this class", being in class 25.  Following examination, the mark was accepted for registration and advertised as such in the Official Journal of 7th May 1992.

On 6th November 1992, registration of the mark was opposed by OSHKOSH B'GOSH, INC., ("the opponent"), in accordance with the provisions of s 49 of the Act. The opposition was based on a number of grounds but only two grounds were pursued by the opponent at the hearing. These arose under ss 33 and 28 of the Trade Marks Act. Respectively, they involve claims that the presently applied-for trade mark was likely to cause deception and confusion by reason of its close resemblance to the opponent's trade marks, either as registered for the same goods or goods of the same description, (s33) or as used (s28).  The latter argument turned on both the opponent’s reputation and on allegations that use of the applicant's mark would be contrary to law or otherwise disentitled to protection in a court of justice.

The evidence
The opponent’s evidence in support comprises a statutory declaration by Oliver E Wood and exhibits A - H.  Mr Wood, the Vice President, International Sales & Marketing of the opponent company, describes briefly the history of the company and lists the details of the opponent's nine registered or pending applications of trade marks in Australia.  He provides sales and advertising figures for the goods sold by the opponent’s licensee in Australia under the opponent's trade marks between 1987 and 1990 and exhibits samples of advertising and promotional materials under D and E.  He further states that the opponent and the applicant have been involved in trade mark litigation in other jurisdictions.  He expresses the view that the applicant's mark can readily be perceived as a combination of the word KOSH with the word element -ITO.  Although KOSH, he says, has no meaning in the Spanish language, -ITO denotes a diminutive in Spanish which is significant in relation to goods for children.

The applicant’s evidence in answer to the opposition consists of a statutory declaration by Manuel Jose Prado with exhibit MJP.1.  The applicant company's president, Mr Prado, considers there is no resemblance whatever between the present mark and the opponent's marks referred to in its evidence in support.  He annexes copies of original decisions in Costa Rica and Peru, and translations of these, concerning opposition proceedings by the opponent where the matters were decided in the applicant's favour.

Mr Titley's declaration, with exhibits, the opponent’s evidence in reply, sets out the history of use of the mark KOSHITO in various design formats and the disputes between the opponent and the applicant.  Mr Titley, as a lawyer, has conducted the opponent's trade mark matters in the United States and internationally.  He alleges that the applicant company and its owner have acted in bad faith, deliberately copying the opponent's trade mark designs and trading on the goodwill associated with the opponent's trade marks.  Exhibits A to K contain details of trade mark registrations in the United States.  Using exhibits G to K, Mr Titley alleges the applicant has imitated the “stylized form and graphics” of the opponent's trade marks in the USA.  (What this means in practice is not clear to me, since Mr Titley declares that the applicant considers any sort of triangular patch, at the junction of the back straps of overalls, to be its trade mark.) 

Under exhibit N appears a settlement agreement between the two parties applicable to the United States.  The agreement allowed the applicant to continue using the word KOSHITO in, specifically, block letters.  When block letters are not used, the applicant has agreed to render its trade mark in a form “completely different from” that used in a US-registered trade mark which is very much like the subject of Australian registration 512212, reproduced below.  Specifically, the applicant will not use the form of a large K and final letter O with the remaining letters smaller and underlined.  The applicant has also agreed not to do many other things, such as using its trade mark in any sort of triangle at the junction of the back shoulder straps of overalls, or using the words GENUINE ARTICLE. 

Mr Titley also states that, in opposing the registration of two trade mark applications by the opponent in Venezuela, the present applicant had claimed that the opponent's and applicant's marks "share an evident and clear identity both graphically and phonetically".  Exhibits O and P illustrate the pertinent documents.  In Australia these two of the opponent's trade marks are registered under Nos. A512213 and A545236.

The matter was set down before me, as the Registrar's delegate, for hearing in Sydney on 4th July 1995.  The opponent was represented by Mr Gerard Skelly, solicitor, of Spruson & Ferguson.  Appearing on behalf of the applicant was Mr Peter Marsh of F B Rice & Co.

Submissions
Mr Skelly first referred to Smith Hayden & Co Ltd's Appn (1946) 63 RPC 97 in relation to the test for s 33 of the Act. He then addressed the question of notional and fair use, expressing the view that the notional use ought to be assessed in light of the applicant’s activities in other jurisdictions as set forth in the opponent's evidence. Samples in the evidence in support demonstrated that, in part, the emphasis had been placed on the letter K and the final letter O, as well as use of the word KOSHITO in a rectangular panel or a triangular patch design. In the subject mark, the word KOSHITO appears in block capitals but Mr Skelly submitted that, in characterising notional use, the prospect of the applicant placing some emphasis on the first and last letters and using the mark in a rectangular patch ought to be assessed.

Turning to the question of deceptive similarity of the subject mark and one or more of the opponent's marks, Mr Skelly mentioned the doctrine of imperfect recollection, the nature of the goods, the kind of customers and extraneous circumstances as factors to be considered. 

In the evidence in support, the opponent has listed the following trade mark registrations or applications in Australia:

A52194 - OSH KOSH
"Articles of clothing.

A299631 - B'GOSH
"Clothing".

A410590 - OSHKOSH B'GOSH
"All goods in this class including clothing, footwear and headgear".

A512211 -
"Clothing and shoes".

A512212 -
"Clothing and shoes".

A512213 -
"Clothing and shoes".

A539133 - BABY B'GOSH
"Clothing, footwear and headgear".

545236 -
"All goods in this class", being class 25.

575808 - THE GENUINE ARTICLE
"Clothing, footwear and headgear".

The last of these is an application which has now been withdrawn, while in registrations 545236 and 512213 the opponent has disclaimed exclusive right to the use of the words “the genuine article” and “genuine article” respectively.

Mr Skelly referred to the opponent's registrations A52194 - OSH KOSH - and A410590 - OSHKOSH B'GOSH - and to the opponent's emphasis of the letters O and K.  He argued that visual considerations should be given greater weight, but that the sound and speech in relation to these marks should not be disregarded (see Gummow J in Johnson & Johnson v Kalnin and Another, 26 IPR 435). The opponent had quite a significant family of trade marks containing the word KOSH, he said, and in this context there would be a risk of contextual confusion; it might be thought that KOSHITO clothing was related to OSH KOSH clothing, particularly if the letters K and O were emphasised. Purchasers could see KOSHITO mark as a brand extension of OSH KOSH clothing.

Concerning the ground of opposition based on s 28, Mr Skelly submitted that the evidence in support substantiated the opponent's extensive reputation in Australia, particularly for children's clothing, prior to 1990 and therefore prior to this application. Exhibit C annexed to Mr Wood's declaration showed copies of labels of the opponent's marks with a variety of large-type letters O and K in the words OSH and KOSH, the other letters being in lower case and underlined, much as they are in trade mark application number 545236 (see above). Overall, he argued that the evidence showed that the opponent was the proprietor of a family of KOSH marks, of which KOSHITO would reasonably be seen as a “line extension”.

Having regard to the evidence of the applicant's conduct overseas, he contended that the use of the applicant's mark could and should be postulated to extend to embellishment such as underlining, triangular or rectangular panels, and to emphasis on the letters O and K, thus raising the likelihood of confusion. As s 28 is concerned with protecting the public interest, the applicant's conduct in other jurisdictions demonstrated that members of the public needed protection in this instance.

Even though Mr Skelly did not agree with the current Office practice in relation to s 28, (see the Journal of 12.9.91) he believed this was a case where the evidence demonstrated conduct by the applicant which had the sole objective of trading off the opponent's goodwill.  He said regard must be had to the actual manner of use of the mark and to the applicant's conduct, and in this connection he referred to the opponent's successful proceedings in the United States of America.  Clearly, the applicant's conduct was designed with nothing else in mind but to trade off the opponent's goodwill.  By adopting the element KOSH, which he argued is totally and factually distinctive of the opponent's clothing, and by simply adding the Spanish diminutive -ITO, the applicant had indisputably shown its real motives.  It may only be sharp business practice to legitimately appropriate a foreign trade mark in this country, but, in his submission, it was disentitling conduct for an applicant to design a mark and to progressively attempt to modify it in the manner demonstrated in this case.  It would totally subvert the trade mark registration process, he submitted, to afford the applicant the benefits of the subject mark's registration.  The applicant had to show that there was no reasonable chance of deception and confusion; according to Mr Skelly the opponent's evidence demonstrated reasonable doubt in that regard.  While the applicant had been successful in two administrative decisions, under the laws of Costa Rica and Peru, this did not show that there was not reasonable doubt in Australia.

In Mr Marsh's opinion, by the ordinary canons of comparison of marks, apart from the element KOSH, the opponent's marks and the applicant's mark shared very little in common.  As for the suffix -ITO indicating a small KOSH in the subject mark, he did not agree that ordinary members of the public would interpret the mark in such a way.  He then referred to the agreement in the United States between the opponent and the applicant, pointing out that the subject mark was rendered in complete agreement with the requirements of this agreement.  Regard should be had to this agreement and the actual representation of the present mark which would be used in its totality, and not to any extravagant views of what the applicant might do, he said.  The agreement, he reminded me, specifies certain conditions (colour or placement) to enable use of the marks in a rectangular or triangular patch.  He recognised, none the less, that the agreement was not binding on use of the marks here.  He further noted that in the proceedings in Venezuela in respect of similarities between the marks, attention was focussed on the way the marks were being represented, not similarities between the words OSH KOSH and KOSHITO.  As to the decisions in other jurisdictions, Mr Marsh stressed that they were not relevant to Australia, and that the applicant's mark should be looked at as it is now shown.

Mr Marsh also submitted that the opponent's evidence did not demonstrate the extensive reputation in Australia alleged; $4 million over three years for clothing was rather less significant in his view than in Mr Skelly’s.

Both representatives agreed that costs should follow the cause.

Decision
Deceptively similar marks?

Sub-section 33(1) states:

Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, of goods of the same description as those goods, or of services that are closely related to those goods, unless the date of registration of the first-mentioned trade mark is, or will be earlier than the date of registration of the second-mentioned trade mark.

A long standing test which has been applied to s 33 of the Act is, to paraphrase Smith Hayden & Co Ltd's Appn, supra:

The question for my decision under s 33 is as follows: ...Assuming use by the opponent of its marks in a normal and fair manner for any of the goods covered by the registrations of those marks ..., am I satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant used its mark normally and fairly in respect of any goods covered by its proposed registration?

Mr Skelly conceded that these opponent's marks are not substantially identical with the applicant's mark.  I will go several steps further and say that, whatever the ins and outs of the conflict in Spanish-speaking jurisdictions, the trade marks of the applicant and the opponent simply are not deceptively similar.  There is no evidence to suggest that the opponent is, or will be seen to be, the proprietor of a family of KOSH marks.  Nor do I agree that any significant number of people in this country would see or recall the applicant’s mark as “little KOSH”.

While it may be that the applicant will do all that it legally can to copy the look of the opponent’s goods, there is not sufficient in common between the opponent’s registered marks and the current one for me to refuse to register the latter.   

Nor is there any reason for me to believe that reasonable fair use of the mark as sought to be registered will conflict with the fairly extensive reputation of the opponent’s trade marks in its various forms.

There is thus no reasonable way that the opponent’s trade marks will be confused with the mark which the applicant seeks to register.  The extremes - and the extreme claims - which may have occurred overseas are outside the scope of proceedings in relation to the mark which has been applied for in Australia.  If there is a problem in Australia, it will come from matters other than the fair use of the trade mark with which I am concerned.  Any problem which arises will thus not be any the better or worse for my refusal to register the present application.

I therefore dismiss the opposition and direct that the application proceed to registration.  I award costs in accord with the scale to the applicant.

T. Williams
Hearing Officer
30 October 1995