La Chemise Lacoste v Crocodile International Pte Ltd

[2008] ATMO 90

TRADE MARKS ACT 1995

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

Re:Opposition by La Chemise Lacoste to registration of trade mark application 1005106, 1017333 (classes 18, 25) – words CROCODILE and CARTELO (WITH CROCODILE DEVICES) - filed in the name of Crocodile International Pte Ltd.

Delegate:

Terry Williams

Representation:

Opponent: David Catterns QC and Warwick Rothnie of counsel, instructed by Corrs, solicitors

Applicant: Ben Fitzpatrick of counsel, instructed by Davies Collison Cave, patent and trade mark attorneys

Decision:

2008 ATMO 90

S52 opposition – s 44(1) established, s 44(3) not applied, registration refused.

Background

1.     Crocodile International Pte Ltd is a company under the laws of Singapore.  It has filed applications for the registration of the following trade marks:

(application 1005106, filed 4 June 2006 in classes 18 and 25) and

(application 1017333, filed 24 August 2006, in the same classes).

I will refer to these, for convenience, as “the CROCODILE and device trade mark” and “the CARTELO and device trade mark” respectively.

2.     I will also, for convenient brevity, truncate the long lists of goods for which registration is sought and describe them generally as being wide ranges of  leathergoods and luggage (class 18) and of clothing and footwear (class 25).  Application 1005106, however, excludes from the scope of both classes “goods … being or consisting of crocodile skins or imitations thereof”.

3. Registration of the two trade marks is opposed by La Chemise Lacoste (“the opponent”). The opponent relies, broadly speaking, upon matters related to its own trade mark registrations 320943, 339647, 952156 and 969636. I will set these out in order and refer to them collectively as “the opponent’s trade marks” and to the crocodile device(s) constituting the trade marks as “the opponent’s crocodile device”. There is no dispute that the opponent’s trade marks are all prior to the opposed applications and relate to, among other things, “similar goods” in terms of s 14(1) of the Trade Marks Act 1995 (“the Act”).

320943	339647
952156	959636

4.     Both the applicant and the opponent have availed themselves of the opportunity under the regulations to serve and file evidence supporting their respective positions.  I will come to the essential parts of this during the course of what follows.  Ultimately, the matter was set down for a hearing, which I was assigned to conduct under delegation from the Registrar of Trade Marks.  When the matter came on for hearing in Sydney in July 2008 the opponent sought permission, which I granted, to serve and rely on additional material.  That material, very simply, sheds additional light on matters alluded to in earlier evidence about the dispute that has ranged internationally between these two parties and involved others with a historical connection with the applicant. 

5.     At the hearing, the applicant was represented by Ben Fitzpatrick of counsel, instructed by Davies Collison Cave, patent attorneys.  The opponent was represented by David Catterns QC and Warwick Rothnie of counsel, instructed by Corrs, solicitors, of whom Stephen Stern, solicitor, attended the hearing.

The opponent and its trade marks. 

6.     The genesis of the opponent’s crocodile device goes back to 1927.  René Lacoste, then France’s leading tennis player, was dubbed “the alligator” by the American press over a bet he made with his team captain during a Davis Cup tennis match in the USA.  On his return to France, however, the French took up the nickname as “Crocodile”.  I am satisfied, consistently, that this is how the device element in any of the trade marks would be referred to in Australia, irrespective of whatever might be the perceptions of those in, say, the USA.

7.     René Lacoste and a business partner started the predecessor of the opponent’s business under the name “La Chemise Lacoste” in order to distribute polo shirts embroidered with the opponent’s crocodile device.  It would be an understatement to say that the business was successful.  The opponent’s crocodile device is well-known worldwide, and particularly in European, North American and Australian markets. 

8.     In 2000, the opponent’s global turnover was of the order of a thousand million Australian dollars.  Sales in Australia were very strong indeed in the 80s and 90s and, while revenue appears to have fallen off somewhat in 1997 and the next few years, sales are now of the order of several millions of dollars per year of clothing and footwear.  There has been extensive in-store promotion of the LACOSTE brand, of which the opponent’s crocodile device is a major component, in larger department stores, in various LACOSTE boutiques and other retailers around Australia.

The applicant and its trade marks

9.     The applicant has a long-standing history of its own.  For the better understanding of these circumstances, I have granted permission to the opponent to rely on, inter alia, the statutory declaration of Lim Keng-Boon made on 27 June 2008 in connection with an opposition to the registration by the opponent, in New Zealand, of trade mark application 604957 for the word CROCODILE.  This latest material, in other words, was introduced into the present matter by the opponent but originated, as part of the New Zealand proceeding, from the Assistant General Manager of the applicant company.

10.   I accept, by and large, the account based largely on the further evidence and put to me at the hearing by the opponent.  The family of the applicant’s founder, Tan Hian Tsin, (“Mr Tan”) moved to Vietnam from China in the 1940s.  In Vietnam at this time the opponent’s crocodile device was, so the opponent asserts, well known, Vietnam being then a French colony.  There is evidence that the French Davis Cup tennis team toured Vietnam, consistently wearing their polo shirts bearing the crocodile device, to some significant public notice.

11.   Mr Tan moved from Vietnam to Singapore, where the applicant’s business started, in the late 1940s.  At about the same time, one of his brothers moved to Hong Kong and became part of a business that also used a crocodile trade mark.  This set up the potential for some future commercial dealings in which, ultimately, even the opponent has taken part.  These matters are relevant to an understanding of why the opponent has found itself in situations, in parts of the Asian market and elsewhere, where pragmatic business compromises have been necessary.  Thus, and depending on the circumstances involved, the opponent or entities with whom it trades have been heard, in other jurisdictions, to proclaim that the opponent’s crocodile device is not deceptively similar to those of the applicant. 

12.   While the applicant’s businesses may have started off as a loosely-knit family enterprise in various parts of Asia, when Mr Tan’s father died in 1954, his sons, including Mr Tan, met and divided up the business interests of the family as follows:  Tan Chan Shun became the owner and controller of the businesses, including their own crocodile trade marks, in Hong Kong and Macau; Tan Chen Kefen became the owner and controller of the business in Thailand; and Tan Siew-Huy and Mr Tan became the owners and controllers of the businesses, including the relevant trade marks, in Singapore, Malaya, Sabah and Sarawak and elsewhere.

13.   Thus, the CROCODILE and device trade mark, the subject of application 1005106, was registered in Hong Kong in 1951 but, significantly, the owner of the Hong Kong trade marks, which ultimately became Crocodile Garments Ltd, is and was different to the applicant in the present opposition.  All the brothers appear to have retained shares and directorships in the Hong Kong business, but agreed, so the opponent argues, to operate that businesses independently.  Mr Tan has not been a director of the Hong Kong business since 1975, or a shareholder since the 1980’s.  Consistently with the independent operation of the businesses, Crocodile Garments Ltd has assigned to the opponent trade mark registrations for the CROCODILE and device trade mark the subject of application 1005106 in Saudi Arabia and New Zealand, and is a party to a co-existence agreement with respect to Hong Kong.  As part of a commercial settlement with the opponent, Crocodile Garments Ltd registered various relevant crocodile trade marks in Hong Kong and granted exclusive licences of them to the opponent, but ultimately assigned them to that company in 2003.

14.   The applicant asserts that its business expanded from Singapore into Malaysia, Brunei, Indonesia and Thailand in the 1950s; into Japan in 1956, Taiwan in the 1980s, Korea and Laos in the mid 1990s, into India, Mongolia and Cambodia in 1996; and subsequently into Sri Lanka, Uganda, Bangladesh, Nepal, Myanmar, Kazakhstan, Pakistan, Tajikistan, Vietnam, Turkmenistan, UAE, Oman, Qatar, Bahrain and Saudi Arabia.  There is, however, no evidence of any use of either opposed mark in Australia as at the relevant priority dates.

15.   Ultimately, per Mr Fitzpatrick’s submissions, “the applicant and the opponent have entered into mutual co-existence agreements allowing for use of their respective marks concurrently in a wide range of countries including Taiwan, Singapore, Indonesia, Malaysia and Brunei”.  Interestingly, the evidence shows that a list of “most infringed” trade marks originating from the Korean Industrial Property Office features both the applicant’s and opponent’s trade marks.

Grounds considered

16.   I agree with Mr Catterns that the present situation is one where the Registrar must be satisfied that at least one ground of opposition has been made out on the balance of probabilities.  Specifically, as regards matters under the Act, see Pfizer Inc. v Karam (2006) 70 IPR 599 at [26], and various decisions of delegates of the Registrar of Trade Marks since then. Mr Fitzpatrick put the matter differently. He argued that, “The Registrar should approach the question of registration with the presumption of registrability in mind. In relation to sections 42, 43, 44 and 60 the onus of proving that there is a reasonable probability of deception may be a deciding factor”.

1017333 – CARTELO and device

17. Here, the opponent argued its case in terms of s 44, 60, 42(b), 43 and 59 of the Act. At the heart of these is s 44, since if the CARTELO and device trade mark is not “deceptively similar” to any of the opponent’s trade marks then I do not think any of the grounds other than s 59 could be argued successfully on the present facts.

18.   Section 10 provides that one trade mark will be deceptively similar to another if it so nearly resembles that other trade mark as to be likely to deceive or cause confusion.  The tests are well established: See Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR, per French J:

[49] The question of fact for the Court on an appeal from the Registrar in a case of alleged deceptive similarity between marks was posed by the High Court in Australian Woollen Mills Ltd v F S Walton & Co Ltd at 658: "whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained."  The reference to "restrained" reflects the fact that unlike this case the Australian Woollen Mills Ltd case was an appeal in an infringement action.  The judgment of the likelihood of deception or confusion is a very practical one and what has long been accepted as the proper approach to making that judgment was set out in Australian Woollen Mills Ltd.  It requires assessment of the effect of the challenged mark upon the minds of potential customers.  Impression or recollection taken away from the point at which the challenged mark is observed will be the basis of any belief about a connection between the new and the old marks. The effect of spoken description must be considered.  What confusion or deception may be expected is to be based upon the behaviour of ordinary people.  As potential buyers of goods they are not to be credited with high perception or habitual caution. Exceptional carelessness or stupidity may be disregarded.  The question ultimately is not susceptible of much discussion (at 659):

"It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs."

[50] In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 ; [1955] ALR 115 ; (1954) 1A IPR 465, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

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

(ii)       A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

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

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

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

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

In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362 ; 1 ALR 443 at 450:

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

19.   Mr Catterns argued that there were a number of compelling reasons why the public in Australia would be likely to draw a connection between the opposed trade marks and the opponent’s trade marks.

• The goods covered by the registrations and the opposed applications are effectively identical.
• The crocodile device is effectively the mirror image of the device in the opponent’s registrations.  That the respective crocodiles face in opposite directions was, he argued, hardly the sort of detail likely to be recalled by imperfect recollection.
• The word crocodile is not a natural or apt term for use in connection with clothing or the class 18 goods[1].

[1] I did not understand Mr Catterns to be submitting, however, that the device of a crocodile is unsuggestive of the nature of some clothing or leathergoods.

20.   While the crocodile device component was visually smaller than the word CARTELO it is nonetheless a significant and essential element of that mark, which was, he argued, sufficient:

• in The Seven-Up Co. v Bubble Up Co Inc (1987) 9 IPR 259, King J accepted at 267 that BUBBLE UP would infringe UP under s 33 of the 1955 Act because, while it could not be said that ‘up’ was the distinguishing feature of BUBBLE UP, it was still a distinguishing feature. Similarly, VAPORUB was infringed by KARSOTE VAPOUR RUB in de Cordova v Vick Chemical Co (1951) 68 RPC 103.
• see also Shanahan’s Australian Law of Trade Marks and Passing Off (3rd edition) at 7.12. cf. Sports Cafe Ltd v Registrar of Trade Marks (1998) 42 IPR 552 (Wilcox, Heerey and Lindgren JJ).
• CARTELO is an unknown and meaningless term; while the crocodile device is well-known.

21.   At the hearing, Mr Catterns noted evidence that the applicant actually uses its CARTELO and device trade mark overseas in ways which substantially, if not totally, conceal the CARTELO element.  There is evidence that it is possible to use the trade mark in such a way that the word CARTELO is rendered in one colour while the crocodile is rendered in another.  If, in such a case, the trade mark is applied to a fabric shirt of the colour in which CARTELO is rendered, that word will blend into the background and effectively disappear.  In my own view this is not an ordinary, fair or notional use of the trade mark as sought to be registered.  There is evidence that it has happened but there is no evidence at all that this is either the norm or something that the applicant aims to bring about.  I do not, therefore, give its likelihood any significant weight.  The opponent has had every chance to show the applicant acting in this way but the evidence that it does so is slight and, I think, can be subscribed to sheer chance.  Had it been more than this, I am sure the opponent would have been more forthcoming about the frequency of this practice. 

22.   None the less, Mr Catterns argued that the usage in this way was significant for three reasons:

• in making the assessment, it is important to consider all the ways the mark may be fairly used within the scope of the application – see proposition (v) made by French J in Woolworths (supra).  This is a type of use permitted by the application.
• the essential element, in fact the only significant visual element in such a case, is the crocodile device.
• it reveals that the applicant has adopted the mark with the intention of free riding on opponent’s trade marks. 

23.   Now, as to these, I note that Mr Catterns has put a Eurocentric view on the history of the matter when he accuses the applicant of free riding.  In the Asian markets where the predecessors of the applicant and of Crocodile Garments Ltd, the Hong Kong company, initially adopted the device element, it would not appear that the opponent had a trading presence at the time in question.  The most that might be said is that it was a “borrowing from abroad”.  Conflict has arisen since then, as both parties to this dispute have broadened and deepened their trading presences.

24.   Mr Catterns argued that the Bednall survey, to which I will come below, provides compelling evidence that use of either opposed trade mark in Australia would cause significant deception or confusion.

25.   Mr Fitzpatrick relied on many of the same leading cases as Mr Catterns but argued that, aside from the visible differences, the proof of the pudding was that there had been, in the many places where there was coexistence, no confusion.  As to the differences, he noted the obvious word element CARTELO.  Ultimately, he argued that the absence of any evidence of confusion where marks have been in concurrent use was of considerable importance[2]. 

[2] See Solavoid Trade Mark [1977] RPC 1 at 29, Alex Pirie & Sons Ltd’s Appn (1933) 50 RPC 147 at 160, Lancer Trade Mark [1987] RPC 303, Otari Electric Co. Ltd. v Atari Inc (1984) AIPC 93-204, Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] AIPC 91-847 at [81], [88].

26.   It was apparent from the evidence, he argued, that the applicant has extensively used the opposed trade marks in a wide range of overseas countries since 1947, including Japan, Singapore, China, Hong Kong, Thailand and Malaysia.  He argued strongly that the extent, and relevance, of coexistence in Singapore cannot be overvalued.  The applicant’s goods sold by reference to the opposed trade marks were available in over 4,000 retail outlets throughout the world.  The applicant had achieved significant and impressive global sales and promotional figures, as the opponent has effectively conceded.  The true test, he said, is in the market place and the absence of any convincing[3] evidence of confusion was telling.

[3] Mr Fitzpatrick was rightly critical of certain claims made in the Starckjohann declaration.  Para 38 of this appears to be the only recorded instance of confusion but Mr Starckjohann does not precisely describe the trade mark that was the cause of the mistaken belief.  He mentions neither the word CROCODILE nor CARTELO as being part of “the crocodile mark on the left-hand breast” of the offending shirt.  The assertions he subsequently makes in para 39 are about other matters.  These appear to me to be irrelevant and are unconvincing.

27.   From this, Mr Fitzpatrick would have it that I cannot be satisfied that there is a reasonable likelihood of confusion.  Were that so, this decision would be much simpler.  Regrettably, I think Mr Fitzpatrick has misconstrued the situation. 

28. The evidence, so far as I can see, does not show that the applicant’s and opponent’s trade marks coexist side by side overseas in the ordinary circumstances of the trade in clothing. The applicant’s goods are apparently sold through some outlets, the opponent’s through others. Those outlets may be, as the evidence shows, on the same floors of what are perhaps quite large shopping malls, but it would be quite easy to understand how the nature of those stores may lean heavily against confusion. Clearly, at a practical level, the CARTELO and device product sold by the applicant in its own stores, which are not the stores of the opponent, will not necessarily be mistaken for the opponent’s product. That, however, is not the question that faces me in terms of s 44(1). For that issue, as correctly appreciated, Mr Catterns reiterated the relevance of proposition (v) in the analysis of French J, above. I am required to consider what will happen if the CARTELO and device trade mark is used in an ordinary department store, such as K-MART or BIG W, where it may potentially be stocked with, or instead of, similar products bearing the opponent’s trade marks. Those products may well be low-cost items. For all that they may be tried on before purchase, a circumstance relevant to the comparison, proper allowance must still be made for imperfect recollection.

29.   If one accepts that a general or common standard could be drawn from the diverse circumstances in the cases Mr Fitzpatrick traversed, the matter might well be approaching balance.  Mr Catterns, for his part, argued that the line had been crossed and that refusal was mandated.  Unfortunately, deliberations in relation to disparate trade marks like VAPORUB, SPORTS CAFÉ and BUBBLE UP, while helpful in defining the competing principles, do not resolve this matter.  I am required, in approaching this issue, to decide if a significant number of ordinary consumers, on encountering the CARTELO and device trade mark, would be deceived or confused through their imperfect recollection of the opponent’s trade marks[4].  The key to that question must be in what, if anything, those consumers would make of the noticeable but (putting the applicant’s case at its highest) not prominent element of the crocodile.

[4] Putting aside for the moment any questions of notoriety referred to by Wilcox J in Woolworths Ltd v Registrar of Trade Marks (1998) 42 IPR 615.

30.   Mr Catterns’s submissions were dismissive of the evidence in the Howe and Kemp declarations, on which Mr Fitzpatrick relied to show the commonality of crocodile devices used, or at least concurrently registered, by other traders in Australia.  Mr Fitzpatrick relied on this to establish that the device of a crocodile was analogous to the word “vogue” considered by Burchett J in Conde Nast Publications Pty Ltd v Taylor with regard to his earlier decision in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd[5].  His Honour stated:

“Eurovogue”, though containing “Vogue” as a syllable, does so in a new word with a new meaning.  It is not like POLO CLUB, where the original meaning of “Polo” is retained and is dominant, so that a product labelled with the two words may be taken as merely the “club” version of the Polo product … Vogue is altogether too indefinite a word, in this context, to have that sort of distinctive impact. Its meaning is particularly vague when it is combined with “Euro”, since a pan-European vogue would be very hard to envisage.

[5] Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505 and Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 42 FCR 227.

31.   On balance, I think Mr Catterns was correct.  The various usages made by others tend to suggest that ordinary consumers might well expect that the crocodile element of the CARTELO and device trade mark is there to serve a trade mark function.  The question does not allow of a definitive analysis, but the device looks to me like it is there because it is doing the job of a trade mark.  It is superimposed on the word in question, making it difficult to overlook.  It appears to me to be reasonably unlike other crocodile devices used or registered by third parties and shown in the evidence.  It does not, I accept, appear as a particularly noteworthy element of the trade mark, smaller in overall size than the word CARTELO, and rendered, moreover, in a blurred and somewhat nebulous fashion.  Left to my own assessment of the likely reaction of consumers, while I am satisfied that the trade marks are deceptively similar, I can appreciate that others might well retain some residual doubt that the device is an essential feature of the applicant’s trade mark.  But, ultimately, as I have said, I think it would be recalled by most observers as being the same (strictly, mirror imaged) aggressive, open-mouthed reptile as that depicted in the opponent’s trade marks. 

32.   “Essential feature” is an artifact of the language of a number of judges in relation to deceptive similarity.  Or, as the Full Court of the Federal Court put it in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1, one of “the complexities brought forth by many years of decisional authority”. One issue on appeal was the rightness of the finding that, at trial, the judge had held that CRAZY JOHN was an essential feature of the registered trade mark, and thus significant in deciding that it and CRAZY RON’S were deceptively similar:

33.   The court noted that

First, although everything depends on the particular circumstances of the case, some caution needs to be exercised before characterising words in a complex composite registered trade mark as an “essential feature” of that mark in assessing the question of deceptive similarity.  If such a characterisation is made too readily, it effectively converts a composite mark into something quite different. 

34.   I have therefore approached the present matter, in which I am invited to make a similar characterization about the CARTELO and device trade mark, with due caution.

35.   The opponent relied on evidence that it argues is relevant to this matter.  Where Mr Catterns differed from Mr Fizpatrick is in the weight that I can properly give to the survey, the results of which are set out in the Bednall declaration.  Dr Bednall is an Associate Professor in Marketing at the Bowater School of Management and Marketing, Deakin University and a director of Heatherdale Consulting Group; and a psychologist and market researcher.  He has at least 20 years experience in market or consumer research.  He was commissioned as an independent expert to design and undertake a market survey to ascertain consumer perceptions about the opponent’s “logos”, as he puts it in the evidence, those the subject of the opposed applications and other clothing brands. 

36.   Dr Bednall used the services of Roy Morgan Research, a widely known market research organization, to carry out the interviews on which the report is based.  The methodology employed by Dr Bednall, the questionnaire used and the briefing instructions given to interviewers are set out in Dr Bednall’s report, exhibit DBB-2.

37.   The survey was conducted over the internet in December 2005 and January 2006 using Roy Morgan Research’s Single Source survey panel.  The survey was made available for members of the panel in Melbourne, Sydney and Brisbane to complete until the relevant gender and age quotas specified by Dr Bednall had been filled – equal numbers of males and females in two age brackets, under and over 40.  In total, there were 684 survey respondents.

38.   In view of the way the survey was constructed, I am satisfied that interviewer bias was avoided.  Conversely, as Mr Fitzpatrick argued, the survey is presumably only as well-framed as the panel of individuals selected by Ray Morgan Research.  And, as he noted, there is no evidence from the Roy Morgan group to indicate how this panel was selected from its broader internet panel.

39.   Each survey respondent was shown what are described as “one logo from each of two blocks” – block A and block B.  Using the terminology of Dr Bednall’s report, it is shown that the order in which the logos were presented was alternated to eliminate bias from order effects.  Block A consisted of either “the well-known penguin device used by Bonds” or a made-up and apparently unused snake logo.  Block B consisted of seven devices, described in the table below.  For each, the survey respondent was asked a series of questions, including:

(a)In this picture, you will see a logo.  If you saw a piece of clothing with a logo like this, would this logo identify any particular company or brand to you?

(b)Those that answered that question “yes”, were then asked: Which company or brand would you identify this logo with?

(c)Another question asked the survey respondent to identify the country of origin of the brand.

(d)A further question explored how long the logo had identified the company or brand identified.

40.   A device from Block A was shown as a control mechanism – to identify if survey respondents were guessing or being influenced in their answers by factors other than the image shown.  From these results, Dr Bednall concluded that consumer responses were not based on guessing a familiar brand.  Most consumers, I accept, did not identify any brand or company if they were uncertain about the logo shown.

41.   Table 9 in exhibit DHBB-2 summarised familiarity with the logos in Block B.  In this, Dr Bednall refers to the opponent’s trade marks as “Lacoste crocodile logo (tail to the left)”.
Table 9 –Summary of survey results – familiarity with logos

Crocodile International crocodile logo (tail to left)	Crocodile International crocodile logo (tail to right)	Crocodile International crocodile logo with the word CROCODILE (tail to the right	Crocodile International  crocodile logo with the word CARTELO (tail to the right)	Lacoste crocodile logo with the word LACOSTE (tail to the left)	Lacoste crocodile logo (tail to the left)	Lacoste crocodile logo (tail to the right)	Total
Yes	58.8%	58.3%	48.5%	28.1%	69.2%	74.5%	64.6%	57.6%
No	23.7%	31.3%	42.3%	60.4%	25.0%	17.3%	19.8%	31.3%
Don’t know	17.5%	10.4%	9.3%	11.5%	5.8%	8.2%	15.6%	11.1%
n=	97	96	97	96	104	98	96	684

42.   The percentage figures given are percentages of “n”, the number of respondents given for each column.  Thus, taking the first column for example, 97 people were presented with a crocodile device identical to that appearing as part of the CROCODILE and device trade mark.  Of those 97, 58.8%, or 57, indicated that the presence of the logo on the clothing would identify a particular brand or company. 

43.   Those that said “yes” to that question were then asked:  “Which company or brand would you identify this logo with?”  The responses to this question are reproduced below.

Table 10 – Summary of survey results – company or brand identified

R1 Crocodile International crocodile logo (tail to the left)	R2 Crocodile International crocodile logo (tail to the right)	R3 Crocodile International crocodile logo with the word CROCODILE (tail to the right)	R4 Crocodile International crocodile logo with the word CARTELO (tail to the right)	R5 Lacoste crocodile logo with the word LACOSTE (tail to the left)	R6 Lacoste crocodile logo (tail to the left)	R7 Lacoste crocodile logo (tail to the right)	Total
Bonds	1.0%	0.0%	0.0%	0.0%	0.0%	0.0%	0.0%	0.1%
Polo	0.0%	0.0%	0.0%	0.0%	0.0%	0.0%	1.0%	0.1%
Polo Shirts	3.1%	3.1%	1.0%	0.0%	1.9%	5.1%	4.2%	2.6%
Lacoste	32.0%	34.4%	27.8%	17.7%	58.7%	55.1%	44.8%	38.9%
Crocodile	4.1%	1.0%	8.2%	2.1%	0.0%	5.1%	1.0%	3.1%
Alligator	2.1%	1.0%	0.0%	0.0%	0.0%	1.0%	4.2%	1.2%
Cartelo	0.0%	0.0%	0.0%	3.1%	0.0%	0.0%	0.0%	0.4%
Lacrosse	1.0%	4.2%	1.0%	0.0%	0.0%	3.1%	3.1%	1.8%
Le Coq Sportif	1.0%	1.0%	1.0%	0.0%	0.0%	0.0%	0.0%	0.4%
IZOD	1.0%	1.0%	1.0%	0.0%	0.0%	0.0%	0.0%	0.4%
French brand	0.0%	1.0%	2.1%	0.0%	1.0%	1.0%	1.0%	0.9%
Golf shirts	0.0%	1.0%	0.0%	0.0%	1.0%	0.0%	1.0%	0.4%
Sports clothing	1.0%	1.0%	0.0%	0.0%	1.0%	1.0%	1.0%	0.7%
Clothing (unspecified)	0.0%	0.0%	1.0%	0.0%	1.0%	1.0%	0.0%	0.4%
Shirts (unspecified)	1.0%	0.0%	0.0%	1.0%	1.9%	0.0%	0.0%	0.6%
Other	5.2%	5.2%	4.1%	4.2%	0.0%	1.0%	0.0%	2.8%
Can't Say	9.3%	8.3%	2.1%	0.0%	3.8%	3.1%	3.1%	4.2%
Not asked this question	41.2%	41.7%	51.5%	71.9%	30.8%	25.5%	35.4%	42.4%
n =	97	96	97	96	104	98	96	684

44.   The results demonstrate that, overall, the most common response to any of the logos was “Lacoste”, with a few other people using the similar-sounding name “Lacrosse”.  The highest level of identification of “Lacoste” was for the opponent’s crocodile device with the word LACOSTE.  Significantly, as Mr Fitzpatrick noted, the lowest level of recognition was for the CARTELO and device trade mark, at under 18%. 

45.   Mr Fizpatrick, at the hearing, also raised some questions as to the methodology.  The essence of these went to the process by which those who were surveyed, drawn initially from 55,000 people, came to be the 684 who were ultimately surveyed.  I do not suggest for a moment that there was anything underhand in this process.  However, the opponent has had absolute control of the methodology here and, the unresolved detail is potentially worrying.  There is, for instance, no statement by Dr Bednall that the numbers surveyed are likely to be statistically significant.  Since the process was entirely controlled by the opponent, who has not, from the applicant’s submissions, involved the applicant in the survey design, I am not overly inclined to give the opponent the benefit of the doubt.  However, that doubt is in any case resolved against the opponent, as I will explain below.

46.   Mr Fitzpatrick went on to argue that, as regards the applicant’s CARTELO and device trade mark, the results were equivocal.  Per column R4 above, he noted that more than 70% of respondents did not associate this trade mark with the opponent and most of respondents failed to identify it with any particular company or brand. 

47.   Significantly, I note that the CARTELO and device trade mark is more likely to be identified as “Lacoste” (18%) than as the “Cartelo” brand (3%).  Since the trade mark in question would ordinarily lend itself to the latter answer, not the former, I take this result as showing that those involved held a strong view along lines I would paraphrase as “This trade mark, despite having the word CARTELO in it, indicates a connection with a trade mark that I not only recognise, but that I associate with (not to put too fine a point on it) the LACOSTE people”.  But another way of looking at the same data is that over 70% of the 96 people presented with the CARTELO and device trade mark did not connect it with any “company or brand” at all.  Thus, 71.9% of them, or 69, were excluded from any further analysis, leaving an active survey to be made of 27 respondents.   For a survey of this kind, I am asked by the opponent to extrapolate a great deal from the views of the surviving, and clearly LACOSTE-aware, participants.  I feel it would be unsafe to do so.

48.   I return, therefore, to first principles.  I am required to approach this matter and deal with the jury question, “the habits and observation of men considered in the mass”[6] as best I can. To the average Australian, the device in the applicant’s trade mark is a crocodile. Or, to those few who might recognize it as an alligator, so too is the reptile in any one of the opponent’s trade marks. On first principles, the entire of the opponent’s crocodile device appears to make up a significant-enough element of the applicant’s trade mark that I am satisfied that an equally significant level of confusion will ensue. That is not to say that I expect confusion or outright deception to be the norm. The law requires only that there be a reasonable likelihood. Here, the likelihood of deception or confusion is sufficiently tangible and I am satisfied that the ground of opposition is established so far as s 44(1) goes.

[6] Australian Woollen Mills v FS Walton 58 CLR 641

49. Mr Fitzpatrick argued the case in favour of the application of s 44(3) in such a situation. That provision reads:

(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.

50.   He argued, quite rightly in my view, for a broad application of that provision.  He noted the words of Burchett J[7] in relation to the predecessor legislation, my emphasis added:

In particular, in my opinion, it is time to recognise the phrase “other special circumstances” in section 34 (to which I shall refer), or any similar expression in a comparable provision (cf s 44(3)(b) of the new Act), is apt to include, in an appropriate case, circumstances involving the use of a mark overseas.

[7] Campomar Sociedad Limitada v Nike International Ltd (1998) 41 IPR 252 at 255

51.   The High Court on appeal in Campomar Sociedad Limitada v Nike International Ltd (2000) 46 IPR 481 referred to the decision of Burchett J. Overturning the majority of the Full Court of the Federal Court, the High Court commented favourably on Burchett J’s dissenting judgment and stated at page 501:

Section 34 was addressed to honest concurrent use.  The matters of principle of which Burchett J spoke appear to be the need to recognise as points going to the exercise of discretion the special circumstances that arise from “the collision of marks through the invasive effect of brand extension” across national boundaries in an age of expansion in international commerce.

52.   Mr Fitzpatrick noted that the textbooks Trade Mark Law in Australia, 2000, Elkington, Hall & Kell and Shanahan’s Australian Law of Trade Marks and Passing Off, third edition, argue for a broader effect to be given to the words now present in s 44(3)(b) than was given to “other special circumstances” under the previous legislation. Given the above, that issue is probably a moot point.

53.   Put shortly, however, I am not remotely satisfied that the registration of this trade mark, unused in Australia and remaining an unknown to the great bulk of the population, is made “proper” by the fact that there are, overseas, various pragmatic arrangements, as well as an inordinate amount of litigation, overlaid by a restricted and uneasy of coexistence.   I see nothing as yet that would suggest it is proper to extend concurrent registration to this country. 

54.   I refuse to register the CARTELO and device trade mark, the subject of application 1017333.

Application 1005106 - CROCODILE and device

55.   It follows from my decision in relation to application 1017333 that I am also satisfied by the opponent’s case in relation to the remaining application.  The device in the opponent’s trade marks would be identified by ordinary Australians as a crocodile.  It is, moreover, a crocodile shown in the same general position as the reptile in the CROCODILE and device trade mark (albeit mirror-imaged).  Ordinary imperfect recollection would leave a significant number of consumers with the quite reasonable view that the CROCODILE and device trade mark was the (imperfectly recalled) crocodile device of the opponent.  I believe, too, that the evidence in the Bednall declaration would safely bear some weight in reinforcing this conclusion, though I stress that I have approached the matter in terms of first principles alone.

56. I find the CROCODILE and device trade mark the subject of application 1005106 to be deceptively similar to the opponent’s trade marks. And, for similar reasons to those I have previously set out, I find the application of s 44(3)(b) would not be justified. I refuse to register the trade mark.

Costs

57.   The opponent is entitled to its costs in both matters.  Neither party made submissions on the detail of this and I direct that the usual 20% factor be applied to the relevant items in the second application in accordance with the practice set out in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd, (2001) 53 IPR 591.

Terry Williams

Hearing Officer

Trade Marks Hearings

31 October 2008