LBJ Trademarks LLC v Bronson Olsen and Jun Min Zhou

[2023] ATMO 112

TRADE MARKS ACT 1995

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

Re:Opposition by LBJ Trademarks LLC to registration of trade mark application number 2153855 (class 25) – Les Brons - in the name of Bronson Olsen and Jun Min Zhou

Delegate:

Debrett Lyons

Representation:

Opponent: Davies Collison Cave Pty Ltd

Applicant: unrepresented

Decision:

2023 ATMO 112

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 44 considered – ground established – trade mark refused registration

Background

1. This is a decision on the opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] (‘Act’) by LBJ Trademarks LLC (‘Opponent’) to registration of the following trade mark:

   Trade Mark Number:                    2153855               (‘Application’)

   Trade Mark:  Les Brons          (‘Trade Mark’)

   Applicants:  Bronson Olsen; Jun Min Zhou (‘Applicants’)

   Filing Date:  5 February 2021

   Goods:                Class 25: Apparel (clothing, footwear, headgear)

   [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).

2. The Trade Mark was examined and advertised as accepted for possible registration on 21 April 2021.

3. The Opponent filed a Notice of Intention to Oppose on 4 August 2021, followed by a Statement of Grounds and Particulars (‘SGP’) on 25 August 2021.  A Notice of Intention to Defend was filed by the Applicants on 25 October 2021.

4. On 27 January 2022, the Opponent filed its evidence in support of the opposition, consisting of a declaration of Michele Campbell, the Chief Operating Officer of the Opponent, together with Exhibits 1 – 8 inclusive (‘Campbell’).  The Applicant did not file evidence in answer.  The parties were given the opportunity to be heard and the Opponent requested a hearing, first in person and later by written submissions, those submissions then filed on 28 March 2023.   The Applicant did not file any submissions.  This matter has been allocated to me to decide as a delegate of the Registrar of Trade Marks based on the aforementioned material.

   Grounds, Onus and Relevant Date

5. In the SGP, the Opponent particularised grounds of opposition under ss 58, 42(b), 44, and 60.  Except for s 58, those grounds were pressed and the Opponent bears the onus of establishing at least one ground[2] on the basis of the civil standard of proof, being the balance of probabilities.[3]

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

   [3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

6. The date at which the rights of the parties are to be determined is 5 February 2021 (‘Relevant Date’), being both the filing and, for the purposes of ss 44 and 60, the priority date of the Trade Mark.

   Opponent’s Evidence

7. Campbell provides evidence that the Opponent is the owner of the intellectual property rights, including the Trade Mark, of an individual, LeBron Raymone James Sr. (‘LeBron James’), a member of the Los Angeles Lakers National Basketball Association ("NBA") team, whose highly successful and highly visible sporting career has included representation of the USA at three Olympic Games (2004 Athens, 2008 Beijing and 2012 London) and, at a professional level, four NBA Championship titles (2012, 2013, 2016 and 2020), plus Most Valuable Player awards in 2006, 2008, 2009, 2010, 2012, 2013, 2016, 2018 and 2020.  Over his career, LeBron James has been ranked by Forbes magazine as one of the world's most influential athletes and listed by Time as one of the 100 most influential people in the world.  Whatever parameters those magazines set themselves in making those claims put to one side, Campbell makes it abundantly clear that LeBron James is a well-known sportsman both in and outside the USA.

8. The Opponent is the owner of Australian trade mark registration number 1081347 (IR No.863127) (‘Opponent’s Registration’) for:

   Trade Mark:   LEBRON  (‘Opponent’s Mark’)

   Priority Date:                  18 February 2005

   Relevant Goods:             Class 25: Clothing, footwear, headgear (‘Relevant Goods’)

9. As stated, there was no evidence or submissions from the Applicants and so nothing is known of them for the purposes of these proceedings.

   Discussion

   Section 44

10. Section 44 relevantly provides:

    44  Identical etc. trade marks

    (1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

    (a) the applicant’s trade mark is substantially identical with, or deceptively similar to:

    (i) a trade mark registered by another person in respect of similar goods or closely related services; or

    (ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

    (b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

11. In the SGP, the Opponent relies on the Opponent’s Registration which has the earlier priority date.  The Opponent’s Registration covers goods in classes 9, 14, 18, 25 and 28 but the Relevant Goods are all that need concern me since they overlap entirely with those of the Trade Mark and are therefore ‘similar goods’ for the purposes of s 14(1).

12. Clearly, the Trade Mark is not substantially identical to the Opponent’s Mark and so the remaining question for the purposes of s 44 is whether the compared marks are ‘deceptively similar’, an expression defined in s 10 as follows:

    For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

13. The test for determining deceptively similarity is whether there is a real risk that consumers will have ‘cause to wonder’ whether the branded goods come from the same source.[4]  It is sufficient in that respect if the minds of the purchasing public are simply ‘perplexed’ or ‘mixed up’.[5]  The Full Court outlined the correct approach in the following terms:

    [T]he threshold for confusion is not high. Courts must compare the marks visually and aurally in the context of how the marks are used, and decide if there is a reasonable probability that the ordinary person to whom the marks are targeted, entertains a reasonable doubt as to the relationship between the marks.[6]

    [4]  Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 per Kitto J at 594–5; Registrar of Trade Marks v Woolworths (1999) 93 FCR 365 per French J at [43].

    [5] Pinoneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 423 as cited by Black CJ in Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107 at [39]

    [6] Australian Postal Corp v Digital Post Australia (2013) 308 ALR 1 per North, Middleton & Barker JJ at [70].

14. The assessment does not involve a side-by-side comparison and is guided instead by a ‘general recollection or impression’[7] – that is, I must consider the impression of a consumer with a so-called ‘imperfect recollection’ of the Opponent’s Mark who encounters use or notional use of the Trade Mark.[8]   The High Court has emphasised that ‘[i]t is important to consider what has been described as the “idea of the mark,” that is the idea which the mark will naturally suggest to the mind of one who sees it’.[9]  Accordingly, for present purposes, the aural impression of a mark is a relevant consideration[10].

    [7] Jafferjee v Scarlett (1937) 75 CLR at 121-22 (Latham CJ, Dixon and McTiernan JJ).

    [8] Crazy Ron’s Communications v Mobileworld Communications (2004) 209 ALR 1 at [77] (Moore, Sackville and Emmett JJ).

    [9] Jafferjee v. Scarlett (1937) 57 CLR 115 per Latham CJ, Dixon and McTiernan JJ at 121; see also Telstra Corporation Limited v Phone Directories Company Australia Pty Ltd (2015) 237 FCR 388 per Besanko, Jagot and Edelman JJ at [209]-[219]; Polo/Laurent Company LP v Continental Shelf 128 Ltd (2019) 150 IPR 148 at [39]-[42] (Hearing Officer Thompson).

    [10] Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 81 IPR 354 per Perram J at [95].

15. I am mindful that there are similarities and differences between the marks which are important to a side-by-side comparison (and to whether or not they are substantially identical) but the impressionistic assessment required for deceptive similarity takes account of how the marks might be used and in that respect the Opponent’s Mark includes within the monopoly conferred by its registration, the different ways LEBRON can be written – that  includes ‘LeBron’, the correct spelling of LeBron James’s name. 

16. It is the Opponent’s submission that ‘Les Brons and LEBRON are essentially pronounced the same way. They are aurally almost identical.’  That may not always be so.  For example, ‘Les’, is a common contraction of the male forename, ‘Leslie’.  Viewed that way, the Trade Mark would be perceived as a given name and a family name where, in all probability, the latter would be pronounced, ‘bronze’.   On the other hand, I find that a significant portion of the public – seeing the Trade Mark used for clothing ­­– is likely to interpret it as having some meaning in French, in which case both ‘s’s would be silent or virtually silent and the Trade Mark pronounced essentially the same as the Opponent’s Mark as claimed.

17. Bearing in mind the following words of Justice French in Registrar of Trade Marks v Woolworths, I find that the Trade Mark is deceptively similar to the Opponent’s Mark:

    In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question.[11]

    [11] [1999] FCA 1020, [40].

18. Accordingly, the s 44 ground of opposition is successful.

    Decision

19. I find that the Opponent has established a ground of opposition it nominated in the SGP and so I refuse to register application number 2153855.

20. The Opponent has requested an award of costs.  As costs generally follow the event, I award costs against the Applicants under s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Debrett Lyons

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    10 August 2023