Levi Strauss & Co v Vivat Holdings Plc

[2000] ATMO 68

TRADE MARKS ACT 1995

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

Re:Opposition by Levi Strauss & Co to registration of trade mark applications 645903 and 645906(25) - Chevron Device- filed in the name of Vivat Holdings PLC.

Background

These matters arise out of the filing by Vivat Holdings PLC (Vivat) on 8 December 1994 of applications 645903 and 645906 in Class 25 to register the trade marks appearing below in respect of the goods:

Articles of clothing; shirts, jumpers, skirts, blouses, coats, jackets, wind resistant jackets, tracksuits, slacks, trousers, shorts, overalls, dungarees, sweaters, T-shirts, sweatshirts, blousons, jeans, belts and braces, ties, scarves and gloves, hats, caps, berets, headbands, hoods; articles of footwear; shoes, boots, sandals, slippers, trainers, sports shoes, hosiery, tights, socks and stockings

 

645903

 

645906

Following examination of the applications, a delegate of the Registrar accepted them for registration on 13 May 1997 and the applications were advertised as such on 29 May 1997 in the Australian Official Journal of Trade Marks.

On 24 June 1997, within the time allowed to do so, Levi Strauss & Co, (Levi) lodged Notices of Opposition to the registration of the trade marks.

Evidence

The following table is a summary of the declarations filed as evidence concerning these oppositions.

Declarant	Position in Company	Short form	Made	Exhibits
Wai Zee	Levi Associate General Counsel	Zee declaration	20 Jul 1998	WZ-1 to Wz-13
Alan Jeffrey Richards	Vivat Company Secretary	Richards declaration	19 Feb 1999	A to K
Ann Jean Beckenham	Senior Trade Mark Paralegal	Beckenham declaration	26 Nov 1999	AB-1 to AB4

The Zee declaration is evidence in support of the opposition, filed 23 July 1998. The Richards declaration is evidence in answer, filed 2 March 1999 and the Beckenham declaration is evidence in reply, filed 30 November 1999.

The Zee declaration details the history of Levi.  This history has been the subject of judicial comment by Lockhart J, in Levi Strauss & Co and Another v Wingate Marketing Pty Ltd and Another (1993) 26 IPR 215 at 217, who summarised it thus.

Since 1856 Levi Strauss and its predecessors in business have carried on business as designers, manufacturers and marketers of clothing, particularly denim jeans. Levi Strauss was founded by Mr Levi Strauss who was born in Bavaria in 1829 and migrated to the United States in 1847. From small beginnings, Mr Strauss’s firm subsequently grew into the present Levi Strauss empire. It has become a world wide manufacturer and seller of clothing, particularly of denim jeans. Levi Strauss currently employs approximately 32, 000 people in over 100 facilities in various countries including the United States, Canada, Europe, Japan, Latin America and Australia. Its worldwide sales of denim jeans in 1991 amounted to 270.4 million units (with 72.9 million units sold outside the United States) at a sales value to Levi Strauss of $US4.9 billion (with $US1.9 billion sales value being outside the United States including $U5385.4 million sales value in the Asian-Pacific region including Australia).

Levi Strauss has sold jeans in Australia marked with its trade marks since about the early 1960s. Levi’s jeans have been manufactured in Australia since 1973.

For many years Levi Strauss has had a comprehensive world wide system of trade mark registrations. Since 1856 Levi Strauss has designed, manufactured and marketed clothing, in particular trousers or jeans, under the name “Levi Strauss &Co”. Levi Strauss has also used the names “Levi’s” and “Levi Strauss” in relation to its business and on its products, particularly with respect to the advertising and promotion of Levi’s jeans. The trade mark LEVI’S was first registered by Levi Strauss as a trade mark in the United States in 1928. LEVI STRAUSS & CO is also registered as a trade mark by Levi Strauss.

From about 1873 until the Second World War, Levi’s jeans featured a distinctive arcuate stitching pattern on the back pockets. The arcuate was first registered by Levi Strauss as a trade mark in the United States in 1943 and is thought to be the oldest apparel trade mark in the United States which remains in use. During the Second World War, in order to conserve materials, the arcuate stitching pattern was omitted from the back pockets of Levi’s jeans and the arcuate was painted on the back pockets of most Levi’s jeans. From about 1947 Levi Strauss resumed stitching the arcuate stitching pattern on the back pockets of Levi’s jeans and that practice has continued to the present.

The Zee declaration specifies two Australian registrations that feature only the arcuate trade mark.  These are:

Reg Number:   302847
Owner:  Levi Strauss & Co
Priority Date:  07/12/1976
Goods:           Pants for men, women and children
Trade Mark:   

Reg Number:   584819
Owner:  Levi Strauss & Co
Priority Date:  20/08/1992

Goods:Jeans and other pants including shorts; t-shirts, vests, shirts, jackets and other tops

Trade Mark:   

I may state here that I take the above trade mark to be the two parallel curved lines which meet in the middle of the device.  The surrounding pocket (or shield) shaped lines are for illustrative purposes to show how the trade marks are used.

There are a number of examples of advertising and promotional materials appended to the Zee declaration that show the arcuate trade mark in use.

The Richards declaration states the declarant's awareness of the various trade marks used by major manufacturers of jeans wear and in particular that of Levi.  This, the declarant states, is as the result of his eighteen years of experience as company secretary of Vivat. 

Vivat is the owner of the fictitious name LEE COOPER which it uses as a trade mark in relation to various items of clothing and which is licensed clothing companies around the world.   In Australia, Vivat, among other trade marks, owns the trade mark:

Reg Number:   437428
Owner:  Vivat Holdings Limited
Priority Date:  19 July 1985
Goods:           Shirts, skirts, blouses, slacks, trousers, shorts, dungarees, jeans and jackets.
Trade Mark:   

Levi unsuccessfully opposed registration of this trade mark.  I note that the registration appears to be owned by a person other than Vivat Holdings PLC, the opponent.

The Richard declaration appends as Exhibit D an illustration of a pair of jeans, which carries one of the opposed trade marks.  The trade mark appears on the back pocket of the jeans immediately below a patch, sewn into the jeans, which carries the name LEE COOPER.

Mr Richards states that in creating the opposed trade marks his company endeavoured to achieve trademarks which would be perceived as being distinctive relative to the trade marks which are used and registered by other clothing manufacturers, including Levi.  Examples of stitch patterns used and registered as trade marks by manufacturers other than Vivat and Levi are exhibited as E and F to the Richards declaration; and, photographs of pocket stitch trade marks are appended as Exhibit G to the declaration. 

The Richards declaration then lists and discusses the results of the registration processes of these trade marks in various countries (seventy-six) throughout the world.  I will state now that I am going to disregard this evidence for the following reasons.  I consider that, as a delegate of the Registrar of Trade Marks, I am bound to exercise that delegation in the light of the Trade Marks Act 1995, the decisions of the Australian Courts and what I see as being Australian market conditions and the perceptions of ordinary Australians.  Further, I am unaware of the particular laws of other countries, the ways in which their courts interpret them, or market conditions and public perceptions within those other countries.  However, where evidence demonstrates that market conditions and registry systems are very similar to those in Australia, this may have some persuasive force in regard to the registration process: Burger King Corporation v Registrar of Trade Marks (1973) 1A IPR 504.  In this instance, evidence, which establishes that the laws and trading conditions in these overseas countries are similar to those in Australia, has not been filed.

Mr Richards also states that the arcuate trade mark of Levi has such a strong reputation that the great public familiarity with the trade mark would decrease the likelihood of deception and confusion.

The Beckenham declaration appends various records from the database of the Australian Trade Marks Office showing prior applications and registrations for trade marks that are stitching on pockets.  I am not certain if the evidence is to show that such stitching is in frequent use as a trade mark, or that such trade marks are difficult to register, or to show that the arcuate trade mark is unique, or if it is to contrast with the Richards declaration.  I must state now that I have no difficulty with the concept of some stitching on pockets, or in cloth generally, functioning as a trade mark if it is capable of distinguishing the goods: Winterbottom Book Cloth Co Ltd's Appn (1925) 42 RPC 450. I also believe that comparisons with what may or may not have been registered in the past are of limited use since what I must here consider is the similarity of the two trade marks before me.

The submissions

This matter was the subject of a hearing before me as a delegate of the Registrar of Trade Marks in Sydney.  Mr Michael Hall of Counsel, instructed by Baker & McKenzie, solicitors represented Levi.  Ms Angela Bowne, also of Counsel, instructed by Griffith Hack, patent and trade mark attorneys, represented Vivat.

Mr Hall opened his submissions by observing that Levi had opposed registration of the trade marks on various grounds in the Notices of Opposition but formally abandoned those which did not rely on the proposition that the Levi arcuate trade mark and the opposed trade marks are deceptively similar.  It follows that because of this alleged similarity that objections should exist under section 44.  And that, because of the reputation of the Levi arcuate trade mark, the arcuate trade mark carries a connotation which, because of the similarity in the trade marks, would tend to confuse – therefore section 43 applies.  Finally, because of the reputation and similarity of the trade marks, section 60 is relevant.

Mr Hall drew my attention to various Levi registrations of the arcuate device, which include those two detailed in the Zee declaration.  He mostly relied, in his submissions, on these two.  He went on to discuss the case law concerning substantial identity and deceptive similarity; I will return to this under the heading ‘discussion’, below, and will not dwell on it here.  Mr Hall gave a demonstration which he says shows the similarities which he alleges are contained in the trade marks by showing me one of the trade marks on a piece of A4 paper.  He then superimposed over it a piece of A4 transparent plastic carrying the image of the other trade mark.  Wherefrom, Mr Hall made a very detailed comparison of the trade marks and drew my attention to the so-called doctrine of imperfect recollection.  He then observed that if the goods in question were to be ordered by reference to a description of the trade marks, the descriptions of the trade marks concerned would be very similar.  Mr Hall submitted that the goods bearing the trade marks would not always be merchandised through stores where detailed examination of the goods and leisurely shopping is possible.  Frequently, the goods are, says Mr Hall, going to be oriented so that the trade marks are not on a plane, or in plain view and showed video evidence made by Levi (for other proceedings) which shows the effects of the distortion of the arcuate trade mark when worn by various models.  He drew my attention to an exhibit to the evidence which, he said, shows this distortion.

Mr Hall concluded his submissions by bringing to my attention evidence of the Australian and international reputation of the arcuate trade mark in the form of a survey, which is a confidential exhibit to the evidence.  Suffice to say that this evidence shows that the arcuate device is very well known as a trade mark of Levi and its reputation is the matter of judicial comment in Wingate, supra.

Ms Bowne opened her submissions by stating that Vivat has no argument that the Strauss trade marks have an extensive reputation.  However, she stressed that the Vivat trade mark is, conceptually quite different from the arcuate trade mark.  Ms Bowne likened the Vivat trade marks to elegant representations of a seagull and said that the trade marks would be described in differing ways.

Counsel suggested that the superimposition of the trade marks by Mr Hall was not in accordance with the tests set out in the authorities which stress that the trade marks should be compared side by side.  Ms Bowne further stated that, to get the 'best fit' in his demonstration, Mr Hall had slanted the trade marks; in reality what I am to consider is the trade marks as applied for.  The ways that the trade marks could be oriented while worn is not, Ms Bowne submitted, relevant since it is not a commercial use - the goods are not then 'in trade'.

Similarly, Ms Bowne argued that the evidence cited by Mr Hall as showing how the distortion of the arcuate trade mark under normal circumstances left it similar to the Vivat trade marks was the result of inaccurate drafting of the arcuate trade mark by an artist or artists.

The distortions which Mr Hall had said would occur to the arcuate trade mark would also, of course, happen to the Vivat trade marks, said Ms Bowne, and leave them as different then from the arcuate trade mark as they are now. 

Ms Bowne also drew my attention to the case-law surrounding the issue of deceptive similarity and submitted that, when this law is applied to the trade marks in question, they should not be found to be deceptively similar.

Discussion

I will address these reasons in terms of section 43, 44 and 60 in the order in which they occur in the Act.

Section 43

Section 43 of the Act allows:

Trade mark likely to deceive or cause confusion

43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

In Down To Earth (Victoria) Co-Operative Society Ltd v Schmidt (1998) 41 IPR 632, Hearing Officer Forno said:

“Connotation” is a new term in trade mark legislation and as such has not yet been interpreted by the courts. The following are two dictionary definitions which define the ordinary meaning:

Macquarie Dictionary :

1. the act or fact of connoting. 2. that which is connoted; secondary implied or associated meanings (as distinguished from denotation): for example the word “bum” has connotations of vulgarity.

Oxford English Dictionary :

1. [a] The signifying in addition; [b] inclusion of something in the meaning of a word besides what it primarily denotes; [c] implication.

Therefore it can be said that the word connotation refers to that which is implied in a trade mark — in addition to its essential or primary meaning. A connotation can result from the trade mark as a whole, or can result from a sign contained within the trade mark. The prominence and context of the potentially deceptive or confusing element in the trade mark is important in deciding whether the trade mark is likely to deceive or cause confusion. Considerations under s 43 concentrate on the matter within the trade mark that could cause deception or confusion in the mind of the relevant buying public. For example, deception or confusion could arise in regard to the character of the services, or the implied endorsement or licence of services by a person or organisation.

Mr Hall asserted that a reputation as a trade mark can give rise to a connotation that will attract the action of s 43.  However, Delegates of the Registrar of Trade Marks, in the absence of a court decision where that issue has been fully argued and considered, have taken a contrary view.  The Registrar's understanding and practice is that s 43 is confined to situations where the deceptive or confusing element is inherent to the trade mark itself.  The Explanatory Memorandum that was before Parliament when the Act was adopted supports this view.

Therefore, inasmuch as Levi relied on the terms 'reputation' and 'connotation' as being equivalent, the opposition fails on this ground.

Section 44

As far as it is relevant to these proceedings, section 44 of the Act allows:

Identical etc. trade marks

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

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

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

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

Note 1:  For deceptively similar see section 10.

Note 2:  For similar goods see subsection 14(1).
Note 3:  For priority date see section 12.

In respect of similar goods and priority date, mentioned within subsection 44(1) and notes 2 and 3 to subsection 44(1), there is no dispute between the parties that the goods at issue are similar and that the Levi registrations relied on are earlier than that of the Vivat applications.  Accordingly, the issue I am to decide in terms of section 44 are whether the trade marks are substantially identical or deceptively similar.

Substantial identity

The test for substantial identity is that set out by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414–15:

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 …

When the trade marks at issue are compared side by side, there are many differences between them.  To my mind these are:

• The Vivat trade marks are asymmetric - the arcuate is symmetrical.

• The lines in the Vivat trade mark are not parallel - those in the arcuate are parallel.

• The lines within the Vivat trade mark cross over each other - those in the first arcuate do not.

• There is the suggestion of the letter W central to the Vivat trade marks, absent from the arcuate.

• The Vivat trade marks have a greater three-dimensional character than does the arcuate

• The Vivat trade marks are more strongly suggestive of a flying bird than is the arcuate

I do not believe that Mr Hall's demonstration of the alleged identity of the trade marks by superimposition is a helpful one here.  What I am to consider is the trade marks as applied for.  While it is true that the Vivat goods to which the trade marks are applied are displayed for sale in various orientations, the same observation is equally true of the Levi goods.  Under such circumstances, customers are accustomed to making allowances for variations in the presentation of goods and making adjustments according to whether clothing is hung from clothes hangers, hung over clothes hangers or stacked on shelves.  The environments in which such clothing is sold are invariably informal and consumers adopt an informal approach to inspecting goods and buying them.  Taking these factors and the case law into account, I believe that a side by side comparison is more appropriate.  I find that the trade marks in question are not substantially identical in the light of the differences I have listed above.

Deceptive similarity

This is defined by section 10 of the Act, which provides:

Definition of deceptively similar

10. 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.

The tests of whether trade marks are deceptively similar are the familiar ones quoted from Windeyer J's judgement in the Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 and that of Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658. The principles they described are that the matter is not to be decided by comparing the marks side by side but rather that:

An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken descriptions must be considered. If the 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, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.

Another test was suggested by Lord Parker (then Parker J) in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777), where he said:

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion — that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods — then you may refuse the registration, or, rather, you must refuse the registration in that case.

Further, the context of the comparison is limited by the test in Re Application by Smith Hayden & Co Ltd (1946) 63 RPC 97 at 101:

… assuming user by the opponents of their trade marks in a normal and fair manner for any of the goods covered by the registration of their trade marks, am I satisfied that there will be no likelihood of deception or confusion among a substantial number of persons if the applicants also use their trade mark normally and fairly in respect of any goods covered by their proposed registration.

French J spoke of this test in Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 where he said of the 'notional user' test (applicable under section 12 of the UK Act, section 33 of the 1955 Act and section 44 of the 1995 Act) in Smith Hayden, supra:

So far as this passage, reflected in oral submissions, suggests that an applicant must satisfy the registrar or the court that there will be no reasonable likelihood of deception and confusion it does not represent the law as it stands under the 1995 Act. The position now is that the registrar and the court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

This reflects the operation of section 33 of the Act on the application of section 44.  Section 33 provides:

Application accepted or rejected

33.(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a) the application has not been made in accordance with this Act; or
(b) there are grounds for rejecting it.

Note:  For the grounds on which an application may be rejected see Division 2.

(2) The Registrar may accept the application subject to conditions or limitations.

Note:  For limitations see section 6.

(3) If the Registrar is satisfied that:

(a) the application has not been made in accordance with this Act; or
(b) there are grounds for rejecting it;

the Registrar must reject the application.

(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.

French J in Woolworths, supra, also said:

[050]    In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594–5, 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 Bali Co 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.

Hearing Officer Homann noted in The Coca-Cola Company v Captain Icecream Pty Ltd (1991) 24 IPR 113 that it was very unlikely that the use of the applicant’s mark would lead to the deception or confusion of a substantial number of persons, as the opponent’s mark was famous and the likelihood of imperfect recollection could be almost completely discounted.

As mentioned, above, the goods of both parties sell through clothing emporia.  The goods in common between the parties are reflected in the specification of goods of the Levi registration 584819: 'Jeans and other pants including shorts; t-shirts, vests, shirts, jackets and other tops' and goods within the Vivat specifications which are of the same description as these goods.  Commonsense, and the trade marks in question, suggest that the trade marks are almost universally used only in relation to jeanswear and I focus on these in my discussion.

Both my experience and the evidence show that people commonly exercise a degree of caution in buying such clothes and, further, a number of factors govern the purchase of such goods. 

·The specified goods are outerwear fashion items.  With such goods people will invariably handle and closely inspect items and will usually try them on for size and appearance before purchase. 

·Such items are not usually inexpensive and, under such circumstances, the public takes greater care in their purchases: LANCER Trade Mark Application [1987] RPC 303.

·The shops where the goods sell customarily have sales assistants in attendance to assist with sales and answer questions. 

·The majority of purchasers of such goods are usually both brand-aware and brand-educated. 

·The public is well aware that pocket-stitch trade marks are used by a significant number of jeans-wear manufacturers and are used to discriminating between goods on that basis.

·Such goods are habitually bought by reference to, and reliance, on trade marks.

Considering all of these factors, I am satisfied that the concurrent use of the trade marks would not confuse or deceive.   I have previously dwelt on the differences between the trade marks at issue.  I believe them to be conceptually different and the overall impression of the trade marks also to be quite different.  Both of the trade marks are abstract and do not immediately suggest a common descriptor by which one could request the goods.  However, if the goods were to be requested by the reference to the trade marks, I believe that the descriptions that the public would arrive at would be quite different.  The arcuate trade mark is suggestive of arches.  The opposed trade marks are reminiscent of seagulls or the alphabetical letter W.  It is true that the indexing of both the Vivat and Levi trade marks by this Office on the Constituent Particulars Index of Trade Marks has a common avian theme.  However, to quote Hearing Officer Mr Williams in an unpublished decision: Opposition by STOKELY-VAN CAMP, INC to the registration of trade mark application number 744539 in the name of ALEXANDER HUTTON:

That the Trade Marks Office may choose to index three trade marks in similar ways, or to index one as a V, another as a chevron and a third as a pair of wings, is of little weight in matters such as these.  The Index of Constituent Particulars is a searching tool which, when used carefully, will allow similar trade marks to be located.  However, trade marks are indexed with a methodology that is logical, systematic and largely technical.  It may thus have little to do with the way marks are ordinarily used and compared, confused or distinguished.  Moreover, it is balanced, in the interests of safety, to tend to disclose unlike marks, rather than obscure the existence of those that are deceptively similar.

The trade marks in question are not, I think, deceptively similar.  I therefore conclude that the opposition under subsection 44(1) has failed.

Section 60

Section 60 of the Act provides:

Trade mark similar to trade mark that has acquired a reputation in Australia

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

Mr Hall made submission that, as section 33, supra, clearly only applies to Division 2 of the Act, it is open to me to find that the trade marks are deceptively similar in terms of section 60, irrespective of my finding under section 44.  I have some difficulty with this viewpoint. While it is true that section 33 operates in relation to pre-acceptance considerations, in opposition proceedings which involve post-acceptance provisions of the Act, these must be read in the light of section 55 of the Act.  Section 55 provides:

Decision

55. Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

(a) to refuse to register the trade mark; or

(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note:  For limitations see section 6.

I believe that the words "having regard to the extent (if any) to which any ground on which the application was opposed has been established" make it clear that the onus is on the opponent to establish its grounds of opposition.  This accords with the philosophy of the 1995 Act which is reflected in the Working Party Report and the Woolworth's decision, supra.  It appears, therefore, that while the operation of section 33 does not extend to section 60, the onus remains on the opponent to clearly make out its case in relation to that section.

I therefore dismiss the opposition in terms of section 60 of the Act.

Conclusion

I find the opposition has failed.  Accordingly, I direct that the application may proceed to registration after 30 days from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that the registration shall not occur until the appeal has been decided or discontinued.

Costs

The applicants (having been successful) are entitled to claim their costs, if they so wish, at the official scale and I award such costs against the opponent.

Ian Thompson
Hearing Officer

14 July 2000