Levi Strauss & Co v Yugen Kaisha Shimura (Shimura, Ltd.)
[2016] ATMO 67
•2 September 2016
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 application 1612789 (25) – BS and STITCHED POCKET DEVICE - filed in the name of Yugen Kaisha Shimura (Shimura, Ltd.).
| Delegate: | Heath Wilson |
| Representation: | Opponent: Khajaque Kortian of Spruson & Ferguson. Applicant: No appearance or submissions. |
| Decision: | 2016 ATMO 67 Opposition to registration of a trade mark – grounds of opposition under sections 44, 60, 42(b), 59 and 62A argued – s 44 ground of opposition established - Trade Mark refused registration. |
Background
This matter concerns an opposition to the registration of a trade mark under the provisions of the Trade Marks Act 1995 (‘the Act’). The trade mark was filed on 21 March 2014 by a company based in Japan, namely, Yugen Kaisha Shimura (Shimura, Ltd) (‘the Applicant’) and the relevant details of the trade mark application can be seen below:
Trade Mark No. 1612789
Trade Mark:
(‘the Trade Mark’)
Specification of Goods:
Class 25: Clothing, namely, trousers, slacks, pants, jeans, overalls, denim jackets, denims (pants), scarves, mufflers, shirts, T-shirts, polo-shirts, hats, caps (headwear), swim wear, leather jackets, leather pants, socks and stockings, gloves, belts, footwear
The Trade Mark was examined under section 31 of the Act and its subsequent acceptance was advertised on 14 August 2014 in the Australian Official Journal of Trade Marks.
Levi Strauss & Co (‘the Opponent’) filed a Notice of Intention to Oppose followed by a Statement of Grounds and Particulars (‘SGP’). Once the Applicant filed its Notice of Intention to Defend the opposition, the evidence stages of the opposition commenced, with the following evidence being filed:
Evidence in Support
Declaration of Thomas M Onda (Global Intellectual Property Counsel of the Opponent) made 13 March 2015 with exhibits TMO-1 to TMO-7.
Declaration of Khajaque Kortian (Principal of Spruson & Ferguson) made 17 March 2015 with exhibits KK-1 to KK-4.
Evidence in Answer
Declaration of Saioa Echevarria Idianez and Fabiola Dos Santos of FAL Lawyers (for the Applicant) made 13 August 2015 with exhibits SEI-1 to SEI-13 (‘Idianez and Dos Santos’).
Evidence in Reply
Declaration of Khajaque Kortian made 19 October 2015 with exhibits KK-1 to KK-5.
The Opponent requested to be heard on the opposition and the hearing was scheduled for 1 August 2016 in Canberra.
As a delegate of the Registrar of Trade Marks allocated to decide the matter, I invited both parties to provide written submissions. The Opponent provided its written submissions but the Applicant elected not to respond.
I heard the opposition on the scheduled date. The Opponent was represented by Khajaque Kortian of Spruson and Ferguson who made submissions via telephone. There was no appearance and no submissions made on the Applicant’s behalf.
Grounds and Onus
Mr Kortian indicated that the Opponent was pursuing all the grounds of opposition in the SGP, being sections 42(b), 44, 59, 60 and 62A of the Act. The Opponent bears the onus of establishing at least one of the grounds of opposition on the civil standard of the balance of probabilities.[1]
[1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663, [26].
As will become evident, it is only necessary for me to discuss one ground of opposition. I make no finding in relation to the other grounds pursued, but note that should this decision be appealed to the court, the nature of an appeal is such that those grounds (and others under the Act) will be available to be pursued by the Opponent.
Section 44
Section 44 of the Act relevantly provides:
44Identical 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.
(2)…
(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.
(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:
(a)beginning before the priority date for the registration of the other trade mark in respect of:
(i)the similar goods or closely related services; or
(ii)the similar services or closely related goods; and
(b)ending on the priority date for the registration of the applicant’s trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
In pursuit of this ground of opposition, the Opponent relied on the following trade mark registrations (collectively referred to as ‘the Opponent’s trade marks’), which each have an earlier priority date to that of the Trade Mark:
| TM No. | Trade Mark | Specification of Goods |
| 302847 | Endorsements: Registration of this trade mark shall give no right to the exclusive use of the device of a 'POCKET' The mark consists of double arcuate lines as shown on the representation attached to the application applied by stitching to the hip pockets of the goods, such stitching being of a contrasting colour to the background fabric. The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995. | Class 25: Pants for men, women and children |
| 584819 | Endorsements: The trade mark consists of double arcuate lines as shown on the representation attached to the application applied by stitching to the pockets of the goods. The provisions of sub-section 26(2) applied. The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995. | Class 25: Jeans and other pants including shorts; t-shirts, vests, shirts, jackets and other tops |
| 1211752 | Class 9: Sunglasses, sunglass cases, spectacles, spectacle frames, spectacle chains, pince-nez, pince-nez cords, computer game programs, eyeshades, batteries, calculators, binoculars, compasses, fireproof garments, apparatus and instruments for recording, receiving, transmitting and reproducing sounds, images or data; mobile digital electronic devices in this class; downloadable music files, video tapes, vending machines and juke boxes, battery chargers; telephone apparatus, television apparatus, cameras, camcorders, cases for photographic instruments, time recording devices, compact discs; compact disc players; computers, computer memory devices, optical lenses, hair curlers, holograms, megaphones, microphones, modems, nautical apparatus and instruments, pedometers, radios, record players, telephone receivers, audio and video receivers, remote control apparatus, sound transmitting apparatus, swimming jackets, telephone transmitters, telecommunication transmitters, weighing machines, wireless telephones, wireless transmission devices; earphones, mobile headsets, phone straps, mobile phone cases, mobile phones, mobile phone accessories in this class
| |
| 1397492 | Class 25: Clothing, footwear, headgear |
In terms of paragraph 44(1)(a)(ii), I find that the specification of goods for the Trade Mark comprises ‘similar goods’[2] to the various clothing, footwear and headgear claims in the class 25 specifications of goods for the Opponent’s trade marks seen above. That being the case, the remaining consideration is whether the Trade Mark is substantially identical with, or deceptively similar to, any of the Opponent’s trade marks. To answer the first element of that consideration, I refer to the relevant test as set out in the decision of Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:
[the trade marks] 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…[3]
[2] See section 14(1) of the Act.
[3] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, [414]-[415] (Windeyer J).
As Mr Kortian did not assert a case that the Trade Mark was substantially identical to any of the Opponent’s trade marks I will not dwell on the issue; suffice to say that on a side-by-side comparison I find that there are sufficient visual differences between them to answer that question in the negative.
The assessment of whether two trade marks are deceptively similar involves a different approach to that of substantial identity. Section 10 of the Act provides that ‘a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.’ In Australian Woollen Mills Ltd v F. S. Walton and Company Ltd the well-established approach to this assessment was described as:
[T]he marks ought not … to be compared side by side. 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 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.[4]
[4] (1937) 58 CLR 641, [658] (Dixon and McTiernan JJ).
On the issue of the general recollection or overall impression of a trade mark likely to be taken away by consumers, Latham CJ in the case of Jafferjee v Scarlett found:
The court naturally and readily appreciates the distinctions between the marks which are seen side by side. When, however, the court has to determine the probability of deception arising from simultaneous user of the same marks in the same market, it is very important to remember that the purchasers in that market will not ordinarily have an opportunity of comparing the two marks side by side. They will compare the actual mark which they see upon goods which are offered to them with the memory of the other mark, which they will retain in a more or less distinct form. They therefore will not be in the same position as that in which the court finds itself when it is endeavouring to determine whether or not they are likely to be deceived. The court must endeavour to put itself in the position of ordinary purchasers of goods who have noticed a trade mark as being distinctive of particular goods, but who have not compared that mark with any other mark, and who are quite probably not aware of the fact that another more or less similar mark exists. Such purchasers have not had the opportunity or the occasion to make a precise comparison of the two marks. They will be guided, so far as they are influenced by trade marks at all, by a general recollection or impression of the mark which they have seen.[5]
[5] [1937] HCA 36; (1937) 57 CLR 115.
Turning to the matter at hand, the Trade Mark is the representation of a pocket device with stylized arcuate stitching across the middle and a small monogram within a circle in the top left hand corner which may contain either the letters ‘BS’ or ‘SB’. The arcuate stitching consists of two parallel lines that dip in the centre and have a slight inflection at either end closer to the edges of the pocket. While the Trade Mark has been claimed for other items of clothing, (such as gloves, hats and swimwear) it is highly likely that this form of stitching is designed to appear principally on the back pocket of jeans or trousers.
I note that the Opponent’s two earliest trade marks either disclaim the device of the pocket (no. 302847) or explicitly state that the pocket device outline does not form part of the trade mark (no. 584819). I find that this fact makes little difference to the overall comparison of the trade marks because the device of a pocket by itself within the Trade Mark lacks inherent capacity to distinguish jeans and trousers from the similar items of clothing of other traders. As consumers would not perceive such a device as operating as a badge of origin of any one particular trader I find that its presence in the Trade Mark and the Opponent’s trade marks can be largely discounted[6] for the purposes of comparison. Having said that, if any weight in the comparison were to be attributed to the shape of the pockets in the respective trade marks, I find that their appearance is so similar that it would only add to the likelihood of deception or confusion. In addition, the pocket serves to indicate the positioning and prominence of the essential features of the Trade Mark including the placement of the arcuate stitching on the products and also the orientation and relative proportions of the monogram within the Trade Mark.
[6] Discounted, but not ignored entirely. In relation to the treatment of disclaimers in a comparison, see the case of Re "Granada" Trade Mark [1979] RPC 303.
The monogram is a minor element in the Trade Mark in comparison to the stitching and its visual significance is not immediately evident when the Trade Mark is considered in its entirety. Mr Kortian also pointed out that the positioning of the monogram in the Trade Mark is where the stud or rivet would likely appear on the pocket. These facts are distinguishable from those in the decision of Lee Cooper Group Plc v Levi Strauss & Co[7] where the primary feature of the opposed mark was the large prominent name ‘LEE COOPER’ within a diamond device in the centre of the pocket, precluding a finding of deceptive similarity on the basis of similarities in stitching. In this matter, it is the arcuate stitching which is the essential element between the trade marks and I find it unlikely that the consumer would recall the Applicant’s products by reference to the relatively insignificant and ambiguous monogram.
[7] [1996] ATMO 7.
Similarities in Stitching
The Applicant’s evidence refers to a decision from a foreign jurisdiction where an infringement claim failed partly as the court found that the Opponent’s stitching trade mark had ceased to be distinctive at the time of the alleged infringing use.[8] However, any argument concerning the distinctiveness of stitching trade marks in Australia may be easily dispensed with on the facts before me. Firstly, I refer to (and affirm) the following comments of the hearing officer in Levi Strauss & Co v Vivat Holdings Plc Levi v Vivat (‘Levi v Vivat’):
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.[9]
[8] Exhibit SEI-5 to Idianez and Dos Santos.
[9] [2000] ATMO 68.
Secondly, I note that the Opponent’s earliest Australian trade mark registration featuring the arcuate stitching (i.e. trade mark no. 302847) was mentioned by Sheppard J in the case of Wingate Marketing Pty Limited and Eileen Mary Woolley v Levi Strauss and Co and Levi Strauss (Australia) Pty Limited in the following way:
[T]here are trade marks which show a form of stitching pattern on the back pockets of jeans. The stitching is known as arcuate (i.e. curved or arched) stitching. The stitching is distinctive and runs across the middle of the two back pockets of jeans. Two marks are registered in respect of this stitching, one showing one pocket (registered in Part B of the Register)…[10]
[10] Wingate Marketing Pty Limited and Eileen Mary Woolley v Levi Strauss and Co and Levi Strauss(Australia) Pty Limited [1994] FCA 1001, [13] (My emphasis added).
Thirdly, the Opponent enjoys statutory rights in relation to its trade marks registered after due consideration by various examiners of either section 24 of the Trade Marks Act 1955 or section 41 of the Act. In some cases the Opponent’s trade marks proceeded to registration following the addition of endorsements, a restriction to the specification of goods and/or the provision of evidence of use.
Finally, I note by way of further background that there is evidence before me of a substantial history of use of the Opponent’s particular arcuate stitching on its clothing products dating back to at least 1976 in Australia. In the US, such use of the arcuate stitching is even more prevalent, having first appeared in the marketplace on the back pockets of the Opponent’s jeans in 1873.
The facts of the current opposition may also be distinguished from those in the case involving the Opponent’s two earliest trade marks, namely, the aforementioned decision of Levi v Vivat.[11] In that matter, the Opponent argued that trade mark nos. 302847 and 584819 were deceptively similar to the two trade marks shown below:
[11] [2000] ATMO 68.
That opposition was ultimately unsuccessful, with the hearing officer noting the particularly evident visual differences between the trade marks. At the hearing of the current opposition, Mr Kortian argued that the dominant element of the Trade Mark is much closer in visual similarity to the Opponent’s trade marks than the two trade marks were in Levi v Vivat. I agree with Mr Kortian’s submissions.
Turning to the similarities between the stitching, I note the Applicant’s evidence in answer provides an explanation for the origin of the Trade Mark:
The Applicant coined up [sic] its trade mark by taking inspiration from the shape of a Buffalo’s skull. The Applicant consequently created a simple mark resembling such shape as an icon on its clothing which at the time had not ever been used in the apparel business.[12]
[12] Idianez and Dos Santos [5].
However, when estimating the general impression that a consumer is likely to retain and remember of the trade marks at the point of sale, I find it unlikely that the image of a buffalo skull would be the element that is firstly perceived and subsequently retained. This proposition would require associated branding to engender that image and that is not the consideration before me. Whatever the actual intent of the Applicant may have been, under section 44 of the Act, I am to consider a notional use in a normal and fair manner[13] of the trade marks as applied for.
[13] Re Application by Smith Hayden & Co Ltd (1946) 63 RPC 97, [101].
As the trade marks consist predominantly of device elements, the visual comparison here is crucial. The stitching is the dominant element of the Trade Mark and the only element of the Opponent’s trade marks. Looking particularly at the Opponent’s trade marks nos. 584819 and 1211752 in comparison with the Trade Mark they both feature two parallel symmetrical lines of stitching that begin at equivalent points on either side of the pocket and feature two arches intersecting in a dip in the centre. Certain visual differences in the Trade Mark were conceded by the Opponent (the upward inflection of the stitching towards the edges and the deeper symmetrical dip in the Trade Mark). I agree that such differences are noticeable on a side-by-side comparison, but that is not the test for deceptive similarity. As Lord Radcliffe said in de Cordova v Vick Chemical Co:
The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him ... It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.[14]
[14] (1951) 68 RPC 103, [106]; 1B IPR 496, [499] (My emphasis in bold).
Again in Levi v Vivat, the hearing officer indicated that the relevant purchasers of these clothing goods exercise a certain degree of caution and that ‘people will invariably handle and closely inspect items and will usually try them on for size and appearance before purchase.’[15] Accepting the nature of the relevant consumers, if the goods were requested by reference to the trade marks, I find that the description likely given would be so similar as to result in confusion. Even if the relevant goods were not requested verbally, I find that the imperfect recollection of the trade marks by a number of consumers would not avoid the real likelihood that they would be caused to wonder whether the two products come from the same source.[16]
[15] Ibid.
[16] See Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50].
I find that the overall visual impression between the Trade Mark and trade mark nos. 584819 and 1211752 is one of deceptive similarity. There is a real, tangible danger of confusion between the trade marks on that basis “even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales.”[17]
[17] See Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592.
The Applicant’s Evidence
As I have not been provided with any written summary of argument from the Applicant, I will address the relevant contents of Idianez and Dos Santos which include information relevant to my deliberations.
The evidence indicates that the Applicant began using the Trade Mark in Japan in 2006 and has continuously used it on pockets of jackets and trousers since 2007. It is clear from the declaration that the Applicant is yet to commence trading its products in Australia, but there is evidence of use on international and Japan-based websites.
Idianez and Dos Santos then refer to a number of factors which they argue should influence a decision in the Applicant’s favour including:
The abovementioned Australian Trade Marks Office decision of Levi v Vivat.
A decision from 2002 from the UK office on similar facts and with an analogous outcome to Levi v Vivat.
The decision mentioned earlier involving a trade mark infringement action from Benelux.[18] As mentioned, the Opponent’s stitching pattern had ceased to be distinctive and was determined to be commonplace in that jurisdiction.
The apparent co-existence of the Trade Mark with the Opponent’s trade marks in the UK jurisdiction.[19]
An (untranslated) decision of the Appeal Board of the Japan Patent Office[20] the reasoning of which is not before me but Idianez and Dos Santos provides that the trade marks were found to be dissimilar to each other.
An Opposition filed by the Opponent in South Korea that was dismissed. Again, the actual reason for the dismissal is not clear but Idianez and Dos Santos declare that the ‘Korean IP Office did not accept Levis’ opposition.’ [21]
The fact that there had been no adverse report during the examination of the Trade Mark.
[18] Exhibit SEI-5: Levis Strauss & Co. v Casucci SpA. C-145/05 from 27 April 2006.
[19] Exhibits SEI-7 and SEI-8 to Idianez and Dos Santos.
[20] Exhibit SEI-9 (Opp. No. 2007-9004500)
[21] Idianez and Dos Santos [24].
As I mentioned earlier, the facts in the decision of Levi v Vivat are distinguishable from the facts here. It follows that the abovementioned UK decision from 2002 is also distinguishable as it involves similar trade marks and findings to those in Levi v Vivat.
The Applicant is applying to register the Trade Mark in Australia and it is under Australian trade mark law that the Trade Mark must be assessed. In relation to decisions from other jurisdictions (such as Benelux, Japan or South Korea) I am in no way bound by those judgments and, in any event, I do not have the benefit of the particular reasoning from those judgments before me. Additionally, I am not aware of the differences in trade mark legislation and practice concerning the comparison of trade marks in those jurisdictions. The differences in culture and also the industries of countries other than Australia should also be acknowledged.
Apart from the fact that the apparently co-existing overseas trade marks in overseas jurisdictions seem to vary slightly from those in the current matter, I am not aware of the particular circumstances that may have led to their co-existence. With regard to the state of the Register in the United Kingdom (although these comments have often been equally applicable when referring to the state of the Australian Register[22]) Jacob J in the case of British Sugar said:
…In particular the state of the register does not tell you what is actually happening out in the market and in any event one has no idea what the circumstances were which led the registrar to put the marks concerned on the register. It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration, see e.g. MADAME Trade Mark [1966] R.P.C. 541 and the same must be true under the 1994 Act. I disregard the state of the register evidence.[23]
[22]See Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177
[23] British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281, [305].
The fact that no adverse examination report was issued for the Trade Mark is in no way binding on my determination here. In making the above determination of deceptive similarity, I am not stating that the Opponent is “the sole trader with rights to pocket stitching on pants.”[24] Rather, the Opponent does enjoy statutory rights in a particular form of stitching and it is that stitching which (for the reasons set out above) I find is deceptively similar to the Trade Mark.
[24] Idianez and Dos Santos, [28].
For completeness, I find that the contents of the evidence in answer does not satisfy the provisions of section 44(4) (‘prior continuous use’) or section 44(3)(a) (‘honest concurrent use’). Taking into account the other circumstances highlighted above, I am similarly not satisfied that it is proper to allow the Trade Mark to proceed to registration under the provisions of section 44(3)(b) of the Act.
I find that the ground of opposition under section 44(1) of the Act has been established.
Decision
Section 55 of the Act relevantly provides:
55Decision
(1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note:For limitations see section 6.
A ground of opposition has been established under the Act. Accordingly, I refuse to register trade mark application no. 1612789.
Costs
The Opponent has been successful and an award of costs follows the event. I therefore award costs against the Applicant under section 221 of the Act in accordance with the amounts set out in Schedule 8 of the Trade Marks Regulations 1995.
Heath Wilson
Hearing Officer
Oppositions & Hearings
2 September 2016
Key Legal Topics
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Commercial Law
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Intellectual Property
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