Limited Edition Surf Hardware Pty Ltd v Glenys May Seth

[2024] ATMO 144

TRADE MARKS ACT 1995

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

Re:Opposition by Limited Edition Surf Hardware Pty Ltd to registration of trade mark application number 2277734 (class 25) – NOMAWAWHERE - in the name of Glenys May Seth

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Self represented

Applicant: Davies Collison Cave

2024

2024 ATMO 144

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition pressed ss 43, 44, 58A and 60 – no ground established – trade mark to proceed to registration.

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Limited Edition Surf Hardware Pty Ltd (‘Opponent’) to registration of the following trade mark:

Trade mark number:      2277734 (‘Application’)

Trade mark:  NOMADAWHERE (‘Trade Mark’)

Applicant:  Glenys May Seth (‘Applicant’)

Filing date:  17 June 2022 (‘Relevant Date’)

Specification:                   Class 25: casual clothing; hats; t-shirts; sweaters (‘Applicant’s Goods’)

[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

1. The Trade Mark was examined and advertised as accepted for possible registration on 18 November 2022.

2. On 3 January 2023, the Opponent filed a Notice of Intention to Oppose the Application. On 17 January 2023, the Opponent filed its Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the Opposition on 21 March 2023.

3. The Opponent filed Evidence in Support (‘EIS’) on 9 May 2023. The Applicant filed Evidence in Answer (‘EIA’) on 15 August 2023. The Opponent filed Evidence in Reply (‘EIR’) on 4 October 2023.

4. The parties were given the opportunity to either request an oral hearing or to file written submissions. The parties elected to be heard by written submissions. The Opponent filed written submissions drafted by Mark Britten of the Opponent on 15 May 2024. The Applicant filed written submissions drafted by Sean McManis and Kasumi Champion of Davies Collison Cave on 29 May 2024. I have decided this matter based on the particulars set out in the SGP, the evidence and the written submissions of the parties.

Grounds and onus

1. The SGP nominates grounds of opposition under ss 43, 44, 58A and 60.

2. The Opponent carries the burden of establishing one or more of the grounds of opposition[2] on the balance of probabilities.[3] The rights of the parties are assessed as at the Relevant Date,[4] being the filing date of the Trade Mark and the priority date of the Trade Mark for the purposes of ss 44 and 60.

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

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

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’).

Evidence

1. The following EIS was filed:

• Declaration of Mark Damien Britten (‘Britten’), co-owner of the Opponent, dated 9 May 2023 with Annexures LE-A to LE-F.

1. The following EIA was filed:

• Declaration of Glenys May Seth (‘Seth’), the Applicant, dated 9 August 2023.

• Declaration of Sean McManis, employee of Davies Collison Cave, dated 15 August 2023 with Annexures SM-1 to SM-3 (‘McManis’).

1. The following EIR was filed:

• Second Declaration of Mark Damien Britten dated 4 October 2023 with Annexures LE-RA to LE-RL.

Summary of EIS

1. Britten states that he and Shane Clifford Britten are co-owners of the Opponent and that the Opponent is owner of the website (‘Opponent’s Website’) and the following Australian trade mark registrations:

Number	Trade mark	Filing date	Class and goods
1192461 (‘461 Registration’)	Nomad	10 August 2007	Class 25: Clothing being hooded jumpers and t-shirts, headgear being caps Class 28: Gymnastics and sporting articles in relation to surfing; none of the above games and playthings being computer based games or other electronic devices (‘461 Goods’)
2201524 (‘524 Registration’)	11 August 2021	Class 25: Snowboard boots; Snowboard shoes; Clothing for surfing; Surf shorts; Surfing shorts; Wetsuits for surfing; Apparel (clothing, footwear, headgear) Class 28: Bodyboards; Snowboards; Surf boards; Surfing apparatus; Body board leashes; Leashes (surfboard); Surfboard leashes; Surfboard leg ropes (leashes) (‘524 Goods’)

1. Britten also states that he and Shane Clifford Britten are co-owners of the following Australian trade mark registration:

Number	Trade mark	Filing date	Class and goods
923592 (‘592 Registration’)	15 August 2002	Class 25: Surf wear being hooded jumpers and t-shirts (‘592 Goods’)

1. For ease, the 461, 524 and 592 Registrations will hereafter be referred to as the ‘Registrations’, the trade marks of these Registrations as the ‘Opponent’s Marks’ and the class 25 goods of these Registrations as the ‘Registered Goods’.

2. Britten asserts that the Opponent has continuously used the trade marks  and Nomad on the 592 and 461 Goods since 2000 and the  trade mark on t-shirts, jumpers, jackets, footwear and head wear since 2019. Britten also asserts that the Registered Goods are available in over 150 surf, action sports and fishing retail stores across Australia in addition to the Opponent’s Website. Britten annexes:

• a selection of magazine and newspaper advertisements and articles dated between 2001 and 2009. I note that much of the use of the trade mark Nomad is in respect of bodyboards and their accessories.

• four manufacturers’ invoices between 2001 and 2003 where there is only legible reference to the trade mark Nomad on caps and seven sales invoices between 2001 to 2004 where there is only reference to the trade mark Nomad on rash vests and caps.

• examples of t-shirts, singlets, shirts, rash shirts, hoodies and caps claimed to be produced between 2000 to 2023 featuring the trade mark Nomad. I note that the earliest dated examples are from 2002 and the latest from 2007.

• proforma letters from three of the Opponent’s stockists dated in 2002 which refer to the retailing of ‘Nomad Trademark’ clothing since 2006, 2008 and 2001. I note the letters do not specify the exact items of clothing nor the exact trade mark.

Summary of EIA

1. Seth states that she and her husband chose the Trade Mark because it is a play on the expression ‘no matter where’.

2. Seth claims that at the time that the Trade Mark was chosen, and at the time Seth applied to register the Trade Mark, she was unaware of the Opponent nor any use of the trade mark Nomad by the Opponent. Seth further claims that she remained unaware of the Opponent until the Trade Mark was opposed.

3. Seth states that the clothing she intends to sell under the Trade Mark is clothing for general wear.

4. McManis annexes extracts of Google® searches for ‘nomad clothing’, geographically limited to Australia, conducted on 27 July 2023 and 10 August 2023, together with printouts of twelve of the websites disclosed, which show that other traders use the word Nomad, or a similar word, in relation to clothing.

5. McManis annexes the results of a search of IP Australia records conducted on 10 August 2023 for registered and pending trade marks in Class 25 containing the part word ‘nomad’ together with details of the trade marks disclosed. I note that other than the Registrations, there are five registered or protected marks.

Summary of EIR

1. Britten annexes:

   ·     an undated screenshot claimed to be from 4 September 2023 from the clothing page of the Opponent’s Website and a screenshot from the administration page of the Opponent’s Website showing that there were 40,430 visitors to the website between September 2022 and August 2023.

   ·     a further two proforma letters from the Opponent’s stockists dated in 2022 which refer to the supplying and printing of ‘Nomad Trademark’ garments since 2009 and headwear since 2018. Again, I note the letters do not specify the exact items of clothing nor the exact trade mark.

• undated screenshots claimed to be from 4 September 2023 of three third party retailer’s websites that stock NOMAD branded clothing.

• copies of the following invoices where the trade mark Nomad is used:

  oeight sales invoices from the Opponent’s online store for t-shirts, hoodies and caps, only three of which are dated before the Relevant Date.

  osix sales invoices to retailers for t-shirts, hoodies, jumpers and hats, only one of which is dated before the Relevant Date.

  ofour garment printers and manufacturing invoices for hoodies, t shirts and caps, three of which are dated before the Relevant Date.

• copies of print catalogues from 2019 to 2022 showing caps, hoodies and t shirts. I note use of the trade marks Nomad and .

• undated posts from the Opponent’s Facebook® site and posts from the Opponent’s Instagram® site dated between 2018 and 2021. I note use of the trade marks Nomad and  on caps, t shirts and hoodies. Follower numbers are also provided which are claimed to be as of 4th September 2023.

Discussion and Reasons

Section 44

1. The relevant provisions of s 44 are reproduced below (notes omitted):

   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.

1. The Opponent relies on the Registrations for the s 44 ground.

2. As a starting point, to successfully oppose the Application pursuant to s 44, the Opponent must establish that:

• the Registrations have a priority date which is earlier than the Relevant Date and is held in a name other than that of the Applicant (‘the first requirement’);

• the Applicant’s Goods are similar to the goods claimed in the Registrations (‘the second requirement’); and

• the Trade Mark is substantially identical with or deceptively similar to one or more of the Registrations (‘the third requirement’).

1. I am satisfied that the Registrations have a priority date earlier than the Relevant Date and are in a name other than the Applicant. Therefore, the first requirement is satisfied.

2. The Applicant’s submissions do not dispute that the Registrations cover goods that are the same or similar to the goods of the Application and I do not disagree. They all cover items of clothing. Therefore, the second requirement is satisfied.

3. The last consideration is whether the Trade Mark is substantially identical with or deceptively similar to one or more of the Opponent’s Marks.

4. The Opponent’s submissions state that there is a likelihood of deception or confusion on the following bases:

   ·     the Trade Mark and the Opponent’s Marks share the dominant, memorable and distinctive term ‘NOMAD’ which is the primary focus of consumer attention in the respective marks and consumers will more readily refer to the word NOMAD rather than attempt to remember or describe the detail of other elements;

   ·     the word NOMAD is the first word in each of the respective marks, which is the most important for the purpose of distinction;

   ·     the addition of the suffix ‘-awhere’ does not sufficiently distinguish the Trade Mark from the Opponent’s Marks;

   ·     the respective marks are conceptually similar, evoking a similar concept and imagery related to travel, exploration and adventure; and

   ·     the respective marks are intended for use in connection with clothing which are the same goods covered by the Opponent’s Marks.

5. The Applicant’s submission contends that there is no likelihood of deception or confusion on the following bases:

• the Trade Mark as a whole is novel and distinctive and is not an ordinary English word;

• the only common element between the marks is the ordinary English word NOMAD;

• the Trade Mark contains the additional element ‘AWHERE’ which renders the Trade Mark entirely dissimilar from NOMAD;

• the Trade Mark is more than double the length of the word NOMAD so the visual appearance is distinct and striking. There is no separation between NOMAD and AWHERE and no possibility of the Trade Mark being visually confused with the word NOMAD;

• phonetically the two words are entirely different. NOMAD is comprised of two syllables whereas the Trade Mark is comprised of four. Any verbal references to the word NOMAD and the Trade Mark will be distinctly different. The Trade Mark will be pronounced as the words ‘no matter where’. Consumers are far more likely to interpret the Trade Mark as conveying the idea of ‘no matter where’ rather than being a reference to a type of ‘nomad; and

• clothing is typically selected with care and attention to branding, which emphasises the significance of distinguishing visual features.

1. As each of the Registrations are protected for types of clothing in class 25, the Opponent stands in the same position irrespective of which of the Registrations is relied on. As such, it is convenient to confine the following discussion to a comparison of the 461 Registration for the word mark Nomad (‘NOMAD Mark’) and the Trade Mark. The rationale being that if the NOMAD Mark is determined not to be substantially identical with or deceptively similar to the Trade Mark, logic dictates that the same conclusion will apply to the remainder of the Opponent’s Marks, given each has additional points of dissimilarity.

Substantial identity

1. The starting point of an analysis as to whether trade marks are substantially identical is the well-known dicta of Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’),[5] where his Honour stated at 414:

   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.

   [5] (1963) 109 CLR 407 (‘Shell’).

2. Thus, if a total impression of similarity emerges from a comparison between the two marks, the marks are ‘substantially identical’

3. In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’),[6] the Full Court clarified the way in which a ‘side by side comparison’ of trade marks is to be carried out in order to determine whether the two marks are substantially identical. The Full Court identified that the proper approach for determining whether trade marks are substantially identical is an evaluative process which begins with a comparison of the essential elements of the marks, before considering the differences between them. This is explained in Pham Global at [52]:

   The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person” (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.

   [6] [2017] FCAFC 83 (Greenwood, Jagot and Beach JJ).

4. Whether there is substantial identity is a question of fact.[7]

   [7] Ibid [53].

5. The respective marks appear below:

Nomad                NOMADAWHERE

1. On a side-by-side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of the NOMAD Mark and the Trade Mark. While they each share the NOMAD element, the presence of the AWHERE element in the Trade Mark provides a significantly different visual impression. I move then to consider whether the Trade Mark and NOMAD Mark are deceptively similar.

Deceptive similarity

1. Section 10 provides a definition of deceptively similar being 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”.

2. Justice Windeyer outlined the following approach for the assessment of deceptive similarity in Shell:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[8]

   [8] Shell (n 5), 416.

3. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[9] conveniently stated the relevant principles, which may be summarised as follows:

   [9] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

• the resemblance between the two marks must be the cause of the likely deception or confusion;[10]

  [10] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).

• in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[11]

  [11] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

• the marks should not be compared side by side;[12]

  [12] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

• the effect of spoken description must be considered; if a 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 (or services), then similarities both of sound and of meaning may play an important part;[13]

  [13] Ibid.

• the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[14]

  [14] Ibid.

• the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[15]

  [15] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).

• the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[16]

  [16] Shell (n 5), 415.

• “deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers;[17]

• the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[18]

• it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[19]

• evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[20] and

• any intention to deceive or cause confusion may be a relevant consideration but is not required.[21]

  [17] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

  [18] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

  [19] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (French J) (‘Woolworths’) restating principles from Southern Cross (n 4) 594-595 (Kitto J).

  [20] Australian Woollen Mills (n 12).

  [21] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 12), 657.

1. Justice French expressed the view in Registrar of Trade Marks v Woolworths Ltd[22] that the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, the relevant goods or services of the earlier trade mark owner is “logically antecedent to” assessing the similarity of the parties’ trade marks. In particular, French J explicitly approved the observation in Wilcox J’s first instance decision in the Woolworths Ltd v Registrar of Trade Marks matter that, ‘[t]he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive’.[23]

   [22] Woolworths (n 19),[39].

   [23] Ibid. See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J).

2. In light of the authorities, I must decide whether there is a real, tangible danger of deception or confusion by reason of the use of the Trade Mark, having regard to the imperfect recollection of the notional consumer. That is not to be judged by a side-by-side comparison of, on the one hand, the Trade Mark, and on the other, the NOMAD Mark. Rather, I am required to take all of the surrounding circumstances into consideration, including those in which the Trade Mark and the NOMAD Mark are used and the circumstances in which the goods are and will be sold.

3. In my view, the Trade Mark is not deceptively similar to the NOMAD Mark. While a degree of visual similarity naturally arises between the Trade Mark and the NOMAD Mark given the former commences with NOMAD and the latter is solely the word NOMAD, the addition of the element AWHERE in the Trade Mark notably visually distinguishes the trade marks.

4. While the respective marks share the word NOMAD, I do not consider that the word NOMAD retains any significance in the Trade Mark as the separate word and element NOMAD. I agree with the Applicant that the element AWHERE renders the Trade Mark as a whole novel and distinctive and entirely dissimilar to the word NOMAD. Further, as the Applicant submits, there is no separation between the word NOMAD and AWHERE and I consider this to be the case not only visually but aurally.

5. The first impression of the Trade Mark is that it is a long word which has no known meaning. Once the brain verbalises the Trade Mark, whether this is internally or out loud, it becomes immediately apparent that the Trade Mark is the phonetical equivalent of the words ‘no matter where’. In contrast, the NOMAD Mark is a familiar and well understood English word. The result is that the trade marks are conceptually distinct and it is highly unlikely that the ordinary Australian would confuse the two.

6. The Opponent is correct that the respective marks are intended for use in connection with clothing but this does not assist the Opponent. The potential purchasers of clothing are vast in number, covering all consumers in Australia. Although the fact that such a large class of people is involved in this assessment lends increased weight to the possibility for confusion to occur, clothing consumers tend to take time to assess a brand before purchase.[24]

   [24] Suzanne Grae Corporation Pty Ltd v Design West Mode Pty Ltd [2019] ATMO 92, [44] (Hearing Officer Cooper); Autumnpaper Ltd v Maya McQueen Pty Ltd [2016] ATMO 53 (Hearing Officer Richards); Hugo Boss AG v Tagmill Pty Ltd [2000] ATMO 23 (Hearing Officer Forno).

1. A consideration of deceptive similarity is not concerned with the mere possibility of deception or confusion between trade marks but a real, tangible danger of it occurring. After consideration of the differences in the respective marks, taken together, and even allowing for imperfect recollection, as a matter of impression and common sense they generate an overall visual, aural and conceptual impression of difference.

2. I am not satisfied that consumers viewing or hearing the NOMADAWHERE mark would be caused to wonder whether the Applicant’s Goods originate from the same trade source, or that the trade marks are otherwise connected in some way. I find that there does not exist a real, tangible danger of deception or confusion between the two.

3. As I have found that the NOMAD Mark is not substantially identical with or deceptively similar to the Trade Mark, I move then to consider whether the Trade Mark is substantially identical with or deceptively similar to the 524 and 592 Registrations. For the same reasons outlined above, and because the Trade Mark is in my opinion visually, aurally and conceptually much further removed from the 524 and 592 Registrations, I am satisfied that the Trade Mark is not substantially identical with or deceptively similar to either of the 524 or 592 Registrations.

Section 58A

1. Section 58A is only applicable where a prima facie ground of opposition has been established under s 44, and the Applicant has successfully overcome the ground of opposition by reliance on evidence of prior and continuous use under s 44(4).

2. The Opponent has failed to establish the ground under s 44. As such the ground under s 58A cannot be established.

Section 60

1. Section 60 provides:

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

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

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, 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:For priority date see section 12.

1. To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.

2. The SGP states:

   Trademark 2201524, 1192461 and Trademark 923592 have been in use since the year 2000. It is available in over 150 stores Australia wide and also available internationally. The Trademarks are a valuable asset to our company.

Reputation

1. The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[25]

   [25] [2000] FCA 1335, [81] (‘McCormick’).

2. Further, Kenny J stated in McCormick that:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product ... public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[26]

   [26] Ibid [86].

3. The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[27] Here, given the nature of the parties’ goods are clothing, it follows that the relevant market would include virtually the entire Australian population. Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[28]

   [27] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

   [28] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 176, [77] (Lockhart J).

4. In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:

   The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[29]

   [29] [2019] 142 IPR 275, [83] (O’Bryan J) (‘Rodney Jane’).

5. The Opponent relies on a reputation in the Opponent’s Marks as the basis for this ground. While the Opponent bases the s 60 ground on the Opponent’s Marks, notably, each is considered a separate trade mark for the purposes of s 60.[30]

   [30] Qantas Airways Ltd v Edwards (2016) 338 ALR 134, [160] (Yates J) (‘Qantas Airways’); Rodney Jane (n 29), [89].

6. Having considered the totality of the Opponent’s evidence, if any reputation exists, it will only exist in the 461 Mark as the evidence only shows that the 461 Mark has been used before the Relevant Date, albeit on limited items of clothing and bodyboards and accessories. There is no evidence of use of the 524 and 592 Marks before the Relevant Date and therefore I am satisfied there is no reputation in either of these two marks.

7. In respect of the evidence of use of the 461 Mark, much of the Opponent’s evidence is either dated between 2001 and 2009, undated or dated after the Relevant Date. The Opponent has not provided annual sales revenue or promotional expenditure figures, nor any other relevant metrics before the Relevant Date from which I can objectively assess the exposure and recognition of the 461 Mark. Therefore, the evidence is insufficient to allow me to determine the extent of the use and level of exposure of the 461 Mark in Australia and as a consequence, I am not satisfied that a reputation exists in the 461 Mark in Australia and, the ground under s 60 is not established.

Section 43

1. Section 43 provides:

   Trade mark likely to deceive or cause confusion

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

1. To establish this ground, the Opponent must show that there is a connotation within the Trade Mark and, because of this connotation, the use of the Trade Mark would be likely to deceive or cause confusion.

2. The SGP states:

   The trade mark is deceptive as it uses a word of which the applicant is not the registered owner. The intention of the opposed trademark NOMADAWHERE is for it to be broken down as three words “NOMAD A WHERE”. Using our registered trademark “NOMAD” suggests a connotation of an association to our business. Deception or confusion would arise in regards to the connection in the mind of the buying public.

3. The Applicant’s submissions do not expand on the SGP.

4. Section 43 of the Act is concerned with a connotation arising from the trade mark itself, not from a likelihood of deception or confusion arising as a result of similarities between a trade mark and another trade mark.[31] The particulars set out in the SGP do not suggest a connotation arising from the trade mark itself and in general are more relevant to s 60, which has been dealt with above.

   [31] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J); Winton Shire Council v Lomas [2002] FCA 288, [19] (Spender J); TGI Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720, [43] (Wilcox, Kiefel and Emmett JJ).

5. The evidence does not establish that the Trade Mark contains a connotation that is likely to deceive or cause confusion. Consequently, the s 43 ground of opposition is not established.

Decision

1. Section 55 relevantly provides:

   Decision

   (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.

2. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade mark application number 2277734 may proceed to registration not less than one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the Application should be in accordance with the Court’s order or direction.

Costs

1. Both parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

Anne Makrigiorgos

Hearing Officer

Delegate of the Registrar of Trade Marks

8 August 2024