Limited Edition Surf Hardware Pty Ltd v TackX International Pty Ltd
[2023] ATMO 169
•30 October 2023
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 2018884 (class 25) – nomad design (stylised) - in the name of TackX International Pty Ltd
Delegate: | Benjamin Goldsworthy |
Representation: | Opponent: Mark Britten and Shane Britten Applicant: Kellie Stonier and Mitchel Bruce from Griffith Hack |
Decision: | 2023 ATMO 169 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds under ss 43, 44, 58A and 60 pursued – deceptively similar trade mark and similar goods – ss 44(3) and 44(4) not applicable – s 44 ground established – trade mark refused |
Background
On 26 June 2019 (‘Relevant Date’) TackX International Pty Ltd (‘Applicant’) filed trade mark application number 2018884 under the Trade Marks Act 1995 (Cth) (‘Act’),[1] details of which I reproduce below:
Trade mark:
(‘Trade Mark’)
Goods: Class 25: Apparel (clothing, footwear, headgear); clothing, including shirts, t-shirts, polo shirts, jackets, hooded sweatshirts, shorts, pants, jerseys; hats; scarves; tube scarves; headgear for wear (‘Applicant’s Goods’)
[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).
The Trade Mark was examined under s 31 and accepted under both ss 44(3)(a) and 44(4). The acceptance was advertised on 23 August 2021. On 24 August 2021, Limited Edition Surf Hardware Pty Ltd (‘Opponent’) filed a Notice of Intention to Oppose. On 26 August 2021 the Opponent filed its Statement of Grounds and Particulars (‘SGP’). On 17 November 2021 the Applicant filed its Notice of Intention to Defend.
On 3 December 2021, the Opponent filed its Evidence in Support (‘EIS’) consisting of a declaration of Mark Britten, director at the Opponent, dated 3 December 2021 (‘Britten-1’). On 4 March 2022, the Applicant filed its Evidence in Answer (‘EIA’) consisting of a declaration of Damon Olsen, director at the Applicant and Trafplan Pty Ltd, the Applicant’s predecessor in title,[2] with Annexures DO-A to DO-D, dated 4 March 2022 (‘Olsen-1’). On 22 March 2022, the Opponent filed its Evidence in Reply, consisting of a declaration of Mark Britten, with Annexures LE-A to LE-H, dated 22 March 2022 (‘Britten-2’).
[2] Throughout these reasons I refer to Trafplan Pty Ltd and TackX International Pty Ltd interchangeably as the ‘Applicant’.
Both parties requested to be heard and the Applicant proposed that there be a joint hearing of this matter with another opposition matter concerning the Opponent’s trade mark application 2201524. After taking submissions on the point from the parties, I decided that the oppositions should be heard together. I heard the matters on 1 August 2023 by teleconference. Mark Britten and Shane Britten appeared on behalf of the Opponent. Kellie Stonier from Griffith Hack appeared on behalf of the Applicant. Also in attendance was Mitch Bruce from Grifith Hack. I have now decided this matter in my capacity as a delegate of the Registrar of Trade Marks.
Evidence
Opponent's evidence
Britten-1 is short and makes general assertions, including:
Our “NOMAD” Trademarks, 923592 and 1192461, are available in 150+ surf, action sports and fishing retail stores across Australia. [The Applicant’s] intention for [the Trade Mark] is to sell to the same market in fishing retail stores that our “NOMAD” Trademarks, 923592 and 1192461, are available. The boundaries between surfing and fishing culture are quite fluid. These activities are not differentiated in any meaningful way. With the [Trade Mark] being deceptively similar the impression on consumers is that it is the same mark that we sell and have trademarked.
Britten-1 continues:
Our “NOMAD” Trademarks, Trademark 1192461 and Trademark 923592, have had continuous and concurrent use on clothing footwear and headgear since the year 2000. It has been used on many articles including t-shirts, long sleeve t-shirts, jumpers, jackets, footwear and various hats and head wear. Our “NOMAD” Trademarks are available in 150+ surf, action sports and fishing retail stores across Australia as well as available internationally.
Britten-1 otherwise asserts that, ‘the Nomad brand has built a strong reputation in Australia’ and that confusion would follow from use of the Trade Mark. There are no examples of the Opponent’s own use of trade marks containing the word ‘nomad’ or any sales information provided by Britten-1.
Britten-2 reflects that the Opponent has been using trade marks which contain the word ‘nomad’ since the early 2000s. It provides numerous examples of use of the various trade marks by the Opponent which contain the word ‘nomad’. This is by way of extracts of posts from the Opponent’s social media accounts, letters from 3 shops which state that they have stocked goods of the Opponent, without specification of the specific goods or the specific trade mark. Extracts of various magazines and catalogues are also provided, though without any indication of the rate of distribution. There are also extracts of the Applicant’s website An extract of a Wikipedia article defining ‘surfwear’ is also provided. I note that much of the evidence is undated and again no sales information or advertising expenditure is provided.
Applicant’s evidence
Olsen-1 provides background of the Applicant and the Trade Mark. The Applicant has run a chartered fishing service under the trade mark ‘Nomad Sportsfishing’. It has expanded into merchandise which includes various forms of clothing. Olsen-1 shows use by the Applicant of a number of different trade marks (including the Trade Mark) all of which include the word ‘nomad’ in relation to various forms of clothing and head wear as well as in relation to the aforementioned chartered fishing service. I now summarise the annexures to Olsen-1.
DO-A consists of extracts from Australian Trade Mark Search of registered trade marks 923592 and 1192461.[3]
[3] I extract registered trade mark 923592 at paragraph [17] of these reasons.
DO-B is a copy of a letter from the Applicant’s Trade Marks Attorney and a declaration of Mr Olsen dated 6 August 2021, with Annexures DO-1 to DO-8 (‘Olsen-2’). Olsen-2 was filed when the Trade Mark was examined and it declares, ‘[s]ince at least 2005’ the Applicant, ‘used various ‘NOMAD’ marks…’.[4] Olsen-2 adds that around 2007 the Applicant, ‘expanded its range to include polo shirts’ and in June 2007 to fleece jumpers.[5] I summarise the most relevant annexures to Olsen-2 from here.[6] The annexures to Olsen-2 include 18 invoices issued by the Applicant. All invoices are dated between 2006 and 2018 and list predominately t-shirts, polos, and jerseys. Many invoices do not specify any particular trade mark and others do not specify particular goods, referring only to ‘merchandise’. Some of these invoices themselves are affixed with variations of a trade mark containing the stylised words ‘nomad sportfishing adventures’, and several of the invoices appear to refer to that mark, e.g., ‘Nomad Sportfishing T-Shirt’. Concept artwork is also pictured for trade marks which contain the word ‘nomad’ dated in 2007. Stock numbers for 2007 for orders from suppliers of t-shirts, jerseys and polos are provided; these are low in quantity. Three price lists are also provided which Olsen-2 dates in 2013 (listing polos, t-shirts, fishing shirts, polar fleeces and hooded jumpers); 2015 (listing polos, t-shirts, fishing shirts, polar fleeces and caps); and 2017 (listing t-shirts, jerseys, hats and face masks). Extracts from the Applicant’s websites ( and (‘Applicant’s Websites’) show t-shirts, polos and jerseys with the word nomad and are dated in 2008, 2011, 2014 and 2018. None of these show the Trade Mark. Extracts of one of the Applicant’s Websites dated in 2021 shows fishing shirts, t-shirts, long-sleeve t-shirts and ‘headgear’ including a neck piece. All show a trade mark which includes the word ‘nomad’, some of which affix the Trade Mark. The annexures to Olsen-2 also include magazines which are declared to be from 2005, 2006, 2007 and two in 2008. One from 2008 shows hats, which appears to be the earliest use of a trade mark containing the word ‘nomad’ in relation to headwear by the Applicant. Others show t-shirts. It is not apparent from the text of these magazines that goods have been sold or whether they are worn, for example, as uniforms by employees as part of the Applicant’s chartered fishing services. In any case, the Trade Mark does not appear in any of these magazines – the stylised ‘nomad sportfishing adventures’ being the most common appearance therein.
[4] Olsen-2, [4] and [8].
[5] Olsen-2, [10].
[6] I note that the referencing for annexures to Olsen-2 has been removed so I do not use any in these reasons.
DO-C to Olsen-1 consists of results of searches conducted on the Australian Trade Mark Search for registered trade marks containing the word ‘nomad’. DO-D consists of two undated extracts from unknown sources which provide definitions for the word ‘surfwear’.
Onus and grounds
The Opponent has the onus of establishing at least one of the nominated grounds of opposition.[7] The standard of proof is the ordinary civil standard of the balance of probabilities.[8]
[7] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[8] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
The SGP nominates grounds under ss 43, 58A, 44 and 60. I have decided this opposition entirely under s 44, without applying ss 44(3) or 44(4), so it has not been necessary for me to explore ss 43, 58A and 60.
Preliminary issue
The Applicant submits that much of the contents of Britten-2 is not properly in reply and so it is material which was filed out of time.[9] However, regs 21.15 and 21.19 allow me to give weight to the material where appropriate and various considerations are applicable in deciding whether to consider such evidence.[10] For reasons which follow, I have found that s 44 has been established and Britten-2 does not change the outcome. Therefore, I need not decide this issue.
[9] Regulation 5.15.
[10] Trade Marks Manual of Practice and Procedure Part 51.2.5; Trek Bicycle Corporation v Red Hawk Holdings Pty Ltd [2019] ATMO 88, [38] (Hearing Officer Richards).
Section 44
Section 44 relevantly provides:
44 Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
…
(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.
Note: For limitations see section 6.
(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.
The Opponent relies on registered trade mark 1192461 and registered trade mark 923592 (‘923592’) as the basis for its s 44 ground of opposition. For reasons that follow, I have only had to consider in detail 923592. Trade Mark 923592 was the subject of an opposed removal application. On 4 October 2023, I decided that matter, removing certain goods from the specification of 923592.[11] In deciding the current matter, I have not found it necessary to consider the goods that are earmarked for removal from 923592. This is because the goods in respect of which 923592 is to remain registered are similar to the entirety of the Applicant’s Goods.[12] As such, considering the goods earmarked for removal would not alter the outcome of the current matter. I reproduce the pertinent details of 923592 below:
Owners: Mark Britten and Shane Britten
Priority date: 15 August 2002
Specification of Goods: Class 25: surf wear being hooded jumpers and t-shirts (‘Opponent’s Goods’)
Trade Mark:
[11] Limited Edition Surf Hardware Pty Ltd v TackX International Pty Ltd [2023] ATMO 150 (Hearing Officer Goldsworthy).
[12] Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44, [177] (Yates, Stewart and Rofe JJ).
923592 has a priority date which is earlier than the Relevant Date and is in the names of persons other than the Applicant. The points of contention are (1) whether the Applicant’s Goods are similar to the Opponent’s Goods; and (2) whether the Trade Mark is substantially identical with, or deceptively similar to, 923592.
Comparison of goods
I now consider whether the Applicant’s Goods are ‘similar’ to any of the goods of 923592. The word ‘similar’ is defined as (a) the same as the goods of 923592; (b) of the same description as the goods of 923592.[13] I should first construe the respective contents of the language in the Applicant’s Goods and the goods of 923592. The question is assessed from a business and commercial point of view.[14] The principal factors in determining whether goods are of the same description are: (1) the nature of the goods, including their origin and characteristics; (2) the uses, including their purpose and (3) the trade channels through which the goods are bought and sold.[15]
[13] Section 14(1).
[14] Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44, [132] (Yates, Stewart and Rofe JJ).
[15] Re Jellinek’s Application [1946] RPC 59 (Romer J) (‘Re Jellinek’s Application’); Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808, [280] and [286] (Burley J).
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (‘Southern Cross’)[16] the High Court approvingly referred to the following statement in Re an Application by John Crowther & Sons (Milnsbridge) Ltd for deciding whether goods are of the same description:
In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade.[17]
[16] [1954] HCA 82 (Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ) (‘Southern Cross’).
[17] Re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, 372 (Assistant-Comptroller Chisolm).
I consider, of the Applicant’s Goods, apparel (clothing); clothing, including shirts, t-shirts, polo shirts, jackets, hooded sweatshirts, shorts, pants, jerseys; scarves; tube scarves are all plainly forms of clothing which are either the same as, or of the same description as, the Opponent’s Goods.
This leaves, of the Applicant’s Goods, apparel (footwear, headgear); hats; headgear for wear to be compared with surf wear being hooded jumpers and t-shirts. The Applicant submits these are not similar and it relies on Taylor v Killer Queen, LLC (No 5) (‘Killer Queen’)[18] where the court considered clothing to not be the same, or of the same description, as footwear or headwear. I recall the words of Burley J in Goodman Fielder Pte Ltd v Conga Foods Pty Ltd where his honour addressed the issue of examining the outcomes of past decisions when considering whether goods are similar stating that, ‘… looking at the outcome of other cases on their facts is unlikely to be of great assistance. That is particularly because of the challenge to find consistency in those decisions absent a detailed knowledge of the evidence in each case...’[19] As such, decisions comparing footwear and clothing, including some concerning the narrower comparison of clothing being sportswear with footwear, have depended on the evidence and the specific statements of goods for each trade mark.[20]
[18] [2023] FCA 364, [352]-[364] (Markovic J) (‘Killer Queen’).
[19] Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808, [282] (Burley J) citing Robert Burrell and Michael Handler, Australian Trade Mark Law (2nd ed, Oxford University Press, 2016) 239-240; and Mark Davison and Ian Horak, Shanahan’s Australian Law of Trade Marks and Passing Off (6e, TR, 2016) [35.2010-35.2035].
[20]Deckers Outdoor Corp v GHN Trading Pty Ltd [2021] ATMO 151, [17] (Hearing Officer Barbey); Hugh Caswell Dinning v New Balance Athletic Shoe Inc [1992] ATMO 54 (Hearing Officer Homann). In J Darnell [1957] RPC 177 the UK Assistant-Comptroller compared ‘boots, shoes and slippers’ and ‘stockings and socks’. The nature and use of the goods were not there regarded as of great use to the question. The trade channels were relevant, though the evidence about this factor was lacking for the respective goods. See also, C and J Clark Ltd’s Application (1982) IPD 5073 (UK Reg). In Lavelur’s Application (1989) AIPC 50-579 (Assistant-Registrar of Trade Marks) ‘footwear, including boots, shoes and slippers’ were considered similar with clothing, applying the relevant test in Re Jellinek’s Application (n 15).
On my assessment, apparel (footwear, headgear); hats; headgear for wear in the present context is of the same description as surf wear being t-shirts and hooded jumpers. Consumers and traders are accustomed to footwear and headgear on the one hand and hooded jumpers and t-shirts on the other coming from the same trade source, and being sold under the same (or similar) trade mark. This is because such goods often follow the same trade channels. I am aware that, for example, many surf wear stores and manufacturers offer headgear, footwear and clothing and under the same trade mark. Despite being worn on different (albeit overlapping) areas of the body, these goods are all worn on the body and end-market consumers, are likely to expect a similar trade mark on each signifies to them a single trade source.
In Killer Queen the focus was on expert evidence from two witnesses, much of it concerned with evidence specific to department stores and upstream specialist buyers for department stores. The evidence focused on manufacturing processes, the nature of the goods, placement of goods in department stores and margin structures. Much of this evidence is from the perspective of an upstream purchasing manager. The specific Applicant’s Goods and Opponent’s Goods were not a focus of the evidence given and relied upon in Killer Queen. The differences between, for example, a department store and a surf wear store are manifest. As such I consider the circumstances and evidence before me to be markedly different to those in Killer Queen.
Applying the principles endorsed by the High Court in Southern Cross, I am satisfied that apparel (footwear, headgear); hats; headgear for wear are of the same description as surf wear being hooded jumpers and t-shirts.
Accordingly, all of the Applicant’s Goods are similar to the Opponent’s Goods.
Comparison of Trade Marks
Section 10 provides that a trade mark is 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 & Co Ltd (‘Australian Woollen Mills’), Dixon and McTiernan JJ explained:
… in the end, it becomes a question of fact for the court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained… …In deciding this question, the marks ought not, of course, 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 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, then similarities both of sound and of meaning may play an important part.[21]
[21] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).
I must compare the respective trade marks as wholes,[22] with regard to essential or distinguishing features,[23] and consider them visually and aurally, and in the context of the relevant surrounding circumstances.[24] Actual reputation of a trade mark or an owner is not relevant. Rather, of importance is the effect and meaning of the trade marks,[25] especially their effect or impression produced on the mind of ordinary consumers.[26] I should account for imperfect recollection of those ordinary consumers and the addition of even a single word can in the right circumstances relevantly differentiate one remembered mark from another in the minds of those consumers.[27] Ultimately, what is required is a real tangible danger of confusion.[28] That is, ‘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’.[29] Actual instances of deception or confusion are of great weight though not required.[30] In this matter I am mindful of the comments of French J in in Registrar of Trade Marks v Woolworths that there should be one practical judgment and the above issues should not necessarily be considered in isolation.[31]
[22] Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50] (French J) (‘Woolworths’). See also, Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901, [78] (Bennett J).
[23] Crazy Ron’s Communications v Mobileworld Communications [2004] FCAFC 196, [77]-[88] (Moore, Sackville and Emmett JJ).
[24] New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd (1989) 86 ALR 549, 589 (Gummow J).
[25] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [51] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (‘Self Care’).
[26] Ibid [51] and [67], citing Australian Woollen Mills (n 21).
[27] Jockey International Inc v Darren Wilkinson [2010] ATMO 22 (Hearing Officer Spence).
[28] Southern Cross (n 16) 595 (Kitto J); Woolworths (n 22) [50] (French J); Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).
[29] Woolworths (n 22) [50] (French J); Southern Cross (n 16) 594-595. See also, Australian Woollen Mills (n 21) 658.
[30] Self Care (n 25) [29]; Australian Woollen Mills (n 21) 658 (Dixon and McTiernan JJ).
[31] Woolworths (n 22) [40].
The shared element for both trade marks is the word ‘nomad’. It is the first word in each of the marks, which is ‘as a rule, far the most important for the purpose of distinction.’[32] This shared word is well adapted to distinguish all of the goods in question, which further tends toward a finding of deceptive similarity. When a trade mark contains both a device and a memorable word, customers will more readily refer to the word rather than attempt to remember or describe the detail of the device element. The word ‘nomad’ is the sole textual element of 923592, and as such is the main way ordinary consumers would recall that trade mark. With that imperfect recollection in mind, a consumer seeing the Trade Mark in relation to similar goods would in my estimation be caused to wonder whether those goods come from the same source as goods offered under 923592. This is because consumers are likely to view the word ‘design’ as being of a descriptive character for these types of goods, being a term commonly used for fashion items. Thus, the meaning of the marks is the same or very similar. That is, for 923592, a person who moves from place to place and for the Trade Mark, that same kind of person who has designed the goods in question. The different stylisations of the text and background in 923592 and the Trade Mark are, given the similarity of goods and of the textual elements, of little significance. As such I find that the Trade Mark is deceptively similar to 923592.
[32] Re London Lubricants (1920) Ltd (1925) 42 RPC 264, 279 (Sargant LJ).
Accordingly, I am satisfied that the s 44(1) ground of opposition is in principle established. This provision is, however, subject to ss 44(3)-(4) which I will now turn to.
Section 44(4)
The Applicant submits that s 44(4) is applicable. Section 44(4) provides that I may not reject the Trade Mark if I am satisfied that the Applicant has continuously used the Trade Mark in respect of the Applicant’s Goods beginning before 15 August 2002, the priority date of 923592.
None of the evidence shows use of any trade mark by the Applicant before 2005 for any goods. The Applicant’s use of any trade mark for any goods is plainly after 15 August 2002. Therefore, s 44(4) is not applicable.
Section 44(3)
The Applicant also submits s 44(3)(a) should apply, based on evidence of honest concurrent use. The onus for establishing honest concurrent use is with the Applicant[33] and reliance should be made on circumstances before the Relevant Date to establish s 44(3)(a).[34] The factors usually considered include the honesty of adoption and use; the extent of use in terms of time, geographical area, and sales volume and value; the degree of likely confusion; the manner of use; the relative inconvenience caused by allowing or denying the registration of the Trade Mark; and any instances of actual confusion.[35]
[33] Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100, [85], number (5) (Reeves, Jagot and Rangiah JJ); Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490, [186] (Gleeson J) (‘Trident’); Hills Industries Limited v Bitek Pty Ltd (Includes Corrigendum dated 4 May 2011) [2011] FCA 94, [147] (Lander J) (‘Hills Industries’); Telstra (fn 2) [238] (Besanko, Jagot and Edelman JJ).
[34] Hills Industries ibid [177] (Lander J); Trident ibid [186] (Gleeson J).
[35] Alex Pirie & Sons Ltd’s Application (1933) 50 RPC 147, 159-160 (Lord Tomlin); Re Fitton’s Application (1949) 66 RPC 110, 112 (UK Reg) which have been widely adopted and applied in Australia.
Crucially important for s 44(3)(a) is that the use relied upon is honest use. Olsen-1 does not explain how the Trade Mark was conceived. However, it appears that the Applicant’s business began as a chartered fishing service under a trade mark which included the word ‘nomad’, later adding the sale of merchandise, including various forms of clothing and headwear. No indication of the date of adoption has been provided nor any information about any searches conducted by the Applicant’s predecessor in title before adoption other than that, ‘prior to filing [the application for the Trade Mark], the Applicant made the commercial decision to use the [Trade Mark] in Australia for certain apparel goods and it filed the Application on that basis’. There is no information in the EIA about whether the Applicant was aware of 923592 at the time of adoption of the Trade Mark. Given the lack of any evidence about the circumstances for the conception or adoption of the Trade Mark, I am not satisfied that the use on which the Applicant seeks to rely was ‘honest’.
There are further issues with the evidence concerning honest concurrent use. The Applicant offers no sales figures as an indication of the level of any alleged honest concurrent use. There is limited if any evidence of use of the Trade Mark in relation to hats, scarves, tube scarves and headgear for wear shown in the invoices and the extracts the Applicant’s Websites. There is no evidence of use of the Trade Mark in relation to footwear. Even had I been satisfied of the honesty of the Applicant’s historical use of the Trade Marks, I would have considered the evidence insufficient to apply s 44(3)(a) in relation to those goods.
In contrast, the Applicant has shown use of trade marks which include the word ‘nomad’ for a period of over 10 years for various shirts, such as t-shirts, polar fleeces and polo shirts. However, the volume of sales for these and the other Applicant’s Goods (being apparel (clothing); clothing, including shirts, t-shirts, polo shirts, jackets, hooded sweatshirts, shorts, pants, jerseys) is only indicated in the invoices, and this volume is insignificant. For many of the examples among these invoices, it was not clear how or whether the Trade Mark or anything nearly resembling it appeared on or in relation to the goods in question. Many of the invoices only demonstrate use of a trade mark containing the word ‘nomad’ in relation to possibly a retail service or chartered fishing services and not in relation to any of the Applicant’s Goods. The earliest appearance of the actual Trade Mark as it is presented in this application, or a trade mark with additions or alterations that do not substantially affect its identity,[36] appears to have been on the Applicant’s Websites in 2021, which is after the Relevant Date. This raises a significant question over the extent of time for which concurrent use is claimed by the Applicant. That is, there may in fact be none.
[36] Section 7(1).
As to the relative inconvenience, there is no indication from either party about the volume of their trade or level of reputation or as a component of their respective businesses. 923592 has, however, been registered from well before the Relevant Date and before the documented adoption and use of any trade mark by the Applicant, let alone the Trade Mark itself. The limited extent of use shown in the Applicant’s evidence suggests there has been little opportunity for possible confusion among consumers. However, given the similarity between the Trade Mark and 923592 discussed above, given more extensive use confusion would be likely.
After assessing the evidence, I am not satisfied that s 44(3)(a) ought to apply. There were no submissions in respect of s 44(3)(b) and there is no material before me to suggest that it is appropriate to apply s 44(3)(b).
Accordingly, the s 44 ground of opposition is established.
Decision
Section 55 relevantly provides:
55 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.
The Opponent has established a ground of opposition under s 44 and I refuse to register trade mark application 2018884.
Costs
The Opponent has been successful. Costs ordinarily follow the event. There being no reason to vary this, I award costs against the Applicant.
Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
30 October 2023
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