Lisa Reynolds and Margaret Woods v Avatar Singh, Harkirat Singh, Aero Associates Pvt. Ltd and Aero Traders Pvt. Ltd
[2018] ATMO 160
•3 October 2018
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Lisa Reynolds and Margaret Woods to registration of trade mark application 1758051 (25) – W WOODS (Composite) - in the name of Avatar Singh, Harkirat Singh, Aero Associates Pvt. Ltd and Aero Traders Pvt. Ltd.
| Delegate: | Nicholas Smith |
| Decision: | 2018 ATMO 160 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 44, 58A, and 60 considered – none established – trade mark to proceed to registration |
Background
1. This decision concerns an opposition jointly brought by Lisa Reynolds and Margaret Woods (collectively ‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Avatar Singh, Harkirat Singh, Aero Associates Pvt. Ltd and Aero Traders Pvt. Ltd. (collectively ‘Applicant’):
Application Number:
1758051
Filing Date:
10 March 2016
Goods:
Class 25: Clothing, footwear, headgear
(‘Applicant’s Goods’)Trade Mark:
(‘Trade Mark’)
2. Following the advertisement on 4 August 2016 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 6 September 2016. The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 5 October 2016. The SGP raised grounds of opposition under ss 44, 58A and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 5 December 2016.
Evidence
3. The due date for the Opponent to file Evidence in Support of its opposition (‘EIS’) was 12 March 2017. On 9 March 2017 the Opponent applied for an extension of time in which to file its EIS. This application was rejected as not satisfying the requirements of Reg. 5.15 (2)(a) or Reg 5.15(2)(b) of the Trade Marks Regulations1995 (Cth). A further application for an extension of time was made on 31 March 2017 which enclosed a copy of the EIS. This application was also rejected as not satisfying the requirements of Reg. 5.15 (2)(a) or Reg 5.15(2)(b).
4. The Applicant did not file Evidence in Answer. On 22 September 2017 the Opponent sought to file Evidence in Reply (‘EIR’). Such evidence is not admissible as it was not in reply, the Applicant having filed no Evidence in Answer.
5. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. Neither party chose to avail themselves of these opportunities at that time. By letter issuing from IP Australia on 26 October 2017 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record. The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon. On 25 June 2018 the Opponent filed its submissions (‘Opponent’s Submissions’). The Opponent’s Submissions consist of 25 pages, 24 of which (pages 1-2 and 4-25) consist of evidence rather than submissions. I have not had regard to this material, being material filed out of time without explanation.
6. In the present matter the Opponent has made 3 attempts to file evidentiary material out of time, under various covers (EIS, EIR and as the Opponent’s Submissions). While the Registrar may consider any information that it considers appropriate pursuant to Reg. 21.15 of the of the Trade Marks Regulations1995 (Cth) there must be a compelling case for the Registrar to take information into account that is not part of properly filed evidence.[1] No such compelling case has been presented by the Opponent (nor has the Applicant had the opportunity to respond to such evidence) and I decline to have regard to this material.
[1]Optigen Ingredients Pty Ltd v Alltech, Inc [2016] ATMO 46, [14].
7. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs being the SGP and page 3 of the Opponent’s Submissions.
The Parties
8. Neither Party has provided any admissible evidence and, therefore, I am unable to provide any information about the parties other than what is set out in the Register.
9. The Opponent is the registered owner of the trade marks set out in Annex 1 below (‘Opponent’s Trade Marks’).
Grounds of Opposition, Onus and Standard of Proof
As indicated above in the SGP the Opponent nominated grounds of opposition under ss 44, 58A and 60 of the Act. To successfully oppose the application the Opponent needs to establish at least one of those grounds.
The onus of proof in an opposition rests upon the Opponent.[2] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is 10 March 2016 (‘relevant date’), being the filing date of the application in Australia.[4]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).
As the Opponent has filed no evidence I have no hesitation deciding that the Opponent has not discharged the onus on it and has consequently not to any extent established the ss 58A and 60 grounds of opposition nominated in the SGP since the these grounds of opposition requires evidence of use of a nominated mark.
Discussion
Section 44
The relevant provisions of the Act with respect to the ground of opposition pursuant to s 44 are reproduced below:
Section 44 - Identical etc. trade marks
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)it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b)the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
…
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.
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.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.
Section 10 - Definition of deceptively similar
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies:
· has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);
· is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and
· is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).
In the event that each of these requirements are satisfied by the Opponent it may be possible for the Registrar to accept the application if the Registrar is satisfied that there has been honest concurrent use of the Trade Mark, other circumstances exist which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark, pursuant to ss 44(3) and 44(4) of the Act, however as there is no evidence before me I do not need to consider these provisions.
The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks, however for the purposes of this ground I need only consider the Word Mark. The remaining Opponent’s Trade Marks contain stylisation not present in the Word Mark resulting in them being equal or less similar to the Trade Mark than the Word Mark. The Word Mark also covers a similar or broader range of goods and services covered by the remaining trade marks. If I find that the Word Mark does not satisfy the requirements of s 44, I would necessarily reach the same conclusion when considering the remaining Opponent’s Trade Marks.
The Word Mark is registered for goods including the Applicant’s Goods and has a priority date that is earlier than the priority date of the Trade Mark. The first and third requirements are satisfied.
Substantially identical or deceptively similar
I will now consider whether the Trade Mark is substantially identical to the Word Mark. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:
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]
[5] (1963) 109 CLR 407, [12].
The Trade Mark and the Word Mark are set out below:
On a side by side comparison there is a clear difference between the respective trade marks, including the addition of ‘Viktoria +’ in the Word Mark and the presence of the ‘W’ device in the Trade Mark. The differences between the respective trade marks are sufficient for me to conclude that the respective trade marks are not substantially identical. I move then to consider whether the Trade Mark and Word Mark are deceptively similar.
The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:
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 [trade mark].[6]
[6] Ibid [13].
Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:
Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.
First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[7] at [49]; Australian Woollen Mills[8] at 658.
Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[9] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.
Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].
Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.
Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[10] at 594 – 595.
Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.
Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.
Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.
Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[11]
[7] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.
[8] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.
[9] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.
[10] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
[11] [2012] FCA 1022, [38]-[46].
On balance, while the marks share the element ‘Woods’, I do not consider the marks to be deceptively similar. The Word Mark contains the prominent first elements ‘Viktoria +’ which provides a significant visual, aural and conceptual difference to the Trade Mark. The presence of the ‘W’ device in the Trade Mark further distinguishes the marks visually. In short, while the marks share the word ‘Woods’, they are pronounced differently, look different and are conceptually different, with the Word Mark evoking a partnership between two individuals being ‘Viktoria’ and ‘Woods’.
I find that as a result of the significant visual, aural and conceptual differences between the marks when considered as a whole, even allowing for imperfect recollection, it is unlikely that the use of the Trade Mark will deceive or cause confusion because of any similarity it has to the Word Mark. For the reasons set out in paragraph 16 above, I reach the same conclusion with respect to the remaining Opponent’s Trade Marks.
I find that the Opponent has failed to establish the ground of opposition under s 44.
Decision
The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade Mark application no. 1758051 may proceed to registration not less than one month from the date of this decision. If the Registrar has been 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.
Nicholas Smith
Hearing Officer
Oppositions and Hearings
3 October 2018
Annex 1
| Number | Trade Mark | Priority Date | Goods and Services |
| 1039562 | (‘Device Mark’) | 28 Jan 2005 | Class 25: Footwear, clothing and headgear |
| 1633050 | (‘Word Mark’) | 8 July 2014 | Class 14: Articles of jewellery; Boxes for jewellery; Brooches (jewellery); Chains (jewellery); Costume jewellery; Decorative articles (trinkets or jewellery) for personal use; Ear ornaments in the nature of jewellery; Fashion jewellery; Jewellery; Jewellery articles; Jewellery chain; Jewellery chain of precious metal for anklets; Jewellery chain of precious metal for bracelets; Jewellery chain of precious metal for necklaces; Jewellery coated with precious metal alloys; Jewellery coated with precious metals; Jewellery fashioned from non-precious metals; Jewellery for personal wear; Jewellery incorporating precious stones; Jewellery items; Jewellery watches; Necklaces (jewellery); Ornaments (jewellery); Rings (jewellery); Earrings |
| 1721592 | 15 September 2015 | Class 14: Articles of jewellery; Boxes for jewellery; Brooches (jewellery); Chains (jewellery); Costume jewellery; Decorative articles (trinkets or jewellery) for personal use; Ear ornaments in the nature of jewellery; Fashion jewellery; Jewellery; Jewellery articles; Jewellery chain; Jewellery chain of precious metal for anklets; Jewellery chain of precious metal for bracelets; Jewellery chain of precious metal for necklaces; Jewellery coated with precious metal alloys; Jewellery coated with precious metals; Jewellery fashioned from non-precious metals; Jewellery for personal wear; Jewellery incorporating precious stones; Jewellery items; Jewellery watches; Necklaces (jewellery); Ornaments (jewellery); Rings (jewellery); Earrings |
Key Legal Topics
Areas of Law
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Civil Procedure
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Commercial Law
Legal Concepts
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Abuse of Process
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Appeal
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Jurisdiction
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Res Judicata
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Stay of Proceedings
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