Look Cycle International v Look Bike Pty Ltd
[2017] ATMO 16
•24 February 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Look Cycle International to registration of trade mark application 1613147 (9) - LOOK - in the name of Look Bike Pty Ltd
| Delegate: | Michael Kirov |
| Representation: | Opponent: Simon Kneebone of Banki Haddock Fiora Applicant: Relied on written submissions |
| Decision: | 2017 ATMO 16 Opposition under s 52 of the Trade Marks Act 1995: s 44 and s 60 considered - parties’ trade marks substantially identical and/or deceptively similar – parties’ goods similar – deception or confusion likely because of reputation of Opponent’s trade marks - opposition established and registration refused |
Background
This is an opposition brought by Look Cycle International (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Look Bike Pty Ltd (“the Applicant”):
Application Number: 1613147
Filing Date: 20 March 2014
Goods:Class 9: Personal reflectors for use in road safety; safety apparatus for the prevention of accidents or injury, being reflective clothing and vests and reflective material for use on clothing and the like for safety purposes
(“the Applicant’s Goods”)
Trade Mark: LOOK (“the Opposed Mark”)
Acceptance of the opposed application for possible registration was advertised in the Australian Official Journal of Trade Marks on 22 January 2015. The Opponent filed a formal Notice of Intention to Oppose on 23 March 2015, followed by a Statement of Grounds and Particulars (“SGP”) on 23 April 2015 raising opposition grounds corresponding to ss 42(b), 44, 58, 60, 62(b) and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 11 May 2015 and the parties then filed evidence in support and evidence in answer as described below.
I heard the matter as a delegate of the Registrar of Trade Marks on 5 August 2016 in Canberra. Simon Kneebone of Banki Haddock Fiora appeared for the Opponent via video link from Sydney. Mr Kneebone’s oral submissions were supplemented by written submissions emailed to both the Applicant and me on 22 July. Umberto Buscema, the Applicant’s representative, had earlier advised via email and telephone that he would not attend, or be represented at, the hearing. He did however file written submissions on 27 July which I have taken into account in this decision.
Grounds of Opposition, Onus and Standard of Proof
As mentioned the SGP lists six grounds, although in his written submissions of 22 July 2016 Mr Kneebone indicated only those grounds based on ss 44, 58 and 60 were pressed. To succeed, the Opponent bears the onus of establishing at least one of these three grounds, with the relevant standard of proof required being the ordinary civil standard based on the balance of probabilities.[1] The relevant date for assessing the registrability of the Opposed Mark is the 20 March 2014 filing date of the opposed application (“the Filing Date”).[2]
[1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) 116 IPR 207 at [132]-[133] where the Full Federal Court (Besanko, Jagot & Edelman JJ) affirmed Gyles J’s approach.
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, Kitto J at 595.
The Evidence
For their evidence the parties rely on the following declarations made pursuant to the Act and reg. 21.6 of the Trade Marks Regulations 1995 (“the Regulations”):
Evidence in Support
▪ Mark Waldron made 10 July 2015, with Exhibits MW-1 to MW-12 (“Waldron”)
▪ Thierry Fournier made 16 July 2015, with Exhibits TF-1 to TF-18 (“Fournier”)
Evidence in Answer
▪ Umberto Buscema made 17 August 2015 (“Buscema”)
I will refer as necessary to the parties’ evidence in the discussion below, but for now note the following by way of background. Thierry Fournier is the CEO of the Opponent, which he explains was founded in France in 1951 and was originally a ski equipment manufacturer before also becoming “a manufacturer of bicycle frames, equipment, and apparel” some years later.[3] The ski and cycle related goods were and are sold under the trade marks shown below (collectively “the Opponent’s Marks”):
[3] My understanding of the Opponent’s detailed corporate history is incomplete, although this has not been relevant to my decision. In this regard references to “the Opponent” below include, as the case may be, its relevant subsidiaries, affiliates and licensees, as well as its predecessors in business.
The Opponent’s evidence also shows use of (and a registration for) the word “LOOK” in plain capital letters. Being effectively identical to the minimally stylised word “LOOK” shown at left above, I will refer to both word marks simply as the “the Opponent’s Word Mark”. I will refer to the composite mark shown at right above as the “the Opponent’s Logo Mark”
Mr Fournier says that:
8. [The Opponent] has used the trade mark LOOK[4] in relation to spectacles and apparel since the 1950s, that is, from the time the trade mark LOOK was first used in relation to ski equipment.
[4] I note that Mr Fournier apparently uses the term “the trade mark LOOK” throughout his declaration to refer to either or both of the Opponent’s Marks, without distinguishing between them.
In 1994 the Opponent sold the ski equipment side of its business to another French company, Rossignol, and I understand that ski-related goods bearing the Opponent’s Marks, including apparel, have been continuously produced by this company or its successors since then. I note in this context that a French company named Look Fixations SA is the current owner of Australian registrations 320480 (25) and 320482 (28) for the Opponent’s Word Mark and 475531 (25) and 475532 (28) for the Opponent’s Logo Mark, out of which four of the five registrations underpinning the Opponent’s s 44 ground were created following their partial assignment to the Opponent.
Mr Fournier says that since 1994 the Opponent itself has continued with the bicycle equipment side of the business. The Opponent is responsible for several innovations in the area, including the “clipless pedal” in 1984 (used by the victor in the 1985 Tour de France) and the carbon cycle frame in 1986, both sold under the Opponent’s Marks. As far as Australia is concerned, Mr Fournier says:
18. Clothing has been sold in Australia under the trade mark LOOK since the late 1970’s.
19. LOOK pedals have been sold in Australia since 1984. Cycles have been sold in Australia under the trade mark LOOK since 1986.
20. The trade mark LOOK has been prominently displayed in relation to the labelling used in relation to my company’s cycling and sports equipment, accessories and sportswear sold in Australia. Exhibited to me at the time of making this declaration and marked TF-10 [partly reproduced below] are copies of representative samples of apparel tags, as used in relation to LOOK apparel in Australia.
…
23. [The Opponent] sponsored the French track cycling team at the Sydney Olympic Games in 2000…[Pictures of the French team at the Sydney Olympics velodrome riding bicycles prominently bearing the Opponent’s Word Mark are exhibited.]
24. …
25. [The Opponent] has registered its trade mark[5] in Australia as follows:
[Brief details of registrations 475530 (12), 1449531 (25), 1449532 (28), 1449533 (25) and 1449534 (28), all for marks containing or consisting of the word “LOOK”, are then listed. These five registrations underpin the Opponent’s s 44 ground and are detailed further in the discussion below.]
[5] See previous footnote.
As mentioned, four of these five registrations, (those in Classes 25 and 28), were created following partial assignment of corresponding registrations now owned by Look Fixations SA. The essential difference in the specifications of the respective registrations is that those of Look Fixations SA are limited to clothing for skiing and equipment for skiing, while those of the Opponent are very broad, with the words “except for products relating to the practice of winter sport” simply added.
Mr Fournier goes on to say that the Opponent “has advertised and promoted its goods sold under the trade mark LOOK extensively throughout Australia since it has sold these in Australia” and that, “The sales of [the Opponent’s] goods sold under the trade mark LOOK in Australia have been substantial.” He includes tables “set[ting] out the value of [the Opponent’s] LOOK products sold to [the Opponent’s] Australian distributor for the years 2009 to 2014” broken down into the following categories: pedals, “spare parts”, frames, clothing, handlebars, cage bottles, “various accessories”, bottle holders, crank sets, chain rings, and bikes. Mr Fournier says that the total value of clothing sold over the period 2009 to 2012 inclusive[6] exceeded €127,000 (approximately A$181,000).[7]
[6] There were apparently no sales of clothing in Australia in 2013 and it is impossible to say from the year 2014 figures what proportion of the clothing sales took place before the Filing Date.
[7] I note that Mr Fournier does not claim these figures as confidential.
Mr Fournier concludes by saying:
33. The name of the Applicant for registration of the trade mark LOOK is Look Bike Enterprises Pty Limited. I believe that this clearly indicates that the goods covered by the trade mark application are intended to be used by cyclists or in relation to cycles or cycling related goods.
34. The mark LOOK which has been applied for by Look Bike Enterprises Pty Limited is identical to [the Opponent’s] trade mark LOOK. Because of the use of [the Opponent’s] trade mark LOOK in Australia I believe that if the mark which has been applied for is used in relation to cycles or for cycling related goods that consumers in the marketplace in Australia for these goods will consider that the goods are made by my company or are otherwise endorsed by it.
Mark Waldron is Managing Director of Groupe Sportif Pty Limited, which has been the Opponent’s authorised distributor in Australia since 1989. He says that:
5. For 15 years from 1989 my company manufactured clothing for the Australian market using the LOOK brand,[8] under licence from [the Opponent]. This clothing included jerseys, socks, footwear, and knicks (shorts) suitable for use by cyclists. Although it no longer manufactures these products in Australia, my company continues to import and sell these LOOK brand products throughout Australia.
6.-7. [Mr Waldron exhibits pages from his company’s website downloaded in 2012 and relevant pages from its 2004 “dealer book” (containing price lists for retailers), which show use of the Opponent’s Marks in relation to clothing for cyclists, socks, bicycle frames, numerous cycle spare parts and accessories and a range of bags including backpacks, wedge bags and wheel and frame bags.]
8. Throughout my company’s 26-year distribution of products under the LOOK brand we have sold directly to independent cycle retailers; I would estimate to between 500-700 stores. We currently have more than 900 clients on our books.
[8] Like Mr Fournier, Mr Waldron makes no distinction in his declaration between the Opponent’s Word Mark and the Opponent’s Logo Mark.
Mr Waldron provides annual figures[9] for the years 1999 to 2014 inclusive for sales of “LOOK branded products” in Australia, broken down under the headings “Clothing” and “[all] products”. The amounts are not insignificant on the face of it, totaling well over $21,000,000. He adds:
10. From 1990 through to 1999 the dollar value of sales of LOOK brand clothing in Australia was always in the range $250,000-$300,000 per annum. In those years my company produced LOOK clothing under license using local manufacturers.
11. My company’s manufactured LOOK clothing utilised 3M-brand reflective material to highlight the LOOK name. This reflective material was intended as a means of making the cyclist more visible to motorists, and thereby safer on the road.
12. LOOK brand cycle clothing has been made and continues to be made using contrasting coloured materials so as to enhance the wearer’s visibility to motorists, thereby improving their safety.
[9] As with Mr Fournier, Mr Waldron does not claim these figures as confidential.
Various exhibits to Waldron show use of the Opponent’s Word Mark in relation to clothing for cyclists sold in Australia over the years. A typical example of such use in 1997, taken from Exhibit MW-3 to Waldron, is shown below:
As to advertising and promoting the Opponent’s LOOK branded goods in Australia Mr Waldron says:
19. LOOK cycling equipment, accessories and clothing products have been advertised extensively throughout Australia for many years. My company’s annual advertising budget for the LOOK brand in Australia has always been $30,000 plus. We have advertised in all major sports publications in the cycling market including Ride magazine, Triathlete magazine, and Bicycling Australia. We have attended all major industry trade fairs, sponsored hundreds of events and during the period 1990 to 2000 LOOK was the major (title) sponsor of many Triathlon events around Australia.
…
21. My company has promoted LOOK branded products by advertising on the front cover of the Bicycling YearBook trade directory. This trade directory is distributed to all industry retailers and wholesalers by Bicycling Australia magazine. We have advertised on the front cover of this trade directory every year from 2000.
…
27. One of the major advertisements my company undertook for LOOK products was a billboard placed in the centre of Melbourne for the Tour de France in July/August 2006. This billboard exceeded 15 metres in height. Exhibited to me at the time of making this declaration and marked MW-12 are images showing this billboard.
Mr Waldron concludes by offering his view that:
31. The LOOK brand is one of the most well known cycling brands in the market. I consider as a result of my company’s sales and advertising of LOOK cycling equipment, accessories and clothing that this brand has become so well known in Australia that any third party using the trade mark LOOK in respect of these kinds of products must be associated in the minds of the public with the LOOK branded products my company has advertised and sold in Australia for many years.
As for the Applicant, Umberto Buscema identifies himself as its “owner,” which I understand to mean he is its sole or majority shareholder. His declaration in answer might be characterized as being in the nature of submissions rather than evidence as such. I find it somewhat difficult to follow in parts, but it is brief nevertheless and is set out in full below for the record:[10]
[10] I confirm I have retained Mr Buscema’s original numbering, punctuation and capitalisation.
I have been through this process before with [the Opponent], I have read their supporting evidence which stated they have used the word (LOOK). THIS DOES NOT GIVE THEM THE RIGHT OF OWNERSHIP; IT GIVES THEM OWNERSHIP IN THE CLASS THAT THEY ARE REGISTERED IN.
LOOK BIKE ENTERPRISES PTY LTD,[11] we will not tolerate from [the Opponent], that our company has MISLEAD and FALSELY REPRESENTED our PRODUCT and that it was made in BAD FAITH. The word (LOOK) will be used when it is REGISTERED IN CLASS: 9. WHICH IP AUSTRALIA HAS ACCEPTED.
[11] This company, also controlled by Mr Buscema as I understand it, originally filed the opposed application before assigning it to the Applicant in March 2016.
Application No: 1613147, is IDENTICAL or CLOSELY RELATED or CONFLICTING with trade mark no: 475530 class 12, 1449531 class 25, 1449532 class 28, 1449533 class 25, 1449534 class 28. TOTAL DIFFERENT SERVICE.
Application No:1613147, Trade Mark (LOOK), CLASS:9, Look Bike Enterprises Pty Ltd, we went through the right process to get this registered, IP AUSTRALIA HAS ACCEPPTED [sic] IT FOR REGISTRATION, LOOK BIKE ENTERPRISES PTY LTD HAS THE RIGHT TO OWN THE ABOVE T/M (LOOK) IN,
1. Class 9, Personal reflectors for use in road safety; safety apparatus for the prevention of accidents or injury; being reflective clothing and vest and reflective material for use on clothing and the like for safety purposes.
2. My argument that the respective goods are not closely related. THEY ARE,
3. The nature of the goods.
4. The purpose of the goods.
5. Trade channel through which the goods pass on their way to the market place.
6. Whether the goods are bought and sold in the same retail shops
7. They will be sold to bike, motorbike and other retail shops
8. There are many (LOOK) TM which indicates that the inclusion of the “SUFFIX”.
9. The word “LOOK” is sufficient to distinguish other “LOOK” MARKS.
10. “LOOK” is to DISTINGUISH MY GOODS, MY TRADE MARK & SERVICE THAT THE GOODS ARE IN, (CLASS: 9)
11. LOOK BIKE ENTERPRISES PTY LTD HAS ALL RIGHTS TO OWN TRADE MARK NO: 1613147, BY BEING APPROVED BY IP AUSTRALIA,
I note Mr Buscema refers in the first paragraph of his declaration to having “been through this process before with [the Opponent].” I believe he is most likely referring to an unsuccessful opposition by the Opponent to application (now registration) 1462874 for the composite mark shown below:
Registration 1462874, (which was filed in 2011 by Mr Buscema in his own name before being assigned to the Applicant in March 2016), covers the essentially identical goods in Class 9 as the currently opposed application. In a decision on the written record in 2013 a delegate of the Registrar of Trade Marks dismissed both of the Opponent’s grounds based on ss 44 and 60 of the Act.[12]
Discussion
Section 44
The ground based on s 44 of the Act is particularised in the SGP as follows:
The Trade Mark is substantially identical with or deceptively similar to one or more trade marks which have an earlier priority date and which are registered or seek registration for similar goods/services and/or closely related goods/services, including without limitation, the following application(s)/registration(s) – section 44.
Number
Trade Mark
Class
475530
12
1449531
25
1449532
LOOK
28
1449533
25
1449534
28
Only s 44(1) of the Act is relevant in this case and this is set out below:
Identical etc. trade marks
44(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Of the five registrations relied upon, those in Class 25 are on the face of it the most pertinent and relevant details of the two registrations in question (“the s 44 Registrations”) are set out below:
| Regn No. | Trade Mark | Priority Date | Goods |
| 1449531 | 23.05.78 | Class: 25 Clothes and shoes, notably mountain climbing and all other sports and helmets in this class (except for products relating to the practice of winter sport) | |
| 1449533 | Endorsement: Registration of this trade mark is limited to the colours shown in the representation attached to the application, namely: white, black, red, yellow, grey and blue | 19.05.87 | Class: 25 Garments in class 25 and shoes (except for products relating to the practice of winter sport); garments in class 25 and shoes for free-time activities(except for products relating to the practice of winter sport); and garments being sportswear namely: coats, pullovers, warm-up suits, gloves for cycling, mittens, mufflers, suits, bicycle suits, overalls, jump-suits, parkas, sweaters, caps, hats, headbands, knitted wear (except for products relating to the practice of winter sport); mountain climbing boots, bicycle boots, sport and leisure boots (but excluding boots for skiing), (except for products relating to the practice of winter sport) |
For s 44 to apply the priority dates of the registrations relied upon must be earlier than the 20 March 2014 filing date of the opposed application. This requirement is met by both of the s 44 Registrations.
Accordingly it is sufficient for success under s 44(1) if the Opponent establishes on the balance of probabilities that:
• the opposed application covers “similar goods”[13] to those covered by one or both of the s 44 Registrations; and
• the Opposed Mark is “substantially identical with, or “deceptively similar”[14] to, the Opponent’s Marks.
[13] As defined in s 14(1) of the Act.
[14] As defined in s 10 of the Act.
In Registrar of Trade Marks v Woolworths Ltd (“Woolworths”),[15] French J (as he then was) noted that it may not always be necessary to “dissect” these two issues into “discrete and independent conclusions.” Rather, he said, “In the end there is one practical judgment to be made,” namely is use of an opposed mark in a “normal and fair manner”[16] for an applicant’s goods “likely to deceive, or cause confusion”[17] among, a significant number of potential consumers of those goods. Given the particular matters raised by Mr Buscema in his evidence and submissions, nevertheless, I think it is useful in this case to examine each of the relevant factors in some detail before reaching the one practical judgment required.
[15] (1999) 45 IPR 411 at [40].
[16] Smith Hayden & Co. Ltd’s Application (1946) 63 RPC 97 (Ch D), cited in Woolworths at [50].
[17] As explained below these words are effectively imported into s 44 via s 10 of the Act.
I firstly note that an adverse finding under s 44 does not depend upon, or indeed of itself imply, any fault by an applicant. The significance of the terms “to deceive” and “to cause confusion” was explained by the Full Federal Court in The Coca-Cola Company v All-Fect Distributors Ltd as follows: [18]
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 mark as to be likely to deceive or cause confusion. No intention to deceive or cause confusion is required: Re Bali Brassiere Co Inc’s Registered Trade Mark (1968) 118 CLR 128 at 139. The distinction between “likely to deceive” and “likely to cause confusion” lies not in some element of culpability in the user to be inferred from the word “deceive”, but in the effect of the mark on prospective purchasers. In Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 423 Richardson J, in the New Zealand Court of Appeal, said:
“Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public … Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.
[18] (1999) 47 IPR 481 at [39] (Joint judgment by Black CJ, Sundberg and Finkelstein JJ).
As regards “confusion” in particular, (and as Mr Kneebone highlighted in his submissions), French J affirmed in Woolworths that:[19]
A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products … come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products … in question come from the same source.
[19] Op. cit. at [50], his Honour’s observation being a restatement of Kitto J’s words in Southern CrossRefrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5.
Moreover as far as “confusion” is concerned, Dodds-Streeton J highlighted in Tivo Inc v Vivo International Corporation Pty Ltd[20] that:
It is well established that trade marks may be deceptively similar for the purposes of ss 44(1) and (2) of the Act even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale.
[20] [2012] FCA 252 (19 March 2012) at [105]. Dodds-Streeton J’s ultimate finding in that case was upheld unanimously on appeal to the Full Federal Court (Keane CJ (as he then was), Nicholas and Dowsett JJ) in Vivo International Corporation Pty Ltd v Tivo Inc (2012) 99 IPR 1.
Bearing these principles in mind it is convenient in this case to begin with consideration of the similarity of the parties’ marks before discussing the similarity of their respective goods of interest.
Substantially Identical and Deceptively Similar Trade Marks
The term “substantially identical” is not defined in the Act. Rather, as Mr Kneebone noted, the generally accepted criteria for assessing substantial identity are as set out by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd[21] (“Shell”), where his Honour said at 528:
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 feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.
[21] (1963) 1B IPR 523.
In this case I have no hesitation in finding the Opposed Mark substantially identical to the Opponent’s Word Mark subject of registration 1449531 in Class 25. In this regard the Opposed Mark and the Opponent’s Word Mark are set out side by side below, from which it is immediately apparent they do not differ in any significant respect:
LOOK
This leaves the Opponent’s Logo Mark to consider in more detail. Again, the parties’ respective marks are set out side by side below:
LOOK
Clearly both marks share the word “LOOK” as an essential feature. On the face of it the element LOOK would undoubtedly be the element by which both marks would be recognized and recalled and it could accordingly arguably be said a “total impression of similarity…emerges from the comparison” of the parties’ marks. Nevertheless on what might be characterized as an “orthodox analysis,”[22] I consider the device element of the Opponent’s Logo Mark constitutes, to paraphrase s 7(1) of the Act, an “addition” that “substantially affect[s] the identity” of the unadorned trade mark LOOK in plain capital letters. The marks, then, are not in my view substantially identical.
[22] See for example Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 per Gummow J.
Nevertheless, I do consider the Opposed Mark is deceptively similar to the Opponent’s Logo Mark. As mentioned, s 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 making this assessment the marks under comparison should not be looked at side by side and the possible imperfect recollection of the Opponent’s Logo Mark by potential consumers of the Applicant’s Goods when they encounter the Opposed Mark should be given due weight. In this regard as Mr Kneebone again noted, guidance is also found in the judgment of Windeyer J in Shell, where his Honour said at 529:[23]
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 [Opponent’s Logo Mark] that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the [Opposed Mark].
[23] See also Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658.
As mentioned above, I consider that the word “LOOK” would undoubtedly be the means by which both marks would be recognized and recalled and, indeed, potential purchasers of the parties’ respective goods would on the face of it need to refer to both marks using this word. The Opponent’s s 44 ground will accordingly be established to the extent that the Applicant’s Goods are “similar” to those covered by one or both of the s 44 Registrations, to which question I now turn.
Similar Goods
“Similar goods” are defined in s 14(1) of the Act as follows:
Definition of similar goods…
(1) For the purposes of this Act, goods are similar to other goods:
(a) if they are the same as the other goods; or
(b) if they are of the same description as that of the other goods.
In his written submissions on behalf of the Applicant on this issue (which essentially echo the matters raised in his declaration reproduced in paragraph 19 above), Mr Buscema relies principally on the following advice he received (in relation to a different application) in the email reproduced below from an examiner at IP Australia some nine months before the opposed application was filed:
Based on this advice Mr Buscema’s submissions maintaining that the parties’ respective goods are not similar state:[24]
[24] With Mr Buscema’s original punctuation and capitalisation retained.
…we provide different services [sic], check LOOKBIKE.COM, look under high visibility tops archive.
I spoke to a trade mark examiner on Friday, 5 July 2013 10.53am, about my product, that I ride bikes and motorbikes and want to use High Reflective Material on the garments for, BIKES & MOTORBIKES, and he explained it in basic English what class it must be in for night use.
See [IP Australia’s email reproduced above] thanks.
[The Opponent],
As noted in paragraphs 11 and 12 of the Waldron Declaration[25] the Opponent’s Authorized distributor manufactured LOOK clothing which utilised 3M-brand reflective Material to highlight the LOOK name. This reflective material was intended as a means of making the cyclist more visible to motorists, and thereby safer on the road. Further, LOOK brand cycle clothing has been made using contrasting coloured materials so as to enhance the wearer’s visibility to motorists, thereby improving their safety. Examples of the clothing are shown at exhibits MW-3, MW-4 and MW-5 of the Waldron Declaration.
[The Opponent], There [sic] evidence using contrasting coloured materials to enhance the wearer’s visibility and as shown at exhibits MW-3, MW-4 and MW-5 of the Waldron Declaration, this product does not fall in CLASS (9). [The Opponent], THERE [sic] EVIDENCE BELONGS IN CLASS (25).
[The Opponent’s] PRODUCT IS NOT A HIGH VISIBILITY GARMENT FOR NIGHT USE, LOOK CYCLE INTERNATIONAL PRODUCT DOES NOT WORK FOR THE PURPOSE FOR THE SAFETY OF BIKE AND MOTORBIKE RIDERS FOR NIGHT USE.
Regarding style of the word LOOK, [the Applicant], we will be happy to change it to a different design.
[The Applicant’s] (PRODUCTS) ARE HIGH REFLECTIVE VISIBILITY CUSTOM CLOTHING FOR NIGHT USE, FOR THE SAFETY PURPOSE OF BIKE AND MOTORBIKE RIDERS, LIKE MYSELF, BEING VISIBLE TO ROAD USER’S, (SAFETY FIRST)
…
[The Applicant], With this submission and the EVIDENCE WE PROVIDED NOW AND PREVIOUSLY FOR THIS TRADE MARK and the GOOD FAITH OF THE COMPANY HAS, IP AUSTRALIA APPROVED APPLICATION NO: 1613147 FOR REGISTRATION, we do have the rights to be ownership of ABOVE TRADE MARK.
[25] These are reproduced at paragraph 15 above.
In the above submission Mr Buscema refers to the website < via which the Applicant’s Goods are offered for sale to the public. The homepage of this website as it appeared on 14 February 2017 is reproduced below:
I understand from his submission that Mr Buscema believes the Applicant’s Goods are not the same as, or of the same description as, the “clothes” covered by registration 1449531 or the “garments” covered by registration 1449533 because (1) they have been classified differently and (2) unlike the Opponent’s clothes or garments, the Applicant’s Goods are “high[ly] reflective visibility custom clothing for night use.” As explained below, however, neither of these things is determinative.
Where particular goods may be classified is not a relevant consideration when assessing whether those goods are “of the same description,” which formulation is, as described in Shanahan’s Australian Law of Trade Marks and Passing Off,[26] “a term of art, implying a relationship between goods such that they would be seen by purchasers as having the same trade origin if sold under deceptively similar marks.”[27] As the authors go on to explain of the term (with footnotes omitted):
The classification in Sch 1 to the [Regulations], while a useful administrative tool, does not determine this question; a single class may contain goods which are not of the same description while goods in one class may well be of the same description as goods in another class. The question is one of fact to be looked at from a business and commercial point of view in the light of principles laid down by the courts.
[26] ©2008 Lawbook Co., 4th ed. at [35.505].
[27] As authority the authors cite, inter alia, the decision of Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corp Pty Ltd (1993) 26 IPR 246, itself quoted with approval on this point by the Full Federal Court (Moore, Edmonds and Gilmour JJ) in E & J Gallo Winery v Lion Nathan (Aust) Pty Ltd) (2009) 175 FCR 386 (“Gallo”).
Nor is the fact that the Applicant’s Goods may be intended for night use and the Opponent’s clothes and garments arguably not so, determinative here. Clothing described as “sleepwear”, for example, has long been considered to be goods of the same description as clothing such as casual wear or, indeed, as swimwear. In this regard the Full Federal Court in MID Sydney Pty Ltd v Australian Tourism Co Ltd[28] referred with approval to the following words of Lord Evershed MR on the issue in Re Lyons & Co Ltd’s Application (my emphasis added):[29]
By the trade marks legislation parliament has provided that a registered proprietor of a mark, to be used by him in the course of trade, has a monopoly right to that mark as an indication of the trade source or origin of the goods… The question whether goods are or not goods of the same description must therefore (I think) be one to be answered in the context of that purpose; and having regard to that context, the cases cited…lend some support to the view that the phrase “goods of the same description” ought not to be given too restrictive a construction – not, at all events, so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other.
[28] (1998) 42 IPR 561.
[29] [1959] RPC 120 at 128. I note the Full Federal Court in Gallo also referred to Lord Evershed’s observation with approval.
Nor, I would add, is it relevant to the issue that the Applicant’s Goods may currently be sold, (if this be the case), only via the Applicant’s website and not through those retail outlets which currently carry the Opponent’s clothes and garments. In assessing whether, and if so to what extent, the parties’ goods are goods of the same description I must assume use of their respective trade marks in a “normal and fair manner” for the goods in question.[30] It is the statutory rights granted by registration that must be compared and not the actual use (or lack thereof) that may have been made of the respective marks in the past.
[30] Smith Hayden & Co. Ltd’s Application (1946) 63 RPC 97 (Ch D); Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411 at [50].
In light of Mr Buscema’s evidence and submissions I emphasise, too, that acceptance of the opposed application for registration following initial examination by IP Australia does not settle the issue. Were it otherwise, of course, there would be no need for the opposition process at all. As French J said in Woolworths:[31]
The mandatory language of s 33 [of the Act] and the legislative policy which informs it also suggest that the acceptance stage is not the time for the kind of detailed adversarial examination of the application that might emerge from a contested opposition.
[31] Op. cit. at [34].
As Mr Buscema does rightly acknowledge in his evidence in answer, what are relevant considerations in determining whether goods are of the same description, as the courts have consistently confirmed for many years, include the nature and purpose of the goods, whether they pass (or might potentially pass) through the same trade channels and whether they might be sold, possibly alongside each other, to the same class of consumers.[32] In this regard “No single consideration is conclusive in itself.”[33]
[32] See for example Jellinek’s Application (1946) 63 RPC 59.
[33] John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 at 372.
That said, in arguing that the Applicant’s Goods were goods of the same description as the clothes or garments covered by the s 44 Registrations Mr Kneebone submitted:
5.20 In Jellinek’s Application (1946) 63 RPC 59 at 70, Romer J proposed a three-fold test when assessing whether goods are similar to other goods, namely the nature and composition of the goods, the respective uses of the goods, and the trade channels through which the goods are bought and sold. No one factor was considered conclusive and it was not considered necessary for all three factors to apply.
5.21 The Applicant’s Goods are “Personal reflectors for use in road safety; safety apparatus for the prevention of accidents or injury, being reflective clothing and vests and reflective material for use on clothing and the like for safety purposes.” The Opponent submits that persons who are concerned to be visible to other road users include cyclists, joggers, and walkers. The Opponent submits that its Registrations 1449531 and 1449533 in Class 25 each include all types of clothing, including the kind of clothing and vests in the description of the Applicant’s Goods.
5.22 At paragraph 11 of the Waldron Declaration[34] Mr Waldron says that his company has manufactured LOOK clothing which utilised 3M brand reflective material to highlight the LOOK name, and this reflective material was intended as a means of making the cyclist wearing the clothing more visible to motorists, and thereby safer on the road.
5.23 The Opponent submits that the nature and composition of the goods, the respective uses and users of the goods, and the trade channels through which the goods are bought and sold are sufficiently similar that the goods covered by the [Opposed] Mark can be considered to be similar to the goods covered by the [s 44] Registrations in Class 25.
5.24 When asking a sports goods or sportswear clothing retailer for clothes or garments sold under the Registered Marks in Class 25 a customer would ask “do you sell LOOK clothing?” or “do you sell LOOK sportswear?” If such a customer was told “no, but we sell LOOK reflective clothing” or “no, but we sell LOOK reflective vests”, or “no, but we sell LOOK reflective material for use on clothing and reflective vests”, or “yes, we sell LOOK sportswear and reflective clothing and vests” there is a real likelihood that some people will wonder or be left in doubt about whether the respective goods come from the same source.
5.25 The Opponent submits that the word “LOOK” is the dominant visual feature of the Registered Marks in Class 25. None of the Registered Marks in Class 25 are represented in a highly stylized way. The Opponent’s Registration 1449531 consists of the word LOOK represented in bold capital letters. The Opponent’s Registration 1449533 consists of the word LOOK represented in bold capital letters and a graphic element. Where the graphic elements are present in the Opponent’s Registrations, visually they do not affect the strong identity of the word “LOOK” in any of the marks. They do not affect the phonetic identity of the word “LOOK”.
5.26 The [Opposed] Mark is also represented in bold capital letters. It has no other visual or phonetic features. The [Opposed] Mark is not represented in a distinctive way.
5.27 The Opponent submits that reflective clothing and vests and reflective material for use on clothing for safety purposes as covered by the [Opposed] Mark are likely to be sold in the same retail outlets as for sportswear and sports related clothing and other apparel and equipment. Such goods are all likely to be purchased by walkers, joggers, and cyclists, and other road users who need to be visible.
5.28 The Opponent submits that there is a real tangible danger of purchasers of sportswear and sports clothing being caused to wonder whether the Applicant’s reflective clothing and vests and reflective material for use on clothing and the like for safety purposes sold under the [Opposed] Mark are products sold under the Registered Marks in Class 25.
5.29 The Opponent submits that in this case the required threshold of there being a real tangible danger of deception or confusion occurring is reached. There is a likelihood that the sportswear purchasing public would see the Applicant’s Goods and the Class 25 goods covered by the Registered Marks as related and be at least caused to wonder whether they originate from the same entity.
[34] Again, this is reproduced at paragraph 15 above.
I agree with Mr Kneebone’s submission that the goods described in the specification of the opposed application as “safety apparatus for the prevention of accidents or injury, being reflective clothing and vests and reflective material for use on clothing and the like for safety purposes” are goods of the same description as the clothes and garments covered by the s 44 Registrations. Both parties’ goods are essentially of the same nature in that they are intended to be worn by the purchaser. Not only might the goods be offered for sale to the same class of purchaser, the parties’ evidence confirms they are both principally aimed at cyclists. While the goods in question may not currently be sold side by side or via the same outlets, there is nothing before me to indicate this would remain the case in future. Given the parties’ respective trade marks are identical or nearly identical I thus think it likely that a significant number of potential purchasers of the relevant goods would assume, or at the very least be caused to wonder whether, the goods in question came from the same source.
I accordingly find the s 44 ground established as far as the clothing and the reflective material for use on clothing covered by the opposed application are concerned.
Whether the “Personal reflectors for use in road safety” specified in the Applicant’s Goods are also goods of the same description as the clothes or garments covered by the s 44 Registrations is less straightforward. In this regard it is not entirely clear to me what the Applicant’s goods actually are, or indeed if they differ in any significant respect from the “reflective clothing” or “reflective material for use on clothing” already discussed. The closest (indeed only) arguably similar item falling in Class 9 listed in the International Classification of Goods and Services (Nice Classification) published by the World Intellectual Property Organisation,[35] which forms the basis for classification by IP Australia, is described as “Reflecting discs for wear, for the prevention of traffic accidents” (my emphasis added). On the other hand “reflectors” per se, such as reflectors one might attach to a bicycle or other vehicle, are otherwise classified in Class 11.
[35] Being the tenth edition, in force when the opposed application was filed.
Here the Applicant’s reflectors are specified as being “personal” as opposed to, I presume, reflectors for bicycles or other vehicles. Indeed according to Mr Buscema the Applicant apparently considered the goods in question were properly classified in Class 9 following the written advice received from IP Australia reproduced in paragraph 39 above that “clothing items for safety purposes, ie High visibility, …fall in class 9.” Since the only “reflectors” falling in Class 9 are “for wear” I thus assume the reflectors covered by the opposed application would be in the nature of arm bands or headbands or similar, which have a reflecting disc attached and which are intended to be worn by cyclists or similarly vulnerable road users.
For the reasons already discussed in connection with the Applicant’s clothing and reflective material for use on clothing I think relevant confusion amongst a significant number of potential purchasers of the Applicant’s “personal reflectors” is likely. I accordingly also find the s 44 ground established as far as the “Personal reflectors for use in road safety” covered by the opposed application are concerned.
The Opponent having established its s 44 ground in relation to all of the Applicant’s Goods it is not strictly necessary to discuss either of the other grounds pressed at the hearing. However in case I be wrong in my conclusion that all of the Applicant’s Goods are of the same description as the goods covered by the s 44 Registrations I will also consider the s 60 ground in this case.
Section 60
Section 60 of the Act is reproduced below:
Trade mark similar to trade mark that has acquired a reputation in Australia
60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) 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.
The ground based on s 60 is particularized in the SGP as follows:
The Opponent has adopted, is the owner of and has used, either by itself or through its subsidiaries, affiliates, or licensees, or by a predecessor or predecessors in business, the Opponent’s Trade Mark in Australia for many years in relation to, inter alia, the Opponent’s Goods including cycling and sports clothing since the late 1970s; cycle pedals since 1984; and cycles, and other cycle accessories, since 1986.
The Opponent’s use of the Opponent’s Trade Mark in relation to the Opponent’s Goods is ongoing in Australia.
The reputation held in Australia by the Opponent in the Opponent’s Trade Mark is such that the use of the opposed Trade Mark by the Applicant in relation to the goods of the Application is likely to deceive or cause confusion among consumers in the marketplace.
The particulars quoted above refer to “the Opponent’s Trade Mark” as having the requisite reputation upon which the s 60 ground is based. Earlier in the SGP the term “the Opponent’s Trade Mark” was defined simply as “the trade mark LOOK,” without any distinction being drawn between the Opponent’s Word Mark and the Opponent’s Logo Mark. The distinction is not however relevant in this case since the Opponent’s evidence shows that both trade marks were used concurrently in Australia prior to the Filing Date in relation to the Opponent’s goods.
As Mr Kneebone noted, Kenny J said in McCormick & Co. Inc. v McCormick:[36]
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.
[36] (2000) 51 IPR 102 at 128.
I summarized the Opponent’s evidence of continuous use of its trade marks in Australia dating back to the late 1970s in paragraphs 6 to 18 above. I confirm I am satisfied based on this use that each of the Opponent’s Marks is likely to have had the kind of reputation contemplated by s 60, particularly amongst cyclists who, it is apparent, constitute the principal intended market for the Opponent’s (indeed for both parties’) goods. I note too that Mr Buscema does not challenge the Opponent’s claimed reputation in his evidence or submissions.
As Mr Kneebone also pointed out in his submissions, in order to establish that deception or confusion would be likely pursuant to s 60 it is not necessary, (unlike the case with s 44 of the Act), for an opponent to establish that the relevant trade marks are “deceptively similar”, nor that the goods bearing those trade marks are “similar,” in the sense discussed earlier. Nevertheless if either of those things is established, this would obviously strengthen an opponent’s position. In the present matter the Opposed Mark, as I have found, is substantially identical to the Opponent’s Word Mark and is at least deceptively similar to the Opponent’s Logo Mark.
Moreover, as discussed, I do consider the Applicant’s Goods are “similar” to the Opponent’s Clothing in this case. Further, Mr Buscema confirms in his submissions that the Applicant’s “products” are aimed, inter alia, at the very same cohort of purchaser, being, as he puts it:
… HIGH REFLECTIVE VISIBILITY CUSTOM CLOTHING FOR NIGHT USE, FOR THE SAFETY PURPOSE OF BIKE AND MOTORBIKE RIDERS, LIKE MYSELF, BEING VISIBLE TO ROAD USER’S, (SAFETY FIRST) [sic]
I would add that the degree of inherent distinctiveness of the trade marks under consideration in relation to the relevant goods of the traders concerned may also be an important consideration. Here, on the face of it, the trade mark LOOK does have a relatively high degree of inherent distinctiveness in that regard.
Taking all these factors into account I am satisfied use of the Opposed Mark for the Applicant’s Goods would be likely to deceive, or cause confusion amongst, a significant number of people. The opposition ground based on s 60 of the Act is therefore established.
Section 58
The Opponent having established its s 44 and s 60 grounds it is not necessary to address its s 58 ground. Of course should the decision be appealed, it would always remain open to the Opponent to plead any ground it considered relevant in proceedings before the Court.
Decision
Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:
…the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in
respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the
application was opposed has been established.
Note: For limitations see section 6.
I have found the opposition to be successful on the grounds raised pursuant to ss 44 and 60 of the Act. I accordingly refuse application 1613147.
Costs
In the event of success Mr Kneebone requested an award of costs in the Opponent’s favour. As the successful party the Opponent is so entitled and I accordingly award costs against the Applicant as per Schedule 8 of the Regulations.
Michael Kirov
Hearing Officer
Trade Marks Hearings
24 February 2017
I have reached a different conclusion from the delegate in the present matter given the parties’ trade marks are essentially identical here and there is different evidence before me.
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