M Webster Holdings Pty Ltd vPeter Morrissey Pty Ltd

[2011] ATMO 23

TRADE MARKS ACT 1995

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

Re:Opposition by M Webster Holdings Pty Ltd to registration of trade mark applications 1247002, 1278308, 1278314 (3, 8, 11, 19, 20, 21, 25, 27, 33, 42) - PETER MORRISSEY - filed in the name of Peter Morrissey Pty Ltd.

Delegate:

Bianca Irgang

Representation:

Opponent: Mr Michael Hall of counsel, instructed by Spruson and Ferguson

Applicant: Ms Jane Rawlings of counsel, instructed by Sparke Helmore Lawyers

Decision:

2011 ATMO 23

Section 52 opposition: sections 42, 44, 60 and 62A pressed – s 60 ground of opposition established since use of the applicant’s trade marks is likely to cause deception or confusion - registrations refused. Costs awarded against the applicant.

Background

1. Peter Morrissey Pty Ltd (‘the applicant’), filed trade mark application numbers 1247002, 1278308 and 1278314 on 18 June 2008 and 18 December 2008 in a total of 10 classes of the International Classification of Goods and Services. Current details of the applications are set out below.

Trade mark:  Peter Morrissey

Trade mark application:              1247002

Filing Date:  18 June 2008

Specification:  Class 3: Beauty products, cosmetics, hair products (non-medicated) skin products, soaps, antiperspirants, bath products (non-medicated), facial care products, moisturisers (non-medicated), nail preparations (non-medicated), oils for cosmetic use, sun skin care products, shaving products

Class 8:Tableware (knives, forks, spoons); cutlery; bottle openers (hand-operated); knives

Class 11:Lamps, lights, ceiling lights, wall lights, roof lights, spot lights, electric lights, lights for festive decoration, night lights

Class 19:Flooring made of wood, flooring made of cork, flooring made of plastic, flooring made of tiles, non-metallic flooring

Class 20:Furniture, mirrors, beds, wardrobes, chairs, sofas, lounges, couches, sofa beds, storage boxes (furniture), desks, drawers, boxes made of wood, boxes made of plastic, tables, side tables, stools

Class 21: Barware including cocktail shakers, ice buckets, corkscrews, decanters; tableware of bone china, porcelain, stoneware; crockery; glassware; ornaments of china, glass, crystal, ceramic, terracotta; flatware; bottle openers; table accessories including cutlery holders, cutlery trays, placemats (not of paper or textiles), candle holders, condiment dishes and dispensers, centrepieces not in other classes

Class 27: Floor coverings, rugs, carpets, bath mats, mats, wall coverings

Class 33: Alcohol for drinking, alcoholic beverages, alcoholic preparations for making beverages, pre-mixed alcoholic drinks

Class 42:Design services

Trade mark:  Peter Morrissey

Trade mark application:              1278308

Filing Date:  18 December 2008

Specification:  Class 25: Women's, men's, boy's and girl's apparel including shirts, blouses, jackets, bathing suits, pants, shorts, capes, jeans, suits, dinner jackets, ties, stockings, dresses, beach and swimming cover-ups, beachwear and swimwear, tank tops, blazers, socks, gloves, scarves, shawls, sports jackets; rainwear including raincoats; footwear including boots, shoes, slippers, sneakers and sports shoes; men's and boy's underwear including briefs, boxers, athletic underwear, T-shirts, tank tops, undershirts, basic underwear; sleepwear including knitted and woven sleepwear, sleep shirts, pyjama tops, pyjama bottoms; loungewear including robes; women's and girl's underwear including intimate apparel, body wear, bras, garter belts, body stockings, control briefs, control hipsters, bra slips, camisoles, bustiers, leotards and unitards, bikinis, hipsters, briefs, slips, camisole slips, chemise slips, maternity slips, chemises, teddies, bralettes; sleepwear and bodywear including nightgowns, night shirts, pyjamas, short pyjamas, babydoll pyjamas, T-shirt pyjamas, sleep shorts, bed jackets, bathrobes, dressing gowns, housecoats, bra tops, crop tops, leggings; uniforms and sportswear

Endorsements:  PETER MORRISSEY has consented to the use of his name as a trade mark.

Trade mark:  

Trade mark application:              1278314

Filing Date:  18 December 2008

Specification:  Class 3: Beauty products, cosmetics, hair products (non-medicated) skin products, soaps, antiperspirants, bath products (non-medicated), facial care products, moisturisers (non-medicated), nail preparations (non-medicated), oils for cosmetic use, sun skin care products, shaving products

Class 8:Tableware (knives, forks, spoons); cutlery; bottle openers (hand-operated); knives

Class 11:Lamps, lights, ceiling lights, wall lights, roof lights, spot lights, electric lights, lights for festive decoration, night lights

Class 19:Flooring made of wood, flooring made of cork, flooring made or plastic, flooring made of tiles, non-metallic flooring

Class 20: Furniture, mirrors, beds, wardrobes, chairs, sofas, lounges, couches, sofa beds, storage boxes (furniture), desks, drawers, boxes made of wood, boxes made of plastic, tables, side tables, stools

Class 21:Barware including cocktail shakers, ice buckets, corkscrews, decanters; tableware of bone china, porcelain, stoneware; crockery; glassware; ornaments of china, glass, crystal, ceramic, terracotta; flatware; bottle openers; table accessories including cutlery holders, cutlery trays, placemats (not of paper or textiles), candle holders, condiment dishes and dispensers, centrepieces not in other classes

Class 25:Womens, mens, boys and girls apparel including shirts, blouses, jackets, bathing suits, pants, shorts, capes, jeans, suits, dinner jackets, ties, stockings, dresses, beach and swimming cover-ups, beachwear and swimwear, tank tops, blazers, socks, gloves, scarves, shawls, sports jackets; rainwear including raincoats; footwear including boots, shoes, slippers, sneakers and sports shoes; mens and boys underwear including briefs, boxers, athletic underwear, t-shirts, tank tops, undershirts, basic underwear; sleepwear including knitted and woven sleepwear, sleep shirts, pyjama tops, pyjama bottoms; loungewear including robes; womens and girls underwear including intimate apparel, body wear, bras, garter belts, body stockings, control briefs, control hipsters, bra slips, camisoles, bustiers, leotards and unitards, bikinis, hipsters, briefs, slips, camisole slips, chemise slips, maternity slips, chemises, teddies, bralettes; sleepwear and bodywear including nightgowns, night shirts, pyjamas, short pyjamas, babydoll pyjamas, t-shirt pyjamas, sleep shorts, bed jackets, bathrobes, dressing gowns, housecoats, bra tops, crop tops, leggings; uniforms and sportswear

Class 27:Floor coverings, rugs, carpets, bath mats, mats, wall coverings

Class 33:Alcohol for drinking, alcoholic beverages, alcoholic preparations for making beverages, pre-mixed alcoholic drinks

Class 42:Design services

Endorsements:  PETER MORRISSEY has consented to the use of his name as a trade mark.

1. Hereafter I refer to these three trade marks as the ‘PETER MORRISSEY trade marks’ and to the goods and services covered by the trade mark applications as ‘the goods and services’.

2. The applications were accepted for possible registration and the official notices of acceptance were published in the Official Journal dated 16 October 2008 and 23 April 2009. Subsequently M Webster Holdings Pty Ltd (‘the opponent’) filed Notices of Opposition (‘the Notices’) to registration of the applications. Thereafter the opponent served and filed evidence in accord with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

3. I heard the matter in Sydney as a delegate of the Registrar of Trade Marks on 15 September 2010. The opponent was represented by Mr Michael Hall of counsel instructed by Spruson and Ferguson. The applicant was represented by Ms Jane Rawlings of counsel instructed by Sparke Helmore Lawyers. Both parties made oral and written submissions.

Grounds of Opposition

1. The Notice nominated most of the grounds of opposition under the Trade Marks Act 1995 (‘the Act’).  However, only those grounds under subsections 42, 44, 60 and 62A were pursued at the hearing.

2. The onus is upon the opponent to establish at least one of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2]. As a formal matter, I note the remaining grounds listed in the Notice have not been established.

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599;

   [2] [2009] FCA 891, para 22-27

Evidence

1. The evidence of the parties consists of the following:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Lyle John Hudson	Group Operating Officer of M. Webster Holdings Pty Ltd	15 February 2010	LJH-1 to LJH-2

Opponent’s Evidence

1. The opponent’s evidence consists of the statutory declaration of Mr Lyle Hudson (‘The Hudson declaration’) with a number of documents contained in the exhibits. Mr Hudson states that the opponent is a company and is he owner of the MORRISSEY fashion label in Australia. The opponent is or has been the owner of a number of Australian trade marks applications and registrations. A number have lapsed, however, trade mark registration no. 807023, detailed below, remain registered:

Trade mark:  

Trade mark registration:             807023

Filing Date:  15 September 1999

Specification:  Class 14: Jewellery in this class

Class 18:Handbags in this class

Class 25:Clothing, footwear and headgear in this class

Endorsements:  Provisions of subsection 41(5) applied.

1. The history of the opponent’s MORRISSEY brand and the dealings between the opponent and the applicant is clearly outlined in the Hudson declaration. Mr Hudson avers that in or around 1983, Mr Peter Morrissey, together with his business partner Leona Edmiston, launched the MORRISSEY Edmiston fashion label. According to Mr Hudson, this early partnership opened stores in Sydney, Melbourne and Brisbane and operated successfully for 14 years. During this 14 year period, the partnership won four Australian Fashion Industry awards including an Outstanding Achievement Award.

2. Mr Hudson further states that in 1997, Mr Morrissey founded a new fashion label centered around the concept that people like to look and feel sexy without fuss. This was the beginning of the MORRISSEY label. Mr Morrissey has had no association with the MORRISSEY label since early 2009.

3. Mr Hudson believes that Rene Rivkin, Cavalyn Pty Ltd, Holipeak Pty Ltd and Cavaglade Pty Ltd owned and operated the MORRISSEY label before it was sold to Oroton Pty Ltd (‘Oroton’) in or around December 2000. After that sale, Oroton operated the MORRISSEY label by designing and selling fashion goods under the MORRISSEY trade marks. Mr Hudson avers that Mr Morrissey was an integral part of the label’s image and trading operations during the years 2001 until mid 2006.

4. Oroton carried on business the MORRISSEY label through a number of stand alone stores under the MORRISSEY trade marks including stores in the Bondi Junction, Paddington, Sydney CBD, Chadstone, Brisbane, Chatswood Chase, Castle Hill and Melbourne Central. Mr Hudson states that the MORRISSEY stores established by Oroton had very expensive fit-outs and promoted the image of the MORRISSEY label as a premium fashion label. Oroton also established a wholesale relationship with David Jones department stores, wholesaling fashion goods under the MORRISSEY trade marks to be sold in David Jones stores.

5. In or around November 2006, Oroton sold the MORRISSEY label to the opponent. This sale included the MORRISSEY trade marks and the goodwill associated with the MORRISSEY label.

6. Since the opponent purchased the MORRISSEY label from Oroton, the opponent has designed fashion goods as well as operating stand alone stores and department store concessions and licensing under or by reference to the MORRISSEY trade marks. Mr Hudson states the MORRISSEY trade marks are central to the identity of the MORRISSEY label and have been used prominently by the opponent and its predecessors in title.

7. According to Mr Hudson the MORRISSEY trade marks have been used prominently on the opponent’s fashion goods and retail presence. Mr Hudson states that the goods sold by the opponent under the MORRISSEY label have one or more of the MORRISSEY trade mark attached to them when offered for sale. Document 3 in exhibit LJH-1 contains a selection of swing tags, stickers and other labels bearing the MORRISSEY trade mark which are asserted to be attached to the goods sold by the opponent. The opponent asserts that while the MORRISSEY trade marks were initially used in relation to clothing, the range of goods available under the MORRISSEY label has expanded to include other fashion items including bags, wallets, sunglasses, cufflinks and compendiums.

8. Mr Hudson asserts that the MORRISSEY trade marks have also been used on other promotional material including shopping bags and cards. The opponent has also advertised the MORRISSEY label through magazines and its website (Documents 4 and 5 in exhibit LJH-1). In particular, the opponent has arranged for celebrities to wear MORRISSEY branded goods when they appear in the media (Document 6 in exhibit LJH-1).

9. The Hudson declaration also outlines the importance that Mr Morrissey’s celebrity status and publicity surrounding him as part of the opponent’s promotion of the MORRISSEY label. According to Mr Hudson, Mr Morrissey acted as the brand ambassador for the MORRISSEY label by attending certain public events including fashion shows which generated media interest and were highly publicized in the fashion industry.  

10. The Hudson declaration outlines that apart from the opponent selling its MORRISSEY branded goods through its own retail stores and third party retailers, it also licenses third parties to use the MORRISSEY trade marks in respect of goods. According to Mr Hudson, the opponent has licensed third parties to use the MORRISSEY trade marks in relation to sunglasses, spectacles, leather goods and corporate gifts. 

11. Confidential exhibit LJH-2 outlines the total revenue generated by sales of MORRISSEY branded goods for the financial years commencing in 2005. The total revenue generated by sales of goods under the MORRISSEY trade marks is considerable considering that the opponent asserts that its goods are not a mass-market fashion brand. Mr Hudson states that production runs of its MORRISSEY branded goods are very small with premium prices charged due to the good reputation of the MORRISSEY label. These assertions of establishing the MORRISSEY label as a high-end fashion brand are in keeping with the marketing strategy demonstrated by the opponent in document 6 accompanying exhibit LJH-1.

Discussion

Section 60 - Reputation in Australia

1. Section 60 of the Act provides:

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

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

(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

1. To establish the ground of opposition under section 60, the opponent must demonstrate:

ØThat, at the priority date of the opposed application, another trade mark had acquired a reputation in Australia; and

ØThat because of the reputation of the second trade mark, use of the applicant’s trade mark would be likely to deceive or cause confusion.

1. Unlike sections 44 or 58 of the Act, section 60 does not require that the goods and services upon which the opponent uses its trade mark be of a specified standard of similarity with the goods and services of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. It is now for me to determine if the opponent has acquired a reputation in Australia for its MORRISSEY trade marks which is sufficient to establish that use of the opposed trade mark would be likely to deceive or cause confusion.

2. At the hearing, counsel for the parties agreed that the opponent has a strong reputation in its MORRISSEY trade marks. In relation to reputation Justice Kenny states in McCormick & Co Inc. v McCormick, 51 IPR 102, at 128:

In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

At 129 Justice Kenny continues:

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: …

1. The opponent’s evidence demonstrates that goods and services bearing its MORRISSEY trade mark have been sold to Australian consumers since at least 1997 when Mr Morrissey commenced his fashion label. The Hudson declaration outlines impressive revenue raised from the sale of MORRISSEY branded goods as well as a sustained presence within the fashion industry in Australia. I am satisfied the opponent does have a strong reputation in its MORRISSEY trade marks. However, it needs to be determined if, given this reputation in Australia, use of the applicant’s trade mark would be likely to deceive or cause confusion.

2. Counsel for the applicant, Ms Jane Rawlings, has argued that although the opponent became the owner of the MORRISSEY label, the trade marks and good will in both of the foregoing in November 2006, it is also clear that Mr Morrissey retained his own reputation as a leading Australian fashion designer and retained the good will in his name ‘PETER MORRISSEY’. It is the applicant’s argument that it has a considerable reputation in the name PETER MORRISSEY which is independent of the opponent’s MORRISSEY label and that no deception or confusion is likely to result from the trade marks co-existing in the marketplace. This is particularly due to the opponent’s apparent closure of the MORRISSEY label in early 2009.

3. Ms Rawlings argued that the contrary to Mr Hudson’s statement that the opponent had a need for ‘restructuring the operation of the Morrissey label’ the opponent’s evidence (exhibit LJH-1) contains an article published in 31 March 2009 from Australian Woman Online which states that the opponent had closed down the MORRISSEY label including all the MORRISSEY stores and the MORRISSEY concessions in David Jones stores. She argued that it can readily be inferred from Mr Hudson’s evidence that the opponent’s closure of the MORRISSEY label in March 2009 was well known and a matter of public comment in Australia.  

4. While it does appear that the opponent is no longer operating its MORRISSEY label in the same way as it had previously, I am not satisfied that the opponent has abandoned the goodwill and rights it has in its MORRISSEY trade marks. Abandonment is not to be inferred from mere non-use[3]. In Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA[4], Bowen CJ observed:

   [3] Fitzroy Milk Tanks Pty Ltd v Challenge Engineering Ltd (1998) 40 IPR 647

   [4] (1988) 93 FCR 569 at 572; 12 IPR 321 at 324 (FC)

“to show abandonment of the mark in circumstances such as the present it would be necessary to demonstrate more than slightness of use. There would have to be some evidence indicating an intention to abandon the trade mark to result in the right to proprietorship being lost.”

1. I am not persuaded from the evidence before me that the opponent has abandoned the MORRISSEY trade mark with regard to its goods or services. Indeed, the opponent is still licensing its MORRISSEY trade marks to be used on sunglasses and leather goods so it is clear that the opponent maintains an active interest in its MORRISSEY trade marks.

2. Ms Rawlings has also argued that the opponent’s evidence of instances of confusion taking place between the opponent’s MORRISSEY branded goods and the applicant’s PETER MORRISSEY branded goods is not in an admissible form even though the Registrar is not bound by the rules of evidence. The evidence of confusion consists of a discussion thread hosted on: forums.vogue.com.au.

3. The topic of this discussion thread concerns Peter Morrissey and what has been happening with the MORRISSEY label. There has been considerable argument between the parties over what the comments of the contributors to the forum actually mean. Ms Rawlings has suggested that many of the contributors are aware of the closing of the MORRISSEY label by the opponent and Mr Morrissey’s commencing a new fashion label, PETER MORRISSEY, for Big W. Counsel for the opponent, Mr Michael Hall, argued that the comments indicated that customers were confused about MORRISSEY branded goods and saw Mr Morrissey’s new label as being related to the original MORRISSEY label now owned by the opponent.

4. It is clear from the comments that some contributors were aware of the difference between the opponent’s MORRISSEY trade mark and the new PETER MORRISSEY trade mark. However, it is also clear that some contributors did not make such a distinction. The evidence demonstrates that Mr Morrissey established a strong reputation as a fashion designer and the number of fashion awards which Mr Morrissey received is indicative of this.

5. A number of press releases in exhibit LJH-1 name Mr Morrissey as one of Australia’s leading fashion designers. I do not doubt Mr Morrissey’s personal reputation as a fashion designer. However, for the necessary comparison, I would put the matters as follows. I am not to be overly influenced by the evidence that the disputing parties use their trade marks in ways that, at the moment, may be quite different. I am to consider any of the modes of business that would be within the scope of the registration, should it be granted in the terms presently sought. In essence, the question comes down to my being satisfied that there is a “finite and non-trivial” risk of deception or confusion[5], based on the proper allowance for the possibility of imperfect recollection of one trade mark at a time when only the other and competing trade mark is present.

   [5] Registrar of Trade Marks v Woolworths Limited (1999) AIPC 91-499 at 36, 697-8 (per Justice French) and 39, 703-4 (per Justice Branson)

6. A comparison of the respective trade marks reveals that the common element is the word MORRISSEY. While I acknowledge that the word MORRISSEY is a surname and that sometimes the addition of a forename would sufficiently differentiate the trade marks from each other I am not persuaded by Ms Rawlings arguments. I believe that this is a very different situation. In this case Mr Morrissey has been responsible for establishing a firm reputation within the fashion industry for his MORRISSEY branded goods. Once he had built up this considerable reputation he sold his MORRISSEY label, the trade marks and goodwill associated with it to the predecessors of the opponent.

7. While there are no details regarding how much was paid to Mr Morrissey for the MORRISSEY label and its trade marks and associated goodwill, I assume that it was not a small amount. I accept that where an assignee has bought a business including trade marks, the value of the purchase will be undermined if the assignee is not able to protect those trade marks and maintain enforceable rights. Indeed, it is my opinion that it is unlikely that the opponent would have purchased the MORRISSEY label and the associated trade marks and goodwill in the business if it did not intend to maintain and protect the considerable reputation vested in the MORRISSEY brand.

8. Overall, I consider that, given the significant reputation evidenced by the opponent in its MORRISSEY trade mark, a significant number of consumers would at the very least experience a reasonable doubt[6] as to the existence of some sort of connection between the opponent’s trade mark and the applicant’s PETER MORRISSEY trade marks.

   [6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

9. I am satisfied that the opponent has established the section 60 ground of opposition in relation to all the applicant’s goods and services. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds set out in the notice, although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

Decision

1. Section 55 of the Act provides:

   Decision

   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.

1. I find that the opponent has met the onus upon it, in terms of the grounds of opposition under section 60 argued at the hearing. Accordingly, I refuse to register trade mark applications 1247002, 1278308 and 1278314.

Costs

1. It is usual for costs to follow the event, and I see no reason to depart from that principle here. All four opposition matters had common evidence and this being the case I award costs against the applicant in terms of Schedule 8 of the Trade Mark Regulations 1995 in the following way:

• Full costs, as per scale, for filing the Notices of Opposition for all three matters;

• full costs, as per scale, for the evidence in support of the opposition to application 1247002; and

• at 20% of the scale[7] for the evidence in support for the remaining two oppositions.

  [7] Hume Industries (Malaysia) Berhad v James Hardie & Co Pty Ltd (2001) 53 IPR 591

Bianca Irgang

Hearing Officer

Trade Marks Hearings

22 March 2011