Madfish Gear Ltd v David Lawrence

[2017] ATMO 146

TRADE MARKS ACT 1995

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

Re:Opposition by Madfish Gear Ltd  to registration of trade mark application no. 1687463 – MAD ABOUT FISHING - in the name of David Lawrence

Delegate:	Bianca Irgang
Representation:	Opponent: Self represented Applicant: Self represented
Decision:	2017 ATMO 146 Trade Marks Act 1995 (Cth) - Section 52 opposition: sections 42, 44, 58A and 60 pressed – no ground of opposition established.

Background

1. David Lawrence (‘the applicant’), filed trade mark application number 1687463 on 15 April 2015 in class 28 of the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:  MAD ABOUT FISHING (‘the Trade Mark’)

   Trade mark application no: 1687463            

   Filing Date:  15 April 2015

   Specification:  Class 28: Fishing goods namely tackle, hooks, swivels, sinkers, rods, reels, fishing line, lures, tackle boxes

2. Acceptance of the application for possible registration was published in the Australian  Official Journal of Trade Marks on 3 September 2015. Subsequently Madfish Gear Ltd (‘the opponent’) filed a Notice of Intention to Oppose registration followed by its Statement of Grounds and Particulars[1].

   [1] which together constitute ‘the Notice’

3. The applicant then filed his Notice of Intention to Defend. Thereafter the opponent filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).        

4. The opposition was scheduled to be heard in Canberra as a delegate on 22 June 2017. Both parties decided in the lead up to the hearing that they would not proceed with the oral hearing and requested that a decision would be made on the basis of the written record.

   Grounds of Opposition

5. The Statement of Grounds and Particulars nominated four grounds of opposition under the Trade Marks Act 1995 (‘the Act’) being sections 42, 44, 58A and 60. The onus is upon the opponent to establish one or more of its grounds of opposition. The Full Bench in Telstra Corporation Limited v Phone Directories Company Pty Ltd[2] affirmed the approach of Pfizer Products Inc. v Karam[3] where Justice Gyles J has referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’. Should the opponent establish one ground of opposition in relation to all of the applicant’s services, there is no requirement for me to consider the other grounds of opposition.

   [2] [2015] FCAFC 156, [133]

   [3] [2006] FCA 1663, [26]

   Evidence

6. The evidence in this matter consists of the following declarations being:

   Evidence in Support

   ·Declaration of  Christopher Terence Sproule (‘Sproule 1’), Director of Madfish Gear Ltd, dated 18 April 2016

   ·Declaration of Christopher Terence Sproule (“Sproule 2”), Director of Madfish Gear Ltd, dated 19 April 2016

   Evidence in Answer

   ·Declarations of  David William Lawrence, Founder of Mad About Fishing Facebook page, dated 23 May 2016

   Discussion

   Section 44 –Substantially Identical or deceptively similar

7. Section 44 of the Trade Marks Act relevantly provides:

   44       Identical etc. trade marks

   (1)Subject to subsections (3) and (4), and 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)…; 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.

8. To establish its opposition under section 44 of the Act the opponent must show all of the following:

   Øa trade mark (or trade marks), either registered or pending registration, in the name of a person other than the applicant, and in relation to which the applicant’s trade mark is either substantially identical or deceptively similar;

   Øthe trade mark(s) in the name of the other person must be in respect of similar goods or closely related services; and

   Øthe priority date of the trade mark(s) of the other person is (must be) earlier than the priority date of the Trade Mark

9. The  opponent cited one trade mark registration in support of the section 44 ground of opposition which is as follows:

   Trade mark:   (‘the opponent’s trade mark’)

   Trade mark application no: 1616132            

   Filing Date:  8 April 2014

   Specification:  Class 28: Fishing apparatus and articles, including fish hooks, artificial bait, fish lures, fishing bags, bags adapted for fishing, bite indicators and sensors, cases for fishing rods, creels, floats, gaffs, line casts, lines, plumbs, reels, reel cases, rod rests, rods, stools, tackles, tackle boxes, float swivels, tackle wallets, weights, flies; parts and accessories for the aforesaid

   Class 35: Wholesale, retail and distribution of fishing products, including online

10. The opponent is the registered owner of the above trade mark which has an earlier priority dates than that of the Trade Mark. The trade mark registration covers the same and similar fishing goods in class 28 as the fishing goods claimed by the Trade Mark. The key issue to now be decided is whether the Trade Mark is either substantially identical or deceptively similar to the opponent’s trade mark. The respective trade marks can be seen below:

Opponent’s trade mark	Trade mark
MAD ABOUT FISHING

1. It is obvious the Trade Mark is not substantially identical with the opponent’s trade mark according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (“Shell”).[4] There exists an additional word “ABOUT” in the Trade Mark as well as the differing word FISHING at the end of the Trade Mark. The opponent’s trade mark also contains the stylized graphic of a fish. These additional and differing words in the Trade Mark along with the graphic device in the opponent’s trade mark act as a clear visual and verbal difference between the respective trade marks. There are a substantial number of differences between the respective trade marks which preclude them from being considered substantially identical.

   [4] (1963) 109 CLR 407 at 414

2. Deceptive similarity is defined in section 10 of the Act as follows:

   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.

3. The test to determine whether trade marks are ‘deceptively similar’ is set out in Shell: [5]

   The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … 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 impression that such persons would get from the defendant’s [trade mark]

   [5] (1961) 109 CLR 407 at 415

4. The Court added at 416, that:

   [The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.

5. The decisive question is whether the use of the Trade Mark for the goods in class 28 would result in a tangible danger of confusion or deception given the previous registration for the opponent’s trade mark. I do not consider it would. In coming to this decision it is important that the trade marks are considered in their entirety – ‘it is the whole mark as used which is the subject of the comparison with the registered mark.’[6]

   [6] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).

6. The differences between the opponent’s trade mark and the Trade Mark are very numerous. Not only are there additional words and graphic devices differing in the respective trade marks the entire idea expressed by each trade mark is completely different. The opponent’s trade mark is MADFISH with the graphic device of a fish. The idea of the trade mark conveyed to the consumer is of an insane or socially awesome fish which is emphasized by the stylized graphic of a fish. The Trade Mark is for the words MAD ABOUT FISHING. The idea conveyed by this slogan is that the applicant or the consumer is crazy about the act of fishing. This is a completely different idea to that expressed by the opponent’s trade mark.

7. I am not satisfied there is a real tangible danger of use of the respective trade marks resulting in confusion in the marketplace for the applicant’s goods and the opponent’s goods and services. In view of my finding that the Trade Mark is not deceptively similar to the opponent’s trade mark the opponent has not established the opposition ground based on section 44 of the Act.

   Section 58A – Opponent’s earlier use of similar trade mark

8. Further to this, the opponent has argued the section 58A ground of opposition. Section 58A of the Act is enlivened should the Trade Mark have been accepted under the provisions of subsection 44(4). The Trade Mark was not accepted under the provisions of subsection 44(4), nor do I propose to apply them now, so the opponent is also unable to establish this ground of opposition.

   Section 60 - Reputation in Australia

9. Section 60 of the Act provides:

   60 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.

10. The opponent is relying on the following trade mark in the order to establish the section 60 ground of opposition:

11. Unlike section 44 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 of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. However, I say now that the goods offered for sale to the Australian public by the opponent include such goods as those covered by the Trade Mark.

12. It is for me to determine therefore whether the opponent has established that before 15 April 2015 (‘the priority date’) stylized MADFISH trade mark was recognized by the public generally, or at least by a significant number of persons in relevant market and whether because of that, the use by the applicant of its Trade Mark would be likely to cause the public confusion.

13. The principles relevant to the assessment of the likelihood of confusion, etc, were set out by French J in Registrar of Trade Marks v Woolworths: [7]

    (ii) 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 or closely related products and services 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 or the products and services in question come from the same source.

    (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc:[8]

    “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

    [7] [1999] FCA 1020 [50]

    [8] [1973] HCA 43; (1973) 129 CLR 353, 362

14. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[9] by Kenny J at paragraph 81:

    What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

    reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

    Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

    Does the evidence establish that in Australia before 9 March 1992 the McCormick  & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

    [9] [2000] FCA 1335

15. In considering this question I turn to the evidence presented in Sproule 1 and Sproule 2. According to Sproule the opponent first offered, advertised and promoted its fishing goods and services in Australia since 2014 and has continually offered various goods and services under its MADFISH trade mark since that time. Mr Sproule also provides an outline of the opponent’s revenue generated under its trade mark during this time. The amount is very modest considering the size of the fishing industry in Australia. The total number of units sold since the opponent commenced business is de minimis.

16. While the opponent has been able to show that it has used its trade mark since around 2014, the evidence before me is simply not sufficient to demonstrate reputation in its trade mark sufficient to trigger section 60 of the Act. I am not satisfied that the opponent had such a reputation in its trade mark as at the priority date of the Trade Mark that use of the Trade Mark is likely to cause deception and confusion in the marketplace. Therefore, the opponent has not established the section 60 ground of opposition.

    Section 42(b) – Trade Mark use would be contrary to law

17. The opponent also submitted in its statement of grounds and particulars that use of the Trade Mark for the relevant services would breach section 18 of the Australian Consumer Law (being Schedule 2 to the Competition and Consumer Act 2010) which proscribes misleading or deceptive conduct.

18. As I have found that the use of the Trade Mark is not, at a minimum, likely to “confuse” under section 44 or 60, it follows that use is not, on the stricter test posited by Australian Consumer Law, likely to mislead or deceive, in terms of section 18. I thus find that the opponent has not established it ground of opposition under section 42(b).

    Decision

19. Section 55 of the Act provides:

    55  Decision

    (1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

    (a)  to refuse to register the trade mark; or  

    (b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note:          Forlimitationssee section 6.

20. I find that the opponent has not met the onus upon it, in terms of any of the grounds of opposition argued at the hearing. The trade mark application may accordingly proceed to registration 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 of the Trade Mark shall not occur until the appeal has been decided or discontinued.

    Costs

21. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the opponent under section 221 of the Act in terms of Schedule 8 of the Regulations.

    Bianca Irgang

    Hearing Officer

    Oppositions and Hearings

    23 November 2017