Matthew Price

[2023] ATMO 24

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2269789 (25) – SOCIETY CYCLING - in the name of Matthew Price

Delegate:	Bianca Irgang
Representation:	Applicant: IIP Group Pty Ltd
Decision:	2023 ATMO 24 Ex parte - S33 – section 44 ground for rejection – Marks are deceptively similar – consideration of subsections 44(3)(a) and (b) – evidence insufficient for acceptance and no other circumstances made out – application rejected.

Background

1.     IIP Group Pty Ltd (“the applicant”) filed application number 2269789 on 30 May 2022 in class 25 of the International Classification of Goods and Services. Details of the application are set out below.

Trade mark:  

Trade mark application:      2269789

Priority Date:  30 May 2022

Services Specification:         Class 25: Clothing; Clothing for sports; Cyclists’ clothing; Socks; Cycling gloves; Thermal Gloves; Hats being headwear; Headwear; T-shirts

2. At the examination stage an initial adverse report was issued to the applicant on 24 September 2022. The following trade mark registration nos. 1993890, 2019221, 2150033 and 2211886 were raised as a grounds for rejection under section 44 of the Trade Marks Act 1995 (“the Act”) on the basis that they are deceptively similar to the applicant’s trade mark. The details of these registrations are as follows:

Trade mark:  societysco

Trade mark registration:     1993890

Owner:  Deakin Sande

Priority Date:  6 March 2019

Goods Specification:            Class 25: Apparel (clothing, footwear, headgear); Clothing

Trade mark:  

Trade mark registration:     2019221

Owner:  World Focus 912 (Proprietary) Limited

Priority Date:  27 June 2019

Goods Specification:            Class 9: Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity; apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data; recorded and downloadable media, computer software, blank digital or analogue recording and storage media; mechanisms for coin-operated apparatus; cash registers, calculating devices; computers and computer peripheral devices; diving suits, divers' masks, ear plugs for divers, nose clips for divers and swimmers, gloves for divers, breathing apparatus for underwater swimming; fire-extinguishing apparatus.

Class 18:Leather and imitations of leather; animal skins and hides; luggage and carrying bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; collars, leashes and clothing for animals.

Class 25: Clothing, footwear, headgear

Trade mark:  

Trade mark registration:     2150033

Owner:  City Chic Collective USA Incorporated

Priority Date:  20 January 2021

Goods Specification:            Class 25: Dresses; Shirts; Trousers; Pants; Shorts; Hats; Sun hats; Beach hats; Caps being headwear; Gloves; Thongs being underwear; Shapewear; Underwear; pyjamas; Bikinis; Body stockings; Bras; Brassieres; Bodices being lingerie; Lingerie; Camisoles; Corsets being underclothing; Chemises; Boas; Feather boas; Knee-high stockings; Panty stockings; Stockings; Garter belts; Garters; Hosiery; Skirts; Nightgowns; Nighties; Panties; Pantyhose; Bath robes; Robes; Briefs; Boxer shorts; T-shirts; Bathing costumes; Costumes for people; Fancy dress costumes, all of the aforementioned goods for plus-sized women

Trade mark:  societee

Trade mark registration:     2211886

Owner:  Keven Abeyewardene and Jenny Abeyewardene

Priority Date:  27 August 2021

Goods Specification:            Class 25: Apparel (clothing, footwear, headgear)

3.     A total of four adverse examination reports were issued to the applicant in relation to the present application. In response, the applicant provided submissions which the examiner did not consider sufficient to overcome the objection although I note that trade mark registration no. 1993890 for “Societysco” was withdrawn as a ground for rejection. In the third adverse report the applicant was reminded that it had the right to request a hearing.

4.     The applicant requested a hearing based upon written submissions.

The Law

5. Section 33 of the Act provides:

33  Application accepted or rejected

(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it.

Note:For this Act see section 6.

(2)The Registrar may accept the application subject to conditions or limitations.

Note:For limitations see section 6.

(3)If the Registrar is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it;

the Registrar must reject the application.

Note:For this Act see section 6.

(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note:For applicant see section 6.

Presumption of Registrability

6. The presumption of registrability which arises under subsection 33(1) of the Act is a relevant starting point in this matter. I turn to the the authority of Registrar of Trade Marks v Woolworths Limited[1] where French J stated:

‘The mandatory language of s 33 and the legislative policy which informs it also suggest that the acceptance state is not the time for the kind of detailed adversarial examination of the application that might emerge from a contested opposition.’

[1] (1999) 45 IPR 411; (1999) AIPC 91-499 [34].

7. The legislation is expressed in terms which make it clear that there is to be a presumption of registrability when an application for registration is being examined by the Registrar. The effect of the presumption is that if there is any doubt about whether a trade mark should be registered, that doubt should be resolved in favour of the applicant, rather than against it. Therefore, by virtue of subsection 33(1) of the Act, the Registrar must accept an application unless satisfied that there are grounds for rejecting it. The grounds for rejecting a mark are well established and if the Registrar holds, on balance, that one of these grounds constitutes a reason for rejection, the provisions of subsection 33(3) come into operation.

8. Subsection 33(3) of the Act sets down the basis for rejecting an application. The subsection prescribes that if the Registrar is satisfied either that the application is not in accordance with the Act, or that there are grounds for rejection, the application must be rejected. This subsection adopts mandatory language. If subsections 33(3)(a) or (b) apply, the Registrar must reject the trade mark application. As a consequence, should I as a delegate of the Registrar decide that a valid section 44(1) ground for rejection exists and the applicant is not able to overcome the objection under the provisions of subsections 44(3) or 44(4), I must then reject the application as directed by subsection 33(3).

Discussion

9. The applicant requested a hearing in order to argue that the section 44 ground for rejection against its trade mark application since its Trade Mark was not deceptively similar to any of the cited trade marks. Section 44 of the Act relevantly provides:

44Identical etc. trade marks

(1)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

(a)  the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i)  a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)  a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1:       For deceptively similar see section 10.

Note 2:       For similar goods see subsection 14(1).

Note 3:       For priority date see section 12.

Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

10.     The cited trade mark registrations all have earlier priority dates than the Trade Mark and its broad claim for Clothing; Clothing for sports; Cyclists’ clothing; Socks; Cycling gloves; Thermal Gloves; Hats being headwear; Headwear; T-shirts in class 25 are the same as those claimed in class 25 by the earlier registrations. The applicant has not argued these points. The key issue to be decided by me is whether the Trade Mark is substantially identical with or deceptively similar to the three remaining trade mark registrations raised as grounds of rejection.

Comparison of the trade marks

11.     It is obvious that the applicant’s Trade Mark is not substantially identical with the three cited trade mark registrations according to the side-by-side test set out by Windeyer J. (at first instance) in The Shell Company (Australia) Limited v Esso Standard Oil (Australia) Limited[2]. The applicant’s Trade Mark includes the additional word CYCLING the presence of which provides a clear visual difference from the cited trade marks which contain additional differing words and stylizations. It is therefore necessary to consider whether the applicant’s Trade Mark is deceptively similar with any of the cited trade mark registrations.

[2] (1961) 109 CLR 407, (414)

1. Deceptive similarity is defined by section 10 of the Act. The determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have recalling the cited trade mark, to the impression they would get from the applicant’s trade mark.[3]  I must consider the look, sound, and idea conveyed[4] and all the surrounding circumstances.[5] In the end, however, what is being compared is the effect or impression of the trade marks as a whole.[6] The probability of deception must be finite and non-trivial.[7]

   [3] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, (415) (Windeyer J)

   [4] ibid.

   [5] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, (50) (French J).

   [6] Clark v Sharp (1898) 15 RPC 141, (146) (Byrne J).

   [7] Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411; (1999) AIPC 91-499, [43] French J

   13.     The test to determine whether trade marks are ‘deceptively similar’ is set out in The Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited (1961) 109 CLR 407 at 415 where Windeyer J. stated:

   ‘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]’

   14.     His Honour 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.’

   15.     The principles laid out in these tests have not been challenged.

   16.     Mr Tony Mizzi, the applicant’s representative from IIP Group Pty Ltd, discussed at length in his submission why the cited trade marks in question are not deceptively similar to the applicant’s Trade Mark. He drew on the established authorities for the purpose of making the comparison. Despite that submission, whilst I accept that there are clearly differences between the respective trade marks I cannot agree that they are not deceptively similar. I will elaborate on my reasoning in the following paragraphs.

   Trade Mark Registration No. 2019211

   17.     In comparing the trade marks the word “SOCIETY” is the common element in all of the trade mark representations. While the cited SOCIETY GEAR trade mark does contain some stylization in text together with the addition of a device, the common element of these trade marks is the word SOCIETY which is the distinctive element of the respective trade marks when applied to the clothing goods in question. This is because the respective words GEAR and CYCLING are descriptive and generic when applied to clothing goods but the word SOCIETY has no direct meaning at all when applied to clothing. This makes the word SOCIETY the most distinctive element of the respective trade marks. When the word SOCIETY prefaces the word GEAR or CYCLING, it is likely to be understood/read as cycling clothing/apparel by SOCIETY and clothing/apparel gear by SOCIETY.

   18.      As I have determined that the word SOCIETY has no descriptive or generic meaning when applied to clothing, it is therefore distinctive and the dominant cognitive cue in the respective trade marks. I believe that it is probably for this very reason, along with the fact that SOCIETY is located at the beginning of the trade marks and atop the second, descriptive/generic words, that consumers are likely to focus on the SOCIETY part of the respective trade marks. Given the structure of the Trade Mark I consider it probable that consumers who know of the cited SOCIETY GEAR trade mark upon seeing clothing bearing the Trade Mark are likely to believe that the goods come from the same trade source or are related to the goods bearing the cited trade mark.

   19.     The applicant has argued:

   The visual recollection of the trade mark 2019221 would include the combination of: 

   i.Some device or logo

   ii.Two words, one under the other in the same font but where the lower word appears with: a font size substantially larger, and letter spacing significantly greater than the upper word; and where the width of the lower word is greater than that of the upper word

   iii.The use of hyphens

   iv.The overall appearance of a label.

   The visual recollection of the present trade mark is that of two words in different font, one under the other. The upper word is in darker/thicker font than the lower word and spans a greater width than the lower word. The upper word is in all lower case letters, the lower word is in all capitalised letters. The present trade mark also includes the visually striking and memorable letter “o” with a diagonal line (also known as a “O with slash”) in the word “society”.

   Due to these difference in visual recollection, it is very unlikely ordinary consumers with an imperfect visual recollection of one of these trade marks would, upon seeing the other, on or in connection with the goods, be caused to wonder whether they may come from the same source

   20.     I am not persuaded by this reasoning. It is likely that the SOCIETY GEAR trade mark will be recalled by the memorable and distinctive word SOCIETY and the same applies to the Trade Mark which places additional emphasis on the word SOCIETY. In the context of the class 25 goods, it is likely that the trade marks will be referred to as “SOCIETY” by consumers without reference to the stylization.

   21.     With this observation in mind, I turn to the applicant’s submissions that the ideas of the respective trade marks are very different. I do not agree. SOCIETY CYCLING or SOCIETY GEAR do not convey significantly different meanings/ideas. The word SOCIETY does not naturally form a new meaning when coupled with the word CYCLING or GEAR, especially when it has been presented as separate and on top of the other word element.

   22.      The applicant states that:

   ‘It is acknowledged that the word “society” is the first word in both of the trade marks, and that the similarity in sound of the first word is an important consideration when assessing deceptive similarity. But it is not the only consideration, rather it is the net impression of all the components of the trade marks that is critical, having regard to all the similarities and differences and providing them with appropriate weight. The commonality of the sound of the word “society” in the trade marks in question is overwhelmed by the differences described above to the extent that the only reasonable conclusion is that the present trade mark is not deceptively similar to the trade mark number 2019221’.

   I do not believe that the additional and differing elements of the respective trade marks should be disregarded or minimized in the face of the distinctiveness of the word SOCIETY. But at the same time, I hold the view that consideration must be given as to whether it is likely that deception or confusion could occur through ‘contextual confusion’ whereby the common element in each of the respective trade marks may induce traders and the public to believe that the marks emanate from the same trade source.[8]

   [8] John Fitton & Co. Ltd’s Application (1949) 66 RPC 110, (113) (Assistant-Comptroller Chisholm).

   23.     The principal of conceptual confusion is summed up in John Fitton & Co. Ltd’s Application[9] where Mr S. E. Chisholm, the Assistant-Comptroller, commented:

   ‘With reference to the nature of the confusion alleged the evidence furnished on behalf of the Opponents by their trade declarants is direction not so much towards showing that the two marks ‘Jests’ and ‘Easyjests’ might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element ‘Jest’ in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from the one and same trade source.’

   [9] 66 RPC 113

   24.     Therefore, it needs to be determined whether a prospective purchaser, although aware that the respective trade marks are different, may still be caused to wonder whether they are the property of the same entity. To hold such a belief requires that the respective trade marks are seen to have some sort of relationship – that SOCIETY CYCLING would be seen as a member of the ‘family’ of SOCIETY trade marks because of a commonality that has been produced by a mutual feature.

   25.     As already discussed, the word SOCIETY is the common and distinctive element in the trade mark representations. Although the conflicting trade marks contain differing stylizations and common/generic words, consumers are more likely to refer to them by the dominant cognitive cue, which in this case is the word SOCIETY.  It is common practice among traders to adopt a trade mark and then modify it in some way when offering new, related products.  The public is familiar with this practice and knows that, while the marks are not identical, they do denote related products offered by the same trader. I am satisfied that the Trade Mark is deceptively similar to trade mark registration no. 2019211.

   Trade Mark Registration No(s). 2150033 and 2211886

   26.     In considering whether the Trade Mark is deceptively similar with either trade mark registrations no. 2150033 SOCIETIE with cross device and 2211886 SOCIETEE rather than repeating my earlier discussion surrounding the Trade Mark, I reiterate the prominent and memorable feature of the Trade Mark is the word SOCIETY. I also reiterate that the Trade Mark is likely to be referred to by the word elements in place of any stylizations by Australian customers.

   27.     In relation to the applicant’s submissions about SOCIETIE+ and SOCIETEE, I do not agree with the applicant‘s assessment that the net impressions are sufficiently different such that there is no real or tangible danger of confusion. SOCIETIE and SOCIETEE are very clearly not identical to, or the exact same words as, SOCIETY CYCLING. I agree that SOCIETY is a well-known and understood word. However, this does not mean that the earlier marks are not deceptively similar to the Trade Mark. In fact because SOCIETY is a well-known and understood word, it is likely that average mono-lingual Australian consumers will identify and see SOCIETIE and SOCIETEE as play-on and an obvious spelling variation of SOCIETY.

   28.     In Rysta Limited’s Application[10], Luxmoore LJ held at 108 that:

   It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.

   The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person’s wants.

   [10] (1943) 60 RPC 87

   29.     Applying the relevant tests and with reference to Re Application by the Pianotist Co Ltd[11] I accept that the visual and aural similarities between “SOCIETY” and “SOCIETIE” and “SOCIETEE” only serve to emphasise that it is probable that all the trade marks would be pronounced as phonetic equivalents by the average Australian customer.

   [11] Re Application by the Pianotist Co Ltd  (1906) 1A IPR 379

   30.     Based on the above, I am not satisfied that all the respective trade marks have different net impressions in the context of imperfect recollection. I consider that in this situation consumers are likely to think that the conflicting trade marks denote related products from the same provider. It is also likely that consumers will believe SOCIETY CYCLING to be referring to a specific range of clothing specifically designed for cycling and being provided by the same trade source as the clothing provided under the conflicting trade marks, and that SOCIETY is indicating the house mark. I am satisfied that the Trade Mark is deceptively similar to trade mark registrations no. 2150033 SOCIETIE with cross device and 2211886 SOCIETEE.

Consideration of acceptance under section 44(3)(b) of the Act – Other Circumstances

31. I note the applicant’s submissions make no mention of the applicant having ever used its Trade Mark nor has the applicant provided me with any other circumstances which may permit acceptance of the Trade Mark. Taking into account all of the above, I am not satisfied that the current circumstances make it proper to apply the provisions of section 44(3)(b). Nor has the applicant been able to provide any evidence of use before the filing date so the provisions of section 44(3)(a) are not applicable.

Decision

32.     A valid ground for rejection of the application exists under subsection 44.

33.     Therefore, I reject trade mark application no. 2269789 in its entirety.

Bianca Irgang
Hearing Officer
Trade Marks Hearings
27 February 2023