Metropolitan Investment Group Pty Ltd v Autumnpaper Ltd
[2016] ATMO 115
•13 December 2016
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Metropolitan Investment Group Pty Ltd to registration of trade mark application 1564493 – MCQUEEN - in the name of Autumnpaper Ltd
Delegate: Bianca Irgang Representation: Opponent: Shauna Ross of Counsel instructed by IP Solved
Applicant: Angus Lang of Counsel instructed by King & Wood MallesonsDecision: 2016 ATMO 115
Trade Marks Act 1995 - Section 52 opposition: sections 41, 44, and 42(b) pressed –section 41 established – applicant’s evidence insufficient.Background
Autumnpaper Ltd (‘the applicant’), filed trade mark application number 1564493 on 24 June 2013 in classes 3, 9, 14, 18, 25 and 35 of the International Classification of Goods and Services. Current details of the application are set out below.
Trade mark: MCQUEEN
Trade mark application no: 1564493
Filing Date: 24 June 2013
Specification: Class 3: Perfumes; make-up; creams, milks, lotions, gels and powders for the face, body and hands; cosmetics; preparations for use in the bath or shower
Class 9: Glasses and spectacles; sunglasses
Class 14:Watches, clocks, jewellery and imitation jewellery; cuff links
Class 18: Handbags; travel cases; luggage; backpacks; wallets; key cases; briefcases; canes; card cases; vanity cases; umbrellas; coverings of leather, hat boxes of leather
Class 25: Clothing, footwear, headgear; wedding dresses; bridesmaid dresses; cuffs; boas; fur stoles; pocket squares
Class 35: Retail services connected with the sale of perfumes, make-up, creams, milks, lotions, gels and powders for the face, body and hands, cosmetics, preparations for use in the bath or shower, glasses and spectacles, sunglasses, watches, clocks, jewellery and imitation jewellery, cuff links, handbags, travel cases, luggage, backpacks, wallets, key cases, briefcases, canes, card cases, vanity cases, umbrellas, umbrella covers, coverings of leather, hat boxes of leather, clothing, footwear, headgear, wedding dresses, wedding gowns, bridesmaid dresses, cuffs, boas, fur stoles, pocket squares; enabling customers to conveniently view and purchase those goods from a general merchandise retail store or from a general merchandise internet website or from a general merchandise catalogue by mail order or by means of telecommunications
Endorsements: Provisions of subsection 41(5) applied.
Acceptance of the application for possible registration was published in the Australian Official Journal of Trade Marks on 30 October 2014. Subsequently Metropolitan Investment Group Pty Ltd (‘the opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars[1].
[1] Taken together I will refer to them as the ‘Notice’.
The applicant then filed its Notice of Intention to Defend. Thereafter the opponent and applicant respectively filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).
I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 20 September 2016. The opponent was represented by Shauna Ross of Counsel instructed by IP Solved. The applicant was represented by Angus Lang of Counsel instructed by King & Wood Mallesons. Both parties’ representatives made oral and written submissions.
Grounds of Opposition
The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995 (‘the Act’). Those grounds being under sections 41, 42(b) and 44 were pursued at the hearing. The Opponent bears the onus of establishing at least one of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3] Should the opponent establish one ground of opposition in relation to all of the applicant’s goods and services, there is no requirement for me to consider the other grounds of opposition.
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].
[3] Pfizer Products Inc v Karam [2006] FCA 1663 [6] - [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133]
In any event, the other grounds under the Act would be available to the opponent should this decision be appealed to the court.
Evidence
The evidence in this matter consists of the following declarations being:
Evidence in Support
·Declaration of Christopher John Lee (“Lee 1”) dated 8 April 2015
Evidence in Answer
·Declaration of Jonathan Akeroyd (“Akeroyd”) dated 8 April 2015
·Declaration of Hiromi Yu (“Yu”) dated 1 September 2015
·Declaration of Zara Wong (“Wong”) dated 1 September 2015
·Declaration of Bill Ladas (“Ladas”) dated 2 September 2015
·Declaration of Teneille Ferguson (“Ferguson”) dated 2 September 2015
Evidence in Reply
·Declaration of Christopher John Lee (“Lee 2”) dated 13 November 2015
Discussion
Section 41 - Trade mark not distinguishing applicant’s goods or services
Section 41 provides:
41 Trade mark not distinguishing applicant’s goods or services
(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3) This subsection applies to a trade mark if:
(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4) This subsection applies to a trade mark if:
(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii) the use, or intended use, of the trade mark by the applicant;
iii) any other circumstances.
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2: For goods of a person and services of a person see section 6.
Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).
(5) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
Section 41 of the Act provides a scheme for the assessment of the capacity of a trade mark to distinguish the goods and services of one trader from the similar goods or services of another trader. However, as for any other ground of opposition the onus is on the opponent to make its case under section 41. Therefore, the opponent must establish that the applicant’s trade mark is not capable of distinguishing the goods and services in question.
Turning to the relevant consideration of whether a trade mark is inherently adapted to distinguish, in the case of Clark Equipment Co v Registrar of Trade Marks Kitto J found:
That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others.
…
[T]he question [is] whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it. [4]
[4] (1964) 111 CLR 511 [513–14].
Shauna Ross, counsel for the opponent, has argued that applicant’s trade mark MCQUEEN is a common surname which appears on the Australian Electoral Roll in excess of 1078 times. She refers me to Part 22.18 of the Trade Marks Office Manual of Practice and Procedure (‘the Manual’) which is a summary of examination practice in relation to names and generally supports a ground of rejection pursuant to section 41 of an application for a trade mark that is a common surname (such as MCQUEEN). Part 22.16.1 of the Manual states that “As a general rule, an SFAS value of more than 750 or more will tend to indicate that the surname is sufficiently common to warrant raising a ground for rejection”. Ms Ross argues that there is no reason in this case to displace this general rule as the goods and services for which registration of the opposed trade mark is sought are not highly specialised and are commonplace. I note that it is not uncommon for designers of clothing and accessories to adopt and use a surname as a trade mark, although use of the full name of the designer is equally prevalent. Ms Ross further pointed out that during examination a section 41(4) ground for rejection was raised against the opposed trade mark on this basis.
With the above in mind, I turn to the Manual which provides:
The SFAS value gives a measure of the commonness of the surname and therefore of the likelihood that a trader with that name would wish to use the name in connection with his or her goods or services. The more common the surname, the less inherent adaptation to distinguish it will have. As a general rule, an SFAS value of 750 or more will tend to indicate that the surname is sufficiently common to warrant raising a ground for rejection. However, the nature of the goods and/or services must be taken into account, that is whether they are specialised, commonplace or somewhere between these extremes.
For example, if the SFAS value is well over 750, but the goods are cyclotrons or railway coaches, the likelihood that other persons will need to use the name on those goods is low enough for the trade mark to be considered prima facie capable of distinguishing. On the other hand, if the trade mark is to be applied to easily produced and commonplace goods such as clothing or cakes, there is a much greater likelihood that another person would wish to use the same surname on their similar goods and a ground for rejection would be appropriate.
In the decision of Brock Beauty Inc[5] the Delegate correctly stated that:
The wording of the Manual then makes it plain that there is nuance to this consideration. A value of over 750 in the SFAS (‘Search for Australian Surnames’) only “tends to indicate” that a surname is sufficiently common to warrant raising a ground for rejection. Mere indication that a ground for rejection may apply clearly falls short of the required “positive satisfaction” mentioned by French J in Woolworths Metro. As the Manual provides, the specific nature of the designated goods/services must also be taken into account.
It has also been recently affirmed in a decision of this office that “the Registrar should not base a decision to reject a trade mark solely on the fact that it contains or comprises a surname which appears an arbitrary number of times among the Australian adult population.”[6]
To do so would fall foul of precisely the situation highlighted by Wilcox J in the case of Companhia Souza Cruz Industria e Comercia v Rothmans of Pall Mall (Australia) Ltd. His Honour made the following comments with regard to SFAS results at a time when office policy referred to a limit of 400 rather than 750 Australian surnames:
I gather from Mr Homann's reasons there is a policy document issued by the Registrar of Trade Marks that decrees a mark, to be registrable, should not comprise or include a name that occurs more than 400 times in the Australian Electoral Register. The policy document is not before the Court, so I do not know what rationale it advances for this dictat. Why 400? The answer does not matter. The policy has no foundation in the Act; so it is devoid of any legal justification. It is not for the Registrar to impose non-statutory restrictions on the words that may be registered as trade marks. To the extent Mr Homann paid any attention to this aspect of the case, he erred in law.[7]
[5] [2016] ATMO 44 (30 June 2016)
[6] Garrett Electronics Inc. (2015) 114 IPR 155; [2015] ATMO 48 [22]
[7] (1998) 41 IPR 497 [501].
In the case before me, the applicant’s trade mark is the word MCQUEEN solus, it is a surname which appears over 750 times on the SFAS and registration of it is sought for goods and services which are commonplace. Further to this, it is also clear from the opponent’s evidence that other traders in the Australian marketplace are using their own MCQUEEN surname as trade marks without improper motive on the same goods and services.
I am satisfied that section 41(4)(a) of the Act has been established in regards to the opposed trade mark. If the opposed trade mark is found to have limited inherent capacity to distinguish, section 41 also provides a scheme for the assessment of whether, through use or intended use upon the goods and services in the course of trade, or whether due to other circumstances the trade mark does or will distinguish the goods and services. Therefore, I must consider the evidence of use of the opposed trade mark and ‘any other circumstances’ that may enable the application to proceed to registration.
I turn now to the applicant’s evidence of use of its MCQUEEN trade mark.
Akeroyd states that the applicant is the owner of a number of trade mark registrations including:
Trade Mark No.
Trade Mark
Classes
840398
ALEXANDER MCQUEEN
9
899780
ALEXANDER MCQUEEN
3
1040993
ALEXANDER MCQUEEN
14, 18, 25
975940
3, 9, 14, 18, 25
1468456
3, 9, 14, 18, 25, 35
Akeroyd also points out that the applicant has also filed a number of other trade mark applications which have since obtained registration being:
Trade Mark No.
Trade Mark
Classes
1732418
3, 9, 14, 18, 25, 35
1734126
MCQ
3, 9, 14, 18, 25, 35
1734127
3, 9, 14, 18, 25, 35
1734128
3, 9, 14, 18, 25, 35
1734132
3, 9, 14, 18, 25, 35
Akeroyd refers to all of the above trade marks collectively as the “MCQUEEN” trade marks throughout his evidence when discussing the evidence of use of the opposed trade mark. Indeed, Mr Akeroyd advises that the objection raised during examination was overcome by the applicant on the basis of evidence of the applicant’s substantial reputation in the MCQUEEN trade marks and he avers that the brand MCQUEEN on a standalone basis has a significant reputation on a global basis including in Australia as at the priority date.
Akeroyd sets out the history of the applicant and I briefly recount it below:
·In 1992, Mr Alexander McQueen founded Alexander McQueen in London and the clothing produced under that name was predominantly ready-to-wear women’s designer clothing.
·In the following years Mr McQueen received a number of awards for his fashion design including British Designer of the Year (1996, 1997, 2001 and 2003), International Designer of the Year by the Council of Fashion Designers of America (2003) and GQ Menswear Designer of the Year (2007).
·In 1999 the applicant opened its first stand-alone store in London selling goods and providing retail services by reference to the MCQUEEN trade marks.
·In December 2000, the Gucci Group[8] acquired 51% of Alexander McQueen and appointed Mr McQueen as the brand’s creative director.
[8] The Gucci Group was part of Pinault-Printemps-Redoute which was renamed Kering on 18 June 2013
·Following acquisition by the Gucci group flagship stores selling the applicant’s goods bearing the MCQUEEN trade marks were established in a number of cities including New York, Milan, Tokyo and Hong Kong. Boutiques also operate under license in Beijing, Dubai and Baku among others.
·In 2004 the applicant entered into a licensing arrangement with Safilo Group SpA to launch a range of eyewear bearing the MCQUEEN trade marks.[9]
[9] Exhibits JA-9 and JA-10 accompanying Akeroyd
·In or about 2005 the applicant collaborated with Puma to produce a line of men’s and women’s sports fashion footwear.[10]
·The applicant has been using some or all of the MCQUEEN trade marks in Europe since 1992 and in Australia since at least as early as 2005 in relation to the MCQUEEN goods.
·In 2006 the applicant’s second fragrance known as “MY QUEEN” was launched.[11]
·In 2006 the applicant’s contemporary brand of men and women’s ready to wear clothing called “McQ” was launched.
·In 2007 the applicant launched a collection of luggage in collaboration with Samsonite.[12]
·In 2008 the applicant collaborated with Target to produce a range of “McQ Alexander McQueen for Target” clothing.
·In July 2008 the applicant launched an online store in the United States followed by an online store for the UK market in 2009.
·In 2011 the applicant made the wedding dress for Catherine Middleton which she wore to the Royal Wedding[13].
·In September 2012 the applicant opened the first McQ standalone retail store in London.
·In May 2013 the applicant’s website and online store were re-launched and increased the number of destinations it shipped to from approximately 30 to 100, including Australia.
[10] Exhibit JA-5 accompanying Akeroyd
[11] Exhibit JA-7 accompanying Akeroyd
[12] Exhibit JA-12 accompanying Akeroyd
[13] Exhibits JA-26 and JA-26A accompanying Akeroyd
As at the priority date the applicant did not have a standalone retail store in Australia. However, Akeroyd states that the MCQUEEN goods are imported into Australia for sale in the stores of a number of third-party retailers including Myer, Le Louvre, Marais and Jean Brown. The applicant also has sold its MCQUEEN goods through online shopping portals including Net-a-Porter, Bergdorf Goodman and Mr Porter. In exhibit JA-3B accompanying Akeroyd, WISH (the lifestyle magazine of The Australian newspaper) reported in June 2014 that a survey of overseas-based online retailer revealed that ‘Alexander McQueen’ was among the five highest selling brands into Australia for the Net-a-Porter and Mr Porter websites. This same article also found the various international shopping portals including those which stock MCQUEEN branded goods as a key and growing market. Confidential exhibit JA-13 lists the combined total sales for goods branded with one or other of the applicant’s various trade marks from as early as 2005. These figures are modest.
While all the above sounds impressive and demonstrates growth in the applicant’s brand 'ALEXANDER MCQUEEN’ over the years I am faced with determining if the applicant has sufficiently used the applied for MCQUEEN solus trade mark such that it is able to overcome the section 41 ground of opposition. When I carefully consider the exhibits accompanying Akeroyd, I am confronted with a number of the applicant’s trade marks but very few examples of the applicant using the word MCQUEEN solus. Instead, the applicant uses the term MCQUEEN in the following ways:
‘Alexander McQueen’
‘MCQ ALEXANDER MCQUEEN’
Indeed, there are only very isolated incidents of the applicant using MCQUEEN solus and I find the majority of those examples appear in exhibit JA-12A on scarves:
These examples were pointed out to me during the hearing by Mr Lang, the applicant’s representative, and while they are undated I accept that they were sold to Australian consumers from 2008, which is before the priority date of the application. While use before the priority date is not required for section 41(4), the fact there is so little use of the trade mark before that date nevertheless affects the determination of whether the trade mark will distinguish the applicant’s goods and services. Additional examples of the MCQUEEN solus trade mark are found on a scarf and a man’s shirt which were offered for sale in July 2015. However, these examples are few and limited in detail leading to unanswered questions such as how many of these scarves were sold to Australian consumers in Australia? Instead the overwhelming majority of the evidence demonstrates that the applicant uses the following trade marks most often on its goods:
Mr Akeroyd asserts that consumers and the clothing trade give importance to the designer’s surname as the main distinguishing element of a fashion brand and he lists the examples of such a practice including GUCCI, PRADA and GIVENCHY. The question before me is whether the applicant has adopted such a practice and if it has, whether that use is sufficient.
However, I have a number of issues with the applicant’s demonstrated use as use of all of the above trade marks are not use of the applied for “MCQUEEN” solus trade mark in plain text. Collectively providing figures of revenue for all goods and services provided under the above plethora of trade marks is not adequate nor an appropriate method by which to establish use of the applied for trade mark.
The applicant has argued that the applicant’s extensive use of its ALEXANDER MCQUEEN trade mark and trade mark are sufficient to establish that the applicant has adopted the practice of use the surname MCQUEEN akin to the examples provided by Mr Akeroyd in paragraph 25 of this decision. However, I disagree with the applicant.
Section 7 of the Act holds:
7Use of trade mark
(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note:For prescribed court see section 190.
The use of ALEXANDER MCQUEEN which features a first name and surname is not use of MCQUEEN solus. Firstly because it contains an additional word and secondly because a surname arguably contains no indication to the average Australian consumer of being either masculine or feminine, the addition of a masculine first name substantially affects the whole identity of the trade mark. Similarly, use by the applicant of its trade mark is not, in my opinion, use of MCQUEEN solus. This is because the word contains the prominent and strikingly stylized letter “Q” which is structured unusually to contain the letter “C”. This is a distinctive part of the trade mark and is a substantial alteration to the trade mark which affects its visual identity. I also note that this stylised letter “Q” has been prominent in the applicant’s branding practices as can been seen in paragraphs 22 and 23 of this decision.
The provisions of section 41 allow for a trade mark to be registered if it is not sufficiently adapted to distinguish but which has been shown, by evidence of use or intended use, to have the capacity to distinguish the relevant goods and services. With my determination that the above trade marks are not use of MCQUEEN solus, I am not satisfied that the applicant has demonstrated it has used and intends to use the applied for trade mark such as to overcome the ground of opposition. The applicant has not established that the applied for trade mark, MCQUEEN solus, is capable of distinguishing its goods and services. The applicant’s evidence is simply insufficient. The ground of opposition under section 41(4) of the Act is therefore established.
Decision
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.
I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 41. Accordingly I refuse to register trade mark application no. 1564493.
Costs
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 applicant in terms of Schedule 8 of the Regulations.
Bianca Irgang
Hearing Officer
Trade Marks Hearings
13 December 2016
0
5
0