Mink Pink Fashion Group Pty Ltd v Staple & Hue Pty Ltd ATF Staple & Hue Trust

[2024] ATMO 244

TRADE MARKS ACT 1995

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

Re:Opposition by Mink Pink Fashion Group Pty to registration of trade mark application number 2362521 (class 25) – staple & hue (fancy) – in the name of Staple & Hue Pty Ltd ATF Staple & Hue Trust

Delegate:

Debrett Lyons

Representation:

Opponent: Baxter Patent Attorneys Pty Ltd

Applicant:  Makin Legal Pty Ltd

Decision:

2024 ATMO 244

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, 58, 58A, 60 and 62A – s 44 considered and established – trade mark refused registration

Background

1. On 7 June 2023 (‘Relevant Date’) Staple & Hue Pty Ltd ATF Staple & Hue Trust (‘Applicant’) made application 2362521 (‘Application’) under s 27 of the Trade Marks Act 1995 (Cth)[1] to register the trade mark shown below:

   (‘Trade Mark’)

   [1] Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. The Application was made in class 25 for the following goods:

   Dresses; Body suits; Sweat pants; Cardigans; Skirts; T-shirts; Leggings (trousers); Coats; Shorts; Jumpers (sweaters); Tank tops; Vest tops; Clothing; Women's clothing; Knitted clothing; Pants (clothing); Apparel (clothing, footwear, headgear)

   (‘Goods’)   

3. The Application was examined under s 33 and accepted for registration subject that the provisions of s 44(3)(a) (‘Endorsement’), considered later.

4. Following advertisement of acceptance of the Application for possible registration, Mink Pink Fashion Group Pty (‘Opponent’) filed a Notice of Intention to Oppose under s 52 on 13 November 2023 and a Statement of Grounds and Particulars (‘SGP’) on 8 December 2023.

5. The Applicant filed a Notice of Intention to Defend the Application on 18 January 2024.

6. The parties then filed evidence in accordance with the Regulations. The Opponent’s evidence in support (‘EIS’) consists of a Statutory Declaration of Victor Liang, the Opponent’s supply chain manager, made 26 March 2024 with Annexures (‘Liang 1’).  The Applicant’s evidence in answer consists of a Statutory Declaration of Sarah Louise Bagnall, sole director of the Applicant, with Exhibits, made 4 July 2024 (‘Bagnall’) and the Statutory Declaration of Courtney Hutchins, external financial controller engaged by the Applicant, made 4 July 2024 (‘Hutchins’).   The Opponent’s evidence in reply consists of a second Statutory Declaration from Victor Liang made 11 September 2024 with Annexures (‘Liang 2’).

7. Following the conclusion of the evidence stages, the parties were given the opportunity to request a hearing.  The Applicant requested that the Registrar make a decision without a hearing and paid the appropriate fee therefor.   No request was made by the Opponent.  In these circumstances no written submissions were invited.  None were received and none would have been taken into account.  This matter has been allocated to me as a delegate of the Registrar of Trade Marks which I do based on the evidence filed and the official records pertinent to the Application and these proceedings.

8. In the SGP, the Opponent particularised grounds of opposition under ss 42(b), 44, 58, 58A, 60 and 62A.  In broad terms, the grounds hinge on either a likelihood of confusion, or proof of first use, or on the Applicant’s state of mind when the Application was filed. 

9. The Opponent bears the onus of establishing at least one of the nominated grounds of opposition[2] at the Relevant Date.  The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   Discussion

10. Absent submissions, I have taken as my starting points what is said in the SGP in connection with each ground.   I find it convenient to look at the s 44 ground first.  Liang 1 and, to a lesser extent, Bagnall, state that the content of their declarations is confidential.  This makes it difficult for me to say much of the evidence but for those matters which, despite the claim to confidentiality, are in the public domain.  In these circumstances I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim stated: 

    The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

    This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself).[4]

    [4] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).

    Section 44

11. The SGP merely lists two trade mark registrations by number, 1283956 and 1293749.  Section 44 was raised as a ground for refusal during examination of the Application.  Section 44 prevents the registration of a later filed conflicting trade mark.  Registrations 1283956 and 1293749 were cited by the examiner.  The s 44 ground for refusal was overcome during examination.  These opposition proceedings require me to evaluate the matter afresh and I am not bound by, nor am I required to find error in, the examiner’s reasoning. 

12. Section 44 does not require an earlier filed conflicting trade mark to belong to the Opponent.  Neither registration belongs to the Opponent.  However, the Opponent has an interest in registration 1283956.  Liang 1 declares that Victor Liang is one of the owners of registration 1283956.  Indeed he is, owning registration 1283956 jointly with Rachel Evans.  Annexure VL-1 to Liang 1 includes an ASIC company extract for the Opponent.  Neither Victor Liang nor Rachel Evans is a director or office holder of the Opponent.

13. Other details of the two registrations relied upon by the Opponent are shown below:

Registration Number	Trade Mark	Priority Date	Specification of goods
1283956	STAPLE	Feb. 6, 2009	Class 25: Women's clothing being t-shirts, tops, blouses, singlets, jackets, coats, jumpers, vests, overalls, bodysuits, skirts, dresses, pants, jeans, shorts and leggings
1293749	HUE	Mar. 19, 2009	Class 25: Socks, stockings, garter belts, pantyhose, tights, robes, leggings, hosiery, bodysuits, pants, halter tops, tank tops, tube tops, skirts, blouses, shorts, jackets, t-shirts, shapewear, namely, figure-shaping tights, leggings, pantyhose, hosiery and body suits; panties, camisoles, sleepwear, slippers, slipper socks, shoes, footwear, underwear, bras

1. To successfully oppose the Application pursuant to s 44 the Opponent must establish that at least one of the registrations:

   ·     has a priority date earlier than that of the Trade Mark (‘first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘second requirement’); and

   ·     is in respect of similar goods to the Goods (‘third requirement’).

2. The first requirement is manifestly satisfied in both cases.  In relation to the third requirement, s 14 provides that goods are similar to other goods (a) if they are the same as those other goods; or (b) if they are of the same description as that of the other goods.  I find that the Goods are similar to the goods of both of the registrations.

3. The second requirement raises the question whether the compared marks are either substantially identical or deceptively similar.  The test for determining “substantial identity” was articulated by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[5]

   [5] [1963] HCA 66, [12].

4. I find that a total impression of dissimilarity emerges in both cases and so find that the marks are not substantially identical.

5. Deceptive similarity is defined by s 10 which states “[f]or 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”.   The determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have, in recalling the earlier marks, to the impression they would get from the Trade Mark.[6] 

   [6] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1961) 109 CLR 407, 415 (Windeyer J).

6. The examiner’s reasoning was the same in respect of the marks of both earlier registrations.  The First Adverse Examination Report dated 1 June 2023 read:

   The earlier trade mark is the word STAPLE. Your trade mark closely resembles the earlier trade mark because each of the marks possess the word STAPLE/HUE as an essential trade mark element. I note the differences between the marks, namely the words & HUE/ STAPLE & within your trade mark, however these differences are not sufficient to prevent confusion within the marketplace. Consumers who are familiar with the earlier trade mark are likely to infer that your goods arise from the same or related trade source.

   20.     Merely because the marks of registrations 1283956 and 1293749 are contained in the Trade Mark should not automatically lead to a conclusion that the compared marks are deceptively similar - the question is whether the wholly included word has retained a distinctive identity as part of the whole.[7]  In Tivo Inc v Vivo Corporation Pty Ltd, Dodds-Streeton J said:

   [7] Angoves Pty Ltd v Johnson  (1982) 43 ALR 349 at 362.

   The cases are not entirely consistent in relation to whether, and if so, which parts of words are more likely to be slurred, emphasised or misheard, and much appears to depend on the particular circumstances of, and the evidence led in, individual cases.[8]

   [8] Tivo Inc v Vivo Corporation Pty Ltd [2012] FCA 252, [163] upheld on appeal.

7. I am reminded of other cases involving similar class 25 goods where the structure of the marks under consideration was comparable.  In Bianca-Moden GmbH & Co. KG v Bianca and Bridgett Pty Ltd[9] the applied-for trade mark, BIANCA AND BRIDGETT, was found not to be deceptively similar to the s44 mark, bianca.   The second is Paige, LLC v Sage and Paige Collective Pty Ltd[10] where the applied-for mark, a figurative rendition of SAGE & PAIGE, was again found not to be deceptively similar to the earlier mark, PAIGE. 

   [9] [2021] ATMO 30 (15 April 2021).

   [10] [2023] ATMO 57 (10 May 2023).

8. Both of those decisions referred to this Office’s Trade Marks Manual of Practice and Procedure which in this connection instructs that “[w]hen comparing a trade consisting of a given name and a trade mark that consists of two or more given names a real and tangible danger of confusion is less likely to occur between trade marks.”[11]  Further, both cases included evidence that affirmed the use of given names and indeed the coupling of given names as common trade name practice in the clothing and fashion industry.  The outcomes rested on the reasoning that marks were not deceptively similar merely because the opponent’s word mark is contained in the applied-for trade mark and the coupling of given names was no more likely than not to signal a merger or collaboration of brands or some other economic or organizational link.

   [11] The IP Australia Trade Marks Manual of Practice and Procedure Part 26 Annex A1.

9. Returning to the comparison at hand, the words “staple” and “hue” are not obviously forenames, but a different question arises from the evidence as to their distinctiveness.  Bagnell declares that she chose the Trade Mark because she wanted the Applicant “to centre on supplying ready-to-wear ‘staple’ clothing items … in colour ‘hues’ to drive desire”.  The Exhibits to Bagnall appear to support this, for example, using straplines such as “Luxury Staple Wear”.   Hutchins offers her opinion that “[t]he word staple and reference to wardrobe staples is a common phrase and/or use…” .  Liang 2 appears to confirm this, making the observation that “the [A]pplicant has in the past named collections ‘Staple Denim’, ‘Staple Luxe’ and ‘Staple Intimates’”, but asserting that these expressions consist of an essential element (Staple) and descriptive terms.  Laing 1 has nothing to say other than that he and Rachel Evans created the Trade Mark.  The Annexures to the declaration do not disclose anything that might assist my comparison of the marks, albeit that I note in passing that use appears to be almost exclusively of “Staple The Label”, rather than “Staple”, solus, something of significance later in this decision. 

10. I accept on this evidence that the word “staple” may at some level allude to the Goods.  Even the Opponent’s goods might be seen as a range of staple classics, albeit that I could find no promotion of that idea in its evidence.  There is less to be made of the word “hue”, a synonym of “colour”, but no more descriptive of the Goods than, for example, the word “blend”.  In short, I find that the words “staple” and “hue” are not wholly arbitrary terms when applied to those Goods, but nor is it immediately obvious that the words relate to the Goods in a direct manner such that the examination process might have raised s 41 (lack of distinctiveness) as a ground for refusal.

    25.     I am guided, more than a century on, by Clark v Sharp where it was said that:

    One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.[12]

    [12] Clark v Sharp (1898) 15 RPC 141 at 146.

11. One indicator of “general effect” which has remained helpful over the years places importance on the element of a composite mark which first strikes the eye and thus may be more memorable because of imperfect recollection.  For that reason, the Trade Mark is more likely to be deceptively similar to STAPLE (registration 1283956) than to HUE (registration 1293749) and so I will make that assessment first.  

12. The relevant question is whether the earlier mark retains or loses its identity because of the ampersand and additional word element.   Even taking account of the allusive character of the word “staple”, I do not consider that it is enough to significantly dilute its influence in the Trade Mark, taken as a whole.  I think it is sufficiently memorable and has enough of a “trade mark quality” about it that it is likely to be recalled by a consumer.   If, on the other hand, “Staple & Hue” gives the different impression of two surnames or business names then the danger is, as previously discussed, one of a perception of likely collaboration of brands or of some economic link, also resulting in confusion.

13. On balance, I find that the Trade Mark so nearly resembles the registered mark STAPLE that it is likely to deceive or cause confusion.  With this finding I no longer need consider registration 1293749 since all three requirements of s 44(1) are met. 

14. What remains is whether, by way of exceptions to the operation of s 44(1), s 44(3) or 44(4) apply.  Since there are no submissions from either side, I am able to make my own summary finding here that s44(4) does not apply.  Bagnell declares that the Trade Mark was used by the Applicant from 2016 onwards, well after the priority date of registration 1283956 (February 6, 2009).  Further, I find that aside from the question of “honest concurrent use” (s44(3)(a)), discussed below, there are no other circumstances making it proper for me to accept the Trade Mark (s44(3)(b)).

    Honest concurrent use

15. As stated, registration 1283956 was cited as a ground for refusal of the Application.  The Applicant filed evidence and the Endorsement – decoded – is a sign that this Office accepted the Trade Mark in spite of the earlier registration because the examiner was satisfied that the Applicant had shown honest concurrent use of the Trade Mark within the meaning of s 44(3)(a). 

16. Following Office practice, the examiner summarised that evidence.  The examiner’s notes state that the “[Trade Mark] was adopted honestly and [A]pplicant was not aware of cited marks when mark was adopted.”

17. In the SGP, the Opponent states that:

    The Applicant, in the past, had attempted to secure trade mark rights on same trade mark by filing trade mark application no. 2090857 on 25 May 2020.  Trade Mark no. 1283956 was cited during examination of the applicant’s Trade Mark application no. 2090857. Further, during the examination the applicant secure[d] acceptance by providing evidence under Section 44(3) i.e. honest concurrent use. We do not believe they qualified for honest concurrent use.  Thereafter, a Notice of Opposition against registration of trade mark application no. 2090857 on 12 November 2020 was filed and subsequently Statement of Grounds and Particulars were filed on 13 November 2020. However, the Applicant did not file Notice of Intention to Defend by due date, because of that the Application got lapsed.

18. The facts alleged are essentially correct.   Liang 1 objects that Bagnall did not disclose to the examiner the Applicant’s earlier, failed attempt to register the Trade Mark by way of application 2090857 in the face of refusal based on the Opponent’s registration 1283956, or the related opposition proceedings.  

19. I observe that the examiner was presented with a declaration made by Sarah Louise Bagnall on 1 August 2023.  That declaration is entitled “Evidence of Honest Concurrent Use”.  It refers to the citation of registration 1283956 under s 44 but makes no mention of the application 2090857 or of the opposition to that application brought by the Opponent.

20. In these opposition proceedings, Bagnall is more forthcoming, declaring that “[a]lthough I am aware that the Opponent opposed [application 2090857], I … have not falsified any facts and I believe [the Opponent’s] opposition [to application 2090857] bares no relevance to this Application.” 

21. Hutchins, a financial controller engaged by the Applicant as a contractor, declares - inconsistently - on the same date as Bagnall, that “[p]rior to any trademark opposition proceedings commenced by the Opponent, I did not know the Opponent's brand 'staple the Label' existed or that it was in the same niche. It is certainly not a competitor, nor is it on our competitor research.” 

22. Liang 1 declares that the STAPLE trade mark has been used continuously since 2009 across Australia and in respect of all the goods covered by registration 1283956.  The sales information in the declaration is clearly covered by the confidentiality claim but I can say that by 2016 the sales figures of STAPLE branded goods was far from insignificant.  Moreover, the trade mark had been registered for a decade before the Applicant first sought to register the Trade Mark.   The evidence is such as to raise a reasonable inference that the Applicant was aware of the STAPLE mark, or should have been so but for wilful blindness.  That said, use of a trade mark may be honest even though it commenced with the applicant’s knowledge of a prior trade mark[13] , but as stated in Shanahan, “that circumstance will generally make it more difficult to establish honesty”[14].   Burrell and Handler are more explicit, writing that, “the honesty of the applicant’s use is the most significant factor [in honest current use], in that it acts as a threshold requirement … honesty needs first to be established”.[15]

    [13] Alex Pirie & Sons Ltd’s Application (1933) 50 RPC 147 at 159.

    [14] Shanahan’s Australian Law od Trade Marks and Passing Off, Lawbook Co, 2022, (7^th ed) at [40.2015].

    [15] Australian Trade Mark Law, Burrell and Handler, op. cit. at p 283.

1. On the balance of the evidence, I do not find the adoption the Trade Mark to have been honest.  If I am found to be wrong in that conclusion, the evidence of Bagnall and Hutchins fails more fundamentally to satisfy s 44(3)(a) because the declarants consider the concurrent use of the Trade Mark beside the mark, Staple The Label, not the trade mark of registration 1283956.

2. Exercising my discretion, I decline to apply s 44(3)(a) and with that decision the Opponent’s ground of opposition under s 44 is established.

   Decision

3. Section 55 of the Act provides:

   (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.

4. The Opponent has established a ground of opposition in respect of all of the Goods. Accordingly, I refuse to register trade mark number 2362521.  If the Registrar is served with a notice of appeal, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should otherwise be in accordance with the Court’s order or direction.

   Costs

5. Costs follow the cause and since the Opponent has been successful I award costs against the Applicant.

   Debrett Lyons

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   13 December 2024