Mo Industries, LLC v Prince Holly Tan, LLC

[2018] ATMO 162

TRADE MARKS ACT 1995

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

Re:Opposition by Mo Industries, LLC to registration of trade mark application 1821748 (18, 25) - ELLA MOON (Stylised) - in the name of Prince Holly Tan, LLC.

Delegate:	Cristy Condon
Representation:	Opponent: Francesca Colubriale Special Counsel of Spruson & Ferguson Applicant: David Larish of Counsel
Decision:	2018 ATMO 162 Trade Marks Act 1995(Cth) – opposition under s 52 – s 44 discussed – s 44 established - Trade Mark registration refused

Background

1. Prince Holly Tan, LLC (‘the Applicant’) filed an application to register a trade mark under the provisions of the Trade Marks Act 1995 (‘the Act’) on 24 January 2017.

2. Relevant details of the trade mark application are:

   Trade Mark No. 1821748

   Trade Mark: (‘the Trade Mark’)

   Specification of Goods:

   Class 18: purses, and handbags, all-purpose carrying bags, tote bags, traveling bags, shoulder bags, clutch purses, backpacks, athletic bags, wallets, coin purses and cosmetic bags sold empty

   Class 25: Clothing, footwear, and headgear, including blouses, shirts, t-shirts, sweatshirts, pants, denim jeans, slacks, shorts, skirts, tunics, tank tops, dresses, sweaters, scarves, jackets and coats, raincoats, fashion headbands and hats, belts, sleepwear, lingerie, socks, gloves, and hosiery

   Collectively (the ‘Applicant’s Goods’)

   Endorsements: Convention priority claimed: 2 August 2016, Trinidad and Tobago, No. 51752 in respect of PURSES, AND HANDBAGS, ALL-PURPOSE CARRYING BAGS, TOTE BAGS, TRAVELING BAGS, SHOULDER BAGS, CLUTCH PURSES, BACKPACKS, ATHLETIC BAGS, WALLETS, COIN PURSES AND COSMETIC BAGS SOLD EMPTY in class 18; CLOTHING, FOOTWEAR, AND HEADGEAR, NAMELY, BLOUSES, SHIRTS, T-SHIRTS, SWEATSHIRTS, PANTS, DENIM JEANS, SLACKS, SHORTS, SKIRTS, TUNICS, TANK TOPS, DRESSES, SWEATERS, SCARVES, JACKETS AND COATS, RAINCOATS, FASHION HEADBANDS AND HATS, BELTS, SLEEPWEAR, LINGERIE, SOCKS, GLOVES, AND HOSIERY in class 25.*

3. The trade mark application was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 16 March 2017.

4. Subsequently, Mo Industries, LLC (‘the Opponent’) filed a Notice of Intention to Oppose and a Statement of Grounds and Particulars (‘SGP’), collectively forming the ‘Notice of Opposition’. The Applicant then filed its Notice of Intention to Defend.

5. Thereafter, and within the specified timeframes, the parties filed their evidence.

   6.     On 14 August 2017 the Opponent requested a hearing. The matter came before me, a delegate of the Registrar of Trade Marks, on 22 August 2018 in Canberra. The Opponent was represented by Francesca Colubriale, Special Counsel of Spruson & Ferguson who made oral submissions which supplemented her written submissions. David Larish of Counsel on behalf of the Applicant, made oral submissions which supplemented his written submissions.

   Grounds of Opposition and Onus

6. The Notice of Opposition specifies grounds of opposition under ss 42, 44, and 60 of the Act.

   8.     The Opponent bears the onus of establishing a ground of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2] Should the Opponent establish one ground of opposition in relation to all of the Applicant’s Goods, there is no requirement for me to consider the other grounds of opposition. That said, any or all of the grounds nominated in the SGP may be subject of appeal to the Federal Court or the Federal Circuit Court.[3]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132].

   [3] Section 56 of the Act.

   9.     The rights of the parties are to be determined as at the date of the application[4] which is generally, but not always, the filing date[5]. The relevant date in this opposition is the convention priority date of the application which is 2 August 2016 (‘Relevant date’).

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, [595].

   [5] See sections 6, 12, and 72 of the Act.

   Preliminary Matters – Regulation 21.15(4)

   10.     On 12 June 2018 I received correspondence from the Opponent which contained the declaration of Francesca Colubriale made on 12 June 2018, including Annexure A. This declaration refers to a decision of the European Union Intellectual Property Office made on 31 May 2018 in respect of the opposition by Mo Industries to European Trade Mark Application No. 16 280 026 in the name of Prince Holly Yan, LLC and concerns a similar set of marks to those presently under consideration in this decision. (‘the EU decision’).

   11.     On 17 July 2018 I received correspondence from the Applicant which contained the declaration of Vineetha Veerakumar made on 17 July 2018, and Annexure 1 thereto. This declaration refers to the Applicant seeking leave to appeal the EU decision.

   12.     I consider the EU decision and the Applicant’s leave to appeal the decision are relevant to the current opposition matter although I do recognise that I am not bound by trade mark opposition decisions made in other jurisdictions.

   13.     I informed the parties via email on 12 June 2018 and 24 July 2018 respectively that due to the nature of the above evidence, the fact that it was not available to the parties during the evidence stages and that each is something I consider both parties are aware of I will allow both the EU decision and the Applicant’s leave to appeal under regulation 21.15(4) of the Trade Mark Regulations 1995.

   Evidence

   14.     The parties rely on the following evidence:

   Evidence in Support

   ·     Declaration of Itzhak Weinstock, Authorised Signatory of the Opponent, made on 11 October 2017 with Annexure A, Confidential Annexure B, Annexures C to F, Confidential Annexure G and Annexure H.

   Evidence in Answer

   ·     Declaration of Melanie McLean (‘McLean’), Solicitor for the Applicant, made on 15 December 2017 with Annexure 1 to 11.

   Evidence in Reply

   ·     Declaration of Itzhak Weinstock made on 16 February 2018 with Annexure I.

   Regulation 21.15(4) of the Act

   ·     Declaration of Francesca Colubriale made on 12 June 2018, including Annexure A, and;

   ·     Declaration of Vineetha Veerakumar made on 17 July 2018, and Annexure 1.

   Discussions and Reasons

   Section 44

   15. Section 44 of the Act relevantly provides:

   44     Identical 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)     it 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.

   […]

   (3)  If the Registrar in either case is satisfied:

   (a)     that there has been honest concurrent use of the 2 trade marks; or

   (b)     that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

   Note:       For limitations see section 6.

   (4)  If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

   (a)     beginning before the priority date for the registration of the other trade mark in respect of:

   (i)        the similar goods or closely related services; or

   (ii)       the similar services or closely related goods; and

   (b)     ending on the priority date for the registration of the applicant’s trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   16.     It follows that the Opponent must establish the Trade Mark is substantially identical with, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, in respect of similar goods or closely related services. 

   17.     In support of this ground, the SGP cited three trade mark registrations (‘the Opponent’s trade marks’). Relevant details of these registrations appear in the table below:

Trade Mark No.	Priority date	Opponent’s Mark	Registered Goods/Services
1175895	10 May 2007	ELLA MOSS	Class 25: Clothing, including T-shirts, tank tops, sweatshirts, shorts, jeans, jackets, skirts, blouses, swimwear, dresses; footwear, including shoes and headgear including hats
1260613	4 September 2008	ELLA MOSS	Class 35: Retail store services and on-line retail store services featuring apparel and related accessories, cosmetics, personal care goods, and house wares and linens
1584202	4 October 2013	ELLA MOSS	Class 18: Backpacks; book bags; sports bags; wallets; handbags; purses; tote bags; umbrellas; briefcase-type portfolios; toiletry bags sold empty; cosmetic bags sold empty; shaving kit bags, sold empty; attache cases; briefcases; satchels; duffel bags; luggage; garment bags for travel; billfolds; tie cases; key cases; diaper bags; belts; covers for electronic devices

18.     The registered owner of the above trade marks is the Opponent. These trade marks have earlier priority dates than the Relevant date.

19.     It is plainly evident that the Opponent’s trade mark numbers 1584202 and 1175895 cover the same goods as the Applicant’s Goods; namely clothing, footwear and headgear in class 25 and the many purses and cases, covers and bags in class 18. And, in the interest of completeness, I am also satisfied that the Applicant’s Goods are closely related to the Opponent’s class 35 services covered by trade mark number 1260613 being; the retailing of various specific goods which include the Applicant’s Goods. This is because potential purchases have come to expect that in these cases the goods themselves and their retail typically originate from the same source. 

20. Thus, in respect of trade marks 1175985, 1260613 and 1584202 the Opponent has established two of three criteria needed to establish the s 44 ground of opposition.

21.     The Opponent did not press whether the Trade Mark is substantially identical to the Opponent’s trade marks hence the only remaining issue is whether the Trade Mark is deceptively similar to the Opponent’s trade marks.

Deceptively similar

22. Section 10 of the Act defines a ‘deceptively similar’ trade mark as:

[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.

23.     In the New Zealand case of Pioneer Hi-Bred Co v Hyline Chicks Pty Ltd, Richardson J explained the concepts of ‘deceive’ and ‘cause confusion’ as follows:

‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.[6] 

[6] [1979] RPC 410, [423].

24.     Moreover, when considering the concept of deceptive similarity ‘the marks are to be compared both visually and aurally’[7] and all of the surrounding circumstances are relevant to the consideration, such that any consideration is essentially a question of fact and meaning:

You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods.[8]

[7] Optical 88 Ltd v Optical 88 Pty Ltd (No. 2) [2010] FCA 1380, 89 IPR 457, [111]; see also Moroccanoil Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823, [173] per Katszmann J.

[8] Pianotist Co.’s Application (1906) 23 RPC 774, [777].

25.     Lastly, when considering whether the respective trade marks are deceptively similar they must not be looked at side by side. The established tests say 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 impressions that such persons would get from the defendant’s trade mark’.[9]

[9] Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 414-415.

26.     The question of whether the Trade Mark is deceptively similar to the Opponent’s trade marks was the subject of much debate between the parties and I have outlined some their arguments below.

27.     Opponent has argued that the distinctive and memorable feature of the Trade Mark is the word ‘ELLA’, a recognised female first name. ‘Ella’ is wholly contained within the Opponent’s trade marks where it retains its identity as a distinctive and memorable feature.

28.     It also argues that each of the trade marks comprise of two words of the same length where the only different letters are the last two of the second word element. Therefore it claims the marks are visually similar.

29.     The Opponent also submits that the Trade Mark and the Opponent’s trade marks are aurally similar due to each of them starting with the same word ‘ELLA’, the second word in each starts with an ‘M’ sound and all of the trade marks have three syllables.

30.     The Applicant submits that the marks in question are visually and aurally distinct. There is no deceptive resemblance of ideas between the marks. The Trade Mark includes the word, ‘Moon’ and not ‘MOSS’ and both of these words have different meanings. ‘Moon’ is defined as (et al) ‘The natural satellite of the earth, visible (chiefly at night) by reflected light from the sun’[10]. Whereas the second word in the Opponent’s trade marks is ‘Moss’ which has a completely different meaning to ‘Moon’ and can be defined as ‘A small flowerless green plant which lacks true roots, growing in low carpets or rounded cushions in damp habitats and reproducing by means of spores released from stalked capsules’[11]. The Applicant submits these meanings or something similar mean these trade marks are conceptually distinct and ‘there is no logical relationship between MOON and MOSS. Nor do these words have any meaning with respect to clothing’.[12]

[10] Applicant’s written submissions, [17].

31.     The Applicant also calls my attention to other trade marks on the Trade Mark Register that start with the word ‘ELLA’. The Opponent’s counter-argument is that these other marks do not contain a second word with four letters where the first two of which are the same as those in the Opponent’s trade marks.

32.     Even if I were to accept the Applicant’s proposition that ‘ELLA’ is a common first name in the context of trade marks in use in the clothing industry[13] and that ‘ELLA’ is not the only essential feature of both marks, I must assess the overall impression left by the marks. I should not undertake a detailed deconstruction of the marks in question.

[13] McLean, [7] –[16]; Annexures 1-16.

33.     Bearing this in mind, and having considered all of the submissions put forward by both parties and the relevant authorities, I am of the opinion that the Trade Mark is deceptively similar to the Opponent’s trade marks. My reasons for this finding are discussed below.

34.     It well accepted that the first part of any trade mark is usually the most memorable and that the ends of words can be slurred[14] - in my opinion this seems particularly true of the Australian vernacular which is full of nasal twang (I find this is particularly prevalent in a few Australian television dramas but I digress).

[14] London Lubricants (1920) Limited's Application (1924) 42 RPC 264 at page 279, line 30

35.     According to the House of Lords in the Rysta case[15] (‘Rysta’) ‘the Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech not only on the part of the person seeking to buy under the trade description but also of the shop assistant ministering to that person’s wants’ but this should not be too forcefully emphasised as Lord Greene MR in Rysta explained below:

The doctrine of imperfect recollection must not be carried to far. In considering its application not only must the class of person likely to be affected be considered, but no more than ordinary possibilities of bad elocution, careless hearing or defective memory ought to be assumed’

[15] ‘Rysta’ case, 60 RPC 87.

36.     In terms of imperfect recollection, and particularly relevant here, is that the Trade Mark is stylised. It is not immediately obvious that the second element of the Trade Mark is the word ‘Moon’. Indeed, upon closer inspection I consider the Trade Mark could just as equally be read as ‘Ella Moor’ or ‘Ella Mooh’ and/or be imperfectly recollected as ‘ELLA MOSS’. It is very difficult to read the second word of the Trade Mark. I say this because no other letters in ‘Moon’ are joined other than the last two letters which draws my attention to the first two letters which are the same as the those in the second element of the Opponent’s trade marks. In addition to this both ‘Moon’ and ‘MOSS’ include a double letter. That is, ‘OO’ in the Trade Mark and ‘SS’ in the Opponent’s trade marks.

37.     I find the Trade Mark and the Opponent’s trade marks are conceptually different as has been explained in [30] but I think the similarities in the marks and the fact they have the same strong first element ‘ELLA’ would heighten the chance they would be imperfectly recollected as denoting the same trade source.

38.     I am satisfied that there is a real tangible danger[16] that potential purchasers will be deceived and confused as to the source of the Applicant’s Goods.

[16] Registrar of Trade Marks v Woolworths (1999) 93 FCR 365, [43].

39.     I am satisfied that the Trade Mark is deceptively similar to the Opponent’s trade marks.

40.     The Applicant has not provided any use of the Trade Mark[17] so I am unable to consider whether it is appropriate to apply the provisions of ss 44(3) or 44(4) of the Act.

[17] The McLean declaration contains the details of Ms McLean’s search of the Australian Trade Mark Register and Annexure 1to McLean is a search report detailing the results of this search, as well as extracts of the marks returned by this search. The other Annexuers to McLean include copies of Internet search results for the search term ‘Ella’.

41. Accordingly, the ground of opposition under s 44 of the Act has been established.

Decision

42. 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.

43. I find that the Opponent has met the onus upon it, in terms of the ground of opposition under s 44. Accordingly I refuse to register trade mark application no. 1821748.

Costs

44. 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 under s 221 of the Act in terms of Schedule 8 of the Trade Mark Regulations 1995.

Cristy Condon
Hearing Officer
Hearings and Oppositions
4 October 2018