Molicopi S. L. v Aleksandra Miletic

[2024] ATMO 190

TRADE MARKS ACT 1995

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

Re:Opposition by Molicopi, S.L. to registration of trade mark application numbers 2199092 (classes 25 and 35) – PICCOLINI (fancy) – and 2199094 (classes 25 and 35) – PICCOLINI  SHOES – in the name of Aleksandra Miletic

Delegate:	Debrett Lyons
Representation:	Opponent:  Griffith Hack Applicant:  Michael Buck IP
Decision:	2024 ATMO 190 Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 42(b), 44 and 60 pressed – s 44 established – trade marks refused registration

Background

1. This decision is in respect of oppositions under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Molicopi, S.L. (‘Opponent’) to registration of the following trade marks:

Trade mark no:           2199092

Trade mark:                  (‘Fancy Mark’)

Specification:             Class 25: shoes; shoes for infants; footwear for babies; footwear for children; socks; canvas shoes; footwear

Class 35: retail services; online retail services

Trade mark no:           2199094

Trade mark:                PICCOLINI  SHOES (‘Word Mark’)

Specification:             Class 25: shoes; shoes for infants; footwear for babies; footwear for children; socks; canvas shoes

Class 35: retail services; online retail services

(together, ‘the Applications’)

1. The Applications were both filed on 1 August 2021 by Aleksandra Miletic (‘Applicant’) and were examined as required by s 31 of the Act. On 2 January 2022, the Applications were published as accepted. On 17 February 2022, the Opponent filed Notices of Intention to Oppose and on 8 March 2022, the Opponent filed Statements of Grounds and Particulars (‘SGPs’) after which the Applicant filed a Notices of Intention to Defend on 2 May 2022.

2. The parties then filed evidence, common to both Applications, in accordance with the Trade Mark Regulations 1995 (Cth) (‘Regulations’) as follows:

   Evidence in support (‘EIS’)

   Declaration of Antonio Perán del Vas, Managing Director of the Opponent, made 25 July 2022 with Annexures 1-7[1]

   [1] The EIS is identical but was filed as separate declarations on different dates, the second declaration being made on 1 August 2022.

   Evidence in answer

   Declaration of Aleksandra Jela Miletic made 7 November 2022 with Exhibits AM-1 to AM-10 (‘Miletic’)

   Evidence in reply

   None

3. There then followed cooling-off and suspension requests resulting in a hiatus in proceedings for quite some time.  Finally, the parties requested a hearing by written submissions.  The matter has been allocated to me, a delegate of the Registrar of Trade Marks, to decide, which I do, based on those submissions, the SGPs, the evidence described above and the Official records pertaining to the Applications.

   Grounds of opposition, onus, and relevant date

4. The SGPs are essentially identical and nominate grounds of opposition under ss 42(b), 44, and 60 of the Act. The Opponent bears the onus of establishing at least one of those grounds.[2]  The standard of proof is the civil standard of the balance of probabilities[3]  and the date at which the rights of the parties are to be determined is 1 August 2021, being both the filing date and priority date of the Applications (‘Relevant Date’).

   [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

   Section 44

   6. Section 44(1) of the Act provides:

   Section 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)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.

   (2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) 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 services or closely related goods; or

   (ii)     a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1: For deceptively similar see section 10.
   Note 2: For similar services see subsection 14(2).
   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.

   (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.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.
   Note 3: For priority date see section 12.

5. To succeed under this ground of opposition the Opponent must establish that the applied-for trade marks are substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Applicant, in respect of similar goods or closely related services, or similar services or closely related goods, and that neither of s 44(3) nor (4) applies.  

6. The Opponent is the owner of the following trade mark registrations which it cites as the basis for s 44:

Trade mark no.	Trade mark	Specification	Priority date
944262	Class 25: Shoes (except orthopaedic footwear), clothes and headwear	3 October 2002
1603360	PIKOLINOS	Class 25: Clothing, footwear, headgear	21 Aug 2013
1840900	Class 18: Leather and imitation leather, goods made thereof not included in other classes; animal skins and hides; bags, handbags, trunks and suitcases; umbrellas, parasols, walking sticks; whips and saddlery; tanned hides; wraps of skins and hides (furs); leather cords; leather lining for footwear; leather lacing; leather straps; leather covers Class 25: Footwear, except orthopaedic footwear; clothing and headwear; iron fittings for footwear; non-slip devices for footwear; reinforcements for footwear; tips for footwear; shoes; espadrilles; boots; bootlegs; clogs; sneakers; ankle boots; sandals; beach footwear; bath slippers; sports footwear; gym shoes; football shoes; ski boots; sports shoes; heels; soles; insoles; belts; bathing suits; cyclists' clothing; waterskiing suits; blouses; sweaters; socks; stockings; neckerchiefs pocket handkerchiefs to be used with accessories such as bags and handkerchiefs used as belts; suspenders; underclothing; shirts; neckties; sashes for wear; scarves; stoles; neck warmers; skirts; swimsuits; beach clothes; knitwear; suits; uniforms; short- sleeved shirts; hats; hat frames; headdresses; top hats Class 35: Sales promotion for third parties and exclusive representations, including via commercial advertisements and online advertisements; services for the wholesale, retail sale and sale via global communications networks; advertising services; business services including via global communications networks; business services, including the promotion of the goods and services of third parties via online notices and advertisements and posting on an electronic site accessible via computer networks; auction sales services accessible via global communications networks; professional business consulting; organisation of exhibitions for commercial or advertising purposes including via global networks; commercial information; distribution of samples, advertisements and other advertising materials; cost-price analyses; market research and studies; efficiency experts; transcription and compilation of written communications, recordings and all types of data; advertising via all means of dissemination, relating to all kinds of goods or services, particularly footwear, clothing, headgear, accessories for those goods bags, perfumery, timepieces and jewellery; import and export services; assistance with the running or management of an industrial or commercial company; franchising assistance	12 April 2017

1. The registrations each have a priority date earlier than the Relevant Date. Section 14(1) of the Act provides:

   Definition of similar goods and similar services

   (1)  For the purposes of this Act, goods are similar to other goods:

   (a)  if they are the same as the other goods; or

   (b)  if they are of the same description as that of the other goods.

   (2)  For the purposes of this Act, services are similar to other services:

   (a)  if they are the same as the other services; or

   (b)  if they are of the same description as that of the other services.

2. The Opponent states that:

   Each of the Opponent’s Trade Marks cover footwear and shoes in Class 25, and its Trade Mark No. 1840900  additionally covers a variety of sales, retail and advertising services in Class 35.  … The Applications cover shoes and footwear in Class 25, and retail services in Class 35. … Each of the Applications covers the same goods and services as the Opponent’s Trade Marks. The parties’ goods are the same in nature and purpose, and are sold through the same trade channels – both in person and online. Further, as the Applicant has not limited the goods to only children’s shoes, the class of consumers of the Applicant’s Goods and Services, and the Opponent’s Goods and Services, are the same. In other words, the Applicant’s Goods and Services are similar to the Opponent’s Goods and Services for the purpose of section 44.

3. I find that there is direct overlap. In terms of the Act, the Applicant’s class 25 goods are all similar goods to the goods covered by the Opponent’s registrations and the Applicant’s class 35 services are all similar services to the services covered by the Opponent’s registration 1840900.

4. The remaining question for the purposes of s 44 is whether the applied-for marks are substantially identical with, or deceptively similar to, the marks of the registrations.  The Opponent argues that they are both substantially identical and deceptively similar.

5. The relevant comparisons are not the same in law.  In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (“Shell”) the test for substantial identity was set out as follows:

   [the marks] 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.[4]

   [4] [1963] HCA 66, [12].

6. The compared marks are:

PIKOLINOS PICCOLINI  SHOES

1. The closest comparison is between the Opponent’s word mark, PIKOLINOS, and the marks of the Applications.  If, on a side-by-side comparison of those marks, a total impression of resemblance does not emerge then they are not substantially identical.

2. The Opponent’s submission is that the phrase DESIGNED IN AUSTRALIA in the Fancy Mark and the word SHOES in the Word Mark, are descriptive of the applied-for goods and should not be considered essential features of those marks, citing the case of Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 at [52] where the Full Court of the Federal Court said:

   ...it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. ...

3. In that case the Full Court found that the following marks were substantially identical

   because the words CLINICAL IMAGING and RADIOLOGY were descriptive of the common services and the circular graphics were largely non-distinctive, determining that the shared word INSIGHT was the dominant cognitive clue.

4. The decision is of limited assistance in this case because although I wholly agree with the Opponent that the phrase DESIGNED IN AUSTRALIA and the word SHOES are inessential features of the applied-for marks, and find that the outer circle of the Fancy Mark is non-distinctive, what remains is not the same. 

5. Whilst it may be true that the residual matter in each mark “starts with the letter P and consist of four syllables the first three of which create the sound PEE- CO- LEEN” (to use the Opponent’s language), that does not necessitate the conclusion that a total impression of resemblance emerges and I find that it does not. 

6. The Opponent submits that the compared marks are also deceptively similar. 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.

7. For trade marks to be considered deceptively similar there must be a real and tangible danger of deception or confusion occurring.[5]  This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the goods or services come from the same trade source.[6]  In other words, the impression or recollection of the trade marks that is carried away and retained by the ordinary consumer is likely to lead to confusion as to the origin of the goods.[7]  Accordingly, an allowance is made for imperfect recollection of the trade marks.[8] The impression comes from the trade marks in their entirety,[9] and is informed by the look, sound and ideas conveyed by the trade marks.[10]

   [5] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).

   [6] Ibid.

   [7] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

   [8] Crazy Ron's Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [77] (Moore, Sackville, and Emmett JJ).

   [9] Clarke v Sharp (1898) 15 RPC 141, 146 (Byrne J).

   [10] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

8. The Opponent advanced a number of reasons why the marks should be considered deceptively similar, in particular, that “[t]he Opponent’s Trade Marks and the Applications are aurally identical”.  Clearly, that is not so but the Opponent goes on to state that:

   PIKOLINOS contains four syllables which are likely to be pronounced by the average Australian consumers as PI- CO- LEE- NOS or PI- CO- LIN-OS, or PI- CO- LEE- NO or PI- CO- LIN-O The word does not carry a particular meaning in English. At most it may convey an idea of something small due to aural similarity of PIKOLINOS with the word PICCOLO which is often used to refer to small sized items such as piccolo flutes. The Opponent submits that PIKOLINOS gives the impression of a word of Greek, Latin or other European origin.

   …

   Like PIKOLINOS, PICCOLINI contains four syllables which are likely to be pronounced by Australian consumers as PI- CO- LEE- NI- or PI- CO- LIN- I. … Like the Opponent’s Trade Marks, PICCOLINI may give the impression of a word of European origin.

9. The Applicant, on the other hand, submits that:

   [b]oth …words … have very different meanings, which create different impressions. The word PICCOLINI is Italian and means ‘young one’, whereas the word PIKOLINOS is a Spanish word which means ‘cord’ or ‘twine’. 

10. Whilst the Miletic declaration states that PICCOLINI is an Italian unisex word for “little ones”, the Opponent submits that the Applicant has not established that the ordinary Australian consumer would understand this meaning.  In this regard, the Opponent relies on the High Court decision in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48, where at [72]-[73] it was found that Australian consumers were unlikely to understand the meanings of ORO or CINQUE STELLE. The Opponent submits that Australian consumers would no better understand PICCOLINI and I am inclined to agree that these Italian words stand approximately on all fours with one another. Accordingly, I am drawn to the conclusion that conceptually the marks would most widely be seen as of European origin and perhaps a gender-based or other variation of the same word or root word.

11. It follows that, aurally, the words would be pronounced in a very similar way, notwithstanding the variation in spelling.  I find the stylizations minor in the overall assessment of how the marks would be perceived and, for that matter, not relevant in aural presentations to a consumer.  Further, as set out above, the phrase DESIGNED IN AUSTRALIA and the word SHOES are descriptors of very low distinctiveness.

12. The key issue is imperfect recollection and the impact the marks have on the mind and memory of a consumer which in this case is drawn from a broad, non-specialist market.  On balance, I find that there is a real and tangible danger of confusion and for that reason find deceptive similarity in respect of each of the Opponent’s trade marks and each of the applied-for marks.

13. Section 44 would thus be made out but I note that, whilst acknowledging 1 August 2021 as the Relevant Date in these proceedings, the Applicant stated that “[t]he only evidence that is relevant for the purposes of this opposition, is evidence showing use prior to that date.”  There are no written submissions that either of s 44(3) or (4) should apply.  However, if s 44(4) is to save the Applications, only evidence which demonstrates continuous use by the Applicant of its trade marks since before 3 October 2002 will suffice—that date being the priority date of the Opponent’s 944262 trade mark.

1. The Miletic declaration states that the applied-for marks have been used since 2020 in relation to children’s shoes.  Elsewhere, the declaration states that the Applicant’s business was founded in 2020 but that first sales were “in 2021.”  Clearly, neither of those dates is earlier than 3 October 2002, so s 44(4) does not assist the Applicant. This leaves s 44(3) to be considered.

2. The sales figures given are confidential, but I can characterise them as modest and covering the period 2021 – 2023.  In terms of s 44(3)(a), the honest concurrent use provision requires consideration of several factors, one of which is the Applicant’s honesty (see Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, generally at [243]) (‘Vivo’).  The declarant states her belief that the applied-for marks are distinctive but there is no indication that trade mark searches or other due diligence was made before adopting the marks.  So, whilst adoption was not dishonest in a lay sense, nor was it careful of other’s rights and the Vivo case requires me to bear in mind the degree of confusion likely between the trade marks.  I have already found them to be deceptively similar to the Opponent’s marks. 

3. In these circumstances of limited time and use I am not inclined to find that the Applicant is an honest concurrent user within the meaning of s 44(3)(a).  There are no relevant submissions from the Applicant, and nothing before me which satisfies me that the provisions of s 44(3)(b) applies—which might otherwise allow acceptance of the applications because of ‘other circumstances’.

4. Accordingly, s 44 is satisfied and the ground of opposition is therefore successful in both cases.  It is not necessary to consider the other grounds in the SGPs.

   Decision

   32. Section 55 of the Act relevantly 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.

5. The Opponent has established a ground of opposition. Accordingly, I decide that registration of trade mark numbers 2199092 and 2199094 should be refused.  If the Registrar is served with a notice of appeal the disposition of the applications should otherwise be in accordance with the Court’s order or direction.

   Costs

   34. The Opponent sought costs. It is usual for costs to follow the event, and there is no reason to depart from that principle in this case. I award costs against the Applicant in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Regulations. The oppositions proceeded on essentially identical evidence and so I order that costs in relation to the second opposition be calculated in accordance with the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad (2001) 53 IPR 591.

   Debrett Lyons
   Hearing Officer
   Oppositions and Hearings
   Trade Marks and Designs
   4 October 2024