National SIDS Council of Australia Ltd v Xtreme Sports Importacao Exportacao E Comercio Ltda

[2005] ATMO 50

TRADE MARKS ACT 1995

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

Re:Opposition by National SIDS Council of Australia Ltd to registration of trade mark application 881185(25) - RED NOSE, WITH BULL TERRIER DEVICE - filed in the name of Xtreme Sports Importacao Exportacao E Comercio LTDA.

Delegate:

Terry Williams

Representation:

Opponent: Ben Fitzpatrick of counsel, instructed by Davies Collison Cave patent attorneys

Applicant: written submissions by Phillips Ormonde & Fitzpatrick, patent attorneys

Decision:

S 52 opposition: applicant’s mark not deceptively similar to RED NOSE DAY - S60 not established in re unregistered trade mark RED NOSE – registration proceeding.

Background

Xtreme Sports Importacao Exportacao E Comercio LTDA (“the applicant”) has applied to register a trade mark as follows:

The applicant seeks registration in respect of clothing and headgear excluding footwear, being goods in class 25. The Trade Marks Office has examined the application and advertised it as accepted for possible registration, but this is opposed by National SIDS Council of Australia Ltd (“the opponent”). After the evidence stages set out in Part 5 of the regulations under the Trade Marks Act 1995 (“the Act”) I was assigned to hear the matter and decide it under delegation from the Registrar of Trade Marks. At the hearing, the applicant relied on written submissions prepared by its patent attorneys, Phillips Ormonde & Fitzpatrick. The opponent was represented by Ben Fitzpatrick of counsel, instructed by Davies Collison Cave, patent attorneys. Ms Dace Johansons, a solicitor, assisted Mr Fitzpatrick at the hearing.

Evidence

Briefly, the evidence establishes that the applicant intends to market clothing in Australia under the trade mark.  The clothing is already on sale overseas and sales have been quite extensive since the mark was adopted in mid 1996.  Sales (worldwide) amounted in 2001 to over seven million Australian dollars.  However, it appears that despite quite significant sponsorship by the applicant of Australian teams and events involving “extreme” sports, there have been no sales in Australia.  The trade mark was adopted because the Red Nose Pit Bull terrier is apparently known, overseas if not in Australia, as a strong and aggressive dog.

Such dogs are found in Australia.  In the applicant’s evidence in answer, exhibit DBF9 is a relevant advertisement for one available for “adoption”.  However, as to this the opponent relies on the declaration of Bonnie Norton, part of the evidence in reply.  Ms Norton is secretary to the American Pit Bull Terrier Club of Australia.  She declares that, while a red nose might be a characteristic of some bloodlines of American Pit Bull Terrier, there is, technically speaking, no breed of dog known as a Red Nose.  To Ms Norton, as to most of the other declarants who give evidence in a mini-survey on which the opponent relies, the words “red nose” mean something to do with “the SIDS Foundation” or some similar group.

The rest of the opponent’s evidence is to the effect that the opponent, its activities and its RED NOSE DAY fundraising have become very well known indeed.  The opponent’s evidence also shows that there has been trading use in relation to clothing, as distinct from the sale of comic red noses, the opponent’s notorious forte.  The volume is smaller but apparently some $15000 of clothing is sold each year under the trade mark RED NOSE DAY. 

I can give some weight to the mini-survey that makes up the major bulk of the opponent’s evidence in reply.  At the hearing, Mr Fitzpatrick said that some of the persons surveyed were employees of Davies Collison Cave, the opponent’s patent attorney firm.  He was explicit in nominating and excluding those declarations from any reliance.  That still leaves 17 declarations from people who have never heard of a Red Nose Pit Bull Terrier, and who associate the words Red Nose with either the opponent or, less frequently, with Rudolf the Red Nose reindeer. 

I would not ordinarily be much swayed by a survey of this type[1] except that it is consistent with my own observations and with the trend of the rest of the opponent’s evidence.  I do not, however, regard the survey as being directly relevant to the question of deceptive similarity.  The survey does not, as the applicant’s submissions point out, address the question of confusion of one trade mark with another, or the issue of imperfect recollection.  The survey was apparently conducted without any of the declarants being invited to comment on the applicant’s trade mark.  Instead, the key issue was “what do you think of when you hear the words RED NOSE?”

[1] Ferodo Ltd's application, 62 RPC 111, reprinted more conveniently as 1B IPR 489. Per Evershed J: "twenty-five such statements might appear impressive in weight of paper but would represent so slight a fraction of the whole population as to be no guide to popular opinion and no reliable measure of the notoriety of the mark."

Issues

The notice of opposition cited a number of grounds that were not pursued.  Mr Fitzpatrick relied on grounds under sections 44, 42 and 60, with passing reference to s 43.  He conceded that the s 42 ground would be decided in terms consistent with my decision under s 60, given that the s 60 threshold is lower than under laws relevant to s 42, such as the Trade Practices Act.  I will deal with the other grounds in order.

Section 44 – deceptively similar trade mark.

Mr Fitzpatrick relied on the opponent’s registered trade mark 756801, the words RED NOSE DAY.  He did not argue that the marks were substantially identical but that the trade mark is deceptively similar to the mark that the applicant now seeks to register.  The other aspects of s 44 are all established so the decisive issue is per section 10: 

For 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 applicant’s written submissions argue that the applicant’s mark would leave an impression of aggression, violence, danger or menace.  This, if so, would be relevant, since, per Australian Woollen Mills Ltd v FS Walton and Co Ltd[2], the impression or recollection which is carried away and retained is necessarily the basis for any mistaken belief that the challenged mark is the same (or, obviously, not the same).  With that in mind, the applicant argued that its trade mark will be recalled or asked for as “RED NOSE with the device of a pit bull terrier”, or “the clothing with the pit bull on the label”.  The applicant also alleges that the angular and pointed font of its trade mark will emphasise the distinction between its goods and the opponent’s RED NOSE DAY trade mark.

[2] 58 CLR 641

Mr Fitzpatrick argued that ordinary good sense would refute these things.  The strong element of the applicant’s mark was the words RED NOSE.  This was a highly unusual and distinctive combination in relation to clothing and also the element that emerges with great force from RED NOSE DAY.  At the hearing, Mr Fitzpatrick urged me to note that, on the register of trade marks, as in ordinary life, various DAY trade marks coexisted.  RED NOSE DAY was therefore, he said, more about RED NOSE than DAY.  The dog device was not sufficient to distinguish the respective marks.  It could play no part in aural use, and he noted also that, as Shanahan stated in the third edition of Australian Law of Trade Marks and Passing Off at para [7.105]:

Where a trade mark combines a device with a word, customers will more naturally refer to the word when ordering the product.

This cannot be taken too far, of course.  The fact that one or more of the word elements might be prominent is not necessarily fatal where these are common to the trade.  See the re-statement of an obvious principal by Susan Farquhar, then the Chief Assistant Registrar, in J Reynolds Tobacco Co v Philip Morris Inc 12 IPR 256 at 259.. Ms Farquhar dealt there with the capacity of the mark to distinguish, but the same issue emerges when comparing competing marks that are so capable.

The evidence here suggests that the words RED NOSE are strongly distinctive, well recognised and associated with the opponent.  Even the applicant’s evidence suggests that Mr Fitzpatrick has a point here.  He illustrated its appropriateness by reference to Exhibit MLCL10 in the applicant’s evidence in answer to the opposition.  This is an agency agreement between the applicant and its Australian agent, who was authorised to sub-licence the merchandising of “XTREME’S RED NOSE property”, said elsewhere to be in “a brand known as RED NOSE”.  Nowhere in the agency agreement is the actual trade mark depicted or the dog device mentioned. 

That is not to say that the applicant’s arguments are disingenuous.  The applicant’s target market is said, in its evidence in answer to the opposition, to be those involved in extreme sports.  To those who know what is meant, it makes perfectly good sense, I would imagine, to refer to the applicant’s trade mark by the convenient shorthand of RED NOSE, just as was done in the agency agreement.

I will accept the (unsupported, but prima facie reasonable) suggestion in the applicant’s written submissions that such customers tend to be single, between the ages of 18 and 35.  No doubt within the target market, the distinctions between the the applicant’s mark and the significance that the words RED NOSE DAY would have in the broader community would be maximised.  However, the opponent’s evidence, uncontested, claims that its biggest support group, after mothers with children at home, is the 18-24 age group.  Therefore, I do not accept the applicant’s argument that the target market for its goods is necessarily distinguishable from that of the opponent.  In any case, ultimately, the test is “what can the applicant do if it obtains registration”[3].  Consistently, I am to assess this trade mark as one proposed for use on clothing generally, and to make no assumptions about the mode of use that the opponent will make of its own registration in class 25. 

[3] Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, (1954) 91 CLR 592 at 594-595

I also agree with Mr Fitzpatrick that the applicant’s reliance on the significance of “red nose” as a type of pit bull terrier should carry little weight.  The opponent has done sufficient to negate the significance of those words, in Australia, as an indicator of a type or bloodline.  The picture of the dog appearing in the applicant’s mark is thus not, in my view, emphasised or reinforced by any meaning or implication in the words RED NOSE. 

However, in C A Henschke & Co v Rosemount Estates Pty Ltd[4], the Full Bench of the Federal Court said:

[4] [2000] FCA 1539

Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, as in the present case, it would be artificial to separate out the physical features of the mark from the viewer's perception of them.  For in the end the question of resemblance is about how the mark is perceived.  In the instant case the visual impact of the name `Woolworths' cannot be assessed without a recognition of its notorious familiarity to consumers."

and subsequently

in assessing the nature of a consumer's imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration.

The applicant’s strongest argument goes to the impression of the mark as a whole.  The argument is that a typical clothing buyer would, in all probability, react to the dog device in terms something like “What is that big ugly dog all about? Clearly, these goods have nothing to do with the opponent, which has something to do with cot-death, or children or some such”. 

I am also required to consider how the trade mark might appear on clothing tags, swing tickets and the like.  During the course of deciding this matter, I have had the opportunity to consider the applicant’s trade mark in various sizes.  On the examiner’s clear report, in particular, the mark is large and the ugly and savage dog is very obvious.  It is less so on the application form, where the trade mark is somewhat smaller.  It seems to me that there may be a point beyond which the dog device loses its impact and the word elements become dominant.  Once past that point, the words might arguably speak louder than the device.

On small, embroidered clothing tags, of the sort sewn onto the inside of shirts or where the trade mark is embroidered on a small label on the outside of jeans, it may be that the dog device would not retain particular force. However, I do not believe that such instances would be the norm because, when goods are put onto the market, it is rare that just a single internal label or embroidered patch would be relied on to the exclusion of wrappers, swing tags and so forth.  In such instances, in a market where the goods are normally bought with every opportunity for inspection or trying on by the customer, the look and visibility (and hence, from the seller’s point of view, the clarity) of the trade mark will be important.

Section 44 is a notional comparison.  The question is not just the simple one of “will people expect the applicant’s trade mark to indicate a connection with the opponent?”, though that is, of course, one aspect of it.  The true issue must also take in a full range of options, and is of the form:  “If the applicant is to use its registered trade mark in any of the ordinary ways that a clothing manufacturer is entitled to, and place its goods on the shelves of, for instance, department stores and jeans shops, will that trade mark be confused, or likely to be confused, with that of the opponent, or otherwise cause confusion”.  When the matter is approached in those terms, the argument put by the applicant would not ordinarily be a sufficient answer.  However, the factor addressed by the Full Bench of the Federal Court in Henschke, supra, is applicable.  The test proposed by Shanahan (also supra) is therefore not particularly accurate in this matter. 

No matter how the opponent may choose to use its trade mark in future, it is unreasonable to approach this decision on the assumptions that either the words RED NOSE DAY are devoid of meaning, or that the applicant’s trade mark consists of the word elements RED NOSE alone.  Because of the prominent and ugly dog device and the conceptual differences between RED NOSE DAY and RED NOSE, I am not satisfied that the competing trade marks are deceptively similar.

This ground of opposition is therefore not established. 

Section 60 – deception or confusion.

Section 60 is a complex piece of drafting but the threshold test is: does the opponent rely on a deceptively similar trade mark?  This ground of opposition, based on use and reputation in the registered trade mark RED NOSE DAY, suffers the same fate as in relation to s 44. 

Perhaps anticipating such a contingency, Mr Fitzpatrick argued that, in terms of s 60, the opponent can also rely on the plain upper case trade mark RED NOSE, an unregistered trade mark.  That those two words have actually been used as a trade mark is not particularly clear from the evidence, which was cast to highlight the use of the registered trade mark, RED NOSE DAY.  Partly for the sake of argument, I am prepared to infer that the simple words RED NOSE have been used as a trade mark.  However, the same evidence that supports that inference also shows that the reputation of RED NOSE as a trade mark in the hands of the opponent is inseparable from the opponent’s own reputation and its once-a-year RED NOSE DAY fundraising.  Confusion arising from the use of the presently applied-for trade mark by the applicant is therefore unlikely and accordingly the s 60 ground is not established. 

Section 42 – contrary to law

My comments about the lack of deceptive similarity and lack of conflict under s 60 are relevant here.  It follows from these that I am not satisfied that the use of the applicant’s trade mark would be caught by the law of passing off or by the Trade Practices Act 1974.

Section 43

Given my comments about the activities of the opponent, I am not satisfied that the words RED NOSE, in the form in which they are contained in the trade mark, would connote either the opponent or Red Nose Day, the charitable fundraising campaign of the opponent.

Conclusion

No ground of opposition has been established.

The trade mark application may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Terry Williams

Hearing Officer

Trade Marks Hearings

27 September 2005