Neat Feat Products Ltd v Neet Feet Pty Ltd

[2003] ATMO 72

TRADE MARKS ACT 1995

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

Re:Opposition by Neat Feat Products Limited to registration of trade mark application 863240 & 874438(25) - NEET FEET, NEET FEET PERSONALITY FOR YOUR FEET & DEVICE - filed in the name of Neet Feet Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent: (no appearance)

Applicant: Peter Hallett of Griffith Hack, Attorneys

Decision:

1. Section 52 Opposition: s55(b) registration allowed

2. Costs awarded against opponent

1. 
   The applicant, Neet Feet Pty Ltd, filed trade mark application number 863240 on 18 January 2001 for the word trade mark neet feet and trade mark application number 874438 on 3 May 2001, for the trade mark neet feet personality for your feet and device. The latter trade mark is shown below:

1. Both applications were in respect of the following goods:

   Class 25: Shoes (excluding sports shoes) and slippers

2. Acceptance for registration of application 863240 was advertised in the Official Journal of Trade Marks on 28 June 2001, and acceptance for registration of application 874438 was so advertised on 6 September 2001. 

3. On 29 October 2001 notice of opposition in respect of application 863240, and on 3 December 2001 notice of opposition in respect of application 874438, were filed at the Trade Marks Office.  Both notices were filed on behalf of the opponent, Neat Feat Pty Ltd, by its solicitors A.J. Park.

4. Evidence in support was duly filed with the Trade Marks Office and served on the applicant.  Similarly, evidence in answer was duly filed with the Trade Marks Office and served on the opponent.

5. The matter was heard in Canberra on 8 August 2003 before me as a delegate of the Registrar of Trade Marks. The opponent was not represented. Mr Peter Hallett, of Griffith Hack Patent and Trade Mark Attorneys, represented the applicant.

6. The opponent listed nine purported grounds of opposition in both of its notices of opposition. Grounds recognised by the Trade Marks Act 1995 (“the Act”) and prima facie supported by evidence were those pursuant to sections 42, 43, 44, 58 and 60.

The Evidence

1. The evidence consists of the following declarations.

Declarant	Date declared	Exhibits	Known As
Evidence in Support
Anthony Roger Humphrey LAITY	24 July 2002	ARHL-1 to ARHL-12	Laity
Michael Thomas REILLY	1 August 2002	Reilly
Evidence in Answer
Nick NICOLAIDES	24 October 2002	NN-1 to NN-13	Nicolaides

1. The Laity declaration is made by the managing director of the opponent company and details the opponent’s activities in Australia since 1994 and also includes some commentary that is, perhaps, more in the nature of submissions than evidence.

2. The Reilly declaration is made by a managing director of a grocery brokerage company in Australia. He is aware of the opponent’s goods and declares that he would be confused as to the origin of footwear products bearing the applicant’s trade marks.

3. The Nicolaides declaration is made by the general manager of the applicant company.  It details the use of the applicant’s marks on footwear since 1995 and provides confidential evidence relating to considerable sales of its goods in Australia since 1995.  It also states that the applicant is unaware of the existence of the opponent and asserts that the opponent’s goods are unlikely to be sold alongside those of the applicant.

Ground 1: s58 - Applicant not owner of Trade Mark

1. Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. In order to establish this ground, it is incumbent upon an opponent to show that the applicant is not the first user in trade in Australia of the applied-for trade mark. To do so, the opponent must show, at a minimum, that not only is the applied-for trade mark substantially identical to the older trade mark, but that it is applied to the same kind of goods: Re Hicks’ Trade Mark (1897) 22 VLR 636 at 640.

2. The applicant’s evidence demonstrates that it has used its trade marks in Australia in connection with footwear since 1995.

3. The opponent’s evidence demonstrates use of its trade mark in respect of Class 3 goods, for deodorants, antiperspirants, perfumery preparations and perfumes, toiletries and non-medicated toilet preparations and all other goods in this class, since 1993.  Its trade mark has been used in connection with “slipper sox” since 1998.

4. The opponent’s Class 3 goods are not the same kind of goods as footwear.  Thus there is no relevant prior use of the opponent’s mark.  I dismiss this ground of opposition.

Ground 2: s 44 - Deceptive Similarity

1. The opponent cited its prior registration 594300 for neat feat in Class 3 for deodorants, antiperspirants, perfumery preparations and perfumes, toiletries and non-medicated toilet preparations and all other goods in this class.  594300 has a priority date of 19 January 1993.

2. The matters for determination are:

(a)whether the applicant's mark is deceptively similar to the registered trade mark cited by the opponent in that it so nearly resembles that mark that it is likely to deceive or cause confusion (Section 10); and

(b)whether the trade mark cited by the opponent is registered in respect of similar goods; that is, the same goods or goods of the same description.

1. Class 3 goods are not similar goods to Class 25 goods for the purposes of s44: Estee Lauder Cosmetics Ltd v Warnaco Inc [2000] ATMO 103.

2. I dismiss this ground of opposition.

Ground 3: s 60 Ground - Reputation

1. To satisfy section 60 of the Act, the opponent has the burden of establishing the following elements:

   (a)          a pre-existing trade mark;

   (b)substantial identity or deceptive similarity between the applied for trade mark and the pre-existing trade mark;

   (c)the acquisition of a reputation in Australia by the pre-existing trade mark; and

   (d)a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

2. The opponent has demonstrated a pre-existing trade mark; however, and without canvassing the identity or similarity issue, I am not satisfied that there is sufficient reputation to infer a likelihood of deception or confusion.

3. Reputation can be inferred from a high volume of sales along with substantial advertising and promotional expenditures: McCormick & Co Inc v McCormick (2000) 51 IPR 102, at 127. The reputation must be more than minimal, and a substantial or significant number of persons must be likely to be deceived or confused: Re Smith Hayden & Co Ltd’s Appn (1946) 63 RPC 97 (Ch D).

4. I have considered the evidence of sales and advertising expenditure of the parties. The opponent’s sales and advertising budgets are too modest for me to draw the inference of reputation. I am, therefore, not satisfied that the opponent has acquired such a reputation as to make it likely that a substantial or significant number of persons would be likely to be deceived or confused even if the marks were substantially identical or deceptively similar. I therefore dismiss this ground of opposition.

Ground 4: s 42 - Use of Trade mark Contrary to Law

1. The opponent asserts that the use by the applicant of its trade marks will amount to conduct in the course of trade that is misleading or deceptive or is likely to mislead or deceive contrary to sections 52 and 53 of the Trade Practices Act 1974.  The opponent’s evidence includes the assertion in the Laity declaration’s to that effect, and the Reilly declaration stating that the declarant believed confusion would occur.

2. To establish this ground, the opponent must show that the use of the trade marks would, rather than could, be contrary to law: Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24 at 32. Conduct causing mere confusion or uncertainty in the minds of the public, in the sense that there may be cause to wonder whether two products or services have come from the same source, is not necessarily co-extensive with misleading or deceptive conduct: Equity Access Pty Limited v Westpac Banking Corporation (1989) 16 IPR 431, per Hill J at 440-442.

3. The Laity declaration states that the declarant “believes that any such use would be contrary to any or all of the [relevant sections of the Trade Practices Act]”. The opponent needs to adduce evidence in addition to that.  The Reilly declaration does not take the matter to the level required to satisfy s 42(b).

4. I therefore dismiss this ground of opposition.

Ground 5: s 43 -Trade mark likely to deceive or cause confusion

1. Section 43 provides:

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

2. T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720 (31 May 2000) at paragraph 43 confirms that the connotation referred to within section 43 must be one which arises from the applied for trade mark itself – it is not to be determined from a comparison of trade marks.

3. The opponent’s evidence does not state what the relevant connotation is. At most, it requires a comparison of the trade marks, which is not, in terms of TGI Friday’s, above, appropriate.

4. I dismiss this ground of opposition.

Conclusion and Decision

1. The opponent has not established any of the grounds of opposition on which it relied.

2. The trade mark applications may proceed to registration one month from the date of this decision subject to the payment of the registration fees.  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.

Costs

1. The applicant sought its costs.  I see no reason why I should not take the usual course of awarding costs to follow the event.  I order that the opponent pay the applicant's costs in accordance with the official scale.

Jock McDonagh

Hearing Officer

Trade Marks Hearings

28 November 2003