Nerrin and Glenn Warr

[2011] ATMO 68

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1364006(9, 25, 35) - WHITE LINE SKUNK (Stylised)- in the names of Nerrin Warr and Glenn Warr.

Delegate:

Alison Windsor

Representation:

Applicant:  Shaun Creighton and Kim Crow of Aruna Trade Mark Attorneys

Decision:

2011 ATMO 68

Ex parte – grounds for rejection under section 44 – goods and services same or closely related – trade marks not substantially identical or deceptively similar – application accepted for possible registration.

Background

1. Nerrin and Glenn Warr (‘the applicants’) filed an application to register a trade mark under the provisions of the Trade Marks Act 1995 (‘the Act’).  Current details of the application are shown below:

Application number      1364006

Filing date  28 May 2010

Goods/services               Class 9:  Articles of protective clothing for wear by motorcyclists for protection against accident or injury

Class 25:  Apparel (clothing, footwear, headgear); articles of clothing made of leather; articles of waterproof clothing; articles of water-resistant clothing; articles of weatherproof clothing; articles of windproof clothing; belts (clothing); clothing; clothing of imitations of leather; clothing of leather; clothing, not being protective clothing, incorporating reflective or fluorescent elements or material; clothing, not being protective clothing, treated with fire and heat retardants; gloves (clothing); interlinings for clothing; jackets (clothing); leather belts (clothing); motorcyclists' clothing (other than for protection against accident or injury); pockets for clothing; rainproof clothing; ready-to-wear clothing

Class 35:  Presentation of goods on communication media, for retail purposes; retail services; retailing of goods (by any means); distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); wholesaling of goods (by any means); advertising; advertising services provided over the Internet; marketing; product marketing

Trade mark:  

1. The application was examined in due course and the first official report issued on 24 August 2010. This report raised grounds for rejecting the application under the provisions of section 44 of the Act and cited three earlier dated trade marks, details of which appear below:

Registration No:              769727

Owner:                Anthony Wright

Registered from:             1 June 1998

Goods:Class 25:  Men's, women's and children's clothing, headwear and footwear made in whole or in part with hemp fabric

Trade Mark:  

Registration No:              981914

Owner:Skunk Surf Pty Ltd

Registered from:             13 December 2003

Goods:Class 25:  Clothing, footwear, headgear

Trade Mark:  

Endorsement:                  Provisions of paragraph 44(4) applied.

Registration No:              1017687

Owner:Skunk Surf Pty Ltd

Registered from:             26 August 2004

Services:Class 35:  Retailing of clothing, footwear and headgear

Trade Mark:  

1. The applicants provided submissions in rebuttal.  However, the examiner maintained the objection that the registered trade marks were deceptively similar to the applicants’ trade mark.  She found that the overall impression of all the trade marks was the word ‘skunk’; that the words ‘white line’ were descriptive in relation to both the skunk animal and the goods the goods claimed; that the skunk idea is so dominant in each trade mark that it is the memorable impression that customers will retain; and that there was no clear distinction in the goods and services which would indicate different trade channels.  The applicants then asked to be heard.

2. I was delegated by the Register to hear the matter in Canberra on 23 June 2011.  Shaun Creighton and Kim Crow of Aruna Trade Mark Attorneys appeared on behalf of the applicants.

Submissions

1. Mr Creighton explained, both in his response to the examiner’s report and verbally at the hearing, that the applicants’ use of the trade mark was aimed specifically at recreational motorcycle riders.  He said that the goods are only intended to be promoted, sold and provided through an online medium to this particular niche market.  He maintained that this distribution arrangement meant that it would be highly improbable that the trade mark would ever be promoted or sold through the same distribution channels as the cited trade marks, or be available from the same distribution outlets.   

2. In addition, he argued that the cited trade marks and that of the applicants were neither substantially identical nor deceptively similar. He said that despite the word ‘skunk’ appearing in all the trade marks, it would be most unlikely that the applicants’ trade mark would be truncated to that word alone.  The words ‘white line’ precede the word ‘skunk’ in the applicants’ trade mark, he said, and this factor would reduce the likelihood of deception or confusion arising because the emphasis of the trade mark would most likely be placed on these two first words.

3. In addition, Mr Creighton argued that the words ‘white line’ were a specific reference to white lines as road markings and are thus critical to the trade mark’s relevance to the target motorcyclist market.  Any elimination of the ‘white line’ component of the trade mark, he said, would result in the trade mark being used in a manner other than as intended.

4. He also commented that if all the trade marks under comparison were assessed merely by reference to the word ‘skunk’ without considering them in their entireties, this approach would have the effect of “giving the owners of marks which merely contain the word ‘skunk’ a de facto monopoly-style right in a broader range of uses of those marks than intended by the Act”.

Discussion and reasons

1. This matter is to be decided under the provisions of section 44, the only ground for rejection raised by the examiner against the applicant’s trade mark.

2. Subsections 44(1) and 44(2) are relevant to the present circumstances.  They provide that an application for registration must be rejected if the applied for trade mark is substantially identical with, or deceptively similar to, the trade mark of another person’s application or registration that has an earlier priority date and covers similar goods or closely related services, and/or similar services or closely related goods to those the applicant is claiming. 

3. The expression ‘deceptively similar’ is defined in section 10 as follows: 

   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. 

4. Section 14 defines ‘similar goods’ and ‘similar services’ as follows:

   (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.

Similarity of goods and services

1. The applicants have applied for various goods classified in classes 9 and 25 as well as services in class 35 which broadly includes retailing and wholesaling services. Of the three earlier dated trade marks cited as being relevant in terms of section 44, two are registered for goods in class 25 (763727 and 981914) and the third (1017687) is registered for services in class 35, being the retailing of those goods which are identified in class 25.

2. There is no question that the applicants’ goods in class 25 and the goods of registrations 763727 and 981914 encompass the same or similar goods.  Mr Creighton has put significant emphasis on the applicants’ targeted market, specifying that it is for recreational motorcyclists.  The applicants’ specification of goods in class 25 is not restricted in any way to make this clear and, even if it was, the matter of ‘notional use’ on the part of the registered owners must be taken into account. 

3. The two registered owners have registered their trade marks for broad claims for goods in class 25 and they have the right to use their trade marks for those broad claims.  I repeat the claims here for convenience: 

   763727:  Men's, women's and children's clothing, headwear and footwear made in whole or in part with hemp fabric

   981914:  Clothing, footwear, headgear

4. It can be seen that the goods for registration 763727 have been restricted only to those made wholly or partly of hemp fabric.[1]  The goods in 981914 arguably cover all or any goods which can be described as clothing, footwear and headgear, except for those items of clothing classified elsewhere, such as in class 9 (protective clothing).  The latter specification of goods obviously includes those items made from hemp[2], as well as any clothing specifically aimed at motor cycle riders, other than specific protective clothing classified in class 9.  It is at this point in the reasoning that the matter of notional use becomes relevant.

   [1] This is an interesting restriction as the word ‘skunk’ is defined in the Oxford Dictionary on-line as a slang reference to “a variety of marijuana having a pungent smell; esp. (in later use) an extremely potent variety made from hybrid plants grown under artificial conditions”.

   [2] I note that this trade mark was accepted under the provisions of paragraph 44(4) (prior use).

5. Section 20 of the Act specifies that the registered owner of a trade mark has the exclusive right to use the trade mark in relation to the goods and/or services for which it has been registered. Shanahan’s Australian Law of Trade Marks & Passing Off[3], paragraph 25.1020 discusses notional use under section 44 as follows:

   In assessing the risk of deception or confusion contemplated by s 44, the tribunal assumes that both trade marks will be used (in the words of Evershed J in the Smith Hayden case[4]) in a "normal and fair manner" for all the goods or services covered by the registration or application in question. The statutory rights of use must be compared rather than the actual modes of use and indeed neither trade mark need have been in use at all. Thus it will not avail an applicant that the goods or services proposed for registration are not "of the same description" as the particular products for which the cited trade mark is actually used if the cited registration covers other goods or services that are "of the same description". The applicant's proper course in that case is to seek a restriction of the cited registration for non-use pursuant to s 92.

   Similarly, not only the particular usage that is planned for the applicant's trade mark but all manners of use within the scope of the registration sought are relevant. Consideration must be given to the ordinary ways that a trade mark can be used in a commercial setting. Differences extraneous to the trade marks themselves, such as differences in get-up, price, quality and manner of sale or promotion, should have no relevance under s 44, and nor should the fact that the actual products sold are not competitive.

   [3] 4^th Edition, Thomson Reuters, Legal Online

   [4] Smith Hayden & Co Ltd’s Appn (1946) 63 RPC 97

6. In the context of the trade marks under consideration, each proprietor has the right to use its trade mark for the whole range of goods for which it is registered or potentially registered.  None of the owners, except for the owner of 763727, has restricted in any way the goods they have claimed in class 25.  The applicants’ goods specification in class 25 therefore clearly contains goods which are the same and of the same description as those of both cited proprietors, despite their submissions about the niche market at which the goods are aimed.  

7. In addition, the applicants’ claim for a broad range of sales services in class 35 encompasses the same services as those for which 1017687 is registered, namely retailing of clothing, footwear and headgear.  Their submission that their sales and distribution is through the internet and not via any other means does not overcome this conflict as the actual claim in class 35 is much wider than internet sales.  Again, the applicants have made claims which are not supported by the information appearing in their trade mark application.  

8. Since it is clear that both the cited owners and the applicants are providing the same goods (at least in class 25) and offering the same kind of services, the issue which will decide whether or not this application may proceed to acceptance and possible registration is whether the trade marks are substantially identical or deceptively similar.

Comparison of trade marks

1. When deciding whether two trade marks are substantially identical, the accepted test involves comparing them side by side, noting their differences and similarities and assessing the importance which these points of comparison have with regard to the essential features of the registered trade mark and the total impression of resemblance or dissimilarity emerging from the comparison.[5]  A side by side comparison of the applicants’ trade mark with each of the cited trade marks demonstrates clearly that there are more differences than similarities, even though all four trade marks include the word ‘skunk’.  The trade marks are therefore not substantially identical.

   [5] Per Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at

   414-415

2. Deceptive similarity, however, raises a different test.  The trade marks are not now compared side by side.  The scenario is one in which the potential purchaser of the relevant goods is aware of one of the trade marks but not necessarily of the other and is faced with the unknown trade mark in the marketplace.  Whether or not the trade marks will cause confusion within that customer’s mind will depend largely on the impression that person has formed of the known trade mark.

3. The examiner considered that there was “an overall impression of a skunk in the applicant’s trade mark and in each of the cited trade marks”.  She considered that the words ‘white line’ were descriptive both in relation to the animal and the goods claimed, as they indicated a connection with motorcycles and described an inherent characteristic of skunk animals.  She said that the skunk idea is so dominant in each trade mark that “it is the memorable, overriding impression that customers will retain”, and therefore there was a high likelihood of confusion between the trade marks.

4. Mr Creighton submitted the following:

   • The examiner’s conclusion that the applicants’ trade mark is deceptively similar to the cited trade marks amounts to creating a monopoly in the word ‘skunk’ and fails to assess the marks in their entirety.
   • The look and sound of the marks under comparison are different.
   • The ideas of the marks are different.
   • The use of the respective marks in the normal way would not lead to confusion in the mind of the public.
   • There is authority to suggest that the first part of a mark is the most important when comparing trade marks.

5. The last dot point above is a reference to the London Lubricants case[6], which was applied by the Federal Court in Eurovogue.[7]  Sargant LJ in London Lubricants made the observation:  

   But the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgement, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.

   [6] London Lubricants (1920) Ltd’s Appn(1925) 42 RPC 264

   [7] Conde Nast Publications Pty Ltd v Virginia Taylor (1998) 41 IPR 505

6. Each of the trade marks includes the word ‘skunk’.  In registration 763727 the word is the only constituent which is likely to leave an impression on the mind as the remainder of the image consists of background lines and swirls.  Registrations 981914 and 1017687 include the word ‘skunk’, but both also include a strong and almost overwhelming cartoon device component.  The device is, to my mind, only recognizable as the image of a skunk because the word is placed immediately below it.  The white stripe on the animal’s head is not clearly definitive of skunks – I note that badgers also have a white stripe down the centre of the head and there are undoubtedly other animals with similar colour patterns. 

7. The applicants’ trade mark also includes the word ‘skunk’ but as the third word in a three-word trade mark – WHITE LINE SKUNK.  The words are presented in a stylised script with a white line running horizontally through some of the letters.  The word ‘skunk’ is not altogether distinct because of the design of the typeface in which it is presented.  However, even if the word is clear to the person viewing it, it is impossible to ignore the two words preceding it.

8. Not only is it impossible to ignore the words ‘white line’, but also I consider that it is an error to do so.  A trade mark should be considered as a whole.  It is not appropriate to choose one word from what is a three-word expression and completely ignore the others, especially when these others are the initial words in the expression forming the trade mark and thereby arguably carry more weight. 

9. In addition I consider that the examiner has read far too much meaning into the applicants’ trade mark.  I can see no good reason for assuming that the words ‘white line’ must be a clear reference to skunks.  Animals are usually referred to as being striped – that is, having a white stripe rather than a white line.  And I am not aware of the white stripe being the usual method of identifying that an animal must be a skunk.  To my mind, the three words which the applicants have chosen as their trade mark are disparate in meaning, and the composite whole which they create is, if not meaningless, at least without a definite meaning.

10. Similarly, I consider that the idea of ‘white line’ as having some clear reference to motorcycling is stretching things somewhat, even though it is standard practice in Australia for the dividing lines on major sealed roads to be white.  The applicants have mentioned that there is a connotation within the words which is relevant to motorcycling, but it is far from a clear connotation and I have no indication that the applicants’ opinion of its relevance is widespread.  Once the words are added to the word ‘skunk’, the three-word group seems to lose any defined meaning rather than gain one.  Putting all this together, I do not consider that there is any real tangible danger of the applicants’ trade mark being seen as related in any way to those of the cited owners or as being likely to cause deception or confusion in the minds of potential customers.

11. Another point to note here is that if the cited owners are not in agreement with my opinion, they have the option to oppose the granting of registration.  The detailed matters of mode of use and channels of use and the likelihood of confusion resulting from those factors can be aired in the adversarial forum allowed for by the opposition process.

Decision

1. I am satisfied that the applicants’ trade mark does not offend against the provisions of section 44 of the Act. I accept it for possible registration.

Alison Windsor

Hearing Officer

Trade Marks Hearings

26 July 2011