New Look Limited v Payless Shoes Pty Ltd

[2011] ATMO 14

TRADE MARKS ACT 1995

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

Re:Opposition by New Look Limited to registration of trade mark application 1157089(25) - NEW LOOK - filed in the name of Payless Shoes Pty Limited.

Delegate:

Alison Windsor

Representation:

Opponent:  Michael Buck of Michael Buck IP

Applicant:  Andrew Fox of counsel, instructed by Peter Maxwell & Associates

Decision:

2011 ATMO 14

S52 opposition: Grounds under ss 42(b), 58, 60 and 62A pursued – no grounds established – application to proceed to registration – costs awarded against opponent

Background

1. Payless Shoes Pty Limited (‘the applicant’) filed an application to register a trade mark on 15 January 2007 (‘the priority date’).  The application claimed goods in class 18 (handbags, backpacks and travel bags; leather and imitations of leather and goods made from these materials including wallets) and class 25 (footwear).  The application is for the following trade mark:

(‘the Trade Mark’)

1. The application was examined as required by section 31 of the Trade Marks Act 1995 (‘the Act’). The examiner concerned found that there were grounds for rejecting the application under the provisions of section 41 of the Act. The applicant requested that the goods in class 18 be deleted from the application and provided evidence of use to support acceptance under the provisions of subsection 41(5) for the remaining goods. The application was then accepted for possible registration for the goods claimed in Class 25, endorsed with the information that the provisions of subsection 41(5) had been applied. The acceptance was advertised in the Australian Official Journal of Trade Marks on 11 September 2008.

2. New Look Limited (‘the opponent’) filed a notice of opposition on 3 December 2008.  Thence followed the service and filing of evidence in support, in answer and in reply.  The process was completed by 21 June 2010, after which the applicant requested to be heard.

3. I was delegated by the Registrar to hear the parties in Sydney on 16 November 2010.  The opponent was represented by Michael Buck of Michael Buck IP.  The applicant was represented by Andrew Fox of counsel, accompanied by George Griziotis of Peter Maxwell & Associates, the instructing legal firm.

Notice of opposition and onus

1. The notice of opposition nominates all relevant grounds of opposition allowed by the Act. The onus is on the opponent to establish one of these in order to succeed.[1]  The standard of proof required is that of the balance of probabilities.[2]

   [1] Lomas v Winton Shire Council [2003] AIPC 91-839; [2002] FCAFC 413

   [2] Following Gyles, J in Pfizer Products Inc v Karam (2006) 70 IPR 599. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26].

2. At the hearing the opponent pursued grounds of opposition relevant to the following sections of the Act:

   • section 58 - applicant not owner of trade mark;
   • section 42(b) - use contrary to law
   • section 60 – trade mark similar to one with a reputation in Australia and
   • section 62A – application made in bad faith.

3. For completeness, I decide that the remaining grounds nominated on the notice of opposition have not been established.

Evidence

1. The evidence provided in this matter consists of the following declarations:

Evidence in Support 

• Neil Nayaka, Legal Counsel of the opponent, made 29 June 2009, with Exhibits A and B

Evidence in Answer

• Peter Venter, Senior General Manager Merchandise of the applicant, made 2 October 2009, with Exhibits PV-1 to PV-16

Evidence in Reply

• Michael Coyle, director of Mooty Design Pty Ltd, made 8 June 2010, with Exhibits MC-A to MC-C
• Judith Hancock, Assistant Company Secretary of the opponent, made 3 June 2010, with exhibits A to J
• Rachel Baker, Australian resident, made 8 June 2010, with Exhibit RB-A
• Michael Buck, trade mark attorney, made 8 May 2010, with Exhibits MB1-A to MB1-P
• Michael Buck, trade mark attorney, made 8 June 2010
• Michael Buck, trade mark attorney, made 9 June 2010, with Exhibits MB2-A to MB2-B

Opponent’s Evidence in Support and in Reply

1. In his declaration Neil Nayaka states that the opponent adopted a logo (‘the New Look Logo’) in 2002.  The New Look Logo was designed for the opponent by a UK design business and ownership of it was transferred to New Look Retailers Limited by an agreement dated 10 May 2002, a copy of which is attached to the declaration.  The opponent uses the New Look Logo with authorization from New Look Retailers Limited.  A copy of the New Look Logo appears below.[3]

[3] For the benefit of those reading this decision in black and white, I will note that the word ‘look’ is rendered in pink, as is the dot appearing in the line above.

1. Paragraph 6 and 7 of the Nayaka declaration read as follows:

   [S]hoes sold by New Look bear a striking similarity to the New Look Logo[4] and are sold through a flag ship [sic] and 3 other New Look stores in central London, United Kingdom alone.  These stores have been operating for [sic] since 2003 (with other locations in central and greater London for more than 10 years prior to that) and serve Londoners and visitors from all over the world, including visitors from Australia.  In addition to the central London stores there are 608 New Look stores operating in the United Kingdom and Ireland with the first store opening in 1969.

   [N]ew Look also sells shoes in France, Belgium, Bahrain, UAE, Saudi Arabia, Kuwait, Egypt and Russia, and is soon to open outlets in Holland, Jordan, Oman, Qatar, Malaysia and Singapore.

   [4] This is the actual wording of the paragraph from the Nayaka declaration.  It is not entirely clear what Mr Nayaka meant to say here as he otherwise refers to use of the New Look Logo on the opponent’s full goods range and its stores.

2. Mr Nayaka states that the opponent has sold many millions of pairs of shoes globally in the period from 2006 to 2008, generating sales revenue in the hundreds of millions of English pounds.  He also states that the opponent’s shoes are advertised on a website which has used the New Look Logo since mid 2002.  He says this website is visible to browsers located in Australia.  The final paragraphs of the declaration contain Mr Nayaka’s opinion that the Trade Mark is a copy of the New Look Logo.

3. Mr Nayaka’s opinion as to the similarity of the New Look Logo and the Trade Mark is supported by the contents of the Coyle declaration.  Michael Coyle is a graphic designer who was asked by the opponent’s legal representative for an independent opinion in relation to the applicant’s trade mark and the opponent’s New Look Logo.  Mr Coyle stresses that he was not aware of either logo before being asked for his opinion.  His opinion is that one logo is a different version of the other on the basis that:

   “the similarities are too distinct to have been a coincidence.  They do not appear to be independent creations. … In the case of the two attached logos, their consistent similarities (and same name) indicate the most likely scenario that the 2^nd designer was either intentionally or unintentionally inspired by the 1^st designer’s logo”.

4. The opponent’s legal representative, Michael Buck, provided three declarations as part of the opponent’s evidence in reply.  The earliest of these provides information which goes towards demonstrating the contention that the New Look Logo would be well known in Australia because of the number of Australian residents who visit and live in the UK, and the number of UK residents who visit and live in Australia.  The information provided is taken from Australian government websites and from UK government statistical information, also available on official websites.  The information in general predates the application’s filing date.     

5. The second Buck declaration refers to Mr Buck’s own investigations into use of the Trade Mark on shoes in the applicant’s own stores, and the comments of the sales assistant who attended to his queries.  Mr Buck formed the opinion after the interchange between them that the sales assistant was familiar with the New Look Logo and was of the opinion that the applicant’s goods bearing the Trade Mark came from the same source. 

6. His third declaration provides information about the number of ‘hits’ made by Australians on the opponent’s website over a 30 month period from 1 January 2008 to 30 June 2010.  Australians were the tenth most frequent visitors to the site over that period.

7. The Hancock declaration provides information about the opponent’s advertisement of the New Look Logo in various publications.  She also provides circulation details for the relevant publications in the UK and the Republic of Ireland, as well as in a category described as ‘other countries’.  I note that there are no specific figures for Australia defined within these circulation figures.

Applicant’s Evidence in Answer 

1. Exhibit 10 to the Venter declaration consists of the declaration and exhibits Mr Venter provided as evidence during the examination process.  That earlier declaration was made on 14 October 2008 and provides sales and advertising figures covering the years 2005 to 2008.  These figures are updated to the early part of 2010 in the covering declaration.  I will discuss these two declarations together.

2. Mr Venter says that the applicant commissioned the design of the Trade Mark from a business called Red Dog Designs in early 2004 and ownership was transferred to the applicant following payment for the design work.  A summary of the payment is provided as Exhibit PV-11 and is something I will refer to later on.  Mr Venter says that the applicant first used the Trade Mark in Australia in April 2004 in respect of footwear and the first record of sales of footwear under the Trade Mark occurred in March 2005.

3. Sales figures provided demonstrate that the applicant has built up a sound business with reference to the Trade Mark involving annual incomes of tens of millions of dollars.  The annual income and number of pairs of footwear involved has increased significantly over the period which the figures encompass.  The footwear is sold through a network of several hundred stores Australia wide and is advertised in various widely accessible media.

Discussion and reasons

Section 60 – Trade mark similar to one with a reputation in Australia

1. Section 60 provides:

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that: 

   (a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

2. Mr Buck’s submissions drew my attention to the following information (taken from the Buck declarations) as support for the New Look Logo having established a reputation in Australia:

   ·     There are 608 New Look stores operating in the UK and Ireland with the first store having opened in 1969

   ·     Worldwide figures for the numbers of pairs of shoes sold and sales revenue are both very large 

   ·     In the years 2004 to 2007 an average of 648000 visitors came from the UK to Australia each year

   ·     There are more resident Britons in Australia than any other country in the world with approximately 1.3 million Britons living permanently in Australia, i.e. 5.9% of the present Australian population

   ·     105000 Australian born people were in Britain in 2001, and 4 out of every 10 of these were in London

   ·     The opponent’s website was operating from at least 2002, and there were over 155000 hits from Australia on this website in the period from 1 January 2008 to 30 June 2010, equating to over 5000 hits per month for the period

   ·     It is reasonable to infer from the previous dot point that a very significant number of hits were also received from Australia before and up to the application filing date. 

3. Mr Buck submitted that website statistics are inherently different to travel statistics because it is a function of visiting a website that the visitor will be exposed to the content of the site visited.  The consequence of this is, it said, that while it might be argued that a traveller to the UK might not have seen the New Look Logo, or a visitor from the UK might not have been aware of it, there is no argument that a browser from Australia to the opponent’s website actually visited the opponent’s website.

4. The opponent also submitted the following question and answer:

   Why would people located in Australia be visiting the Opponent’s website in such numbers?  The most straightforward reason is that the opponent did, and does, indeed have a reputation in Australia so that it is known by persons located in Australia that wish to visit its website.

5. However, another quite straightforward reason an internet searcher might visit the opponent’s website immediately springs to my mind.  Perhaps it is just as likely that the persons browsing the internet within that same period were looking for the applicant’s website because they were aware of the Trade Mark and came upon the opponent’s site during the course of their search. 

6. There is nothing in the opponent’s evidence which indicates the duration of the Australian visits to its website or the kind of activity that occurred during the visit.  This information could help indicate whether the visitor had reached the site by accident or by design.  However, without any information other than the bare number of hits from Australian internet browsers, the matter is left up in the air.

7. I am not satisfied that the opponent’s internet statistics provide a sufficient basis from which I should infer any significant reputation for the New Look Logo in Australia at the priority date. Neither am I satisfied that the statistics showing visitor numbers between the UK and Australia justify a similar inference. Overall, I do not consider that the opponent had any significant reputation in Australia for the New Look Logo. I am not satisfied that the applicant’s use of its trade mark was likely to deceive or cause confusion in the face of the opponent’s New Look Logo. The opponent has not established the section 60 ground of opposition.

Section 42(b) – use contrary to law

1. In relation to the provisions of section 42(b), the opponent has raised two separate matters. These are firstly: that the application is in breach of the opponent’s copyright in the Logo and secondly: that the application is in breach of section 52 of the Trade Practices Act 1974 (‘TPA).

Breach of copyright

1. The opponent submitted the following in respect of its claim that the applicant has breached its copyright in the Logo:

   • The opponent is the owner of the Logo by virtue of an assignment agreement from the author
   • The opponent is a corporation incorporated in the UK and is therefore a citizen of the UK
   • For the purposes of s184(1)(c) of the Copyright Act 1968 (CA), the UK is a country to whose citizens the protection of the CA applies
   • The Logo is an artistic work under section 10(1) of the CA and is analogous to those works in the cases followed by Madgwick J in the Advantage case[5]
   • The Logo is an original work, which is evidenced by the unique stylisation and positioning of the distinct elements making the logo
   • Further considerable effort, skill, labour, judgement, time and expense was incurred by the opponent in creating the unique logo
   • Although there are minor variations between the Logo and the applicant’s trade mark, it is apparent that the trade mark is a derivation of the Logo as it has encapsulated all the original elements that make up the Logo, such as the tiered arrangement of the words ‘new’ and ‘look’; the positioning of the word look under the ‘e’ in ‘new’; the stretched appearance of the font utilised; the stylistic rounding and curvature of each letter contained in the word ‘new’ and the use of a font without serif marks.
   • All reproductions of the Logo and the applicant’s trade mark have been made by the applicant without the licence or authorisation of the opponent.
   • The applicant has not contested the opponent’s ownership of copyright in the Logo nor challenged its originality
   • The Logo was created in the UK on or about May 2002, whereas the applicant commissioned its trade mark on 10 December 2004

   [5] Advantage–Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683

2. In Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd[6], the Full Court, when discussing whether or not the design under consideration was an artistic work or a literary work said:

   We prefer the view that in the present case there is a single artistic work of which the words and numbers, including their size, font, placement and spatial relationships with other elements, form a part. … In our respectful opinion, the work … is an artistic work.  The artistic quality of the work consists of the layout, balancing, form, font, positioning, shaping and interrelationship of the various elements.  

   [6] [2008] FCAFC 2008

3. The Elwood Clothing case involved designs created using combinations of numbers, words and devices.  The Court commented that the meaning that the words and numbers conveyed was insubstantial and vague, and therefore they did not constitute a literary work.  In this case, the New Look Logo does convey a definite meaning.  However, I am satisfied that the manner in which the words are rendered is sufficiently unusual that it appears to the eye more as a drawing than as a literary work.  I am satisfied that the New Look Logo is an original artistic work as defined by s 10(1) of the CA; that it is owned by the opponent and that copyright subsists in the work.

4. Having decided that the opponent owns copyright in the New Look Logo, the matter to be decided is whether the trade mark the applicant seeks to register is a reproduction of the New Look Logo or of a substantial part of it.  Here I turn to the words of Justice Yates in Optical 88 Limited v Optical 88 Pty Ltd (No 2)[7]:

   At the end of the day, the only question that arises is whether the first respondent’s logo is a reproduction of the applicant’s logo or of a substantial part of it: ss14(1), 31(1)(a) and 36 of the Copyright Act. This involves a comparison of the two works and the formation of a judgement based on the eye as to the degree of resemblance between the two. The degree of resemblance must be such that, to the eye, the first respondent’s logo reproduces, or reproduces a substantial part of, the applicant’s logo.

   In Designer Guild Ltd v Russell Williams (Textiles) Ltd 1 All ER 700, Lord Hoffman observed (at 706):

   Generally speaking, in cases of artistic copyright, the more abstract and simple the copied idea, the less likely it is to constitute a substantial part.  Originality, in the sense of the contribution of the author’s skill and labour, tends to lie in the detail with which the basic idea is presented. 

   [7] [2010] FCA 1380 at paragraph 310

5. For convenience of reference, the New Look Logo and the Trade Mark are shown here:

1. There are obvious similarities between the New Look Logo and the Trade Mark, the most obvious being that they both include the words ‘new look’.  It is also obvious that both the New Look Logo and Trade Mark place the word ‘new’ above the word ‘look’.  The word ‘look’ in both is in a smaller font, and is highlighted in some way – one being in fine lettering and rendered in a pink colour, the other being in heavy black letters.

2. Similarities aside, there are also very obvious differences between the Trade Mark and the New Look Logo.  The letters ‘n’ and ‘w’ in the New Look Logo appear almost as arcs of circles, rather than recognised letters.  There is the introduction of colour into the New Look Logo as a feature, and the presence of a pink dot which replaces the central legs of the letter ‘w’, a most unusual feature.  The word ‘look’ is presented in a fine and delicate font in the same pink colour. 

1. The Trade Mark, however, has letters ‘n’ and ‘w’ which are much closer to a recognised font, and are much more chunky or blocky in shape, lacking the curving grace of those in the New Look Logo.  The word ‘look’ is particularly heavy, blocky and very black.  Considered side by side, it is easy to see that both the New Look Logo and Trade Mark involve the same words, but I do not consider that the Trade Mark is a reproduction, in whole or in part, of the opponent’s artistic work.

2. I am satisfied that the applicant has not breached the opponent’s copyright in the New Look Logo.  As a result, the opponent has not established this leg of its section 42 ground of opposition. 

Section 52 of the TPA

1. Section 52 of the TPA relevantly provides:

   52  Misleading or deceptive conduct

   (1)  A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

   (2)  Nothing in the succeeding provisions of this Division shall be taken as limiting by implication the generality of subsection (1).

2. In respect of this aspect of the opposition, the main thrust of Mr Buck’s submissions went to the applicant’s failure to rebut the Nakayama evidence.  The opponent considered it significant that the applicant did not explain why it had adopted the Trade Mark, did not explain whether or not it was aware of the New Look Logo in use overseas, and did not explain that the applicant had no intention of taking advantage of any reputation the opponent may have had in Australia.  The opponent submitted that there was a clear inference that the applicant chose to use the existing brand name of a global retailer of shoes in the hope of generating additional sales locally on the back of the opponent’s reputation.  

3. Mr Buck also said the following in his conclusion to submissions on this topic:

   The opponent has provided evidence that visitors from the UK to Australia and vice versa would have believed that there was an association between shoes sold under the [Trade Mark] in Australia and shoes sold under the [New Look Logo] in the UK.  Consequently there is evidence of confusion.

4. I have already commented upon the statistics provided about travelers moving between the UK and Australia in discussing section 60 and stated my belief that the information is not persuasive. The evidence the opponent has provided about actual confusion occurring in the Australian market is likewise far from persuasive.

5. There are two ‘examples’ of confusion provided in the opponent’s evidence.  Rachel Baker states that she had visited the UK shortly before making her declaration.  While she was in the UK she became aware of the opponent’s stores, though she had not made any purchases at them.  She expresses her belief that Australian people who are familiar with the opponent’s New Look Logo would think the opponent and applicant were associated in some way.

6. The second instance instance of confusion suggested by the opponent may be found in the Buck declaration dated 8 June 2010.  Mr Buck refers in this declaration to an interchange he had with a shop assistant in one of the applicant’s shoe stores.  Upon asking the assistant if the shoes with the ‘New Look’ label in the store were the same brand as the UK ‘New Look’ shoes, he says she replied “I think so.  It’s the same writing.”  Mr Buck declared that he thus formed the belief that she was aware of the New Look Logo, and she knew of it with sufficient confidence to state that it was the same as the Trade Mark.  

7. We have here two instances which may point to some degree of confusion between the opponent’s and the applicant’s respective ‘New Look’ labels.  Both instances rely upon opinions rather than hard evidence of actual confusion definitely occurring.  Two opinions about the possibility of confusion, both occurring in 2010, do not set the stage for a sound inference of a significant level of confusion as at the priority date.

8. I have already found that the use of the Trade Mark is unlikely to cause deception or confusion in terms of section 60 of the Act. There are several decided cases confirming that more is required to establish a likelihood of misleading or deceptive conduct than to show that trade marks are likely to deceive or cause confusion under sections 44 or 60. In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd[8], for example, Gibbs, CJ noted (at 688):

   In McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd ( 1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.

   [8] (1982) 149 CLR 191

9. As I have found that the use of the Trade Mark is not, at a minimum, likely to "deceive or confuse", it follows that use is not, on the stricter test posited by the TPA, likely to mislead or deceive. This leg of the section 42 argument has also failed, and the opponent has not established the ground.

Section 58 – applicant not owner of trade mark

1. Section 58 states:

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

2. The opponent submitted that the applicant is not the proprietor of the trade mark because of either of the following two reasons:

   • the copyright is owned by the opponent so that the applicant’s use of the trade mark is an infringement of the opponent’s copyright; or
   • if the applicant’s trade mark was an independent work, the applicant is not the owner of copyright in the trade mark since there is no evidence that the ownership was ever transferred to it from Red Dog Design.

3. The issue of copyright ownership and infringement of copyright is more properly dealt with under the provisions of section 42, and that is where I have discussed and decided it.  Ownership of a trade mark, as envisaged by the provisions of section 58, is related to whether or not another person has acquired a prior right in the trade mark through use in Australia for the relevant goods. 

4. In order to establish a ground of opposition under the provisions of section 58, the opponent needs to establish that:

   ·   the respective trade marks of the applicant and opponent are either identical or substantially identical [9],

   ·   the respective goods of both parties are the ‘same kind of thing’ [10]

   ·   the opponent has the earlier claim to ownership based on use prior to both the application to register and any pre-filing use of the trade mark by the applicant[11].

   [9] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd 31 IPR 375 (1994) 120 ALR 495

   [10] Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75

   [11] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413

5. I am satisfied that the Trade Mark and the New Look Logo are substantially identical.[12]  On a side by side comparison, both consist of the same two words, and while there are clear differences between their respective ‘get-ups’, they will be known and described by the same two words.  Their respective get-ups mean that the New Look Logo and the Trade Mark are not absolutely identical but, because of the overall impression of similarity created by their component words, they are substantially identical.  

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

6. I note here that this decision may appear at odds with my earlier decision in respect of the opponent’s claim that the applicant has infringed its copyright in the New Look Logo.  I am satisfied, however, that the comparison between two trade marks or logos for the purposes of copyright infringement is not the same test as that which is appropriate when comparing trade marks for the purposes of trade mark infringement.  In support of this contention, I refer again to the Optical 88 case and the words of Yates J, which I consider to be relevant despite his comments being made in respect of deceptive similarity, rather than substantial identity:

   I would add that my finding of deceptive similarity with respect to the use of the first respondent’s logo as a trade mark … does not compel a different conclusion.  The test for determining deceptive similarity in the context of trade mark infringement involves an analysis that is quite different to the analysis involved in determining whether there has been an infringing reproduction for copyright purposes.  The two tests should not be confused.  In particular, one test should not be incautiously applied as a proxy for the other.

7. It is clear that both the New Look Logo and the Trade Mark are used in respect of the same goods, namely footwear.  The remaining matter to be decided is which proprietor has the earliest claim to use within Australia.

8. The matter of authorship and ownership of a trade mark (specifically in respect of section 58) is mentioned in Shanahan’s Australian Law of Trade Marks and Passing Off[13] as follows:

   [A]n applicant for registration cannot validly claim ownership without being, in a sense, the "author" of the trade mark. Such authorship need not entail creation of the trade mark for it may have been copied from abroad, but it does require that no one else has acquired a prior right through use in Australia for the relevant goods or services. (Emphasis added)

   [13] Edition 4, on-line version, paragraph 50.2215

9. In Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2)[14], Deane J described the nature of the use required:

   The prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of "proprietor" of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods with respect to which the mark is used and that person. The requisite use of the mark need not be sufficient to establish a local reputation and there is authority to support the proposition that evidence of but slight use in Australia will suffice to protect a person who is the owner and user overseas of a mark which another is seeking to appropriate by registration under the Trade Marks Act 1995.

   [14] (1984) 156 CLR 414 at 432-433

10. The opponent has demonstrated impressive use in the UK and the Republic of Ireland, and has attested to use in countries other than these.  However, it has not provided any information which directly goes to use of its trade mark within the Australian marketplace.  The Hancock declaration which was made on 3 June 2010 states that the opponent maintains a website ( and that there is provision on that website for goods to be ordered and shipped to Australia.  This claim is supported by Exhibit J which is a copy of a web page showing the list of countries to which the opponent is able to deliver goods which are ordered from its website.  Australia appears at the head of the list.

11. However, the copy of the web page is dated April 2010, some years after the applicant’s filing date.  I have been unable to find any examples within the opponent’s evidence which give a clearer picture of when it first provided Australian residents with the ability to access its goods via the website.  Neither has the opponent provided any evidence of sales actually made to customers in Australia during any period, let alone prior to the applicant’s filing date.   

12. Under these circumstances, I am not satisfied that the opponent has demonstrated any use of the New Look Logo in Australia before the applicant’s filing date.  The opponent has not established the ground of opposition relevant to section 58.

Section 62A – application made in bad faith.

1. Section 62A provides that the registration of a trade mark may be opposed on the ground that the application was made in bad faith. 

2. This ground of opposition is a relatively new ground and was introduced via the Trade Marks Amendment Act 2006. A relatively small number of decisions have issued in which the ground has been discussed, and to the best of my knowledge, it has not been discussed by an Australian court.

3. The opponent referred to a UK trade marks office appeal hearing, Ajit Weekly Trade Mark[15], as being relevant to the ground under this section, especially as the Hearing Officer decided that the application concerned had been made in bad faith.  The Hearing Officer in the Ajit case said:

   The subjective element of the test means that the tribunal must ascertain what the defendant knew about the transaction or other matters in question.  It must then be decided whether in the light of that knowledge, the defendant’s conduct is dishonest judged by ordinary standards of honest people, the defendant’s own standards of honesty being irrelevant to the determination of the objective element.

   [15] [2006] RPC 25

4. The opponent submitted:

   In the present situation the analogous test is: Would ordinary, honest people believe that it is honest to appropriate a device mark from a very large overseas retailer of the same goods, pay $200 to have it slightly altered and apply for trade mark registration in Australia without ownership of the copyright in the mark and without regard to the possibility of confusion arising?  We submit that the answer is “No”.

5. The reference to a $200 payment is reference to Exhibit PV-11 to the Ventner declaration.  This exhibit is explained as follows at paragraph 7 of the declaration:

   The Company commissioned the design of the Trade Mark from a business called Red Dog Design of Marrickville, New South Wales in early 2004.  Ownership of the Trade Mark was transferred to the Company upon its payment to Red Dog Design on 10 December 2004 for the design work it had completed.  Attached hereto and marked Exhibit PV-11 is a printout from the company’s records showing a summary of the payment to Red Dog Design

6. The exhibit itself consists of a table which lists three payments to Red Dog Design.  The earliest of these is the payment of $200 made in respect of an item described as “Design new look logo”.  The remaining two payments, made in April and June 2005 are as follows:  “Tweens Logo Des & corrections” - $1075 and “Revise Logo Identity” - $1850.  There is no further explanation of these payments.

7. The Nakayama declaration at paragraph 11 states his belief that the Trade Mark is a copy of the New Look Logo.  Mr Buck submitted that it is significant that the applicant has not rebutted this belief in any way in either its evidence or its submissions.  It is obvious from the quotation from the opponent’s submissions (in paragraph 60 above) that Mr Buck considers the size of the payment the applicant made for the design of the Trade Mark, in comparison with the other recorded payments to the same design company for other design tasks, is also significant.  Mr Buck also submitted that he considered that the evidence provided is consistent with the proposition that the applicant was aware of the Logo and wished to appropriate it for its own use in Australia.  

8. In Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited[16], the Registrar’s delegate said:

   The Act provides no guidance as to the meaning of the term ‘bad faith’. The Explanatory Memorandum to the Amendment Act simply says that the new ground has been introduced to cater for situations (among others) ‘in which a person has deliberately set out to gain registration of a trade mark, or adopted a trade mark in bad faith.’ Such a statement is neither a definition nor an explanation of bad faith.

   For an assessment of ‘bad faith’ as it applies to such a situation it would appear that there would need to be an element of intentional dishonesty or a deliberate attempt to mislead the Registrar in some way in the claim made by means of the application.

   … The onus of demonstrating ‘bad faith’ falls squarely on the party making such an allegation with the need for evidence able to fulfil the degree of proof required to satisfy the civil standard of ‘balance of probabilities’. That said, the allegation of ‘bad faith’ is a very serious one and a finding of bad faith should not be taken lightly. 

   [16] [2009] ATMO 26

9. The opponent is asking me to infer an act of bad faith from the evidence and submissions it has provided.  I did not find that the New Look Logo had any reputation in Australia, nor did I find any copyright conflict between the New Look Logo and the Trade Mark.  The opponent did not evidence any use of the New Look Logo in the Australian market at any period since its adoption of the logo in the UK and I did not find that the applicant’s use of the Trade Mark was likely to mislead or deceive.  While the applicant has remained silent about its reasons for adopting its trade mark and whether or not it had any knowledge of the opponent prior to its adoption, I am not satisfied, on the basis of all the information put before me, that there is sufficient evidence to support an inference that the application was made in bad faith.

10. As the Registrar’s delegate said in Hard Coffee, the allegation of ‘bad faith’ is a very serious one, and the evidence provided to support such an allegation would need to be much more direct than that which has been put before me.  While I find the amount paid to Red Dog Designs for design work on the Trade Mark is anomalous when compared with the other recorded payments for different design work, it says nothing definite.  It may well raise a feeling that something appears to wrong with the figure but is not enough to support the opponent’s claims that the applicant must have deliberately adapted and misappropriated the New Look Logo for its own use. 

11. The applicant has maintained silence about why it chose the Trade Mark and has chosen not to respond directly to the allegation of an application made in bad faith.  This alone is insufficient for me to support the opponent’s claims in that regard.  There may be specific reasons why the applicant may have chosen to approach this opposition in the way it has, and lack of a response about matters to which the opponent would like a response is not a necessarily damning factor.  I am not satisfied that the opponent has done enough to shift the onus, such that an answer is required from the applicant.  The opponent has not established this ground of opposition.

Decision

1. Section 55 of the Act provides:

   Unless the proceedings are discontinued or dismissed, 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.

2. I find that none of the grounds of opposition on which the opponent relied have been established.

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

Costs

1. The parties sought their costs. Since costs usually follow the event, I award costs against the opponent pursuant to the official scale.

Alison Windsor

Hearing Officer

Trade Marks Hearings

4 February 2011