Next Retail Limited v Marlin Australia Pty Ltd

[2010] ATMO 117

TRADE MARKS ACT 1995

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

Re:Opposition by Next Retail Limited to registration of trade mark application 1205711(25) - NEXT GENERATION LOGO - filed in the name of Marlin Australia Pty Ltd.

Delegate:	Debrett Lyons
Representation:	Opponent: Siobhan Ryan of Counsel Applicant: written submissions only
Decision:	2010 ATMO 117 s.52 Opposition – s.44, trade marks deceptively similar, registration refused. Costs awarded against applicant.

Background

1. This matter concerns an opposition brought under section 52 of the Trade Marks Act 1995 (‘the Act’) to registration of a trade mark, current details of which appear below:

   Applicant:     Marlin Australia Pty Ltd

   Application number: 1205711

   Filing/priority date:  22 October 2007

   Trade mark: 

   Goods:  "Clothing, footwear, headgear" in Class 25

2. The trade mark was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 21 February 2008.  On 20 August 2008, Next Retail Limited (‘the opponent’) served and filed Notice of Opposition to the registration of the trade mark. 

3. The matter came before me on 18 October 2010 in Melbourne for a hearing of the submissions of the opponent, represented by Siobhan Ryan of Counsel, instructed by Griffith Hack, Patent & Trade Mark Attorneys.  The applicant did not appear but instead relied upon the written submissions prepared by its Addisons, Commercial Lawyers.

4. At the hearing, Ms Ryan pressed the following grounds of opposition:-

   Section 44: Conflicting earlier trade mark application or registration.

   Section 59:    Applicant not intending to use mark.

   Section 60: Trade mark similar to a mark that has acquired a reputation in Australia.

   Discussion

5. The opponent bears the onus in opposition proceedings.  To be successful, it is sufficient for the opponent to establish a single ground of opposition on the balance of probabilities[1].

   [1] Pfizer Products Inc. v Karam (2006) 70 IPR 599 at [6]-[26] per Gyles J. Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 per Sundberg J at [26]; Australian Climate Exchange Ltd v Chicago Climate Exchange Inc. (2009) ATMO 60 at [7].

6. For convenience I first turn to the ground of opposition based on section 44. Section 44 of the Act provides, relevantly, that:

   Identical etc. trade marks

   44.(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.

7. Thus, in order to establish this ground, the opponent must:

   ·     Point to one or more trade marks registered or pending in the name of a person other than the applicant, with earlier priority dates than that of the opposed trade mark, and registered or pending in respect of goods which are similar to those in respect of which the opposed application is made, and

   ·     Establish that the opposed trade mark is substantially identical or deceptively similar to the trade mark(s) on which the opponent relies.

8. The applicant’s written submissions include the following passage:

   … there are a number of NEXT trade marks on the Trade Marks Register, which co-exist and which are registered in respect of the Applicant's primary area of interest (clothing), including but not limited to the following:

   (a)Trade mark 486850 NEXT in the name of Brands Apparel Group Pty Ltd, registered since May 1988 in respect of Class 25 "Clothing for men and boys excluding footwear";

   (b)Trade mark 569642 NEXT in the name of Pacific Brands Footwear Pty Ltd, registered since December 1991 in respect of Class 25 "Footwear excluding girls athletic shoes and excluding all hosiery in this class";

   (c)Trade mark 577376 NEXT in the name of Brands Apparel Group Pty Ltd, registered since April 1992 in respect of Class 25 "Infants, children and teenagers clothing and wearing apparel for boys and girls"; and

   (d)Trade mark 1249562  in the name of Spirit Wholesale ApS, registered since May 2008 in respect of Class 25 "Clothing, footwear and headgear".  

9. Those submissions were made by the applicant in relation to the ground of opposition brought against it under section 60, however the opponent sought to turn that information against the applicant for the purposes of section 44.

10. Whilst none of those registrations were listed in the Notice of Opposition, nor referred to in the opponent’s evidence, this is barely a case where the applicant could argue that it was ambushed by a section 44 argument founded on the existence of those registrations. I see nothing irregular in the opponent arming itself with the applicant’s own evidence.

11. The opponent relies upon trade mark registrations 486850, 569642 and 577376, all for the word mark NEXT, as evidence of registrations which have earlier priority dates than that of the application and which are registered for  either the same or similar goods to those goods sought to be registered.  There is no room for argument about those matters and so it remains to be determined whether the trade marks are (or are not) substantially identical or deceptively similar to the opposed trade mark. 

12. Following well worn lines of precedent I do not find the trade marks to be substantial identical.[2]  On the other hand, I fully agree with the opponent’s submission that NEXT and the NEXT GENERATION logo are deceptively similar marks in keeping with the principles laid out in Australian Woollen Mills v F.S. Walton & Co Ltd.[3]The word NEXT is either the whole or the essential feature of the trade marks under comparison.  Although not the most distinctive of terms, the word NEXT nonetheless functions quite adequately as a trade mark and is well adapted to distinguish in relation to clothing in terms of the test in Clark Equipment Co. v Registrar of Trade Marks.[4]  The word NEXT dominates the applied-for trade mark and, within that context, the unremarkable hexagonal device lacks inherent adaptation to distinguish, whilst the word “generation” is descriptive at a number of levels. 

    [2] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407, per Windeyer J at page 414.

    [3] (1937) 58 CLR 641 at 658

    [4] (1964) 111 CLR 511 (‘the Michigan case’) at 513

13. I consider the trade marks to be deceptively similar and the other elements required to establish a ground under section 44 are (as discussed above) present.

14. The opponent has established its ground under section 44 of the Act. Accordingly, there is no need for me to consider the remaining grounds of opposition.

    Decision

15. Section 55 of the Act relevantly provides:

    Decision

    55. 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.

    Note:  For limitations see section 6.

16. I refuse to register the application.

    Costs

17. Having established its opposition, the opponent is entitled to its costs which I award at the official scale against the applicant.

    Debrett Lyons
    Hearing Officer
    Trade Marks Hearings
    29 November 2010