Next Retail Limited v Retail Management Consultants Pty Ltd
[2010] ATMO 59
•22 July 2010
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 1053897(35) - NEXT HOME - filed in the name of Retail Management Consultants Pty Ltd.
Delegate: Iain Thompson Representation: Opponent: Siobhan Ryan of Counsel instructed by Sally Shrimpton of Griffith Hack
Applicant: Written submissions by Kelvin Lord of Lord & CompanyDecision: 2010 ATMO 59
s52 opposition - s60 – trade marks deceptively similar but opponent’s trade mark has not established a reputation in Australia to hearing officer’s satisfaction.
Opposition not established.
Costs awarded against opponent.Background
In this matter Retail Management Consultants Pty Ltd (‘the applicant’) of Wattle Grove, Western Australia, has applied to register the trade mark current details of which appear below.
Application No: 1053897
Priority Date: 5 May 2005Services:Class: 35 Retail, wholesale, distribution (not being transport), advertising, importing and exporting of household, kitchen and outdoor garden products; including retail, wholesale, distribution, advertising, importing and exporting of kitchen utensils, crockery, dinnerware, glassware, earthenware, kitchen containers, bathroom and toilet utensils and articles, furniture, home furnishings and soft furnishings, outdoor and garden furniture, pots and planters, garden ornaments.
Trade Mark: NEXT HOME
(‘the opposed trade mark’)
Following examination, the opposed trade mark was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 3 August 2006. On 2 February 2007, after seeking and receiving an extension of time in which to do so, Next Retail Limited, (‘the opponent’) of Leicester, United Kingdom, filed Notice of Opposition, (‘the Notice’) to the registration of the opposed trade mark. The Notice recites most of the available grounds under the Trade Marks Act 1995 (‘the Act’). However, at the hearing, the grounds within the Notice relied upon by the opponent lay under sections 60 and 42. For the sake of completeness, I find now that those grounds other than sections 60 and 42 within the Notice have not been established by the opponent.
As a delegate of the Registrar of Trade Marks, I heard this matter in Canberra on 18 June 2010. Siobhan Ryan of Counsel represented the opponent, instructed by Sally Shrimpton of Griffith Hack. The applicant relied upon the written submissions of Kelvin Lord of Lord & Company.
The Evidence
The evidence comprises a statutory declaration by Sarah Louise Noble, Company Solicitor of the opponent, served and filed in support of the opposition. The applicant has served and filed a statutory declaration by Michael Di Lello, Managing Director of the applicant, as evidence in answer.
Ms Noble says that the opponent is a wholly owned subsidiary of Next Group Plc, which is a publicly listed company in the United Kingdom. Next Group Plc was incorporated in the United Kingdom in 1891 under the name of J Hepworth & Son. It changed its name to Next Plc in 1986, and then to Next Group Plc on 22 November 2002.
Ms Noble continues her declaration by attesting that the opponent first adopted and used the trade mark NEXT in 1982 in the United Kingdom upon and in relation to a wide range of clothing products that were sold through NEXT branded retail outlets owned or controlled by the opponent. From that date, the opponent has continuously operated a chain of High Street stores in the United Kingdom. The opponent, says Ms Noble, first adopted and used the trade mark NEXT for homewares and home furnishings (and their retailing) in the United Kingdom 1985, and has continued to use the mark in that country with respect to such goods and services to date.
Ms Noble states that in 1988, the opponent launched a mail order catalogue service and in 1999 an online shopping website at In 2000, the mail order catalogue gained its millionth active customer. The mail order catalogue and website sell a wide variety of goods under the mark NEXT, which include clothing, fashion accessories, homewares, furniture, lighting and kitchenware. A selection of pages from the opponent’s mail order catalogue and website from 2000 to date is included in Annexure 2 to her declaration.
Ms Noble also declares that in the United Kingdom, the opponent operates around 400 NEXT branded stores, with such stores in almost every town and city. The opponent also sells NEXT goods through NEXT branded stores in Ireland, Denmark, Iceland, Bahrain, Czech Republic, Cyprus, Malta, UAE, Oman, Qatar, Saudi Arabia, Lebanon, Kuwait, Jersey, Guernsey, Indonesia and Japan. Attached and marked as Annexure 3 of Ms Noble’s declaration is a list of the Opponent’s stores in the UK and abroad.
Photocopies of the 2005 and 2006 Annual Report for Next Group Plc, the parent company form Annexure 4 to the declaration. Ms Noble states that the Next Group Plc is a large company, and for many years has been one of the top 100 companies on the London Stock Exchange, with an annual turnover figure for 2006 of £3,106.2 million.
Ms Noble also provides overall annual turnover figures for the Next Group Plc and I note that in the period 1999 to 2006 these figures averaged in excess of ₤2,500 million a year. She says that the sales figures relate to the overall sales of goods under the mark NEXT, which include clothing, fashion accessories, and household goods and that is difficult to provide exact figures for individual categories of goods, such as household goods. However, she attests that in percentage figures representing the approximate sales for the different types of goods, these are 89 % relating to clothing and 11% relating to household goods.
I note that, based on the figure of ₤2,500 average annual turnover within the period attested to, this resolves to just over ₤250 million a year turnover in relation to household goods.
Ms Noble goes on to observe that a substantial proportion of the population of Australia has either lived in or visited the United Kingdom. Annexure 5 to her declaration are extracts from the Australian Bureau of Statistics website showing that the United Kingdom is the third largest source of short-term visitor arrivals in Australian (with 13%) and that the United Kingdom is one of the main destinations for Australian residents (with 10%). Attached and marked as Annexure 6 to Ms Noble’s declaration contains extracts relating to Australian visitors to the United Kingdom for the Visit Britain website operated by the British Tourist Authority. The extracts show that, in 2005, over 900,000 Australians visited the United Kingdom. Many Australians will also have visited other countries with NEXT stores, such as Ireland, Denmark, Iceland, Bahrain, Czech Republic, Cyprus, Malta, Gibraltar, UAE, Oman, Qatar, Saudi Arabia, Lebanon, Kuwait, Jersey, Guernsey, Indonesia and Japan. In summary, Ms Noble asserts, many Australian residents will have seen NEXT branded stores and purchased NEXT branded goods while visiting these countries. As such, Ms Noble believes that a significant proportion of the Australian population would be aware of the opponent’s NEXT mark.
Ms Noble goes to on to state the opponent’s expenditure on advertising and promoting its products sold under the NEXT trade mark.
I note that it is implicitly conceded by the opponent that it has had no sales within Australia under its trade mark NEXT.
In his evidence in answer, Mr Di Lello states that the applicant is the registered proprietor of Australian Trade Mark Registration 972109 NEXXT which is registered in classes 20 and 35 in respect of:
Class 20 - Furniture; timber furniture including pine furniture; goods in this class of wood, cork, reed, cane or wicker; mirrors; picture frames and framed pictures; timber blinds; works of art, or wood, wax, plaster or plastic; and furniture fittings and accessories in this class; and
Class 35 — Retailing and wholesaling of furniture, timber products, homewares, soft furnishings, pictures, lamps and home accessories; retailing and wholesaling of furniture made wholly or partially from pine and other timbers; advertising and marketing services including in relation to the retailing and wholesaling of furniture and related accessories; and franchise services including in relation to the retailing and wholesaling of furniture and related accessories.
Mr Di Lello also observes that the applicant is also the registered proprietor of Australian trade mark registration 972948 NEXXT FURNITURE FOR LIVING which is registered in classes 20 and 35 in respect of:
Class 20 — Furniture; timber furniture including pine furniture; goods in this class of wood. cork, reed, cane or wicker; mirrors; picture frames and framed pictures; timber blinds; works of art, of wood, wax, plaster or plastic; and furniture fittings and accessories in this class; and
Class 35 — Retailing and wholesaling of furniture, timber products, homewares, soft furnishings, pictures, lamps and home accessories; retailing and wholesaling of furniture made wholly or partially from pine and other timbers; advertising and marketing services including in relation to the retailing and wholesaling of furniture and related accessories; and franchise services including in relation to the retailing and wholesaling of furniture and related accessories.
Mr Di Lello notes that both registrations 972109 and 972948 were filed in 2003 and are currently in force.
The balance of Mr Di Lello’s declaration is a critique of the declaration of Ms Noble – I will treat this ‘evidence’ as submission and weight it accordingly although I take notice of the submission in my discussion of the issues below.
Submissions
Ms Ryan started her submissions by observing that in order to found its opposition the opponent is required to establish at least one of its grounds on the balance of probabilities.
I confirm that in accordance with IP Australia’s current practice I am proceeding on the basis that the opponents need only establish one or both of their grounds of opposition on the balance of probabilities[1].
[1] 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 [27] and Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664 (25 June 2010) at [26] to [40].
In relation to the section 60 ground, Ms Ryan submitted that Ms Noble’s evidence in support of the application points the reputation of the opponent’s trade mark NEXT in the United Kingdom and internationally before the priority date of the opposed application. Ms Ryan submitted that this was by reason of:
· Use as a corporate name and trade mark in the United Kingdom since 1982;
· Massive expansion since first use, so that NEXT branded retail outlets now operate in almost every town and city in the United Kingdom;
· NEXT branded stores in Europe, the middle East and Asia (since 1985);
· Mail order catalogue promotions and sales since 1988;
· Online promotions and sales since 1999; and
· High volume of sale and substantial advertising expenditures and other promotions.
Ms Ryan submitted that, as to the requirement that there be a reputation in Australia, the opponent points to the ‘spillover’ of the opponent’s international reputation into Australia as a result of Australians visiting the United Kingdom and other countries in which the opponent uses its mark and foreigners likewise bringing their knowledge of the opponent’s mark to Australia: SLN 5 and SLN 6. Hearing Officer Don Nancarrow, considered a similar submission in Ferdinando Giordano SpA v Walton International Ltd (1999) 48 IPR 423 at 429-430 and said:
From the evidence provided, I have little doubt that the opponent enjoys a sizeable reputation in many Asian and Middle Eastern countries. The question to be answered, however, is how much of this reputation has been transferred into Australia by means of the spillover effect from international tourism. Neither of the cases relied on by the opponent in relation to a spillover of reputation concerned an opposition to registration. Anheuser-Busch, above,[2] was an expungement action and ConAgra, above, was an action involving both passing off and ss 52 and 53 of the Trade Practices Act 1974 (Cth). I accept, however, that the tests discussed in those cases are relevant.
Despite the figures provided for tourism between Hong Kong and Australia, no indication is available to explain how much, if any, exposure the tourists had to the opponent’s mark, save the Biddle declaration regarding her own experience. It is theoretically possible that the opponent’s stores were situated in readily accessible areas and that virtually all tourists were exposed to the mark or, alternatively, that the stores were situated in areas that tourists would rarely frequent. The spillover effect of reputation for the opponent, by means of international tourism, is extremely difficult to quantify. This line of reasoning is supported in ConAgra[3] […] in the words of Lockhart J:
Evidence of this kind has considerable difficulty, it seems to use, as proof of reputation. It is not possible to assess how many travellers on short visits to the United States would have watched television either at all or at the times of the appellant’s advertising, or would have visited the shops or supermarkets
Today’s Australian has a greater awareness of the significance of international trade marks. However, I am not convinced that the opponent has built a sizeable reputation in Australia, as a result of Australians travelling through Asia or the Middle East.
[2] Anheuser-Busch, Inc v Budějovick[yacute] Budvar, Národní Podnik & Ors [2002] FCA 390
[3] Conagra Inc. v McCain Foods (Aust.) Pty Ltd [1992] FCA 159; (1992) 33 FCR 302
I will note now that I demur from Mr Nancarrow’s reasoning only in as far as his observation that the opponent should have built a sizable reputation in Australia. It is, of course, only necessary under section 60 of the Act that the opponent’s trade mark has a reputation in Australia and it is not necessary under the Act that a purported reputation be ‘sizable’ as the Act only stipulates that (in the context of this decision) the trade marks of the parties be substantially identical or deceptively similar and that the reputation of the opponent’s trade mark be such that deception or confusion would be likely to ensue from the use of the opposed trade mark (see discussion below at paragraph 42).
Ms Ryan further submitted that the opponent’s evidence does not suffer from the uncertainties of the evidence in the Giordano case. There is, Ms Ryan says, evidence of saturation levels of exposure to NEXT branded stores in the United Kingdom, through its ubiquitous bricks and mortar presence in the High Streets of “almost every town and city”: Noble declaration, paragraph 6, and the regular circulation of hundreds of thousands of magazine inserts: Noble declaration paragraph 11. This coupled with the Australian Bureau of Statistics data showing high numbers of Australia/United Kingdom tourism exchanges is, she says, sufficient to warrant an inference that the Opponent’s NEXT mark has a reputation in Australia.
Ms Ryan stated that section 60 does not require that the competing marks be used, or proposed to be used, in relation to similar goods or services. However, (as in this case) the likelihood that the applicant will find a market in common areas among the same class of people is of significance.
Ms Ryan concluded her submissions in relation to section 60 by observing that the section requires consideration of the actual use of the prior mark, and a consideration of that against the notional use of the trade mark to be registered. Ms Ryan submitted that, having regard to the actual use of the opponent’s mark and considering that against the notional use of the applicant’s mark, there can be little doubt that, as at the priority date, a consumer would be “caused to wonder” whether it might not be the case that there is a connection between the opponent’s NEXT trade mark and the services designated in applicant’s specification of services; where both cover the retailing, wholesaling and advertising of household, kitchen and outdoor garden products.
Ms Ryan also made submissions in terms of subparagraph 42(b) of the Act alleging that, because of the provisions of sections 52 and 53 the Trade Practices Act 1974 (‘the TPA’) use of the opposed trade mark would be contrary to law. However, in the circumstances of the matter before me, if the opponent has established its ground under section 60, consideration of the ground under section 42(b) is unnecessary. And, if the opponent has not established its ground under section 60 of the Act, it a fortiori cannot establish its ground under subsection 42(b) of the Act: Puxu Pty Ltd v Parkdale Custom Built Furniture Pty Ltd [1980] FCA 73; (1980) 43 FLR 405. ‘Confusion’ in terms of the Act does not involve any wrong conclusion on the part of the potential purchaser – it involves a perplexing, a mixing up of the mind, or being caused to wonder; however, the terms ‘mislead’ or ‘deceive’ in terms of the TPA do involve wrong conclusions. The Act thus casts a wider net in this regard than does the TPA and consideration of submissions going to subparagraph 42(b) in the circumstances of this matter is unnecessary as, if the ground under section 60 is not established, then neither can be the ground under section 42(b).
Mr Lord’s written submissions for the applicant draw attention to the applicant’s prior registrations. Mr Lord also reviews and critiques the evidence in support of the opposition declared by Ms Noble. I will canvas most of the issues raised by Mr Lord in the course of my discussion of the issues under section 60.
Section 60
In the circumstances of this opposition – initiated before the commencement of the Trade Marks Amendment Act 2006 – section 60 of the Act provides:
Trade mark similar to trade mark that has acquired a reputation in
AustraliaThe registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.
Note 1: For deceptively similar see section 10.
Note 2: For priority date see section 12.
To found this ground, the opponent needs to establish, on the balance of probabilities, that the trade mark on which it relies:
· Is substantially identical with, or deceptively similar to, the opposed trade mark; and,
· Has a reputation in Australia that arose before the priority date of the opposed application; and,
· Because of that reputation, the use of the opposed trade mark would deceive or cause confusion.
Substantial identity is to be assessed according to the test in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407, per Windeyer J at page 414:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106 . Whether there is substantial identity is a question cf fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100 , per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity, my opinion is ….
In support of her argument that the trade marks in question are substantially identical, Ms Ryan referred me to PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602 where Carr J said at paragraph 30 (in the context of a ‘claim to vary’ the word CHOC):
In my view, the comparison side by side should be with CHOC CHILL on the one hand (or COFFEE CHILL, VANILLA CHILL, STRAWBERRY CHILL ) and CHILL on the other. My reason for that is that CHOC CHILL is the name for which the applicant seeks registration.
Having said that, I consider that the essential feature of the trade mark is the word CHILL. When one considers the basic policy of the 1955 Act, it is the word CHILL which serves to denote the trade origin of the goods.
The word CHOC has, almost exclusively, different work to do. It describes the flavour of the goods. Registration is sought on the basis that that description will change with the flavour to COFFEE, VANILLA, STRAWBERRY and the like. Those words are (to borrow from a decision cited below) utterly descriptive.
I have had regard to the cases cited on behalf of the applicant where a mark consisting of two words has been compared with a mark consisting of one word. They included Carnival Cruiselines where one of the comparisons was between SITMAR’S FUNSHIP and FUN SHIP. In that case (at 513) Gummow J expressed the view that there would be no material distinction to be drawn between FUN SHIP and FUNSHIP or between the addition of the definite article or the use of the plural. However, FUN SHIP was a substantially different trade mark to SITMAR’S FUNSHIP and FAIRSTAR THE FUNSHIP. Mr Martin referred me to other decisions where marks consisting of two words were compared with a mark consisting of one word, many of which were not curial decisions. I will not refer to them all (they are collected at paragraph 8 of the applicant’s outline of submissions). However, Mr Martin singled out a comparison between PLANET 2000 and PLANET in Somers v Greenbelt Pacific Pty Ltd (1998) 42 IPR 587 at 589 (a decision of a senior examiner of trade marks). In that case the senior examiner held that despite the fact that the numeral “2000” added little inherent adaptation to distinguish the goods of the applicant from those of other traders, the marks PLANET and PLANET 2000 when placed side by side, had a clearly identifiable difference.
On the other hand, in Microcom Pty Ltd v Microcom Systems Inc [1998] ATMO 2; (1998) 41 IPR 163 at 168 Hearing Officer Forno compared MICROCOM with MICROCOM NETWORKING PROTOCOL and said this:
“... I do not think that the additional words “Networking Protocol” are sufficient to differentiate the applicant’s and opponent’s marks. Those two words are utterly descriptive for some of the goods covered and add nothing to the mark. This is, I think, analogous to the situation where, say, the trade mark Rinso was being compared with another mark Rinso Washing Powder. Clearly, these marks are substantially the same. I think that any comparison between the present opponent’s mark and that covered by No. 523656, [Microcom Networking Procol] would lead to a conclusion that those marks are also substantially the same.”
I have considered the applicant’s submission that the first word of a mark has an impact because of its position. I think the validity of that observation depends very much upon what that first word is and what the second word is. For example, if the word were “The” then it would have very little impact - see the passage from Carnival Cruiselines referred to above.
Carr J concluded that the trade marks CHILL and CHOC CHILL are substantially identical.
However, I do not agree that the opposed trade mark, NEXT HOME, is substantially identical to the trade mark NEXT. Firstly, the word HOME is arguably not interchangeable with the word ‘homewares’ and thus may not do the same work as does the word CHOC in the trade mark CHOC CHILL.[4] The word ‘home’ means, according to the Macquarie Dictionary:
[4] However, see the discussion of the meaning of the words “tennis” and “warehouse” in the very recent TENNIS WAREHOUSE decision (Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664 (25 June 2010), especially at [86].
home
noun 1. a house, or other shelter that is the fixed residence of a person, a family, or a household.
2. a place of one’s domestic affections.
3. (often upper case) an institution for the homeless, sick, etc.
4. the dwelling place or retreat of an animal.
5. the place or region where something is native or most common.
6. any place of existence or refuge: a heavenly home.
7. one’s native place or own country.
8. (in games) the goal; finishing post; base.
9. (in children’s chasing games) a nominated place where one cannot be caught.
10. Baseball the plate at which the batter stands and which he or she must return to and touch after running round the bases, in order to score a run.
11. Obsolete Great Britain, especially England, as the place from which many Australians had emigrated.
–adjective 12. of, relating to, or connected with one’s home, town, centre of operations, or country; domestic.
13. done or located at home: home banking; home office.
14. Sport
a. of or relating to a game played on a team’s or player’s own ground: a home match.
b. of or relating to a team, player, etc., participating in a game played on their own ground: the home team.
15. Racing of or relating to the final part of a race when the competitors are approaching the winning post: in the home straight.
16. close to, or relating to, the homestead or main group of buildings of a station: the sheep had been brought into the home paddock.
17. that strikes home, or to the mark aimed at; to the point: a home thrust.
–adverb 18. to, towards, or at home: to go home.
19. deep; to the heart; effectively and completely.
20. to the mark or point aimed at: to strike home.
21. Nautical all the way; as far as possible: to heave the anchor home.
22. Sport with a score which represents success: they were home with just one ball to spare.
–verb (homed, homing)
–verb (i) 23. Rare (of birds and some other animals) to go or return home.
24. Obsolete to have the home where specified.
–verb (t) 25. Obsolete to bring or send home.
–phrase 26. a home away from home, a place having the comforts of home.
27. at home,
a. in one’s own house or country.
b. (of a sporting team, etc.) in one’s own town or one’s own grounds: *the Brisbane Bears are at home to Fitzroy and Richmond meet St Kilda. –west australian, 1991.
c. in a situation familiar to one; at ease.
d. prepared to receive social visits: *She told Kate that she was at home to no one, and that she would speak to no one on the telephone but Marian. –martin boyd, 1946.
e. (sometimes followed by with) familiar; accustomed; well-informed.
28. bring home to, to cause (someone) to realise fully: this will bring home to you the folly of what you have done.
29. home and hosed (or dry),
a. finished successfully.
b. now judged to be sure of success.
30. home in on,
a. (of guided missiles, aircraft, etc.) to proceed, especially under control of an automatic aiming mechanism towards (an airport, fixed or moving target, etc.).
b. to proceed towards, as if guided by an external force: *politicians eager to score points in a presidential race homing in on `family values’. –west australian, 1992.
31. home on the pig’s back, certain to succeed.
32. make oneself at home, to make use of the comforts and amenities of someone else’s home as if it were one’s own.
33. nothing to write home about, not remarkable; unexciting; inferior.
34. who is he (or she) when he’s (or she’s) at home?, an expression, usually scornful, indicating that the person referred to has an undeservedly high opinion of himself or herself. [Middle English; Old English hām home, dwelling, related to German Heim]
The word ‘home’ is arguably, prima facie, not purely descriptive of the goods of the parties. Thus, although the word ‘home’ might lack any inherent adaptation to distinguish in relation to the services of the parties, I am not persuaded that it functions as a purely descriptive word and the opponent has not led any evidence as to the status or use of this word in the relevant trades.
Secondly, a further problem in adopting the approach in Malanda in terms of section 60 is that it may be more difficult to accept the functioning of the suggested analogue (the word HOME) of the word CHOC in the context of the disparate goods or services of parties as, to paraphrase Carr J’s expression, ‘doing the same work’. Where (as in Malanda) the goods on either side are ice-cream, the word CHOC is readily seen as being fully descriptive and discounted; however there might be some doubt about this approach in some circumstances where the goods or services do not properly match each other.
Accordingly, in the context of the applicant’s furniture-related services, or the opponent’s house wares and related services, I do not consider that the trade marks are substantially identical.
Deceptive similarity is to be assessed according to the tests set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at paragraph 13 per Windeyer J:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same” (1937) 58 CLR, at p 658
The standard which is applied to the consideration is that discussed in Registrar of Trade Marks v Woolworths [1999] FCA 1020 at paragraph 50 by French J who said:
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:
“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”
The word in common to the trade marks of the parties is the word NEXT and the additional word HOME in the opposed trade mark, while arguably not apt for normal description of the applicant’s services, is one which lacks inherent adaptation to distinguish in relation to those services. The word NEXT lies at the beginning of the opposed trade mark and is likely to be remembered and retained in the minds of people as the distinguishing feature of the opposed trade mark. In In the Matter of London Lubricants (1920) Limited’s Application to Register a Trade Mark (1925) 42 RPC 264 at 279, Sargant LJ 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 judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.”
I am satisfied that the trade marks of the parties are deceptively similar.
Concerning the reputation of the opponent’s trade mark, in McCormick & Company Inc v McCormick [2000] FCA 1335 Kenny J said, at 81:
What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.
Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?
There is bound to be considerable difficulty in estimating the ‘spillover’ of a reputation overseas into Australia via overseas travelers who may have noted the use of a trade mark in one or more overseas countries. Even with the figures supplied by the opponent, which appear initially to have some potency, there are many questions.
· Of the total sales and advertising figures provided to me, what proportion occurred in the United Kingdom compared to where the opponent’s trade mark has been used elsewhere in Europe, the Middle East and in Asia? Are visitors from Australia to these areas in similar proportions to those who visit the United Kingdom?
· While the NEXT branded clothing stores of the opponent could have been noted in the United Kingdom and elsewhere by Australian travelers, to what extent would these travelers notice that these stores also sell homewares and furniture which are more awkward to fit into luggage?
· If Australian travelers had purchased homewares and furniture (or, indeed, clothing) within the opponent’s shops, the opponent would have credit card records of this, yet there is no evidence before me of this.
· Likewise, there is no evidence before me that the opponent has made Internet sales into Australia via its website. There is similarly no evidence of Australian ‘hits’ on its website. If the opponent’s stores had struck Australian travelers sufficiently for the trade mark to establish a reputation in Australia, one might reasonably expect that Australians might visit the opponent’s website and possibly purchase items from it.
The assessment of a trade mark’s reputation in Australia is frequently gauged by an estimation from details of annual turnover and sales and advertising figures – this approach has been endorsed by the Courts, in (for example) McCormick, above at paragraph 86:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC ¶91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.
However, while the opponent has provided details of sales and advertising figures, and of Australian travelers visiting the United Kingdom, I consider that I am being asked to draw an inference on an inference (firstly that the trade mark NEXT has a reputation in the United Kingdom – which I accept – and secondly that travelers would have noticed the trade mark NEXT in use in relation to homewares and furniture and brought a memory of that back to Australia). There are difficulties, as I have previously said, with the second inference. I consider that more confirmative evidence is required in cases such as these for an opponent to establish that its trade mark has a reputation in Australia. There are some overseas trade marks where evidence of the type before me would suffice – there are trade marks which have little or no use in Australia such as WALMART or MARKS & SPENCER in relation to which such evidence would confirm the trade mark’s reputation in Australia. However, the opponent’s trade mark is not (in my consideration) of that ilk. It also might be (in similar circumstances and with similar evidence) that if an opponent’s trade mark is particularly idiosyncratic, it might be more likely to affix itself in the minds of Australian travelers. Again, I do not consider that the trade mark NEXT is of that ilk.
I further note that in the area of the opponent’s primary interest, clothing, the trade mark NEXT is registered in the name of a person other than the opponent without apparent confusion arising.
In summary, I do not consider that the opponent has established that its trade mark has reputation in Australia in relation to furniture or homewares such that it triggers section 60 of the Act.
Decision
Section 55 of the Act 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.
The opponent has not established its opposition to the registration of application 1053897.
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.
Costs
The applicant is entitled to its costs which I award against the opponent at the official scale.
Iain Thompson
Hearing Officer
Trade Marks Hearings
16 July 2010
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