Nice One Sydney'S Pty Ltd v Fantastic Holdi Ngs Ltd

[2014] ATMO 53

TRADE MARKS ACT 1995

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

Re:Opposition by Nice One Sydney’s Pty Ltd to registration of trade mark application 1340638(11, 20, 24, 27, 35) - THE PACKAGE DEAL KINGS - filed in the name of Fantastic Holdings Ltd.

Delegate:

Iain Campbell Thompson

Representation:

Opponent: Not in attendance, did not file written submissions

Applicant: Clare Cunliffe of Counsel instructed by Jina Tresidder of HWL Ebbsworth, Solicitors

Decision:

2014 ATMO 53

S52 opposition to registration – s58 and s60 not established.

Background

1. This matter is an opposition to an application (‘the Application’) under the Trade Marks Act 1994 (‘the Act’) by Fantastic Holdings Ltd (‘the Applicant’) to register a trade mark details of which appear below:

Application No: 1340638

Priority Date:  14 January 2010

Goods/Services:              Class 11: Bedside lamps; lamps; lampstands; pedestal lamps; table lamps

Class 20: Bean bags in the nature of furniture; bedroom furniture; benches (furniture); cane furniture; chairs being furniture; chairs being office furniture; computer furniture; cupboards being furniture; desks (furniture); domestic furniture; dressers (furniture); filing cabinets in the nature of furniture; furniture; furniture made of plastics; furniture made of steel; furniture made of wood; furniture made principally of glass; furniture of metal; furniture shelves; garden furniture; hanging storage racks (furniture); household furniture; indoor furniture; nursery furniture; office furniture; outdoor furniture; padded furniture; patio furniture; screens in the nature of furniture for use as room dividers; seat covers (shaped) for furniture; seat pads being parts of furniture; shelves (furniture); stackable furniture; upholstered furniture; blinds (indoor); beds; soft furnishings (cushions); bedding (except linen); cabinets; sofas; mattresses; pillows; mirrors being items of furniture; ottomans; bookcases; tables; storage furniture; spring mattresses

Class 24: Bed linen; bed quilts; quilts

Class 27: Floor rugs; rugs

Class 35: Retailing of goods (by any means); wholesaling of goods (by any means) 

Trade Mark:  

(‘the Trade Mark’)

1. The Trade Mark was duly examined in compliance with section 31 of the Act, accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 26 May 2011.

2. On 26 August 2011, Nice One Sydney’s Pty Ltd (‘the Opponent’) filed Notice of Opposition to the registration of the Trade Mark. The grounds of opposition traverse all of those available to an Opponent against an application for a standard trade mark and include those grounds under sections 58 and 60 which I will discuss below.

3. As a delegate of the Registrar of Trade Marks, I heard the submissions of the Applicant argued by Clare Cunliffe of Counsel instructed by Jina Tresidder of HWL Ebbsworth, Solicitors, in Melbourne on Wednesday 28 May 2014.  The Opponent did not appear at the hearing or put in written submissions.  I note that the Opponent’s legal representatives no longer act for it and that mail sent to the Opponent’s address for service is being returned to sender.

Onus and Relevant Date

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12]; Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10]; Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; ( 2012 ) 94 IPR 551 per Dodds-Streeton J at [13]; DC Comics v Cheqout Pty Limited [2013] FCA 478 per Bennett J at [13]; and, most recently, Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited per Murphy J at [30] to [37].

2. The relevant date at which the grounds must be considered is the filing  date of the opposed application: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; The Seven Up Company v O.T. Limited [1947] 75 CLR 203 at 211; Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 at 266.

Evidence

1. The evidence in support of the opposition is a statutory declaration by Chris Ng who is a director of both the Opponent and of Aozz Sydney’s Furniture Pty Ltd (‘Aozz’).  I note that ASIC records show that Aozz is under external administration and that a Preliminary Report of a Liquidator was filed on 14 August 2013 and that a Report as to Affairs Regarding Court Winding Up was filed on 12 August 2013.

2. Mr Ng states that, under license from the Opponent:

   Aozz operates a wholesale, retail and franchising business trading under the trade mark “Sydney’s” (Business), which offers furniture and other home products and accessories including bedding, sofas, home theatre goods, audio and video goods, electrical goods, fixtures and fittings (Opponent’s Goods and Services). Aozz and its franchisees currently operate 12 Sydney’s retail stores throughout Victoria.

   The Business was established in Melbourne in 1983, but traces its origins to a furniture store in Seymour, Victoria, which was established in 1972. Between 1984 and 2003, the Business was operated by Sydney’s Lounge Discounters (Franchisors) Pty Ltd (SLD) and its franchisees.

   Aozz acquired the Business as nominee for Aeon Pty Ltd (APL) pursuant to a business sale agreement dated 29 August 2003 between APL, SLD and others (Agreement). Under the Agreement, the vendors agreed to sell to APL (among other things) “Business Assets”. Such assets were defined to include “Intellectual Assets”, that is:

   all intellectual property used in the Business (whether registered or not) including but not limited to the system of franchising, brand information, and the Trade Mark and Business Names listed in Schedule 4 and any others which may be used by the Vendor in the conduct of the Business whether such use is pursuant to a licence or registration or mere usage

   Schedule 4 to the agreement specified the registered business name “SYDNEY – THE PACKAGE DEAL KING” (Victorian Business Name No. B1434291 E).

   Aozz subsequently assigned these assets, including all reputation and goodwill associated with the Opponent’s Marks to the Opponent. The Opponent licenses this intellectual property to Aozz for its use in connection with the Sydney’s business.

3. Concerning his company’s use of the trade mark THE PACKAGE DEAL KING and/or SYDNEY THE PACKAGE DEAL KING, (‘the Opponent’s trade marks’) Mr Ng asserts:

   The Sydney’s Companies have used the trade marks THE PACKAGE DEAL KING and SYDNEY THE PACKAGE DEAL KING extensively and continuously from at least 22 September 1994 until the date of this declaration. The Opponent’s Marks remain in use to this day and will continue to be used by the Sydney’s Companies.

   From at least 22 September 1994, the Business traded under the Opponent’s Marks. From that date to the date of this declaration, all of the Opponent’s Goods and Services were offered as part of the Business under or by reference to the Opponent’s Marks.

   SLD was known as “The Package Deal King Pty Ltd” and traded under this name until 22 September 1994, when the company name was changed with ASIC. Annexed hereto and marked Exhibit “CN-3” is a true copy of the ASIC Certificate of Registration on Change of Name dated 22 September 1994.

   SLD registered the business name “THE PACKAGE DEAL KING” (Victorian Business Name No. 1180913P) on 22 September 1994 (First Business Name). SLD continued to trade under the First Business Name from this date.

   The Sydney’s Companies have also used the Opponent’s Marks by way of the following examples.

   The Sydney’s Companies have used the Opponent’s Marks on in-store signage and merchandising. For example:

   (a)annexed hereto and marked Exhibit “CN-5” is a poster which prominently features the trade mark THE PACKAGE DEAL KING displayed in stores in the period 1999-2000;

   (b)annexed hereto and marked Exhibit “CN-6” is a photograph from the Sydney’s Ferntree Gully store taken in November 2011 which illustrates a poster prominently featuring the trade mark SYDNEY THE PACKAGE DEAL KING.

   The poster referred to in paragraph 19(a) above and depicted in exhibit CN-5 and posters like it had been left by the previous owners and they continued to be displayed in some Sydney’s stores from the time the Opponent acquired the business in 2003 and throughout the period 2004 to 2007

4. Mr Ng also asserts that the Opponent’s trade marks were used in television and radio advertisements.  A DVD with examples of use on 23 July 1999, 18 August 1999 and 16 November 1999 are exhibited to his declaration.

5. Further examples of use of the Opponent’s trade marks in print and broadcast media through the first decade of the current millennium are exhibited to Mr Ng’s declaration.

6. The Applicant’s evidence in answer is a statutory declaration by George Saoud made on 26 September 2013.

7. Put briefly, Mr Saoud’s declaration establishes that the Applicant operates retail stores which sell furniture and homeware products.  The Applicant operates 136 stores over five furniture retail chains including Fantastic Furniture, and owns sofa and mattress manufacturers.  The Applicant is Australia’s third largest furniture retailer by sales value and Australia’s largest vertically integrated furniture group.  The Applicant is listed on the Australian Stock Exchange, employs over 1500 people nationally, and achieved sales of around $450 million in the 2012 financial year.

8. The Applicant’s evidence establishes use from 1992 of a trade mark which included the main elements of the Trade Mark in television advertisements in relation to its furniture retailing business.  That trade mark was in the form:

9. In around 2008, the above trade mark was altered to take the form of the Trade Mark.

10. Use of the Applicant’s trade marks has been continuous, from 1992 through to the priority date of the Application and the Applicant supplies confidential turnover figures in relation to sales under its trade mark.

The Grounds

1. As indicated above, the Opponent nominated all available grounds of opposition in its Notice. While the evidence clearly does not establish any ground of opposition, the evidence is couched, in my consideration, in terms of section 58 of the Act and possibly section 60. For the sake of completeness, I note that no ground has been established by the Opponent and I will give my reasons for finding that the opposition is not established in terms of sections 58 and 60.

Section 58

1. Section 58 of the Act provides:

   58Applicant not owner of trade mark

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

   Note:For applicant see section 6.

2. To establish that it is the owner of a trade mark, an opponent must demonstrate that it had use of that trade mark (or a trade mark at least substantially identical to the trade mark)[2] in relation to goods or services which are the ‘same kind of thing’[3] before either the filing date or the first use by an applicant or authorized user (whichever is the earlier) of that trade mark.[4]

   [2] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049.

   [3] Re Hicks’ Trade Mark (1897) 22 VLR 636

   [4] See for example, Malibu Boats West, Inc v Catanese (2000) 180 ALR 119; Re Riv-Oland Marble Co (Vic) Pty Ltd v Settef SPA[1988] FCA 344 ; Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd [1974] HCA 51; (1974) 131 CLR 592; 4 ALR 687; (1974) 48 ALJR 456; 1A IPR 511.

3. In his declaration Mr Ng appears not to distinguish between the use of the business names Sydney The Package Deal King and/or The Package Deal King and use of the Opponent’s trade marks which consist of the same words.  Thus while use of the Opponent’s trade marks is asserted from 1994, this is not supported by the exhibits to Mr Ng’s declaration: use of a business name is not use of a trade mark – see Lone Star Steakhouse & Saloon Inc v Zurcas [2000] FCA 29; (2000) 48 IPR 325. The earliest use which is clearly supported by evidence is in 1999-2000, however it is not clear that the use asserted by the Applicant is use of a trade mark or trade marks rather than of advertising slogans.

4. On the other hand, the Applicant points to both its use of the trade mark shown at [14], above, (‘the earlier trade mark’) since 1992 and the subsequent use of the Trade Mark and argues that this all constituted, in terms of subsection 7(1) of the Act, a use of the Trade Mark. Subsection 7(1) provides:

   7Use of trade mark

   (1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

   Note:For prescribed court see section 190.

5. The main differences between the Applicant’s earlier trade mark and the Trade Mark are the arrangement of the words appearing in it, the addition of an exclamation mark, and the approximately horizontal slash, or brushstroke, under the words.  Although the differences are somewhat lengthy to describe, I consider that these trade marks are at least as similar as those under the consideration of the High Court in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381. It was found in that case that the graphical device of a footprint was merely an illustration of the word ‘barefoot’ appearing in the trade mark. Similarly, the differences between the Applicant’s trade marks in use do not substantially affect their identity and the differences are immaterial as far as they affect the identity of the Trade Mark.

6. It follows logically from this finding that the Applicant has had use of the Trade Mark in relation to its goods and services since 1992 (a time before the first asserted use of the Opponent’s trade mark in 1994 and first substantiated use in 1999) and the opposition under section 58 is not established.

Section 60

1. Section 60 of the Act provides:

   60Trade mark similar to trade mark that has acquired a reputation in Australia

   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.

   Note:For priority date see section 12.

2. It is necessary, to establish this ground, that an opponent satisfy me, on the balance of probabilities, that its trade mark had, at the priority date, a reputation and that because of that reputation the use of the opposed trade mark is likely to deceive or confuse.

3. Reputation was discussed by Kenny J in McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 (‘McCormick’) 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?

and Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee[5] [2000] FCA 1587; (2000) 50 IPR 1 said that the reputation required to be demonstrated was:

one of which a significant number of persons were aware…What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

[5] Discussing subparagraph 28(a) of the Trade Marks Act 1955 under which, in the circumstances of the case, it was necessary to establish reputation.

1. At the relevant date, the Opponent’s stores operated in some twelve Victorian towns and cities which are close to Melbourne such as Geelong, Hoppers Crossing, Thomastown, Mitcham, Dandenong and so forth.

2. The words Sydney’s The Package Deal Kings appear in the Opponent’s catalogues.  The symbol ® mistakenly appears alongside these words.[6]  In the television advertisements which were broadcast in Melbourne, a man called ‘Sydney’ calls himself The Package Deal King.  He also calls himself Sydney The King Of Sofas in another television commercial.  And, in one commercial within Exhibit CN-7, there is no reference to either Sydney The King Of The Sofas or Sydney The Package Deal King.  Thus advertising with reference to the Opponent’s trade marks is inconsistent.  Section 17 provides:

   17What is a trade mark?

   A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

   Note:For sign see section 6.

   [6] See section 151 of the Act.

3. It is not obvious that the Opponent’s trade marks were used in relation to goods and services and not in relation to the man who identified himself as being Sydney in the commercials.

4. The Opponent provides both revenue and advertising expenditure figures which are quite respectable.  However, it is not clear to me to what extent these figures relate to the use of a trade mark which contains the words The Package Deal King.  I note that in print – as in the catalogues in evidence – the use of the words The Package Deal Kings or Sydney the Pages Deal King is not consistent and tend to be overshadowed by more obvious trade mark material such as that appearing below:

1. It would be difficult here to apportion sales figures between the trade mark immediately above and the Opponent’s trade marks, if, indeed they have been used as such.  However, viewing the Opponent’s advertising as a whole, it seems that the vast bulk of people would purchase with reference to the trade mark immediately above and regard the expression The Package Deal King as being an advertising puff used in relation to the trade mark SYDNEY’S rather than an indication of origin.

2. It is difficult on this basis to conclude that the Opponent’s trade marks are known to Australians generally or are recognized as trade marks within the area of its actual use – suburban Melbourne and cities close to Melbourne.

3. This difficulty is magnified by the restricted geographical nature of the Opponent’s operations and advertising.

1. Further, sales under the Trade Mark were, at the priority date, in the order of 20 times higher than those under the Opponent’s trade marks.  It would be wrong on this basis to conclude that any deception or confusion would be on the basis of the reputation of the ‘other’ trade mark and not on the basis of the reputation of the Trade Mark.

2. The Opponent has not established that the trade mark on which it relies has a reputation in Australia nor that that reputation, should it exist, would be the source of confusion or deception.

3. The section 60 ground is not established.

Decision

1. At the relevant date subsection 55(1) of the Act provided:

   55Decision

   (1)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.

2. The Opponent has not established its opposition.

3. The Application may then 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 and that the disposition of the Application be in accordance with the Court’s order or direction.

Costs

1. The Applicant is entitled to its costs at the Official Scale set out in the Regulations which I order against the Opponent.

Iain Campbell Thompson

Hearing Officer

Trade Marks Hearings

13 June 2014