Nike International Ltd v Guirenniao (Fujian) Shoes & Plastics Co., Ltd

[2007] ATMO 19

TRADE MARKS ACT 1995

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

Re:        Opposition by Nike International Ltd to protection of international registration designating Australia 1022465 (25) (International Registration No. 831781) – Device Trade Mark - in the name of Guirenniao (Fujian) Shoes & Plastics Co., Ltd.

Delegate:

Iain Thompson

Representation:

Opponent: Khajaque Kortian of Spruson & Ferguson

Holder: Unrepresented and did not appear or file written submissions

Decision:

2007 ATMO NN

Regulation 17A.29 opposition:

Grounds under sections 44 & 60 established – protection refused.

Background

1. The holder Guirenniao (Fujian) Shoes & Plastics Co., Ltd, of Jinjiang, Fujian, China (hereinafter ‘the applicant’), requested protection in Australia for the following international registration designating Australia (‘IRDA’):

Reg No:               1022465

Priority Date:  18 June 2004

Goods/Services:              Class: 25 Shoes, sports shoes, football boots, sandals, travel shoes, rubber shoes, soles, slippers, beach shoes

Trade Mark:  

1. Notice of opposition to the protection of an IRDA is governed by the provisions of regulation 17A.29. 

2. Nike International Ltd, of Beaverton, Oregon, United States of America (‘the opponent’), filed Notice of Opposition on 11 February 2005 citing grounds of opposition under most available grounds of the Trade Marks Act 1995, (‘the Act’). 

3. The opponent filed evidence in support of the opposition.  However, as the applicant has not nominated an address for service in Australia, there was no requirement for the evidence to be served on the applicant.  The applicant did not file or serve evidence in answer.

4. As a delegate of the Registrar of Trade Marks, I heard the matter in Sydney on 14 February 2007.  Khaque Kortian of Spruson & Ferguson represented the opponent.  The applicant was unrepresented and did not appear or file written submissions.

Evidence

1. The declaratory evidence filed in the matter is as follows:

Declarant	Exhibits
Evidence in support
Khajaque Kortian	"KK-1" TO "KK-6"
Khajaque Kortian	KK-1
Kevin Richard Brown	A TO Y
Richard Paul Stanwix	"RS-1" TO "RS-7"

1. The evidence shows that the opponent has use and registrations in Class 25 for trade marks which contain or consist of the trade marks appearing below:

“Swoosh 1”  “Swoosh 2”

1. I adopt Mr Kortian’s submissions concerning the reputation of the SWOOSH trade marks of the opponent as they are an accurate summary:

   The Opponent is part of the Nike Group of Companies which carries on an established business in respect of a large variety of goods including footwear, including athletic shoes, clothing, bags of all kinds, sporting goods, eyewear, watches and designs, consumer electronic products and others. The Nike Group of Companies is one of the world's leading manufacturers of sports shoes, sports apparel of all kinds and sporting goods ("NIKE Products") (Brown Declaration Paragraph 3).

   The Nike Group of Companies operate retail stores under the trade marks "Nike", and "Nike Town", each of which prominently bear the SWOOSH Design Trade Mark, in many cities throughout the world including Los Angeles, New York, San Francisco, Washington D.C., Berlin, London and Melbourne (Brown Declaration Paragraph 3).

   The Opponent is the owner of a number of Australian trade mark registrations for, and applications to register, the trade mark NIKE as well as for the "SWOOSH Design" (either alone or in combination with other words and designs) in Class 25, as well as in related or other classes such as Classes 9, 14, 16, 18, 28, 29, 32, 41 and 42 (Brown Declaration Paragraph 4; Kortian First Declaration Paragraph 2- Exhibit KK-1).

   The trade mark NIKE and the SWOOSH Design Trade Mark, which is synonymous with "NIKE", are famous and are among the most widely-recognised trade marks throughout the world (Brown Declaration Paragraph 6 - Appendixes A, B, C and D). The SWOOSH Design Trade Mark is commonly regarded as being synonymous with the trade mark NIKE (Brown Declaration Paragraph 7).

   Total sales (US dollars) of products bearing the NIKE and/or SWOOSH Design Trade Marks for the fiscal years 1979 to 2004 totalled in excess of [many billions] (Brown Declaration paragraph 13).

   From 1979 to 2004 the Nike Group Companies have extensively promoted the NIKE and SWOOSH Design Trade Mark throughout the world (including Australia) with a total of [several] billion being spent on advertising expenditure (Brown Declaration Paragraph 16).

   In addition to direct advertising, Nike has sponsored a large number of athletes and sports persons who are well-known throughout the world including Australia as well as local Australian athletes and sports people. These include:

   -          Michael Jordon;

   -          Le Bron James;

   -          Mia Hamm;

   -          Tiger Woods;

   -National teams of several countries including the Brazillian Soccer Team;

   -          Kathy Freeman;

   -          Andrew Johns; Craig Mottram;

   -          Australian Olympic Team (2000 and 2004 games);

   -          Socceroos, Australia Soccer Team;

   -          Carlton Football Club;

   -          Bulldog Rugby League Club

   (Brown Declaration Paragraph 15; Stanwix Declaration Paragraph 13).

   NIKE Products bearing the NIKE or SWOOSH Design Trade Marks (or both of them) have been extensively imported, manufactured under licence and promoted in Australia since 1972 (Stanwix Declaration Paragraph 7).

   Total sales for the period 1993 to 2005 [in Australia] of NIKE Products have been in [in the order of billions of dollars] (Exhibit RS-2 Confidential to Stanwix Declaration).

   NIKE Products are sold through an extensive network of retailers in Australia including the major department stores in Australia such as David Jones and Myer as well as specialty sports stores (Stanwix Declaration Paragraph 9 – Exhibit RS-3 to Stanwix Declaration).

   Nike Australia has extensively promoted NIKE Products bearing the NIKE and SWOOSH Design Trade Mark from 1998 to 2005 by way of various forms of media including print, advertising, advertising through radio and television, billboards and other media, totalling [many millions of dollars] (Paragraphs 10, 11 and 12 of Stanwix Declaration – Exhibit RS-4 Confidential, RS-5 and RS-6 to Stanwix Declaration).

   The NIKE Products as well as the NIKE and SWOOSH Design Trade Marks are also extensively promoted through the website of Nike Australia situated at which has received on average 40,000 to 60, 000 hits or visits per month by internet users since it was established in 1995 (Paragraph 15 Stanwix Declaration).

   The Opponent's significant reputation in Australia was also acknowledged by the High Court (and the Courts below) in Campomar Sociedad Limitada v Nike International Limited [2000] HCA 12, 19 March 2000 at paragraphs 10, 31, 79 and 86 particularly in relation to the NIKE Trade Mark but also in relation to its advertising and sales generally.

   The Opponent also has a number of defensive trade mark registrations for the SWOOSH Design Trade mark based on Trade Mark Registration No. 355649 SWOOSH Device in Class 25 in particular Trade Mark Registration No. 727244 in Class 32 (Kortian First Declaration Paragraph 2).

   [Material in brackets redacted]

2. I would add that the opponent’s SWOOSH trade mark is, in my estimation, exceptionally well known.  Its use might have escaped the attention of a few people in Australia, but I doubt that it would be many.

3. The registrations on which the opponent relies include:

Reg No:               284352

Priority Date:  8 January 1975

Goods/Services:              Class: 25 Athletic shoes for sports, athletic shoes for training, and athletic shoes for general use; and athletic uniforms

Trade Mark:  

Reg No:               355649

Priority Date:  21 January 1981

Goods/Services:              Class: 25 All goods in this class

Trade Mark:  

Reg No:               489050

Priority Date:  16 June 1988

Goods/Services:              Class: 25 Clothing, footwear, headgear

Trade Mark:  

Section 44

1. Section 44 of the Act relevantly provides:

44  Identical etc. trade marks

(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.

Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

1. As the goods of the parties are, essentially, the same goods, and the priority dates of the registration on which the opponent relies are before that of the opposed trade mark, (and absent submissions that the trade marks are substantially identical) the question that remains to be addressed is whether the trade marks in question are deceptively similar.

2. Deceptive similarity is defined within section 10 of the Act:

   10 Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

3. French J considered the above provisions in Registrar of Trade Marks v Woolworths [1999] FCA 1020, at paragraph 50 where he 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) 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."

4. French J also stated at paragraph 43 of Woolworths, above:

   For there to be a deceptive similarity between a service mark and a mark in respect of closely related goods the degree of resemblance must be such that the service mark is "likely to deceive or cause confusion". The use of the word "likely" in this context does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a "real tangible danger of its occurring" - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 529 at 594-5 per Kitto J.

5. In Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 at 658, Dixon and McTiernan JJ. said of the comparison of the trade marks:

   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.

6. And the comparison is to be in the context of the goods in question.  In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, above, Parker J, as he then was, said:

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

7. The judgment of the trade marks is, here, solely by their look as they are device trade marks which are inominate.  The comparison is in the context of shoes and in particular footwear for athletes and sportspersons.  The orientation of the trade marks in question will not always be apparent on swing-tags, the tongues or soles of shoes and so forth.  Thus, (and I show the images here for demonstration and not comparison) the trade mark of the parties could appear to purchasers thus:

1. Alternatively, the trade marks could appear to purchasers thus:

1. Very obviously, the trade marks are deceptively similar.  Just as obviously, the applicant has arrived at its trade mark by a process of conscious copying where the opponent’s device is incorporated into the applicant’s trade mark twice; it also forms the smaller hook at the left hand side when the trade mark is looked at in the representation at paragraph 19, above.

2. In NEC Corporation v Punch Video (S) Pte Limited [2005] FCA 1126, (where the trade mark applicant had appropriated the get-up of the opponent’s NEC trade mark within the opposed NECVOX trade mark) Branson J said at paragraph 36:

   In Australian Woollen Mills Limited v F S Walton and Company Limited (1937) 58 CLR 641 (‘Australian Woollen Mills’) at 657 Dixon and McTiernan JJ stated:

   ‘The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive. Moreover, he can blame no one but himself, even if the conclusion be mistaken that his trade mark or the get-up of his goods will confuse and mislead the public.’

   In Windsor Smith Pty Ltd v Dr Martens Australia Pty Ltd (2001) 49 IPR 286 (‘Windsor Smith’) at 293 the Full Court considered that the inference to be drawn from a finding that a trader has deliberately adopted the get-up of a rival’s product for the purpose of implying a connection with the rival was ‘simply one piece of evidence to be assessed with such other evidence as may be adduced on the issue’. It is not necessary for me to decide whether there is any inconsistency between the approach of the Full Court in Windsor Smith, which involves claims under the Trade Practices Act 1974 (Cth) and for passing-off, and that of the High Court in Australian Woollen Mills. In this case, unlike the situation that prevailed in Windsor Smith, there was no persuasive evidence concerning the practical operation of the market place which suggested that the intention of causing confusion had failed.

3. The applicant here has led no evidence of use or any evidence concerning the practical operation of the marketplace and I must presume that its trade mark is so far unused.  Thus there could be no evidence whether the intention of causing deception or confusion has failed.  However, as the opposed trade mark is manifestly composed of a re-arrangement of the opponent’s trade mark, I can have little hesitation in finding the trade marks are deceptively similar and that the use of the trade mark is likely to confuse or deceive.

4. The opponent has established its opposition under section 44.

5. It is also obvious that, because of the reputation of the opponent’s trade mark, the opposition should succeed under sections 42 and 60 of the Act – however, discussion of the reasons for this would be, in the circumstances, otiose, as (in my consideration) the decision under section 44 is quite clear cut.

Decision

1. Regulation 17A.34(1) provides:

   17A.34 (1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a) to refuse protection in respect of all of the goods or services listed in the IRDA; or
   (b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

2. I refuse to extend protection in Australia for the application in respect of all goods listed in the IRDA.

27.  While there are obvious difficulties involved as there is no Australian address for service, the opponent is entitled to its costs which I order against the applicant.

Iain Thompson

Hearing Officer

Trade Marks and Designs Hearings

23 April 2007