No Fear, Inc v David Andrew Nancarrow

[2000] ATMO 101

TRADE MARKS ACT 1995

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

Re:Opposition by No Fear, Inc. to the registration of trade mark application number 720373 in the name of David Andrew Nancarrow for the stylised word trade mark GODLY FEAR in Class 16

Background

Application number 720373 was filed on 28 October 1996 in the name of David Andrew Nancarrow (the applicant).  The application was for the registration of the trade mark shown below and covered the statement of goods, "Stickers" in Class 16.

Following examination, the trade mark was advertised as being accepted in the Australian Official Journal of Trade Marks of 18 June 1998.

A notice of opposition to the trade mark’s registration was filed by No Fear, Inc. (the opponent), on 5 July 1998.  The notice of opposition listed a number of grounds.  However, the only matters which were relied upon in written submissions filed by the opponent's attorneys, in lieu of appearing at a hearing, were under ss.44 and 60.  Accordingly, those grounds are the subject of this decision and the reasons for it.

As neither party requested a hearing in the matter, the matter was set down for me to decide, as the Registrar's delegate.  The parties were both informed, in Official letters dated 6 June 2000, that the matter would be considered on the basis of the evidence served and any written submissions from the parties which were on file.  The opponent's attorney, Ms Fiona Brittain of Davies Collison Cave, filed submissions on 26 July 2000.  On 13 September 2000, the applicant's attorney, Dr Drazen Lesicar of Lesicar Perrin, filed submissions on behalf of the applicant by facsimile.

The Evidence
The evidence in support comprises a declaration by Mr Marty Moates, the Vice President of Trademark Security of the opponent, dated 4 January 1999.  Mr Moates lists the various Australian trade mark registrations owned by the opponent and gives a history of the use and alleged reputation of its NO FEAR marks on various goods.  He makes mention of what he describes as the distinctive lettering of some of its NO FEAR marks and attaches various exhibits related to the claimed use and reputation of these marks.  He also gives details of the annual retail turnover and expenditure on advertising and promotion, in relation to the opponent's NO FEAR products and trade marks in Australia, from 1993 to 1998.

The evidence in answer comprises a declaration by the applicant, Mr Nancarrow, dated 12 July 1999.  He declares that he is a Youth Minister of the Werribee City Church - an Apostolic Church.  Mr Nancarrow gives the background in relation to his adoption of the mark, stating that he had been aware of the opponent's mark when he chose his own mark.  He says that, because he had been advised that no particular "design style" had been registered by the opponent, he had deliberately chosen a font for his mark that had a "young, youthful and grungy look about it".  He expands on the uses of the goods bearing the mark, the philosophy behind that use and his belief that no deception or confusion would occur if the present mark was registered because of the prominence of the word GODLY in the present mark, the antithesis of meanings in the competing marks, and because the primary consumers of his goods would be "Christian Youth" who would not be deceived or confused when confronted with both marks.  He further claims that all of the evidence preceding October 1996 (the time of the filing of the present application) was concentrated in the United States of America.

The evidence in reply comprises another declaration by Mr Moates, dated 6 April 2000, where he claims that, from his reading of the Nancarrow declaration, Mr Moates believes that the opposed mark was "directly derived" from the term NO FEAR.  He discusses various other statements made in the applicant's declaration, particularly saying that Mr Nancarrow's words in his declaration showed that the market for both parties' goods overlapped.  Mr Moates also discusses the philosophy and meanings in the two marks, saying that such inspirational messages and slogans are often applied by manufacturers to the goods being offered for sale.  He disputes Mr Nancarrow's arguments about when the evidence showed that the opponent had first commenced use of its marks on its goods, claiming that that party had been applying its  marks to stickers in this country since December 1993.  He provides sales figures to this effect from 1993 until 1999 and also points to print media exposure of the NO FEAR marks since September 1995.

Submissions
Ms Brittain, in her written submissions on behalf of the opponent, said that the present mark was deceptively similar to the opponent's registered marks in Class 16, which comprised the words NO FEAR simpliciter and the NO FEAR GEAR mark - as depicted on page 5 of these reasons for my decision.  She referred to the accepted tests to determine deceptive similarity, as laid down by Windeyer J in Shell Co (Australia) Ltd v Esso Standard Oil (Australia) Ltd, (1963) 109 CLR 407 and Australian Woollen Mills Ltd v F. S. Walton & Co Ltd (1937) 58 CLR 641. She emphasised the prominence of the word FEAR in the conflicting marks, saying that this was an essential feature of all of them. She said that it could thus be inferred that all of the marks bore a close resemblance to each other.

Ms Brittain said that there was a direct overlap in the goods covered by the marks of the opposing parties here and that that was an important factor in relation to a finding as to the deceptive similarity of trade marks.  For support here she referred to the Federal Court case, Registrar of Trade Marks v WoolworthsLtd (1999) AIPC 91-499 at 39,695. She submitted that any surrounding circumstances also needed to be taken into account, including that the goods here were small and inexpensive, and that it was unlikely that much care would be taken with respect to any applied trade marks during their selection. She said that the opposing marks' close resemblance to each other and a consumer's faulty memory of them meant that the impression created by the marks was the same.

In relation to the s.60 ground, Ms Brittain said that the opponent's evidence in support showed that it had acquired a reputation in its NO FEAR marks in Australia through use on goods since 1993.  This reputation, she submitted, was sufficient that deception or confusion could occur if the present mark was used.  She said that the target consumer market for goods sold under both parties' trade marks overlapped to some extent and that this was supported by the applicant's evidence in answer.  She said further that the likelihood of deception or confusion was enhanced by the similar marketing approach of the parties in dispute, where both parties emphasised an inspirational and motivational theme.  This would mean, she contended, that the use of the applicant's mark on his goods would cause consumers to wonder whether those items emanated from the opponent.  Ms Brittain closed her submissions by seeking costs in the matter on behalf of the opponent.

On behalf of the applicant, Dr Lesicar said, in his written submissions, that it was true that the applicant had been aware of the opponent's NO FEAR marks and reputation when he adopted the present mark.  However, he said, it was because of the direct contrast of the meanings of the marks that the applicant chose his own mark.  This dissimilarity, he said, meant that the two marks were not likely to be deceived or confused.  Dr Lesicar agreed that the target audience for both marks was similar - typically being between 15 and 39 years of age.  However, he submitted that these people were sophisticated in relation to the marketing and branding of goods, making them unlikely to be deceived or confused between the competing marks - especially when the messages and images projected by the marks were so different to each other.

Dr Lesicar said that the applicant was the registered proprietor of a trade mark comprising the words "Godly Fear" for rings, bracelets, key rings necklaces, clothing, footwear and headgear.  He said that the opponent's mark NO FEAR was shown by the evidence to be also found on clothing and ornamental items, as well as on stickers.  He questioned why the opponent only seemed concerned with the potential for deception or confusion in relation to the latter items.  He said that no evidence had been put forward as to actual instances of any deception or confusion despite the parallel trading of the parties over several years.  He also disputed the relevance of much of the opponent's evidence because, he said, much of it related to use in the United States with little activity shown in this country prior to the priority date here.  Dr Lesicar closed his submissions by seeking costs in the matter in favour of the applicant.

Analysis
I will deal, in this part of the reasons for my decision, with both grounds in turn which the opponent's attorney relied upon in the making of her submissions.  The relevant part of s.44 reads as follows:

Section 44 - substantially identical or deceptively similar trade mark
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.

In relation to this ground, the opponent has said that the subject trade mark is deceptively similar to two prior registered trade marks owned by it for the same or similar goods.  I think that it is obvious that the goods covered by the marks of the respective parties are indeed similar or the same.  The opponent's registrations are, respectively, number 633093, which comprises the words NO FEAR simpliciter and covering the statement of goods "Printed matter including decalcomanias, posters, calendars, stationery and stickers"; and number 636707, which covers the statement of goods "Stickers, signs in class 16", and comprises the words NO FEAR (and the word GEAR in smaller type) in the form shown below.

As submitted by Ms Brittain, in deciding whether or not competing trade marks are deceptively similar in relation to each other, the tests are conveniently laid out in such cases as Australian Woollen Mills v F. S. Walton and  Shell v Esso, both supra, where, in the latter case, Windeyer J said, at 415:

(in relation to deceptively similarity)   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.

Section 10 of the Act defines a trade mark as being deceptively similar to another trade mark if it so nearly resembles that mark that it is likely to deceive or cause confusion.  In this regard, and given the tests outlined in the relevant case law, consideration should be given to a normal person's impression based on a recollection of the opponent's marks.  Deception or confusion can well ensue if that person retains an "imperfect recollection" of the opponent's marks.  As Ms Brittain pointed out in her submissions, both the applicant's and the opponent's marks contain the common word FEAR.  However, as Dr Lesicar submitted, they differ in the first word of both marks.  The present mark commences with the word GODLY and has a particular style of getup while, in the opponent's case, its marks begin with the word NO.  In registration number 633093, the mark comprises the words NO FEAR in block type, while the mark covered by registration number 636707 comprises those words in a particular getup, together with the word GEAR in smaller type.  I think that, despite the same word appearing in the particular marks being considered here and the similarity of the goods covered, it would be unlikely that an ordinary purchaser would take away a common recollection upon encountering them in the marketplace.  This is certainly the case in respect of a comparison of the subject mark with the ordinary type presentation of the words NO FEAR in registration 633093.  I am also of the opinion that the particular getup of those words, in the mark covered by registration number 636707, is not similar enough to the applicant's mark so that they are deceptively similar to each other.

I therefore believe that, in relation to the s.44 ground, the present application is not substantially identical with, nor deceptively similar to, the prior registered marks of the opponent.  This ground of the opposition is therefore unsuccessful.

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

This section reads:

60.  The 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.

I have already found, in relation to the s.44 ground of opposition, that the applicant's trade mark is not deceptively similar to the opponent's registered trade marks, NO FEAR, simpliciter, and the version of those words as depicted in the version on page 5.  Despite the fact that the word FEAR was a common factor in the opposing parties' marks, I was able to differentiate them under s.44.  This was because, under that ground of opposition, I only considered the present trade mark against the opponent's registered marks.  However, the mark which has been shown in its evidence to be mainly used by the opponent and for which it has claimed a reputation, is slightly different to the registered stylised NO FEAR mark, in its getup.  I have reproduced here that more commonly used mark, immediately above the applicant's mark:

The opponent's more commonly used mark

The applicant's mark

In comparing these marks, I note that the font in both of them is quite similar.  The letters in the marks, particularly the E, the A and the R are close enough, in my opinion, to make the word FEAR look almost the same in both cases.  It is true, as emphasised by Dr Lesicar, that the words NO and GODLY are different words having different meanings.  However, I believe that the almost identical getup of the whole of the applicant's and opponent's stylised marks here, together with that factor of the common word FEAR, is enough for a significant number of people to mistakenly believe that both marks were part of a "family" of FEAR marks.  Dr Lesicar has queried why the opponent did not raise any objections in relation to the applicant's registration of the mark "Godly Fear" in Classes 14 and 25.  However, I believe that the likelihood of deception or confusion is less likely, in relation to that form of the mark, because it is a registration of the words alone, with no getup similar to the opponent's mark.  Additionally, the goods covered by the applicant's prior registration would appear to be generally more expensive than stickers.  It has been found by the courts that it is more likely that a purchaser of inexpensive items (such as stickers, where the unit cost is low) might imperfectly recollect and confuse similar marks.  This is because the attention paid in their purchase is generally less than to more expensive items - see LANCER Trade Mark Appl'n [1987] RPC 303 at 325. Given all of this, and having applied Windeyer J's test laid down in the Shell v Esso case, supra, I think that there is enough for me to find that the applicant's mark and the opponent's commonly used mark are deceptively similar to each other.

Having so decided, it remains for me to determine whether the opponent's reputation in that stylised NO FEAR mark, as shown in the evidence to be the most commonly used, was sufficient, as at the filing date of the present application, so that significant deception or confusion would be caused if the mark GODLY FEAR in the same format was used on the goods in the specification.  In relation to this question, I believe that there is no change in the law from the Trade Marks Act 1955, that there is an evidentiary onus on the opponent, in the first instance, to establish the extent of its reputation in Australia - re Heerey J., when referring to s.28 of that Act, in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 at 501. Any deception or confusion, which might ensue because of the use of the applicant's mark, should be bound to occur amongst a substantial number of people who were likely to be concerned in the purchasing of the particular goods - as per Kendall Company v Mulsyn Paint and Chemicals 109 CLR 300. The test for deception or confusion was recently dealt with in the decision of French J. in Registrar of Trade Marks v Woolworths, supra, at 39,695 (paragraph 43).  In considering the phrase, "likely to deceive or cause confusion" his Honour says:

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".

Dr Lesicar has submitted that no instances of actual confusion were put forward by the opponent, implying that its arguments in relation to deception or confusion occurring were somewhat diminished by this.  However, I do not believe that the likelihood of deception and confusion is reduced by the lack of any demonstrated instances of these occurring.  It could merely be the case that the goods are so inexpensive that no one has bothered to report being deceived or confused, or has simply not realised that they have been.

The date at which such deception or confusion should be considered is that of the filing of the present application - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 - here 28 October 1996. It would appear from the opponent's evidence, that that party has, presently, a wide reputation for its marks in Australia. Mr Nancarrow made the claim in his declaration that most of the opponent's evidence regarding use of its mark preceding October 1996 - the date that the present application was filed - was concentrated in the United States, a point highlighted by Dr Lesicar in his written submissions. However, Mr Moates, for the opponent, in his declarations, pointed to use in Australia since 1993, providing sales figures of decals and other items since that year, together with corresponding details of annual expenditure on advertising and promoting the mark. He further provided details of advertising using the stylised NO FEAR mark in national magazines prior to the date of filing here. Although the period of exposure of that mark in Australia, shown by the opponent's evidence, was only of three years duration prior to the filing of the present application, I am willing to accept that there existed, at the priority date here, a reputation in the opponent's mark which was sufficient to lead to deception or confusion. This is because of the reasonably significant retail turnover and advertising expenditure, as shown in the evidence, on what is a limited range of goods, and also the intended youth market, which very quickly and widely adopts new trends and fashions. Even the applicant attests in his declaration that both he and the younger members of his congregation were "well aware" of the opponent's mark before he sought registration for his own mark. Given all of this, I think that the opponent has done enough to show that it had a reputation in its mark sufficient to shift the onus to the applicant.

Mr Nancarrow originally asserted in his declaration that the primary markets of the respective parties were different.  However, Dr Lesicar has said that the applicant now concedes that the markets for both are in the same age bracket.  Mr Nancarrow further said that the younger members of his church were well acquainted with the opponent's NO FEAR mark.  As pointed out by Ms Brittain in her submissions, the applicant's Mission Statement, included as an exhibit to Mr Nancarrow's declaration, does say that his organisation intends to "…provide merchandise using words and pictures that Christians will feel proud to use and wear.  It is hoped it will generate attention and interest by the unsaved, thus creating witnessing moments" (my emphasis).  This "unsaved" section of the population could be inferred as meaning any young person who is not a member of Mr Nancarrow's particular church.  Mr Nancarrow says in his declaration that the Mission Statement "…indicates what we wish to have the trade mark GODLY FEAR being associated with".  This expressed intent to expose the mark to a wider audience than the direct members of Mr Nancarrow's church means that there is, in my opinion, a significant overlap of the opposing parties' target markets.  Dr Lesicar has pointed to what he says is the market sophistication of the youth of today, saying that they would not be confused between brands when one is important to them.  However, again, given the inexpensive nature of the goods involved here, I do not think that the wider youth market would be so concerned or loyal, in relation to a brand, that they would not be confused as to the origin of two similar looking FEAR marks.

Having read Mr Nancarrow's declaration, I do not believe that he coined his trade mark with the deliberate aim of gaining some advantage from the opponent's reputation in its mark.  However, it is not necessary that there be an intention to deceive or cause confusion in order to offend against this section of the legislation - as per McDowell's Appn 44 RPC 335 at 341; Bali Brassiere Co Inc.'s Registered Trade Mark and Berlei Ltd.'s Appn 118 CLR 128 at 139 and Pioneer Hi-Bred Corn Co. v Hyline Chicks Pty Ltd (1979) RPC 410 at 423. Thus, I am obliged to find that the risk of deception and confusion, which might ensue from the use of the applied for mark, extended to a substantial number of people who might have wanted to purchase stickers as at the relevant date.

Given all of the above, I must find that the opponent has been successful on this ground of its opposition.

Conclusion
I have found that the opposition has not been successful on the ground based on s.44, because the subject trade mark is not deceptively similar to any prior registered marks owned by the opponent for similar goods.  However, I have found in favour of the opponent on the s.60 ground, because the applicant's mark is deceptively similar to a mark used by the opponent for which it had acquired a reputation in Australia, such that the use of the applied-for mark, in respect of the goods included in the specification, would be likely to lead to deception or confusion.

It follows then that the opposition as a whole has been successful.  Accordingly, I refuse to register the trade mark, the subject of this application.

Costs
Ms Brittain requested costs on behalf of the opponent.  As that party is successful in this matter it is entitled to them.  Thus, I award costs against the applicant, in accordance with the Official scale.

Ian Forno
Hearing Officer

18 September 2000