No Fear, Inc v Steven Neil Byrnes

[2001] ATMO 53

TRADE MARKS ACT 1995

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

Re:Opposition by No Fear, Inc to registration of trade mark application 772708(16, 25) - FEAR DOG- filed in the name of Steven Neil Byrnes.

Background

On 10 September 1998, Steven Neil Byrnes (‘ Mr Byrnes’ or ‘the applicant’) of Sommerville, Victoria, applied, under the Trade Marks Act 1995 (‘the Act’) to register the words FEAR DOG as a trade mark in Classes 16 and 25 of the International (Nice) Classification of Goods and Services for the goods:

Printed matter, stickers, stationery items

Clothing, footwear, headgear, including surfwear, beachwear and resort wear

Following examination of the application, it was accepted and advertised in the Australian Official Journal of Trade Marks of 21 January 1999. On 21 April 1999, within the time allowed to do so, No Fear, Inc, (‘NFI’ or ‘the opponent’) of Carlsbad, California, filed Notice of Opposition to the registration of the trade mark. The Notice cites grounds under sections 58, 59, 41, 43, 60, 42(b), 44, and 62 of the Act. I will discuss these grounds under the headings, Submissions and Reasons, below.

Evidence

As allowed by the Act and regulations, the parties have served and filed evidence in support of the opposition and evidence in answer. The declarations filed are summarized in tabular form, below:

Declarant	Referred to as	Date Made	Exhibits
Evidence in Support
Marty Moates	Moates	7 July 1999	1 to 7
Sandra Joy Morden	Morden	30 November 1999	SJM1 to SJM9
Evidence in Answer
Steven Neil Byrnes	Byrnes	7 May 00	1 - 4

Marty Moates is vice-president of trade mark security of the opponent.  He says that he has held this position for 9 years.  Mr Moates says that his company, the opponent, adopted the trade mark NO FEAR to develop ‘attitude’ apparel and that the opponent has particularly associated this clothing and the trade mark with extreme sports.  These clothes are sports wear, I gather.  While the Moates declaration does not explain the term ‘extreme sports’, I understand he may mean that these sports are along the same lines as those involved in the matter Digby International (Australia) Pty. Ltd. v. Beyond Imagination Pty. Ltd and Others, (1995) AIPC 91-135. The television programmes the subject of that decision featured such sports as parachute jumping off buildings; motorcycle racing on snow; etc. Two video tapes annexed to the declaration show the trade mark being used in relation to motor-racing, surfing, rodeo riding, base-ball and motorcycle jumping - these are generally not sports of the same extreme order as those involved in Digby, above. . I think that they would be more properly characterised as being high activity sports.

Mr Moates states that the use of the trade mark on this ‘attitude’ sportswear has been very successful and that the use of the NO FEAR trade mark has extended to use on other goods and to derivatives of the NO FEAR trade mark.

Mr Moates lists the trade mark registrations owned in Australia by NFI.  These are:

Reg Number:    572801
Owner:            NFI
Priority Date:    20/02/1992

Goods:All goods in this class including wearing apparel, namely T-shirts, shirts, shorts, pants, sweat shirts, sweat pants, hats, visors, shoes, sandals, and belts

Trade Mark:     INSERT TRADE MARK

Reg Number:    590306
Owner:            NFI
Priority Date:    13/11/1992

Goods:Wearing apparel including t-shirts, shirts, shorts, pants, sweat shirts, sweat pants, hats, visors, sandals and belts; footwear including shoes, sports shoes, snowboard boots and ski boots; and all other goods in this class

Trade Mark:     NO FEAR

Reg Number:    604244
Owner:            NFI
Priority Date:    9 June 1993

Goods:Sun glasses and eyewear; video games in this class; and all other goods in this class

Trade Mark:     NO FEAR

Reg Number:    633093
Owner:            NFI
Priority Date:    22 June 1994

Goods:Printed matter including decalcomanias, posters, calendars, stationery and stickers

Trade Mark:     NO FEAR

Reg Number:    633529
Owner:            NFI
Priority Date:    28 June 1994
Goods:            Luggage, sports bags, wallets and belts in class 18
Trade Mark:     NO FEAR

Reg Number:    636707
Owner:            NFI
Priority Date:    04/08/1994
Goods:            Stickers, signs in class 16
Trade Mark:     INSERT TRADE MARK

Reg Number:    639067
Owner:            NFI
Priority Date:    29/08/1994

Goods:Automotive, motorcycle, bicycle, watercraft and truck parts and accessories in this class for the aforementioned goods

Trade Mark:     NO FEAR

Reg Number:    639068
Owner:            NFI
Priority Date:    29 August 1994
Services:          Retail sales services for wearing apparel and accessories including sunglasses
Trade Mark:     NO FEAR

Reg Number:    646734
Owner:            NFI
Priority Date:    24 November 1994
Goods:            Sporting equipment in this Class (28)
Trade Mark:     NO FEAR

Reg Number:    647382
Owner:            NFI
Priority Date:    1 December 1994
Goods:            Clothing
Trade Mark:     NO FEAR

Reg Number:    660199
Owner:            NFI
Priority Date:    3 May 1995

Goods:Wearing apparel, namely T-shirts, shirts, shorts, trousers, pants, hats, visors, shoes, sandals, and belts

Trade Mark:     FEARLESS

On the basis of the above listing and the evidence, I believe the claim that the NFI trade mark has derivatives is not well based.  It would seem that the NFI trade mark has one derivative, FEARLESS, for which there is no separate evidence of use.

Mr Moates attests that his company first used the trade mark NO FEAR in Australia in 1993 on a ‘wide variety of goods and services’ including clothing, printed matter and stickers.  There is no evidence of use of the trade mark in 1993 on any goods but clothing and printed matter.

Mr Moates then states, “Due to the variety of goods on which the NO FEAR trade mark is utilised, the public has come recognise to my company as the origin of all of these goods.  As demonstrated by the attached registrations for my company’s trademark, my company manufactures, produces and markets the following goods and services: …”.  Mr Moates then gives a very long list of goods for which his company has trade mark registrations – I gather that some of these are goods for which NFI has registrations elsewhere in the world as not all of the goods are covered by NFI’s Australian registrations.  However, I do not accept such a listing could be evidence of anything other than NFI’s trade mark registrations: having a trade mark registration is not proof that a trade mark has been used in Australia on goods or services; nor is it corroboration that the public recognises the trade mark as not many Australians inspect the Australian Trade Mark Register, or the Registers of foreign countries.

Mr Moates also attaches to his declaration representative examples of his company’s promotion of the trade mark, a sample catalogue showing the use of the trade mark, a flyer showing the trade mark in use promoting the NO FEAR speedway challenge of 1998, other flyers and promotional cards, and video tapes showing NO FEAR commercials and an interview on Good Morning America concerning the NO FEAR commercial that was shown on a Superbowl broadcast.  However, Mr Moates does not suggest that any of this material received any exposure in Australia and most of the material appears to be tailored for the United States market.

Mr Moates provides the turnover figures for goods sold at retail in Australia under the trade mark.  These figures are in United States currency and, allowing for the current exchange rate, represent many millions of Australian dollars every year.  However, Mr Moates is not explicit about the particular goods on which the trade mark has been used in Australia or the goods to which the sales figures relate.

Mr Moates appends to his declaration examples of advertising or, to use his word, ‘promotion’ of the trade mark NO FEAR as Exhibit 1 to his declaration.  Most of this material appears to be tailored for the United States and Canadian markets.  It is also difficult to determine the nature of the material is that comprises this exhibit.  It appears that it might be a mixture of poster and advertising material which has appeared in magazines.  If it is advertising that has appeared in magazines, there is no mention as to whether the magazines have been distributed to Australia or the extent of their distribution in Australia.  If the material is poster material, Mr Moates does not state whether any of these posters have actually been used in Australia.

Mr Moates appends at Exhibit 2 “brochures which detail the extent of promotion of my company’s NO FEAR trade marks, together with the range of goods upon which the trade mark is used.”  These brochures are obviously made for the United States market: they show United States dealer contact details – Mr Moates does not suggest that the brochures have circulated in Australia.

Mr Moates also appends his company’s ‘parts catalogue’ to his declaration.  This shows the NO FEAR trade marks in use in relation to clothing and other goods in Class 25 and a few photographic prints.  It does not show any use of the trade mark on the wider range of goods previously claimed by Mr Moates which included perfumery and dental face marks.  Nor is it suggested that these catalogues, or the goods available through them, were ever in the Australian market-place.

Further, claims Mr Moates, his company sponsors sporting events and advertises through sporting events and via television and newspaper advertisements “throughout the world”.  His examples of the NFL Superbowl and a Speedway challenge are United States sporting events and, as such, any advertising within broadcasts in the United States associated with those events is not seen in Australia in the event that those fixtures are broadcast or re-broadcast here.

Similarly, Mr Moates claim that his company promotes its goods through 140 of the best known sports figures in the world must be tempered with the observation that the personalities that he gives as examples are all American and all but one play baseball which is a minority sport in Australia where the personalities are virtual un-knowns.

Apart from the details of trade mark registrations in other countries and sales revenue and advertising expenditure in Australia, the balance of the Moates declaration consists largely of submission, unsubstantiated allegation or fact which is of relevance only to the United States market place, such as a list of United States retail outlets.

I do not find the Moates declaration particularly useful.  Much of the information within the declaration seems to be of relevance only to the market-place in the United States; there appears to be an underlying and mistaken assumption that facts which are, in reality, only relevant to the United States market will automatically extend to the Australian market.  Many of the claims appear to be over-blown and to lack logic – for the example, the claim that the fact NFI has registered its trade mark for particular goods equates to, or demonstrates, somehow, the use of the trade mark in relation to those goods; or, the seemingly implicit assumptions that advertising or promoting the trade mark in the United States means that the trade mark has been advertised or promoted in the whole world.  Viewed in this light, the Moates declaration is not overly reliable as the presence of overblown, inaccurate or exaggerated claims within the declaration discourages reliance on the balance of the claims.  As a further example, amounts spent by NFI on advertising the trade mark in Australia are given by Mr Moates, yet the examples of advertisements appended to the declaration are obviously for use only in the United States – such a juxtaposition invites speculation as to how the declarant could have arrived at the amounts spent on advertising in Australia.  Other claims within the Moates declaration concerning the opposed trade mark are, in fact, conclusions which are for me to make and I do not place any reliance on this portion of the Moates declaration whatsoever.

Sandra Morden states that she is the general manager of No Fear Australia, a division of Rip Curl Pty Ltd.  Rip Curl Pty Ltd is authorised by NFI to use the NO FEAR trade mark in Australia. 

Ms Morden attaches to her declaration a computer print-out list of the retail outlets in Australia that stock goods that bear the NO FEAR trade mark.  A catalogue details the range of goods sold under the NO FEAR trade mark – these are, in the main, casual wear but include caps, bags, key rings, decals and posters.  Ms Morden draws my attention to the use of canine imagery on some of the t-shirts and stickers.

Ms Morden states that the NO FEAR trade mark is promoted in Australia through the placement of advertisements in magazines such as Surfing Life, Australian Dirt Bike, Australian Mountain Bike, Motor Sport News and Tracks & Waves.  While Ms Morden attaches examples of these advertisements and advertising schedules, she does not provide any circulation details or readership demographics.

The NO FEAR trade mark is also promoted, says Ms Morden, via sponsorship of the Supercross Motorcross Championships of 1998 and 1999 and the Extreme Games which No Fear Australia has sponsored since 1998.   A video-tape which Ms Morden says contains footage of the Motorcross/Extreme Games 1999 event is attached to the declaration.  Ms Morden is mistaken: the tape contains footage of the Supercross Masters event and does not include any footage of either a Motorcross or of the Extreme Games.  The Supercross Masters event is one in which trailbike riders race each other round a bumpy dirt track set up within a sports stadium.  The NO FEAR trade mark is fleetingly visible on various straw-bale crash barriers around the track.  It is surprising, however, that Ms Morden misrecollects both the name of the event and the contents of the tape and this invites adverse conclusions as to the reliability of her declaration.

Mr Byrnes, for his part, states in his declaration that he has not yet used the FEAR DOG trade mark but has prepared to do so, these preparations consist of preparing an Internet website, registering a business name and having an intention to form a company once this matter is decided.

The balance of Mr Byrnes declaration is argument concerning the merits of the opposition and criticisms of NFI’s evidence.  With all due respect to Mr Byrnes, I believe that a lot of this criticism does not address the real deficiencies in the NFI evidence which I have mentioned above; further, his declaration is not the appropriate vehicle for such criticism or for debate about the merits of the opposition.

Reasons

NFI opposes registration of this trade mark in terms of sections 58, 59, 41, 43, 60, 42(b), 44, and 62 of the Act. Neither Mr Byrnes nor NFI have attended a hearing or put in written submissions and I am determining the issue in terms of section 55 of the Act.

As Mr Byrnes’ trade mark FEAR DOG compared side by side with either of NFI’s trade marks NO FEAR or FEARLESS is not substantially identical to those trade marks, the opposition in terms of 58 may be dismissed: Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495.

Further, NFI have not suggested or shown that use of the opposed trade mark would confuse or deceive because of some connotation contained in the trade mark in terms of section 43: T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720 at para 43. The section 43 ground of opposition may therefore be dismissed.

NFI has not led any evidence which would support discussion of an opposition in terms of sections 59 or 62, nor pointed to any law in terms of subsection 42(b) in respect of which use of this trade mark would be contrary. I therefore dismiss the opposition in terms of sections 42, 62 and 59 of the Act.

Section 41 sets out the approach to be taken by the Registrar in assessing the inherent distinctiveness of a trade mark and the consequent registrability thereof: NFI have not led any evidence or put in any argument which would support discussion in terms of section 41 and  I dismiss this ground of opposition.

There remains discussion of opposition in terms of sections 44 and 60 of the Act. As there is no evidence of use of the opposed trade mark, section 44 relevantly allows:

Identical etc. trade marks

44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a) the applicant's trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar goods or closely related services; or

(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1:  For deceptively similar see section 10.

Note 2:  For similar goods see subsection 14(1).

Note 3:  For priority date see section 12.

Section 60 provides:

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

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.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

It does not seem to be disputed here that the goods in common between the trade marks involved in this dispute are the same goods. However, while a nexus between the goods is not essential in terms of section 60 of the Act, it may be seen that both sections 44 and 60 contain a provision that, to be caught by either of the sections, the trade marks under consideration should be at the least, deceptively similar. If the trade marks are not deceptively similar, the opposition must fail in terms of both sections.

The classic statement of the test for deceptive similarity is that by Windeyer J in Shell Company Of Australia Ltd v Esso Standard Oil (Australia) Ltd 1B IPR 523:

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 (de Cordova v Vick Chemical Co (1951) 68 RPC 103; at 106; 1B IPR 496; at 499):

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.

And in Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641; at 658, 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.

Further, the commercial and other surrounding contexts of the comparison must be considered and some rules of the comparison of trade marks apply: Lord Parker (then Parker J) in Re Application by the Pianotist Co Ltd 1A IPR 379 at 380; (1906) 23 RPC 774 at 777), 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. If, considering all those circumstances, you come to the conclusion that there will be a confusion — that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods — then you may refuse the registration, or, rather, you must refuse the registration in that case.

The goods in common between the registrations here are printed matter and clothing.  The goods range in price from a few dollars in respect of, for example, decalcomanias or socks, to well over a hundred dollars for shoes or suits.  I consider that the public is neither excessively cautious nor careless when buying these goods in this price range.

The trade marks are visually and phonetically distinct from each other.  Further, the trade marks in question do, I believe, bring quite different things to mind and (in view of their visual and phonetic distinctness) are most unlikely to be confused for one another or to be seen as indicating a common origin of goods.  The trade marks NO FEAR and FEARLESS appear to me to stress courage, or at least an absence of fright.  The trade mark FEAR DOG, on the other hand, appears to exhort caution or apprehension as regards canines.

I note that NFI claims in both the Moates and Morden declarations to have a family of trade marks – these being FEARLESS and NO FEAR.  I presume that NFI wishes to pursue an argument that the public is used to seeing variants on the NO FEAR trade mark and will therefore view the opposed trade mark as another variant.

I believe that, to support this argument under sections 44 and 60, NFI would need to show that it has used a greater number of variants of the NO FEAR trade mark than that which it has. Without such a pattern of use, there is no basis for a conclusion that the public is used to seeing variants on the NO FEAR trade mark and will conclude that the FEAR DOG trade mark is another variant. Further, it is not obvious from the evidence that NFI has actually used the FEARLESS trade mark in Australia as NFI provides no separate retail figures for sales under this trade mark in Australia.

In terms of Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411, I need to be satisfied that the trade marks at issue are deceptively similar before refusing registration of the applicant’s trade mark. I am not so satisfied. In fact, I am satisfied that the trade marks at issue are not deceptively similar.

The opposition therefore fails in terms of sections 44 and 60.

Decision

The opposition fails on each of the grounds specified in the Notice of Opposition and the opposed trade mark may, subject to any appeal against my decision, proceed to registration on the elapse of the period of time allowed for any appeal.  The applicant states that he has paid the registration fees.

Costs

I have received no submissions as to costs and make no award.  I will note, however, that – given the sparseness of information in the sole declaration of the successful party – if he were to apply for his costs, subsequent to the issue of these reasons, I would refuse such application.

Ian Thompson
Hearing Officer

25 June 2001