Nordica S.p.A v Icon IP, Inc [Sec=Unclassified]

[2009] ATMO 72

TRADE MARKS ACT 1995

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

Re:Opposition by Nordica S.p.A. to registration of trade mark application 983538 and 983539 for NordicTrack & N Logo and NORDICTRACK, both in classes 3, 5, 9, 25, 28, 29, 30 - filed in the name of Icon IP, Inc.

Delegate:	Debrett Lyons
Representation:	Opponent: No appearance Applicant: Paul Thompson of Fisher Adams Kelly
Decision:	2009 ATMO 72 Section 52 oppositions: No ground established. Oppositions fail. Costs awarded to applicant.

Background

1.   On 31 December 2003, Icon IP, Inc (‘the applicant’) filed applications to register the trade marks which appear below:

Number	Trade Mark	Classes
983538	3, 5, 25, 28, 29, 30
983539	NORDICTRACK	3, 5, 25, 28, 29, 30

2.   The applications were examined and accepted for possible registration in respect of the following goods:

Class: 3 Beauty products, facial cleansers, toothpaste, shampoo, thigh and body therapy cream, aromatherapy bath and massage body oils, Aloe Vera gel, body moisturizers, body balms, body lotions, breast firming lotions, anti-wrinkle creams, foot creams, scented essential body oils, mineral bath preparations, scented bath salts, varicose vein lotions; vitamin complex creams and lotions, hand salves and lotions, lip balms, scentball diffusers and car scent diffusers

Class: 5 Therapeutic bath salts, Aloe Vera gels, medicated foot creams, antibacterial sanitizing hand gels and medicated muscle creams and rubs, medicated creams for arthritis relief, medicated lip balms

Class: 25 Clothing, including T-shirts, hooded sweat shirts, hooded jackets, jackets, shorts, long pants, capri pants, sport bras, sport tops with shelf bras, socks; headgear, ball caps, hats made from micro fleece and or poly lycra; jackets with removable sleeves and pockets for accessories; sport tops with integrated heart rate monitors; underwear, sport bras with integrated heart rate monitors; T-shirts with integrated heart rate monitors; tank tops, and tank tops with integrated heart rate monitors; gloves

Class: 28 Fitness and exercise machines and equipment

Class: 29 Beverages, namely dairy-based beverages

Class: 30 Beverages in this class, including herbal food beverages, and chocolate food beverages not being dairy-based or vegetable-based

3.   The applications were advertised as having been accepted for possible registration in the Australian Official Journal of Trade Marks on 24 June 2004. On 7 December 2004, Nordica S.p.A. (‘the opponent’) filed Notices of Opposition to registration of the trade marks under section 52 of the Act.

4.   Evidence-in-Support of the oppositions consisted of the Statutory Declaration of Ruggero Zanatta with exhibits RZ-1 to RZ-8 made on 9 June 2006.

5.   Evidence-in-Answer consisted of the Statutory Declaration with exhibits APB-1 to APB-20 of Angeline Peta Behan made on 28 May 2008.

6.   A hearing was convened on 21 August 2009 in Brisbane before me, Debrett Lyons, acting as a delegate of the Registrar of Trade Marks.  At the hearing, the applicant was represented by Paul Thompson, Patent and Trade Mark Attorney of Fisher Adams Kelly.  The opponent was not represented, nor were written submissions received on its behalf.

Discussion

7.   The Notices of Opposition are in almost identical terms.  They are very poorly constructed.  Some grounds have no statutory foundation.  I pay them no further regard.  Some grounds recite a section of the Act as their basis but overlap with and partially duplicate other grounds which carry no section reference.  So far as it is possible to give the Notices sense, I treat them as basing the oppositions on sections 41, 42(b), 43, 44, 58, 59, 60 and 62(b) of the Act.  The opponent bears the onus of establishing at least one of those grounds of opposition on the balance of probabilities: Pfizer Products Inc v Karam (2006) 70 IPR 599) per Gyles, J.

8.   Despite the absence of aural or written submissions on behalf of the opponent, it falls to me to assess the evidence of record to determine its support for the grounds of opposition set out above.  Having made that assessment, I find in the first instance that there is nothing in the evidence or in the facts of the case to support the grounds of opposition which rely on sections 41, 43, 59 or 62(b) of the Act, or to merit their further consideration.  Those grounds are not established.

9.   The remaining grounds are now considered in the following sequence: section 44, 58, 60 and 42(b).

Section 44:  conflicting trade marks belonging to another party

10.  The notices of opposition base the section 44 ground on the following trade mark registrations: 265099, 341036, 530324, 530325, 530326, 530327, 530328, 530329, 530330, 530331, 530332 and 874327. 

11.  To establish its opposition under section 44, the opponent must show:

v  the existence of a pending or registered trade mark in the name of a person other than the applicant to which the opposed trade mark is either substantially identical or deceptively similar;

v  that the pending or registered trade mark has been filed or is registered in respect of similar goods or closely related services; and

v  that the pending or registered trade mark has an earlier priority date.

12.  Details of the trade mark registrations relied upon by the opponent are set out below:

Number	Trade mark	Status	Filing date	Class
265099	Regd.	19/01/73	25
341036	Regd.	10/12/79	25
530324	Removed	17/11/89	3
530325	Regd.	17/11/89	9
530326	Regd.	17/11/89	14
530327	Removed	17/11/89	16
530328	Removed	17/11/89	18
530329	Removed	17/11/89	24
530330	Regd.	17/11/89	25
530331	Regd.	17/11/89	28
530332	Removed	17/11/89	42
874327	Regd.	08/11/00	18, 25, 28

13.  It can be seen that a number of the registrations have been removed.  They are to be disregarded.  The remaining registrations all stand in the name of the opponent and predate the applications.  Nevertheless, it is the applicant’s submission that none of opponent’s trade marks are substantially identical or deceptively similar to the applied-for trade marks.

14.  Determination of substantial identity requires a side by side comparison of the trademarks : Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd 1B IPR 523 at 529.  The comparison trade marks are:

Applicant  Opponent

NORDICTRACK

15.  In my estimation, none of the compared trade marks could be said to be substantially identical.  On the other hand, a quite different assessment is to be made of deceptive similarity.  In Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963), op. cit., Windeyer J. said at p. 415:

“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”.

16.  It was the applicant’s submission that:

By sound and look, NORDICA and NORDICTRACK convey different impressions to the eye and ear.  The word “TRACK” in the Applicant’s mark is a feature that cannot be ignored.  It infuses the Applicant’s whole with a different meaning.  There is no reference in NORDICA to “TRACKS” of any kind.  The ideas projected by the wholes are dissimilar.

In Crook’s App (31 RPC 79) it was pointed out that a sign should not be barred from registration because “unusually stupid people, fools or idiots would be deceived”.  This premise was reiterated in Australian Woollen Mills Ltd v. FS Walton & Co Ltd (1937) 58 CLR 641 where the judges affirmed the principle that exceptional carelessness or stupidity should be discounted in evaluating the tangible likelihood of confusion arising between marks. In short, potential customers being equipped with average eyesight and intelligence and not being “morons in a hurry” (Castlemaine Perkins Ltd v. Power Brewing Company (1992) FCA) could not fail to distinguish between NORDICA and NORDICTRACK, by reference to appearance, pronunciation and general impressions and ideas.

17.  For any of the trade marks to be found to be deceptively similar it is necessary for the opponent to show that there is a tangible likelihood danger of deception or confusion arising from use of the one mark in the face of the other : Registrar of Trade Marks v. Woolworths Ltd (1999) 45 IPR 411. To my mind, there is no such danger when the applicant’s word mark is compared with any of the opponent’s trade marks. In relation to the applicant’s logo-style mark, there is some degree of overall resemblance between it and the opponent’s registration number 341036. I would not go so far as to say that only a person of lower than average intelligence or lower than average powers of observation would confuse those two trade marks, but I would say that in my opinion there is no tangible danger they would be confused. I come to that conclusion having regard to the great many stylizations of the letter “N” which exist on the Register of Trade Marks and which consumers can separate, one from another, together with my acceptance of the applicant’s submission that:

NORDICA is an invented word, whereas the Applicant’s construct is comprised of “NORDIC” meaning “north” or “Scandinavian” and the well-known word “TRACK”.

18.  Neither of the applied-for trade marks being found to be either substantially identical or deceptively similar to the opponent’s registered trade marks, this ground of opposition is not established.

Section 58:  applicant not the owner of the trade mark

19.  To establish this ground of opposition the trade marks under comparison must be at least substantially identical: Carnival Cruise Lines v Sitmar Cruises Ltd (1994) 31 IPR 375. I have already found that not to be the case. This ground of opposition is not established.

Section 60:  trade mark confusingly similar to a trade mark with a reputation

20.   Section 60, as it was drafted at the time relevant to the oppositions to these two applications, required the opponent to point to a trade mark, whether registered or in common law use, for which the opposed trade mark is:

• either substantially identical or deceptively similar and

·which, before the priority date, had acquired a reputation in Australia such that

·use of the opposed trade mark would be likely to lead to deception or confusion.

21.  I have already found neither of the applied-for trade marks to be substantially identical or deceptively similar to the opponent’s registered trade marks and so the section 60 ground of opposition can not be established based upon the use of those registered trade marks.  It remains for me to note only that the opponent claims a common law reputation in the word mark, NORDICA, free of any stylisation.  Nonetheless, for the reasons previously given I do not find the applied-for trade marks to be substantially identical or deceptively similar to NORDICA and so the section 60 ground of opposition is not established on the basis of that trade mark either.

Section 42(b): use of trade mark contrary to law

22.  The notices of opposition state in paragraph (k) that:

Use by the Applicant of the opposed trade mark on all or any of the goods will be likely to lead to passing-off and/or be likely to mislead, deceive or cause confusion having regard to the use and registration of the same or similar trade marks by the Opponent and use of the opposed trade mark by the Applicant in relation to all or some of the goods would be contrary to the provisions of section 52 and 53 of the Trade Practices Act 1974.

23.  Paragraph (k) is an example of the poor drafting of the Notices of Opposition to which I referred earlier. 

24. The elements to be proven to establish the tort of passing-off are well known and do not need to be restated here. Section 52 of the Trade Practices Act 1974 states that “a corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.” Section 53 of the Trade Practices Act 1974 is an elaborate provision which does not deserve to be set out in full here.

25.  To succeed with the section 42(b) ground of opposition, the opponent must show that the applicant’s use would constitute passing-off or would breach section 52 of the Trade Practices Act 1974: Advantage Rent-a-Car Inc v. Advantage Car Rentals Pty Limited (2001) 52 IPR 24. In the absence of anything more than a bald assertion of illegality unsupported by any evidence there is no reason for me to find that the opponent has established this ground.

26.  Accordingly, I find that the section 42 ground of opposition is not established.

Decision

27.  Section 55 of the Act provides:

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)Without limiting subsection (1), if the application was opposed on the ground specified in paragraph 62(a) (that the application, or a document filed in support of the application, was amended contrary to this Act), the Registrar may revoke the acceptance of the application and examine the application again under section 31.

Note:For examine and this Act see section 6.

28.  The opponent has not established a ground of opposition and so its opposition is unsuccessful.  Applications 983538 and 983539 may proceed to registration after 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 discontinued or registration is otherwise ordered by the court.

Costs

29.  I award costs to the applicant, calculated in accordance with Schedule 8 to the Trade Mark Regulations 1995.

Debrett Lyons
Hearing Officer
Trade Marks Hearings
7 September 2009