Norelle Seymour v Portmans Consolidated Pty Ltd

[1999] ATMO 30

TRADE MARKS ACT 1995

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

Re:Opposition by Portmans Consolidated Pty Ltd to the registration of trade mark application number 709849 in the name of Norelle Seymour.

Background:

After examination, trade mark application 709849 was advertised by the Trade Marks Office as having been accepted for registration.  The applicant is Norelle Seymour, whom I will refer to simply as “the applicant” from this point.

The applicant is proposing to register the trade mark appearing below,

in respect of the following goods and services:
Class 25:        Clothing, footwear, headgear

Class 42:Hairdressing and barber services for men and women; services provided by a beautician

Her application was filed on 3 June 1996, and this date is the priority date at which, on the argument before me, registrability is to be decided. 

Portmans Consolidated Pty Ltd (“the opponent”) has opposed registration of the application on various grounds, initially those set out under division 2 of part 5 of the 1995 act.  In due course I came to hear the opposition, as a delegate of the Registrar of Trade Marks.

The applicant was not represented at the hearing.  Her solicitor, Joanne Martin of the attorney firm Spruson & Ferguson, relied on written submissions.  The opponent was represented by its patent and trade mark attorney, Anne Makrigiorgos of the attorney firm Griffith Hack.

Ground of opposition
As now argued, only a single ground of opposition is maintained, the one provided under s 60.  Before dealing with the evidence, I will set down the terms of that section.  I propose to look at the opponent's evidence using these terms as a matrix.

Section 60 reads as follows:

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.

Dealing with the matters referred to in the notes to s 60, the priority date of the opposed application is 3 June 1996.  Secondly, the definition of "deceptively similar" in s 12 is in terms of one trade mark so nearly resembling another that it is likely to deceive or cause confusion. The question under s 60 therefore becomes a matter of assessing the risk of deception or confusion at the priority date.  This is done on the assumption that the applicant's trade mark is to be notionally, or hypothetically, used for any of the goods or services at issue.  The assessment is in the light of evidence establishing the opponent's reputation in its trade mark or that otherwise tends either to suggest or negate the possibility of confusion.

Evidence
The opponent relies on evidence in support of its opposition.  This consists of the declaration of Barry Bloom, a director of the opponent.  Put simply, Mr Bloom's evidence satisfies me that the opponent has used the slogan GET THE LOOK since 1990.  That use has apparently been inextricable from the trade mark PORTMANS, and a typical example appears later in this decision.

The business conducted under the trade mark PORTMANS is what Mr Bloom calls "an extensive chain of clothing stores".  Mr Bloom declares that the opponent's clothing stores sell ladies' clothing, footwear and accessories, including belts and bags, and that the trade mark has been used on all those goods. 

It is not possible to see, from the evidence, if the trade mark in question has actually been applied to clothing, as distinct from being used in the course of the retailing of clothing.  A single catalogue is exhibited.  The back cover of this shows the trade mark PORTMANS applied to a pair of sandals:

Aside from this, it does not show any trade marks actually applied to goods.  It features pictures of a model wearing various outfits and, once, carrying a bag.  The model wears a small amount of jewellery in some pictures, and sandal-type shoes in pictures where her feet are visible.  The outfits are described in generic terms, such as "Textured viscose/rayon dress", followed by a price.  This descriptive text is in small print at the bottom of each left-hand page, beside a PORTMANS trade mark very much as per the one on the sandal, but with the words GET THE LOOK appearing in small but noticeable print, black on yellow, beneath. 

A leather handbag is shown on a page by itself.  That page, like most of the other right-hand pages, has an expression like "Keep looking forward", "Keep looking" or "Look at this" at the bottom of the page.  In the case of the bag it is "Look the part". 

At the end of the catalogue in question there is reference to the "Portmans Summer 1997 collection".  Finally, in the smallest of fine print, there is the note "All jewellery is available at Portmans".

The applicant's evidence shows little use of the mark in relation to clothing.  While I note that her evidence exists, it has little relevance to the argument that Ms Makrigiorgos pursued at the hearing.

Opponent's arguments
I will not quote extensively from the authorities on which Ms Makrigiorgos relied.  She pressed her argument that the applicant's and opponent's trade marks were deceptively similar and that confusion would result therefrom because, at the priority date, the opponent had a substantial reputation in its trade mark GET THE LOOK.

Ms Makrigiorgos noted that, in particular, the applicant's trade mark was part of the opponent's.  She argued that, in the mind of a person already familiar with the opponent's trade mark, the applicant's trade mark would be reasonably likely to conjure doubt and uncertainty.  Her argument is at its strongest when the law is looked at in terms of Smith Hayden & Co's Application, (1946) 63 RPC 97 at 101, adapted to the present case:

Having regard to the reputation acquired by (the opponent's mark) at the relevant date, is the tribunal satisfied that the mark applied for, if used in a normal and fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons?

Ms Makrigiorgos also noted the established rule that two trade marks may differ in detail yet leave the same idea.  This principle goes back to Jafferjee v Scarlett (1937) 57 CLR 115.

Conclusions and Decision
While the principles on which Ms Makrigiorgos relied are beyond debate, I do not accept that they would justify an adverse decision here.

The opponent's evidence of reputation is something I must assess, in the lack of clearer evidence, simply from the general trend of the declaration.  A catalogue relating to the summer of 1997 is not directly relevant to the situation at the priority date for the opposed application, made in the winter of 1996.  Aside from a single sandal, there is no evidence that the opponent has applied any particular trade mark to any of its goods.  Accordingly, I accept that the opponent had an established reputation in relation to the retailing of clothing, but not goods, at the priority date.  It was, on the declarant's description, a chain of clothing shops.

The reputation of the opponent itself was a substantial one.  The opponent's sales were between 50 and 100 million dollars in each year from 1990.  In October 1997 the opponent operated 83 stores throughout Australia.  I infer from the range of sales quoted over time that a considerable proportion of these stores were in operation before the priority date.  Finally, the opponent has indicated that it spent over one million dollars, per year, on promotion in 1991 and 1992 and twice that in each year since. 

However, I believe the reputation resides in the trade mark PORTMANS at least as much as in the slogan GET THE LOOK.  For all that the declaration refers to sales and advertising "under the trade mark", ie GET THE LOOK, the use of that mark is inseparable from and always subordinate to, PORTMANS.

Secondly, as Ms Makrigiorgos herself argued, "Clothing is all about looks, how does this look, the right look."  I do not accept that use by the opponent of its trade mark PORTMANS in close association with the trade mark GET THE LOOK will give the latter words great strength as an identifier of the opponent's clothing stores to the broad exclusion of similar uses by others.  The words "get the look" are plain ordinary words, used to mean just what they usually mean.  As used by the opponent, they mean, at least in part "get the PORTMANS look" as much as "Get that look".  While GET THE LOOK may be identified with the opponent to an extent, there is no convincing evidence of that fact, or of the extent to which it will happen.  Nor is that my precise concern here today. 

My concern is the likely outcome of the use, by the applicant, of its own trade mark either in relation to hairdressing and beautician services or to clothing.  Leaving aside the device in the applicant's mark, the words at issue are a distinguishable expression, THE LOOK THAT GETS THE LOOK.  Ms Makrigiorgos' arguments apply equally to the applicant's intended use on clothing and on hair and beauty services.  I think it follows, for my purposes, that if the applicant's trade mark for clothing can coexist with the opponent's, then the applicant's trade mark can also coexist for hair and beauty services.

The opponent argues that a significant number of people would be given cause to wonder about a connection between it and goods or services bearing the applicant's trade.  I do not agree.  I believe the opponent has claimed too broad a monopoly of marks involving the word LOOK, in a fashion industry where looks are everything.  From the present evidence and from what I believe is likely in the fashion industry and in the normal use of the words in question, that would not be a doubt or a confusion that would assail a reasonable number of people.  I believe that any similarity that might otherwise be seen to exist between these two particular marks will simply be discounted, by those to whom the marks are addressed, as just another reference to "getting the right look" or "having a particular look".  No doubt there will be many people who, at the priority date, were aware that PORTMANS used a slogan like GET THE LOOK.  I simply do not accept that this knowledge will render the words GET THE LOOK deceptively similar to the applicant's trade mark.

Accordingly, I find that the opponent has not established any ground of opposition.  That being so, I decide, in terms of s 55 that, subject to any appeal from this decision, the application should be registered for all of the goods and services specified.  I award the applicant its costs, in accord with the official scale.

T. Williams

Hearing Officer.
31 March 1999.