Omega SA (Omega AG) (Omega Ltd.) v Bingcheng Pan

[2014] ATMO 58

TRADE MARKS ACT 1995

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

Re:Opposition by Omega SA (Omega AG) (Omega Ltd.) to registration of trade mark application 1491116(18) – graphical device  – in the name of Bingcheng Pan.

Delegate:

Debrett G. Lyons

Representation:

Opponent: Catherine Macneil of Watermark

Applicant: No appearance and no written submissions

Decision:

2014 ATMO 58

S52 opposition to registration; s60 – reputation of Opponent’s trade mark; use of opposed trade mark likely to confuse or deceive.

Registration refused.

Costs: awarded against Applicant.

Background

1. This matter is an opposition to the registration of a trade mark (‘the Trade Mark’) under the Trade Marks Act 1995 (‘the Act’) in the name of Bingcheng Pan (‘the Applicant’).  Relevant details of the application for registration (‘the Application’) are:

Application No: 1491116

Priority Date:  16 May 2012

Goods:Class 18:  Handbag frames; handbags; handbags made of imitations leather; handbags made of leather; ladies handbags; travelling handbags   (‘the Goods’)

Trade Mark:         (‘the Trade Mark’)

1. The Application was examined as mandated by section 31 of the Act and advertised in the Australian Journal of Trade Marks as accepted for possible registration on 30 August 2012.

2. On 27 February, 2013, and after obtaining an extension of time to do so, Omega SA (Omega AG) (Omega Ltd.) (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the Trade Mark[1]. The Notice canvasses the available grounds of opposition to the registration of a trade mark under section 52 of the Act and includes the section 60 ground under which I will decide this matter.

   [1] The Application was also opposed in a timely manner by another party, Salvatore Ferragamo S.p.A., which did not pursue its opposition.

3. The Opponent served evidence in support as further discussed below.  There was no evidence from the Applicant who, I note here, took no part in the proceedings.

4. The matter came for a hearing in Melbourne on 26 May 2014 before me as a delegate of the Registrar of Trade Marks.  Ms Catherine Macneil of Watermark, Patent & Trade Mark Attorneys, represented the Opponent.  In attendance was Sean McGuire from that same firm.  Ms Macneil provided me with outline written submissions in the days before the hearing in accordance with my directions.   There was no appearance by, or on behalf of, the Applicant nor any representations in writing or otherwise made on his behalf.

Onus

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[2]

   [2] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12]; Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10]; Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; ( 2012 ) 94 IPR 551 per Dodds-Streeton J at [13]; DC Comics v Cheqout Pty Limited [2013] FCA 478 per Bennett J at [13]; and, most recently, Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited per Murphy J at [30] to [37].

2. The relevant date at which the grounds under section 52 of the Act must be considered is the filing date of the opposed application: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

Evidence

1. The evidence in support of the opposition comprises declarations from:

• Catherine Macneil made 27 May 2013; and

• Jean-Claude Monachon made 18 July 2013; and

• Sean Emmet McGuire made 31 July 2013.

Reasoning

1. Section 60 of the Act provides:

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

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, 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:For priority date see section 12.

2. In McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 (‘McCormick’) at [81] Kenny J said of reputation:

   What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public's mistakenly attributing a business connection between the two or attributing her product to the company?

and Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee [2000] FCA 1587; (2000) 50 IPR 1 said[3] that the reputation required to be demonstrated was:

one of which a significant number of persons were aware…What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

[3] Albeit in relation to subparagraph 28(2) of the Trade Marks Act 1955 which in the circumstances of that matter required reputation to be established.

1. In broad terms, the evidence shows that the Opponent has used the trade mark which appears below in relation to wrist watches (and other time pieces) for over 110 years and in Australia since 1908.

   (‘the Opponent’s trade mark’)

2. Based on the evidence it is fair to say that the Opponent is one of the best known manufacturers of quality Swiss made wrist watches and there is no question that the Opponent’s trade mark had a very strong reputation in the Australian market in respect of those goods at the Priority Date.

3. Jean-Claude Monachon is Vice-President of the Opponent.  He gives evidence of the strategic expansion of the Opponent’s business from a core offering of luxury finished watches into products such as fine leather goods, watch boxes, jewellery and fragrances.

4. In particular, Mr Monachon provides evidence that the Opponent’s trade mark has been used in Australia in relation to leather goods since 2007.  He provides detail of substantial sales in Australia of those goods over the period 2008 to 2012.

5. I observe from the material annexed to his declaration that products bearing the Opponent’s trade mark include watch boxes, wallets, key cases, organizers, satchels, laptop computer bags, ‘city’ bags and purses.

6. I find that the Opponent’s trade mark also had a reputation in respect of leather goods in Australia before the priority date based not only on the sales of those precise goods but by reason too of the level of notoriety of the Opponent for related luxury goods of a high standard.

7. Albeit irrelevant for the purposes of the section 60 analysis, I observe, too, that the Opponent’s trade mark has been registered in Australia in class 18 for those goods or similar goods[4].

   [4] See Regn. No. 1203521 with a priority date from March 2007.

8. In Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 French J at [50] stated of the assessment of the likelihood of deception and confusion:[5]

   (i) … 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] HCA 43; (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."

   [5] As section 60 no longer contains a requirement that the trade marks in question be deceptively similar, I have deleted reference to ‘deceptive similarity’.

9. The question is whether consumers will be deceived into believing that the Trade Mark signifies that the Goods emanate from the Opponent and, in practical terms, that requires that I assess the likelihood of deception or confusion resulting from the combined effects of the reputation of the Opponent’s Trade Mark, the degree of similarity of the trade marks and finally, the nexus of the goods.

10. As previously noted I have already found that the Opponent’s trade mark has a reputation in relation to leather goods.  The Goods of the Application are the same or very similar to those in respect of which the Opponent has proven a reputation.  It remains only to take account of the degree of similarity of the trade marks and in that respect the Opponent argues that:

    The only difference between the parties’ respective device marks is the separation of the two ‘mirror image’ sides of the Omega symbol, which we submit does not result in a different overall impression. 

    Because the Applicant’s mark is an abstract symbol and is not accompanied by any word elements that might otherwise distinguish it from the Opponent’s Omega symbol mark, we submit that consumers would be likely to perceive and refer to the Applicant’s mark as an Omega symbol.

    …

    Handbags and handbag frames typically include a clasp or locking device. Further, it is a relatively common practice for brand owners to emboss or print a trade mark onto the lock or clasp of a handbag (particularly for device and letter marks). In this context, the trade mark may appear divided by the two sides of a clasp or lock into ‘mirror’ halves, which are separated when the handbag is opened.

    In view of the above, if the Opponent’s trade mark were to be used on the clasp or lock of a handbag, the Omega symbol may appear split into two ‘mirror’ halves when the handbag is opened.

11. I agree in general with those submissions. In my assessment the similarities are such that the concurrent use of the trade marks would be likely to confuse or deceive. In my estimation a person seeing the Trade Mark will be caused to wonder whether there is some form of connection with the goods offered by the Opponent under its trade mark. The Opponent has established its opposition to the registration under section 60.

Decision

1. At the relevant date subsection 55(1) of the Act provided:

   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. As a ground of opposition has been established, I refuse to register application 1491116.

Costs

1. Having been successful the Opponent is entitled to its costs which I award at the official scale against the Applicant.

Debrett G. Lyons

Hearing Officer

Trade Marks Hearings

17 June 2014