Opposition by Annco Inc to registration of trade mark application number 1895393 (class 25) – The Slumber Loft - in the name of Peter Sheppard Footwear Pty Ltd

[2020] ATMO 159

TRADE MARKS ACT 1995

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

Re:Opposition by Annco Inc to registration of trade mark application number 1895393 (class 25) – The Slumber Loft - in the name of Peter Sheppard Footwear Pty Ltd

Delegate:	Adrian Richards
Representation:	Opponent: David Larish of Counsel instructed by King & Wood Mallesons Applicant: Did not attend or file submissions
Decision:	2020 ATMO 159 Trade Marks Act 1995 (Cth) – opposition under section 52 – ground of opposition under section 44 considered – ground established – registration refused

Background

1. This decision with reasons concerns the opposition to registration under the Trade Marks Act 1995 (Cth)[1] of the following:

   Trade mark:                   The Slumber Loft (‘Trade Mark’)

   Specification of goods:    Class 25: Sleepwear; Pyjamas; Sleeping attire, garments          and masks; Shorts; Socks; Chemises; Nighties; Nightgowns; Nightshirts; Bed jackets; Clothing (‘Applicant’s Goods’)

   Application number:      1895393 (‘Application’)

   Priority date:                  18 December 2017 (‘Relevant Date’)

   [1] All references to a section in these reasons is a reference to a section in the Trade Marks Act 1995 (Cth).

1. The Application was filed with this office on the Relevant Date by Peter Sheppard Footwear Pty Ltd (‘Applicant’). It was examined, accepted for possible registration, then advertised for opposition purposes on 10 May 2018.

2. Annco Inc (‘Opponent’) filed a notice of intention to oppose on 10 July 2018, followed on 9 August 2018 by a statement of grounds and particulars (‘SGP’). The Applicant filed a notice of intention to defend on 31 August 2018. This office invited the parties to file evidence in accordance with the statutory timetable.[2] Evidence in support and answer were filed by the respective parties, details of which are set out below under the appropriate heading.

   [2] Trade Marks Regulations 1995 (Cth) reg 5.14. All references to a regulation in these reasons is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

3. After the filing of evidence, the Opponent sought to be heard on the opposition. A hearing date was set for 24 October 2019. The opposition was allocated for hearing by me, a delegate of the Registrar of Trade Marks. Despite being given opportunity to do so, the Applicant did not attend the hearing nor did it file written submissions. David Larish of Counsel attended for the Opponent, and provided its oral submissions.

Grounds and onus

1. The SGP nominates grounds of opposition under ss 42(b), 44, 59 and 60. The onus is on the Opponent[3] to show that any one of those grounds are established. All findings of fact are on the basis of the balance of probabilities[4] and the rights of the parties are assessed as they were at the Relevant Date.[5]

   [3] Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4 [16]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [4] Ibid.

   [5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

Evidence

1. The following evidence was filed by the parties:

   Evidence in support

   Declaration of Carole E Klinger, Assistant Secretary of the Opponent, made 6 December 2018 with Exhibits 1 to 62

   Declaration of Bill Ladas, lawyer for the Opponent, made 7 December 2018 with Exhibits BL-01 to BL-07

   Evidence in answer

   Statutory declaration of Melanie Sheppard, Manager of the Applicant, made 26 March 2019 with Exhibits MS-1 to MS-12

2. While both parties provided a significant amount of evidence, having found that the opposition is successful under s 44 means I make very little reference to it in my reasoning below. Of direct relevance to certain aspects of that ground of opposition is the Applicant’s evidence in answer. It establishes that the Trade Mark was first used in December 2018. This is quite crucially about a year after the Relevant Date. In lieu of submissions, the Applicant’s evidence also seeks to argue that the marks are neither substantially identical nor deceptively similar.

Discussion

Section 44

1. The most relevant words from this omnibus provision are set out below:

   44  Identical etc. trade marks

   (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 …

   (ii)  … 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 …

   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.

2. What I will call the procedural aspects of this subsection are satisfied when there is another mark in the name of someone other than the Applicant with a priority date earlier than the Trade Mark. The substantive aspects require an analysis of whether the marks in comparison are deceptively similar or substantially identical, and whether they each claim similar goods.

3. The Opponent nominated its own registered mark for consideration here. Its details are set out below:

   Trade mark:                   Loft (‘Opponent’s Mark’)

   Specification of goods:    Class 25: Clothing, namely, dresses, skirts, suits, jeans, sweaters, shirts, t-shirts, tank tops, jumpers, vests, gloves, sleep wear, swimsuits, blouses, pants, shorts, jackets, coats, socks, hosiery, belts, scarves, head wear; and footwear (‘Opponent’s Goods’)[6]

   Registration number:     1615162

   Priority date:                  18 September 2013

   [6] The Opponent’s Mark also covers certain goods and services in classes 3, 9, 14, 18 and 35. It has not been necessary to consider whether those other claims are similar or closely related to the Applicant’s Goods.

4. The procedural aspects of s 44(1) are plainly satisfied—the marks have different proprietors and the Opponent’s Mark has a priority date over five years earlier than the Trade Mark.

5. The Opponent’s Goods encompass the Applicant’s Goods. Both claim shorts and socks in the same terms. The Applicant’s various claims to sleepwear, pyjamas, sleeping attire, nighties, nightgowns, nightshirts and bedjackets are all anticipated by the Opponent’s claim to sleep wear. The Applicant’s claim to masks, while more specific, would be the same as some of the goods falling within the Opponent’s claim to head wear. The Opponent’s claim to clothing is apparently qualified by the term ‘namely’ preceding a list of clothing types. That list of clothing types is so extensive, however, that what appears at first as a qualification does nothing to whittle down the claim. Therefore, the Opponent’s claim to ‘clothing, namely, [many types of clothing]’ is for the same goods as the Applicant’s claims to clothing and to garments. The respective goods being similar, the final question to be answered is whether the marks are substantially identical or deceptively similar.

6. The Opponent has not sought to argue that these marks are substantially identical. The Applicant’s evidence in answer asserts that they are not, and this is my assessment as well. When compared side by side,[7] while both marks share the element Loft, the additional elements The Slumber in the Trade Mark make it impossible to conclude that there is ‘a total impression of resemblance’.[8]

   [7] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).

   [8] Ibid.

7. Moving on to whether the marks are deceptively similar, the starting point is to note its definition in s 10:

   10  Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

8. This means that the marks must resemble one another, and that resemblance is likely to deceive or cause confusion. The point of resemblance here is obvious—the Opponent’s Mark, Loft, is wholly contained in the Trade Mark. It is only necessary for me to consider whether the Trade Mark is likely to cause confusion, rather than deception. This is because, while the latter has been held to entail the creation of a false state of mind,[9] the former merely requires a state of wonderment as to whether it might not be the case that goods offered under the Trade Mark are those of the Opponent.[10] The expression ‘is likely to deceive or cause confusion’ means that ‘a mere possibility of confusion is not enough…there must be a real, tangible danger of its occurring’.[11] This wonderment need only be brief—it need not persist up to the point of sale.[12]

   [9] Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410, 423 (Richardson J).

   [10] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592, 595 (Kitto J).

   [11] Ibid.

   [12] Ibid.

9. With the above in mind, the question resolves to: since it terminates with the word Loft, is there a real, tangible danger of the Trade Mark causing confusion? In answering this, the marks are not, as the Applicant’s evidence in answer purports to do, compared side by side.[13] They are compared based on what is sometimes termed imperfect recollection.[14] This is the point of view of an average consumer of the Applicant’s Goods who, upon seeing the Trade Mark, knows the Opponent’s Mark but cannot immediately check it to compare. This entails an estimation of the general impression of the marks while making allowance for this consumer to not have perfect recall of the Opponent’s Mark.[15]

   [13] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 415 (Windeyer J).

   [14] Re Rysta Ltd (1943) 60 RPC 87, 108 (Luxmoore LJ)

   [15] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 415 (Windeyer J).

10. For word marks, a good starting point for forming this general impression is typically to consider their look, sound and meaning. The Applicant’s evidence in answer submits that the marks are ‘very distinct’ on all three of those counts. While their sounds and looks are different, the ideas conveyed by the marks are not as easily distinguished as the Applicant submits. Loft on its own could refer to the act of hitting a ball at an upward angle, or it could refer to an architectural feature—a sort of mezzanine in the roof space of a building. The Slumber Loft effectively rules out a sporting interpretation, narrowing its meaning down to only a mezzanine. Apart from being more specific as to the use of this room, the Trade Mark does very little to distinguish itself conceptually from the Opponent’s Mark.

11. The Opponent’s submissions point out the Applicant’s Goods, focused on sleepwear, are likely to cause consumers to discount The Slumber somewhat as those words are allusive to the nature of those goods. Along the same lines, the Opponent also points out that Loft is certainly not descriptive of the goods in question. I agree with the Opponent’s submissions on this point. The words The Slumber, whilst not directly descriptive of the Applicant’s Goods are nevertheless somewhat descriptive of the use to which they will be put.[16] The opposite is true of Loft in relation to the Applicant’s Goods—this word presents no obvious descriptive meaning. The general rule when comparing trade marks is that the beginning of the word or phrase will carry more emphasis,[17] but the well-established exception to the general rule applies where some other element of a mark provides it with its distinctiveness. There are many examples of this principle provided in the Opponent’s submissions. One was this office’s previous refusal to register SNOOZE SLEEP WELL in the face of SLEEPWELL (for various goods and services centred around beds and bedding).[18] In that decision the delegate found that the essential meaning of the latter was not altered by the addition of SNOOZE.

    [16] Edwards v Liquid Engineering 2003 Pty Ltd (2008) 77 IPR 115, 122-3 [23] (Gordon J).

    [17] Re London Lubricants (1920) Ltd (1925) 42 RPC 264, 279 (Sargant LJ).

    [18] JWC (Int) Ltd (2009) 82 IPR 583 (Hearing Officer H Wilson).

12. When assessing the likelihood of deceptive similarity, all the surrounding circumstances should be considered.[19] A particular aspect of the surrounding circumstances that the Opponent presses is the relatively common practice of adding to their existing brand.[20] In such a context, as here, two arguably different looking and sounding marks are still likely to cause confusion. Imagining for present purposes the Opponent’s Loft branded goods on the market, a consumer seeing the Trade Mark on sleepwear is in my estimation likely to see The Slumber Loft as a variant of the Opponent’s Mark, adjusted to the type of goods on offer.

    [19] Re Pianotist Co Ltd (1906) 23 RPC 774, 777 (Parker J) (Ch D).

    [20] Kodak (Australasia) Pty Ltd’s Application (1936) 6 AOJP 1724.

13. The Applicant’s evidence asserts that there have been no instances of actual confusion to date. While evidence of actual confusion (or lack thereof) is a factor of the present enquiry, it is not determinative. This is because I must evaluate the likelihood of confusion occurring. Also, as I explain in more detail below, this evaluation is conducted in terms of the nominal use of the respective marks, not their actual uses to date.

14. Other than comparing the look, sound and idea of these marks, the Applicant’s evidence in answer includes a couple of brief submissions on the question of deceptive similarity. These raise issues that would more readily go to other grounds of opposition, well beyond the outer bounds of the current enquiry.

15. The Applicant seeks to differentiate the marks by the goods each mark had been used for to date. While this is likely to be crucial in relation to prior use-based grounds of opposition, such as ss 58 or 60, taking such an approach is impermissible here. The correct approach is to consider nominal use of the marks—the use to which each can be ‘properly put’.[21] That includes considering all the goods respectively claimed by both marks. As I have already assessed, both marks could properly be used in relation to all the Applicant’s Goods.

    [21] Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353, 362 (Mason J)

16. The Applicant’s submissions also assert a lack of reputation in the Opponent’s Mark. Reputation in general has a very confined role to play here. For example, the courts have previously held that it would be ‘artificial’ to ignore the ‘notorious familiarity to consumers’ of the element WOOLWORTHS in respect of retailing and wholesaling services when assessing potential deceptive similarity involving the term WOOLWORTHS METRO.[22] But where reputation does not rise to the level at which judicial notice can be taken, as in the present case, reputation is simply not relevant.[23]

    [22] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, 386 [61] (French J).

    [23] Australian Meat Group Pty Ltd v JBS Australia Pty Ltd (2018) 268 FCR 623 (Allsop CJ, Besanko and Yates JJ).

17. Given its resemblance to the Opponent’s Mark the Trade Mark is in my estimation likely to cause confusion. Since the evidence from the Applicant shows only use of the Trade Mark well after the Relevant Date, there is no basis for me to consider whether that use was prior and continuous[24] or honest and concurrent.[25] Nor are there any other circumstances apparent that might justify this registration proceeding despite its deceptive similarity to the Opponent’s Mark.[26] This ground of opposition is established.

    [24] Trade Marks Act 1995 (Cth) s 44(4).

    [25] Ibid s 44(3)(a).

    [26] Ibid s 44(3)(b).

Decision and costs

1. I must now decide whether to refuse to register the Trade Mark having regard to the extent to which any ground of opposition has been established.[27] Since the Opponent has established the ground of opposition under s 44, I refuse to register the Trade Mark.

   [27] Ibid s 55.

2. Both parties asked that an award of costs be made. Costs usually follow the event. I am not aware of any reason to make an exception here, so I award costs against the Applicant.

Adrian Richards
Hearing Officer
Delegate of the Registrar of Trade Marks
30 September 2020