Opposition by Basic Trademark S.R.L to registration of trade mark application numbers 2003055 (class 25) and 2015036 (class 35) - CONTROL - in the name of Donna Kittle.

[2021] ATMO 146

TRADE MARKS ACT 1995

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

Re:Opposition by Basic Trademark S.R.L to registration of trade mark application numbers 2003055 (class 25) and 2015036 (class 35) - CONTROL - in the name of Donna Kittle.

Delegate:	M. Cooper
Representation:	Opponent: Davies Collison Cave Pty Ltd Applicant: MacPherson Kelley Pty Ltd
Decision:	[2021] ATMO 146 Trade Marks Act 1995 (Cth) – opposition under section 52 – s 44 ground established for trade mark 2003055 and trade mark 2015036 – registration refused.

Background

1. This matter concerns oppositions by Basic Trademark S.R.L (‘Opponent’), under s.52 of the Trade Marks Act 1995 (‘the Act’), to registration of the trade marks 2003055 and 2015036 (‘Trade Marks’) detailed below in the name of Donna Kittle (‘Applicant’):

   Application no: 2003055

   Filing Date: 28 April 2019

   Trade Mark: CONTROL

   Specification of Goods:

   Class 25: Apparel (clothing, footwear, headgear); Aprons (clothing); Arm warmers (clothing); Articles of clothing made from wool; Articles of clothing made of fur; Articles of clothing made of hides; Articles of clothing made of imitation leather; Articles of clothing made of leather; Articles of clothing made of plush; Articles of water-resistant clothing; Articles of waterproof clothing; Articles of weatherproof clothing; Articles of windproof clothing; Athletic clothing; Beach clothing; Belts (clothing); Boys' clothing; Braces for clothing (suspenders); Cashmere clothing; Casual clothing; Clothing; Clothing for gymnastics; Clothing for sports; Clothing for surfing; Clothing incorporating digital components; Clothing of fur; Clothing of imitations of leather; Clothing of leather; Clothing of paper; Collars (clothing); Combinations (clothing); Cowls (clothing); Cyclists' clothing; Dance clothing; Denims (clothing); Ear muffs (clothing); Embroidered clothing; Furs (clothing); Gabardines (clothing); Girl's clothing; Gloves (clothing); Golf clothing (other than gloves); Halters (clothing); Headbands (clothing); Hoods (clothing); Interlinings for clothing; Jackets (clothing); Jerseys (clothing); Jump suits (clothing); Kerchiefs (clothing); Knitted clothing; Knitwear (clothing); Ladies clothing; Layettes (clothing); Leather belts (clothing); Linen articles of clothing; Mantles (clothing); Maternity clothing; Men's clothing; Mitts (clothing); Money belts (clothing); Motorcyclists' clothing (other than for protection against accident or injury); Motorists' clothing; Muffs (clothing); Oilskins (clothing); Pants (clothing); Paper clothing; Paper hats (clothing); Playsuits (clothing); Plush clothing; Pockets for clothing; Rainproof clothing; Ready made linings for clothing; Ready-made clothing; Ready-made linings (parts of clothing); Ready-made pockets (parts of clothing); Ready-to-wear clothing; Silk clothing; Ski clothing (other than for protection against injury); Slips (clothing); Smart clothing (clothing which incorporates digital components); Smart garments (clothing which incorporates digital components); Sports clothing (other than golf gloves); Stuff jackets (clothing); Tennis clothing; Thermal clothing (not specifically adapted for protection against accident or injury); Thermally insulated clothing (not specifically adapted for protection against accident or injury); Thongs (clothing); Three piece suits (clothing); Veils (clothing); Water-resistant clothing; Waterproof clothing; Weather resistant outer clothing; Weatherproof clothing (not specifically adapted for protection against accident or injury); Women's clothing; Woollen clothing; Woven articles of clothing; Wraps (clothing); Wristbands (clothing); Wristlets (clothing); none of the foregoing being sold with eyewear or any device incorporating liquid crystals, being promotional items for promoting eyewear-related goods, being military-style tactical goods, or being protective sports gear. (‘Goods’).

   Application no: 2015036

   Filing Date: 10 June 2019

   Trade Mark: CONTROL

   Specification of Goods:

   Class 35: Retail and wholesale services, including online retail and wholesale services; the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof) enabling customers to conveniently view and purchase those goods; such services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes; presentation of goods on communication media, for retail purposes; organization of fashion shows for promotional purposes; provision of an on-line marketplace for buyers and sellers of goods and services; none of the foregoing retail services being for the sale or provision of goods relating to (or incorporating) electronic or liquid crystal display technology, or protective eyewear or virtual reality, augmented reality, or mixed reality devices. (‘Services’).

2. The Trade Marks were examined and Trade Mark 2003055 was advertised on 28 September 2019 in the Australian Official Journal of Trade Marks. Trade Mark no. 2015036 was advertised on 11 November 2019.

3. Relevant documents were filed as below:

Trade Mark:	2003055	2015136
Grounds	Grounds
Notice of Intention to Oppose (‘NIO’) filed	27 Nov 2019	13 Jan 2020
Statement of Grounds and Particulars (‘SGP’) filed	20 Dec 2020	ss 42(b), 44/r 4.15A, 58 and 60	13 Feb 2020	ss 42(b), 44/r 14.5A and 60
Notice of Intention to Defend (‘NID’) filed	27 Feb 2020	30 Apr 2020

1. On 2 March 2021 the Opponent requested a hearing for both Trade Marks. I heard the matter by videoconference on 21 September 2021 as a delegate of the Registrar of Trade Marks. The Opponent did not appear, Mark Metzeling of MacPherson Kelley Pty Ltd appeared for the Applicant.

   Evidence

2. Evidence in Support was filed by the Opponent on 27 May 2020 for both Trade Marks. It comprised the declaration of Domenico Sindico, the Opponent’s ‘proxy’, dated 25 May 2020, with Exhibits DS1 to DS8 (‘Sindico’).

3. The Applicant’s Evidence in Answer was filed for each Trade Mark on 13 August 2020 and comprised the declarations of Donna Kittle dated 11 August 2020, each with Exhibits DK-01 to DK-06 (‘Kittle’).

4. The Opponent’s Evidence in Reply was filed in part on 20 October and (after the grant of an extension of time) on 18 December 2020. It comprised declarations by Janette Pui-Lang Li made on 20 October 2020 with attachments JPL-1 and -2 and on 18 December 2020 with attachment JPL-1.

5. Written submissions were filed in accordance with directions. Outside these directions, the Opponent filed ‘submissions in reply’. Given this, I allowed the Applicant an opportunity to respond, which it did within the time directed, providing a further submission.

6. The Sindico declaration outlines the origin of the Opponent’s clothing brand in the 1950s and its relaunch in 2017 under the trade mark KONTROLL (‘the Opponent’s mark’, Australian registration number 2005397). It is also registered in many countries internationally (IR no. 1462549). Mr. Sindico states that the Opponent’s products were distributed in Australia by ‘Slam Jam’, but the distribution agreement ceased in January 2020. Current examples of its use on Australian websites, and by other overseas online distributors which distribute to Australia, are also provided. The deponent notes that its ‘Kappa Kontroll’ label won an award overseas in 2018 as one of the best ‘breakthrough’ brands, and it was referred to as the ‘triumphant return of one of Italian sportswear’s most iconic brands.’ A table listing worldwide and Australian sales revenue for the Kontroll brand for 2017-2019 is provided as is a table of (presumably worldwide) promotional expenditure for 2017-2019. Several advertisements, promotions and articles concerning the brand are also exhibited.

7. In her declaration Ms. Kittle describes herself as ‘an internet blogger who creates and shares inspirational quotes and messages and a clothing manufacturer’ who promotes individuals taking control of their life. She states she ‘wanted to create a powerful brand that embodied this message’ and hence chose ‘CONTROL’. She claims not to have been aware of the Opponent’s KONTROLL brand and notes differences between the Trade Marks and the Opponent’s mark. Extracts from the Opponent’s website are exhibited and Ms. Kittle expresses her view that the Opponent commonly places ‘strong and dominant’ emphasis on the letter ‘K’ in its promotions. She observes that the ‘Opponent co-exists with third parties in overseas jurisdictions without confusion’ where the third parties use a ‘C’ instead of a ‘K’ for their similar trade marks. She exhibits overseas use of these trade marks. She also exhibits returned copies of a survey, prepared by her legal representatives, which she distributed to ‘various members of the Australian Public’ and ‘encouraged them to distribute it themselves to third parties.’ Seventy completed and returned surveys are exhibited and Ms. Kittle states that they demonstrate ‘that members of the Australian public don’t consider the Trade Marks to be similar to the Opponent’s Trade Mark.’

8. The Pui-Lang declarations comprise two decisions[1] in which the Opponent successfully opposed registration of trade marks ‘ECOMBAT’ and ‘COMBATARENA’ on the basis that they were confusingly similar to the Opponent’s trade mark ‘KOMBAT’ for the Goods.

   [1] From the EUIPO and the Italian Patent and Trade Mark Office.

   Onus

9. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[2] In its written submissions the Opponent pressed the ss 44, 58, 60 and 42(b) grounds of opposition for Trade Mark for 2003055 and ss 42(b), 44 and 60 for Trade Mark 2015036. The date at which the rights of the parties are to be determined is the filing date of the applications[3], also known as the priority date, that is, 28 April 2019 for 2003055 and 10 June 2019 for 2015036 (‘the relevant dates’).

   Consideration and reasons

   [2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599 [6-26].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (‘Southern Cross’) (1954) 91 CLR 592, 594.

   Section 44

10. Section 44 of the Act relevantly provides:

    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 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.

    …

    (2)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

    (a)  it is substantially identical with, or deceptively similar to:

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

    (ii)  a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

11. In order to establish the section 44 grounds of opposition under, relevantly, subsection 44(1) and (2), the Opponent must demonstrate that the Trade Marks aresubstantially identicalwith, or deceptively similar to, other registered mark/s; are in respect of similar goods/services or closely related services/goods (s 44(1)(a)(i) and (2)(a)(i)); and have priority dates not earlier than that of those other registered mark/s (s 44(1)(b) and (2)(b)). The Trade Marks’ priority dates are not earlier than that of the Opponent’s mark.

    Trade Mark 2003055

12. The s 44 ground is particularised as follows in respect of this mark:

    The Trade Mark is substantially identical with or deceptively similar to the following Trade Marks, which have an earlier date of priority than the Application and which are registered or applied for with respect to similar goods/services and/or closely related goods/services covered by the Application and, therefore, registration of the Application would be contrary to Section 44 of the Act and/or Regulation 4.15A of the Regulations. The Trade Mark has not been used by the Applicant to satisfy the requirements of Section 44(3) and/or 44(4) and/or 4.15A(3) and/or 4.15A(5).

13. The Opponent particularised four trade marks in this regard however in submissions it relies only on its trade mark KONTROLL (as above, the ‘Opponent’s mark’). It is registered in respect of the following goods (‘Opponent’s goods’):

    Class 18

    Clutch bags; haversacks; purses; umbrellas; school satchels; rucksacks; suitcases; bags for sports; duffle bags for travel; hip bags; handbags; pocket wallets; trunks [luggage]; bags; bags for campers; shopping bags; garment bags for travel made of leather; attaché cases; key cases; vanity cases, not fitted; coin purses, not of precious metal; credit card cases [wallets]; folding briefcases.

    Class 25:

    Clothing for sports, in particular sports jerseys, playsuits, uniforms, polo shirts; weather-resistant outer clothing; weatherproof clothing; casual wear and leisure suits; bathing suits; pareus; bath robes; men, women and children's articles of clothing; underwear; overalls; stockings; socks; scarves; gloves; headgear, in particular headgear for wear; hats; bandanas [neckerchiefs]; belts [clothing]; neckties; footwear; sports and athletic shoes; sneakers.

14. Section 14 of the Act provides that goods or services are ‘similar’ to other goods or services if they are the same, or of the same description, as the other goods or services.

15. As noted above, Trade Mark 2003055 designates class 25 Goods in respect of ‘Apparel (clothing, footwear, headgear)’ among many other specific types of clothing, excluding only a small category of class 25 goods which are not presently relevant. The Opponent’s mark designates class 25 goods for types of clothing, footwear and headgear (among other things). They are clearly encompassed by the Goods. I am therefore satisfied that the Opponent’s goods are the same or of the same description as those of Trade Mark 2003055 (s 44(1)(a)(i)).

16. The Opponent contended that the marks are ‘aurally and conceptually identical ... and differ visually only by the substitution of the letter “C” for the letter “K” ... and the omission of “L” at the end of the mark’. Relying on a variety of authorities, it was further submitted that ‘aural resemblances can themselves be sufficient to give rise to a finding of substantial identity or deceptive similarity, where the resemblance relates to the essential features of the registered mark.’

17. The Applicant relies in part on its survey responses from a ‘representative cross-section of the North Queensland public’ as supporting its contention that consumers would not purchase the Goods verbally but only after a visual inspection and confusion is therefore unlikely. It was further asserted that the survey respondents consider the Opponent’s mark to be distinctive from the Trade Marks, understand that ‘K’ is an important element of the Opponent’s branding, and have a low level of brand recognition of the Opponent’s brand presence in Australia. The Applicant also relies on website exhibits to the Kittle declaration which show various registrations and use of similar marks overseas, said to demonstrate co-existence with the Opponent’s mark and a lack of confusion. Website extracts regarding the linguistic elements of the letter ‘K’ are said to demonstrate the Opponent’s reliance on it for its branding strategy, never referring to KONTROLL simpliciter but ‘only ever’ referring to it as the KAPPA KONTROLL collection.

18. The Applicant’s submissions appear to significantly conflate the contents of the exhibits attached to the Kittle declaration. For example, while the Opponent’s evidence may refer to its Kappa Kontroll collection, there are many examples of the use of KONTROLL solus as a trade mark, particularly on clothing. Furthermore, the mere existence of other international trade marks is insufficient to demonstrate any lack of confusion between those marks and the Opponent’s mark or the consumers’ ability to distinguish between them. In relation to the 700 pages of survey responses, while I acknowledge the Applicant’s submission that I am not bound by the rules of evidence, I am required to assess the probative value of the evidence and give it due weight. As raised with the Applicant’s representative at the hearing, the survey responses are not analysed or even summarised. There is no evidence of the methodology, how/why the questions were chosen, how the respondents were chosen, who they were, how many surveys were sent and received. Contrary to the Applicant’s submission, it contains many leading questions. Consequently, I am not satisfied as to the probative value of the survey responses or that any weight can be reliably attributed to them. I am not persuaded that they are a reliable indicator of consumer awareness, perceptions or behaviour in relation to any of the trade marks under consideration.

    Substantially identical

19. The assessment of substantial identity was identified by Windeyer J in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited as follows:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[4]

    [4] [1963] HCA 66; (1963) 109 CLR 407, 415.

20. I have considered whether the marks are substantially identical by reference to the table below.

Trade Marks	Opponent’s mark
CONTROL	KONTROLL

1. Even though the marks are the same verbally and aurally, the visual differences are clear, in particular, the use of ‘K’ instead of ‘C’. On this basis, I am not satisfied that on a side by side comparison, a total impression of resemblance emerges between the Trade Marks and the Opponent’s mark such that they might be regarded as being substantially identical.[5]

   [5] Ibid.

   Deceptive similarity

2. A trade mark will 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’ (s 10 of Act).

3. In assessing trade marks for deceptive similarity, the Full Federal Court in Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd succinctly summarised the test:

   The test of deceptive similarity …. is a comparison between one mark and the impression of another mark carried away and hypothetically recalled, paying due regard to the fact that recollection is not always perfect.[6] 

   [6] [2020] FCAFC 186 [99] (Middleton, Yates and Lee JJ).

4. This comparison is to be made by reference to the standards of ordinary people ‘who should not be credited with high perception or habitual caution’ and in the context of the business and the way in which the particular class/es of goods are sold or services provided.[7] A likelihood of confusion will exist if there ‘is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source.’[8] It is not necessary that the confusion persist up to, or contribute to inducing, a sale.[9] The use to be considered is notional use.[10]

   [7] Australian Woollen Mills v F S Walton and Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

   [8] Registrar of Trade Marks v Woolworths (‘Woolworths’) [1999] FCA 1020 [50]; (1999) FCR 365 (French J).

   [9] TiVo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 [105] (Dodds-Streeton J).

   [10] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43; (1979) 129 CLR 353, 362 (Mason J); Campomar Sociedad Limitada v Nike International Ltd (2000) [2000] HCA 12; (2000) 202 CLR 45,72.

1. In considering the Trade Mark 2003055’s notional fair use for the Goods, given my finding above concerning the similarity of the goods, I accept that the Applicant could potentially sell the same types of goods under the Trade Mark to the same customers and through the same trade channels as the Opponent. In estimating the effect or impression produced on the mind of these potential customers, it is ‘the effect of the respective wholes’[11] that is to be compared. Even where there are visual differences, aural identity may be sufficient to establish deceptive similarity between marks.[12]

   [11] Clark v Sharp (1898) 15 RPC 141,146 (Byrne J).

   [12] Solahart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700 [40]; (2011) 92 IPR 165 (Perram J).

2. The verbal and aural effect of the Trade Mark 2003055 and the Opponent’s mark is identical. Should a customer order the goods verbally, brand confusion would be inevitable (pending further inquiries by the salesperson).  Conceptually, to the extent that the word ‘control’ has any significance, it is a common word with an ordinary meaning which will likely be attributed to both marks, notwithstanding the different spelling.  In relation to the relevant visual comparison, as observed by Lord Radcliffe in De Cordova v Vick Chemical Co.:

   ...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.[13]

   [13] (1951) 68 RPC 103,106.

3. The Applicant contends that the Opponent places ‘strong and dominant’ emphasis on ‘K’ in its mark however I am required to consider the notional use of the Opponent’s mark as registered and there is no demonstrated emphasis on any letter. Even acknowledging that, in relation to the purchase of clothing, consumers tend to take time to assess the product before they purchase,[14]  visually the marks are also very similar. I consider it likely that a consumer with an imperfect recollection of the Opponent’s mark, on seeing the Trade Mark while seeking to purchase clothing, would at least be caused to wonder whether it was the Opponent’s brand or somehow associated with it. Therefore, in assessing ‘the effect of the respective wholes’,[15] taking into account the identical verbal and aural effect, the conceptual similarity and limited visual differences, along with the above findings that the goods provided under both marks are of the same description and are likely to be provided through the same trade channels to the same consumers, I consider there is a real risk that use of the Trade Mark will cause a significant number of ordinary persons to wonder whether the goods are those of the Opponent or otherwise associated with it.[16] It follows that, allowing for imperfect recollection, I am satisfied that Trade Mark 2003055 ‘so nearly’ resembles the Opponent’s mark that its use on the Goods would be ‘likely to deceive or cause confusion’ among ‘persons of ordinary intelligence and memory’. Therefore, the Opponent has established the s 44(1) opposition ground in respect of Trade Mark 2003055.

   [14] For example, Autumnpaper Ltd v Maya McQueen Pty Ltd [2016] ATMO 53; Hugo Boss AG v Tagmill Pty Ltd [2000] ATMO 23, Taiwan Yamani v Giorgio Armani 17 IPR 92.

   [15] Above, n11.

   [16] Southern Cross, 594-5 per Kitto J, adopted by French J Woolworths [50].

   Trade Mark 2015026

4. Trade Mark 2015026 is registered in respect of Services. The relevant assessment therefore concerns whether the Opponent’s goods are closely related the Services (s 44(2)(a)(i)). As French J said in Woolworths:

   The term “closely related” recognises that goods and services are different things…

   The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to those goods. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar in that it suggests an association between the provider of the service and the manufacturer of the sets... [17]

   [17] Woolworths [37].

5. While the Services do not specifically consist of the supply of the Opponent’s goods, on ‘practical judgement’ they embrace them. As French J further noted in Woolworths:

   Mr F.J. Smith, a former Commonwealth Registrar of Trade Marks and Designs and Commissioner of Patents, observed at the time of the 1978 amendment that:

   "It will be an exercise of the Registrar's judgment and ultimately of his discretion whether goods and services are closely related. The relationship would have to be close, not merely a tenuous or remote connection. Where the services are performed upon, or in relation to, or even by means of certain goods, this is a factor which would make deception or confusion between marks used in respect of those services and goods more likely." - Smith, supra, 53 ALJ 118 at 120.[18]

   [18] Woolworths [41].

6. In Rowntree plc v Rollbits Pty Ltd Needham J said the question whether goods and services are closely related requires consideration of ‘all such goods as the plaintiff might sell legitimately under the mark’.[19] The Applicant states she is a clothing manufacturer (among other things) and, given the Services’ broad designation, she could legitimately sell clothing under this Trade Mark. Further, as Needham J also stated:

   I think, in the present case, that the conclusion that the goods are goods of the same description requires a conclusion that the services contemplated by the defendant, which would feature the goods already held to be goods of the same description as those of the plaintiff, are services closely related to the plaintiff's goods.[20]

   [19] (1988) 90 FLR 398, 405.

   [20] Ibid.

7. Similarly, I have found above in relation to Trade Mark 2003055 (also ‘CONTROL’) that the Applicant’s Goods are of the same description those under the (same) Opponent’s mark. From the Applicant’s description of herself as a clothing manufacturer, I infer both that the Services are likely to involve offering the Goods, and that, despite the broadness of its terms, the Services are likely to primarily concern the Goods. As such I consider that the Opponent’s goods are closely related to the Services (s 44(2)(a)).

8. As I have also found the identical Trade Mark 2003055 to be deceptively similar to the Opponent’s mark, it follows that, for the same reasons, I am satisfied that Trade Mark 2015036 is deceptively similar to the Opponent’s mark.

   Sections 44(3) and 44(4)

9. At the hearing, the Applicant submitted in the alternative that other circumstances warranted registration of the Trade Marks (s 44(3)(b)). It was contended that the public interest is not adversely affected if the subject Trade Marks are registered;  the Opponent did not oppose their registration for the same classes in the USA; they are also registered in the UK and Europe and this demonstrates the trade marks are capable of co-existing without any danger of confusion;  the Applicant will suffer inconvenience because she has undertaken substantial preparations and will incur significant rebranding costs if the Trade Marks are not registered; there is no inconvenience to the Opponent because it can keep using its mark; the delays caused by the Opponent’s  late-filed evidence and its late filed submission has caused financial detriment to Applicant; the Opponent’s trade mark is void ab initio because it was filed by the incorrect Applicant and is also vulnerable for non-use and as such the Applicant should not be penalised by the presence of a ‘zombie mark’ on the Register.

10. Section 44(3)(b) provides:

    (3)  If the Registrar in either case is satisfied:

    …

    (b)  that, because of other circumstances, it is proper to do so;

    the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that area.

11. The s.44(3)(b) discretion is broad and the range of circumstances to which the Registrar may have regard is apparently unlimited. Factors found to be relevant include evidence of the extent of use of the trade mark; whether there have been any instances of confusion; what might reduce the risk of confusion (i.e., different trade channels of distribution) and the inconvenience, if any, to the opponent and/or the applicant which might result from registration of the Trade Mark[21]. I also note the observation of the delegate in Richard James Pty Ltd v Grant Olver Investments Pty Ltd that ‘other circumstances’ ‘may comprise any aspect of the applicant’s use tending to minimize the risk of confusion or showing particular hardship.’[22]  In a context in which the Applicant has not used the Trade Marks, many of the above considerations are inapplicable. Further, there is no persuasive evidence of any financial detriment or hardship, whatever the cause, nor is there sufficient evidence which persuades me that the Opponent’s mark is either void or vulnerable to non-use proceedings. Nothing in the evidence indicates that the Opponent’s mark is a ‘zombie’ mark’, in fact the evidence shows clearly it is and has been relevantly in use. The fact of the Applicant’s overseas registrations alone (which are not in evidence) does not establish a lack of a likelihood of confusion in Australia.

    [21]Analyses Conseils Informations ACI v Iguassu (No.16) Pty Ltd & AI Nominees Pty Ltd. [2001] ATMO 4.

    [22] [2005] ATMO 18 [36].

12. Therefore, I am not satisfied, in the absence of relevant ‘other circumstances’ established by the evidence, that it is ‘proper’ I accept the Trade Marks for registration under s.44(3)(b). As the Applicant acknowledges, it has not used the Trade Marks, so neither s 44(3)(a) nor s 44(4) apply.

13. The Opponent has therefore established the s 44 ground of opposition in respect of Trade Marks 2003055 and 2015036.

14. Given this, there is no requirement for me to consider the remaining grounds particularised in the SGP or the further submissions made by the parties in this regard. In the event of an appeal to this decision, it will be open to the Opponent to additionally pursue those grounds and the others available under the Act.

    Decision

15. Section 55 of the Act relevantly provides:

    Decision

    (1) Unless subsection (3) applies to the proceedings, 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.

16. Subsection (3) does not apply to these proceedings. The Opponent has established the s 44 ground of opposition in respect of Trade Mark 2003055 and Trade Mark 2015036. Accordingly, their registration must be refused.

    Costs

17. Both parties sought costs. As the Opponent has established a ground of opposition, I award costs in respect of Trade Mark 2003055 against the Applicant under section 221 of the Act in the relevant amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).  In respect of Trade Mark 2015036 I award reduced costs against the Applicant in the same manner as determined in Hume Industries (Malaysia) Berhad v James Hardie and Coy Pty Ltd[23].

    [23] [2001] ATMO 78

    Mary-Ann Cooper

    Hearing Officer

    Oppositions and Hearings
    Trade Marks and Designs
    26 November 2021