Opposition by Bianca-Moden GmbH & Co. KG to registration of trade mark application 1953172 (25) – BIANCA AND BRIDGETT – in the name of Bianca and Bridgett Pty Ltd

[2021] ATMO 30

TRADE MARKS ACT 1995

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

ReOpposition by Bianca-Moden GmbH & Co. KG to registration of trade mark application 1953172 (25) – BIANCA AND BRIDGETT – in the name of Bianca and Bridgett Pty Ltd

Delegate:                 Debrett Lyons

Representation:       Opponent: Samuel Fitzgerald, Solicitor at Hudson Gavin Martin, Solicitors, New Zealand

Applicant: Siobhan Ryan of Counsel, instructed by Pointon Partners Pty Ltd, Solicitors

Decision:                   2021 ATMO 30

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 44 considered – trade marks not deceptively similar – trade mark to proceed to registration

Background

1.       This decision concerns an opposition brought by Bianca-Moden GmbH & Co. KG (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade mark the subject of the application detailed below. The application is in the name of Bianca and Bridgett Pty Ltd (‘the Applicant’):

Application Number:

1953172

Filing Date:

5 September 2018

Specification:

Class 25: Fashion and casual clothing, clothing accessories being scarves, belts, footwear, headwear and gloves, clothing footwear and headgear 

(‘the Goods’)

Trade Mark:

BIANCA AND BRIDGETT  

(‘the Trade Mark’)

2.       Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration and a Statement of Grounds and Particulars which nominated grounds of opposition under s 44 and s 60 of the Act. Only s 44 was pressed at the hearing.

1. The Applicant filed a Notice of Intention to Defend and the matter proceeded to evidentiary stages.  Notably, the Opponent did not file Evidence in Support of its opposition.  The Applicant filed Evidence in Answer, being the Declaration of Bianca Roccisano and Bridgett Roccisano and Exhibits BR-1 to BR-8 (‘the Roccisano declaration’).  The Opponent filed Evidence in Reply, being the Declaration of Jessie Malcom and Exhibits A and B (‘the Malcolm declaration’).

2. Once the time allowed for filing evidence had ended both parties requested to be heard.  As a delegate of the Registrar of Trade Marks, I heard the matter on 1 April 2021.  Samuel Fitzgerald, a Solicitor at Hudson Gavin Martin, Solicitors, New Zealand, appeared for the Opponent.  Siobhan Ryan of Counsel, instructed by Pointon Partners Pty Ltd, Solicitors, appeared for the Applicant.  Oral submissions were supplemented by the parties’ written submissions filed in a timely manner prior to the hearing.

   Discussion

   5.       The Opponent bears the onus of proof[1] to establish the opposition under s 44 on the balance of probabilities.[2] Relevantly, s 44(1) of the Act provides that an application for the registration of a trade mark must be refused where the applicant’s trade mark is substantially identical with, or deceptively similar to, a trade mark registered by another person in respect of similar goods or closely related services and the priority date of the applicant's trade mark is not earlier than the priority date for the registration of the other trade mark.

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

3. In this case the filing date of the application for the Trade Mark, 5 September 2018, is the priority date for the purposes of s 44 (‘the Priority Date’) [3].  The Opponent is the owner of the registrations detailed below (‘the Registrations’) for bianca (‘the Opponent’s Trade Mark’).

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].

Number	Trade Mark	Priority Date	Relevant Goods
864849	bianca	2 February 2001	Class 25: Clothing, footwear and headgear
897866[4]	bianca	19 October 2001	Class 25: Clothing, footwear and headgear

[4] Registration 897866 is the IRDA of IR no. 769514. Reg. 4.15A of the Trade Mark Regulations 1995 states that an application for the registration of a trade mark must be refused where the applicant’s trade mark is substantially identical with, or deceptively similar to an earlier protected international trade mark held by another person in respect of similar goods or closely related services.

1. The dates of the Opponent’s Registrations are earlier than the Priority Date. The Applicant concedes that the Goods are similar within the meaning of the Act[5] to the goods of the Registrations and I so find that they are.  The remaining question is whether the Trade Mark is either substantially identical or deceptively similar to the Opponent’s Trade Mark. 

   Substantial identity

   [5] Section 14 of the Act.

   8.       To determine substantial identity, two marks must be compared side by side and their similarities and differences assessed by taking into account their essential features and the total impression of resemblance or dissimilarity that comes from the comparison.[6] The contention that the Trade Mark is substantially identical with the Opponent’s Trade Mark is not wholly without merit. The submission is that the Trade Mark encompasses the Opponent’s Trade Mark and simply adds non-distinctive matter in the form of the conjunction “AND” with the women’s first name BRIDGETT.  It is said that BIANCA is the essential feature of both marks and strikes the eye of the consumer first.

   [6] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at 414.

   9.       For reasons which follow I find that the compared marks are not substantially identical.  In short, I do not find that a total impression of resemblance emerges from the comparison.  That said, the Opponent’s argument of substantial identity brings out questions of importance in terms of the possible deceptive similarity of the marks.

   Deceptive similarity

   10. Unlike substantial identity, the expression ‘deceptive similarity’ is defined by the Act to mean a trade mark so nearly resembling another that it is likely to deceive or cause confusion[7].  As the Opponent correctly notes, intention to deceive or confuse is not required[8], only that there exists a real tangible danger of deception and confusion occurring[9] - that is to say, if it appears that there is a real risk that the result of the use of the mark will be that a significant number of persons will have cause to wonder whether it might not be the case that the two products come from the one source. 

   [7] Section 10 of the Act.

   [8] Beecham Group Plc v Colgate-Palmolive Pty Ltd (2005) 66 IPR 254 at [64].

   [9] Southern Cross Refrigerating Co v Toowomba Foundry Pty Ltd (1954) 91 CLR 592 at 608.

   11.     Once more, the Opponent submits that the Trade Mark incorporates the central distinguishing feature of the Opponent’s Trade Mark and that the additional material lacks distinctiveness.  The goods at issue are the same and in terms of the likelihood of confusion or deception the Opponent’s submission is that the risk of confusion is heightened where the marks appear related.  The Opponent states that:

   It is possible that consumers who view the Applicant’s products under the BIANCA AND BRIDGETT brand will think that there is an economic connection to the Opponent; that it is a sub brand of the Opponent’s BIANCA brand or a collaboration between the Opponent and another fashion label.

   … not only is the BIANCA element wholly encompassed in the Application but, importantly, is its own standalone element. The subsummation of the BIANCA element in the Application is not through it being part of a larger more complex additive term but one where it retains its singular identity.

   The risks of confusion are further heightened by the clear and obvious inclusion of “Bianca” AND “another name”, giving the impression that the singular person/entity that is “Bianca” has worked with another person/entity that is called “Bridgett”, or that the “Bianca and Bridgett” product has been made, approved and authorised, at least in part, by “Bianca” as a joint or collaborative effort. 

   This partnership possibility is made more believable by the alliteration of the “B” in both names, i.e. a new brand for the extension of the “bianca” range is give more brand appeal by the addition of another forename that utilises the starting letter “b” and is presented in the same style (a single forename) and phonetic presentation. It gives the impression of a handpicked/specifically created “partner” for the “bianca” brand edition.

   The Opponent acknowledges that other marks exist on the Register that incorporate the word BIANCA. However, we submit that these marks may be distinguished for the purposes of this evaluation as it is notable that the Bianca Marks are the only marks that use "bianca" as a trade mark without an additional element, surname or second first name. … it is precisely the combination of two first names … which suggests an economic or organizational link to the Opponent…

   12.     As stated, there was no evidence in support of the opposition, nor need there be for an opponent to succeed in an opposition, but in this case the evidence put forward by the Applicant has a significant impact on the assessment of s 44.  Before turning to that evidence, I have something to say of the Opponent’s submissions.  The first is the statement that the Trade Mark incorporates the central distinguishing feature of the Opponent’s Trade Mark.  So it must since it adopts the name ‘bianca’, being all of the Opponent’s Trade Mark.  The next is the claim that BIANCA is the essential feature of both marks.  That claim appears to rest on two pillars, (i) that it strikes the eye of the consumer first (and is thus more memorable by reason of imperfect recollection[10] or otherwise[11]), and (ii) that the additional material lacks distinctiveness.  The third assertion is that the particular combination of two first names in the Trade Mark suggests an economic or organizational link to the Opponent ‘since consumers who view the Applicant’s products under the BIANCA AND BRIDGETT brand will think that it is a sub-brand of the Opponent’s BIANCA brand or a collaboration between the Opponent and another fashion label’.

   [10] London Lubricants (1920) Ltd’s Application (1925) 42 RPC 264 at 279.

   [11] because “the tendency of English language speakers to slur the ending of words means that the first part of words is emphasised”; and/or because the two names are alliterative; and/or because “the additional element BRIDGETT does not change the idea or meaning of the mark.”

   13.     I have found that the marks are not substantially identical.  I am not convinced that BIANCA is the essential feature of both marks.  It follows that in terms of the danger of deception and confusion occurring, all that might favour that conclusion is the fact that BIANCA appears first in the Trade Mark[12]. Otherwise, the submission that consumers are likely to understand some economic or organizational link to the Opponent when they see the Trade Mark in use suggests a reputation in the ‘BIANCA brand’ where none has been proven. I note in this regard that whilst a ground of opposition under s 60 of the Act was nominated in the Statement of Grounds and Particulars, it was not pursued.

   [12] See, for example, London Lubricants (1920) Ltd's Appn, (1925) 42 RPC 264, holding that the first syllable should generally be given the most weight when comparing marks.

   14.     On balance, I am mindful of the sound judgement in C A Henschke & Co v Rosemount Estates Pty Ltd where Finn J stated that:

   …particular attention ought be paid to the first part of a name for generally the first word or syllable provides the most important means of distinguishing marks... save where the initial word or syllable is both common to the marks and is common to the trade or is commonly used by a number of trade mark proprietors, in which case the emphasis is to fall on other portions of the mark as a means of distinguishing them.[13]

   [13] C A Henschke & Co v Rosemount Estates Pty Ltd, [1999] FCA 1561, [35].

   15.     The Applicant’s submissions can be distilled into the propositions that (i) merely because the Opponent’s Mark is contained in the Trade Mark should not automatically lead to a conclusion that the two marks are deceptively similar - the question is whether the wholly included word has retained a distinctive identity as part of the whole[14], and (ii), the coupling of given names such as ‘Bianca and Bridgett’ more likely conveys that the label owners have adopted a fashion industry convention, than to signal a merger or collaboration of brands.

   [14] Angoves Pty Ltd v Johnson (1982) 43 ALR 349 at 362

   16.     In more detail, the Applicant submits that clothing consumers tend to take time to assess a brand before purchase and it refers to case law to that effect[15] and to this Office’s Trade Marks Manual of Practice and Procedure (‘the Manual’), which in connection with s 44 deals with the very before me and instructs that:

   [15] Suzanne Grae Corporation Pty Ltd v Design West Mode Pty Ltd [2019] ATMO 92 at [44] and the cases cited there: 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; see also Davison M & Horak I., Shanahan’s Australian Law of Trade Marks and Passing Off at [30.2005], Law Book Co. 5^th Edition.

   When comparing a trade consisting of a given name and a trade mark that consists of two or more given names a real and tangible danger of confusion is less likely to occur between trade marks.

   In making this decision examiners should consider:

   -The relative commonness of the given name;

   -The goods and/or services the trade mark will be used on, and the marketplace in which the goods or services are traded

   -Placement or representation of the name in the trade mark;

   -Any other factors relevant to a decision of deceptive similarity.

   In limited circumstances confusion may be considered likely when the given name between the marks is extremely unusual, rare, or otherwise memorable, such as an invented given name. [16]

   [16] The IP Australia Trade Marks Manual of Practice and Procedure Part 26 Annex A1.

   17.     That practice direction is exemplified in the Manual by the comparison marks below:

Trade Mark 1	Trade Mark 2	Goods/services claim	Action and Reasons
MARK	LUCA AND MARK	Commonplace goods/services	No Section 44 MARK is a very common given name. The additional name, LUCA, is the first word and more distinct element in the second trade mark. When used in relation to commonplace goods and/or services there is relatively little danger of confusion between the two trade marks.
CAMILLA	CAMILLA AND MARK	Commonplace goods/services	No Section 44 Although less common than MARK, CAMILLA is still a relatively common given name. The inclusion of the additional name MARK and use of the trade marks in relation to commonplace goods and services is sufficient to mitigate the danger of confusion between the two trade marks.

18.     In keeping with that direction, the Applicant submits that ‘Bianca’ is a common name and is commonly used in trade marks in the fashion industry.  I am prepared to accept from my own knowledge that the name ‘Bianca’ is not uncommon and I also accept that it is frequently used in the fashion industry since the Roccisano declaration exhibits a list of fashion labels and a list of Australian trade mark registrations in class 25 which both include the name BIANCA.  Furthermore, the Roccisano declaration satisfies me that one of the fashion industry naming conventions referred to by the Applicant is that of coupling given names.

19.     The case law is instructive.  Going back as far as Clark v Sharp it was said that:

One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.”[17]

[17]  Clark v Sharp (1898) 15 RPC 141 at 146.

20.     Further, whether marks are deceptively similar, that is, likely to cause confusion, will hinge partly on the business at issue and in that regard ‘the habits and observation of men considered in the mass affords the standard.’[18]  In Registrar of Trade Marks v Woolworths Ltd, French J noted that the likelihood of confusion required consideration of:

… 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.[19]

[18] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658; Pianotist Co.’s Application 23 RPC 774 at 777.

[19] [1999] FCA 1020, [50]. These considerations by French J are a restatement of the principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

21.     Finally, in Tivo Inc v Vivo Corporation Pty Ltd, Dodds-Streeton J said:

The cases are not entirely consistent in relation to whether, and if so, which parts of words are more likely to be slurred, emphasised or misheard, and much appears to depend on the particular circumstances of, and the evidence led in, individual cases.[20]

[20] Tivo Inc v Vivo Corporation Pty Ltd [2012] FCA 252, [163] upheld on appeal.

22.     Having regard to all of those factors and bearing in mind, notably on this occasion, that is it the Opponent who carries the burden of proof but has put forward nothing that might rebut the Applicant’s evidence of industry practice[21], I find that the marks are not likely to confuse and are thus not deceptively similar.  It follows that s 44 has not been established.

[21] There being nothing in the Malcolm declaration to influence me otherwise.

Decision

23.     Section 55 relevantly provides:

55Decision

(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.

Note:For limitations see section 6.

24.     I have found that the Opponent has not established the ground of opposition it raised pursuant to s 44.  As a Delegate of the Registrar, I therefore order registration of the Trade Mark.

Costs

25.     The Applicant sought an award of costs in its favour.  I award costs against the Opponent under s 221 in line with Schedule 8 of the Trade Mark Regulations 1995.

Debrett Lyons
Hearing Officer
Delegate of the Registrar of Trade Marks
15 April 2021