Opposition by BOLERO Co. Ltd. under regulation 17A.32 of the Trade Marks Regulations 1995 (Cth) to extension of protection of trade mark number 2023970 (International Registration number 1477589) (Classes 5, 24,...

[2021] ATMO 105

TRADE MARKS ACT 1995

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

Re:Opposition by BOLERO Co. Ltd. under regulation 17A.32 of the Trade Marks Regulations 1995 (Cth) to extension of protection of trade mark number 2023970 (International Registration number 1477589) (Classes 5, 24, and 25) – C with drop device - in the name of RSD Holdings Limited.

Delegate:	Blake Knowles
Representation:	Opponent: FB Rice Pty Ltd.    Holder: AJ Park.
Decision:	2021 ATMO 105 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition pressed under ss 42(b), 44, 58, 60, and 62A – grounds under section 44 partially established – protection refused for Class 25 – protection to be extended for Classes 5 and 24.

Background

1. This is a decision on the opposition to extension of protection of an international registration (‘IRDA’) by BOLERO Co. Ltd. (‘Opponent’). Details of the IRDA are set out below:

   Trade mark number:   2023970 (International Registration number 1477589)

   ‘Trade Mark’  

   ‘Goods’Class 5: Napkins for incontinent persons; absorbent underwear for incontinent persons; absorbent garments for use by post-operative patients; catamenial products, namely absorbent underwear, sanitary panties, sanitary knickers, and sanitary pants; sanitary towels; breast pads; breast-nursing pads.

   Class 24: Textiles and substitutes for textiles; household linen; curtains of textile or plastic; fabric; fabrics for textile use; woven or non-woven textile fabrics; textile material; textile substitutes; mixed fibre fabrics; cotton base mixed fabrics; fabric substitutes; fabrics for interior decoration; waterproof mattress covers; absorbent mattress covers; mattress covers; textile goods for use as bedding; mattress protectors, bedding; sleeping bags; textile sheets; household linen; bath linen, except clothing; bed and table linen; wash cloths; towels of textile; upholstery fabrics; unfitted fabric furniture covers; furniture coverings of textile; furnishing fabrics; furnishing and upholstery fabrics; covers for cushions; absorbent fabric for covers for chair, seats, or cushions; textile fabrics for the manufacture of clothing; absorbent upholstery fabrics; textile fabrics for the use in the manufacturing of protective covers; textile fabrics for the use in the manufacturing of vehicle seat covers; textile fabrics for the use in the manufacture of soft furnishings for aeroplanes, those soft furnishings being seat covers, cushions, pillows, wall and floor coverings; moisture absorbent microfiber textile fabrics; lingerie fabric; lining fabric for footwear; labels of textile; cloths for removing make-up.

   Class 25: Clothing; sportswear; underwear; bras; absorbent clothing; absorbent sports clothing; absorbent childrens' clothing; absorbent underwear; absorbent underwear for children; sweat-absorbent undergarments; moisture-wicking clothing; moisture-wicking underwear and undergarments; gussets for underwear being parts of clothing; swim wear; maternity bras; nursing bras; maternity singlets.

   ‘Holder’ RSD Holdings Limited

   ‘Priority Dates’             21 November 2018            (Classes 5 and 25)

   17 May 2019   (Class 24)

2. The IRDA was examined and accepted for possible protection, and then subsequently advertised for opposition purposes on 7 November 2019. The Opponent filed notice of its intention to oppose protection on 22 November 2019, and a statement of grounds and particulars (‘SGP’) on 17 December 2019. The Holder subsequently filed a notice of its intention to defend the Trade Mark from opposition on 17 March 2020.

3. The parties had the opportunity to file evidence in accordance with the timetable set out in reg 5.14.[1] The Opponent filed Evidence in Support on 18 September 2020. The Holder filed Evidence in Answer on 23 December 2020. The Opponent did not file Evidence in Reply.

   [1] Unless otherwise stated, each reference to a section or regulation in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) or regulation of the Trade Marks Regulations 1995 (Cth).

4. The parties were given an opportunity to request a hearing. The Holder requested to be heard by written submissions only. The Opponent did not request a hearing or file written submissions. As such, I have decided this matter based on the particulars outlined in the SGP, the evidence filed, and the written submissions of the Holder.

Grounds and onus

1. The SGP nominated grounds of opposition under regulation ss 42(b), 44, 58, 60, and 62A.

2. The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Priority Dates.[3]

   [2] Pfizer Products Inc v Karam [2006] FCA 1663, 22 (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, 133 (Besanko, Jagot and Edelman JJ).

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

Evidence

1. The following evidence was filed:

   Evidence in Support

   Declaration of Kalin Ivanov, Director of Opponent, made on 16 September 2020, with Exhibits KI-1 to KI-24.

   Evidence in Answer
   Declaration of Frantisek Riha-Scott, Director of Holder, made on 22 December 2020, with Exhibits FRS-1 to FRS-12.

   Declaration of Gillian Mary Nelson, legal counsel for Holder, made on 22 December 2020, with Exhibits GMN-1 to GMN-2.

Evidence in Support

1. Mr Ivanov declares that the Opponent was established in Bulgaria in 1996 and is a global manufacturer of sugar free beverages and supplements. The Opponent’s products are aimed at providing healthy alternatives to soft drinks and beverages that are high in sugar and calories.   

2. Mr Ivanov declares that the Opponent is the Holder of two Protected International Trade Marks (‘Opponent’s Marks’) namely:

   Trade mark number: 1818966 (IR 1326960)
             Trade mark:             

   (‘B Logo’)

   Priority Date:           19 April 2016

   Goods/Services:        

Class 5: Dietetic substances adapted for medical use; vitamin drinks; vitamin preparations; nutritional additives for medical purposes

Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (except

paintbrushes); unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware; kitchen utensils not of precious metal; tableware, cookware and containers; cups and mugs; tableware not of precious metal; tableware made of terra-cotta; decanters; mugs; glasses (receptacles); bottles; drinking bottles for sports; siphon bottles for carbonated water; squeeze bottle [empty]; reusable plastic water bottles sold empty; reusable stainless steel water bottles sold empty; thermal insulated containers for food or beverage; ice buckets and coolers for wine and champagne; insulated bottles; cool bags; refrigerating bottles; portable coolers; corkscrews, bottle openers; picnic baskets, including dishes; plate holders; trivets (table utensils); non-electric coffee percolators; candlesticks not of precious metal; vases not of precious metal, lunch boxes; oil and vinegar cruets

Class 25: Headgear, clothing, footgear; T-shirts; caps

Class 30: Coffee, teas and substitutes therefor

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and

fruit juices; syrups and other preparations for making beverages

Class 33: Alcoholic beverages (except beers)

Class 41: Education; providing of training; entertainment; sporting and cultural activities

Class 43: Services for providing food and drinks

Trade mark number: 1741993 (IR 1279083)
          Trade mark:              (‘Composite Mark’)
          Priority Date:           19 March 2015

Goods:Class 33: Wine

Class 5: Dietetic substances adapted for medical use; vitamin drinks; vitamin preparations;  

nutritional additives for medical purposes

Class 30: Coffee, teas and substitutes therefor

Class 32: Mineral and aerated waters; fruit drinks and fruit juices; syrups and other preparations

for making beverages

1. Mr Ivanov states that the Opponent’s Marks were first used in Europe in 2015 and in Australia in January 2016. The Opponent’s Marks have been used in relation to beverages, supplements and nutritional additives, beverage containers, clothing, educational and entertainment events, online content (blogs and videos), and recipes. The Opponent’s Marks are promoted on the Opponent’s various websites, including its Australian website bolerodrinks.com.au, social media (including Facebook and Instagram), and in various third-party articles. Mr Ivanov also states that since 2016, the Opponent has sponsored various sporting and fitness events in Australia, in addition to sponsoring the Southern Districts Raiders Football Club in Sydney.

2. Mr Ivanov provides aggregated global sales and promotional expenditure from 2016-2018. The level of revenue and expenditure at a global level is reasonable. The Opponent also provides figures for the same period in Australia, which indicates that as of 2018, Australian sales and promotional expenditure form a relatively modest portion of total global sales and expenditure.  

3. Mr Ivanov provides dated examples of use of the Opponent’s Marks including in relation to beverages, powders, bottles, and clothing, in addition to other uses including on invoices and the Opponent’s Australian web site and social media. The examples prominently feature the B Logo, usually in close proximity to the BOLERO mark.  Mr Ivanov indicates that products are sold online and also through retail outlets, such as health food stores, supermarkets, fitness studios, gyms, pharmacies, petrol stations, wellness retreats and other retail outlets.

Evidence in Answer

1. Mr Riha-Scott declares that the Holder is ultimate holding company of Contifex Limited and Contifex Technology Limited. The CONTIFEX brand was launched in New Zealand in 2015 for a range of fashionable incontinence underwear. The CONTIFEX range includes absorbent moisture proof underwear, trunks, and nursing pads. Examples of the CONTIFEX products are annexed to the declaration. CONTIFEX products closely resemble standard underwear:

1. Products have been sold under the CONTIFEX brand in Australia since 2015. Annexed to the declaration are articles from various websites referring to the brand and website extracts from some third-party distributors. The products are also sold via the Australian website contifex.com.au, and promoted via social media including Facebook and YouTube, direct emails, and Google advertisements.   

2. Mr Riha-Scott explains that the Trade Mark was developed in April 2018, and is intended to convey the idea of liquid, with the ‘C’ representing CONTIFEX. Mr Riha-Scott also opines that droplet images are often used in relation to products related to water and liquid. He gives examples including logos for First Drop Wines and AquaMamma Australia.

3. Ms Nelson in her declaration states that she has conducted searches of the Australian Trade Marks Register for trade marks that include a drop outline or shape in classes 5, 21, 24, 25, 30, 32, 33, 41, and 43. The search results revealed over 3,000 trade marks. A sample of such trade marks are annexed to the declaration. Ms Nelson also annexes to the declaration the results of Google searches for drops and droplets, which indicate that such devices are used as trade marks (or parts thereof) in Australia for a variety of goods.

Discussion

Section 44

1. To establish grounds of opposition under s 44(1), the Opponent must rely on at least one pending or registered trade mark with a priority date earlier than the Priority Dates of the IRDA, and which is in the name of a person other than the Holder. The earlier mark must be substantially identical or deceptively similar to the Trade Mark. Further, the earlier mark must be filed or registered in respect of either goods that are the same or ‘of the same description’ as the Goods of the IRDA, or services that are closely related to the Goods of the IRDA.

2. The Opponent relies on the Opponent’s Marks as the basis for s 44 grounds.  Both of the Opponent’s Marks have priority dates that are earlier than the Priority Dates of the IRDA.

3. It is only necessary to consider the grounds of opposition under s 44 based on the Opponent’s B Logo. The Opponent’s Composite Mark contains other word and device elements aside from the B and drop device. These elements add additional points of difference when compared to the Trade Mark. Given the presence of these other elements, if I do not find the Trade Mark is substantially identical or deceptively similar to the B Logo, it follows that the Trade Mark is also not substantially identical or deceptively similar to the Composite Mark. In addition, the B Logo mark is protected for all of the goods for which the Composite Mark is protected. As such, the Opponent’s case under s 44 is at its highest when relying on the B Logo, and reliance on the Composite Mark does not advance the Opponent’s case any further.

4. I must first assess whether the Trade Mark is substantially identical to the B Logo. The test for whether two marks are substantially identical requires that they be assessed as follows:

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

5. I am satisfied that the Trade Mark is not substantially identical to the B Logo. The respective trade marks each contain a drop device and a single letter. However, given the single letter is different in each mark, the total impression that emerges from a side-by-side comparison is not one of resemblance.

6. I must now consider whether the Trade Mark is deceptively similar to the B Logo, and whether some or all of the Goods are the same or of the same description as any or all of the goods or services in respect of which the B Logo is protected. I note that the Goods appear to be entirely dissimilar and unrelated to the goods and services of the B Logo in Classes 5, 21, 30, 32, 33, and 41. I will therefore make my determination based on a comparison of the Goods with the Class 25 goods of the B Logo.

7. The test for whether trade marks are deceptively similar is broader than the test for whether they are substantially identical and requires that one trade mark so nearly resemble another so that it is likely to deceive or cause confusion.[5] In determining deceptive similarity, I am guided by the following principles:

-There must be a real, tangible danger of confusion, not just a mere possibility.[6] Likelihood of confusion can be established if a number of consumers would be caused to wonder whether the applicant’s goods or services come from some other source. It is enough if the ordinary person entertains a reasonable doubt.[7]

-The impression of the respective marks as a whole must be considered, including the size and prominence of word and device elements and their relationship to each other.[8] However, deceptive similarity can also be found where one mark uses an essential feature of the other.[9]

-Consumers may retain an imperfect recollection of a mark or its essential features.[10]

-It may be relevant that an element of the trade marks under consideration is descriptive. However, descriptiveness does not preclude a finding of deceptive similarity.[11]

-The impression of the mark on ordinary consumers is relevant, not the impression on those who are particularly perceptive or cautious, or those who are exceptionally careless or stupid.[12]

-It must be considered how the goods or services are ordinarily sold or provided.[13]

[5] Trade Marks Act 1995 (Cth) s 10.

[6] Southern Cross Refrigerating v Toowoomba Foundry (1954) 91 CLR 592, 595 (Kitto J).

[7] Coca‑Cola Co v All‑Fect Distributors Ltd [1999] FCA 1721, [39] (Black CJ, Sundberg and Finkelstein JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

[8] Optical 88 Ltd v Optical 88 Pty Ltd [2010] FCA 1380, [100] (Yates J); Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [91]-[103] (Moore, Sackville, and Emmett JJ).

[9] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 174-5 (Viscount Maugham); De Cordova v Vick Chemical Co (1951) 68 RPC 103, 105-6 (Lord Radcliffe).

[10] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville, and Emmett JJ).

[11] Lift Shop P/L v Easy Living Home Elevators P/L [2014] FCAFC 75, [64] (Besanko, Yates, and Mortimer JJ).

[12] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan J).

[13] Ibid.

1. The test for determining whether goods are of the same description is a practical judgement formed by looking at a number of factors, falling within the categories of the nature of the goods, their respective uses, and the trade channels through which they are sold, with no single factor being determinative. [14]

   [14] Re Jellinek’s Application (1946) 63 RPC 59, 70.

2. Whether there is a likelihood of confusion between two trade marks will depend to some extent on the goods for which they may be used. It is possible that a real, tangible, danger of confusion will occur if respective trade marks are used for identical or very similar goods, whereas the likelihood of confusion may be reduced if the goods are not so close. In Registrar of Trade Marks v Woolworths Limited (‘Woolworths’), French J stated:

   Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question.  It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services.  Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant’s marks would be likely to deceive or to cause confusion.[15]

   [15] [1999] FCA 1020, [40].

1. While French J was referring to a relationship between goods and services, the underlying principle can be soundly applied when determining deceptive similarity in the context of goods that are not the same, but may be of the same description.

2. The Holder has also referred to an opposition decision of the EUIPO involving the same parties and trade marks.[16] In that case, the Trade Mark and the B Logo were found by the EUIPO not to be confusingly similar. Further, the EUIPO also found that absorbent apparel for hygienic purposes in Class 5, and various textile goods in Class 24, were dissimilar to standard apparel in Class 25. I have considered the reasons given by the EUIPO. However, I must make my own decision according to principles and authorities under Australian law.  

   [16] Bolero Co. Ltd. v RSD Holdings Limited [2021] B3103043.  

3. Turning first to the assessment of deceptive similarity in relation to Class 25 of Goods, I consider that the Trade Mark is deceptively similar to the B Logo when considered in the context of the identical goods covered by the respective marks in Class 25 (noting that the B Logo has a broad claim for ‘clothing’ which would encompass all of the items in Class 25 of the Goods). Each mark consists of a single bold letter inside a very similar drop device, which is represented as a bold black outline. Further, the letters B and C are rhyming consonants that appear sequentially in the alphabet. The combination of these two factors, in the context notional use of the marks for identical goods, gives rise to a likelihood of confusion. There is a real, tangible, danger that a significant number of consumers may either only remember the particular visual impression of the mark as a whole (a single letter inside the outline of a drop) or may consider that the trade marks are otherwise related brands (for instance, secondary brands used for different ranges) used by the same trader.  

1. In reaching my finding in relation to Class 25, I note the Holder’s evidence and submissions regarding the ubiquity of water drop devices on the register and in the marketplace. I agree that water drop devices are not particularly distinctive, particularly in relation to goods that have some relationship to moisture. However, it is the combination of elements of similarity between the Trade Mark and the B Logo that has led to my finding of deceptive similarity, not merely the presence of the drop device.

2. Turning secondly to the assessment of deceptive similarity in relation to Class 5 of the Goods, these particular items are in the nature of sanitary and personal hygiene products, either in the form of a specialised absorbent pad, napkin, or towel, or a garment incorporating one of these devices. The primary purpose of these products is its personal hygiene purpose, namely, to absorb a significant concentrated amount of moisture (as opposed to merely absorbing sweat) and to allow the person using the product freedom to go about their daily life without fear of embarrassment or undue discomfort. These specialised garments are to some extent similar in nature and purpose to standard garments in Class 25. The respective products are each designed to be worn, and the Holder in particular has designed its underwear products to be fashionable and to some extent indistinguishable from standard garments.  Given these similarities, there is an argument that the Holder’s specialised garments in Class 5 are ‘of the same description’ as standard garments in Class 25. However, I am not satisfied that in the context of the two respective categories of products, the Trade Marks should be considered ‘deceptively similar’. If I am to make a practical judgement of the type referred to by French J in Woolworths, I would conclude that there is little likelihood of consumers being caused to wonder whether the respective Class 5 and Class 25 goods sold under the Trade Mark and B Logo respectively originate from the same source or are otherwise connected. The combination of differences in the respective marks and respective goods is sufficient for me to consider there is no real, tangible, danger of confusion occurring.        

3. Turning finally to the assessment of deceptive similarity in relation to Class 24 of the Goods, the Class 24 items are all in the nature of textiles and goods made from textiles. However, under the Nice Classification system, Class 24 does not include clothing, footwear, or headgear, notwithstanding that apparel is usually manufactured from textiles and textile substitutes. I consider that finished apparel in Class 25 clearly has a different nature and purpose, and is generally sold through different trade channels, to the unfinished textiles or finished non-apparel textile goods of the type that are covered under Class 24.

4. For the reasons given above, the Opponent has satisfied all of the requirements for the s 44(1) ground in relation to Class 25 of the Goods, but I am not satisfied that the ground is established in relation to Classes 5 and 24.

5. I also note that the Holder has not made any submissions regarding honest concurrent use under s 44(3) or prior and continuous use under s 44(4), nor is the evidence sufficient to determine the extent of any use of the Trade Mark by the Holder in Australia before the Priority Dates. I therefore do not consider that the provisions of ss 44(3) or 44(4) should be applied in relation to Class 25 of the Goods.

6. As I have found that grounds of opposition under s 44 are established based on the Opponent’s B Logo in relation to Class 25, I will now consider the other grounds of opposition in relation to the remaining goods in Classes 5 and 24.

Section 58

1. To establish this ground, the Opponent must show use in Australia by some person other than the Holder of a trade mark that is substantially identical to the Trade Mark[17], with such use being in relation to goods that are the ‘same kind of thing’ as the Goods.[18] The use of the trade mark relied on by the Opponent must have occurred before the Priority Dates, or before the date of first use of the Trade Mark in Australia by the Holder, whichever is earlier.

   [17] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495, 513.

   [18] Re Hicks Trade Mark (1897) 22 VLR 636, 640.

2. The Opponent relies on the Opponent’s Marks in pursuing this ground. However, I have already determined under s 44 that the Trade Mark is not substantially identical to the B Logo or the Composite Mark.  

3. As the Opponent has not established prior use of a substantially identical trade mark by a person other than the Holder, the s 58 ground is not established.

Section 60

1. To establish this ground, an Opponent must establish a reputation in another trade mark existing in Australia before the Priority Dates. The Opponent must then prove that because of this reputation, use of the Trade Mark is likely to deceive or cause confusion.

2. It is not necessary for the Opponent to establish that the trade mark relied on as the basis for this ground and the Trade Mark are deceptively similar, or that the relevant goods of the parties are similar. However, the greater the similarities in the respective trade marks and goods, the more likely the existence of a reputation in the trade mark relied on by an Opponent is to give rise to a likelihood of confusion. 

3. In McCormick & Co Inc v McCormick, Kenny J considered the requirements for establishing reputation. Her Honour said:

   It may be correct to say, as counsel for Mary McCormick did, that the volume of the company’s sales does not directly establish that a significant number of people held the McCormick & Co marks, as distinct from the company’s products, in favourable regard. It does not follow, however, that the volume of sales and promotional expenditures are irrelevant. As Hearing Officer Thompson observed in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 (“Hugo Boss”) at 436:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC ¶91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.[19]

   [19] McCormick & Company Inc v McCormick [2000] FCA 1335, [85]-[86].

4. In Rodney Jane Racing Pty Ltd v Monster Energy Company it was observed that:

   The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[20]

   [20] [2019] FCA 923, [83] (O’Bryan J).

5. The Opponent relies on reputation in the Opponent’s Marks as the basis for s 60. However, I am not satisfied based on the evidence that there is a sufficient reputation in the Opponent’s Marks at the Priority Dates to determine whether there is a likelihood of confusion. The revenue and promotional expenditure figures provided indicate that the Opponent is in the process of developing reputation in Australia, but the extent of that reputation is difficult to quantify and would in any event likely be limited to beverage products. Even if the Opponent had an extensive reputation in the Australian market, this would likely be in the field of beverages and it would seem unlikely that this would give rise to a likelihood of confusion if the Trade Mark was used in relation to the specific products in Classes 5 and 24 of the Goods. 

6. As the Opponent has not established a likelihood of confusion based on reputation in the Opponent’s Marks, the s 60 ground must fail.

Section 42(b)

1. The Opponent under s 42(b) alleges consumers would be misled or deceived by use of the Trade Mark based on reputation in the Opponent’s Marks. As such, the Opponent suggests this behaviour would constitute a breach ss 18 and 29 of the Australian Consumer Law and the tort of passing off.

2. For the same reasons as given under s 60, I am not satisfied that consumers would be misled or deceived by use of the Trade Mark. Therefore, s 42(b) is not established.

Section 62A

1. Whether an application was made in bad faith requires consideration of a subjective and an objective element. For the subjective element I must form a view of the actual knowledge of the Holder at the time the IRDA was filed. The objective element then asks, would a person adopting proper standards, knowing what the Holder knew, regard the act of filing the Holder as being in bad faith? This is to be assessed by determining whether the act of filing ‘falls short of the standards of acceptable commercial behaviour’ in the relevant industry.[21]  I am without evidence as to any standards of behaviour peculiar to this industry, so I proceed in my assessments here based on general commercial behaviour.

   [21] DC Comics v Cheqout Pty Ltd (2013) 212 FCR 194, 206 [62] (Bennett J).

2. The Opponent in the SGP alleges that the Holder could or should have been aware of the Opponent’s Marks, and therefore the filing of a deceptively similar trade mark for the same or similar goods constitutes an act of bad faith.

3. The Holder’s evidence establishes that the Trade Mark was chosen because the letter ‘C’ forms the first letter of the CONTIFEX brand, and a drop symbol indicates a connection with water or moisture.  These reasons for adopting the Trade Mark appear to be logical from a branding perspective and I can also see no reason why the Holder should have been aware of the Opponent’s Trade Marks, or even if aware, would have desired to associate its brand with the Opponent in some way (given the very different fields in which the respective parties operate).

4. In view of the above, I am not satisfied that the filing of the IRDA was in bad faith, and the ground of opposition under s 62A is not established.

Decision and costs

1. Regulation 17A.34N provides:

   17A.34N  Decision on opposition

   (1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

   (b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

   (2)       The Registrar must notify the International Bureau of the Registrar’s decision.

1. I am satisfied that a ground of opposition has been established under s 44 in respect of the following goods:

   Class 25: Clothing; sportswear; underwear; bras; absorbent clothing; absorbent sports clothing; absorbent childrens' clothing; absorbent underwear; absorbent underwear for children; sweat-absorbent undergarments; moisture-wicking clothing; moisture-wicking underwear and undergarments; gussets for underwear being parts of clothing; swim wear; maternity bras; nursing bras; maternity singlets.

1. That being the case, I extend protection of the IRDA in respect of the following goods or services:

Class 5: Napkins for incontinent persons; absorbent underwear for incontinent persons; absorbent garments for use by post-operative patients; catamenial products, namely absorbent underwear, sanitary panties, sanitary knickers, and sanitary pants; sanitary towels; breast pads; breast-nursing pads.

Class 24: Textiles and substitutes for textiles; household linen; curtains of textile or plastic; fabric; fabrics for textile use; woven or non-woven textile fabrics; textile material; textile substitutes; mixed fibre fabrics; cotton base mixed fabrics; fabric substitutes; fabrics for interior decoration; waterproof mattress covers; absorbent mattress covers; mattress covers; textile goods for use as bedding; mattress protectors, bedding; sleeping bags; textile sheets; household linen; bath linen, except clothing; bed and table linen; wash cloths; towels of textile; upholstery fabrics; unfitted fabric furniture covers; furniture coverings of textile; furnishing fabrics; furnishing and upholstery fabrics; covers for cushions; absorbent fabric for covers for chair, seats, or cushions; textile fabrics for the manufacture of clothing; absorbent upholstery fabrics; textile fabrics for the use in the manufacturing of protective covers; textile fabrics for the use in the manufacturing of vehicle seat covers; textile fabrics for the use in the manufacture of soft furnishings for aeroplanes, those soft furnishings being seat covers, cushions, pillows, wall and floor coverings; moisture absorbent microfiber textile fabrics; lingerie fabric; lining fabric for footwear; labels of textile; cloths for removing make-up.

1. The IRDA may then proceed to protection one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that protection shall not occur until the appeal has been decided or discontinued and the disposition of the IRDA be in accordance with the Court’s order or direction.

2. The Holder has requested an award of costs in its favour. However, as both parties have had a measure of success, I decline to award costs.

Blake Knowles

Hearing Officer

Delegate of the Registrar of Trade Marks

21 September 2021