Opposition by Deckers Outdoor Corporation to registration of trade mark application number 2024552 (class 25) – UGG MADE IN AUSTRALIA COMFORT ME – in the name of GHN Trading Pty Ltd

[2021] ATMO 151

TRADE MARKS ACT 1995

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

Re:Opposition by Deckers Outdoor Corporation to registration of trade mark application number 2024552 (class 25) – UGG MADE IN AUSTRALIA COMFORT ME – in the name of GHN Trading Pty Ltd

Delegate:	Nicholas Barbey
Representation:	Opponent: K&L Gates Applicant: Self-represented
Decision:	2021 ATMO 151 Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42, 44, 58, 60, 62A and regulation 4.15A of the Trade Mark Regulations 1995 (Cth) pursued – regulation 4.15A established – registration refused

Background

1. This decision concerns an opposition filed by Deckers Outdoor Corporation (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:

   Trade Mark:  (‘Trade Mark’)

   Application number:              2024552

   Applicant:  GHN Trading Pty Ltd (‘Applicant’)

   Filing Date:  1 August 2019

   Specification:  Class 25: boots; lace boots; ankle boots; footwear for babies; footwear for men; footwear for women; infants' footwear; shoes for casual wear; half-boots; shoes; leather shoes; footwear; waterproof boots; casual footwear; footwear for children; leather shoes; all of the aforementioned being made in Australia (‘Goods’)

2. Acceptance of the trade mark application was advertised in the Australian Official Journal of Trade Marks on 2 January 2020. The Opponent filed a notice of intention to oppose registration of the Trade Mark on 27 February 2020 followed by a Statement of Grounds and Particulars (‘SGP’) on 23 March 2020. The Applicant filed a notice of intention to defend on 11 June 2020.

3. Evidence in Support (‘EIS’) was filed by the Opponent and the Applicant filed Evidence in Answer (‘EIA’). A hearing by way of written submissions was subsequently requested with submissions being filed by the Opponent on 23 August 2021 (‘Opponent’s Submissions’) and by the Applicant on 29 August 2021 (‘Applicant’s Submissions’).

4. The matter has been allocated to me, a delegate of the Registrar of Trade Marks, and I am to decide the opposition as required by s 55 of the Act. In doing so I take account of the above detailed material. This material comprises the written record.

   Grounds of opposition, onus and standard of proof

5. The SGP nominated grounds of opposition under ss 42, 44, 58, 60 and 62A of the Act and reg 4.15A of the Trade Mark Regulations 1995 (Cth) (‘Regulations’). To be successful in this opposition, the Opponent bears the onus of establishing at least one of these grounds.[1] If a ground of opposition is established in relation to all of the Goods, consideration of the remaining grounds is not required.

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

6. The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 1 August 2019, being both the filing and priority date of the Trade Mark.

   [2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot

   Evidence

7. The following declarations were filed as evidence:

EIS

• Declaration made on 16 September 2020 by Jonathan Ariel Feder (Partner, K&L Gates) with Annexures JAF-1 to JAF-4 (‘Feder Declaration’).
• Annexure JAF-2 contains:
• Declaration made on 13 February 2013 by Constance X. Rishwain (President of the Opponent’s UGG Australia division) with Exhibits CR-1 to CR-32.
• Declaration made on 5 November 2014 by Constance X. Rishwain with Exhibits CR-33 to CR-52.
• Annexure JAF-3 contains a declaration made on 1 November 2017 by Kylie Joyce (Brand Manager at True Alliance Brands Pty Ltd) with Exhibits KJ-1 to KJ-45.
• Annexure JAF-4 contains a declaration made on 2 December 2019 by Lisa Bereda (Assistant General Counsel of the Opponent’s Brands and Corporate Governance) with Annexures LB-7 to LB-8 and Confidential Annexure LB-9.
• Annexure LB-8 contains a declaration made by Lisa Bereda on 8 September 2017 with Exhibits LB-1 to LB-6.

EIA

• Declaration made on 1 December 2020 by Henry Nour (Director of the Applicant) with Annexures CM-1 to CM-3 (‘Nour Declaration’).

EIS

1. According to the Feder Declaration, the Opponent owns numerous trade marks in Australia which feature the word ‘UGG’. Relevantly, the Opponent’s portfolio includes the following registrations and protected international trade marks (collectively ‘Opponent’s Marks’):

Number	Trade Mark	Owner/Holder	Class	Priority date
785466	Deckers Outdoor Corporation	Class 25: Footwear, including boots, shoes, and clogs	12 February 1999
1065295	Deckers Outdoor Corporation	Class 25: Men's, women's and children's clothing and outerwear including coats, jackets, ponchos, vests, sweaters, sweat suits, sweatshirts, T-shirts, shorts, mittens, handwarmers, scarves, belts, pyjamas, robes, loungewear, sleep shirts, daywear, underwear, thermal underwear; women's clothing including blouses, tops, dresses, skirts, muffs, nightgowns, lingerie; children's buntings; men's, women's and children's headwear including caps, visors, earmuffs, hats	18 July 2005
1077762 (IR 860445)	Deckers Outdoor Corporation	Class 18: Sheepskin handbags, book bags, carry-all bags, carry-on bags, clutch bags, duffle bags, leather shopping bags, overnight bags, school bags, shoe bags for travel, shoulder bags, tote bags, travel bags, backpacks, briefcases, daypacks, fanny packs, handbags, knapsacks, luggage, pocketbooks, purses, satchels, waist packs, athletic bags, beach bags, sports bags, suit bags, wallets, key cases	21 January 2005
1362324 (IR 1037027)	Deckers Outdoor Corporation	Class 25: Clothing, namely sweaters, shirts, pants, shorts, skirts, coats, jackets, vests, ponchos, snow suits, scarves, muffs, mittens and gloves; headwear; children's buntings	30 March 2010
1671455 (IR 1233373)	Deckers Outdoor Corporation	Class 25: Footwear	4 December 2014

1. The Feder Declaration annexes five additional declarations which the Opponent filed as evidence in unrelated matters. Broadly speaking, these declarations outline the Opponent’s historical use of various trade marks incorporating the word ‘UGG’. However, for the reasons given below in relation to the reg 4.15A ground, detailed discussion of this evidence is not required.

   EIA

2. The Nour Declaration contains what are essentially submissions regarding the alleged dissimilarities between the Trade Mark and protected international trade mark number 1362324 (‘Logo Mark’).[3] Mr Nour explains that ‘comfort me’ is the name of his family’s business and the word ‘UGG’ is descriptive of a ‘fleecy lined boot with an untanned upper’. Mr Nour claims that the Opponent’s products are not Australian made and the Logo Mark can be distinguished from the Trade Mark which explicitly describes the Goods as being made in Australia.

   [3] Relevant details of which are set out at [8] of this decision.

3. The Nour Declaration also contains submissions that the Opponent has not been granted an exclusive right to use the word ‘UGG’. In Mr Nour’s opinion, this is reflected by the numerous trade marks incorporating the word ‘UGG’ which have been entered in the Australian Register of Trade Marks (‘Register’) before and after the priority dates of the Opponent’s Marks.

   Discussion

   Regulation 4.15A

4. The Opponent’s Submissions identified the Opponent’s Marks as underpinning this ground of opposition. For reasons that will become apparent, it is only necessary to consider one of these trade marks to establish this ground. The following discussion will therefore focus on a comparison of the Trade Mark and the Logo Mark.

5. Regulation 4.15A of the Regulations relevantly provides:

   Grounds for rejection--trade mark identical etc to trade mark protected under Madrid Protocol

   (1) For section 189A of the Act, and subject to subregulations (3) and (5), 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 protected international trade mark; or

   (ii) a trade mark in respect of which the Registrar has received notification of an IRDA;

   held by another person in respect of similar goods or closely related services; 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 other trade mark in respect of the similar goods or closely related services.

   …

   (3) If, in a case mentioned in subregulation (1) or (2), the Registrar is satisfied:

   (a) that there has been honest concurrent use of the 2 trade marks; or

   (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.

   …

   (5) If, in a case mentioned in subregulation (1) or (2), the Registrar is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a) beginning before the priority date for the other trade mark in respect of:

   (i) the similar goods or closely related services; or

   (ii) the similar services or closely related goods; and

   (b) ending on the priority date for the registration of the applicant's trade mark;

   the Registrar must not reject the application because of the existence of the other trade mark.

6. To establish this ground of opposition, the Logo Mark must satisfy the following requirements:

   (i)it is in the name of a person other than the Applicant;

   (ii)it has a priority date which is earlier than the Trade Mark’s priority date;

   (iii)it is in respect of goods which are similar to the Goods; and

   (iv)it is substantially identical with or deceptively similar to the Trade Mark.

7. The Opponent is the holder of the Logo Mark with a priority date of 30 March 2010 which is earlier than 1 August 2019. Requirements (i) and (ii) above are satisfied.

8. The Act defines goods as being similar to other goods if they are the same or are of the same description.[4] The guiding factors used to determine whether goods are similar include:

   the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade.[5]

   [4] Act s 14(1).

   [5] Application by John Crowther and Sons (Milnsbridge) Ltd (1948) 65 RPC 369, 372.

9. Here, the Logo Mark is protected in respect of various articles of clothing including pants, shirts and headwear. These products are similar to the Goods which effectively claims all footwear. Clothing and footwear products share the same trade origins, are sold via the same trade channels and have the same nature and use.[6] This convergence is illustrated by fast fashion companies such as H&M and Zara who offer an extensive range of clothing and footwear products. Likewise, sportswear companies such as Nike and Adidas together with luxury fashion houses such as Louis Vuitton and Hermès also provide both products. In short, clothing and footwear are clearly goods of the same description and thus are similar for the purposes of the Act. Requirement (iii) as set out at [14] of this decision is satisfied.

   [6] See, eg, Hugh Caswell Dinning v New Balance Athletic Shoe Inc [1992] ATMO 54; Chloe SA v Lin Australia Pty Ltd [2006] ATMO 10, [12].

10. Accordingly, establishing this ground of opposition turns on satisfying requirement (iv) as detailed at [14] of this decision. The long settled test for ‘substantial identity’ was set out by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):

    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.[7]

    [7] [1963] HCA 66, [12] (‘Shell’).

11. In Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd, the Full Court of the Federal Court remarked that:

    A side-by-side comparison of two marks is a studied comparison. It highlights the differences between the marks just as much as it shows their sameness, in order to reach a conclusion as to whether the two marks are, in fact, substantially identical.[8]

    [8] [2020] FCAFC 186, [98] (Middleton, Yates and Lee JJ).

12. The trade marks are reproduced below:

Trade Mark Logo Mark

1. The Opponent contends that the Logo Mark and Trade Mark are substantially identical because ‘UGG’ is the essential feature of each trade mark.[9] In the Opponent’s view, the only difference between the trade marks is that the Trade Mark ‘contains words in a significantly smaller font under the central part of the mark’.[10] Conversely, the Applicant submits that the Trade Mark is dissimilar to the Logo Mark because the former is comprised of three separate components whereas the latter consists of a single word with a pronounced middle letter.[11]

   [9] Opponent’s Submissions, [32].

   [10] Ibid.

   [11] Applicant’s Submissions, [2(a)].

2. In my assessment, the Trade Mark is not substantially identical to the Logo Mark. On a side by side comparison, the additional elements depicted in the Trade Mark together with the differences in their presentation are readily apparent. The Trade Mark is comprised of three separate components: ‘UGG’, ‘made in australia’ and ‘comfort me’. These components are stacked atop of one another with the size of each component deceasing from top to bottom. Notably, ‘comfort me’ is not merely a descriptive element in respect of clothing and footwear. In contrast, the Logo Mark is constituted by a solitary three letter word that emphasises the middle ‘G’. While the ‘UGG’ element in each trade mark utilises partially overlapping letters, they do so in differing ways. In the Trade Mark, the ‘UGG’ letters overlap one another from right to left, whereas in the Logo Mark the middle letter overlaps the adjacent letters. The aforementioned differences contribute to a total impression of dissimilarity emerging from a studied comparison of the trade marks and precludes a finding of substantial identity.

3. Section 10 of the Act provides that ‘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’. The assessment of deceptive similarity was considered in Shell by Windeyer J who stated:

   The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[12]

   [12] Shell (n 7) [13].

4. More recently, the Full Court of the Federal Court in Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel (‘Combe’) explained:

   The distinction between consideration of whether one mark is deceptively similar to another, rather than substantially identical, lies in the point of emphasis on the impression or recollection which is carried away and retained of the registered mark. In this context, allowance must be made for the human frailty of imperfect recollection.[13]

   [13] [2021] FCAFC 8, [27] (McKerracher, Gleeson and Burley JJ) (‘Combe’). See also Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235, [64] (Nicholas, Yates and Burley JJ).

5. The Opponent asserts that the Trade Mark differs to the Logo Mark only in respect of ‘non-essential and minor features’.[14] It alleges that deception or confusion is ‘extremely likely’ because ‘UGG’ is the memorable feature of each trade mark. The Applicant disputes this characterisation pointing out that ‘UGG’ is a descriptive word and the Trade Mark contains additional components. In the Applicant’s view, the subsequent registration of numerous trade marks containing the word ‘UGG’, despite the existence of the Opponent’s Marks on the Register, fortifies its position that the Trade Mark is not deceptively similar to the Logo Mark.

   [14] Opponent’s Submissions, [36].

6. Evidently, the central point of contention concerns how ‘UGG’ should be treated for the purposes of assessing deceptive similarity. Specifically, the Applicant contends that a dangerous precedent would be set if the Trade Mark and the Logo Mark were determined to be deceptively similar.[15] The Applicant’s Submissions emphasise that ‘UGG’ is a descriptive word which the Opponent should not be allowed to monopolise. I accept that ‘UGG’ has previously been determined to be descriptive of footwear[16] and, as a general principle, descriptive elements of a trade mark should be afforded less weight for the purposes of comparison.[17]

   [15] Applicant’s Submissions, [2(g)].

   [16] See Deckers Outdoor Corporation v B&B McDougal [2006] ATMO 5, [34]. See also Australian Black Sheep Pty Ltd v Australian Ugg Pty Ltd [2020] ATMO 119, [15]; Kenny Ng & Peter Wu v Aussie Dazzling Life Pty Ltd [2018] ATMO 136, [19].

   [17] Re Broadhead's Application (1950) 67 RPC 209, 215 (Evershed MR).

7. Nevertheless, as the Full Court observed in Combe, the ‘authorities do not say that where there is a common descriptive element in marks that component is to be ignored for the purposes of comparison’.[18] The Logo Mark has been extended protection in Australia. This cannot be derogated from or simply ignored on the basis that the Logo Mark consists of a descriptive word. By the same token, the scope of protection afforded to the Logo Mark must be construed narrowly. This is because the protection necessarily resides in the stylised presentation of the word ‘UGG’ and not the word itself.

   [18] Combe (n 13) [78].

8. The Trade Mark and the Logo Mark share striking visual similarities. The presence of ‘made in australia’ in the Trade Mark does not materially differentiate it from the Logo Mark because this component describes the geographical origin of the goods and it is presented beneath ‘UGG’ in a noticeably smaller font size. Meanwhile, the minimal font size and subsidiary positioning of ‘comfort me’ is such that consumers may not even recall this component in any specific detail given its diminished significance. Further, the expression ‘comfort me’ is not particularly distinctive as it simply alludes to the goods providing comfort to the consumer.

9. In my view, ‘UGG’ forms the prominent component of each trade mark given its size and central positioning. Ordinarily, the commonality of this descriptive word between the trade marks would be insufficient to sustain a finding of deceptive similarity. Greater resemblance between the trade marks is invariably required. In this instance, it is the specific manner in which ‘UGG’ has been presented that elevates the similarity of the trade marks beyond this baseline commonality. In each trade mark, ‘UGG’ is rendered in an identical font and the letters partially overlap one another. The difference in how the letters overlap[19] is unlikely to be precisely recalled given the test for deceptive similarity is based on an overall imperfect impression which does not involve a studied comparison of the trade marks.[20] This reasoning applies equally with respect to the emphasised ‘G’ in the Logo Mark. It follows that the ‘UGG’ component of each trade mark is largely indistinguishable when allowance for imperfect recollection is made.

   [19] As discussed at [22] of this decision.

   [20] Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd [2020] FCAFC 186, [99] (Middleton, Yates and Lee JJ).

1. Tellingly, the Logo Mark is devoid of any additional components that would alter the overall impression it conveys from that which appears in the Trade Mark. By default, the Logo Mark is likely to be pronounced by consumers as simply the word ‘UGG’ despite its stylised presentation. In a similar vein, the idea conveyed by the Logo Mark is that of a type of footwear. Given the prominence of ‘UGG’ within the Trade Mark, the trade marks therefore share a degree of aural and conceptual similarity notwithstanding the additional components included in the Trade Mark. Naturally, this amplifies the potential for confusion between the trade marks.

2. The nature of the conflicting goods is also relevant in considering whether there is a likelihood of deception or confusion. Here, the goods in conflict are clothing and footwear products. It has been recognised that the visual impact of a trade mark takes on more significance in this context because clothing is typically selected upon visual inspection rather than by verbal request.[21] In my view, the widespread proliferation of online clothes shopping in which transactions occur without any need for verbal interaction reinforces this point. Given the trade marks share striking visual similarities, I consider the nature of the goods further accentuates the potential for deception or confusion between the trade marks.

   [21] Taiwan Yamani Inc v Giorgio Armani SpA (1989) 17 IPR 92, 96.

3. Accordingly, when the trade marks are considered as wholes, I am satisfied that an ordinary consumer with an imperfect recollection of the Logo Mark would at the very least be caused to wonder whether similar goods bearing the Trade Mark come from the same source. As such, I am satisfied that a real tangible danger of confusion between the Trade Mark and the Logo Mark exists. Requirement (iv) as set out at [14] of this decision is thus satisfied.

4. The Applicant has not filed any evidence which would permit a finding of honest concurrent use or prior use under the Regulations.[22] Nor has my attention been drawn to any other circumstances under reg 4.15A(3)(b) of the Regulations which would make it proper to accept the application. To this end, the Applicant’s reliance on the state of the Register in relation to trade marks incorporating the word ‘UGG’ is not persuasive given the only similarity these trade marks share with the present comparison is the descriptive word ‘UGG’. In any event, each case turns on its own facts and very little insight can be gleaned from the state of the Register in the present circumstances.   

   [22] Regulations regs 4.15A(3)(a) and 4.15A(5).

5. For the avoidance of doubt, this finding of deceptive similarity is not based on the mere presence of the word ‘UGG’ in each trade mark. The Logo Mark does not confer upon the Opponent an exclusive right in this unembellished and descriptive word. Rather, the real tangible danger of confusion arises from the striking and unique similarities in the stylised presentation of ‘UGG’ that appears within each trade mark.

6. The reg 4.15A ground of opposition has been established in respect of all the Goods.

   Decision

7. 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.

8. The Opponent has established the reg 4.15A ground of opposition in relation to all of the Goods. As such, I refuse to register trade mark application number 2024552.

   Costs

9. The Opponent sought costs. Costs usually follow the event. Accordingly, I award costs against the Applicant per s 221 of the Act in the amounts set out in Schedule 8 of the Regulations.

   Nicholas Barbey
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   8 December 2021

   
   

and Edelman JJ).