Opposition by Judith Belushi Pisano to registration of trade mark application number 2059263 (Class 35) – BOOZE BROTHERS with device - in the name of Saturno's Admin Pty Ltd.

[2022] ATMO 42

TRADE MARKS ACT 1995

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

Re:Opposition by Judith Belushi Pisano to registration of trade mark application number 2059263 (Class 35) – BOOZE BROTHERS with device - in the name of Saturno's Admin Pty Ltd.

Delegate:	Blake Knowles
Representation:	Opponent: Allens Patent & Trade Mark Attorneys. Applicant: Madderns Pty Ltd.
Decision:	2022 ATMO 42 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 42(b), 44, 58, 60, and 62A nominated – no ground established – trade mark to proceed to registration.

Background

1. This is a decision on the opposition by Judith Belushi Pisano (‘Opponent’) to registration of the trade mark number 2059263 (‘Application’) filed by Saturno's Admin Pty Ltd (‘Applicant’) on 2 January 2020 (‘Relevant Date’) for the following trade mark and services:

   (‘Trade Mark’)

   Class 35:        Retailing of goods (by any means); Wholesaling of goods (by any means); The bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods; Intermediary business services relating to the commercialisation of goods

   (‘Applicant’s Services’)

2. The Application was examined, accepted for possible registration, and subsequently advertised for opposition on 3 June 2020.  The Opponent filed notice of her intention to oppose registration of the Trade Mark on 3 August 2020 and a statement of grounds and particulars (‘SGP’) on 3 September 2020. The Applicant filed a notice intention to defend the Trade Mark from opposition on 25 June 2021.

3. The parties were given the opportunity to file evidence in accordance with the timetable set out reg 5.14.[1] Neither party filed evidence.

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

4. The parties were given the opportunity to either request an oral hearing or to be heard based on written submissions. Neither party requested to be heard. The Applicant then requested that the matter be decided based on the materials filed and paid the appropriate fee. As such, I have decided this matter based solely on the particulars set out in the SGP.

   Grounds and onus

5. The SGP nominates grounds of opposition under ss 42(b), 44, 58, 60, and 62A.

6. 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 Relevant Date.[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).

7. The grounds nominated under ss 42(b), 58, 60, and 62A all rely in some way or another on evidence relating to the use of a trade mark by the Opponent or some other person not being the Applicant. Without such evidence, the criteria under the Act and case law authorities required to be met for success under these grounds cannot be established. As the Opponent has not filed any evidence, the Opponent cannot discharge its evidentiary burden, and I therefore find that the grounds under ss 42(b), 58, 60, and 62A are not made out.

8. With regards to s 44, the Opponent must nominate one or more pending or registered trade marks as the basis for this ground of opposition. The Opponent in the SGP nominates the following registered trade marks (‘Opponent’s Registrations’):

   Trade mark number:              575839

   Trade mark:  

   (‘Opponent’s Composite Mark’)       

   Trade mark number:              575841

   Trade mark:  BLUES BROTHERS

   (‘Opponent’s Word Mark’)

9. The Opponent’s Registrations both have a priority date of 27 November 1991, and each is registered in respect of Class 25: Clothing, namely casual attire and headgear, and Class 42: Bar and restaurant services. 

   Discussion

   Section 44

10. To establish the ground of opposition under s 44(2), the Opponent must rely on at least one pending or registered trade mark that has a priority date earlier than the Relevant Date, and which is in the name of a person other than the Applicant. The earlier mark/s must be substantially identical with, or deceptively similar to, the Trade Mark. Further, the earlier mark/s must be filed or registered in respect of either services that are similar to the Applicant’s Services, or goods that are closely related to the Applicant’s Services.

11. The Opponent relies on the Opponent’s Registrations as the basis for the ground under s 44. Each of the Opponent’s Registrations has a priority date that is earlier than the Relevant Date. As such, I must determine whether the Trade Mark is substantially identical with, or deceptively similar to, the Opponent’s Word Mark and/or the Opponent’s Composite Mark.

12. The test for whether two marks are substantially identical requires that they 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).

13. I am satisfied that the Trade Mark is not substantially identical with the Opponent’s Word Mark. The Opponent’s Word Mark consists of two words BLUES BROTHERS, whereas the Trade Mark consists of the words BOOZE BROTHERS and a device element. Given the different words BOOZE and BLUES, and the presence of the device element in the Trade Mark, when assessed side by side, the total impression that emerges from a comparison is not one of resemblance.

14. I am also satisfied that the Trade Mark is not substantially identical to the Opponent’s Composite Mark. While there is some conceptual similarity in the respective device elements (both being stylised representations of two individuals wearing a hat and sunglasses), the presence of the words BOOZE BROTHERS in the Trade Mark and the words JAKE and ELWOOD in the Opponent’s Composite Mark means that the total impression that emerges from a side by side comparison is not one of resemblance.   

15. 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 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 (No 2) [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.

16. Turning first to the assessment of deceptive similarity between the Trade Mark and the Opponent’s Word Mark, I note that the words BOOZE BROTHERS in the former and BLUES BROTHERS in the latter both share a word and overall have some overall aural similarity. Further, it would be obvious to many consumers that the Trade Mark is a pun inspired by the classic 1980 film The Blues Brothers. However, the words BOOZE and BLUES have different meanings, and the trade marks overall have appreciable visual, aural, and conceptual differences. While a consumer seeing the Trade Mark may think of the Opponent’s Word Mark due to their knowledge of the film, I do not consider consumers familiar with the Opponent’s Word Mark would be caused to wonder whether the Applicant’s Services originate from or have some connection with the Opponent. I think it more likely that any consumer familiar with the film would recognise that the trade mark has been adopted for its value as a clever and memorable pun.

17. Turning next to the assessment of deceptive similarity between the Trade Mark and the Opponent’s Composite Mark, both marks share a conceptually similar device. However, visually, the device in the Trade Mark is much simpler (consisting of two hats and two pairs of sunglasses), whereas the device in the Opponent’s Composite Mark features two more detailed images of two individuals in hats, sunglasses, collared shirts, and ties. The Opponent’s Composite Mark also features the words ELWOOD and JAKE, which is another point of differentiation. Overall, given the strong visual and aural differences, I am not satisfied that a consumer relying on imperfect recollection and familiar with the Opponent’s Composite Mark would be caused to wonder whether the Trade Mark was associated with the Opponent in some way.

18. I also note that the Applicant is the owner of a similar registered trade mark (trade mark number 441716) for Class 42: Services in the retail trade of selling beer, wines and spirits, drinks, carbonated beverages, fruit juices and other refreshments, the mark being:

19. The Applicant’s earlier registration has a priority date of 5 March 1986 which is earlier than the priority date of either of the Opponent’s Registrations. The long period of co-existence of the Opponent’s Registrations and the Applicant’s earlier registration is another factor favouring registration of the Trade Mark in this instance.

20. For the reasons given above, and in the absence of submissions from the Opponent, I am not satisfied that the Trade Mark is deceptively similar to either the Opponent’s Word Mark or the Opponent’s Composite Mark, and the ground of opposition under s 44 is not established.

    Decision

21. I find that the Opponent has failed to establish any of the grounds of opposition nominated in the SGP.  The Trade Mark may proceed to registration not less than one month from the date of this decision. 

22. If the Registrar is served with a notice of appeal, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

    Blake Knowles

    Hearing Officer

    24 March 2022