Opposition by Macy's Merchandising Group Inc to registration of trade mark application 1764113 (24) – STYLE & CO

[2018] ATMO 135

TRADE MARKS ACT 1995

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

ReOpposition by Macy's Merchandising Group Inc to registration of trade mark application 1764113 (24) – STYLE & CO - in the name of Sheertex Pty Ltd

Delegate:                 Robert Wilson

Representation:       Opponent: Malcolm Bell of Phillips Ormond Fitzpatrick

Applicant: Andrew Sykes of Counsel, instructed by Actuate IP

Decision:                   2018 ATMO 135

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 44 considered – textile goods similar to clothing, footwear and head gear – ground of opposition established – registration refused

Background

1. This decision concerns an opposition brought by Macy's Merchandising Group Inc (‘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 in the name of Sheertex Pty Ltd (‘the Applicant’):

Application Number:	1764113
Filing Date:	11 April 2016
Goods:	Class 24: Textiles; Textile goods; Bed coverings; Bed sheets; Pillow cases; Bed spreads; Comforters; Quilts; Quilt covers; Cushion covers; Curtains; Drapes; Table covers; Table napkins of textile; Towels (textile); Bath towels; Face towels of textile; Tea towels; Table linen (not of paper); Linens; Beach towels; Quilted blankets (bedding); Valanced bed sheets; Quilts filled with down; Quilts filled with feathers; Quilt bedding mats; Glass-cloth (towels); Golf towels; Terry towels  (‘the Applicant’s goods’)
Trade Mark:	STYLE & CO	(‘the Trade Mark’)

1. On 1 September 2016 the application’s acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks. The Opponent filed a Notice of Intention to Oppose the registration on 28 October 2016 and a Statement of Grounds and Particulars (‘the SGP’) on 18 November 2016. The SGP nominated grounds of opposition under ss 42(b), 44, 58 and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 3 February 2017.

Evidence

1. The Opponent filed Evidence in Support of its opposition (‘EIS’) being:

• Statutory Declaration made on 11 May 2017 by Michael O’Donnell, a partner of the firm Phillips Ormond Fitzpatrick, the representative of the Opponent, with Appendices A to Q; and

• Statutory Declaration made on 12 May 2017 by Fawn Horvath, the Assistant Secretary of the Opponent, with Exhibits FW1 to FW9.

1. The Applicant filed Evidence in Answer (‘EIA’) being:

• Declaration made on 22 August 2017 by Ashish Jain, a director of the Applicant, with Annexures AJ-1 to AJ-62 (‘the Jain declaration’); and

• Declaration made on 22 August 2017 by Benjamin Peter Freeman, a lawyer at Actuate IP, the representative of the Applicant, with Annexures BF-1 to BF-4.

1. The Opponent did not file Evidence in Reply.

Hearing and preliminary matters

1. Once the time allowed for filing evidence had ended the parties requested to be heard. I heard the matter in Canberra on 5 June 2018 as a delegate of the Registrar of Trade Marks. Malcolm Bell of Phillips Ormond Fitzpatrick appeared for the Opponent. Andrew Sykes of Counsel, instructed by Actuate IP, appeared for the Applicant. On behalf of the Opponent, and in accordance with a schedule provided to the parties prior to the hearing, Phillips Ormond Fitzpatrick filed a written summary of the oral submissions it intended to make at the hearing. The Applicant’s summary of submissions was subsequently prepared and filed by Actuate IP; the submissions were settled by Mr Sykes.

New evidence in Opponent’s submissions and request to amend SGP

1. The Applicant’s written submissions included objections to parts of the Opponent’s written submissions on the basis that the submissions included ‘a substantial amount of new evidence which was not part of the Opponent’s evidence in support’. The impugned material included ‘a substantial number of links to websites of other traders’ and ‘a large amount of data relating to trade mark searches conducted by the Opponent’ (‘the New Evidence’). Additionally, by correspondence dated 29 May 2018, the Opponent sought to amend the SGP to add a ground of opposition under s 62A of the Act (application made in bad faith). I heard submissions from the parties at the hearing on both whether the New Evidence would be considered in deciding this matter and whether an amendment to the SGP would be permitted. Those submissions and my respective decisions are discussed in turn below.

The New Evidence

1. The Applicant’s objections to the New Evidence have three bases. Firstly, the New Evidence is not in the form of a declaration as required by the Trade Marks Regulations 1995 (Cth) reg 21.17. Secondly, the New Evidence does not meet the relevant tests for consideration. Thirdly, that the introduction of the New Evidence so close to the hearing would disadvantage the Applicant as a result of the necessary delay which would arise due to the need to allow the Applicant a reasonable opportunity to respond to the evidence.

2. Regulation 21.19 allows the Registrar to consider evidence which was not filed during the normal evidentiary period. The application of reg 21.19 is discretionary and the Registrar cannot be compelled to consider evidence which is filed outside of the normal evidentiary periods.[1] However, for such evidence to be considered not only must it be relevant but there must be ‘further circumstances that make it reasonable for the material to be taken into account’.[2]

   [1] Fed Square Pty Ltd v Federation IP Pty Ltd [2015] ATMO 42, [35]–[40].

   [2] Fed Square Pty Ltd v Federation IP Pty Ltd [2015] ATMO 42, [55].

3. The Trade Marks Office Manual of Practice and Procedure (‘the Manual’) makes it clear that as a general rule evidence that is not filed in time will not be considered by a delegate when deciding an opposition. The Manual notes that there are exceptions to the general rule but a party seeking to rely on evidence filed out of time needs to address matters including the following:

• Why the evidence was filed after the due date

• If the evidence stage in proceedings has concluded and the matter is ready for determination, why the evidence was no filed earlier

• What the evidence shows

• Why that information is crucial to the delegate’s decision

• Why it is in the public interest to have the information considered

• What is the balance of convenience for the parties if the information is considered

1. In dealing with late evidence filed in that particular matter, the Delegate of the Registrar in TWG Tea Company Pte Ltd v Tsit Wing International Company Limited noted:

   I am reluctant to accede without protest to an unsettling assumption that appears to have been made here by both parties. This is the assumption that, post commencement in April 2013[3] of stricter extension of time for evidence provisions as well as the removal of formal further evidence provisions, regulation 21.19 might almost be a given to assist in ‘wrapping up loose ends’ at the time an opposition comes before a hearing officer. Emphatically, opposing parties who intend to rely on such an assumption will do so at their peril. There remains an indisputable onus upon a party submitting evidence to exercise careful oversight of that process at all times. If the onus is properly met, there will be far fewer cases of omission such as those before me here. And oppositions should arrive at the end of the process in a properly organised state, with all parties clear about what evidence is safely in and what is in dispute, and if so, exactly why.[4]

   [3] By the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1).

   [4] [2015] ATMO 64, [46].

2. The Applicant has provided no satisfactory explanation as to why the New Evidence—which was apparently readily available at the time—was not filed during the normal evidentiary period. Neither am I satisfied that the New Evidence is information which is crucial to my decision in this matter. After brief consideration of the question at the hearing I indicated that I would allow the New Evidence to form part of the evidence before me; however, on further consideration of the relevant factors to be taken into account I reverse that decision here and will not be taking the New Evidence or any submissions made in respect of it into account in arriving at my decision.

Amendment of SGP

1. By correspondence dated 29 May 2018 the Opponent sought to amend the SGP to add a ground of opposition under s 62A. I note that the date of this request is after both the Opponent and the Applicant had filed their written summaries of submissions and one week before the scheduled hearing date. A supporting declaration made on 29 May 2018 by Mr Bell with Exhibits MNB-1 and MNB-2 was filed on the same date. Mr Bell stated in his declaration that he had recently taken over the conduct of the present matter. The declaration then included the following:

   In the process of reviewing the file … I carried out searches of the internet, for uses of [the Applicant’s Trade Mark]. As a result of those searches I came across an advertisement for STYLE & CO pillow cases on eBay. I was struck by the form of the label which had STYLE & CO in the same font as that used by Macy’s, but also had the letters ‘CO’ in red. I was struck by this as Macy’s had used the same colour red in its clothing label but in the ampersand rather than in letters [sic] ‘CO’ …

   Upon seeing the advertisement for the STYLE & CO pillowcase, I immediately requested POF’s associated law firm Phillips Ormond Fitzpatrick Lawyers (POFL) to purchase a sample of the product. The product was received by POFL and reported to me earlier today 29 May 2018.

2. In the correspondence Mr Bell indicated his expectation that the Applicant would object to the amendment and on that basis requested that the scheduled hearing date be vacated. I declined that request and indicated that I would hear submissions from both parties regarding the amendment to the SGP at the scheduled hearing. Having heard submissions from both parties regarding the amendment of the SGP, I indicated at the hearing I refused the request to amend the SGP. My reasons follow.

3. Regulation 5.12 allows only certain amendments of the SGP in only limited circumstances. Regulation 5.12(1)(c) allows the addition of a new ground of opposition; however, ‘only if the Registrar is satisfied that the … addition relates to information of which the opponent could not reasonably have been aware at the time of filing the statement’.[5] I am not satisfied that the information contained in Mr Bell’s declaration is information of which the opponent could not reasonably have been aware at the time of filing the SGP. The requirements for amending the SGP are therefore not satisfied.

   [5] Trade Marks Regulations 1995 reg 5.12(3)(b).

The Opponent

1. It is apparent from the evidence that the Opponent is a large retailer based in the United States of America which sells goods including clothing and bed linen. The Opponent has a large number of trade mark registrations for the Trade Mark in a large number of different countries including Australia. Details of the Opponent’s Australian registration (‘the 777381 registration’) are:

Trade Mark Number:

777381

Priority Date:

4 November 1998

Goods:

Class 25: Clothing, footwear and headgear, including blouses, coats, dresses, jackets, jeans, knit tops, pants, rompers, shirts, shorts, skirts, suits, sweaters, T-shirts and vests

(‘the Opponent’s goods’)

Trade Mark:

STYLE & CO 

The Applicant

1. According to the Jain declaration the Applicant has been trading since 1 October 2015. The Applicant designs and sells textile goods such as Manchester, toweling and related goods to retailers. Mr Jain ‘set up’ the Applicant and is a director. Mr Jain declared that he wished to create a brand name that was representative of a higher-end range of goods and eventually decided upon the Trade Mark.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58 and 60 of the Act. The Opponent pressed all grounds at the hearing. To successfully oppose registration the Opponent need only establish one of those grounds of opposition. As will become apparent it is necessary only that I consider the ground pursuant to s 44. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the appellate Court.

2. The onus of proof in an opposition rests upon the Opponent.[6] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[7] The date at which the rights of the parties are to be determined is 11 April 2016, being the filing date of the application (‘the Relevant Date’).[8]

Discussion

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

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

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

Section 44

1. Relevant provisions of the Act with respect to the s 44 ground are reproduced below:

Section 44 - Identical etc. trade marks

1. Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a)the applicant's trade mark is substantially identical with, or deceptively similar to:

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

   (ii)           a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1: For deceptively similar see section 10.

Note 2: For similar goods see subsection 14(1).

Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

1. …

1. If the Registrar in either case 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. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

2. If the Registrar in either case 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 registration of 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 may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.
   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, 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.

3. In the SGP the Opponent nominated the 777381 registration in respect of s 44. Subject to ss 44(3) and (4), to successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), ie that:

   ·     the 777381 registration has a priority date which is earlier than the Relevant Date (‘the first requirement’); and

   ·     the trade mark the subject of the 777381 registration is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     at least some of the Opponent’s goods are similar to at least some of the Applicant’s Goods (‘the third requirement’).

4. The 777381 registration has a priority date which is earlier than the Relevant Date. The trade mark the subject of the 777381 registration differs from the Trade Mark only by the full stop at its end. In the context of these trade marks this difference is insignificant and I am satisfied that on a side by side comparison[9] the respective trade marks are substantially identical. The first and second requirements are therefore satisfied. I move now to consider the respective goods.

Similar goods?

[9] Following Windeyer J’s accepted test in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12].

1. At its simplest the comparison of goods is between the Applicant’s clothing, footwear and headgear in Class 25, and the Opponent’s textiles and textile goods in Class 24. There is no doubt that the vast majority of clothing items are made of textiles of one kind or another. Footwear is a term which encompasses socks which are commonly made of textiles. Similarly, many items which fall under the category of headgear are made of textiles, for example, felt hats and baseball caps. While I am of the view that goods made of textiles are not themselves textiles—just as a house is not the good of bricks simply because it is made of them—the perhaps less clear cut question in this matter is whether the term textile goods in Class 24 encompasses items such as clothing made of textiles which fall in Class 25.

2. As noted by the Trade Marks Office Manual of Practice and Procedure:

   IP Australia uses the International Classification of Goods and Services, in which goods and services are allocated between 45 classes, each class covering a different category of related goods or services. This system was agreed to at the Nice Diplomatic Conference, and is referred to as NICE classification in this Manual. The system is primarily an administrative tool which simplifies searching for trade marks used or intended to be used on the same or related goods and/or services.

3. That goods fall in different classes is not determinative of whether they are similar. That this is so is emphasised by the use by trade mark examiners of a Cross Class Search List. Where an application has goods which fall in a particular class, the examiner will pay particularly close attention to the specification of a potentially conflicting trade mark which has a specification which includes goods or services in an ‘associated’ class. For example, the Cross Class Search List currently indicates that Class 24 has Classes 20, 27 and 40 as associated classes. Class 25 is notably absent from those associated classes. However, simply because Class 25 is not among the associated classes does not permit a conclusion that none of the goods which fall in Class 24 are similar to goods which fall in Class 25—a fact which is recognised by the practice of examiners of searching all classes for potentially conflicting trade marks. Nor does a broad claim for goods in a certain class, restrict the scope of that claim to goods which fall within the same class.

4. When comparing different goods—whether they be in the same or different classes—it is necessary to construe the terminology used in an appropriate manner: the class within which goods fall may assist this process but it is not determinative. The simplest and most appropriate starting point for such construction is a consideration of the commonly understood meaning of the terms used. The Opponent has submitted that ‘textile goods’ are goods which are made of textiles. Conversely, the Applicant does not differentiate between the terms ‘textiles’ and ‘textile goods’, and submits that both refer to the stuff from which other goods, such as clothing, are made.

1. The natural meaning for the term ‘textile goods’ to me seems to be that proffered by the Opponent, being goods made from textiles: just as ‘leather goods’ are goods made from leather—such as leather jackets, leather wallets, leather bags and leather belts—rather than pieces of unfinished leather. Similarly, the term ‘plastic goods’ refers to goods made from plastic, such as plastic bags, plastic containers and plastic plates. I am satisfied, therefore, that the Opponent’s claim in Class 24 for textile goods encompasses many goods which are encompassed by the Applicant’s claim for clothing, footwear and headgear in Class 25. The third and final requirement of s 44(1) has therefore been established.

2. The Applicant has made no submissions in respect of honest concurrent use, or prior use under ss 44(3) or 44(4) respectively. There is nothing before me that satisfies me that either of those provisions apply in this matter. Consequently, the Opponent has established its ground of opposition under s 44.

Decision

1. I have found the Opponent has established the ground of opposition it raised pursuant to s 44 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark.

Costs

1. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has established a ground of opposition, I award costs against the Applicant under s 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.

Robert Wilson
Hearing Officer
Hearings and Oppositions
3 September 2018