Opposition by Musidor B.V. to registration of trade mark application number 1914182 (class 25) – JAGGER & STONE - in the name of We the Wild Ones Pty Ltd.

[2021] ATMO 25

TRADE MARKS ACT 1995

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

Re:Opposition by Musidor B.V. to registration of trade mark application number 1914182 (class 25) – JAGGER & STONE - in the name of We the Wild Ones Pty Ltd.

Delegate:

Katrina Brown

Representation:

Opponent: Angela McDonald of Counsel instructed by Catherine Chant of Halfords IP

Applicant: M.E Clarke of Counsel instructed by M.K Williams of MKW Legal Pty Ltd

Decision:

2021 ATMO 25

Trade Marks Act 1995 (Cth) – opposition under section 52 – s 62A established – registration refused

Background

1. This decision relates to an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) by Musidor B.V. (‘Opponent’) to the registration of the following trade mark:

Trade Mark No:               1914182

Trade Mark:        JAGGER & STONE (‘Trade Mark’)

Applicant:   We the Wild Ones Pty Ltd (‘Applicant’)

Filing Date:  19 March 2018

Goods:Class 25: Apparel (clothing, footwear, headgear); Articles of clothing made from wool; Articles of clothing made of fur; Articles of clothing made of hides; Articles of clothing made of imitation leather; Articles of clothing made of leather; Articles of clothing made of plush; Beach clothing; Belts (clothing); Braces for clothing (suspenders); Cashmere clothing; Casual clothing; Clothing; Clothing of fur; Clothing of imitations of leather; Clothing of leather; Clothing, not being protective clothing, incorporating reflective or fluorescent elements or material; Collars (clothing); Combinations (clothing); Cowls (clothing); Denims (clothing); Drawers (clothing); Furs (clothing); Girl's clothing; Halters (clothing); Headbands (clothing); Hoods (clothing); Jackets (clothing); Jump suits (clothing); Knitted clothing; Knitwear (clothing); Ladies clothing; Leather belts (clothing); Linen articles of clothing; Pants (clothing); Playsuits (clothing); Pockets for clothing; Ready-made clothing; Ready-to-wear clothing; Silk clothing; Slips (clothing); Smart clothing (clothing which incorporates digital components); Women's clothing; Woollen clothing; Woven articles of clothing; Wraps (clothing)

(‘Applicant’s Goods’)

1. The trade mark application was examined as required by s 31 of the Act and its acceptance for possible registration was advertised in the Official Journal of Trade Marks on 23 August 2018.

2. The Opponent filed a Notice of Intention to Oppose on 23 October 2018 followed by a Statement of Grounds and Particulars (‘SGP’) on 22 November 2018.

3. The Applicant filed a Notice of Intention to Defend on 20 December 2018.

4. In due course the parties filed evidence in support of the opposition, evidence in answer and evidence in reply.

5. Once the time allowed for filing evidence had expired, a hearing was requested. This matter was heard by me, a delegate of the Registrar of Trade Marks. The Opponent was represented by Angela McDonald of Counsel, instructed by Catherine Chant of Halfords IP. The Applicant was represented by M.E Clarke of Counsel, instructed by M.K Williams of MKW Legal Pty Ltd.

Grounds of opposition and onus

1. The SGP nominated grounds of opposition under ss 42(b), 43, 44, 58, 60 and 62A of the Act. In the written submissions, the Opponent confirmed that they were not pursuing the s 58 ground of opposition.

2. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] In the event that the Opponent establishes one of the grounds in relation to all of the Applicant’s Goods, there is no requirement for me to consider the other grounds of opposition.

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

3. The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [133].

4. The date at which the rights of the parties are to be determined is 19 March 2018, being both the filing date and the priority date in this matter.

Evidence

1. The parties rely on the following declarations:

Evidence in support

• Declaration of Jan Favié (Managing Director of the Opponent) made on 16 April 2019 with Annexures JF-1 to JF-22 (‘Favié Declaration’).

Evidence in answer

• Declaration of Lucy Jackson (Director of the Applicant) made on 18 July 2019 with Annexures LJ-1 to LJ-12 (‘Jackson Declaration’).

Evidence in reply

• Declaration of Rachel Pieris (Corrs Chambers Westgarth) made on 16 September 2019 with Annexures RP-1 to RP-4 (‘Pieris Declaration’).

1. On 9 April 2020, the Opponent requested to rely on the following material filed out of time:

• Declaration of Catherine Chant (Halfords IP) made on 9 April 2020 with Annexures CC-1 to CC-5 (‘Chant Declaration’).

1. In certain circumstances it may be appropriate to allow material that is filed out of time. The party who has filed the out of time material must make a compelling case in favour of it being allowed.

2. On 20 April 2020, I informed the parties that I was not satisfied that the Opponent had made a compelling case and as such I did not consider it appropriate to exercise the Registrar’s discretion to allow the Chant Declaration.  

3. On 21 April 2020, the Opponent requested the opportunity to make further submissions at the hearing in relation to whether the Chant Declaration should be allowed. On 24 April 2020, I informed the parties that they would be given the opportunity to make such submissions at the beginning of the hearing.

4. Both parties availed themselves of this opportunity. Ultimately, I am not persuaded by the further submissions made by the Opponent. In Fed Square Pty Ltd v Federation IP Pty Ltd the delegate stated that it is ‘not sufficient to simply show that such evidence is relevant and there is a possibility that the opposition may fail without it. …there must be further circumstances that make it reasonable for the material to be taken into account’.[3] In this instance I am not satisfied that there are further circumstances that make it reasonable for the material to be taken into account. Consequently, I will not have regard to the Chant Declaration when making my determination in this proceeding.

   [3] [2015] ATMO 42 [55].

The Opponent

1. The Opponent is the company formed by the Rolling Stones band members and Prince Rupert Lowenstein (the financial manager of the Rolling Stones) to be the exclusive owner of the trade mark, copyright, licensing and performing rights for the Rolling Stones and its members, including Mick Jagger.

2. The Opponent is the owner of the following trade marks (‘Opponent’s Trade Marks’):

Trade Mark Number	Trade Mark	Class
293526	ROLLING STONES	9
569162	ROLLING STONES	41
569163	ROLLING STONES	25
569165	ROLLING STONES	9
1164055	ROLLING STONES	9
1303836	MICK JAGGER	9, 25, 41
1689220	ROLLING STONES	33

1. The Favié Declaration details the history and renown of the Rolling Stones. The evidence is voluminous. The Opponent’s hearing submissions contain the following summary, which I consider to be an accurate reflection of the evidence put forward in the Favié Declaration:

   [3] The Rolling Stones (or “The Stones” as they are commonly known) is one of the most successful rock and roll bands of all time.

   …

   [42] The Rolling Stones is the longest performing rock band of all time. The Rolling Stones was inducted in the Rock and Roll Hall of Fame in 1989, and the UK Music Hall of Fame in 2004. The Rolling Stones has consistently ranked as one of the greatest artists of all times. The Rolling Stones have had six number one songs and six number one albums in Australia and has toured Australia six times in 1966, 1973, 1995, 2003, 2006 and 2014.

   [43] Mick Jagger has been heralded as “the greatest front man” of all time. As the front man and lead singer of the Rolling Stones since its formation in 1962, Jagger has been an enduring icon of music and pop-culture.

   [44] Both the Rolling Stones and Mick Jagger are fashion icons. The extent of Jagger and the Stones’ contribution to the fashion industry is best illustrated by the exhibition entitled “Exhibitionism: The Rolling Stones Exhibit”. The exhibition included 50 years of Stones fashion spanning from the 1960s to the present, with articles from designers including Alexander McQueen, Prada, Dior, Gucci, Hedi Slimane, Ossie Clark, L’Wren Scott, Mr Fish and many more.

   [45]…the Opponent has sold clothing both internationally and in Australia by reference to the [Opponent’s Trade Marks]. Further, the Opponent has licensed the [Opponent’s Trade Marks] to third party designers to produce clothing items under or by reference to those marks. Licensees of the Opponent’s Marks whose products are available for purchase in Australia include Target Australia, Cotton On, ASOS, Bravado, Madeworn, Missguided, Free People, Supre, Big W, Zara, and H&M.

The Applicant

1. The directors of the Applicant are Lucy Jackson and Nikki Westcott. Since July 2015 they have had an Instagram account with the handle ‘wethe_wildones’. In April 2018 they decided to start a clothing company leveraging off the following of that Instagram account.  

2. The Applicant designs, manufactures and retails clothing and fashion accessories under the trade mark Jagger & Stone. The Jackson Declaration provides the following explanation for the choice of the words ‘Jagger’ and ‘Stone’:

   [21] The choice of the words ‘Jagger’ and ‘Stone’ were derived from the definitions of each word and their resemblance to the directors of the business….

   [22] I am considered to be the ‘Jagger’.

   [23] Urban Dictionary defines ‘Jagger’ as “psychotic Demi god that you should not get on [their] bad side, he/she will mess you up big time”…Being the aggressive determined half of the duo, this is a word that I am often referred to by friends…

   …

   [25] Nikki Westcott is considered to be the ‘Stone’.

   [26] The reference to ‘Stone’ is more of a symbolic meaning and represents Nikki’s personality and characteristics in being ‘grounded’, ‘stable’, ‘down to earth’, and the ‘rock’ of the business. The symbolism of a stone centres on the ideas of endurance, stability and permanence.

Section 62A

1. Section 62A provides:

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

2. The phrase ‘bad faith’ is not defined in the Act. In the context of s 62A bad faith does not require dishonesty or fraud, ‘it is a wider notion, potentially applicable to diverse species of conduct’[4] not confined to the examples of bad faith given in the Explanatory Memorandum.[5]

   [4] DC Comics v Cheqout Pty Ltd [2013] FCA 478 [63] (‘DC Comics’) (Bennett J).

   [5] Ibid [61].

3. Unlike other grounds of opposition, s 62A does not require use of the trade mark to result in deception or confusion. In DC Comics v Cheqout Pty Ltd (‘DC Comics’), Bennett J explained:

   Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.

   The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[6]

   [6] Ibid [62].

4. Furthermore, Bennett J also acknowledged that conduct that is ‘exploitative or designed to acquire a springboard or advantage’ can amount to conduct that falls short of acceptable commercial standards.[7] Justice Bennett held that an intention to use a trade mark in such a way as to gain a benefit by appropriating the indicia and reputation of another was sufficient to constitute bad faith.[8]

   [7] Ibid [66].

   [8] Ibid [77].

5. In this matter, the Opponent asserts that the application to register the Trade Mark was made in bad faith as it was designed to acquire a springboard or advantage by exploiting the reputation of Mick Jagger, the Rolling Stones, and the Opponent’s Trade Marks.

6. It is clear from the evidence, that at the time that the trade mark application was filed, that Mick Jagger and the Rolling Stones were very well known in Australia. The extent of the reputation is such that the word ‘Jagger’ immediately conjures thoughts of Mick Jagger, the lead singer of the Rolling Stones (commonly referred to as ‘the Stones’).

7. The Applicant does not at any point in its evidence or submissions deny being aware of Mick Jagger, the Rolling Stones or the Opponent’s Trade Marks (noting that mere awareness is not of itself sufficient to establish bad faith). Nor does the Applicant explain why, in leveraging the following of its wethe_wildones Instagram account, that it chose to do so under an entirely different trade mark. Rather, it states that the Trade Mark is a moniker referring to the founders of the Applicant and asserts that there was no attempt to acquire a springboard or advantage.

8. This assertion by the Applicant seems to be at odds with the use of the Trade Mark after the filing date. After the filing date, the Jagger & Stone Instagram account featured the Trade Mark with images of models posing in front of electric guitars and on top of amplifiers, and signs proclaiming, ‘If the music is too loud you are too old’.[9] Similarly, the Trade Mark was used in combination with the words, ‘I’m with the band’ and with models posing with electric guitars and amplifiers.[10] The latter use was not included in the Applicant’s evidence but was included in the Opponent’s evidence in reply. The Applicant has provided no explanation for this conduct. Nor does there seem to be any obvious reason why the Applicant would need to associate its clothing with being in a band, loud music, or electric guitars and amplifiers.

   [9] Jackson Declaration, Annexure LJ5.

   [10] Pieris Declaration, Annexure RP-1; RP-3.

9. Whilst bad faith must exist at the time of filing the trade mark application, events occurring after that date may be relevant in drawing an inference as to the Applicant’s knowledge and intention at the filing date. In my view, this post-filing date use of the Trade Mark makes the inference clear, that in filing the trade mark application, the Applicant intended to use the Trade Mark with other iconography to strengthen the allusion to Mick Jagger and the Rolling Stones. The inference can also be drawn that this use was designed to further the association between the Trade Mark and the reputation of Mick Jagger and the Rolling Stones giving rise to an intangible advantage gained from public celebrity, widespread fame and interest.

10. In my opinion, the Applicant’s actions cast significant doubt on the bona fides of its intentions in filing the trade mark application. In all the circumstances, I am satisfied that the Applicant’s conduct in filing the trade mark application was designed to acquire a springboard or advantage and would be regarded as in bad faith by persons adopting proper standards.

11. Accordingly, the ground of opposition under s 62A has been established on the balance of probabilities.

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

   (1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

2. The Opponent has established the ground of opposition under s 62A of the Act. Accordingly, I refuse to register trade mark number 1914182.

Costs

1. The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Applicant according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Katrina Brown

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

24 March 2021