Opposition by Rolex S.A. to registration of International Registration Designating Australia 1735782 (International Registration 1274612) (classes 18, 25) - SPOOKS with device – held by Spooks GmbH.

[2018] ATMO 200

TRADEMARKSACT 1995

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

Re:Opposition by Rolex S.A. to registration of International Registration Designating Australia 1735782 (International Registration 1274612) (classes 18, 25) - SPOOKS with device – held by Spooks GmbH.

DELEGATE:

Cristy Condon

REPRESENTATION:

Opponent: Justine Beaumont of Counsel, instructed by Stuart Aloisio and Will Scott of Ashurst Australia

Holder: Jesmini Ambikapathy of Counsel, instructed by Brian Short of IP Solved

DECISION:

2018 ATMO 200

Trade Marks Act 1995 and Trade Marks Regulations 1995;Regulation 17A.34 opposition to protection - sections 44, 60 and 42(b) pressed – no grounds established - extension of protection allowed.

Background

1. This is a decision made pursuant to the Trade Marks Act 1995 (‘the Act’) and the Trade Marks Regulations 1995 (‘the Regulations’). It concerns an opposition brought by Rolex S.A. (‘the Opponent’) to the extension of protection in Australia of the trade mark detailed below held by Spooks GmbH (‘the Holder’):

   IRDA Number:  1735782

Filing Date:  27 August 2015

Convention Priority Date:   27 February 2015

Specification of Goods:

Class 18:  Stirrups; horse covers; horse blankets; horse cloths

Class 25:Clothing; jackets; fleeces;    sweaters;     pullovers; riding breeches; blouses; polo shirts; T-shirts; scarves;

vests; headgear; caps;  footwear;  riding  boots; clothing accessories (as far as contained in this class)

(‘the Holder’s goods’)

Trade Mark:  (‘the Trade Mark’)

1. The Trade Mark was examined as required under Regulation 17A.12 of the Regulations. Acceptance of the Trade Mark for protection in Australia was advertised on 10 December 2015 in the Australian Official Journal of Trade Marks.

1. The Opponent filed a Notice of Intention to Oppose on 10 February 2016 and a Statement of Grounds and Particulars (‘SGP’) on 10 March 2016.

1. The Holder filed a Notice of Intention to Defend the possible extension of protection of the Trade Mark on 2 May 2016.

1. In due course the parties filed Evidence in Support, Evidence in Answer and Evidence in Reply.

1. The matter was set down for an oral hearing and the mater came before me, a delegate of the Registrar of Trade Marks, in Canberra on 18 September 2018. The Holder was represented by Jesmini Ambikapathy of Counsel, instructed by Brian Short of IP Solved. The Opponent was represented by Justine Beaumont of Counsel, instructed by Stuart Aloisio and Will Scott of Ashurst Australia. Both parties filed written submissions which supplemented their oral submissions made at the hearing.

Grounds of Opposition and Onus

1. The SGP nominates grounds of opposition under ss 44, 58, 60 and 42(b) of the Act. Regulation 17A.34 allows for opposition under the examination and opposition grounds. At the hearing, the Opponent indicated that it would press only the grounds of opposition under ss 44, 60 and 42(b). The Opponent need only establish one of those grounds to be successful. In the interest of completeness, I find that the s 58 ground of opposition is not established.

1. The Opponent bears the onus of establishing at least one of the grounds of opposition.1 The standard of proof is the ordinary civil standard of the balance of probabilities.2

• The rights of the parties are to be determined as at the date of the application3 which is generally, but not always, the filing date4. For the purposes of ss 44 and 60 which speak of the priority date, the relevant date is 27 February 2015 which is the convention priority date

  of the application (‘the Relevant Date’). Section 42, however, does not refer to a filing date or a priority date.  In Apple Inc. v Registrar of Trade Marks his Honour, Yates J noted:

  [T]he Act does not in terms provide a mechanism for implementing a shifting date in s 41 or, indeed, in any other provision of the Act dealing with the registrability of a given mark. I can discern no basis for reading such a mechanism into the Act.5 [Emphasis added].

1. I will proceed on the basis that the filing date of 27 August 2015 is probably the correct date at which to assess the s 42 ground. Nonetheless, the Opponent has made its submissions on the basis that 27 February 2015 is the relevant date for s 42 and I will bear this in mind but I note that in any event the outcome would be the same whether the s 42 ground was assessed at the convention priority date or at the filing date in Australia.

The Opponent

1. The Opponent is one of the most well-known manufacturers of high end luxury watches and timepieces.

The Holder

1. Lee provides no information about the Holder so I am not able to glean any information about its business except that which can be inferred from the application for the Trade Mark.

Evidence

1. The evidence consists of the following declarations: Evidence in Support

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

2 Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [132].
3 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, [595].
4 See sections 6, 12, and 72 of the Act.

5 2014] FCA 1304, (45].

Marian RÖthlisberger (an employee working in the Trade Marks and Domains Service of the Commercial Department of the Opponent) made on 11 August 2016 together with Annexures MR – 1 to MR 57 (‘RÖthlisberger 1’)

Evidence in Answer:

Christopher John Lee (Trade Mark Attorney employed with IP Solved) made on 14 November 2016 together with Exhibits CJL- 1 to CJL – 5 (‘Lee’)

Evidence in Reply:

Marian RÖthlisberger made on 21 February 2018 together with Annexures MR – 58 to MR 62 (‘RÖthlisberger 2’)

The Opponent’s trade marks:

1. For the purpose of this opposition proceeding the Opponent owns the following Australian trade marks (‘the Opponent’s trade marks’)6:

Trade Mark No.	129769	540010	540017
Trade Mark
Filing Date	29/10/1956	13/08/1990	13/08/1990
Specification of Goods	Class 14: Watches	Class  18:  All  goods in this class	Class 25: All goods in this class except underwear and swimwear articles
Endorsement	Provisions of Section 28 of the Trade Marks Act 1905-1948 applied,* The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.*	Registered under provisions of paragraph 45(1)(b)* The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.* Linked with Trade Mark 539992 *	Registered under provisions of paragraph 45(1)(b)* The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.* Linked with Trade Mark 539992 *

6  In addition to the Opponent’s trade marks the Opponent also owns those trade marks listed at [20] of this decision.

1. The Opponent’s evidence contains some commercially sensitive information that the Opponent has requested I keep confidential. Accordingly, I will not discuss any of this information and only make general observations as needed in my summary of the evidence which follows.

1. RÖthlisberger 1 contains the following claims and information:

·     The Opponent is a Swedish company and belongs to the Rolex group of companies (‘the Rolex Group’).

·     The Opponent’s business was founded in 1905 in London, under the name ‘Wilsdorf and Davis’ and has manufactured and sold at least its watches and timepieces around the world since that time.

·     In 1919 the company adopted the name Montres Rolex S.A. and the business operations were transferred to Geneva, Switzerland.

·     The Opponent or the Rolex Group is the owner of the crown device in many countries around the world including Switzerland, Germany, the European Union, the United Kingdom and the United States of America (in Australia this is the device trade mark No 129769 ‘the crown device’) (see MR – 3).

·     The crown device appeared in the Opponent’s trade marks from 13 January 1949 (see MR

– 2)

·     The crown device was first used in Australia in October 1956 in respect of watches and timepieces and has been continuously used on these products since at least that date.

·     The Opponent has been conducting business in Australia since at least 1922. From on or about 1981 the Opponent’s business has been conducted in Australia by its affiliated company, Rolex Australia Pty Ltd and the Opponent’s trade marks have been used in Australia on goods and services including watches and timepieces, clothing, footwear, leather goods and a wide range of accessories (‘the Opponent’s goods’) and retail and maintenance services (see MR – 7, MR – 8).

·     Almost all of the Opponent’s goods bear one of the Opponent’s trade marks (see MR- 6).

·     The Opponent or an affiliated company have supplied or authorised the supply of the Opponent’s goods used in prestigious equestrian events in other parts of the world including Switzerland, Canada and Germany. As part of the official sponsorship and/or official timekeeping for particular events the goods to which the Opponent’s trade marks are applied include horse blankets and riding wear, sponsorship signage and official event apparel (see MR – 9, MR – 13 to MR – 21, MR – 23 to MR - 28).

·     In pursuit of its interest in equestrian events the Opponent is also the owner of Australian trade mark registration numbers 1599124 and 1699166 which appear below and they pre date the relevant date and are registered in respect of class 41: Sporting and cultural

activities in the field of equestrianism; organization of sports competitions in the field of equestrianism; organization of competitions (education or entertainment) in the field of equestrianism; timing of sports events in the field of equestrianism; provision of entertainment infrastructures, namely VIP lounges and boxes inside and outside equestrian grounds; photographic, audio, and video recording services for equestrian competitions

1599124        1699166

• In addition to equestrian sponsorship the Opponent has also sponsored some major Australian sporting events including the Rolex Sydney to Hobart Yacht Race (see MR – 29); The Australian Open Tennis tournament (see MR – 30) and the Australian Formula 1 Rolex Grand Prix (see MR – 31).

• Internationally the Opponent has been a sponsor of other major international sporting events which are closely followed by the Australian public and include: Wimbeldon where the Opponent has been the Official timekeeper for the tennis (see MR – 32); The Presidents Cup and the Open Championship, the US Open, the US Masters, The European Tour and The Asian Tour. All of these are golf events (see MR – 33 to MR - 38).

• The Opponent has spent an extensive amount in the promotion of the Opponent’s trade marks and this is evidenced in Annexures MR – 10, MR – 11, MR – 12 and MR - 13. The Opponent’s trade marks also appear in various media including the following prominent publications: Vogue, Marie Claire, Harper’s Bazaar, Gourmet Traveller, Qantas the Australian Way, Virgin Australia Voyeur, The Financial Review Magazine and Notional Geographic (see MR- 40)

• The Opponent’s revenue generated by use of its trade marks on the Opponent’s goods is confidential but I will say it is substantial. Forbes determined as at May 2015 the Opponent’s brand is worth US$8.3 billion (see MR – 48).

• The Opponent’s branded products have been sold in Australia by authorised retailers in major Australian cities including Sydney and Melbourne and product advertising can be found in these stores or on their websites (see MR – 43, MR - 44)

• The Opponent’s trade marks prominently feature on the Opponent’s own website rolex.com and have done for more than 15 years (see MR – 45). The Australian visitors to the Opponent’s website are also provided in confidential exhibit MR – 46.

• The Opponent claims that the Trade Mark strongly resembles the Opponent’s crown device which features in the Opponent’s trade marks. ‘The striking similarity arises, in particular, from the common feature of pronged crowns, which are formed as triangular crown stems, each of which is topped with a circular disc at its distal end’7.

7 RÖthlisberger 1, [47].

·     The Opponent also claims the Holder is using the crown device in the Trade Mark on the Holder’s goods independently from the word ‘SPOOKS’ and evidences this in Annexure MR – 51.

·     The Opponent engages in co-branding that it says Australian consumers would have been aware prior to the Relevant Date (see MR – 52 to MR – 56).

1. Lee contains the following claims and statements:

   ·     There are over 400 device trade marks on the Australian Trade Mark Register (‘the Register’) which consist of or contain, a crown device and which cover various goods in classes 14, 18 and 25. These are owned by many different proprietors.

   ·     Triumph International AG and its affiliated companies have a family of marks on the Register which contain a crown device or consist solely of a crown device and cover goods in classes 3, 24, 25 and 35.

   ·     None of these ‘crown device marks’ including those owned by Triumph or Rolex were raised as citation against the Trade Mark during examination.

   ·     The Holder has also filed an earlier application no. 1617997 which sought to cover the same goods as the Trade Mark. No crown device marks were cited during the examination of this trade mark.

   ·     Much of the rest of Lee contains statements about the state of the Register in regard to crown device marks.

1. RÖthlisberger 2 rebuts some of the claims made in the Lee declaration and claims that those not rebutted are not agreed with. Ms RÖthlisberger says that Triumph is an international intimate apparel and swimwear manufacturer and its crown device has been used over a significant period of time meaning it is not so surprising they co-exist with the Opponent’s marks or the Trade Mark.

1. Of particular interest, Ms RÖthlisberger also claims that the Opponent successfully opposed the Holder’s earlier trade mark application no 1617997. She provides a copy of the SGP from the earlier opposition matter in Annexure MR – 59. However, I can clearly see that the Opponent did not successfully oppose the Holder’s earlier application because no decision was ever issued. The Holder in this earlier matter failed to file a Notice of Intention to Defend meaning the cancellation of the earlier trademark’s registration was automatic; it does not mean any opposition was made out.

1. Ms RÖthlisberger also makes some submissions about the state of the Register in response to the claims by Mr Lee.

Discussion and reasons Section 44

1. Section 44 of the Act relevantly provides:

(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.

1. The Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Holder, in respect of similar goods or closely related services.

1. In the SGP the Opponent has nominated trade marks 129769, 540010 and 540017 as the basis for this ground of opposition. I have set out the details of the Opponent’s trade marks at [13] of this decision, and it is clear that all of the Opponent’s trade marks are in the name of the Opponent and each of their priority dates are is earlier than the Relevant Date.

1. The pertinent and most immediate observation in this matter is that there are some immediate and obvious differences between the relevant trade marks and this is perhaps why the Opponent has not pressed that the marks are substantially identical.

1. Accordingly, pursuant to s 44 I will decide firstly whether the Opponent’s trade marks are deceptively similar to the Trade Mark. For completeness, I am satisfied that the Trade Mark is

not substantially identical to any of the Opponent’s trade marks according to the side by side test in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (‘Shell’)8.

1. Section 10 of the Act defines a ‘deceptively similar’ trade mark as:

[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.

1. The concepts of ‘deceive’ and ‘cause confusion’ were clarified in the New Zealand case of

   Pioneer Hi-Bred Co v Hyline Chicks Pty Ltd, where Richardson J said:

‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that goods bearing the applicant’s mark come from some other source and confused to

being caused to wonder whether that might not be the case.9

1. In terms of applying the concept of deceptive similarity ‘the marks are to be compared both visually and aurally’10 and all of the surrounding circumstances are relevant to the consideration, such that any consideration is essentially a question of fact and meaning:

   You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you  must  consider  all  the  surrounding  circumstances;  and  you  must  further

   consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods.11

2. In Shell Windeyer J provided the further comments about assessing deceptive similarity:

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 [trade mark].12

8 Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407.

9 [1979] RPC 410, 423.

10 Optical 88 Ltd v Optical 88 Pty Ltd (No. 2) [2010] FCA 1380, 89 IPR 457, [111]; see also Moroccanoil Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823, [173] per Katszmann J.

11 Pianotist Co.’s Application (1906) 23 RPC 774, [777].

12 Shell at 414-415.

1. Since Shell was decided the Full Federal Court used new terminology for the deceptive similarity concept above, namely: to firstly determine the ‘dominant cognitive cue’13 of each of the trade marks under comparison or, in other words, the essential feature of the trade marks under comparison. The substance of the test itself has not changed.

1. In the SGP, the Opponent submits that the Opponent’s trade marks are deceptively similar to the Trade Mark because:

   (i)  The Rolex Crown Device in the Rolex Crown Trade Marks features a pronged crown, comprised of triangular stems, topped with circular discs at the distal ends of the crown stems.

   (ii)  The Primary identifying feature of the Trade Mark is a crown device, which has similar shaped crown stems and angle of inclination to the Rolex Crown Device and also uses circular discs at the distal ends of the crown stems.

1. The SGP also states that ‘the goods covered by the Application are the same as, or closely related to, the goods and services specified in the Opponent’s registrations for the Rolex Crown Marks.’ I note, however that the Opponent’s trade marks are only registered for goods in Australia (for the purposes of this opposition matter) and not services.

1. Importantly, the Trade Mark includes the word ‘SPOOKS’. In this regard I note the Opponent’s submissions that it is the nature of the Holder’s goods which makes it highly likely that the word ‘SPOOKS’ will be lost, for example, on the small badge on a polo shirt. The Opponent also submits that the word is ‘built into’ the crown device and therefore  the dominant cognitive cue is the crown.

1. In its own words the Opponent states:

The word “SPOOKS” in the Opposed Mark is much less prominent and is in fact built into the shape of the crown. Having regard to the nature of the goods designated by Spooks (see the principles in Southern Cross referred to above) on application to clothing, accessories, horse stirrups etc it is highly likely that on a reasonably small label or a small clasp or an imprint into the metal of a stirrup, or as a logo on polo shirt, the word “Spooks” in the Opposed Mark will be swamped by the crown device

1. The Opponent also claims that the Holder is using a crown device solus in relation to the Holder’s goods.

13 Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56; see also Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83.

1. I can see that the relevant trade marks comprise some common elements in form of the triangular stems with circular or oval discs at the distal ends but in my opinion this is where any similarity between the marks ends.

1. There are conceptual differences between the trade marks. The word ‘SPOOKS’ is an English word, the meaning of which, namely ‘ghosts’ or colloquially ‘spies’, would be familiar to most users of the English language. Whereas, the Oxford dictionary defines ‘ROLEX’ as ‘a trade mark for a highly prized type of luxury watch’14. Neither of these words have any meaning in relation to the Holder’s goods.

1. In terms of the Trade Mark and the Opponent’s trade mark numbers 540010 and 540017, the meaning and visual impact of the words ‘SPOOKS’ and ‘ROLEX’ are so completely different that, in my opinion, it seems quite unlikely that the trade marks would be mistaken for each or otherwise denote a common trade source. In that sense I refer to the Application by Thomas A. Smith to Register a Trade Mark and the words of Neville J:

   I do not think so far as the meaning of the words is concerned, a reference to one would in the least leave such an impression in the mind of the reader as to make him mistake the other for it. Looking at the marks I do not think that there is any possibility of anybody being deceived. That nobody will ever make a mistake is more than I am prepared to say, but, if there is a mistake, I think it will be made

   by some person so foolish, or so unobservant, as in that respect to be without the pale of the protection of the law.15

2. In terms of the Opponent’s trade mark 129769, I note that it is comprised of five triangular stems, topped with circular discs at the distal ends of the crown stems. The elliptical base typifies this device as clearly a crown.

1. The Trade Mark, however, has a device that, in my opinion, barely resembles, if at all, a crown. Like the Opponent’s crown device, the Trade Mark also comprises of triangular stems, but it is topped with oval discs and has four of these and no elliptical base. In the absence of this base, or something so similar, I am not satisfied this device element would be characterised by the potential consumer as being a crown.

14 Online edition, accessed [18 December 2018], Oxford University Press 2018.

15 (1913) 30 ROC 363, 366.

1. In the Metro16 decision, the issue of notoriety of the trade mark was a consideration and I would argue that it might be a consideration here too. The Opponent’s trade marks have a degree of notoriety or familiarity at least in respect of luxury watches and time pieces which is relevant to the perception of the consumer and their ability to correctly recall the Opponent’s trade marks. In the words of French J:

   Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, as is the present case, it would be artificial to separate out the physical features of the marks from the viewer's perception of them. For in the end the question of resemblance is about how the mark is to be perceived. In the instant case the visual impact of the name "Woolworths" cannot be assessed without recognition of its notorious familiarity to consumers.17

2. In C A Henschke & Co v Rosemount Estates Pty Ltd18 the Full Federal Court has said that while earlier binding authorities are applicable, notoriety of a trade mark is an element of imperfect recollection meaning a notorious trade mark is unlikely to be imperfectly recollected or wrongly recalled.

1. The Opponent also asks me to consider the composite marks in Dial-an-angel v Saggitaur Services Systems19 (‘Dial-an-Angel’) and Mobil Oil Corporation v Dynam Nominees20 (the ‘Pegusus’ decision). It says that these cases show that:

   …the crown device here is the critical element of each of the marks which makes them deceptively similar even though the crown may:

   Be accompanied by different words (SPOOKS and ROLEX, when comparing the Opposed Mark with the ROLEX WITH THE CROWN mark); or

   Comprise a word and device as opposed to a device solos (when comparing the Opposed Mark with the CROWN DEVICE mark).

1. Both of the decisions in these cases centered around the ‘idea’ of the trade mark meaning that even when the two trade marks under comparison contained a number of differences they were considered deceptively similar because of the similar take away impression left with the potential consumer.

16 Registrar of Trade Marks v Woolworths Limited, (Metro) 45 IPR 411.

17 Ibid.
18 [2000] FCA 1539
19 (1991) 96 ALR 181; 19 IPR 171.

20 (1999) 49 IPR 665.

1. In the present case, I have already articulated that the Trade Mark would be very unlikely to leave an impression of a crown. I believe the present case can be distinguished from these earlier two cases because the device in the Trade Mark does not, in my opinion, connote a crown and would therefore be more likely remembered as the ‘SPOOKS’ mark. The Opponent’s trade marks, on the other hand, are, likely to be membered respectively as a crown device or the word ‘ROLEX’.

1. For the reasons above, I am satisfied there is not a ‘real and tangible danger’ that the Trade Mark would be imperfectly recollected as being any of the Opponent’s trade marks so as cause deception or confusion.21

2. The ground of opposition under s 44 of the Act has not been established.

Section 60

1. Section 60 of the Act provides:

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)  another trade mark had, before the priority date for the registration of the first- mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)    because of the reputation of that other trade mark, the use of the first- mentioned trade mark would be likely to deceive or cause confusion.

1. To establish this ground of opposition, the Opponent must show that a reputation in another trade mark in Australia amongst a significant or substantial number of people22 existed at the relevant date. The Opponent must then establish that because of this reputation use of the Trade Mark would be likely to deceive or cause confusion.

1. The reputation must be established as a matter of fact by the Opponent.23  In this sense, in

   McCormick & Co Inc v McCormick& Co Kenny J stated:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.24

21 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, (1954) 91 CLR 592 per Kitto J.

22 Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170; ConAgra Inc. v McCain Foods (Aust) Pty Ltd (‘Conagra’) [1992] FCA 159.

23 Conagra, [77].

24 [2000] FCA 1335 [86].

1. The Opponent has filed evidence that the Opponent’s trade marks had, before the relevant date, acquired a reputation in Australia and it is persuasive. The evidence before me overwhelmingly establishes that as a matter of fact the Opponent’s trade marks had, prior to the relevant date acquired a reputation in Australia amongst a significant or substantial number of people in relation to watches and timepieces and this has spilt over to clothing and accessories and other equestrian goods by virtue of the Opponent’s national and international sponsorship of major sporting events. As such the first limb of the test for s 60 has been met.

1. Accordingly, and I doubt that what I am about to say would surprise either party, but I find the contentious part of the Opponent’s opposition under s 60 to be whether the existence of the Trade Mark would deceive or cause confusion because of the prior reputation of the Opponent’s trade marks, but I am satisfied that it is this second limb of s 60 that has not been established on the evidence.

1. It is well known that the concepts or deceive or cause confusion are inexplicably linked to how similar the respective trade marks are. In Roger Seller & Myhill Pty Ltd v Reece Pty Ltd25 the delegate said:

   Confusion can not arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.

   What can be said then of section 60 as we now find it is that it comprehends that the trade marks under comparison might be quite dissimilar, and yet, taken in combination with the repute of the opponent’s trade mark (and possibly other factors), deception or confusion is still more likely than not. Put another way, section 60 now contemplates that an opponent may prevail because of the reputation in the mark on which it relies notwithstanding that the trade marks under comparison may even be quite dissimilar.

2. In Coca Cola Company v All-Fect Distributors Ltd26 Kitto J explained that there is no limit on the nature of the confusion and it is enough that the minds of the public are mixed up or perplexed about the relationship between the two trade marks.

25 [2010] ATMO 5, [39] – [40].

26 (1999) 96 FCR 107, [39], citing Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410, 423

1. It is also important to recognise that reputation can be a double-edged sword which either reinforces or mitigates difference between the trade marks under comparison.27

1. I have already found that the Trade Mark is not substantially identical with, or deceptively similar to, any of the Opponent’s trade marks and the fact that the Holder may be using the device part of its Trade Mark without the word ‘SPOOKS’ is immaterial under this ground of opposition. The Holder’s device element, solus, is not the Trade Mark under opposition nor would use of the device element alone fall within the bounds of fair notional use of the Trade Mark.

1. Ultimately the question to be answered is whether use of the Trade Mark on, or in relation to, the Holder’s goods would deceive or cause confusion.

1. On the basis of the Opponent’s worldwide reputation in the Opponent’s goods and the dissimilarity between the Trade Mark and the Opponent’s trade marks I am satisfied on the balance of probabilities that no such deception or confusion would eventuate if the Trade Mark was extended protection in Australia for the Holder’s goods.

1. The s 60 ground of opposition has not been established.

Section 42(b)

1. Section 42(b) of the Act relevantly provides:

An application for the registration of a trade mark must be rejected if:

…

(b) its use would be contrary to law.

1. Under the s 42 (b) ground of opposition the Opponent must demonstrate that use of the Trade Mark would not could be contrary to law.28

1. The SGP claims that the Opponent relies on ss 18 and 29 of Schedule 2 to the Australian Consumer Law (‘ACL’) of the Competition and Consumer Act 2010. The Opponent also asserts that use of the Trade Mark would amount to passing off.

27 Flight Centre v World Flight Centre [2003] ATMO 60, [22].

28 Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 [28].

1. The Opponent has failed to establish a ground of opposition under s 60 of the Act. This has a causal effect on whether the Opponent can succeed under the s 42(b) ground because the test for misleading or deceptive conduct under s 18 of the ACL is a more stringent test than that for deception or confusion under s 60.29

2. In the words of the hearing office in Monster Energy v USA Nutraceuticals Inc30:

Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act 1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.31 Section 53(d) of the TPA is the equivalent provision to s 29(1)(h) of the ACL. Hill J in

Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that

name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail. 32

1. Accordingly the s 42(b) ground of opposition has not been established.

Decision

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.

29 Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

30 [2017] ATMO 22, [58].
31 [2003] FCA 104, [107].

32 [1989] FCA 506, [40] (citations omitted).

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

1. The Opponent has not established a ground of opposition.

1. Accordingly, extension of protection to Australian trade mark application number 1735782 may proceed one month from the date of this decision.

1. If the Registrar is served with a notice of appeal before that time, I direct that the extension of protection will not occur until the appeal has been decided or discontinued and that the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. The Holder sought costs. As the successful party, the Holder is so entitled and I award costs against the Opponent in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995.

Cristy Condon Hearing Officer

Trade Marks Oppositions & Hearings 20 December 2018