Opposition by Sojo Pty Ltd to registration of trade mark application number 1906831 (class 25) – SHIT HOT TRADIE – in the name of Rebel Power Pty Ltd
[2021] ATMO 102
•15 September 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Sojo Pty Ltd to registration of trade mark application number 1906831 (class 25) – SHIT HOT TRADIE – in the name of Rebel Power Pty Ltd
| Delegate: | Nicholas Barbey |
| Representation: | Opponent: Susan Gatford of counsel instructed by FAL Lawyers Applicant: Milicevic Lawyers |
| Decision: | 2021 ATMO 102 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under sections 42, 44, 58 and 60 – section 60 established – registration refused |
Background
This decision concerns an opposition brought by Sojo Pty Ltd (‘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: 1906831
Applicant: Rebel Power Pty Ltd (‘Applicant’)
Filing Date: 13 February 2018
Specification: Class 25: apparel (clothing, footwear, headgear); clothing; clothing, not being protective clothing, incorporating reflective or fluorescent elements or material; jackets (clothing); occupational clothing (other than for protection against accident or injury) (‘Goods’)
Acceptance of the trade mark application was advertised in the Australian Official Journal of Trade Marks on 5 April 2019. The Opponent filed a notice of intention to oppose on 23 April 2019 followed by a Statement of Grounds and Particulars (‘SGP’) on 23 May 2019. A notice of intention to defend was filed by the Applicant on 15 July 2019.
Evidence in Support (‘EIS’) was filed by the Opponent and the Applicant filed Evidence in Answer (‘EIA’). An oral hearing was requested and submissions were filed by the Opponent on 4 June 2021 (‘Opponent’s Submissions’). In turn, the Applicant filed submissions on 11 June 2021 (‘Applicant’s Submissions’).
As a delegate of the Registrar of Trade Marks, I heard this matter by video conference on 18 June 2021. The Opponent was represented at the hearing by Susan Gatford of counsel and Michelle Wilson of FAL Lawyers. Steven Milicevic of Milicevic Lawyers appeared on behalf of the Applicant. Bruce Alan Power, sole director of the Applicant, was also present as an observer.
Grounds of opposition, onus and standard of proof
The SGP nominated grounds of opposition under ss 42, 44, 58 and 60 of the Act. However, the s 58 ground of opposition was not pressed in the Opponent’s Submissions or at the hearing. To be successful in this opposition, the Opponent bears the onus of establishing at least one of these grounds.[1] In the event that the Opponent establishes a ground of opposition 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).
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 13 February 2018, 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 and Edelman JJ).
Evidence
The following declarations were filed as evidence:
| EIS |
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| EIA |
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The Opponent’s evidence
According to the Goodfellow Declaration, the ‘TRADIE’ brand was created in 2009 and undergarments bearing the ‘TRADIE’ brand were first launched in Woolworths stores in 2010.[3] The range of clothing products has since expanded to include outerwear, workwear, shoes and sleepwear. Mr Goodfellow declares that clothing products bearing the word ‘TRADIE’ have also been sold in New Zealand, the United Kingdom and the United States of America. Other products such as sunglasses, watches, bags and moisturisers have also been marketed under the ‘TRADIE’ brand via licensing arrangements with external companies.
[3] Goodfellow Declaration, [8].
The Goodfellow Declaration lists several Australian trade mark registrations and pending applications which form part of the Opponent’s trade mark portfolio.[4] These registrations include:
[4] The Opponent’s trade mark portfolio also includes registrations in New Zealand, the United Kingdom, China and the United States of America.
| Trade Mark no. | Trade Mark | Specification | Filing date |
| 1415387 | MADE TRADIE TOUGH | Class 25: Apparel (clothing, footwear, headgear) | 21 March 2011 |
| 1507040 | Class 25: Apparel (clothing, footwear, headgear); underwear; socks | 8 August 2012 | |
| 1622501 | Class 25: Shapewear (slimming underwear); Slimming underwear; Sweat-absorbent underwear; Underwear; Socks; Sports socks; Singlets; Sports singlets; Shirts; Short-sleeve shirts; T-shirts; Tee-shirts; Woven shirts; Boxer shorts; Shorts; Surf shorts; Trousers; Footwear for men; Men's clothing; Menswear; Underclothing for men | 15 May 2014 | |
| 2007442[5] | Class 25: Apparel (clothing, footwear, headgear); Clothing for babies; Infants' clothing; Underwear; Socks; Underclothing for babies; Underclothing; Underclothing for boys; Underclothing for children; Underclothing for girls; Underclothing for men; Underclothing for women | 14 May 2019 |
[5] This trade mark registration also contains claims in respect of goods in classes 2 and 32.
10. According to the Goodfellow Declaration, clothing products bearing the ‘TRADIE’ brand are sold by various retailers throughout Australia. Mr Goodfellow explains that considerable financial resources have been invested in the marketing and promotion of the ‘TRADIE’ brand to Australians via digital and print mediums. The Opponent also operates a website at tradie.com (‘Website’) which prominently features the ‘TRADIE’ brand.
11. Mr Goodfellow states that the Opponent has achieved significant retail sales under the ‘TRADIE’ brand since 2010. In Mr Goodfellow’s view, ‘TRADIE’ is an iconic Australian brand with an ‘incredible brand awareness’.[6] In this regard, reference is made to a 9Nation Research study which revealed that ‘TRADIE’ is the second most recognised underwear/babywear brand for unprompted awareness in Australia.[7]
The Applicant’s evidence
[6] Goodfellow Declaration, [9].
[7] Ibid [10].
12. According to the Power Declaration, the Applicant is ‘a start-up company that runs, operates and manages a clothing and products business’.[8] The Applicant’s business ‘is to promote Australian culture and also to bring laughter during these serious times by printing Australian slang on clothing, products and accessories’.[9] In this context, Mr Power emphasises that the Trade Mark was adopted for its ‘slang, street appeal’ following discussion with construction workers.
[8] Power Declaration, [4].
[9] Ibid.
13. Having reviewed the EIS, Mr Power points out that it is difficult to quantify what reputation existed in the ‘TRADIE’ brand given the Opponent has used various stylised trade marks incorporating the word ‘TRADIE’. In this context, Mr Power claims that any reputation in the name ‘TRADIE’ enjoyed by the Opponent ‘clearly relates to a stylised and distinctive logo and not just the word “tradie”’.[10]
[10] Ibid [13].
14. The remainder of the Power Declaration contains what are essentially submissions concerning an aural and visual comparison of the relevant trade marks and the likelihood of confusion in the Australian marketplace. On the latter issue, Mr Power highlights that no examples of actual confusion have been provided by the Opponent. Further, Mr Power submits that the Opponent’s clothing goods are ‘quite distinct’ from the Goods provided by the Applicant.[11] The former being most popular for underwear whereas the latter does not sell underwear.
Discussion
[11] Ibid [24].
Section 60
15. Section 60 of the Act relevantly provides:
Trade mark similar to trade mark that has acquired a reputation in Australia
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.
16. To establish this ground of opposition, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before 13 February 2018. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
17. This ground of opposition was particularised in the SGP as follows:
Opponent's TRADIE brand began in 2009, and has grown into a household name. TRADIE brand products are distributed in some of Australia's largest retailers including Big W, Best & Less, Woolworths, Coles and IGA Supermarkets (Metcash).
TRADIE has an extensive reputation in connection with apparel including underwear, workwear, socks and outerwear and other clothing items.
Further particulars will be provided in the Opponent's Evidence in Support.
The Opponent’s Submissions identified the following trade mark[12] as underpinning this ground of opposition (‘Word Mark’):
[12] I note this trade mark forms the subject matter of several Australian trade mark registrations and pending applications including 2007442, 2007482, 2007496, 2016539, 2018725, 2051275, 2080775, 2081241 and 2150938. The respective priority dates of these registrations all postdate 13 February 2018.
Reputation
The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[13] Her Honour quoted with approval the following statement of Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (‘ConAgra’):
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner ...[14]
[13] [2000] FCA 1335, [81] (‘McCormick’).
[14] [1992] FCA 159, [118] (‘ConAgra’).
20. Further, Kenny J explained in McCormick that:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product … public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[15]
[15] McCormick (n 13) [86].
21. The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is contextualised by the nature of the relevant market.[16] Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[17]
[16] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
[17] ConAgra (n 14) [77].
22. The Opponent characterised the relevant market for clothing as being ‘Australian consumers generally’.[18] This was not disputed by the Applicant and I accept this characterisation as reasonable. Clothing products are available through a wide range of online and physical retailers including department stores, supermarkets, clothes shops and boutiques. Such goods are sought by a broad cross section of the Australian population. As such, the relevant market would conceivably be constituted by ‘virtually the entire Australian population from early teenage years onwards’.[19]
[18] Opponent’s Submissions, [62].
[19] Le Cordon Bleu B.V. v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).
From the outset, I note that a large volume of evidence has been filed by the Opponent. Given the EIS chronicles use of the ‘TRADIE’ brand across a decade, it invariably contains use of different trade marks as well as examples of use which postdate 13 February 2018. However, neither shortcoming is fatal in the circumstances. For the reasons which follow, even accounting for the aforementioned shortcomings, I am satisfied that the Word Mark had acquired a reputation in relation to clothing before 13 February 2018.
24. The EIS demonstrates that the Word Mark, disentangled from any use as a composite trade mark, has consistently appeared on the Opponent’s ‘TRADIE’ branded clothing since 2010. It has featured prominently on the waistband of the Opponent’s underwear as well as being clearly displayed on the external labels of its outerwear. The following examples are illustrative of how the Word Mark has been used:
| ‘1/7/11-31/12/11’ (Exhibit BG 1.1.2) | ‘1/1/13-30/6/13’ (Exhibit BG 1.1.4) | ‘June 2014 catalogue’ (Exhibit BG 2.8.4) |
| ‘June 2014 catalogue’ (Exhibit BG 2.8.4) | ‘18/10/16’ (Exhibit BG 2.6.2) | ‘S17 RPL’ (Exhibit BG 1.2.2) |
| ‘1/7/17-31/12/17’ (Exhibit BG 1.1.8) | ‘S17’ (Exhibit BG 1.2.2) | ‘W17 RPL’ (Exhibit BG 1.2.2) |
25. The Word Mark has gained extensive exposure given ‘TRADIE’ branded clothing is sold in more than 3,000 stores throughout Australia. National retailers include department stores such as Myer and Big W together with supermarket chains Woolworths, Coles and IGA. ‘TRADIE’ branded clothing is also sold in retail chains such as Bunnings, Lowes, Best & Less, Mitre 10 and BCF. Online retailers including eBay, Amazon, Catch and The Iconic also stock ‘TRADIE’ branded clothing.
26. The sales figures[20] reveal that the Opponent has achieved substantial sales of ‘TRADIE’ branded clothing since 1 December 2010. It is true that the disclosed figures only provide a broad overview of each financial year and are unlikely to be wholly attributable to use of the Word Mark in isolation. However, even if the figures are zealously read down to compensate for this, they still demonstrate that the Opponent has enjoyed significant year on year growth in terms of units sold as well as wholesale and retail sales. Likewise, the ‘Tradie advertising spend’ figures[21] for each financial year between 2012 to 2018 reveal the Opponent’s annual advertising expenditure has constantly increased, with a considerable surge in expenditure occurring from 2016 onwards.
[20] See Confidential Exhibit BG 3.1 to the Goodfellow Declaration.
[21] See Confidential Exhibit BG 3.2 to the Goodfellow Declaration.
27. The Opponent’s ‘TRADIE’ brand has been frequently promoted in national marketing campaigns. A detailed breakdown of the Opponent’s marketing plans from 2012 onwards[22] shows that the ‘TRADIE’ brand, which includes the Word Mark, has been promoted through a wide range of digital and print mediums. Notably, the Word Mark has been promoted through radio commercials,[23] television commercials, and newspaper and magazine advertisements. The ‘TRADIE’ brand has also featured in catalogues distributed by the retailers mentioned at [25] of this decision. Additionally, the Opponent’s ‘TRADIE’ branded clothing has been advertised on bus exteriors, tram exteriors, billboards and also on signage in National Rugby League and Australian Football League stadiums.
[22] See Exhibit BG 2.0 to the Goodfellow Declaration.
[23] See Act s 7(2) which expressly recognises that any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.
28. Furthermore, the EIS illustrates that the Word Mark has a strong online presence. The Word Mark is used across different social media platforms and is prominently featured on the Website. Advertisements showcasing the Word Mark have been uploaded to the Opponent’s Facebook, Youtube and Instagram accounts and each post receives appreciable user engagement.[24] Likewise, the Website has received approximately 329,000 visits annually since it launched in 2013. In this regard, the Opponent’s use of the domain, tradie.com, itself is likely to constitute trade mark use given it directs consumers to the Website which advertises the ‘TRADIE’ branded clothing.[25] The awareness of the ‘TRADIE’ brand has been further elevated through the use of brand ambassadors including former Australian rugby union player and reality television personality Nick ‘the Honey Badger’ Cummins.
[24] For example, a ‘TRADIE’ television commercial promoted on the Opponent’s Facebook account in 2015 received approximately 1 million views, 12,500 likes and 7,900 comments in the same year.
[25] See, eg, Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664, [153] (Kenny J); Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554, [187] (Rangiah J).
29. In my assessment, the evidence establishes that the Word Mark had a solid commercial presence and enjoyed widespread use throughout Australia before 13 February 2018. Clothing goods bearing the Word Mark have been sold nationally for an extended duration and, by any reasonable measure, the sales demonstrate consistent and considerable increases in the annual revenue generated. I am therefore satisfied that, as at 13 February 2018, the Word Mark had acquired a reputation in respect of clothing among a significant number of Australian consumers for the purposes of s 60(a) of the Act.
30. Pursuant to s 60(b) of the Act, I must now consider whether, because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
Likely to deceive or cause confusion
31. The concepts of ‘deceived’ and ‘confusion’ were considered in the New Zealand case of Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd wherein Richardson J observed:
‘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 the 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.[26]
[26] [1979] RPC 410, 423 (citation omitted).
32. It has been recognised that ‘the test for confusion under s 60 is not limited to whether consumers might think that the respective marks are the same. It is sufficient that consumers might wonder whether the respective goods might be connected in the course of trade’.[27] To this end, it has been observed that ‘the threshold for confusion is not high’[28] and confusion can be established even if it ‘is unlikely to persist up to the point of, and contribute to, inducing sale’.[29]
[27] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [84(e)] (O’Bryan J).
[28] Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153, [70] (North, Middleton and Barker JJ).
[29] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [105] (Dodds-Streeton J).
33. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate said:
The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[30]
[30] [2012] ATMO 124, [40]. See also Qantas Airways Limited v Edwards [2016] FCA 729, [142]–[143] (Yates J).
34. In the present matter, the trade marks share a high degree of similarity. The Word Mark has minimal stylisation. The essential feature is ‘TRADIE’. This feature is wholly contained in the Trade Mark. The presence of ‘SHIT HOT’ at the beginning of the Trade Mark does not sufficiently diminish the likelihood of deception or confusion. As the Opponent points out, the term ‘SHIT HOT’ is ‘a colloquial laudatory epithet meaning excellent’.[31] In this context, the term emphasises the ‘TRADIE’ element of the Trade Mark given it would be perceived as indicating a quality of the goods.
[31] Opponent’s Submissions, [40(c)].
35. With respect to the products to which the Trade Mark will be used, the Goods contain items which are either identical or similar to the clothing goods for which the Word Trade Mark has acquired a reputation for in Australia. They would be sold in the same trade channels and target the exact same market. Naturally, this accentuates the potential for deception or confusion.
36. The Applicant has emphasised that no evidence of actual confusion between the trade marks has been filed. The implication being that this reflects the low likelihood for confusion between the trade marks. The Applicant is correct insofar as the EIS is devoid of any instances of actual confusion. However, the absence of such evidence is not particularly probative given the EIA indicates that the Applicant is a start-up company that has not commenced use of the Trade Mark. At any rate, evidence of actual confusion is not required to establish a ground of opposition under s 60 of the Act. This is because s 60 of the Act concerns the potential for confusion and not whether actual confusion has in fact occurred between the relevant trade marks.
37. Having regard to the reputation of the Word Mark, the similarity of the trade marks and the identical nature of the goods, I am satisfied that there is a real, tangible likelihood that consumers would, at a minimum, be caused to wonder whether the Goods provided under the Trade Mark might be connected to the clothing provided under the Word Mark.
38. Accordingly, the s 60 ground of opposition has been established.
Decision
39. 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.
40. The Opponent has established the s 60 ground of opposition in relation to all of the Goods. As such, I refuse to register trade mark application number 1906831.
Costs
41. Both parties 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 Trade Mark Regulations 1995 (Cth).
Nicholas Barbey
Hearing Officer
Delegate of the Registrar of Trade Marks
15 September 2021
Key Legal Topics
Areas of Law
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Intellectual Property
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Administrative Law
Legal Concepts
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Standing
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Procedural Fairness
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Statutory Construction
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