Opposition by Sojo Pty Ltd to registration of trade mark application number 1954887 (class 25) - JUST ATRADIE - in the name of Ian William Wills

[2021] ATMO 67

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 1954887 (class 25) - JUST ATRADIE - in the name of Ian William Wills

Delegate:	Timothy Brown
Representation:	Opponent: Susan Gatford, Counsel; Michelle Wilson, FAL Lawyers Applicant: Olaf Kretzschmar, One IP International Pty Ltd
Decision:	2021 ATMO 67 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, 58 and 60 – s 60 established – trade mark application refused registration

Background

1. This is an opposition under section 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the following trade mark:

   Trade Mark Number: 1954887

   Trade Mark: Just aTradie (‘Trade Mark’)

   Priority Date: 12 September 2018

   Applicant: Ian William Wills (‘Applicant’)

   Specification: Class 25: Apparel (clothing, footwear, headgear)

2. The Trade Mark was advertised for acceptance in the Official Journal of Trade Marks on 28 March 2019.

3. A Notice of Intention to Oppose was filed by Sojo Pty Ltd (‘Opponent’) on 23 April 2019. The Statement of Grounds and Particulars (‘SGP’) was then filed on 23 May 2019.

4. A Notice of Intention to Defend was filed by the Applicant on 16 July 2019.

5. The Opponent filed Evidence in Support on 13 March 2020. Evidence in Answer was subsequently filed by the Applicant on 11 June 2020. No Evidence in Reply was filed by the Opponent.

6. On 9 September 2020, the Opponent requested a hearing. Written submissions were filed by the Opponent on 6 April 2021, and the matter was heard before me, the delegate of the Registrar, via video conference on 19 April 2021. Susan Gatford of Counsel appeared for the Opponent accompanied by Michelle Wilson of FAL Lawyers, the instructing firm. The Applicant did not file written submissions and did not attend the hearing.

   Evidence

   The Opponent

7. The Opponent’s evidence is comprised of a declaration made by Benjamin Robert Goodfellow (General Manager of the Opponent) on 12 March 2020 (‘Goodfellow Declaration’) and Exhibits 0.1 to 4.3.

8. The Opponent is a clothing company created in 2002. The brand ‘Tradie’ was developed by Mr Goodfellow in 2009. The initial trade mark appeared as follows:

   (‘Opponent’s Composite Trade Mark’)

9. Goods bearing the above trade mark were first sold by the Opponent to Woolworths Pty Ltd in 2009. Since 2009 a number of different variations of the Opponent’s Composite Trade Mark have been used, including the following trade mark:

   (‘Opponent’s Word Trade Mark’)

10. For convenience, I will refer these trade marks collectively as the ‘Opponent’s Trade Marks’.

11. The Opponent is also the owner of a number of trade mark registrations in Australia. Those relied on by the Opponent in this matter are:

Trade Mark No.	Trade Mark	Goods
1370204	SOJO TRADIE	Class 25: Apparel (clothing, footwear, headgear)
1415387	MADE TRADIE TOUGH	Class 25: Apparel (clothing, footwear, headgear)
1507040	Class 25: Apparel (clothing, footwear, headgear);   underwear; socks
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

The Applicant

1. The Applicant’s evidence consists of a declaration made by Olaf Kretzschmar (Applicant’s representative) on 11 June 2020 (‘Kretzschmar Declaration’) and Exhibits IW 01 to IW 06.

2. The Kretzschmar Declaration explains that the Trade Mark was developed by the Opponent and his wife in 2014, and has been continuously used since 2014 on a variety of apparel. The business name ‘Just a Tradie’ was registered on 7 February 2014, and the domain <justatradie.com> was registered 03 July 2014.

   Grounds of Opposition, Onus and Relevant Date

3. The nominated grounds of opposition are sections 42(b), 44, 58 and 60 of the Act.

4. The Opponent has the onus of establishing one or more of the nominated grounds of opposition.[1] The required standard of proof is on the balance of probabilities.[2]

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

   [2] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

5. The date at which the rights of the parties will be determined is the priority date of the trade mark application,[3] 12 September 2018 (‘Priority Date’).

   Discussion and Reasons

   [3] Southern Cross Refrigeration v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

   Section 60

6. 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.

7. To establish this ground of opposition, the Opponent must demonstrate:

   ·     The existence of a reputation in another trade mark in Australia before the Priority Date; and

   ·     That use of the Trade Mark would be likely to deceive or cause confusion because of the reputation of the other trade mark.

8. The Opponent submitted that at the priority date of the Trade Mark, the Opponent’s Trade Marks had acquired a reputation in Australia, such that use of Trade Mark would be likely to deceive or cause confusion.

   Reputation

9. In the context of section 60, ‘reputation’ refers to ‘the recognition of the [trade mark] by the public generally’.[4] Reputation must be established as a matter of fact,[5] and to the degree that the reputation is one of which a substantial number of people would be aware.[6]

   [4] McCormick & Co Inc v McCormick [2000] FCA 1335, [81].

   [5] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159 [77].

   [6] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

10. In ConAgra Inc v McCain Foods (Aust) Pty Ltd Lockhart J discussed the means by which a trade mark’s reputation could be established:

    [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.[7]

    [7] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [118].

11. In Rodney Jane Racing Pty Ltd v Monster Energy Company O’Bryan J also observed:

    The reputation of a trade mark has quantitative and qualitative dimensions.  The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied.  The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally…[8]

    [8] [2019] FCA 923, [83].

12. In this case, the Opponent adduced a substantial amount of evidence to demonstrate the reputation of the Opponent’s Trade Marks in Australia. The evidence establishes that the Opponent’s Trade Marks have been in continuous commercial use from 2010 to the Priority Date. In assessing the extent of the reputation of the Opponent’s Trade Marks, I have had regard to the following material:

    ·The sales figures provided in the Goodfellow Declaration, which cover what the Opponent refers to as, ‘Tradie Product Sales’ from the financial year ending 30 June 2011 up to 31 December 2019. This included information on the total units sold, as well as the dollar value of wholesale and retail sales, of goods bearing the Opponent’s Trade Marks. The Opponent has requested this information remain confidential, as such, I will merely note that the figures demonstrate continuous growth in sales over the period of 30 June 2011 to 30 June 2018, and that, as of the Priority Date, a substantial number of products have been sold bearing the Opponent’s Trade Marks.

    ·Information that goods bearing the Opponent’s Trade Marks are currently sold in over 3000 stores in Australia, and by the following retailers: BigW, Best & Less, Myer, Woolworths, Coles, Lowes, MitrelO, BCF, Bunnings, Aussie Disposals, Totally Workwear, The Iconic, Frontline, Mensland, Independents, Ebay, Catch, Amazon and IGA Supermarkets.

    ·Advertising expenditure from the end of the 2012 financial year to 30 June 2018. The expenditure relates to the marketing of the Opponent’s Trade Marks and demonstrates substantial resources were invested in promoting the Opponent’s Trade Marks in Australia. This information is supplemented by Exhibits 2.0.1 to 2.0.09 of the Goodfellow Declaration, which demonstrate a variety of different marketing strategies used to promote the Opponent’s Trade Marks, including television and radio advertising, magazine and print advertising, signage, and social media.

    ·     Use of the Opponent’s Word Trade Mark on the Opponent’s website. Since 2013 the website has received over 300, 000 visits annually.

    ·     Promotion of the Opponent’s Word Trade Mark via Facebook advertisements from 2015 to 2019, totalling 2.52 million views as of 2019 with one commercial featuring the Opponent’s Word Trade Mark receiving 1 million views in 2015.

    ·     Advertisements promoting the Opponent’s Trade Marks across different mediums, notably, radio commercials from 2012 to priority date, television commercials 2015 to the priority date, retail and catalogue print advertisements from 2011 to the priority date, and newspaper advertisements since 2012.

    ·The following outdoor media campaigns featuring the Opponent’s Trade Marks: stadium signage during nationally televised National Rugby League and Australian Football League games in Sydney in 2014 and 2015, billboard advertising in Lara, Victoria in 2016, tram advertising from 24 July 2017 to 6 January 2018, and bus advertisements since 2012.

    ·YouTube advertisements and sponsorships featuring the Opponent’s Trade Marks since 2015. The Goodfellow Declaration explains that YouTube Videos featuring the Opponent’s Trade Marks have received more than 1.8 million views over the period of 30 July 2015 to 20 February 2020.

    ·Use of the Opponent’s Word Trade Mark on the Opponent’s Instagram Account from 2015 to the priority date of the Trade Mark.

13. All of the trade mark use referred to above is predominantly in relation to clothing, particularly underwear, socks, and workwear. The Goodfellow Declaration and exhibits of licensing agreements with third party companies indicate that the Opponent’s Trade Marks are also used on sunglasses, beauty care products, hats, bags and sleepwear. However, the use of the Opponent’s Trade Marks demonstrated in relation to these products is far more limited than the use demonstrated in relation to clothing.

14. Having regard to all of the evidence summarised above, I am satisfied that in Australia at the Priority Date, the Opponent’s Trade Marks had acquired a reputation in respect of clothing, and a particularly strong reputation in respect to underwear. Even in an industry as large as the clothing industry, the extent of the goods sold, the amount of resources invested into promoting the trade marks, and the diverse range of examples provided are indicative of trade marks with a strong reputation amongst a substantial number of people.

    Likelihood of Deception or Confusion

15. Section 60(b) requires a causal connection between the reputation of the Opponent’s Trade Marks and the likelihood that use of the Trade Mark will deceive or cause confusion. The ground of opposition under section 60 is only established if the reputation of the Opponent’s Trade Marks is such that the use of the Trade Mark would likely result in a real or tangible danger of deception or confusion.

16. The use of a trade mark will be likely to cause confusion if its use would result in people being caused to wonder whether its goods derive from the same source as another trade mark.[9]The concepts of ‘deceive’ and ‘cause confusion’ was explained by Richardson J in the New Zealand decision of Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd:

    ‘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.[10]

    [9] Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50].

    [10] [1979] RPC 410, 423.

17. For the purposes of s 60, the likelihood of deception or confusion is informed by a number of factors, including the strength of the reputation of the other trade mark, the similarity between the relevant goods or services, and the degree of similarity between the trade marks.[11]

    [11] Reece Pty Ltd v Rodgers Seller & Myhill Pty Ltd [2010] ATMO 5, [39]; Qantas Airways Limited v Edwards [2016] FCA 729, [142].

18. In this matter, the Trade Mark’s goods are clothing, the same goods in which the Opponent’s Trade Marks hold a reputation. The Trade Mark’s clothing goods would also include underwear, goods in which the Opponent’s Trade Marks hold a very strong reputation.

19. In respect of the similarity of the trade marks, the Opponent submitted that confusion would be likely due to the trade marks sharing the word TRADIE as a distinctive feature. The Opponent also emphasised the syntax of the Trade Mark, arguing that the presence of JUST A only served to further emphasise the final word TRADIE.

20. Conversely, in the Kretzschmar Declaration, the declarant noted the distinction between the phrase JUST ATRADIE and the sole word TRADIE and submitted that the element ATRADIE is written in such a manner that it distinguishes the Trade Mark from the Opponent’s Trade Marks.

21. The Opponent’s Trade Marks consist of the sole word TRADIE, and in the case of the Opponent’s Composite Trade Mark, a device depicting a stick figure performing labour and a stylised border featuring diagonal stripes. The word TRADIE is an essential feature of the Opponent’s Trade Marks. The Trade Mark consists of the phrase JUST ATRADIE.  Although the letter ‘A’ and word TRADIE are conjoined in the element ATRADIE, the typography would not result in consumers viewing the element as an invented word. Generally, a combination of known words, or a change in orthography or typography, will not create a novel or invented term, particularly where the same idea would be conveyed as the words in their ordinary form.[12] In my view, the element ATRADIE would be viewed, heard, and understood as ‘a tradie’, with the Trade Mark as a whole understood as the phrase, ‘Just a Tradie’. The additional elements JUST A and the overall representation of the Trade Mark, as a phrase, do afford the Trade Mark some degree of visual and aural distinction from the Opponent’s Trade Marks. The differences may potentially be enough for the trade marks not to be considered deceptively similar. However, section 60 does not necessarily require that the degree of resemblance between the trade marks reach deceptive similarity.[13] 

    [12] Re Application of the Eastman Photographic Materials Company Ltd, for a Trade Mark (1898) 15 RPC 476, 485.

    [13] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5, [28]-[40].

22. The essential feature of the Opponent’s Trade Marks, the word TRADIE, is incorporated in its entirety within the Trade Mark. The additional elements of the Trade Mark do not alter the identity of the TRADIE element, nor are they so conspicuous that they would create an overall impression dissimilar enough to avoid confusion. This is particularly the case with the Opponent’s Word Trade Mark.  Were the Trade Mark to be used on clothing, I am satisfied that given the strength of the reputation in the clothing industry associated with the Opponent’s Word Trade Mark, consumers would have cause to wonder whether goods bearing the trade marks derive from the same trade source.

23. In the Kretschmar Declaration, the declarant asserted that the Applicant has gained its own reputation in the Trade Mark. The Applicant relied on continuous use since 2014 and Exhibit IW 06 of the Kretschmar Declaration. Exhibit IW 06 depicts a screenshot of t-shirts bearing the Trade Mark and a reference to the domain name, <justatradie.com>. The exhibit does not appear to be an extract from the Applicant’s website, nor is it dated. The remainder of the evidence does not demonstrate any commercial use of the Trade Mark and falls well short of the evidence required to substantiate a reputation that might potentially mitigate the likelihood of deception or confusion.

24. Considering all of the above, and the strong reputation of the Opponent’s Trade Word Trade Mark, I am satisfied that there is a real and tangible risk that use of the Trade Mark would result in confusion with the Opponent’s Word Trade Mark.

25. The section 60 ground of opposition has been established.

26. Having found in favour of the Opponent under section 60 of the Act, there is no need to discuss the other grounds set out in the SGP. However, all of the grounds of opposition may be relied on in the event of an appeal from this decision.

    Decision

27. Section 55(1) provides:

    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.

28. The Opponent has established the ground of opposition under section 60 of the Act. Accordingly, I refuse to register trade mark application number 1954887.

    Costs

29. The Opponent sought costs. As the Opponent has been successful in the opposition, I award costs against the Applicant under section 221 of the Act in accordance with Schedule 8 of the Trade Marks Regulations1995 (Cth).

    Timothy Brown
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    19 July 2021