Opposition by Speedo Holdings B.V. to registration of trade mark application number 2010467 (Class 24) – Sculpteur - in the name of The Brand Republik Pty Ltd.

[2021] ATMO 109

TRADE MARKS ACT 1995

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

Re:Opposition by Speedo Holdings B.V. to registration of trade mark application number 2010467 (Class 24) – Sculpteur - in the name of The Brand Republik Pty Ltd.

Delegate:

Blake Knowles

Representation:

Opponent: Banki Haddock Fiora.

Applicant: One IP International Pty Ltd.  

Decision:

2021 ATMO 109

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 42(b), 44, 58, and 60 considered – no ground established – trade mark to proceed to registration.

Background

1.     This is a decision on the opposition to registration of the trade mark ‘Sculpteur’ (‘Trade Mark’) covering the following goods:

Class 24: Fabric; Fabric for use in the manufacture of clothing; Fabric linings for clothing; Textile fabrics for making into clothing; Textile fabrics for use in the manufacture of sportswear; Water breathable fabrics; Water resistant fabrics; Waterproof fabrics; Waterproof textile fabrics

(‘Goods’)

2.     The Trade Mark is subject of application number 2010467 (‘Application’) which was filed on 20 May 2019 (‘Relevant Date’). The Application includes an endorsement which indicates that the English translation of the French word constituting the Trade Mark is ‘sculptor’. 

3.     The Application was examined, accepted for possible registration, and advertised for opposition on 21 November 2019.  Speedo Holdings B.V. (‘Opponent’) filed notice of its intention to oppose registration of the Trade Mark on 7 January 2020 and a statement of grounds and particulars (‘SGP’) on 22 January 2020. The Applicant filed notice of its intention to defend the Trade Mark from opposition on 31 March 2020.

4.     The parties were given the opportunity to file evidence in accordance with the timetable set out in the Trade Marks Regulations 1995 (Cth).[1] The Opponent filed Evidence in Support on 11 June 2020. The Applicant filed Evidence in Answer on 10 September 2020. The Opponent did not file Evidence in Reply.

[1] Trade Marks Regulations 1995 (Cth) reg 5.14. Unless stated otherwise, each reference to a section or regulation in these reasons is a reference to the Trade Marks Act 1995 (Cth) or Trade Marks Regulations 1995 (Cth).

5.     The parties were given the opportunity to either request an oral hearing or to file written submissions. Neither party requested to be heard or elected to file written submissions. The Opponent requested that the matter be decided based on the materials filed and paid the appropriate fee. As such, I have decided this matter based on the particulars set out in the SGP, and the evidence filed by the parties.

Grounds and onus

6.     The SGP nominates grounds of opposition under ss 42(b), 44, 58, and 60.

7.     The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]

[2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

Evidence

8.     The following evidence was filed:

Evidence in Support (‘EIS’)

Declaration of Andrew Long, Director of Opponent, made on 5 June 2020, with Exhibits AL-1 to AL-10.

Evidence in Answer (‘EIA’)

Declaration of Dale McCarthy, CEO of Applicant, made on 9 September 2020, with Exhibits DM-1 to DM-14.

EIS

9.     Mr Long declares that the Opponent is the owner of two registered Australian trade marks. The more relevant of these trade marks is registration number 1688764 (‘Opponent’s Registration’) for SCULPTURE (‘Opponent’s Mark’) covering the following goods:

Class 25: Clothing; footwear, headgear, swimwear, belts

Class 28: Boards for swimming; paddles for swimming; buoys for swimming training; rubber buoys for swimming; flippers and duck-feet for swimming; flotation jackets for use in swimming; inflatable armbands for swimming; surfboards; kickboards; swimming mitts; swimming fins; aqua planer paddles; balls; floats for bathing and swimming; transportable swimming pools; parts, fittings and accessories for all of the above goods

(‘Opponent’s Goods’)

10.     The Opponent also owns registered trade mark number 951236 (‘Opponent’s Second Registration’) for the trade mark SPEEDO SCULPTURE (‘Opponent’s Second Mark’) in Class 25.

11.     Mr Long declares that the Opponent launched a range of swimwear in 2010 under the Opponent’s Mark and has sold swimwear under the Opponent’s Mark in Australia since 2014. The swimwear sold under the Opponent’s Mark is designed to smooth, shape, and support the body for a comfortable and flattering fit.

12.     Mr Long provides confidential revenue and promotional expenditure figures which indicate that prior to the Relevant Date, there has been a reasonable level of revenue generated in Australia by sale of goods under the Opponent’s Mark, and a similarly reasonable level of annual promotional expenditure.

13.     Mr Long declares that the Opponent’s Mark has been promoted in a variety of ways, including catalogues, news articles (including in the Daily Mail and Australian Financial Review), and store displays.  The illustrative examples of use of the Opponent’s Mark indicate that it is often (but not always) used in conjunction with or close proximity to the distinctive SPEEDO brand.

14.     Mr Long opines that articles of swimwear are closely identified with the fabrics from which they are made. Annexed to the declaration is a representative sample advertisement of the Applicant’s products, which shows use of the Trade Mark in relation to an item of swimwear:

[4]

EIA

[4] I note that the brand ‘Bondi Born’ mentioned in the advertisement is also a registered trade mark of the Applicant (number 1690980), which covers swimwear and beachwear.

15.     Mr McCarthy declares that the Applicant is a globally recognised brand in the swimwear and apparel market with stockists and markets in Australia, New Zealand, Asia, Europe, the Middle East, and the USA. Mr McCarthy indicates that the Applicant is well known for its ‘Athleisure capsule’ using the fabric ‘Singuleur’.

16.     Mr McCarthy declares that the Trade Mark has been in use since 2018 for fabrics, and drew its inspiration from an Italian made fabric called ‘SENSITIVE® Sculpt’. Mr McCarthy explains that the fabric has a high Lycra content and 3D stretch technology which fits firmly to the body and smoothens and sculpts the body’s shape under the fabric.  

17.     Mr McCarthy states that the Trade Mark has been promoted through various channels, including letters to customers, brochures, websites including bondiborn.com, video advertisements, and social media. Annexed to the declaration as samples of use are brochures, tags (which display the mark SCULPTEUR BY BONDI BORN™), invoices to retail customers, a web page extract from bondiborn.com, and video advertisements.

18.     Mr McCarthy provides revenue and promotional expenditure figures relating to goods sold under the Trade Mark. I assume these figures relate solely to swimwear containing the SCULPTEUR fabric, and not sale or marketing of the fabric itself as a distinct product. The revenue and promotional expenditure figures are reasonable, although I note that the figures are not separated into pre-filing and post-filing amounts.

19.     Mr McCarthy opines that the word ‘sculpt’ is commonly used in the swimwear and fabric industry, and due to its allusive nature, minor differences in the Trade Mark and the Opponent’s Mark are sufficient to the distinguish them.

Discussion

Section 44

20.     To establish grounds of opposition under s 44(1), the Opponent must rely on at least one pending or registered trade mark that has a priority date earlier than the Application, and which is in the name of a person other than the Applicant. The earlier mark must be substantially identical or deceptively similar to the Trade Mark. Further, the earlier mark must be filed or registered in respect of either goods that are similar to the Goods, or services that are closely related to the Goods.

21.     The Opponent relies on both the Opponent’s Registration and Opponent’s Second Registration as the basis for grounds under s 44. However, it is only necessary to consider the grounds of opposition under s 44 based on the Opponent’s Registration. This is because the Opponent’s Second Mark also contains the distinctive word SPEEDO. This element adds an additional point of difference when compared to the Trade Mark. Given the presence of this other element, if I do not find the Trade Mark is substantially identical or deceptively similar to the Opponent’s Mark, it follows that the Trade Mark is also not substantially identical or deceptively similar to the Opponent’s Second Mark. In addition, the Opponent’s Registration encompasses all of the goods of the Opponent’s Second Registration. As such, the Opponent’s case under s 44 is at its highest when relying on the Opponent’s Registration, and reliance on the Opponent’s Second Registration does not advance the Opponent’s case any further.

22.     I must first assess whether the Trade Mark is substantially identical to the Opponent’s Mark. The test for whether two marks are substantially identical requires that they be assessed as follows:

they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[5]

[5] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).

23.     I am satisfied that the Trade Mark is not substantially identical to the Opponent’s Mark. While the respective trade marks have a common prefix, similar sound, and are conceptually related, the different spelling means that the total impression that emerges from a side-by-side comparison is not one of resemblance.

24.     The test for whether trade marks are deceptively similar is broader than the test for whether they are substantially identical and requires that one trade mark so nearly resemble another so that it is likely to deceive or cause confusion.[6] In determining deceptive similarity, I am guided by the following principles:

-There must be a real, tangible danger of confusion, not just a mere possibility.[7] Likelihood of confusion can be established if a number of consumers would be caused to wonder whether the applicant’s goods or services come from some other source. It is enough if the ordinary person entertains a reasonable doubt.[8]

-The impression of the respective marks as a whole must be considered, including the size and prominence of word and device elements and their relationship to each other.[9] However, deceptive similarity can also be found where one mark uses an essential feature of the other.[10]

-Consumers may retain an imperfect recollection of a mark or its essential features.[11]

-It may be relevant that an element of the trade marks under consideration is descriptive. However, descriptiveness does not preclude a finding of deceptive similarity.[12]

-The impression of the mark on ordinary consumers is relevant, not the impression on those who are particularly perceptive or cautious, or those who are exceptionally careless or stupid.[13]

-It must be considered how the goods or services are ordinarily sold or provided.[14]

[6] Trade Marks Act 1995 (Cth) s 10.

[7] Southern Cross Refrigerating v Toowoomba Foundry (1954) 91 CLR 592, 595 (Kitto J).

[8] Coca‑Cola Co v All‑Fect Distributors Ltd [1999] FCA 1721, [39] (Black CJ, Sundberg and Finkelstein JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

[9] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [100] (Yates J); Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [91]-[103] (Moore, Sackville, and Emmett JJ).

[10] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 174-5 (Viscount Maugham); De Cordova v Vick Chemical Co (1951) 68 RPC 103, 105-6 (Lord Radcliffe).

[11] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville, and Emmett JJ).

[12] Lift Shop P/L v Easy Living Home Elevators P/L [2014] FCAFC 75, [64] (Besanko, Yates, and Mortimer JJ).

[13] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan J).

[14] Ibid.

25.     I consider the Trade Mark is deceptively similar to the Opponent’s Mark. While the respective marks technically have a different meaning, those meanings are related. Further, the slight differences in sound and appearance of the respective marks appear only in their last three letters, and as such, will have less impact on consumers than the identical prefixes. While I acknowledge that the term ‘sculpt’ alludes in some tangential way to a quality of the goods (namely, the ability of the goods to ‘sculpt’ the body), I do not consider this sufficiently diminishes the potential for confusion by consumers relying on an imperfect recollection.

26.     I must now assess whether some or all of the Goods are the same or of the same description as the Opponent’s Goods.  The test for determining whether goods are of the same description is a practical judgement formed by looking at a number of factors, falling within the categories of the nature of the goods, their respective uses, and the trade channels through which they are sold, with no single factor being determinative. [15]

[15] Re Jellinek’s Application (1946) 63 RPC 59, 70.

27.     I note that the Opponent’s Goods fall in two Classes, namely, 25 and 28. There is no obvious similarity between the Goods in Class 24 and the Opponent’s Goods falling in Class 28. The respective goods appear on face value to have very different natures, purposes, and trade channels. In the absence of submissions by the Opponent on why the Goods in Class 24 and the Opponent’s Goods in Class 28 are the same or of the same description, I find that they are not. I will now turn to comparing Class 24 of the Goods with Class 25 of the Opponent’s Goods.

28.     The Goods in Class 24 are fabrics for use in the manufacture of clothing. The Opponent’s Goods in Class 25 are apparel, including swimwear. Fundamentally, fabrics are of a different nature and have a different purpose to clothing. One is a component which is useful only for making other goods, and the other is a finished product that can be immediately worn by a consumer. It takes an appreciable amount of skill and effort to turn one into the other. In addition, fabrics and clothing are targeted to different customers. Fabrics are targeted to manufacturers and creators of apparel, whereas clothing is targeted toward the ultimate consumer that will wear the garments. Further, to my knowledge, it is not usual for manufacturers of apparel to sell fabrics, or manufacturers of fabrics to sell clothing. Therefore, the ultimate trade source of the respective goods is also different. Taking these factors into account, I do not consider that the Goods are the same or of the same description as the Opponent’s Goods.

29.     As the Opponent has not established that the Goods and the Opponent’s Goods are similar, the s 44 ground is not established. 

Section 58

30.     To establish this ground, the Opponent must show use in Australia by some person other than the Applicant of a trade mark that is substantially identical to the Trade Mark[16], with such use being in relation to goods that are the ‘same kind of thing’ as the Goods.[17] The use of the trade mark relied on by the Opponent must have occurred before the Relevant Date, or before the date of first use of the Trade Mark in Australia by the Applicant, whichever is earlier.

[16] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495, 513 (Gummow J).

[17] Re Hicks’s Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

31.     The Opponent relies on the Opponent’s Mark as the basis for this ground. However, I have already determined under s 44 that the Trade Mark is not substantially identical to the Opponent’s Mark.

32.     As the Opponent has not established prior use of a substantially identical trade mark by a person other than the Applicant, the s 58 ground is not established.

Section 60

33.     To establish this ground, the Opponent must establish a reputation in a trade mark existing in Australia at the Relevant Date. If reputation is established, the Opponent must then prove that because of the reputation in the mark relied on by the Opponent, use of the Trade Mark subject of the Application is likely to deceive or cause confusion.

34.     It is not necessary for the Opponent to establish that the trade mark relied on as the basis for this ground and the Trade Mark are deceptively similar, or that the relevant goods or services of the parties are similar or closely related. However, the greater the similarities in the respective trade marks and goods or services, the more likely the existence of a reputation in the trade mark relied on by the Opponent is to give rise to a likelihood of confusion. 

35.     In McCormick & Co Inc v McCormick, Kenny J considered the requirements for establishing reputation. Her Honour said:

It may be correct to say, as counsel for Mary McCormick did, that the volume of the company’s sales does not directly establish that a significant number of people held the McCormick & Co marks, as distinct from the company’s products, in favourable regard. It does not follow, however, that the volume of sales and promotional expenditures are irrelevant. As Hearing Officer Thompson observed in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 (“Hugo Boss”) at 436:

[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

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: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC ¶91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that 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. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.[18]

[18] [2000] FCA 1335, [85]-[86].

36.     In Rodney Jane Racing Pty Ltd v Monster Energy Company it was observed that:

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.[19]

[19] [2019] FCA 923, [83] (O’Bryan J).

37.     The Opponent relies on reputation in the Opponent’s Mark as the basis for this ground.   

38.     I consider the EIS demonstrates that there is some level of reputation in the Opponent’s Mark in Australia. However, I do not consider that the reputation is extensive. Further, the Opponent’s Mark is clearly used as a secondary brand. To some extent the recognition of the Opponent’s Mark by consumers would be reliant on the presence of the distinctive SPEEDO brand which is often used in close proximity.

39.     The existence of reputation also does not necessarily mean that confusion resulting from use of the Trade Mark is likely to occur. There must be a nexus between the reputation in the Opponent’s Mark and the likelihood of confusion caused by use of the Trade Mark. In Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd, Hearing Officer Lyons said:

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.[20]

[20] [2010] ATMO 5 [39].

40.     While I have already decided that the Trade Mark is deceptively similar to the Opponent’s Mark, I have also decided that the Goods are not similar to the Opponent’s Goods. Giving these factors due weight, I must consider whether the nature and extent of the reputation in the Opponent’s Mark gives rise to a likelihood of confusion.

41.     The Opponent in the EIS opines that ‘articles of swimwear are closely identified with the fabrics from which they are made, and the Applicant’s use of the Opposed Mark clearly indicates this connection’. The Opponent then points to use of the Trade Mark in relation to finished swimwear, where the SCULPTEUR fabric is promoted as being the base cloth of the Applicant’s Signature Collection of swimwear. However, I note that there is no other evidence which indicates that the close association alleged by the Opponent is common.

42.     In deciding this ground, I must be cautious not to consider the issue of likelihood of confusion in the wrong context. The example of the Applicant’s use of the Trade Mark relied on by the Opponent is an advertisement for swimwear, not an advertisement for fabrics. For the purposes of this opposition, I am not concerned whether the use of the Trade Mark in relation to swimwear or apparel more generally is likely to cause confusion. There are other avenues available for the Opponent to make those arguments.  

43.     In this case, I must consider likelihood of confusion based on the use of the Trade Mark in the context of fabrics. This means considering the use of the Trade Mark amongst relevant consumers of fabrics. This is a narrower class of consumers than those who would buy apparel, and essentially encompasses those who wish to make garments or other finished textile products. When I consider the use of the Trade Mark in relation to fabrics offered for sale and promoted amongst those who would ordinarily purchase such goods (as opposed to purchasers of apparel), I am not satisfied that confusion would be likely amongst those consumers. This is not to say that there could never be confusion between similar marks used for fabrics and apparel. In some cases, the reputation of a particular mark may be sufficiently extensive to conclude there is a likelihood of confusion notwithstanding fundamental inherent differences between the goods. However, in this case, I do not consider that the extent of the reputation in the Opponent’s Mark, particularly given its use as a secondary brand by the Opponent, is sufficient to give rise to a likelihood of confusion if the Trade Mark were used in relation to the Goods.

44.     As the Opponent has not established a likelihood of confusion based on reputation in the Opponent’s Mark, the ground under s 60 is not established.

Section 42(b)

45. The Opponent under s 42(b) alleges consumers would be misled or deceived by use of the Trade Mark based on the reputation in the Opponent’s Mark, and such use would therefore constitute a breach s 18 of the Australian Consumer Law and the tort of passing off.

46.     For the same reasons as given under s 60, I am not satisfied that consumers would be misled or deceived by use of the Trade Mark. Therefore, s 42(b) is not established.

Decision and costs

1. I find that the Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  The Trade Mark may proceed to registration not less than one month from the date of this decision. 

2. If the Registrar is served with a notice of appeal, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

3. The Applicant in the notice of intention to defend requested an award of costs. Costs generally follow the event and I see no reason to depart from that rule. I award costs against the Opponent.

   Blake Knowles

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   28 September 2021