Opposition by The H.D. Lee Company, Inc. to registration of trade mark application 1859254 (9) LeeBss in the name of wenxuan li

[2019] ATMO 73

TRADE MARKS ACT 1995

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

Re:Opposition by The H.D. Lee Company, Inc. to registration of trade mark application 1859254 (9) – LeeBss – in the name of wenxuan li

Delegate:	Nicholas Smith
Representation:	Opponent: Philips Ormonde Fitzpatrick Applicant:  Self-represented
Decision:	2019 ATMO 73 Trade Marks Act 1995 (Cth) - Section 52 opposition: s 60 considered – ground established – registration refused

Background

1. This decision concerns an opposition brought by The H.D. Lee Company, Inc. (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of wenxuan li (‘Applicant’): 

Application Number:	1859254
Filing Date:	14 July 2017
Goods:	Class 9: Anti-glare glasses; Cases adapted for glasses; Chains for glasses; Cyclists' glasses; Field glasses; Fitted cases for sun glasses; Frames for glasses; Frames for protective glasses; Glasses adapted to protect the eyes; Glasses cases; Glasses for optical use; Glasses frames; High power laser glasses; Industrial safety glasses; Inspection glasses (other than for medical or dental use); Lenses for glasses; Lorgnettes (opera glasses); Magnifying glasses (optics); Opera glasses; Ophthalmic glasses; Optical glasses; Optical viewing glasses (peep holes) for doors; Optical viewing glasses, other than for medical use; Protective glasses (spectacles); Reading aids in the form of magnifying glasses; Reading aids in the form of magnifying glasses and incorporating a light; Reading glasses; Safety glasses (optical); Safety glasses for protecting the eyes; Shooting glasses (optical); Sight glasses (optical); Sight glasses for use with chemical and physical apparatus; Sight glasses for use with electrotechnical apparatus; Sight glasses for use with physics and chemical apparatus; Ski glasses; Skiing glasses; Spectacles (glasses); Sport glasses (binoculars); Sport glasses (eye glasses); Sport glasses (protective spectacles); Sport glasses (spectacles); Sports glasses (binoculars); Sports glasses (eye wear); Sports glasses (goggles); Sports glasses (spectacles); Sports glasses (telescopes) (‘Applicant’s Goods’)
Trade Mark:	LeeBss (‘Trade Mark’)

2. Following the advertisement on 7 December 2017 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 11 January 2018.  The Opponent then filed a Statement of Grounds and Particulars on 18 January 2018 (‘SGP’). The SGP raised grounds of opposition under ss 42(b), 43, 44 and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 17 February 2018.

Evidence

1. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 22 May 2018.  This evidence consists of a declaration by Kia Wimmer, Assistant Secretary and Assistant General Counsel of the Opponent, made on 7 May 2018 with annexures KW-1 to KW-18 (‘Wimmer Declaration’) and a declaration by Kristine van Ruiten, licensed private investigator employed by IP Organisers Pty Ltd, made on 22 May 2018 with annexures KVR-1 to KVR-33 (‘van Ruiten Declaration’). 

2. The Applicant filed Evidence in Answer (‘EIA’) on 13 August 2018.  This evidence consists of a declaration by Wenxuan Li, the Applicant, made on 13 August 2018 with annexures Part1 to Part6 (‘Li Declaration’). 

3. The Opponent filed Evidence in Reply (‘EIR’) on 19 September 2018.  This evidence consists of a declaration by Gregory Morris Chambers, Patent & Trade Mark Attorney with the firm Philips Ormonde Fitzpatrick, the Opponent’s representatives, made on 19 September 2018 with annexures GMC-1 to GMC-12 (‘Chambers Declaration’).

   6. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 11 October 2018 the Opponent requested an oral hearing.  The matter was set down for a hearing in Canberra on 3 April 2019 and the matter was allocated to me.  In line with usual practice, a letter was sent to the parties on 6 February 2019 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 20 March 2019 (‘Opponent’s Submissions’).  On 26 March 2019, the Opponent advised this office that it would be relying on its written submissions only and as the Applicant had not indicated that it wished to participate in an oral hearing or file written submissions, the hearing was cancelled.

   7. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.  

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

4. The Opponent is an American company based in Wilmington, Delaware, founded in or about 1889.   

   9. The Opponent is the owner of various trade marks, including the trade marks listed below (‘Opponent’s Trade Marks’).  The goods for which the Opponent’s Trade Marks are registered are collectively referred to as the ‘Opponent’s Goods’.  The services for which trade mark 1662513 is registered are referred to as the ‘Opponent’s Services’.  For the purposes of this decision, when I refer to the ‘Lee Mark’ I refer to the Opponent’s use of a trade mark consisting of the word ‘LEE’ in block letters or stylised form.

Number	Trade Mark	Priority Date	Goods
210599	LEESURES	30 May 1967	Class 25: Articles of clothing
256789	LEE LEENS	15 Mar 1972	Class 25: Articles of clothing
277033	21 Mar 1974	Class 25: Jeans (trousers and jackets) overalls and work shirts
512578	LEE	9 Jun 1989	Class 25: Denim trousers, jeans, shirts, jackets, corduroys, canvas trousers, chino trousers, gabardine pants, skirts, dresses, tops and t-shirts
942178	LEE 101	3 Feb 2003	Class 25: Denim trousers, jeans, shirts, jackets, corduroys, canvas trousers, chino trousers, gabardine pants, skirts, dresses, tops and t-shirts
1041393	10 Feb 2005	Class 18: Wallets, purses and bags; belts including leather belts; travelling bags Class 25: Clothing and headwear, scarves and wristbands
1041394	LEE	10 Feb 2005	Class 18: Wallets, purses and bags; belts including leather belts; travelling bags, compact disc wallets Class 25: Clothing and headwear, scarves and wristbands
1577744	30 Aug 2013	Class 25: Clothing, denim pants, denim jackets
1662512	LEE	4 Dec 2014	Class 14: Jewellery and watches
1662513	4 Dec 2014	Class 14: Jewellery and watches Class 35: Retail store services; mail order catalogue services; on-line retail store services
1760979	LEE HEAT	29 Mar 2016	Class 25: Clothing; footwear; headgear

10.     The Wimmer Declaration contains the following claims/statements:

·     The Opponent first used the name Lee as a trade mark in relation to clothing in or about 1916.  Owing to the long, extensive and global use of the Lee Mark it has established a significant reputation and goodwill. The value of the Opponent’s sales under the Lee Mark have been over US$700 million every year since 1983 and the Opponent has spent more than $40 million per year on global advertising every year since 2000.

·     The Opponent has sold clothing in Australia for more than 40 years directly and through various licensees.  Its sales figures are not insignificant and indeed the number of units sold during the years 2011-2014 is very substantial.  Since 1997, the Opponent has used the Opponent’s Trade Marks on a variety of different goods including branded wallets, luggage, watches, belt buckles.

·     In addition to selling the Opponent’s Goods through third party retailers, the Opponent operates online stores from its websites at and and retail stores in Melbourne and Brisbane.  

·     The Deponent considers that the Trade Mark is rendered in a way that emphasises the element ‘lee’.  The Deponent considers that eyewear is another form of clothing and, like clothing, is worn for protective and fashion reasons.  It is not uncommon for major manufacturers in the clothing industry to use their trade marks for eyewear.  Examples of businesses that have extended their fashion marks to eyewear include Wrangler, Vera Wang, Gucci, Dolce & Gabbana, Guess, Versace, Prada, Chanel, Louis Vuitton, Calvin Klein, Lacoste, Armani and Burberry.  Given the extensive use of the Lee Mark in relation to clothing and clothing accessories, the close nexus between garments and eyewear, it is likely that the Applicant’s use of the Trade Mark on the Applicant’s Goods would cause them to be associated with the Opponent.

11.     The van Ruiten Declaration consists of evidence identifying certain fashion brands that were used both for clothing and eyewear, within the same stores.  The Deponent identified such a crossover for the brands Diesel, Country Road, GANT, Guess, G-Star Raw, Witchery, Sussan, Burberry, Dior, Dolce & Gabanna and Gucci.  The Deponent also notes that each of the brands referred to above have registered trade marks in Australia covering both clothing in class 25 and eyewear in class 9.

12.     The Chambers Declaration contains evidence that various statements on the Applicant’s website are false.  In particular statements on the Applicant’s website as to the existence of a flagship store are false; no such store exists.  The images on the Applicant’s website that purport to show use of the Trade Mark are stock photos.  The Applicant’s website also represents incorrectly that the Trade Mark has been registered with IP Australia and supplies a phone number that does not appear to be connected.

13.     The Chambers Declaration also suggests that the Trade Mark should be considered as two parts, being Lee and Bss, and notes that ‘B’ is used in text messages to mean spectacles or glasses.  The Trade Mark should be regarded, conceptually as ‘Lee Glasses’.

The Applicant

14.     The Li Declaration contains a number of statements that are best characterised as submissions noting that the Trade Mark and the Lee Mark are different trade marks and are in respect of different categories of goods.  It also contains examples purporting to be evidence of use of the Trade Mark being:

·     The purchase of the leebss.com.au domain name on July 19, 2017; and

·     Undated photographs of sunglasses bearing the Trade Mark.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 43, 44 and 60 of the Act. To successfully oppose the application the Opponent needs to establish one of the nominated grounds. As will become apparent, the Opponent has successfully established the ground of opposition pursuant to s 60. Consequently, it is unnecessary that I consider the remaining grounds of opposition. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

   16.     The onus of proof in an opposition rests upon the Opponent.[1]  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 14 July 2017 (‘relevant date’), being the priority date of the application in Australia.[3]

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

   [2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 60

   17. Section 60 of the Act is reproduced below:

   Section 60 - 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.

   18. To establish a ground of opposition under s 60 the Opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.[4] 

   [4] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

   19.     In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[5]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [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 …[6]

   [5] [2000] FCA 1335, [81].

   [6] (1992) 33 FCR 302, 343.

   20.     On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [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 its 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.[7]

   [7] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

   21. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[8] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

   What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[9]

   [8] (2000) 50 IPR 1.

   [9] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

   22.     Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[10]

   [10] Mark Davison, Shanahan’s Australian Law of Trade Marks and Passing Off Online Westlaw AU, [50.2415] <

   23. The Opponent has particularised the ground of opposition in the SGP as follows (I note that the Opponent expressly relied on the same particulars for the ss 42(b) and 60 grounds, which explains the references to the Australian Consumer Law and the tort of passing off):

   The Opponent and its predecessors in business have used the trade mark LEE for more than 100 years. It has been used as a standalone mark in relation to clothing since at least 1916. It has also been used in a number of different combination marks incorporating the trade mark LEE (“the LEE trade marks”).

   The LEE trade marks of the Opponent are extremely well-known and have been used in Australia continuously since at least 1973.

   The LEE trade marks of the Opponent have been used very extensively in Australia. The LEE trade marks have been used throughout the world in relation to clothing. The LEE trade marks have also been used in relation to related fashion goods such as watches, belts, wallets, clutch bags and travel bags. Each of the LEE trade marks of the Opponent have been very widely promoted in Australia and overseas since they were first adopted.

   The LEE trade marks are featured prominently on its goods and at the stores at which the Opponent’s products have been sold.

   The Opposed Trade Mark LeeBss consists of the Opponent’s LEE trade mark combined with the letters “Bss”. These additional letters have no obvious meaning and as such, the combination LeeBss has the appearance of a Lee combination trade mark of the Opponent.

   Use of the Opposed Trade Mark by the Applicant would falsely suggest that any Goods sold by reference to the Opposed Trade Mark are products of the Opponent. The Opponent’s reputation in the LEE trade marks is such that persons seeing the Opposed Trade Mark used in relation to any of the Goods would expect those goods to be associated with or have some connection with the Opponent where no such connection exists.

   As such, use of the Opposed Trade Mark in relation to any of the Goods is likely to mislead and deceive consumers that the Goods of the Applicant are those of the Opponent or some person associated with the Opponent contrary to section 18(1) of the Australian Consumer Law. Further, use of the Opposed Trade Mark by the Applicant will result in the Applicant’s Goods being passed off as goods of the Opponent or some person associated by the Opponent, constituting a passing off at common law.

   24.     The EIS demonstrates the considerable reputation of the Lee Mark as at the relevant date.  At the relevant date the Lee Mark had been used globally for over 100 years and in Australia for over 40 years across a wide variety of clothing and related fashion accessories. The Opponent’s sales in Australia on an annual basis are not huge, given the market, but they are significant.  However, given the 40 year history of the Opponent in Australia the collective sales of clothing under the Lee Mark is very large.  The Trade Mark is prominently displayed on the Opponent’s Goods and also in the high-profile retail stores that the Opponent operates in Melbourne and Brisbane.  The Lee Mark has been used prominently on clothing for 40 years and for 20 years on related fashion accessories such as wallets, luggage, watches and belt buckles, and as such has a significant reputation in respect of those goods (noting that the reputation of the Lee Mark on fashion accessories is less than the reputation on clothing, but not insignificant.  Furthermore, the presence of the Lee Mark on these goods indicates that the Applicant has extended the Lee brand from its well-known clothing to other fashion accessories.  Given the significant and long-standing usage of the Lee Mark in Australia for clothing (and more limited usage for other fashion products), I am satisfied that at the relevant date the Lee Mark had acquired a considerable reputation for clothing and a less significant reputation in relation to fashion accessories. 

   25. It is not sufficient that the Opponent merely establishes that its trade mark has a reputation. I must also be satisfied that because of that reputation use of the Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to the consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

   An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[11]

   [11] (1937) 58 CLR 641, 658.

   26.     The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn 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 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.[12]

   [12] [1979] RPC 410, 423 (citations omitted).

   27. It is well established that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J put it in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:

   A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.[13]

   [13] (1997) 38 IPR 495, 501(citations omitted). His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are applicable to s 60 of the Act.

   28.     In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:

   A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[14]

   [14] [1999] FCA 1020, [50]. These considerations by French J are a restatement of the principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

   29.     In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:

   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.[15]

   [15] [2012] ATMO 124 at [40].

   30. While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[16]

   [16] [2016] FCA 729 at [142].

   31.      In the present case the Trade Mark wholly incorporates the Lee Mark’s distinctive element ‘Lee’.  While I don’t necessary accept the Opponent’s evidence that consumers would read the ‘Bss’ element as ‘glasses’, I do consider it likely that consumers would focus on the Lee element, both because it is the first of the two elements of the Trade Mark and because it is not clear (and no evidence on this subject has been provided by the Applicant) how to pronounce ‘Bss’ in the Trade Mark.  I find that while the marks are not identical, there is a significant degree of similarity that, given the reputation of the Lee Mark and the nexus of the respective goods and services, would lead to confusion. 

   32.      The Applicant’s Goods are eyewear.  The goods for which the Opponent’s Trade Marks have a reputation for are clothing and fashion accessories.  The EIS includes extensive and persuasive material that suggests that it is common for suppliers of clothing and fashion accessories (such as the Opponent) to extend their brand into eyewear, such that a consumer seeing sunglasses bearing the Lee Mark would think it was produced by the Opponent (in the same manner as similar clothing marks such as Diesel, Gucci, Dolce & Gabbana, Guess and Country Road produce branded sunglasses which are sold in close proximity to their clothing products).  This risk of confusion is amplified by the fact that the Opponent has already engaged in brand extension of the Lee Mark, so that a consumer familiar with the Lee Mark on clothing and its later use on belt buckles, wallets and luggage, may see the Trade Mark on eyewear and be likely to be lead to believe that this was a further brand extension by the Opponent.

   33.      Given the reputation of the Lee Mark, the similarity between the marks and the nexus between the goods that the Lee Mark has a reputation in and the Applicant’s Goods, I consider it likely that consumers familiar with the Lee Mark would see the Trade Mark used for the Applicant’s Goods and be caused to wonder whether it might not be the case that goods bearing the Lee Mark and goods bearing the Trade Mark come from the same source or that the Applicant’s Goods were marketed under the license of the Opponent.

   34. I find that because of the reputation acquired by the Lee Mark the use of the Trade Mark in connection with the Applicant’s Goods would be likely to deceive or cause confusion. I find that the Opponent has established the ground of opposition pursuant to s 60 of the Act.

   Decision

   35. I have found the Opponent has established the ground of opposition it raised pursuant to s 60 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of this application should be in accordance with the Court’s orders or directions.

   Costs

   36. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995 (Cth).

   Nicholas Smith
   Hearing Officer
   Oppositions and Hearings
   14 May 2019