Opposition by TRU Kids Inc to registration of trade mark application number 1924315 (class 20) – beanbags r us (Figurative)- in the name of Bean Bags R Us Pty Ltd
[2020] ATMO 144
•1 September 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re: Opposition by TRU Kids Inc to registration of trade mark application number 1924315 (class 20) – beanbags r us (Figurative)- in the name of Bean Bags R Us Pty Ltd
Delegate:
M. Cooper
Representation:
Opponent: Spruson & Ferguson
Applicant: McCullough Robertson Lawyers
Decision:
2020 ATMO 144
Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 44, 60 and 42(b) grounds pressed - none established – registration to proceed.
Background
This matter concerns an opposition by TRU Kids Inc (‘Opponent’), under s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’), to registration of the trade mark detailed below in the name of Bean Bags R Us Pty Ltd (‘Applicant’):
Application Number:
1924315
Trade Mark:
(‘Trade Mark’)
Filing Date:
3 May 2018
Specification:
Class 20: Bean bags; Bean bags for outdoors; Bean bags for indoors; Bean bags for pets; Bean bags for the pool.
(‘Goods’)
The Trade Mark was examined and advertised as accepted for possible registration on 27 September 2018 in the Australian Official Journal of Trade Marks.
On 27 November 2018, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 27 December 2018, it filed a Statement of Grounds and Particulars (‘SGP’) which cited opposition grounds under sections 44, 60 and 42(b) of the Act. The Applicant filed a Notice of Intention to Defend on 18 February 2019. The parties then filed their evidence as detailed further below.
On 28 November 2019, the Opponent requested a hearing. The hearing was scheduled for 23 July 2020 however neither party appeared. I have proceeded to decide the matter as delegate of the Registrar on the filed written materials.
Evidence
Evidence in Support was filed by the Opponent on 22 May 2019. It comprised the declaration of Jason M Barr, Deputy General Counsel and Secretary of TRU Kids Inc, dated 21 May 2019, with Annexures A – I, including confidential annexures G and H (‘Barr declaration’).
The Applicant’s Evidence in Answer was filed on 27 August 2019 and comprised the declaration of Geoff Brand, the Applicant’s CEO, dated 26 August 2019, with Annexures A – E, including confidential Annexure D (‘Brand declaration’)
The Opponent’s Evidence in Reply was filed on 29 October 2019 and comprised the declarations of Jason M Barr, dated 25 October 2019, with Annexure A (‘second Barr declaration’) and Roseanne Mannion, the Opponent’s Trade Mark Attorney, dated 29 October 2019, with Annexures A-C (‘Mannion declaration’).
In accordance with directions, the Opponent and Applicant filed written submissions on 9 and 16 of July 2020, respectively.
Evidence in Support
The Barr declaration outlines the history of the toy retailer Toys R Us Inc, which ceased operations in 2018. He states that the current Opponent[1], Tru Kids Inc, purchased its intellectual property, including the trade marks and goodwill, from Geoffrey LLC in January 2019. Throughout the declaration ‘Toys R Us’ is used as a collective reference to Geoffrey, LLC, Geoffrey, Inc and Tru Kids Inc. The declaration lists the wide variety of goods marketed and sold under the brands ‘Toys R Us’ and ‘Babies R Us’, noting that the first ‘Toys R Us’ toy store opened in the US in 1948 and at 2018 it had 739 stores in the US and more than 750 stores internationally. Its first branded Australian store opened in 1993 and at 2018 the Opponent had 44 Australian stores. In 1998 the Opponent had started selling toys from its website The declaration also lists charities and environmental initiatives in which Toys R Us was engaged over the years of its operation.
[1] On 16 July 2020 the Opponent effected its name change from Geoffrey LLC under s 53 of the Act.
Annexures include a list of the Opponent’s trade marks and examples of their use on listed goods and services and on retail stores and signage from 2008-2018. Confidential details of sales, advertising and promotion are also annexed.
Barr claims that when the Trade Mark was filed the Opponent had already accrued a significant reputation in its trade marks. He claims that use of the Trade Mark would cause confusion because Australians would be likely to think the Goods offered are affiliated, sponsored or otherwise associated with ‘Toys R Us’ when this is not the case.
Evidence in Answer
12. The Brand declaration outlines the history of the Applicant’s use of the Trade Mark, stating that it has been using it since 2011 on beanbags and beanbag-related products, in its store and online (beanbagsrus.com.au and prior to this, bean-bags-r-us.com), with no objection by the Opponent. Brand asserts that this lack of action is ‘in effect tacit approval of the Applicant’s honest continuous use ...’ He further notes that there have been no reports of any confusion between the Trade Mark and the Opponent’s trade marks. Attached annexures demonstrate Trade Mark use as well as sales, revenue and marketing expenditure for 2017-2019. Brand states that the Applicant aimed to provide ‘unique and high-quality beanbag products that were not available anywhere else’. He states his belief that the phrase ‘R Us’ is not distinctive and is regularly used by traders. He annexes a list from the Register showing 91 currently registered trade marks containing ‘R Us’, of which 27 are owned by the Opponent. He notes that both the United States and Australia have allowed the registration of the Trade Mark.
Evidence in Reply
The second Barr declaration responds to the Applicant’s observation that the Opponent has never objected to the Applicant’s use of the Trade Mark, stating that it did not become aware of the Trade Mark until November 2018 when it was disclosed as part of its world-wide trade mark monitoring service. He stressed that the Opponent should not be taken to have tacitly approved of Applicant’s use of the Trade Mark.
The Mannion declaration refers to the Applicant’s list of registered marks containing “R Us’ noting those which it has opposed as well as its opposition to the Applicant’s IR No. 1439390.
Grounds of Opposition and Onus
The Opponent bears the onus of establishing one or more of the grounds of opposition and the standard of proof required is on the balance of probabilities.[2]
[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) FCR 388, 420 [133] (Besanko, Jagot and Edelman JJ) affirming the approach in Pfizer Products Inc. v Karam (2006) FCR 585, 587-94 [6]-[26] (Gyles J).
As noted above, the opposition grounds claimed in the SGP are those under ss 42(b), 44 and 60 of the Act.
The time at which a ground of opposition must be established is the date of filing of the application for registration.[3] In this case that date is 3 May 2018 (the ‘relevant date’ or the ‘priority date’ for ss 44 and 60 purposes).
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
Consideration and reasons
18. Section 44 of the Act relevantly provides:
44. Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a) the applicant's trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
In order to establish the s 44 ground of opposition under s 44(1), the Opponent must demonstrate, subject to subsections (3) and (4), that the Trade Mark is substantially identical with or deceptively similar to another person’s registered mark, is in respect of similar goods or closely related services (s 44(1)(a)(i)), and has a priority date not earlier than that of the other registered mark/s (s 44(1)(b)).
Section 14(1) of the Act provides that goods are “similar” to other goods if they are the same, or of the same description, as the other goods.
The Opponent particularised this ground in its SGP as follows:
The Opponent is the owner of various trade mark registrations and applications containing the term “R US” or similar in Australia, as outlined in Annexure A. The trade marks, the subject of the Opponent’s prior marks, are substantially identical with or deceptively similar to the Applicant’s Mark, have an earlier priority date and cover goods or services the same, similar or closely related to the goods and services covered by the opposed application.
In its written submissions the Opponent relied on its 34 registered trade marks as listed in Annexure A of the SGP (‘Opponent’s marks’). The Annexure is also attached to this decision.
Consideration
All of the Opponent’s marks have an earlier priority date than the Trade Mark. Therefore, the requirements of s 44(1)(b) are satisfied.
The Opponent submitted that K-Mart Corp v Artline Furnishers Supermarket[4], established that ‘retailing of furniture’ and ‘all goods in class 20’ were closely related goods and services and therefore its registration numbers 1334807, 1334803 and 1296497 were closely related services for the purposes of s 44(1)(a)(i). I note the comments of Finkelstein J in Colorado Group Limited v Strandbags Group Pty Limited (No 2) in relation to the case relied on by Opponent in this regard:
[4] (1991) 23 IPR 149.
In my opinion, speaking generally it is only when retailing services consist of supplying the very goods in respect of which it is said the services are related that the services and goods will be closely related: see Warnaco US Inc v Estee Lauder Cosmetics Ltd (2001) 50 IPR 143, K Mart Corporation v Artline Furnishers Supermarkets Pty Ltd (1991) 23 IPR 149.[5]
[5] [2006] FCA 880 [27]; Allsop J in Colorado Group Limited v Strandbags Group Pty Limited [2007] FCAFC 184 at 190, found no error in the primary judge’s approach in this regard.
There is no evidence that the retailing services designated in the Opponent’s above-nominated trade marks consist of the supply of the ‘very goods’, that is, beanbags. On this basis, I am not satisfied that retailing of class 20 goods is relevantly closely related to the Goods for the purposes of s 44(1)(a)(i). Similarly, I am not satisfied that the evidence, a sole dictionary definition, establishes that the Goods are the same or of the same description as a ‘toy, game or plaything’ as also covered by those marks.
Conversely, as accepted by the Applicant, the goods the subject of the Opponent’s trade marks 973938 - TOYS "R" US and 1466189 - KIDS "R" US are in respect of the same Goods (i.e. they cover bean bags in class 20). The Opponent also contended that its trade marks ‘973983’ covering pillows and cushions[6], 1710744 which covers ‘corner and edge pillows’ and 1850627 which covers maternity wedge pillows, were the ‘same or closely related goods’. Section 44(1)(a)(i) does not apply to ‘closely related’ goods and there is nothing in the evidence which supports the claim that corner and edge pillows or maternity wedge pillows are the same or of the same description as bean bags. On balance, I am not satisfied they are relevantly similar goods under s 44(1)(a)(i).
[6] This appears to be a mistaken reference as the Opponent is not the owner of TM 973983, I understand this to be a reference to 973938 which I have already accepted covers similar goods.
Therefore s 44(1)(a)(i) is satisfied only in relation to the Opponent’s trade marks 973938 and 1466189 (‘the Opponent’s identified marks’).
Substantially identical
The SGP asserted the Trade Mark was substantially identical to the Opponent’s identified marks. A side by side comparison appears below:
Trade Mark
Opponent’s marks
Trade Mark No.
Goods & Services
TOYS "R" US
973938
3, 5, 8, 10, 11, 12, 14, 15, 16, 18, 20, 21,
22, 24, 26, 27, 29, 30, 32, 36, 39, 41
KIDS "R" US
1466189
3, 5, 11, 12, 16, 20, 21, 24, 27, 28, 32
29.Having considered the marks sided by side[7], noting the significant visual differences, I am satisfied they are not substantially identical. It therefore remains to be determined whether the marks are deceptively similar.
Deceptive similarity
[7] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 [415] (‘Shell’).
Section 10 of the Act defines deceptive similarity as follows:
Section 10 - Definition of deceptively similar
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
In assessing trade marks for deceptive similarity, Windeyer J said in Shell[8]:
[8] Shell [416].
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore, the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions.
That is, a determination of ‘deceptive similarity’ requires an assessment of the likelihood of deception or confusion arising from a recollection or impression of the relevant marks by potential consumers of the goods and/or services. This is to be assessed by reference to the standards of ordinary people ‘who should not be credited with high perception or habitual caution’ and in the context of the business and the way in which the particular class/es of goods are sold or services provided.[9] A possibility of confusion is not sufficient; there must be a real tangible danger of confusion.[10] Even so, the threshold for confusion is not high.[11]A likelihood of confusion will exist if there ‘is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products…come from the same source.’[12] The Trade Mark use to be considered is notional use.[13]
[9] Australian Woollen Mills v F S Walton and Co Ltd (1937) 58 CLR 641 [658].
[10] Ibid; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 [594-5].
[11] Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153 [70].
[12] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 [50(ii)].
[13] Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353 [362].
Given the nature of the Goods, the notional use of the Trade Mark is quite narrow. While there is nothing in the Opponent’s evidence which demonstrates that it offers beanbags for sale, as noted above, the goods designated in its TMs 973938 and 1466189 include beanbags. Therefore, assuming Trade Mark use in a normal and fair manner across all the Goods, they would potentially be sold through the same trade channels as those of the Opponent, i.e. both instore and online and to the same types of Australian consumers.[14]
[14] Even though the evidence indicates that the Opponent has ceased trading in Australia.
In estimating the effect or impression produced on the mind of these potential consumers, I note the comments of the court in Starr Partners P/L v Dev Prem P/L:
The first step in the analysis is to identify the impression produced by the registered mark considered in its entirety. Similarity is not based on only part of the registered mark. On the other hand, when one decides upon the impression produced by that mark it is not improper to give more or less weight to particular features of it, provided the ultimate conclusion is based on a consideration of the mark in its entirety. This approach does no more than recognise that one word or feature of a mark can be more striking and memorable than another.
The Trade Mark and the Opponent’s identified marks share a common suffix ‘R Us’. The Opponent submitted that this ‘essential feature’ would cause consumers to wonder about a connection between the Opponent and Applicant however I do not consider “R US’ to be the essential feature. In revisiting the tests for deceptive similarity, Finn J said, in C A Henschke & Co v Rosemount Estates Pty. Ltd.:
[P]articular attention ought be paid to the first part of a name for generally the first word or syllable provides the most important means of distinguishing marks... save where the initial word or syllable is both common to the marks and is common to the trade or is commonly used by a number of trade mark proprietors, in which case the emphasis is to fall on other portions of the mark as a means of distinguishing them.[15]
[15] C A Henschke & Co v Rosemount Estates Pty Ltd. [1999] FCA 1561 [35].
The Trade Mark’s first word is not common to the marks and, although descriptive of the Goods, it is stylised and visually distinctive. It is presented in lower case with enclosed round letters forming ‘discs’, whereas the Opponent’s identified marks appear in capitals and are not stylised in any way, being descriptive of the nature of the Goods and Services they cover.[16] Aurally and phonetically the marks are also significantly different. In this context I accept the Applicant’s contention that it is the Trade Mark’s ‘striking percussive consonant B-sounds’ that are likely to be remembered.
[16] While in Re Morny ‘[T]he registration of a word in block capitals must cover use of that word in any clearly legible form of lettering and not be confined to its representation in block capitals’, the stylisation of five of the lower case letters in the Trade Mark as discs would prevent it being represented otherwise than in lower case.
Conversely, the second part of the Trade Mark and the Opponent’s identified marks are both common to the marks and commonly used by a number of trade mark proprietors. The Applicant identified 91 such currently registered marks, the Opponent identified more than 101[17]. The Opponent contended in this regard that several of the 91 identified trade marks were owned by it and identified others which covered goods and services which are not the same or closely related to the Goods. Even so, it is clear from the Register that the phrase ‘R US’ appears in many trade marks in relation to the sale of goods and associated services, indicating that the Opponent does not have a monopoly on the use of the phrase “R Us” in a trade mark for its goods and services and that it is commonly used by a number of trade mark proprietors’. As found by the delegate in Geoffrey Inc v Mary Margaret Hoyle, in respect of an application to register ‘Glass R Us’:
[17] Annexure E to Brand declaration; Annexure B to Mannion declaration.
Part of the context here is the fact that the (GOODS) R US type of trade mark is regularly used by traders other than the parties - there are 31 registrations of trade marks incorporating, or based on, the sign (GOODS) R US. Looked at from this point of view, while the trade marks are similar, they are not deceptively so, as the registrations may be taken as indicating that the public is well used to distinguishing between business which have coined trade marks based on the sign (GOODS) R US and do not regard the type of trade mark as indicating a particular trader.
The trade marks are not deceptively similar.[18]
[18] [2004] ATMO 44 [33-4]; See also in Fabio and Antoinette Baroni v Toys "R" Us, Inc [1992] ATMO 69
For the same reasons I am not satisfied that ‘R Us’, as a common feature of the Opponent’s identified marks and the Trade Mark, would be likely to cause consumers to make a connection between the Trade Mark and the Opponent. This common usage in the course of trade in Australia diminishes the likelihood of a consumer associating the Trade Mark with the Opponent’s identified marks.
Therefore, even taking into account an imperfect recollection of the Opponent’s identified marks, given the above, and the distinctive visual features of the Trade Mark, which are absent from the Opponent’s identified marks, and the clearly different aural effect of the first word, I consider that any likelihood of confusion or deception between the Trade Mark and the Opponent’s identified marks is, at best, a mere possibility.
It follows that I do not consider that the Trade Mark ‘so nearly’ resembles any of the Opponent’s identified marks in any material way such that it would be ‘likely to deceive or cause confusion’ among ‘persons of ordinary intelligence and memory’, even allowing for imperfect recollection. In coming to this conclusion, I have been cognisant of the presumption of registrability which is to be applied in favour of the Applicant.[19]
[19] See Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300, [27], quoting Pfizer Products Inc v Karam (2006) 237 ALR 787; 70 IPR 599; [2006] FCA 1663 at [8].
For the above reasons I am not satisfied that the Trade Mark is deceptively similar to the Opponent’s marks as listed above within the meaning of s 44 (1). It follows that the Opponent has failed to establish this ground of opposition under s 44.
Section 60
Section 60 provides as follows:
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.
Note: For priority date see section 12.
Therefore, to establish the s 60 ground of opposition, an opponent must demonstrate that, at the relevant date, there was another trade mark that had acquired a reputation in Australia and because of that reputation, use of the trade mark sought to be registered would be likely to deceive or cause confusion.
The Opponent particularised this ground in its SGP as follows:
Trade mark is similar to a trade mark which has acquired a reputation in Australia – Section 60
The Opponent is a subsidiary of Toys “R” Us, Inc., that owns and operates the wellknown TOYS “R” US and BABIES “R” US retail stores worldwide, including in Australia. The TOYS “R” US and BABIES “R” US stores sell a wide range of toys, games, sporting goods, children’s playthings, party supplies, educational toys and games, costumes, dress up accessories (including sunglasses and hats), and baby products. In addition, the Opponent provides a variety of services ancillary to its retail services, including a Baby Registry, Wish List Registry, online retail services, Layby services,
VIP Club services which include reward point redemption services and Gift cards (“Opponent’s Goods and Services”). The Opponent first used its TOYS “R” US trade mark in connection with the Opponent’s Goods and Services at least as early as 1948 in the USA, and use of the mark has been continuous since that time. Use of the TOYS “R” US mark and other marks containing the suffix “R US” have since expanded globally, including long standing use of the TOYS “R” US mark in Australia since at least 1993. As a result of the Opponent’s continuous, longstanding and extensive use of the TOYS “R” US and associated marks in Australia and around the world, the Opponent has acquired a reputation in trade marks consisting of or containing the term “R US”, such that use of the Applicant’s Mark is likely to deceive or cause confusion.
The Opponent relies in its submission on the Opponent’s marks as listed in Annexure A of the SGP.
Reputation
Kenny J’s remarks in McCormick & Co Inc v McCormick [20] in relation to s 60 and the measurement of reputation are relevant in this respect:
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.
In addition, the reputation required to be demonstrated must be one of which a considerable number of people in the relevant market would be aware.[21]
[21] Renaud Cointreau v Cordon Bleu International Ltd [2001] FCA 1170 [75].
The Opponent submits that ‘it is beyond dispute that the Opponent’s Toys “R” Us and Babies “R” Us trade marks are well known and popular in Australia and internationally’ and because of that reputation there is a real likelihood of confusion with the Trade Mark. It contends that, given the prominence of ‘R Us’, the little differentiation between the marks, the similarity of the Goods to those for which the Opponent has a reputation ‘the only result is that a consumer will be caused to wonder if there is some connection between the goods being offered under the Opposed Mark and the goods and services for which the Opponent has a reputation.’
As observed by the Applicant, the Opponent has sought to rely on 34 of its registered Trade Marks containing the element ‘R Us’, failing to identify a particular trade mark in which its reputation is said to vest. The evidence provided of sales revenue and advertising did not identify under or by reference to which of the Opponent’s marks the sales were made or the expenditure incurred, or what part of it related to Australia.
In this context, the evidence relied on by the Opponent to demonstrate its Australian reputation in its marks is comprised of online articles with headlines as follows: ‘Toys “R” Us sets sight on Australian relaunch after being resurrected from bankruptcy’ dated 20 February 2019; ‘Toys “R” Us Australia accumulates $450m in losses’ dated 7 April 2015 and which said of ‘Toys R Us’ that ‘Researchers IBISWorld said it had lost market power over the past five years, but was the second-biggest player in the $850 million toy and game retailing industry’ and had 20.7% share of that industry in Australia. An annexed Wikipedia article refers to Toys “R” Us as having been ‘predominant in its niche field of toy retail’ but notes it entered bankruptcy and closed all its stores in US in June 2018, its British stores in April 2018 and closed all its Australian stores on 5 August 2018. Further photographs and materials, many undated, show post campaign reports and advertising relating to the opening of its Australian stores, predominantly demonstrating use of the trade marks (Australian TMs 1334803) and (Australian TM 1296497). These trade marks also predominate in Wayback machine screenshots of the website Given the evidence of the Opponent’s significant market share in toy retailing in Australia at the relevant date, I accept that the Opponent had a reputation in its trade marks 1334803 and 1296497 (‘Opponent’s stylised marks’) in that industry at that date. There is insufficient evidence to establish the Opponent’s reputation in any of its other marks.
Likelihood of deception or confusion
It is also necessary for the Opponent to establish that, because of its reputation in its marks, notional use of the Trade Mark on the Goods would be likely to deceive or cause confusion among relevant Australian consumers.
The assessment of the likelihood of deception or confusion 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’.[22]
[22] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124 [40].
For the reasons discussed above, I do not consider that the evidence supports the Opponent’s claims that ‘R Us’ is the ‘distinctive element’ in the Opponent’s marks that will be referred to or recollected, instead, the strength of its reputation resides in the whole of its mark ‘TOYS R US’ as stylised. That is, the use of the relatively common name ‘R Us’ in the marks will lead consumers to pay more attention to the first element. Consequently, any risk of deception or confusion is diminished.[23] I also note my above finding that the Opponent’s identified marks (word marks) are not deceptively similar to the Trade Mark. The Opponent’s stylised marks, in which its reputation resides, are highly stylised and therefore even less similar to the Trade Mark. In relation to a nexus between the Goods, the evidence establishes the Opponent’s reputation in toys and toy retailing. The Barr declaration listing the goods sold by the Opponent in Australia does not include beanbags. Annexure D to that declaration purportedly contains a photograph of a ‘moon’ chair that is the same as those sold in Australian stores. I note that there is nothing in or around the photograph that indicates any association with the Opponent’s trade marks or ‘Toys R Us’. Other than it being something to sit on, it does not appear to have any similarity to a beanbag. The evidence does not establish that a consumer or trader seeking to purchase or trade in beanbags would consider purchasing from a toy store or that the circumstances in which beanbags are sold have any nexus to toy retailing. I am therefore not persuaded there is any relevant connection between the goods and services sold and provided under the Opponent’s stylised marks and the Trade Mark.
[23] See also Carlton and United Breweries Limited v Melbourne Bros [1999] ATMO 111 (29 October 1999).
Therefore, while I accept that the Opponent had a significant reputation in toy retailing at the relevant date, there is no probative evidence indicating a real likelihood of deception or confusion occurring among relevant Australian consumers in the marketplace by virtue of the use of the Trade Mark..
It follows that the Opponent has not established the s 60 ground of opposition.
Section 42
Section 42 of the Act provides:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.
The Opponent’s SGP particularised this ground as follows:
Given the Opponent’s continuous and extensive use of trade marks consisting of or containing the words “R US” in Australia and around the world, use of the Applicant’s trade mark for the goods claimed in the opposed application would constitute passing off and/or misleading and deceptive conduct in breach of the Australian Consumer Law, and/or trade mark infringement.
In relation to s 42(b), the Opponent referred to its submissions for ss 44 and 60.
The Applicant submitted that the marks ‘are simply not sufficiently similar for there to be any likelihood of confusion or for anyone to be misled or confused.’
Consideration
The onus is on the Opponent to establish that use of the Trade Mark would be, rather than could be, contrary to law, on the balance of probabilities.[24]
[24] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 [411].
Section 18 (formerly s 52 of the Trade Practices Act 1974 (Cth)(‘TPA’)) and s 29 of the Australian Consumer Law (‘ACL’) concern consideration as to whether the relevant consumers would be misled or Opponent. The Court noted in Puxu that ‘conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s 52.’[25]
[25] Custom Built Furniture Pty Ltd vPuxu Pty Ltd (1982) 149 CLR 191 [198].
I note my findings above under the s 60 ground that use of the Trade Mark would not cause a person to be confused or to wonder as to the source of the Goods. It follows that I am not satisfied, in the absence of any further persuasive evidence in this regard, that the Opponent has discharged the onus on it to establish that use of the Trade Mark would be likely to mislead or deceive within the meaning of s 18 of the ACL.
The relationship between passing off and (then) s 52 of the TPA was addressed by Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation where he said:
The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[26]
[26] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 [39]; (1989) 16 IPR 431.
That is, where use of a trade mark does not contravene s 18 of the ACL, neither will it amount to passing off. While I accept that the Opponent has a reputation in some of its trade marks, there is no persuasive evidence before me that indicates or even suggests a relevant misrepresentation by the Applicant. Therefore, the Opponent has not established that use of the Trade Mark would be likely to be contrary to law in the sense that it constitutes passing off.
In relation to the Opponent’s claim of trade mark infringement under s 120 of the Act, this is a decision which is outside the Registrar’s jurisdiction.[27]
[27] Parkside Towbars Pty Ltd v Tow-Safe Pty Ltd (2011) 91 IPR 416; [2011] ATMO 17 at [37] – [38].
Accordingly, the s 42(b) ground of opposition has not been established.
Decision
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.
Note: For limitations see section 6.
Subsection (3) does not apply to these proceedings.
The Opponent has failed to establish any of the grounds of opposition it nominated in its SGP. Accordingly, the Trade Mark may proceed to registration after one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.
Costs
Both parties sought costs. As the Applicant was the successful party, I award costs against the Opponent under s 221 of the Act in the amounts set out in Schedule 8 of the Regulations.
M.Cooper
Hearing Officer
Delegate of the registrar of Trade Marks1 September 2020
ANNEXURE A
Number
Trade Mark
Class.
Status.
376288
42
Registered
376289
28
Registered
403804
28
Registered
403805
25
Registered
474054
28
Registered
530103
28
Registered
534070
25
Registered
534071
42
Registered
534072
28
Registered
575214
9
Registered
575215
25
Registered
610945
42
Registered
681106
42
Registered
Number
Trade Mark
Class.
Status.
703810
42
Registered
724062
TOYSRUS.COM
42
Registered
737265
10, 16, 25
Registered
847342
25, 28, 35
Registered
849170
TOYS "R" US EXPRESS
35
Registered
913304
TOYS "R" US TOY BOX
35
Registered
959253
TOYS "R" US
35
Registered
973938
TOYS "R" US
3, 5, 8, 10, 11, 12,
14, 15, 16, 18, 20,
21, 22, 24, 26, 27,
29, 30, 32, 36, 39,
41Registered
974370
BOOKS "R" US
35
Registered
1011299
BABIES "R" US
35
Registered
1132027
PARTIES R US
11, 16, 25, 28, 35
Registered
1296490
35
Registered
1296497
35
Registered
1307189
TOYS R US
9
Registered
1334803
35
Registered
1334807
35
Registered
1403205
25
Registered
Number
Trade Mark
Class.
Status.
1466189
KIDS "R" US
3, 5, 11, 12, 16,
20, 21, 24, 27, 28,
32Registered
1710744
BABIES "R" US SAFETY PROTECT YOUR BABY
11, 20
Registered
1774472
BABIES "R" US BATH
9, 11, 20, 21, 22,
27, 28Registered
1840627
BABIES "R" US CARE
3, 5, 8, 9, 10, 11,
16, 20, 21, 22, 24,
25, 26Pending
[20] (2000) 51 IPR 102; [2000] AIPC 91-637; [2000] FCA 1335 [127].
0
21
0