Opposition by Verge Design Ltd to registration of trade mark application number 1896764 (class 9,14,18, 25, 35) - VERGE GIRL- in the name of Romani Clothing Pty Ltd ATF the Dionyssiou Family Trust

[2020] ATMO 1

TRADE MARKS ACT 1995

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

Re:Opposition by Verge Design Ltd to registration of trade mark application number 1896764 (class 9,14,18, 25, 35) - VERGE GIRL- in the name of Romani Clothing Pty Ltd ATF the Dionyssiou Family Trust

Delegate:	M. Cooper
Representation:	Opponent: Ben Gardiner of counsel Applicant: Ian Horak of counsel instructed by Girl Friday
Decision:	[2020] ATMO 1 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds under s 42(b), 44, 58 and 60 pressed - s 60 grounds established.

Background

1. This matter concerns an opposition by Verge Design Ltd. (‘the Opponent’), under s.52 of the Trade Marks Act 1995 (‘the Act’), to registration of the trade mark detailed below in the name of Romani Clothing Pty. Ltd. (‘the Applicant’):

   Application Number: 1896764

   Trade Mark: VERGE GIRL (‘the Trade Mark’)

   Filing Date: 22 December 2017

   Goods and Services

   Class 9:

   Eyeglasses; Eyewear; Sun visors (eyewear); Spectacles (glasses); Sun spectacles; Sunglasses

   Class 14:

   Articles of jewellery; Bracelets (jewellery); Brooches (jewellery); Chains (jewellery); Charms for jewellery; Costume jewellery; Custom jewellery; Decorative articles (trinkets or jewellery) for personal use; Decorative brooches (jewellery); Decorative pins (jewellery); Fashion jewellery; Hair ornaments of precious metal (jewellery); Hat jewellery; Items of jewellery; Jewellery; Jewellery articles; Jewellery charms; Jewellery findings; Jewellery for personal adornment; Jewellery for personal wear; Jewellery items; Jewellery ornaments; Jewellery products; Jewellery watches; Leather jewellery; Lockets (jewellery); Neck chains (jewellery); Necklaces (jewellery); Pendants (jewellery); Personal jewellery; Precious jewellery; Rings (jewellery); Shoe jewellery; Sterling silver jewellery; Wrist bands (charity, jewellery); Wristlets (jewellery); Mobile phone accessory charms

   Class 18:

   Airline travel bags; Articles of luggage being bags; Athletics bags; Bags for toiletry kits; Bags made of imitation leather; Bags made of leather; Beach bags; Carrying bags (other than disposable carrier bags); Casual bags; Cosmetic bags (not fitted); Cosmetics bags (not fitted); Duffel bags; Duffle bags; Evening bags; Gym bags; Jewellery bags (empty); Leather bags; Luggage bags; Make-up bags; Messenger bags; Overnight bags; Pouches (bags); Shopping bags; Shoulder bags; Sling bags; Toilet bags; Toiletry bags; Tote bags; Travel bags; Travelling bags; Weekend bags; Work bags; Wristlets (bags); Card holders (wallets); Change purses; Clutch purses; Coin purses; Evening purses; Handbags; Handbags made of imitation leather; Handbags made of leather; Ladies handbags; Leather purses; Leather wallets; Luggage; Pocket wallets; Purses; Ticket holders (pocket wallets); Travelling handbags

   Class 25:

   Apparel (clothing, footwear, headgear); Athletic clothing; Beach clothing; Beach hats; Beach robes; Beachwear; Belts (clothing); Casual clothing; Clothing; Clothing for swimming; Clothing, not being protective clothing, incorporating reflective or fluorescent elements or material; Denims (clothing); Dress shoes; Dresses; Footwear; Footwear for women; Girl's clothing; Gloves (clothing); Hats; Headbands (clothing); Jackets (clothing); Jump suits (clothing); Knitwear (clothing); Ladies clothing; Ladies wear; Leather belts (clothing); Lingerie; Pants (clothing); Playsuits (clothing); Ready-made clothing; Ready-to-wear clothing; Robes; Scarves; Shoes; Slips (clothing); Swimming robes; Swimsuits; Swimwear; Underwear; Women's clothing; Wraps (clothing)

   Class 35:

   Discount services (retail, wholesale, or sales promotion services); Distribution of goods (not being transport services) and wholesale of goods; Presentation of goods on communication media, for retail purposes; Online promotion on a computer network; Retail clothing shop services; Retail services; Retailing of goods (by any means); The bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods; Wholesaling of goods (by any means); Production, organisation and presentation of fashion shows for advertising or promotional purposes

   (‘the Goods and Services’)

   Endorsement: Provisions of paragraph s 44(3)(a) and/or Reg 4.15A(3)(a) applied.

2. The Trade Mark was examined and advertised as accepted for possible registration on 17 May 2018 in the Australian Official Journal of Trade Marks.

3. On 26 June 2018 the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark and its Statement of Grounds and Particulars (‘SGP’). It cited opposition grounds under sections 42(b), 44, 58, 60 and 62A of the Act.

4. The Applicant filed a Notice of Intention to Defend on 10 September 2018.

5. On 21 June 2019 the Applicant requested a hearing. I heard the matter in Canberra on 20 September 2019 as a delegate of the Registrar of Trade Marks. Ben Gardiner of counsel appeared for the Opponent. Ian Horak of counsel instructed by Fi Nguyen of Girl Friday appeared for the Applicant.

Evidence

1. Evidence in Support was filed by the Opponent on 15 December 2018. It comprised statutory declarations made by:

   • Mr Andrew Rae, the co-owner and co-managing director of the Opponent, on 13 December 2018 (‘first Rae declaration’) with exhibits AR-1 to AR-17;
   • Mr Neil Brabant, a former co-owner and co-managing director of the Opponent, on 7 December 2018 (‘Brabant declaration’) with exhibits NSB-1 to NSB-8;
   • Ms Bettina Hemming, a fashion agent employed by the Susie Sharrock Agency and brand manager for the VERGE label in Australia, on 13 December 2018 (‘Hemming declaration’) with exhibits BH-1 to BH-7;
   • Ms Debbie Wren, owner of Cutting Edge Fashion Marketing, a fashion agency, on 11 December 2018 (‘Wren declaration’) with exhibits DW-1 and DW-2;
   • Ms Susan Ballam, a fashion boutique owner, on 12 December 2019 (‘Ballam declaration’) with exhibits SB-1 to SB-4; 
   • Ms Yvonne Manning, fashion boutique co-owner and co-director, on 12 December 2018 (‘Manning declaration’) with exhibits YM-1 to YM-7; and
   • Ms Natalie Hanley, co-owner and managing director of three retail fashion boutiques, on 12 December 2018 (‘Hanley declaration’) with exhibits NH-1 to NH-4.

2. The Applicant’s Evidence in Answer was filed on 20 March 2019 and consists of statutory declarations made by:

   ·Ms. Daniella Dionyssiou, the Applicant’s co-owner and managing director, on 18 March 2019 (‘Daniella declaration’) with exhibits DD1 to DD3;

   ·Ms. Natalie Suesskow, Daniella’s sister and the Applicant’s co-owner and creative director, on 18 March 2019 (‘Natalie declaration’) with exhibits NS1 to NS2;

   ·Ms. Soty Dionyssiou, Daniella and Natalie’s mother and the Applicant’s co-founder, on 18 March 2019 (‘Soty declaration’);

   ·Mr. Dennis Dionyssiou, Daniella and Natalie’s father and the Applicant’s co-founder, on 18 March 2019 (‘Dennis declaration’);

   ·Mr. Cale Suesskow, Natalie’s husband and the Applicant’s operations manager, on 18 March 2019 (‘Cale declaration’);

   ·Mr. Joseph Carter, the Applicant’s accountant, on 18 March 2019 (‘Carter declaration’) with exhibits JAC1 to JAC6;

   ·Ms. Fiona Nguyen, the Applicant’s attorney, on 19 March 2019 (‘Nguyen declaration’) with Exhibits FN-1 and FN-2.

3. The Opponent’s Evidence in Reply was filed on 24 May 2019 and is comprised of a further statutory declaration by Mr. Andrew Rae (‘second Rae declaration’) with exhibits AR-1 to 4.

4. The Opponent and Applicant filed written submissions on 6^th and 13^th September 2019 respectively.

   Opponent’s evidence

5. In his first declaration, Mr. Rae stated that he is the Opponent’s co-owner and co-managing director with Rehia Ihaka, with whom he purchased Verge Sportswear Ltd (VSL), which included the Opponent, in 2016. The Sale Agreement was exhibited and confirmed the sale included the business goodwill and intellectual property, including (among others) Australian registered trade marks 760459 and 1612607 for the word VERGE (‘the Opponent’s marks’). He stated that VERGE is the Opponent’s house mark and appears on its entire range of clothing which has been sold and extensively marketed in Australia since July 1998.

6. He said the Opponent’s NZ-designed clothing is sold in Australia to owner-operated boutique retail stores through the Australian distributor, Suzie Sharrock Agency (‘the Agency’). He claimed that the target group is women 30+ looking for affordable mid-range fashion and exhibited examples of the Opponent’s marks on clothing in a variety of media such as Facebook, Instagram, Pinterest, and attached selected screenshots from the Wayback machine. He said from 2010 the garments have been advertised on the Opponent’s website and interested customers are referred to the relevant retail outlets in Australia. Confidential figures for promotion, advertising and marketing of the brand were provided as well as sales volumes and value.

7. In his declaration, Mr. Brabant stated that he worked in the fashion industry from 1985 to 2016, owning VSL and operating the VERGE fashion brand in Australia and NZ from July 1998 to January 2016 when he sold the business to Andrew Rae. He said that he and his partner chose the name VERGE in 1998 and filed the Trade Mark application in Australia on 23 April 1998 for class 25 (760459) and later for class 9 (1612607). It has been used on all products and ranges sold in Australia since July 1998. While the Agency distributed the goods in Australia, all marketing and promotion was VSL’s responsibility. He attached evidence of various promotional activities and the physical materials used and claimed that the brand was well-known among Australian consumers and in the retail and fashion industry. He said he was aware of the Applicant’s earlier VERGE GIRL trade mark application (1666233, ‘the Applicant’s prior application’) in 2014 and noted that the Opponent also sold accessories, sunglasses, garment bags and scarves. He claimed that if the Trade Mark is registered it will lead to customer confusion and allow the Applicant to trade off the Opponent’s goodwill.

8. In her declaration Ms. Hemming stated that she is the Agency brand manager responsible for distributing the VERGE label throughout Australia. She said there are more 160 accounts for VERGE labels throughout Australia and the clothing ‘includes all types of women’s fashion clothing’ with VERGE ‘displayed on swing tags and sewn-in labels.’  She confirmed that the Opponent has maintained control over all promotional material, including the website, catalogues and brochures, posters, window decals, look books etc. which the Agency purchases from it.  She noted that the VERGE website advertises its goods and directs customers to individual Australian retailers who stock its products and who also sell from online stores. She claimed retailers advised her that ‘the VERGE label was key to the growth of their online store’. She noted that the Agency had received several enquiries from VERGE retailers who, in a Google search for VERGE, had come across VERGE GIRL. She said they contacted the Agency to express their confusion and concern, ‘questioning if VERGE had launched a new younger line without advising them.’

9. Ms. Wren, an Agency employee who said she sells VERGE to over 30 boutiques in a variety of Australian states, lists various advertising and promotional activities undertaken by VERGE and claimed it is a ‘very sought after label’ with a strong following among retailers and female customers. She said it is known for its quality and, for many retailers, is their main income source. She claimed the clothes can be worn by any age group but are targeted at women aged 35+. Based on her experience, she believed VERGE GIRL would be viewed as a VERGE line for a younger demographic.

10. The other declarations provided were from store owners who are long-term retailers of the Opponent’s products. In summary they stated that VERGE is a key brand, delivering a diverse range of clothing to suit a wide age group of women. They generally claimed that the use of VERGE GIRL would be confusing to customers who are unlikely to realise that they have purchased from a different brand. The Hanley declaration asserted actual confusion[1]advising that a customer had complained to her about the cost of VERGE clothing as a VERGE GIRL top she had purchased had been cheaper.

    [1] Paragraph 22

Applicant’s evidence

1. The Applicant’s declarations are relevantly summarised below, but they generally provided similar information and their statements were frequently mirrored as follows:

   ·     The Applicant attempted to register VERGE GIRL in 2014 but following adverse examination reports it was allowed to lapse (trade mark application 1666233).

   ·     The Applicant was unaware of the Opponent’s marks until it received the examiner’s report for the above application.

   ·     The Opponent has made no contact with the Applicant regarding the earlier application.

   ·     The Applicant’s and Opponent’s businesses have successfully co-existed with no issues arising and without any apparent negative impact on the Opponent’s brand.

   ·     The Applicant is unaware of any customer confusion.

   ·     It is important to register the Trade Mark to protect the Applicant’s business goodwill and value.

   ·     The Applicant filed this application following an approach and advice from Ms. Nguyen.

   ·     The markets are different for the Opponent’s and Applicant’s products because the Opponent’s customers are older women who prefer to shop instore while the Applicants are younger women who prefer to shop online.

2. The Applicant’s current co-owner and managing director, Daniella Dionyssiou, outlined the history of the retail businesses that her mother and father started in 1985 and their subsequent purchase of ‘Verge Shoes’ in 2006, which they continued to operate as a footwear retailer. She said she and her sister (Natalie Suesskow) took over the business in 2010, renaming it ‘Verge Elizabeth Arcade’ and successfully repositioning it ‘within the young women’s fashion space’. She said that they decided to register the Trade Mark ‘to strengthen our brand with our target demographic and market’ which she identified as 18-25-year-old females. Following closure of their two retail outlets, she said they now only sell online through their domain name and offer VERGE GIRL branded products only. She claimed the Applicant has built up brand awareness through social media such as Facebook, Instagram, Pinterest, and it has grown significantly since 2012.

3. Cale Suesskow, husband of Natalie, stated that he has been the Applicant’s Operations Manager since July 2016. He provided figures for Facebook, Instagram and Pinterest followers and attached a table of user numbers from Google Analytics.

4. In Ms. Nguyen’s declaration she said she became aware of the Applicant’s brand and offered her services to review the previous Trade Mark application, subsequently lodging this application. She compared the Applicant’s products to those of the Opponent, asserting the Opponent’s product is high-end and more costly whereas the Applicant’s products are more affordable. She noted the absence of any consumer confusion and any apparent adverse effect on the Opponent’s business. She outlined the history of the Trade Mark and exhibited her declaration in response to the first examination report, which included invoices displaying the Trade Mark, revenue and turnover figures and examples of Trade Mark use on social media, website and third-party retail sites and platforms.

Grounds of Opposition and Onus

1. 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] FCAFC 156 affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599, 6-26.

2. As noted above, the Opposition grounds claimed in the SGP are those under sections 42(b), 44, 58, 60 and 62A of the Act. At the hearing the Opponent confirmed that it no longer pressed the s 62A ground.

3. 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 22 December 2017 (‘the relevant date’, also referred to as the priority date in s 44 and s 60). 

   Consideration and reasons

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

   Section 60

4. 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.

5. 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 would be likely to deceive or cause confusion.

6. The Opponent claimed in the SGP as follows:

   Before the date of the application, the Opponent had established a very substantial reputation in its mark VERGE in relation to the goods and services for which registration is sought, or for closely related goods and services. In particular, it had established that reputation in respect of women’s apparel including clothing, footwear and headgear as well as sunglasses and other fashion accessories.

   As a result of the Opponent’s reputation in its mark VERGE, the Applicant’s use of the Trade Mark would be likely to deceive or cause confusion.

7. The Opponent submitted that its evidence demonstrated extensive marketing and sales throughout Australia of the Opponent’s VERGE labelled clothing since 1998, sold in boutique retail stores in every Australian state. Details of promotional and advertising expenditure were provided as were substantial sales figures for the period June 2009 to March 2018. It contended that the substantial identity of the marks, or at least their deceptive similarity, and their use since 1998 on goods and services the same as those of the Trade Mark, meant the risk of consumer confusion was high.

8. The Applicant noted the Opponent’s application to register ‘VERGE Acrobat’ as a trade mark and submitted it was impossible to disentangle its reputation from that of the Opponent’s marks. It relied on the Opponent’s statements which indicated that this range ‘underpins’ its business. It also contended that any reputation Opponent enjoys is confined to a ‘narrow group of sophisticated consumers’ of women aged 40+ who shop in a personalised boutique environment and is not a reputation among garment purchasers generally. That is, it cannot show a reputation in a ‘not insubstantial’ number of consumers in the relevant wider market. Even if there was such a reputation, there is unlikely to be confusion because these people are ‘well appraised” of the Opponent’s business.

   Reputation

9. The comments of Kenny J in McCormick & Co Inc v McCormick in relation to s.60 and the measurement of reputation are relevant:

   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.[4]

   [4] McCormick & Co Inc v McCormick (2000) 51 IPR 102, 86.

1. The Opponent’s evidence demonstrated substantial sales, promotions and advertising and significant use of the VERGE trade mark as a badge of origin in connection with clothing and associated fashion items over several years in Australia. Witness evidence supported the strength of the Opponent’s reputation in its marks and its appreciation in Australian women’s fashion generally.

2. Contrary to the Applicant’s contentions that the reputation was insufficient to enliven s 60(a), the evidence does not establish that it is limited to women in the age group 40+ or to its VERGE Acrobat range and I consider the Applicant has conflated the Opponent’s evidence in this regard. While the Opponent acknowledged the importance of its Acrobat range to its business, the exhibited evidence and other witness declarations did not suggest that it had a reputation that overshadowed or was separate to that of the VERGE branded range generally. If anything, it served to emphasise the Opponent’s brand extension activities. None of the evidence indicated sales only to the 40+ age group. While the Ballam declaration stated that her clientele is predominantly women over 40 years of age, she also said that the brand suits a wide age range of women and she has sold to customers in their 20s and 30s. Generally, the Opponent’s declarants indicated they sold to women of all ages (see Hanley and Manning declarations).

3. The characterisation of the Opponent’s consumers as confined ‘to a narrow group of sophisticated consumers’ who shop in a personalised boutique environment is also inconsistent with the witness evidence of the brand’s online activity, general appeal and mid-range price point. In relation to mode of sale, the Brabant declaration evidenced the establishment of the Opponent’s online website in 2010 and its subsequent social media engagement. Although sales are not made through these sites, consumers are forwarded to individual retailer sites where goods can be purchased. Hanley, Manning and Ballam each attested to the effectiveness of their online and social media advertising and promotion of VERGE products.

4. Given the Opponent’s significant evidence in this regard, I am satisfied that, at the relevant date, the Opponent had established a reputation in the Opponent’s marks in the Australian fashion industry among a significant number of Australian consumers and retailers for the purposes of s 60(a).

   Likelihood of deception or confusion

5. 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 and Services would be likely to deceive or cause confusion among relevant Australian consumers.

6. The meaning of the words “likely to deceive or cause confusion” were discussed by the Full Federal Court in The Coca-Cola Company v All-Fect Distributors Ltd, referring to Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 423 where Richardson J, in the New Zealand Court of Appeal, 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.[5]

   [5] [1999] FCA 1721; (1999) 96 FCR 107; 47 IPR 481, 39.

7. 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” [6].

   [6] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124, 40 and Qantas Airways Limited v Edwards [2016] FCA 729, 142.

8. As noted above, I am satisfied that the Opponent’s evidence has established the Opponent’s marks have a strong reputation in the Australian fashion industry among relevant Australian consumers and retailers.

9. The similarity between the marks is self-evident, the only difference being the addition of ‘GIRL’ to the Trade Mark, which has the purely descriptive function of identifying the type of consumer towards whom the relevant goods and services are targeted. The Applicant acknowledged as much in its own evidence which variously stated that it retained the ‘core brand’ VERGE, adding ‘GIRL’ as a descriptor of its target demographic[7]. The Nguyen declaration as exhibited in FN-2 states that ‘the Applicant adopted the addition of the word ‘GIRL’ to their core brand. The mark VERGE GIRL served to effectively reflect the brand image and voice to their target market, being young women’ (paragraph 9)[8].

   [7] See for example Carter declaration paragraph 9 and Daniella declaration paragraphs 9 and 10.

   [8] While the Nguyen declaration indicated that FN-2 contained Confidential Information, that information is specifically identified and does not include the references I have made to the above content.

10. I also note in this regard the comments of Whitford J in Frigiking[9] that, where a distinctive mark or a highly distinctive part of a mark is used with additions in another trade mark, consumers might think that the new mark indicated the same source of origin as the old mark. While Whitford J concluded that the word “King” incorporated in the mark “Frigiking” was not highly distinctive and it was unlikely that people would believe that there was a connection between the marks FRIGIKING and THERMO-KING, the word VERGE, although a common English word, has no direct application to the Opponent’s goods and services and is highly distinctive and memorable. Consequently, I consider it is likely that consumers might incorrectly believe that the Trade Mark indicates the same source of origin as the Opponent’s marks or at least be caused to wonder whether there might be a connection between the Opponent and the Applicant.

    [9] Frigiking Trade Mark [1973] RPC 739.

11. Overall therefore I consider there are similarities between the Trade Mark and the Opponent’s marks such that their use would contribute to the likelihood of consumer deception or confusion.

12. In relation to a nexus between the goods and services, the Opponent’s marks cover largely the same class 25 and class 9 goods as the Trade Mark. While the Opponent does not sell jewellery or shoes or certain types of bags, its many exhibits demonstrate that in its promotional activities for its clothing and other goods, they are included. For example, magazine spreads and editorials show boutique store displays of VERGE clothing alongside jewellery, bags and shoes to demonstrate a “look”, holiday packing suggestions show VERGE labelled clothing alongside shoes, sunglasses and handbags.[10] In addition, I am satisfied that the consistent evidence of its declarants establishes that the Opponent delivers the same class 35 services under and by reference to the Opponent’s marks as those of the Trade Mark. For example, the witness statements and associated exhibits demonstrate that the Opponent’s marks have long been used in the delivery of wholesale services, and retail services, fashion shows, presentation of goods online and on social media and other associated designated services[11].

    [10] Rae declaration exhibit AR-6, AR-7, AR-14

    [11] Hemming, Rae and Wren declarations.

13. On this basis I consider that the overlap between the Goods and Services and those sold and delivered under the Opponent’s marks significantly increases the likelihood that use of the Trade Mark will cause deception or confusion amongst relevant consumers.

    Surrounding circumstances

14. French J’s discussion of the likelihood of deception or confusion in Registrar of Trade Marks v Woolworths Ltd[12] (‘Woolworths’) is also pertinent:

    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.[13]

    [12] [1999] FCA 1020, 50.

    [13] Ibid.

15. The Opponent submitted that the Goods are all ‘items of women’s fashion intended to be worn on the body’, are sold through similar trade channels and to the same broad group of customers as the those of the Opponent.

16. The Applicant’s evidence included generalised statements that there are ‘fundamental differences between our trade channels and target demographics’[14], that the Opponent’s so-called older demographic ‘prefer to shop in a physical store rather than an online store’ [15]whereas the Applicant’s younger customers like to shop online. I note that there was no objective support for these claims, the exhibits to both the Applicant’s and Opponent’s declarations indicating little apparent overall difference in fashion styles or ages of the models. In any event I am required to consider the notional use of the Trade Mark[16], and the Goods and Services are not confined to online sales nor do they make any distinction in their style or target age demographic. Seen in this context, there is a clear coincidence in trade channels and likely consumers that would contribute to the likelihood of confusion.

    [14] Daniella declaration paragraph 31.

    [15] Carl declaration paragraph 12.

    [16] Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353, 362.

17. The Applicant has also submitted that because the Trade Marks and the Opponent’s marks have co-existed for several years without any convincing evidence of confusion, this supports a finding that there is no likelihood of deception or confusion.

18. As the Opponent identified, while evidence of actual confusion is not required, such evidence should be given “great weight”.[17] In her declaration Hemming claimed that the Agency had received several calls from retailers who, having come across the VERGE GIRL website, queried whether VERGE had launched a new line[18]. Hanley attested to a customer complaint concerning a VERGE top which, it eventuated, the customer had purchased from VERGE GIRL. Hanley also stated her belief that customers on encountering ‘VERGE GIRL’ would mistakenly assume some connection with the VERGE brand. Similarly, Ballam stated that she was unsurprised she had not had any queries, believing that customers would automatically associate the Trade Mark with the VERGE brand.[19] Manning stated that customers had become accustomed to VERGE Acrobat range and on seeing VERGE GIRL would likely consider it was another specific line of VERGE garments.[20] Taken together I consider these claims are informed and plausible and I give them some weight as explaining the asserted absence of confusion, other than that identified by Hemming and Hanley, during the limited period in which the marks have been concurrently used.

    [17] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658.

    [18] Paragraph 71.

    [19] Paragraph 22.

    [20] Also, paragraph 22.

19. Of additional significance is the Applicant’s own evidence in which its customer comments are recorded on a “Yelp” site stating “ I love Verge because they stock a mixture of vintage designer and local labels..”, “Verge is one of the newer kids on the block…” and “Verge is a little too girly for my taste..”.[21]  These references by the Applicant’s own customers indicate that confusion is already apparent.

    [21] Exhibit as included with exhibit FN-2 of the Nguyen declaration.

20. Given the strong reputation of the Opponent’s marks in Australian fashion generally, their substantial similarity to the Trade Mark, the strong nexus between the respective Goods and Services, their use in the same markets and trade channels and examples of actual confusion having already occurred, I am satisfied that a consumer with an imperfect recollection of those marks, on seeing the Trade Mark used on similar goods and services, might be confused or caused to wonder whether VERGE GIRL is a brand extension or otherwise associated with the Opponent.

21. It follows that I am satisfied the Opponent has established its s 60 ground of opposition.

22. As the Opponent has established one ground of opposition in relation to the Trade Mark, there is no requirement for me to consider the remaining grounds particularised in the SGP. In the event of an appeal to this decision, it will be open to the Opponent to additionally pursue those grounds and any others available under the Act.

    Decision

23. 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.

24. The Opponent has established the ground of opposition under s 60 of the Act.

25. Accordingly, I refuse to register trade mark application 1896764.

    Costs

26. Both parties sought costs. I see no reason to depart from the general rule that costs follow the event. As the Opponent has established a ground of opposition, I award costs against the Applicant under section 221 of the Act in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).

    Mary-Ann Cooper
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    10 January 2020