Opposition by Yupoong, Inc to registration of trade mark application number 2111028 (Class 28) – X FLEXIFIT Sport & Fitness figurative - in the name of John Brauman.

[2022] ATMO 15

TRADE MARKS ACT 1995

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

Re:Opposition by Yupoong, Inc to registration of trade mark application number 2111028 (Class 28) – X FLEXIFIT Sport & Fitness figurative - in the name of John Brauman.

Delegate:	Blake Knowles
Representation:	Opponent: Trademark Ventures. Applicant: BrandU Legal.
Decision:	2022 ATMO 15 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition pressed under ss 44, 58A, and 60 – no grounds established – trade mark to proceed to registration.

Background

1. This is a decision on the opposition by Yupoong, Inc (‘Opponent’) to registration of trade mark number 2111028 (‘Application’) filed by John Brauman (‘Applicant’).

2. The Application was filed on 18 August 2020 (‘Relevant Date’) for the following trade mark and goods:

   (‘Trade Mark’)

   Class 28: Boxing gloves; Gloves specifically adapted for sporting purposes; Fitness apparatus; Body toner apparatus (exercise); Exercise apparatus, other than for medical rehabilitative purposes; Body training apparatus (exercise); Bags adapted for carrying sporting articles; Bags adapted for sporting articles; Bags adapted to carry gymnastic articles; Punching bags; Sport bags adapted (shaped) to contain sporting equipment; Wrist bands for use in playing sports; Back supports (belts) for weightlifters; Kidney belts; Waist trimmer exercise belts; Weight lifting belts (sports articles)

   (‘Goods’)

3. The Trade Mark was examined, accepted for registration, and advertised for opposition purposes. The Opponent filed notice of its intention to oppose registration and a statement of grounds and particulars (‘SGP’) on 9 February 2021. The Applicant subsequently filed a notice of intention to defend the Trade Mark from opposition on 20 May 2021.

4. The parties had the opportunity to file evidence in accordance with the timetable set out in reg 5.14.[1] The Opponent filed Evidence in Support (‘EIS’) on 24 August 2021. The Applicant did not file Evidence in Answer, and as such, the Opponent also did not file Evidence in Reply.

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

5. The parties were given an opportunity to request an oral hearing or file written submissions. Neither party requested a hearing or elected to file submissions. The Opponent requested to have the matter decided based on the materials filed and paid the relevant fee. I have decided the matter based on the particulars detailed in the SGP and the EIS.

   Grounds and onus

6. The SGP nominated grounds of opposition under ss 44, 58A, and 60.

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

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

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

   Evidence

8. The EIS consists of a declaration by Mr Brian Goldberg, trade marks attorney acting on behalf of the Opponent, made on 24 August 2021, with various annexures.

9. Mr Goldberg states that the information contained in his declaration comes from his own knowledge or from information obtained from the Opponent or its international representative. It is always preferable for a party to give evidence via one of its officers rather than a legal representative. However, where relevant information is reasonably specific and could have been provided to the declarant from company records, rather than being reliant on personal recollection, I consider it has some probative value.   

10. Mr Goldberg declares that the Opponent is the owner of numerous Australian registered trade marks incorporating the word FLEXFIT, for goods in Class 25. The most relevant of these trade marks is number 1361948 (‘Opponent’s Registration’), which has a priority date of 14 May 2010, for the plain word FLEXFIT (‘Opponent’s Mark’) and covers Class 25: Headgear including caps and hats; clothing; footwear (‘Opponent’s Goods’).

11. Mr Goldberg declares that the Opponent has been selling goods under the Opponent’s Mark in Australia since 2002, and that it has a distribution relationship with a company based in Queensland. Mr Goldberg provides links and screenshots for its distributor website and various social media pages on Instagram, Facebook, and YouTube.  Mr Goldberg also annexes an undated screenshot of the distributor website, and each of the social media pages. I note that both the distributor webpage and Instagram page include statements that the distributor has been the Opponent’s Australian distributor since 1998. Otherwise, both the Facebook page and YouTube page screenshots are primarily in Korean and as such are of limited probative value.

12. Mr Goldberg declares that the distributor has established sales relationships with numerous Australian customers. Mr Goldberg provides links to the websites of some of these customers and an annexure containing a photo of hats that customers sell bearing the Opponent’s Mark. The Facebook page and distributor website indicate that the Opponent primarily sells blank caps which customers can than affix their own logo to. The images of the hats are mostly small and of low resolution. However, I can discern from zooming in and from comparing the hats with other images in the evidence that each example is branded with a sticker or embroidery bearing the Opponent’s Mark, in addition to the trade mark of a particular customer, e.g.

13. Mr Goldberg declares that the Opponent’s Mark has been promoted at numerous trade shows in 2017, 2018, and 2020, including the ICAST Fishing Tradeshow, Complexcon, Outdoor Retailer, and PGA Merchandise Show. However, the evidence indicates that some of these shows were held outside of Australia. The evidence is otherwise not clear where the remaining shows were held. Further, probative information regarding these shows (e.g. the number of attendees etc) has not been provided.

14. Mr Goldberg declares that the Opponent’s Mark has been used in sponsorship of various events in 2016 and 2017 and provides some photographs indicating use of the Opponent’s Mark on a hat and banner for the Rip Curl Grom Search in 2017, a rash vest at the 2017 Volcom Pipe Pro, and a hat at the Ping Junior Interclub in 2017.

15. Mr Goldberg provides confidential revenue and promotional expenditure figures for the Australian market which indicate significant sales volume and marketing spend prior to the Relevant Date. However, there is no context to these figures. For instance, it is unclear whether the Opponent has sold any goods other than hats under the Opponent’s Mark in Australia.

    Discussion

    Section 44

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

17. The Opponent relies on several registered trade marks as the basis for this ground, being the Opponent’s Registration and other trade mark registration numbers 1236813, 1236814, 1594660, and 2042048. However, each of these additional registrations consist of the Opponent’s Mark combined with other words. Further, each of the other registrations covers the same goods as the Opponent’s Registration. As such, for the purpose of this decision, it is only necessary to discuss s 44 based on the Opponent’s Registration. If the ground of opposition under s 44 is not established based on the Opponent’s Registration, I would also find it is not established based on registration numbers 1236813, 1236814, 1594660, and 2042048 as each of these trade marks has additional words which further differentiate them from the Trade Mark.

18. The Opponent’s Registration has a priority date of 14 May 2010, which is earlier than the priority date of the Application (18 August 2020). As such, I must determine whether the Trade Mark is either substantially identical or deceptively similar to the Opponent’s Mark.

19. The test for whether two marks are substantially identical requires that they be compared:

    side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[4]

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

20. I am satisfied that the Trade Mark is not substantially identical to the Opponent’s Mark. While the respective trade marks share an essential feature that is very similar (FLEXIFIT v FLEXFIT), the Trade Mark has other word elements and stylisation. As such, a total impression of resemblance does not emerge from the comparison.

21. The test for whether trade marks are deceptively similar requires that one trade mark so nearly resemble another that it is likely to deceive or cause confusion.[5] In determining deceptive similarity, the following must be taken into account:

    -There must be a real, tangible danger of confusion, not just a mere possibility.5F[6] Likelihood of confusion can be established if a number of consumers would be caused to wonder whether the applicant’s goods or services come from some other source. It is enough if the ordinary person entertains a reasonable doubt.6F[7]

    -The impression of the respective marks as a whole must be considered, including the size and prominence of word and device elements and their relationship to each other.7F[8] However, deceptive similarity can also be found where one mark uses an essential feature of the other.8F[9]

    -Consumers may retain an imperfect recollection of a mark or its essential features.9F[10]

    -It may be relevant that an element of the trade marks under consideration is descriptive. However, descriptiveness does not preclude a finding of deceptive similarity.10F[11]

    -The impression of the mark on ordinary consumers is relevant, not the impression on those who are particularly perceptive or cautious, or those who are exceptionally careless or stupid.11F[12]

    -It must be considered how the goods or services are ordinarily sold or provided.12F[13]

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

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

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

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

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

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

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

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

    [13] Ibid.

22. I consider there are two essential features of the Trade Mark, namely, the letter X (which is visually the largest element in the Trade Mark), and the word FLEXIFIT represented in a stylised manner. Of these two essential features, the word FLEXIFIT is the most memorable element of the Trade Mark, and the one that consumers (particularly those relying on imperfect recollection) are likely to recall. The word FLEXIFIT is very similar to the Opponent’s Mark, differing only by one letter appearing in the middle of the mark. Both words are also conceptually similar, with FLEX- and FLEXI- both often used as abbreviations of ‘flexible’. Considering the importance of the word FLEXIFIT in the Trade Mark, and the visual, aural, and conceptual similarity when compared to FLEXFIT, I consider there is a real, tangible danger that the Trade Mark would be confused with the Opponent’s Mark. While the other elements of the Trade Mark do create points of distinction, I do not consider this is sufficient to mitigate the significant risk of confusion.

23. As I have found that the Trade Mark is deceptively similar to the Opponent’s Mark, I must consider whether the Goods are similar to the Opponent’s Goods. The test for determining whether goods are of the same description is a practical judgement formed by looking at a number of factors, falling within the categories of the nature of the goods, their respective purposes, and the trade channels through which they are commonly provided, with no single factor being determinative. [14]

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

24. The Goods are sporting and exercise equipment and accessories (such as bags) adapted for such equipment. These products have an inherently different nature and purpose when compared to the Opponent’s Goods, which are apparel.  I note that the respective products are often sold through the same trade channels (i.e. large retailers), and may originate from the same trade source. However, I do not consider that a similarity in trade channels sufficiently outweighs the significance differences in the nature and purpose of the goods, and in the absence of persuasuve submissions from the Opponent, I am not satisfied that the Goods are ‘of the same description’ as the Opponent’s Goods.

25. As the Opponent has not established that the Goods are similar to the Opponent’s Goods, the ground under s 44 is not established.

    Section 58A

26. Section 58A is only applicable where a prima facie ground of opposition has been established under s 44, and the Applicant has successfully overcome the ground of opposition by reliance on evidence of prior and continuous use under s 44(4).

27. In this case, the ground under s 44 was not established. As such, s44(4) was not relied upon by the Applicant, and the ground under s 58A cannot be established.

    Section 60

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

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

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

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

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

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

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

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC ¶91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.[15]

    [15] [2000] FCA 1335, [85]-[86].

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

    The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[16]

    [16] [2019] FCA 923, [83] (O’Bryan J).

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

33. The evidence provided by the Opponent contains numerous ambiguities. While the revenue and marketing expenditure figures provided are significant, I am not able to determine whether the Opponent has used the Trade Mark on any goods other than hats in Australia. Further, the social media and website evidence is sparse and either undated or after the Relevant Date. The evidence of promotion and sponsorship prior to the Relevant Date is also limited to a small number of events in Australia, and other overseas events that are of little relevance to establishing reputation in the Australian market. Given the significant figures provided for marketing expenditure in Australia since 2016, I would expect that the Opponent would be able to provide further details of its marketing activities in Australia prior to the Relevant Date.

1. The examples of use provided also indicate that the hats sold to consumers generally bear third party trade marks, which indicate that the Opponent’s customers are other businesses wishing to obtain promotional caps, rather than the ultimate consumer of hats and other apparel products. It is also not clear whether the goods provided by the Opponent to its business customers always bear the Opponent’s Mark or are sometimes provided without branding.

2. On balance, it is difficult to determine the nature and extent of the reputation of the Opponent’s Mark in the Australian market at the Relevant Date. Given the ambiguity of the evidence of reputation, and also considering the differences in the goods of the respective parties, I am not satisfied that the use of the Trade Mark for the Goods is likely to deceive or cause confusion.   

3. As the Opponent has not established a likelihood of confusion arising from the reputation in the Opponent’s Mark, the ground under s 60 is not established.

   Decision and costs

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

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

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

   Blake Knowles
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   4 February 2022