Opposition by Yupoong, Inc to registration of trade mark application number 2114911 (Class 25) – X FLEXIFIT Sport & Fitness figurative - in the name of John Brauman.

[2022] ATMO 16

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 2114911 (Class 25) – X FLEXIFIT Sport & Fitness figurative - in the name of John Brauman.

Delegate:	Blake Knowles
Representation:	Opponent: Trademark Ventures. Applicant: BrandU Legal.
Decision:	2022 ATMO 16 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition pressed under ss 44, 58A, and 60 – s 44 established– registration refused.

Background

1. This is a decision on the opposition by Yupoong, Inc (‘Opponent’) to registration of trade mark number 2114911 (‘Application’) filed by John Brauman (‘Applicant’).

2. The Application was filed on 1 September 2020 (‘Relevant Date’) for the following trade mark and goods:

   (‘Trade Mark’)

   Class 25: Clothing for sports; Sports headgear (other than helmets); Sports shoes; Exercise wear; Footwear for sport; Sports caps

   (‘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. However, for the purpose of this decision, it is only necessary to consider s 44 based on the Opponent’s Registration for the Opponent’s Mark. The Opponent’s Registration has a priority date of 14 May 2010, which is earlier than the priority date of the Application (1 September 2020). As such, I must determine whether the Trade Mark is either substantially identical or deceptively similar to the Opponent’s Mark.

18. 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).

19. 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.

20. 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.

21. 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.

22. I am also satisfied that the Goods are similar to the Opponent’s Goods, both being broad claims for clothing, footwear, and headgear in Class 25.

23. As the Opponent has established that the Trade Mark is deceptively similar to an earlier registered trade mark covering the same goods, the ground of opposition under s 44 is made out for all of the Goods. The Applicant has also not provided any evidence of prior and continuous use, honest concurrent use, or other circumstances for consideration.

24. Given s 44 is established, it is also not necessary to consider the other grounds of opposition.

    Decision and costs

25. The Opponent has established the ground of opposition under s 44. As such, I have decided to refuse registration of the Trade Mark for all of the Goods. Noting the appeal period, the refusal will be recorded one month from the date of this decision unless the Registrar is served with a notice of appeal. If an appeal is filed, the disposition of this opposition will be for the court.

26. The Opponent in the SGP requested an award of costs. Costs generally follow the event.  As there is no reason to depart from the general rule, I award costs against the Applicant.

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