Optical 88 Limited v Optical 88 Pty Ltd - [2014] ATMO 23

TRADE MARKS ACT 1995

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

Re:Opposition by Optical 88 Limited to registration of trade mark application 1147926 (9, 35) - OPTICAL 88 & Device Logo - in the name of Optical 88 Pty Ltd

Delegate:

Michael Kirov

Representation:

Opponent: David Kell of Counsel, instructed by Monique Nicolle of Baker & McKenzie, Attorneys & Solicitors.

Applicant: Peter Maddigan of Counsel, instructed by Edwin Mok of Edwin Mok & Co., Solicitor.

Decision:

2014 ATMO 23

Section 52 opposition: s 60 considered – use of the opposed trade mark likely to deceive or cause confusion because of the reputation of the Opponent’s trade mark(s) – opposition established and registration refused. Costs awarded against the Applicant.

Background

This is an opposition brought by Optical 88 Limited (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Optical 88 Pty Ltd (“the Applicant”):

Application No: 1147926

Priority Date: 20 November 2006

Goods and Services: Class 9: Optical products, spectacles, glasses, glasses frames, sunglasses, glasses case, glasses accessories, contact lenses
Class 35:Retailing, distributing and wholesaling of glasses, sunglasses, optical products and services, glasses frames, spectacles, glasses/contact lenses, cases and accessories, contact lenses, optical of [sic] eye-sight testing/examination

Trade Mark: (“the Opposed Mark”)

Endorsements: Provisions of subsection s 44(4) and/or Reg 4.15A(5) applied.

Acceptance of the opposed application for possible registration was advertised in the Australian Official Journal of Trade Marks on 29 March 2012 and the Opponent filed its Notice of Opposition (“the Notice”) on 26 June 2012.
The matter is somewhat unusual in that the principal grounds pressed by the Opponent, being those based on ss 44 and 60 of the Act, have already effectively been the subject of judicial consideration by Yates J in Optical 88 Limited v Optical 88 Pty Limited and Others (No 2),[1] affirmed on appeal to the Full Federal Court (Cowdroy, Middleton and Jagot JJ).[2] For convenience I will refer hereafter to these court actions jointly as “the Litigation” and to the decisions of Yates J and of the Full Court as “the Judgment” and “the Appeal Judgment” respectively. Relevantly to the present opposition, the Opponent commenced the Litigation against the Applicant in 2008 alleging, inter alia, that the Applicant’s use of the Opposed Mark infringed the Opponent’s Australian trade mark registrations 520707 and 1083966, detailed below:
[1] (2010) 275 ALR 526; 89 IPR 457.
[2] Optical 88 Limited v Optical 88 Pty Limited (2011) 283 ALR 78; 93 IPR 202.

Registration No: 520707

Priority Date: 6 October 1989

Goods and Services: Class 9: Optical products; spectacles, sunglasses, contact lenses, frames and cases for the aforesaid goods and all other optical related goods in class 9

Trade Mark: (“the ‘707 mark”)

Endorsements:Registration of this trade mark shall give no right to the exclusive use of the numerals 88* Registration gives no right to the exclusive use of the word AN GENG which is a transliteration of the Chinese character in the mark which may be translated as OPTICAL* The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.

Registration No: 1083966

Priority Date: 2 November 2005

Goods and Services: Class 35: Retail services of eyewear, optical products including spectacles, glasses, sunglasses, contact lenses, anti-glare glass cases, contact lens cases, optical frames, lenses, correcting lens (optics), accessories, parts and fittings for glasses, optical apparatus and instruments, cleaning cloths for spectacles, contact lenses care regimen products

Trade Mark: (“the ‘966 mark”)

Endorsements:The applicant has advised that the transliteration of the Chinese characters appearing in the trade mark is AN GENG which may be translated into English as OPTICAL.

While not significant as far as Yates J’s eventual decision on the infringement issue was concerned, or for my decision, I note that when the Litigation commenced the Opponent’s registration 1083966 also covered various optical goods in Class 9 and its Class 35 coverage was somewhat wider. The registration was however subsequently amended because the Applicant was partially successful in cross-claims under s 92 of the Act, which also saw registration 520707 removed from the Register in its entirety. I have nevertheless included the above details of the two registrations because they aid in understanding parts of the Judgment quoted below. It is enough here to note that Yates J did not think that the different juxtaposition of the three elements making up the ‘707 and ‘966 marks, (which elements are referred to hereafter as “the Opponent’s logo”, “the name OPTICAL 88” and “the name ‘OPTICAL 88’ (in Chinese characters)” respectively),[3] was material to his decision.[4] In particular it was not material to his analysis of survey evidence relied upon by the Opponent to establish that the (Opponent’s) name OPTICAL 88 per se had a reputation in Australia as a trade mark as at the 20 November 2006 filing date of opposed application 1147926.[5] In other words, what was significant in terms of the reputation claimed by the Opponent was the presence of the name OPTICAL 88 in each of the Opponent’s marks. Thus, while his Honour recognized that the Opponent’s marks must be considered as wholes, he noted at [134] to [138] of the Judgment that:
[134] I should also record now that, contrary to the [Applicant’s] submissions, I do not regard the name OPTICAL 88 as being descriptive for trade mark purposes. Undoubtedly the word OPTICAL considered in the abstract is descriptive. But when used in the collocation OPTICAL 88 it can be seen to be inherently adapted to distinguish the optical products and optometry services for which the ‘707 and ‘966 marks are registered.
[135] My own impression of each mark is that the name OPTICAL 88 is a dominating element to which the other elements are truly secondary. My impression in this regard is influenced by the relative size of the lettering and central positioning of this element, relative to the other elements. It is also influenced by the likely aural use of each mark in the purchasing of goods and services: the spoken description of each mark is, in my view, likely to be, simply, OPTICAL 88.
[136] This is not to say that the [Opponent’s] logo as used within those marks lacks significance. Its significance, however, lies in the fact that each mark is one intended to be used in connection with the supply of (what may be broadly described as) optical products. In my estimation, by depicting a spectacle frame, the logo underscores the use of the word OPTICAL in respect of those goods. The circles in the logo are also reminiscent of, and serve to underscore, the numerals “88” in each mark. So viewed, the logo does not, contrary to the [Applicant’s] submissions, provide the marks with “some uniqueness” in the sense of providing an element of distinctiveness that would otherwise be completely lacking from the marks. Rather, the logo is illustrative or supportive of, and thus underscores the primacy of, the collocation OPTICAL 88 as the name within the mark. In short, it plays a role, but a secondary role only, to OPTICAL 88 in the particular combination that is comprised in the ‘707 mark and in the ‘966 mark.
[137] My impression of the ‘707 mark and of the ‘966 mark arises independently of, but is supported by, the survey evidence to which I have referred. That evidence shows that, for the target population there under consideration, the name OPTICAL 88 was the real stimulus for the responses that were given — not the Chinese characters or, indeed, the logo shown in [one of the pictures respondents were shown]. I would infer, based on that evidence, that the logo and the name “OPTICAL 88” (in Chinese characters) have no particular trade mark signification beyond the signification of the name OPTICAL 88 itself.
[138] On this analysis, the ‘707 and ‘966 marks, despite being composite marks, each have an essential or distinguishing characteristic, namely the name OPTICAL 88. To so view each mark does not ignore the mark as a whole. It does recognise that each of the three elements has a different significance and function for trade mark purposes in assessing the overall impression that is likely to be conveyed by each mark, considered as a whole. It is this impression that is carried away by prospective purchasers of the goods and services to be supplied under those marks. Although I bear in mind the caution expressed by the Full Court in Crazy Ron’s[6] about determining essential or distinguishing characteristics when dealing with composite marks (see [110] above), the ‘707 and ‘966 marks do not have the same complexity as the 1995 mark in that case. Moreover the relationship between the name OPTICAL 88 and the other elements in the ‘707 and ‘966 marks is quite different to the relationship that the Full Court found in that case between the name CRAZY JOHN and the dominating cartoon element in the 1995 mark.
[3] Whereas I, as does Yates J in the Judgment, am using the word “name” here, like his Honour I accept that the various instances of use of the name OPTICAL 88 relied on by the Opponent constitute the use of a “sign” as a trade mark. See the Judgment at, inter alia, [129] and [134]-[138].
[4] See, for example, the Judgment at [258].
[5] As explained below, his Honour’s concern with the reputation of the (Opponent’s) name OPTICAL 88 was not related to the Opponent’s infringement allegations under ss 120(1) or (2) of the Act per se, but was rather in connection with the Applicant’s defence to infringement pursuant to s 122(1)(fa). See the Judgment at [96].
[6] Crazy Ron’s Communications Pty Ltdand Others v Mobileworld Communications Pty Ltd and Others (2004) 61 IPR 212.
Yates J took a similar view with respect to the Opposed Mark, which he considered was “deceptively similar”[7] to the ‘707 and ‘966 marks. The Opposed Mark was being used for similar services and/or closely related goods to those covered by the registrations and thus his Honour would have upheld the infringement claim. The Applicant was nevertheless ultimately able successfully to rely on the defense specified in s 122(1)(a)(i) of the Act, namely that the infringing use could also be characterized as use in good faith of the Applicant’s name, Optical 88 Pty Ltd, notwithstanding the absence of the corporate designation, “Pty Ltd”, from the Opposed Mark and notwithstanding the addition of the Applicant’s logo.[8]
[7] As defined in s 10 of the Act.
[8] His Honour also considered that the Applicant could successfully rely on s 124 of the Act to counter the claim that its use infringed the registration for the ‘966 mark, although s 124 would not assist the Applicant with respect to infringement of the Opponent’s earlier registration for the ‘707 mark.
However, Yates J also considered the Applicant’s alternative defense to infringement based on s 122(1)(fa) of the Act, namely that:
In spite of section 120, a person does not infringe a registered trade mark when:
(fa) both:
(i)The person uses a trade mark that is substantially identical with, or deceptively similar to, the [registered trade mark relied upon]; and
(ii)The court is of the opinion that the person would obtain registration of the substantially identical or deceptively similar trade mark in his or her own name if the person were to apply for it.
The Applicant had already filed application 1147926 covering relevant goods and services and for the identical mark subject of the infringement action, (being the Opposed Mark). Yates J thus considered in some detail whether, based on the evidence then before him, application 1147926 was likely to survive an opposition by the Opponent based on either s 44 (underpinned by, inter alia, the Opponent’s registration 1083966) or s 60. These are of course the very matters I am called upon now to decide. I will return to relevant details of the Judgment in due course, but here mention that his Honour was of the view that the now opposed application was unlikely to survive such an opposition. Accordingly, the extent to which I am bound by his Honour’s findings is very relevant here and formed the main thrust of the parties’ submissions.
A brief history of the parties and the background to the Litigation is given in the headnote to the Australian Law Report and Intellectual Property Report of the Judgment as follows:[9]
The [Opponent] was incorporated in Hong Kong in mid-August 1987. It operated a chain of optical stores under the name, OPTICAL 88, throughout the Asia-Pacific region and in Canada. From 1984, the [future director of the Applicant], Angus Hau-Sum Law, operated his optometry practice in the Sydney suburb of Campsie. In early February 1992, he registered the business name, OPTICAL 88. In late July 1993, the [Applicant] was incorporated and Law transferred the business at Campsie to it. Law and [his wife] are directors of [the Applicant]. [The Applicant’s] business expanded into the Sydney suburbs of Chatswood and Eastwood. Although Mr Law visited Hong Kong on a number of occasions throughout the 1980s and 1990s, he claimed he only became aware of [the Opponent’s] business on a visit in May 1997. [The Opponent] became aware of [the Applicant’s] Australian business in mid-2001 but did not immediately make claims against it. From 2005, [the Opponent] gave serious consideration to opening businesses in Australia. In 1989 and later in 2005, 2007 and 2008, [the Opponent] had six registered trade marks in Australia, some being composite marks, comprising the name, OPTICAL 88, and logo, some being device marks. In late November 2006, [the Applicant] itself lodged [application 1147926] to register its logo as a trade mark.
The [Opponent] brought proceedings against the [Applicant], and its two directors, Angus Hau-Sum Law [and his wife], in the Federal Court of Australia. It alleged that [they] had infringed its registered trade marks and its copyright in its logo, as well as engaging in misleading or deceptive conduct in contravention of ss 52 and 53 of the Trade Practices Act 1974 (Cth) [and it also alleged passing off]. [The Applicant] cross-claimed, seeking the removal of [the Opponent’s] registered trade marks on the basis of non-use.
[9] At ALR 526-527; IPR 457-458.
As mentioned, the Opponent’s action for trade mark infringement was ultimately dismissed because Yates J considered the Applicant’s use of the Opposed Mark was a use in good faith of the Applicant’s name, the addition of the Applicant’s logo and the absence of the corporate designation “Pty Ltd” being irrelevant to that determination. For the sake of completeness I mention that his Honour also dismissed the Opponent’s claims of copyright infringement, of misleading or deceptive conduct and of passing off. Conversely, his Honour did uphold the Applicant’s cross-claim for removal of the Opponent’s 1989 registration in Class 9 for the ‘707 mark and ordered partial removal of the registration for the ‘966 mark, insofar as it then also covered goods in Class 9 and particular “wholesale services” in Class 35. Such removal and partial removal, although relevant to the present opposition, were nevertheless not relevant to Yates J’s consideration of the Applicant’s defense to infringement of the two registrations based on s 122(1)(fa) of the Act, to which I will return later.
At the heart of the present opposition, then, is the claimed similarity of the Opposed Mark to, inter alia, the Opponent’s ‘966 mark, and/or to the name/trade mark[10] OPTICAL 88, and the deception or confusion the Opponent says would be likely to ensue amongst consumers if the Opposed Mark was used for the goods and services covered by the opposed application.
[10] See footnote 3.
I heard the matter as delegate of the Registrar of Trade Marks on 13 February 2014 in Sydney. The Applicant was represented by Peter Maddigan of Counsel, instructed by Edwin Mok of Edwin Mok & Co., Solicitor. David Kell of Counsel, instructed by Monique Nicolle of Baker & McKenzie, Attorneys & Solicitors, appeared for the Opponent. Counsels’ oral submissions were supplemented by written submissions exchanged prior to the hearing in accordance with my directions.

Grounds of Opposition and Onus

The Notice lists some fourteen grounds corresponding to various provisions of the Act. The Opponent’s attorneys nevertheless confirmed via email on 30 January 2014 that the Opponent would only be pressing those grounds based on sections 43, 44 and 60 of the Act. To succeed in its opposition the Opponent bears the onus of establishing at least one of these three grounds. As will become apparent, I have only found it necessary to address what the Opponent considered to be its principal ground in this decision, namely the ground corresponding to s 60. This is discussed below. Of course should the decision be appealed, it would always remain open to the Opponent to plead any ground it considered relevant in proceedings before the Court.
As indicated by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (“Southern Cross Refrigerating”),[11] the relevant date at which the rights of the parties are to be determined is the 20 November 2006 filing date of the opposed application (“the Priority Date”).
[11] (1954) 91 CLR 592 at 595.

Standard of Proof

I confirm I am proceeding on the basis that the relevant standard of proof required of the Opponent is the ordinary civil standard based on the balance of probabilities.[12]
[12] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6]-[26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22]-[27], Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30]-[40], NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16]-[32], Allergan Inc v Di Giacomo (2011) 94 IPR 541 per Stone J at [11]-[12], Nexans S.A. v Nex 1 Technologies Co. Ltd [2012] FCA 180 (2 March 2011) per Murphy J at [9], Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per McKerracher J at [9]-[10], Fry Consulting Pty Ltd v Sports Warehouse Inc (2012) 94 IPR 551 per Dodds-Streeton J at [13] and DC Comics v Cheqout Pty Limited (2013) 101 IPR 334 per Bennett J at [13].

The Evidence

The parties served and filed evidence in support and evidence in answer as set out below. The Favotto and Mok declarations themselves exhibit or annex copies or partial copies of several Affidavits which were before Yates J and these Affidavits are also identified below:

Evidence in Support

▪ Declaration by Stephanie Paula Favotto made 25 March 2013, with Exhibits SPF-1 to SPF-9 (“Favotto”), which exhibits include:

Exhibit SPF-4, being a redacted copy of an Affidavit by Chumphol Kanjanapas (known as “Joseph C.C. Wong”) sworn on 23 October 2008, with paragraphs 107 to 118 omitted, together with Exhibit CK-1, with pages 1 to 115; 121 to 131; 214 to 315; 319 to 532; 546 to 557; and 567 to 572 omitted (“Wong”)
Exhibit SPF-5, being a copy of an Affidavit by Graeme John Hugo affirmed on 4 September 2009, with a redacted version of Exhibit GJH-2, (being the version referred to at [353] of the Judgment, and at [47] and following of the statutory declaration of David Hugh Blore Bednall made 22 March 2013) (“Hugo”)
Exhibit SPF-6, being a copy of an Affidavit by David Hugh Blore Bednall affirmed on 17 September 2009, with Exhibit DHBB-1, with pages 13 to 40; 200 to 238; and 251 to 321 omitted; and Exhibit DHBB-2, with pages 50 to 59 omitted (“Bednall 1”)

Exhibit SPF-7, being a redacted copy of an Affidavit by Angus Hau-Sam Law sworn on 23 November 2009, with paragraphs 4 to 37 and 42 to 46 omitted and no exhibit.[13]

▪ Declaration by David Hugh Blore Bednall made 22 March 2013, with Annexures A to D (“Bednall 2”)

[13] I note that an unredacted copy of this Affidavit and its Exhibit were included as Annexure C to the declaration of Edwin Wah Sing Mok in the Applicant’s evidence in answer.

Evidence in Answer

▪ Declaration by Edwin Wah Sing Mok made 13 May 2013, with Annexures A to E (“Mok 2”), which annexures include:

Annexure B, being a copy of an Affidavit by Angus Hau-Sum Law sworn on 16 September 2008, with Annexures A and B (“Law 1”)
Annexure C, being a copy of an Affidavit by Angus Hau-Sum Law sworn on 23 November 2009, with Exhibit AL-1 (“Law 2”)
Annexure D, being a copy of an Affidavit by David Cameron McCallum sworn 4 December 2009, with Exhibits DM-1 and DM-2 (“McCallum”)
Annexure E, being a copy of an Affidavit by Edwin Wah Sing Mok sworn 26 February 2010, with Exhibit EM-1 (“Mok 1”)

I note that all of the evidence relied on in the current opposition was also before Yates J, the sole exception effectively being Bednall 2, which was made on 22 March 2013 with the aim of broadening and clarifying the material contained in Bednall 1. (Favotto and Mok 2 merely annex relevant parts of the evidence that was before his Honour, along with copies of the Judgment and the Appeal Judgment.) As Mr Kell explained (and Mr Maddigan accepted), the evidence reproduced here from the Litigation is considered to be all of the evidence actually pertaining to the claimed infringement of registrations 520707 and 1083966 and no more, and this is the reason some of the earlier Affidavits and/or their exhibits have been redacted or omitted.

Discussion

Section 60

The ground based on section 60 of the Act is indicated in the Notice as follows:
Use of the opposed trade mark would be likely to deceive or cause confusion because of the reputation of another trade mark where such reputation was acquired in Australia before the priority date of the opposed trade mark
Section 60 of the Act itself is reproduced in the excerpt from the Judgment quoted in paragraph 22 below.
As Mr Kell confirmed, underpinning the s 60 ground is the Opponent’s claim that:
…as at the [Priority Date], the opponent had a reputation in Australia in the name OPTICAL 88. The opponent also enjoys a reputation in the OPTICAL 88 name in Chinese characters as well as in the opponent’s logo (both shown in the ‘966 mark) and in combination with these elements and OPTICAL 88.[14]
[14] See footnote 3.
What needs to be considered for the purposes of s 60 is the notional use the Applicant might make of the Opposed Mark in relation to its designated goods and services of interest. The issue is whether, in light of the reputation of, inter alia, the ‘707 and/or ‘966 marks (and in particular the Opponent’s name/trade mark OPTICAL 88 contained within them) as at the Priority Date, use for the goods and services claimed would be likely to deceive or cause confusion amongst a substantial or significant number of relevant consumers in Australia.
As indicated, based on essentially the same evidence which is before me now Yates J has already considered this very issue in some detail. The question then is to what extent I am bound by his Honour’s findings. As Mr Kell put it in his submissions,[15] in the Litigation the Applicant:
…confined its use of the s 122(1)(fa) defence to trade mark application no. 1147926 (i.e. the opposed mark). The Court proceeded on the basis that 20 November 2006 was the relevant date for considering the application of the defence [Judgment, paras 174-176]. The Court considered whether ss 44 and 60 (which could be raised as grounds of opposition by the opponent) would preclude the applicant from establishing the defence under s 122(1)(fa)…
The Court held that the s 60 ground of opposition precluded the applicant’s defence under s 122(1)(fa) in respect of the opposed mark [Judgment, para 188].
[15] With Mr Kell’s original footnotes included in square brackets.
The relevant parts of the Judgment are reproduced below, where I have highlighted in bold what are on the face of it the most significant issues relating to the s 60 ground in the current opposition:
[173] In spite of s 120 of the Trade Marks Act, a person does not infringe a registered trade mark when the person uses a trade mark that is substantially identical with or deceptively similar to the registered trade mark and the court is of the opinion that the person would obtain registration of the allegedly infringing mark in that person’s name if that person were to apply for it: s 122(1)(fa).
[174] Although the [Applicant] pleaded this defence generally, in submissions it was confined to the use of the [Opposed Mark]. As I have noted, the [Applicant] lodged trade mark application No 1147926 for the registration of [the Opposed Mark] as a trade mark on 20 November 2006. The [Applicant] submitted that this would be the relevant date for considering the application of the defence. The [Opponent] did not dispute this proposition; nor did it debate it.
[175] There is much to be said for the view that, if an actual trade mark application has been made, the defence should be considered as at the date of making that application. However, s 122(1)(fa), in terms, poses the question hypothetically, indicating that consideration of the application of the defence should be made as at some other date, presumably the date when the defence is first raised.
[176] In my view it is not necessary to determine this question because it would make little difference on the evidence whether the application of this specific defence is considered as at 20 November 2006 or as at the time the respondents first filed their defences on 23 April 2008.
[His Honour then discussed whether the Applicant might be able to rely on ss 44(3) and (4) of the Act to overcome an otherwise successful opposition under ss 44(1) and (2) based on the Opponent’s then registrations for the ‘707 and ‘966 marks, concluding at [181] that, “for practical purposes, s 44(3) alone falls for consideration.”]
[184] In my view there are some factors, such as the circumstances in which the name OPTICAL 88 came to be adopted and used, and the length of time over which the [Applicant] has carried on its business under that name without interruption, which would point to s 44(3) being invoked on the basis of “honest concurrent use” or “other circumstances”, at least with the imposition of a territorial restriction to the areas in which the [Applicant] does carry on business. However, as the [Opponent] pointed out, recourse alone to s 44(3) (the availability of which it disputed in any event), will not avail the [Applicant] if, for other reasons, the posited application for registration would not succeed.
[185] In this connection the [Opponent] relied on, among other provisions, s 60 of the Trade Marks Act which provides:
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.
[186] The [Opponent] submitted that objection to registration based on s 60 disposes of any suggestion that the [Opposed Mark] could be registered as a trade mark in reliance on s 44(3).
[187] There is, in my view, considerable force in the [Opponent’s] submission. In McCormick Kenny J examined the interplay between ss 44(3) and 60, and concluded (at [96]) that s 44(3) does not provide an exception to s 60.
[188] As I have found, the name OPTICAL 88 is the essential or distinguishing characteristic of the ‘707 and the ‘966 mark. The [Opponent] submitted that the ‘707 mark had acquired a reputation in Australia which, by dint of s 60, would defeat an application for registration of a trade mark using that name. For this purpose the [Opponent] relied on the results of the survey it had commissioned for use in this proceeding. In this context the reference to the ‘707 mark by the [Opponent] could only mean the name OPTICAL 88.
[189] It will be necessary for me to give detailed consideration to the survey when dealing with the [Opponent’s] claims based on contravention of the Trade Practices Act and for passing-off. In that context questions will arise as to when conduct falls to be assessed for the purposes of those causes of action, and what is necessary to be shown in that regard by the [Opponent]. Suffice it to say for present purposes that the matters that arise for consideration and assessment in that context are not the same as the matters that arise for consideration and assessment in the present context. This is because the tests for determining contravention of the Trade Practices Act and for determining passing-off are not the tests for determining the registrability of a trade mark under the provisions of the Trade Marks Act.
[190] The reliability and utility of the survey for the purposes of determining the claims for contravention of the Trade Practices Act and passing-off were strongly challenged by the [Applicant]. Nevertheless, I am satisfied that the survey does provide reliable information about awareness, as at July 2009, of the name OPTICAL 88 and the source of that awareness where recollection is based on relatively recent events. To take an example, it was accepted by the [Applicant’s] expert Mr McCallum, in circumstances which I will later explain, that the data showed that, of the responses given, 48.7% of interviewees identified Hong Kong and its environs as a source of awareness of the name OPTICAL 88 in relation to optical shops. Barring the possibility of undisclosed error, this source of awareness could only have been the [Opponent’s] stores. I should add that, barring the possibility of undisclosed error, 40.8% of interviewees also identified Sydney as a source of awareness of the name OPTICAL 88. However, what is important for present purposes is the awareness of the Hong Kong source. I say this because s 60 does not operate only where an exclusive reputation is demonstrated. Section 60, arguably, will operate when there are conflicting reputations. It is sufficient for s 60 purposes that, before the priority date for the opposed application, another mark has a reputation and, because of that reputation, use of the opposed mark would be likely to deceive or cause confusion. It is beside the point that, at the time of making the opposed application, it can be shown that the opposed mark has its own reputation.
[191] While that data set shows awareness as at July 2009, it does provide some indication of the existence of a reputation in the name OPTICAL 88 as having a Hong Kong source (and, in particular, the [Opponent’s] stores) that, taken with other data provided by the survey, points to the real possibility of an extant reputation as at either 23 April 2008 (when defences were originally filed) or as at 20 November 2006 (when the [Applicant] filed its trade mark application), that, arguably, would be sufficient to defeat an application for registration of the [Opposed Mark] as a trade mark based on the application of s 60.
[192] I should add that, in the context of the [Opponent’s] copyright claim, Mr Law gave evidence about the circumstances in which the [Applicant] came to adopt its own logo. That evidence (which I will describe in more detail later) showed that, as at late 2003, Mr Law did consider the possibility that the adoption of a similar logo might cause confusion between the [Applicant’s] business in Sydney and the [Opponent’s] business in Hong Kong. Thus the [Applicant’s] own evidence admits of at least the possibility that, from late 2003, the [Applicant] and the [Opponent] could have conflicting reputations in Australia.
[193] It is, of course, for the [Applicant] to make good [its] grounds of defence. Although there is a presumption of registrability at the time of examination (Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 ; 45 IPR 411 ; [1999] FCA 1020 at [24]), s 60 provides a ground of opposition to registration post-acceptance of a trade mark application. Bearing in mind the low threshold for deception or confusion for the purpose of considering the registrability of trade marks (Southern Cross Refrigerating at CLR 595; IPR 118), I am not satisfied that, on the evidence, the [Applicant has] discharged the burden [it has] assumed of establishing that the [Applicant] would obtain registration of [the Opposed Mark] as a trade mark at a relevant time, because of the presence, within that logo, of the name OPTICAL 88.
[194] I am conscious of the fact that trade mark application No 1147926 is pending before the registrar. Nothing I have said about the [Applicant’s] failure to establish, on balance, the defence based on s 122(1)(fa) of the Trade Marks Act in the context of trade mark infringement proceedings determines the fate of that application before the registrar, which will need to be considered on its own merits on the material before the registrar and on the basis of the submissions then made.
[195] For completeness I should also record that, in its application, the [Opponent] sought declarations that use of the mark the subject of trade mark application No 1147926 would be likely to deceive or cause confusion within the meaning of s 43 of the Trade Marks Act and would be contrary to law within the meaning of s 42 of the Trade Marks Act. The [Opponent] also sought an order that trade mark application No 1147926 be withdrawn. However, in closing oral submissions, the [Opponent] made clear that it did not press its application for that relief. I have, accordingly, made no findings on those matters.
In summary, based on the parties’ submissions and the evidence then before him going to the reputation in Australia of the marks relied on by the Opponent, Yates J was in effect satisfied that the Opponent would succeed in an opposition to application 1147926 based on s 60 of the Act. I say “in effect” because, as Mr Maddigan pointed out, it was the Applicant rather than the Opponent which bore the onus with respect to the s 60 issue before the Court, given s 60 was considered in the context of the defense that the Applicant had raised under s 122(1)(fa). That said, Mr Maddigan accepted that the reversal of the onus might only be relevant in the current opposition to the extent that the matter was so finely balanced that I could not be satisfied one way or the other as to whether the s 60 ground was established.
I mention that in his written submissions[16] Mr Maddigan also took issue with Yates J’s above-quoted findings as to reputation, based on certain criticisms of the Opponent’s survey evidence his Honour expressed at [396] and [405]-[406] of the Judgment. However, as Mr Kell observed, those criticisms were made in the context of the Opponent’s passing off and misleading or deceptive conduct claims where, inter alia, the relevant date was some 13 years earlier than the 2006 priority date of the opposed application, well before the survey was actually undertaken. Whatever criticisms Yates J may have had of the survey in that context, as the above excerpts from the Judgment make clear[17] he was undoubtedly satisfied that the survey did establish that sufficient reputation existed as at the Priority Date as to bring s 60 into play.
[16] At paragraph 24.
[17] In particular at [189]-[191].
Importantly, as Mr Maddigan highlighted, Yates J was nevertheless careful to point out that his finding that opposition to application 1147926 based on s 60 would on balance succeed did not necessarily mean that I, as the Registrar’s delegate, must reach the same conclusion in the current opposition. Rather, I must consider the application “on its own merits on the material before [me] and on the basis of the submissions then made.”
As noted in paragraph 16 above, I understand that, with one addition, the evidence before me now is identical to the evidence upon which Yates J reached his above quoted conclusion with respect to s 60. The additional evidence before me, Bednall 2, was filed by the Opponent. Dr Bednall is an associate professor of marketing at Deakin University and was responsible for designing both the quantitative survey conducted in July 2009 to which Yates J refers in the above quotes from the Judgment and for having qualitative interviews conducted in August 2008 upon which the quantitative survey was based. As his Honour indicated at [190], the “reliability and utility of the survey for the purposes of determining the claims for contravention of the Trade Practices Act and passing-off were strongly challenged by the [Applicant].” He was “nevertheless…satisfied that the survey does provide reliable information about awareness, as at July 2009, of the name OPTICAL 88 and the source of that awareness” and (at [191]) that, “While that data set shows awareness as at July 2009, it does provide some indication of the existence of a reputation in the name OPTICAL 88 as having a Hong Kong source (and, in particular, the [Opponent’s] stores) that…points to the real possibility of an extant reputation as at…20 November 2006…that, arguably, would be sufficient to defeat an application for registration of the [Opposed Mark] as a trade mark based on the application of s 60.”
In Bednall 2 Dr Bednall addresses what I understand to be two of the Applicant’s specific criticisms of the survey highlighted in McCallum,[18] namely the extent to which the relevant reputation might in fact be attributable to the Opponent as at 20 November 2006 (and not just as at July 2009 when the survey was conducted) and the extent to which the survey results might be extrapolated from the six suburbs of Sydney actually surveyed more generally across Australia. Before noting Dr Bednall’s conclusions I firstly need to address objections raised by Mr Maddigan concerning the instructions Dr Bednall received from the Opponent’s solicitors on these two issues. In particular, Dr Bednall says at paragraph 16 of Bednall 2 that the first question he was asked to address was:
What reputation did the [Opposed Mark] have that was attributable to [the Opponent] before 20 November 2006 in respect of the relevant class 9 goods and class 35 services in Australia?
[18] Neither of which, I note, was in any event considered sufficiently significant by Yates J as likely to preclude the Opponent from successfully relying on s 60 in an opposition to application 1147926.
Mr Maddigan pointed out that whatever reputation the Opposed Mark might have was in principle irrelevant to the Opponent’s s 60 ground, since the ground must of course be based on the reputation of a mark other than the Applicant’s own mark. However, I do not believe Mr Maddigan’s point is significant in this case. In the first place, as discussed in paragraphs 3 and 4 above, Yates J was firmly of the view that it was the name OPTICAL 88 appearing in both parties’ marks that was the marks’ “essential or distinguishing characteristic”. Moreover, a copy of the original instruction letter Mr Bednall in fact received from Baker & McKenzie is included as Annexure B to Bednall 2, from which it is apparent the actual question asked of Dr Bednall was:
What reputation did the OPTICAL 88 mark have that was attributable to [the Opponent] before 20 November 2006 in respect of the relevant class 9 goods and class 35 services in Australia?
I am satisfied from the totality of the declaration that this was the question Dr Bednall in fact addressed in Bednall 2. I accordingly do not consider his findings on the issue concerned irrelevant.
On the second issue Dr Bednall was asked to address, Mr Maddigan again pointed to the reservations concerning the survey that Yates J had made in the context of the Opponent’s claims of passing off and misleading or deceptive conduct, arguing that:
…the Applicant repeats the finding of [Yates J] that the survey does not attempt to measure the Opponent’s reputation at any particular time before the dates on which the interviews were actually conducted (being July 2009) [the Judgment at [401] and [405]]. The Opponent is seeking the Delegate to infer based on a survey found to be unreliable by a judge of the Federal Court of Australia extrapolated using migration figures that one or more of the Opponent’s marks had acquired a reputation in Australia for the purposes of s 60.

I have already effectively dealt with this objection in paragraphs 24 and 26 above.
That said, Dr Bednall’s conclusions, unchallenged by any additional evidence from the Applicant, were that:
…based on my expertise in consumer behaviour, and based upon both the qualitative research and the quantitative survey, as at November 2006, if people who accord with the sample in the quantitative survey were faced with the [Opposed Mark] used in relation to the goods and services [covered by application 1147926], then a significant proportion of these people would be likely to believe that the [Opposed Mark] belonged to or was associated with [the Opponent] and its Optical 88 brand.[19]
[19] Bednall 2, paragraph 52.
Mr Kell took me in some detail through the Bednall declarations and through the other material in evidence that was before Yates J going to the reputation relied on by the Opponent to underpin its s 60 ground of opposition. Among other things he noted that as at 2006 the Opponent had “150 Optical 88 stores as follows: Hong Kong (70), Thailand (29), Singapore (17), China (12), Malaysia (11), Macau (4) and Canada (1) [Wong, ex CK-1, p 148].” Its stores were, moreover, “typically…located in high profile retail shopping areas, including shopping malls, which have high pedestrian traffic and attract large numbers of local residents and overseas visitors [Wong, paras 47, 105].” Its 2006 Annual Report (Exhibit SPF-3 to Favotto) disclosed impressive growth and very significant sales figures. Its television advertising in Hong Kong from 1989 to 1995 included “high profile commercials featuring famous Chinese actors and an iconic cartoon character” [Wong, paras 55-61, 63] which “received a number of awards in the Asian advertising industry [Wong, para 62].” The Opponent had also advertised extensively in Hong Kong prior to 2006 via radio commercials, newspapers and magazines, and through its website (accessible form Australia). An AC Nielsen report of research conducted in Hong Kong in 2006 (exhibited as part of CK-1 to Wong) found that 84% of interviewees aged between 18 and 54 years were able to name Optical 88 as an eyewear chain without prompting and that 93% had actually visited one of the stores, these quite remarkable figures being considerably higher percentages than for the Opponent’s nearest competitor.
As to whether the reputation enjoyed by the Opponent’s overseas stores would have extended significantly to Australia by the Priority Date, Mr Kell submitted that this:
…arises from both traditional “spill-over” of reputation from the levels of its trading , advertising and promotion in [the] Asia-Pacific particularly in Hong Kong and associated contact with Australian visitors [Wong, paras 99, 105], as well as transactions with Australian consumers [Wong, paras 88-91].
Mr Kell also referred to Hugo, included as Exhibit SPF-5 to Favotto. Professor Hugo is with the Department of Geographical and Environmental Studies at the University of Adelaide and was described by Mr Kell as “an eminent demographer and expert in Australian migration history and patterns.” As Mr Kell put it, Professor Hugo’s evidence, which of course was also considered by Yates J:
…deals with specific features of ex-Hong Kong migration to Australia, including clustering of families in particular areas of Sydney, the frequency of return visits to Hong Kong and partial migration (or “astronauting” –i.e. families being settled in Australia with permanent residency and then husband returning to Hong Kong to maintain business activity).
Mr Kell further noted the evidence in Wong:
…regarding the extensive number of Chinese Hong Kong residents and expatriates resident outside Hong Kong who are aware of the Opponent’s Optical 88 stores and also order from the Opponent’s stores both from outside Hong Kong and/or on visits to Hong Kong.
I would only add in this context that, as discussed in Shanahan’s Australian Law of Trade Marks and Passing Off (“Shanahan”),[20] the relevant reputation for s 60 purposes may be established by a variety of means other than actual use in Australia of the kind that might, say, be required to establish an opponent enjoyed business goodwill sufficient to found a passing off action. In this regard the authors refer, inter alia, to the judgment of Richardson J in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd[21] concerning a similar provision to s 60 contained in the New Zealand Trade Marks Act 1953, where his Honour said (at 424):
For myself, I prefer to use a more neutral term such as “awareness” or “cognisance” or “knowledge” and on that basis to ask; having regard to the awareness of the opponent’s mark in the New Zealand market for goods covered by the registration proposed, would the use of the applicant’s mark be likely to deceive or cause confusion to persons in that market?
[20] Lawbook Co., 4^th ed, 2008 at [50.2385] and [50.2390].
[21] [1979] RPC 410 (CA NZ).
Given Yates J’s assessment of the Opponent’s evidence I do not think it is necessary or useful to dwell further here on this aspect of the Opponent’s case. I am satisfied, as was his Honour, the evidence establishes that as at the Priority Date the Opponent could point to the kind of reputation in Australia contemplated by s 60.
Indeed, as much was effectively conceded by Mr Maddigan for the Applicant at the hearing.[22] What Mr Maddigan did take issue with, nevertheless, was whether in light of that reputation a sufficient number of people in Australia generally were likely to be confused or deceived by the Applicant’s use of the Opposed Mark as at the Priority Date for that use in fact to offend against s 60. In this regard he pointed out, not unreasonably, that the goods and services of the opposed application were relatively common in that, in principle, their potential market included the entire Australian population who might at some point in their lives require glasses and/or the services of an optometrist. However the reputation in Australia of the (Opponent’s) OPTICAL 88 name was on the evidence (and for obvious reasons given the locations of the Opponent’s stores) essentially confined to, as he originally submitted, people born in Hong Kong. I say “originally submitted” because Mr Maddigan did recognize at the hearing that, although the survey relied on by the Opponent was principally[23] aimed at people born Hong Kong, the Opponent was operating some 150 stores in Asia (and one in Canada) as at 2006, of which, as mentioned in paragraph 33 above, only 70 were located in Hong Kong itself.
[22] Notwithstanding what is said at paragraphs 24 and 29 of his written submissions –discussed in paragraphs 24 and 30 above respectively.
[23] Although not exclusively. As explained in Bednall 1 and 2, the survey also specifically targeted people born in Macau, Singapore and Thailand.
Be that as it may, Mr Maddigan referred to the “2006 Census Data” included at page 47 of Exhibit DHBB-1 to Bednall 1, which indicates that of the almost 20,000,000 people then living in Australia, only 71,801 were born in Hong Kong. This, he noted, was only around 0.385% of the total population, which he argued was too low to be significant for the purposes of s 60. In this regard Mr Maddigan referred to the first instance judgment in Le Cordon Bleu BV v Cordon Bleu International Ltee,[24] where Heerey J observed:
What is “significant” or “substantial” will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.
[24] (2001) 50 IPR 1 at [91]. Heerey J’s remarks were in reference to s 28 of the Trade Marks Act 1955.
As indicated above, I agree with Mr Maddigan that the parties’ goods and services of interest are not “highly specialised” in the sense Heerey J had in mind. Moreover I accept that, as is said in Shanahan,[25] “It is commonly put that a ‘substantial’ or ‘significant’ number of persons must be likely to be deceived or confused, though as Lord Upjohn warned in ‘Bali’ Trade Mark,[26] the requirement that the deception or confusion should be amongst ‘a substantial number of persons’ must be ‘properly and sensibly applied’.” The meaning of, and difference (if any) between, the words “substantial” or “significant” was in fact discussed at some length by Yates J in the Judgment at [336]-[341], albeit in the context of the Opponent’s claims of passing off and misleading or deceptive conduct. His Honour favoured the view that both words were essentially equivalent to saying “a not insignificant number of the relevant class of purchasers” (as submitted by the Opponent) and he agreed (at [341]) with Middleton J at first instance in Hansen Beverage Co v Bickfords (Australia) Pty Ltd[27] that:
…the difference between the two stated approaches (“significant” or “substantial” v “not insignificant”) was a matter of expression and not one of quantitative substance.
[25] op. cit. at [50.2400] (with original footnotes omitted).
[26] [1969] RPC 472 at 496 (HL).
[27] (2008) 75 IPR 505 at [44].
The evidence of Dr Bednall contained in Bednall 1 accepted by Yates J (following some modification taking into account McCallum and the parties’ cross-examination of both Dr Bednall and Mr McCallum and submissions on the issue) and indeed accepted by Mr McCallum himself, was that some “48.7% of interviewees [who participated in the survey] identified Hong Kong and its environs as a source of awareness of the name OPTICAL 88 in relation to optical shops.”[28] Based, inter alia, on that evidence his Honour was satisfied, as already noted and as Mr Kell pointed out, that opposition to application 1147926 based on s 60 was more likely than not to succeed. I note Yates J reached this conclusion notwithstanding, as he put it at [128]:
[The Applicant] also submitted that, in any event, there was insufficient evidence of the [Opponent’s] reputation or trade mark use in Australia to make it likely that a significant number of people in Australia could be confused.
[28] Judgment at [190].
The further (uncontested) evidence before me from Dr Bednall at paragraphs 47 and 52 of Bednall 2 is that:
I consider that as the quantitative survey collected data from six different centres in Sydney within [the inner North West, East and Southern suburbs], the results of the survey are representative of the Hong Kong born adult population of Sydney (and as I explain below, of Australia).

and

Accordingly, based upon my expertise in consumer behaviour, and based upon both the qualitative research and the quantitative survey, as at November 2006, if people who accord with the sample in the quantitative survey were faced with the [Opposed Mark] used in relation to the goods and services [covered by the opposed application], then a significant proportion of those people would be likely to believe that the [Opposed Mark] belonged to or was associated with [the Opponent] and its Optical 88 brand.

On the evidence before me, then, I am compelled to accept that somewhere in the order of 48.7% of the 71,801 people born in Hong Kong who, according to the 2006 census, were then living in Australia, were likely to be confused or deceived in this manner. On the face of it, in my view, this is not an insignificant number of people. Moreover, this is before one adds those people living in Australia in 2006 who were born elsewhere in Asia and may have been familiar with one of the Opponent’s 80-odd stores outside Hong Kong. Mainland China itself, for example, had 12 of the Opponent’s stores in 2006 and the 2006 census data contained in Exhibit DHBB-1 to Bednall 1 indicates that there were then some 220,597 people in Australia who spoke Mandarin in the home. Some of these Mandarin speakers, therefore, might also have had some knowledge of the Opponent’s stores in China or elsewhere in the region.
I think, too, that another matter is significant in this case. Whereas I accept that in principle the potential clientele for the Applicant’s goods and services might be almost anyone amongst the Australian population, it is apparent from the evidence of Mr Law that the Applicant’s business aims specifically to target clients with a Chinese or other Asian background. This is not only evident from the specific suburbs of Campsie, Eastwood and Chatswood in Sydney where the Applicant chose to locate its stores by 2006 (all known to have significant Chinese and other Asian populations), but is apparent too from Yates J’s summary at [34] to [37] of the Judgment of the development of the Applicant’s business and of the Opposed Mark:
[34] Mr Law was born in Hong Kong and migrated to Australia with his family in 1978. He subsequently qualified as an optometrist. Mrs Law was also born in Hong Kong.
[35] In November 1984 Mr Law established an optometry practice at Campsie, a suburb in south-western Sydney, New South Wales. He called the practice “Angus Law Optometrists”. He provided eye-sight examinations and sold optical goods such as optical lenses, spectacle frames and sunglasses, and accessories such as contact lens solutions, eye drops, spectacle cases and spectacle chains. His patients and customers were drawn from different parts of Sydney. He developed a significant Asian customer base. His patients and customers included those who had migrated from Hong Kong, mainland China, Malaysia, Singapore, Vietnam and other Asian countries.
[36] By 1992 he was considering expanding his practice and business. He contemplated the possibility of entering into franchise arrangements. He decided that it would be a good idea to trade using a corporate vehicle. To that end he began thinking about an appropriate corporate name. He wanted the name to be easily identified by his established Asian patients and customers as well as being “in tune with the traditional thinking of Asians”.
[37] Mr Law’s evidence was that he was aware that the numeral “8”, especially the combination “88”, was being used in the names of various businesses in Sydney, such as newsagents, butchers and tobacco stores. He thought that OPTICAL 88 was a good and appropriate name to use. He thought that the word “OPTICAL” was a “precise, descriptive and efficient word” to identify an optometry practice and business, which could be used in combination with a more “catchy” word or words. He thought the numerals “88” were apt because, as a number, it was considered to be propitious in Asian cultures. He believed that his Asian patients and customers would be likely to appreciate the symbolism and significance of the numerals in a business name. Also, the numerals represented, in an abstract way, spectacle frames.
At [83] of the Judgment his Honour further notes that as from as early as 1993 the Applicant was using the name “OPTICAL 88” (in Chinese characters) on store signage and in proximity to the Opposed Mark, again presumably with a view in particular to attracting clientele familiar with Chinese characters. At [139] Yates J again discusses these aspects of the Applicant’s business in the context of the Opponent’s infringement claim, considering them relevant “surrounding circumstances” and concluding that:
It is thus appropriate, in my view, to consider the question of deceptive similarity bearing in mind the background and ethnicity of customers attending or likely to attend the first respondent’s stores from which or in relation to which the alleged infringing conduct is said to have occurred.
It is likewise, I believe, a relevant circumstance to take into account under s 60 when considering the notional use the Applicant might make of the Opposed Mark. In this regard I note that based on principles formulated by Kitto J in Southern Cross Refrigerating, French J (as he then was) in Registrar of Trade Marks v Woolworths Ltd[29] conveniently restated several of the principal considerations involved in assessing, in particular, the likelihood of confusion:
A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
…
In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
[29] (1999) 45 IPR 411 at [50].
It is convenient here to note in passing that bearing in mind the fact that the Applicant was using the name “OPTICAL 88” (in Chinese characters) on store signage and in proximity to the Opposed Mark from as early as 1993, there is some irony in Mr Maddigan’s point at paragraph 32 of his written submissions that, “The use of Chinese characters by the Opponent in the ‘966 mark serves to reinforce its connexion with Hong Kong.” While I do not doubt that that is correct, clearly too the use of the name “OPTICAL 88” (in Chinese characters) on store signage by the Applicant would similarly reinforce a connexion with Hong Kong for those people familiar with the Opponent’s business.
As Yates J put it at [193] of the judgment, (quoted in full in paragraph 22 above), there is a “low threshold for deception or confusion for the purpose of considering the registrability of trade marks (Southern Cross Refrigerating at CLR 595; IPR 118).” In this regard it is useful to note that in The Coca-Cola Company v All-Fect Distributors Ltd[30] the Full Federal Court (Black CJ, Sundberg and Finkelstein JJ) said the following at [39] in relation to the meaning of the terms “deceive” and “cause confusion”:
[39] …No intention to deceive or cause confusion is required: Re Bali Brassiere Co Inc's Registered Trade Mark (1968) 118 CLR 128 at 139. The distinction between “likely to deceive” and “likely to cause confusion” lies not in some element of culpability in the user to be inferred from the word “deceive”, but in the effect of the mark on prospective purchasers. In Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 423 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.
[30] (1999) 96 FCR 107; 47 IPR 481.
Moreover, it is well established that the kind of confusion required by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J put it in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495[31] at 501:
A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales: Southern Cross Refrigerating at CLR 495. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived: Re Hack's Application (1940) 58 RPC 91 at 103–4.
[31] His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are no less applicable to s 60 of the (current) Act. The decision itself was overturned on appeal to the Full Federal Court (Wilcox, Tamberlin and Merkel JJ), (1998) 45 IPR 393, but not on this point.

A further matter raised in the Judgment that I would note is the fact that, as Mr Kell put it at paragraph 22(f) of his written submissions, as early as 2003 the person controlling the Applicant, Mr Law:
…considered that the adoption of a logo similar to that used by the [O]pponent might cause confusion between the [A]pplicant’s stores and the [O]pponent’s business [and this] signifies at least the possibility, from late 2003, of the [O]pponent and the [A]pplicant having conflicting reputations in Australia.
Mr Maddigan argued that Mr Law’s admission was not significant as far as the Opponent’s s 60 ground was concerned because Yates J only referred to it in the context of the Opponent’s copyright claim. In fact his Honour did refer to the issue in the context of the Applicant’s defense to trade mark infringement under s 122(1)(fa), and specifically in connection with the difficulty the Applicant faced because of s 60 of the Act. In this regard see the Judgment at [192], quoted above at paragraph 22.
That said, I believe Mr Law’s words at paragraphs 38 to 42 of Law 2 speak for themselves in any event and undoubtedly have some relevance to the s 60 issue given the similarity between the logo in the Opposed Mark and the Opponent’s logo. Moreover, while it is true that Yates J did not in the end think that the Applicant’s logo was a “substantial reproduction” of the Opponent’s logo such that it might infringe the Opponent’s copyright, he did in fact believe the two logos were deceptively similar, stating at [146] of the Judgment that:[32]
…the use of the [Opposed Mark] on business cards and reminder cards…is the use of a sign, as a trade mark, that is deceptively similar to the [Opponent’s logo]. … I am satisfied that the [Opponent’s logo] and the [Opposed Mark] are based on the same idea (a graphical representation reminiscent of both spectacle frames and the numerals “88”) and that the [Opposed Mark] is, for trade mark purposes, sufficiently close in appearance to the [Opponent’s logo] to convey that idea in a way that would cause a number of patients and customers, who are taken to have knowledge of the [Opponent’s logo], but an imperfect recollection of each of them, to wonder whether goods or services supplied by [the Applicant] using the [Opposed Mark] come from the same source as those taken to be supplied using the [Opponent’s logo]. The use of the name OPTICAL 88 as part of the [Opposed Mark] can be considered to be, for the purposes of trade mark analysis, the use of mere additional matter that does not alter this conclusion.
[32] See also the Judgment at [317].
For the sake of completeness, then, I set out below Yates J’s comments on Mr Law’s evidence on the creation of the Applicant’s logo:
[291] Mr Law gave evidence that, in late 2003 (some 10 years after the [Applicant] commenced carrying on business), Victor Lam (a patient and family friend who was also a graphic artist) discussed the benefit of a logo being used in the conduct of the [Applicant’s] business. Mr Law said he asked Mr Lam to develop some ideas and to present them for his further consideration. Mr Law’s evidence was that he raised with Mr Lam the fact that the [Opponent] was conducting an optical business in Hong Kong under the name OPTICAL 88 and that he wanted to make sure that the logo to be developed and adopted by the [Applicant] would not resemble the “branding” used in the [Opponent’s] business.
[292] Mr Law gave this evidence in para 41 of his affidavit sworn on 23 November 2009 [that is, Law 2]:
I remember wanting to alert Mr Lam about the [Opponent’s] business and branding because I did not want to go through the time and expense of developing a logo to distinguish the Company’s business only to find that it caused confusion between the Company’s business and the [Opponent’s] business.
[293] This statement is significant because, as I have already recorded, it stands as evidence that, as of late 2003, Mr Law did consider the possibility that the adoption of a similar logo might cause confusion between the [Applicant’s] business in Sydney and the [Opponent’s] business in Hong Kong. Mr Law gave evidence that he asked Mr Lam to search the internet to collect samples of the [Opponent’s] “signage” for reference.
[294] Mr Lam gave evidence which was not entirely consistent with the evidence given by Mr Law on this subject. Overall, it does not seem to me that the differences, where they exist, are of much significance in dealing with the issue of copyright infringement raised by the [Opponent].
[295] Mr Lam gave evidence that, in about August 2003, Mr Law asked him to produce a logo for use on a business card. His evidence confirmed that Mr Law told him that there was “another optical company in Hong Kong” and that the design of the logo should not be the same as the one used by OPTICAL 88 in Hong Kong. Significantly, Mr Lam said that, when Mr Law gave him these instructions, he (Mr Lam) recalled having seen the name OPTICAL 88 on a store in Hong Kong on a visit in 1995.
[296] For the next one to 2 weeks Mr Lam carried out research to assist him developing designs that would be appropriate to fulfil the commission he had been given. Mr Lam gave evidence of the steps that he undertook at that time. One of the steps was visiting the home page of the [Opponent’s] website. This was plainly in accordance with the instruction he had been given by Mr Law. I am satisfied, however, that Mr Lam’s research was not confined to that one step but extended to a range of steps and considerations to which he deposed, including considering the many different shapes that could be made using the numeral “8”. In that connection Mr Lam gave evidence that he focussed on the repetition of the numeral “8” and the contrast it had with the word OPTICAL, because he believed that persons looking at the business name OPTICAL 88 would focus on the numerals “88”. I should say here that I do not find anything remarkable about this evidence, given that the starting point for Mr Lam was the name of the [Applicant’s] business. As it turns out, Mr Lam’s belief at that time appears to have been soundly based in light of the subsequent findings of the survey and opinions expressed by Dr Bednall to which I have previously referred when dealing with the question of trade mark infringement.
I accordingly do accept Mr Kell’s submission that, in addition to deception or confusion arising because of the presence of the name OPTICAL 88 as the “dominating element” of the parties’ respective marks, deception or confusion might also arise, or be reinforced, due to the deceptive similarity of the Applicant’s logo within the Opposed Mark to the Opponent’s logo, particularly amongst those people with an imperfect recollection of the Opponent’s logo.
The final matter raised by Mr Maddigan was that there was no “direct” evidence before me of actual deception or confusion. As he put it:
No direct evidence is adduced that any consumer thought that the Applicant’s stores were the Opponent’s stores or were in any way associated in trade with the Opponent or its stores. In fact, the evidence from [Bednall 1] discloses that although the potential for confusion was possible, it was not directly evidenced by the interviews.
Highlighting, nevertheless, this potential for confusion, Mr Kell referred to several instances in the interviewees’ responses (included as pages 71 to 199 of Exhibit DHBB-1 to Bednall 1) in which an interviewee indicated he or she would assume, or be caused to wonder about, a connection with the Opponent’s business in Hong Kong if he or she were to encounter stores in Australia trading under the Opposed Mark.
I note that the lack of evidence of actual deception or confusion was also put to Yates J, who mentions at [128] of the Judgment that the Applicant had “submitted that it was telling that the [Opponent] had adduced no direct evidence of confusion or deception.” As is apparent, however, Yates J did not consider that this was sufficiently significant as to be determinative of the s 60 issue in the Applicant’s favour. Nor do I in this case.
The only other matter I should perhaps mention is that in dismissing the appeal against Yates J’s decision the Full Federal Court did not take issue with any of his Honour’s findings or reasoning.
To conclude, there is nothing in the evidence or submissions before me in the current opposition which leads me to think I ought to take a different view from his Honour Yates J with respect to the Opponent’s s 60 ground. I am on balance satisfied that deception or confusion was likely as at the Priority Date amongst a significant number of people in Australia. The Opponent has accordingly made out its s 60 ground of opposition.

Decision

Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:
…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.
I have found the opposition to be successful on the ground raised pursuant to s 60 of the Act. I accordingly refuse to register trade mark application number 1147926.

Costs

In the event that it prevailed, Mr Kell requested an award of costs in the Opponent’s favour. As the successful party, the Opponent is so entitled and I accordingly award costs against the Applicant as per Schedule 8 of the Trade Marks Regulations 1995.

Michael Kirov

Hearing Officer

Trade Marks Hearings

6 March 2014