Owen Cook v Hasbro International, Inc

[1998] ATMO 4

TRADE MARKS ACT 1955

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

Re:Opposition by HASBRO INTERNATIONAL, INC to registration of trade mark application number 599118 in the name of OWEN COOK

Background
As provided for in the transitional provisions of Part 22 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to govern this opposition.  Accordingly, unless otherwise specified, any reference to the Act in this decision is a reference to the Trade Marks Act 1955.

Application number 599118 was lodged on 26 March 1993, in the name of Owen Cook (the applicant).  The application was for the registration of the word SINDY covering the statement of goods, “Roller skates; in-line skates; skateboards; ice skates; parts & fittings in this class for all the aforesaid goods; gymnastics and sporting articles in this class”, in class 28.  The trade mark was advertised as accepted in the Australian Official Journal of Trade Marks of 22 September 1994.

Notice of opposition to the trade mark’s registration was lodged by Hasbro International, Inc (the opponent), on 22 March 1995.  The notice of opposition listed a number of grounds.  However, the matters which were later pursued by the opponent at the hearing were under s.33, that the present trade mark was substantially identical with, or deceptively similar to, trade marks already registered by the opponent for goods of the same description or closely related goods to those covered by the application; under s.40, that the applicant was not the proprietor of the mark in question; under s.28, that the use of the subject trade mark on the goods claimed would be likely to deceive or cause confusion, and that it was a trade mark not entitled to protection in a court of law; and that there was a lack of intention by the applicant to use the mark on all of the goods in the specification.

I have attempted to summarise both sides’ arguments only as they relate to those grounds.

The service and lodgment of the evidence in support and answer from the respective parties were completed by 1 May 1997.  The opponent requested a hearing in the matter and it came before me, as a delegate of the Registrar, in Sydney.  The opponent was represented by Mr Michael Hall of Baker & McKenzie, Solicitors and Attorneys.  The applicant’s submissions were in the form of written representations.

Evidence
Evidence in Support
In her statutory declaration, dated 12 December 1996, Cynthia S. Reed, Senior Vice President of the opponent, said that her company owned an Australian registration for the trade mark SINDY, for dolls, clothing for dolls and toys.  She said that her company had a substantial worldwide reputation for its trade mark and had sold goods in Australia under the mark since 1964.  She gave annual world wide sales and advertising figures for goods sold under the mark, and Australian figures since 1993 to 1996.  She also listed the stores which sold the goods.  Annexed to her declaration was a summary of some of the opponent’s promotions in Australia of goods bearing the SINDY trade mark, a list of some of the dolls and accessories sold by the opponent in this country under the mark, and a copy of the opponent’s 1993 catalogues showing the various goods for sale.

Evidence in Answer
In his statutory declaration, dated 29 April 1997, Owen Cook explained how he had decided to adopt the SINDY trade mark for his in-line skates product.  He discussed the opponent’s evidence in support, saying that the SINDY dolls depicted there were shown with an endless array of accessories, including in-line skates.  He said that the opponent should not be able to prevent other traders registering their own SINDY marks for a wide range of items, merely because the doll was pictured with them.

Submissions
In relation to the s.33 ground, Mr Hall said that the opponent was relying upon its registration number 187364, for the trade mark SINDY, which had been registered in 1964 for the statement of goods, “dolls, clothing for dolls and toys” in class 28.  He said that the applicant’s and opponent’s trade marks were identical, leaving only the question as to whether the goods of both parties were those of the same description.  He said that the well known tests for determining whether this was the case were contained in John Crowther & Sons (Milnsbridge) Ltd's Appn (1948) 65 RPC 369 at 428, and that, here, these could be broken down to three broad areas: the nature of the goods, their use, and the types of companies that manufacture and distribute them.

Mr Hall said that both sets of goods were what he would term “toybox” items which were purchased for and by children and which were also used by those looking for recreation - again especially children.  In relation to the trade channels through which the goods came to the consumer, he said that Ms Reed, in her declaration, listed the vast number of stores which sold the opponent’s goods, submitting that many of these stores would also sell skates, skateboards and like goods.  In relation to whether the applicant’s and opponent’s goods were considered by the trade to be the same kind of thing, Mr Hall pointed to the state of the Trade Marks Register in class 28.  He said that Mattel, Inc., a company which produced a similar doll to the opponent, under the BARBIE trade mark, had a registration, number 269645, which covered all goods in class 28 - a statement which encompassed both the opponent’s and the applicant’s goods.

With reference to the ground of opposition under s.40 of the Act, Mr Hall said that the respective parties’ marks were identical and that goods which were “the same kind of thing” were sold under them.  In relation to such a description, he relied on the tests outlined in re Hicks’ case (1897) 22 VLR 636. He submitted that these tests, although not identical to those relied on for determining goods of the same description, were measured in terms of the same kind of criteria. He said that the opponent’s evidence showed use of its mark on its goods in Australia since 1964. In contrast, the applicant’s evidence only showed that he had used his mark on in-line skates in this country since late 1992. Therefore, because the trade marks were identical and the opponent had made prior use of its own mark on the same kind of goods, then it was clearly the proprietor of the mark SINDY for those goods as at the date of application.

Mr Hall said that the application also fell foul of s.28(a) of the Act, in that use of the mark SINDY by the applicant would be likely to lead to deception and confusion.  He said that the case of Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 laid down the tests in this regard. He said that the opponent’s evidence clearly showed the extensive use it had made of its trade mark in Australia, and that the reputation which the opponent enjoyed in its mark covered not only the famous SINDY doll but the accessories sold to complement it. He said that the evidence further showed that these accessories were many and varied, and included not only clothing, furniture and the like, but also sporting articles. There was, he said, included in the opponent’s catalogue, a HOT BLADES SINDY, where the doll was sold equipped with, “...the latest in line skates around”.

Mr Hall gave examples of promotions of the opponent’s goods, where such items as SINDY branded sunglasses and other accessories were used to promote its dolls.  He said that there was a periphery of other items which were regularly shown in the catalogues with the doll, such as mountain bikes, skates, etc and which all went towards the creation of the SINDY concept in the minds of potential purchasers.  He said that the opponent’s reputation was so widespread that buyers would be caused to wonder whether the applicant’s skates and the opponent’s dolls, both bearing the same mark, shared a common source.

Mr Hall disputed the Office’s current practice of requiring that blameworthy conduct, on behalf of the applicant, needed to be shown, in addition to the likelihood of deception and confusion, before an opposition could succeed under s.28.  He said that the case on which the Office based this interpretation, New South Wales Dairy Corp v Murray Goulbourn Co-operative Co Ltd 18 IPR 385 - the Moo/Moove case - related to an expungement matter, not with opposition to an application.

He said that, notwithstanding this, if blameworthy conduct needed to be shown, then this conduct could be found in the applicant’s adoption of such a well known and established mark as the opponent’s.  He relied for support, in this respect, on the Federal Court decision, Nike International Ltd and Anor v United Pharmaceutical Industries (Aust) Pty Ltd and Others 35 IPR 385 and several Office decisions, including Sporoptic Pouilloux v Arnet Optic Illusions Inc 32 IPR 430. Mr Hall said that the reputation of the opponent’s mark was so wide that it placed an onus on the applicant to give a plausible explanation as to why he chose the mark SINDY. He said that Mr Cook’s declaration showed that he had not conducted any sort of search in relation to the state of the Register, or research into the market, and that this sort of reckless indifference equated to the kind of blameworthy behaviour contemplated in the authorities.

Mr Hall said that, in the event that I found that the opponent did not succeed on the grounds so far advanced, then the mark should not be accepted for all of the goods for which it was currently applied for.  This was because the evidence put forward by the applicant established that he did not use, or intend to use, the mark on all of the goods applied for.  Mr Hall said that, several times in Mr Cook’s declaration and written submissions, it was stated that Mr Cook’s business involved the importing and wholesaling of in-line skates, and that all references to the use of the mark SINDY, as at the date of application, by Mr Cook involved the singular item, “in-line skates”.  Mr Hall said that, therefore, it was evident that the mark was, at the relevant date, only used, or intended to be used, on those goods.  He said that, consequently, if I did decide to allow registration, then the statement of goods should be restricted to only the items on which the mark was genuinely used, as at the appropriate date.

Mr Cook, in his written submissions, said that he had decided to call the women’s version of his in-line skates SINDY after his wife Sindy Cook.  He said that the reason for calling the skates by a female name was to make them more attractive to women buyers, as the original name STORM lacked appeal to that segment of the market.  He said that, “...it was never our intention to market this name to children”.  He said that he was quite prepared to amend his application if required, “...to eliminate the opponent’s concerns...”.

Discussion
Section 33 - Substantially identical or deceptively similar

Sub-section 33(1) reads:

Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, of goods of the same description as those goods, or of services that are closely related to those goods, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.

There is no doubt that the applicant’s and opponent’s respective trade marks are identical, both comprising the word SINDY.  What I therefore have to consider is whether the goods covered by the respective marks are the same goods, or those of the same description.  In the present case, there has been no evidence adduced of any instances of actual confusion occurring.  I will therefore have to consider the matter from a theoretical viewpoint.

To determine the matter of the relationship of the goods requires, I think, the application of the familiar tests set down by Romer J. in Jellinek's Appn, (1946) 63 RPC 59. These considerations have been determined as: whether the respective goods are of the same nature; whether they are used by the same people for the same purposes; and whether the trade channels are the same. No one of these tests in itself is conclusive and the assessment, as per the directives of Burchett J. and Evershed M.R. in Polo Textiles Industries Pty. Ltd. and Anor v Domestic Textiles Corporation Pty Ltd 26 IPR 246, must be on the basis of business realities and common sense. In this way I am to compare the present application’s statement of goods - which encompasses all kinds of skates and skateboards; their parts and fittings, and gymnastics and sporting articles in class 28, and the opponent’s registration, which covers dolls, and clothing for dolls and toys.

I am aware that the concern of section 33 is the deception or confusion which would reasonably arise from the notional fair use of an applicant's trade mark in the face of equally notional fair use of the opponent's trade mark in respect of the goods for which it is registered.  However, even considering such notional use, I cannot agree that the respective goods are similar at all in their intent.  On the applicant’s part, his goods are sports and gymnastics articles which are intended for physical transport or exercise by all ages and genders.  The opponent’s goods are dolls and their clothing and toys, and are intended for sedentary play by young girls.  Therefore, I believe that the common sense reality is that the intended uses of the respective goods are different.  I must therefore conclude that the nature of the goods is not the same.

I do agree that some of the people who buy and use the respective goods may be the same, although that common stream of users would only be a small percentage of the applicant’s market.  With regard to the trade channels through which both sets of goods are bought, I think that it is possible that both sets of goods could be sold from the same outlets.  However it is, I think, equally true that the goods may also be sold in different stores.  Additionally, it is my experience that, if the competing goods are offered for sale by the same retailer, they are not generally found in the same departments and therefore are not displayed side by side.

Given all of the foregoing, I find that, although the applicant’s and opponent’s trade marks are identical, the goods covered by each are not the same or of the same description.  The opposition, as it is based on the s.33 ground, must therefore fail.

Section 40 - Proprietorship

Section 40(1) reads:

A person who claims to be the proprietor of a trade mark may make application to the Registrar for registration of that trade mark in Part A or Part B of the Register

On that subject, McGarvie J. said in the case of Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402:

The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there: Re Registered Trade Mark YANX; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 203; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603; Moorgate Tobacco Co Ltd v Philip Morris Ltd(No 2) 59 ALJR 77 at 83.
 ...

In considering who, within s.40(1) of the Act, was at the time of Settef's application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia: The Shell Co of Australia Ltd v Rohm & Haas (1949) 78 CLR 601 at 625 and 627.

In other words, the first user of the marks in Australia, for the relevant goods and prior to the date of application, becomes the proprietor at common law.  Any small amount of use will suffice but the effect of the act relied on to constitute use must be the creation, in the minds of those concerned, of an impression that goods of a particular trader are being offered for sale in Australia.  This has been affirmed in later cases such as in Seven Up Co v O.T. Ltd (1947) 75 CLR 203.

The word SINDY is common to both the present trade mark and that of the opponent’s mark.  From the evidence, it is obvious that the opponent was the first user of that word in relation to its goods, dolls and their accessories.  The question remains as to whether those goods are “the same kind of thing” as the goods for which the present application has been made - Hicks’ case, supra.  I think that it is obvious that they are not.  As I have said in relation to the s.33 ground, I cannot agree that the respective goods are similar at all in their intent.  One set of goods is intended for strenuous physical activity by both sexes and, notwithstanding the encroachment of unisex toys, the other is meant for more sedate play by girls.

I must therefore conclude that they are not the same kind of thing, as countenanced in Hicks’ case.  Consequently, I find that, despite the opponent’s far earlier use of the SINDY mark on dolls and accessories, the applicant was the first user of the same trade mark in Australia for his statement of goods.  As a result, the opposition, as it is based on the ground of disputed proprietorship, must fail.

Section 28 - Deception and confusion

The provisions of this section of the Act read as follows:

A mark -

(a) the use of which would be likely to deceive or cause confusion;
           (b) the use of which would be contrary to law;
           (c) which comprises or contains scandalous matter; or

(d) which would otherwise be not entitled to protection in a court of justice,

shall not be registered as a trade mark.

The test to be applied under paragraph (a) of these provisions, on which the opponent partly relies, has been well established by cases such as Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd , supra, where it was said, at 608:

Registration should be refused if it appears that there is a real risk that the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case the two products come from the same source.

However, that risk must extend to a substantial number of people likely to be concerned in the purchasing of the goods - Kendall Co v Mulsyn Paint and Chemicals (1963) 109 CLR 300. In assessing the reputation of the opponents' mark in Australia, the relevant date is that of lodgment of the opposed application, 6 February 1995 - Southern Cross, supra.

The opponent had, at the relevant date, an outstanding reputation for its SINDY mark in the market for dolls and accessories.  This is shown by the evidence and I am aware of this from my own general knowledge.  I have already said, in relation to the ss.33 and 40 grounds, that I do not believe that the goods of the respective parties are the same, or of the same description.  However, s.28 objections may be sustained even when the goods are not closely related - see Southern Cross, supra, at 607. The primary concern of s.28 is the public interest in avoiding the concurrent use of confusingly similar or identical marks. The trade marks of the respective parties are exactly the same and the question which I think should be answered is whether the goods of both parties may be thought of as “associated” in some way because of some close trade connection between them. I do believe that the primary consideration is one of perception. It may be true, as Mr Cook pointed out in his declaration, that such full size items as cars, kitchen ovens and computers would not reasonably be inferred as being associated with SINDY dolls. On the other hand, it may well be the case that both sets of goods here are sold in close proximity, or that some of the intended purchasers are the same for both sets of goods. The opponent does certainly have a practice of marketing a very wide range of accessories, in addition to the basic SINDY doll, as shown in the 1992 catalogue included in the evidence. It would therefore be reasonable to assume that a sizeable proportion of the relevant public might infer that the skates sold by the applicant are full size versions of the ones that the doll wears. This might also be the case for some of the other doll size items which the opponent sells, such as clothing and beach accessories and the like.

Therefore I think that a sufficient number of people, as contemplated in Kendall Co v Mulsyn Paint and Chemicals, supra, could be caused to wonder whether there was a link between SINDY skates and SINDY dolls.  Consequently, I feel that the use of the subject mark by the applicant on the goods applied for would be likely to lead to deception or confusion amongst a reasonable number of people who were in the market to buy either the opponent’s or applicant’s goods.  Therefore, I find that the opponent is successful on the s.28(a) leg.

As Mr Hall said at the hearing, following the High Court decision in the Moo/Moove case, supra, the Registrar now follows the practice as laid out in the decision of Hearing Officer Homann in Titan Manufacturing Co v John Terrence Coyne 22 IPR 613. That is, that all paras of s.28 should be read together. Mr Hall expressed his disagreement with that practice. However, in Canon Kabushiki Kaisha v Robert James Brook and Rachel Brook trading as The Cannon Watch Company 36 IPR 88, Tamberlin J, after considering the judgments in the Moo/Moove case, concluded that, in his view, the reasons for judgment delivered by members of the High Court left the matter open as to whether there was a need to find blameworthy conduct in opposition proceedings based on s.28(a) as opposed to expungement proceedings.  He went on to find that:

Notwithstanding the diverse opinions expressed by members of the High Court in New South Wales Dairy Corporation case, I consider that I should follow the views expressed by the Full Federal Court in that case, with the result that in the case presently before me the opponent to the application for registration is required to demonstrate "blameworthy conduct".

This means that, for the opposition to be wholly successful on the s.28 ground then, in addition to my finding that its use would be likely to lead to deception and confusion, it will also be necessary for me to find that the trade mark would not be entitled to protection in a court of law.  However, there is nothing before me to show that there has been any blameworthy conduct on the part of the applicant, nor any other circumstance, which would disentitle the mark to protection in a court of justice.  There is simply no evidence to support Mr Hall’s claim that the applicant chose the mark with any ulterior motive.  I do not believe that the trade mark’s selection can be interpreted as an attempt to benefit from the opponent’s reputation and advertising.  Mr Cook sells skates and other sporting articles.  He may not have even considered that anyone would confuse a mark for skates with one for dolls and therefore did not carry out a search in that respect.  Indeed, if he does not have a small daughter or niece, it is quite conceivable that he had never heard of SINDY dolls when he chose the mark.  I am satisfied with the explanation given as to how he chose his trade mark.  His wife’s given name is Sindy and it would seem an innocent thing to do to name something after her.  I therefore cannot agree that he has committed any blameworthy act by selecting this particular trade mark, or in failing to search for the mark for dolls when he was producing skates.

I find, therefore, that the requirements of paragraph 28(d) have not been made out.  The opponent's case in terms of s.28 must therefore fail.

Lack of intention to use the trade mark on all of the goods
Mr Hall said, in his submissions, that the evidence put forward by the applicant established that Mr Cook did not use, or intend to use, the mark on all of the goods applied for, and that his statements in his declaration and submissions only referred to use on “in-line skates” and “blade(s)”.  I agree with Mr Hall’s line of reasoning here.  In his application to register his trade mark, Mr Cook ticked the box which indicated that he then used, or intended to use, the mark on all of the goods listed.  The Registrar does not usually seek proof of the applicant's intention to use its mark, or that the mark is already being used.  It is considered that the making of an application itself is prima facie evidence of intention to use a mark - Aston v Harlee Manufacturing Co (1960) 103 CLR 391. However, the opponent has raised serious allegations as to the applicant’s intentions to use the mark on all of the goods. In relation to such matters, to qualify a mark for registration it must be the case that the applicant has a definite intention to use the mark in the immediate future in respect of all of the goods specified in the application - see the comments of Lord Hansworth M R in Ducker's Trade Mark (1928) 45 RPC 397 at 402. As Mr Hall has pointed out, all of the correspondence from Mr Cook indicates that the only items which he uses the mark on are in-line skates. Indeed, his reason given in his submissions for selecting a female name was because his (then) trade mark Tornado, used on his range of in-line skates, suggested power, which he did not think would appeal to women (skaters). His declaration, relied upon for evidence in answer to the opposition, only refers to use on in-line skates, “...to be used for sport and strenuous outdoor activities.” Additionally, he talks about his “product” in a singular sense. All of this suggests to me that the applicant, at the relevant date, only used, or intended to use, the SINDY mark, in a bona fide manner, on in-line skates. The application would therefore appear to be caught by the provisions of s.6(2) with respect to use of the mark in relation to other than those goods. I therefore find that the mark should not have been accepted for other than “in-line skates” and that all other goods should be removed from the specification before it qualifies for registration.

Conclusion

Given all of the foregoing, the opponent has failed on all but one of the grounds relied upon at the hearing.  It is reasonable, I think, to infer that the applicant did not use, or conclusively show that he had a serious intention to use, the mark on all of the goods claimed, as at the date of application.  In consequence, I allow the applicant 28 days from the date of this decision to request an amendment of the statement of goods to read, “in-line skates, and their parts and fittings in this class”.  Mr Cook did state in his written submissions that he was prepared to amend his application, if required, to eliminate the opponent’s concerns.  Therefore, he seemed to contemplate such a restriction.

If the applicant complies with this condition, I find, subject to any appeal from this decision, that the application should proceed to registration for the amended statement of goods.  In the event that he does not agree to restrict the goods before the expiration of that time, I will issue a final decision refusing the application entirely.

Costs

It was only with the advent of the hearing that the applicant, in his written submissions, canvassed the possibility of an amendment to his application.  However, this was after the opponent had gone to the time and expense of gathering its evidence in support.  Notwithstanding this, in respect of costs, I find the following.  Should the applicant send a letter to the Registrar formally agreeing to restrict his goods as above, I think it is true to say that both sides have been partially successful.  In those circumstances, it would appear to be proper for each party to bear their own costs and this I so order.  However, if the applicant decides not to amend his statement of goods and I then issue my decision refusing the application, the opponent will have been successful in its opposition.  Given that scenario, I would then order that the applicant would be responsible for the opponent’s costs.

Ian Forno
Hearing Officer

3 February 1998