Pacific Brands Workwear Group Pty Ltd v J.T.C Import/Export Pty Ltd

[2014] ATMO 43

TRADE MARKS ACT 1995

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

Re:Opposition by Pacific Brands Workwear Group Pty Ltd to registration of trade mark application 1442906 (8) – YAKKA TOOLS - filed in the name of J.T.C. Import/Export Pty Ltd.

Delegate:	Bianca Irgang
Representation:	Opponent: Celia Davies of Herbert Smith Freehills Applicant: Stephen Rebikoff of counsel instructed by of Davies Collison Cave
Decision:	2014 ATMO 43 s.52 opposition – s 60 ground of opposition established for all goods - trade mark use likely to deceive or cause confusion – registration refused.

Background

1. J.T.C Import/Export Pty Ltd (‘the applicant’) filed a trade mark application on 16 August 2011 in class 8 of the International Classification of Goods and Services. Relevant details of the application are set out below.

Trade mark:  YAKKA TOOLS

Trade mark application:        1442906

Filing Date:  16 August 2011

Specification:  Class 8: Hand tools and implements (hand-operated); chisels, hammers, saws, screw drivers, planes, pliers, cable and wire cutters, crimping tools, files, floor scrappers, hex-keys; socket sets, sockets, knives, nips, pop rivets guns, snips, squares, spanners and wrenches, tube cutters, callipers, pipe benders; garden tools and implements; spades, rakes, shovels, hoes; parts and accessories for all of the aforementioned

1. The application was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 8 December 2011. Pacific Brands Workwear Group Pty Ltd (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to the registration of the trade mark on 8 March 2012. Thereafter the opponent and applicant served and filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

2. I heard the matter in Melbourne on 19 March 2014 as a delegate of the Registrar of Trade Marks. Celia Davies of Herbert Smith Freehills represented the opponent. The applicant was represented by Stephen Rebikoff of counsel instructed by of Davies Collison Cave.

Grounds of Opposition

1. The Notice nominated most of the grounds of opposition available under the Trade Marks Act 1995 (‘the Act’). The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

   [2] [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

2. At the hearing the opponent advised that it would press and provide submissions only on the grounds under sections 42(b), 44 and 60 of the Act. None of the evidence served and filed by the opponent appears to go to the other grounds in the Notice and for the sake of completeness I find that those grounds have not been established.

3. Therefore, the grounds remaining for my consideration are those under sections 42(b), 44 and 60 of the Act. Should the opponent establish one ground of opposition in relation to all of the applicant’s specification of goods and services, there is no requirement for the other grounds of opposition to be considered.

Evidence

1. The evidence consists of the following statutory declaration:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Laura Downey	Marketing Communications Manager with Pacific Brands Workwear Group Pty Ltd	27.07.12	LD-1 to LD-12
Evidence in Answer
Ian Drew	Senior Associate of Davies Collison Cave Patent and Trade Mark Attorneys	30.04.13	ID-1 to ID-11

Opponent’s Evidence

1. The statutory declaration of Laura Downey (‘the Downey declaration’) states that the opponent was established in the 1930s in Australia. Annexure B accompanying the Downey declaration comprises of a list of the opponent’s trade mark registrations in Australia and New Zealand. The earliest trade mark registration held in Australia is for the plain word trade mark no. 75173, YAKKA, in class 25. It was filed on 7 August 1939. The opponent also has the plain word trade mark registration no. 665983, HARD YAKKA, in class 25 which was filed on 7 July 1995.  

2. Ms Downey states that since its commencement in the 1930s the opponent has manufactured protective clothing, headgear and eyewear, workwear garments, shirts, vests, shorts, trousers, overalls, jackets, windcheaters, dustcoats, knitwear, belts, socks, gloves, footwear and boots under its YAKKA and HARD YAKKA trade marks. At the priority date of the opposed trade mark, the opponent’s YAKKA and HARD YAKKA branded products included protective clothing, gloves, knee pads and protective glasses (Exhibit LD-2). 

10.  Ms Downey states that by the priority date of the opposed trade mark, the opponent was the largest supplier of clothing and footwear for work in Australia and New Zealand. This statement is supported by the evidence in Annexure Confidential A which contains a market research report assessing the performance of the opponent’s HARD YAKKA and KING GEE brands. The opponent also has over 800 stockists for its YAKKA and HARD YAKKA branded goods within Australia (exhibit LD-4). These stockists include Mitre 10, Rays’s Outdoors, Protector Alsafe, RSEA, Aussie Disposal, BOC, Workclobber, Hard Yakka Trade Centres, Hip Pocket Workwear and Safety, Totally Workwear and Home Hardware. Since 2012 the opponent has also been selling its YAKKA and HARD YAKKA goods through Bunnings stores and is now the preferred workwear supplier to Bunnings Warehouse and has its YAKKA and HARD YAKKA products in up to 20 stores.

11.  The advertising expenditure and sales figures provided in the evidence for the opponent’s YAKKA and HARD YAKKA branded goods is significant (Annexure Confidential C and D). These figures are supported by the volume of advertising materials provided in exhibits LD-9 to LD-12.

Applicant’s Evidence

12.  The statutory declaration of Ian Drew (‘the Drew declaration’) contains a listing of the exhibits accompanying the declaration which are all geared towards demonstrating the other traders use the words YAKA or YAKKA within the Australian marketplace (exhibits ID-3 to ID-6). Most notably, exhibit ID-1 is a print out from Oxford Reference Online; Oxford Dictionary of Modern Slang. This exhibit demonstrated that the word YAKKA is defined as:

Yakka noun Also yacca, yacka, yacker, yakker. Austral (Strenuous) work; esp. in phr. hard yakka.

National Times (Sydney): Child care remains women’s responsibility…There’s no evidence that men are taking part in the hard yakka (1986).

[From dated Austral yakker verb, to work, from Aboriginal (Jagara) yaga.]

13.  The applicant has also included a list of other trade mark registrations on the Register which incorporate the word YAKA or YAKKA and which are not owned by the opponent or an obviously related entity (exhibit ID-2). 

Discussion

Section 60 - Reputation in Australia

14. Section 60 of the Act 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.

Note: For priority date see section 12

15.  In McCormick & Co Inc v McCormick (‘McCormick’)[3] Kenny J discussed the meaning of “reputation” as:

[3] [2000] FCA 1335; (2000) 51 IPR 102, at [81] – [82].

What is intended by the word “reputation” in section 60? The word is defined in The Macquarie Dictionary as follows:

reputation…1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute…2. favourable repute; good name…3. A favourable and publicly recognised name or standing for merit, achievement, etc…4. The estimation or name of being, having done, etc, something specified.

Compare The Oxford English Dictionary. In s60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

and Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee[4] said that the reputation required to be demonstrated was:

one of which a significant number of persons were aware…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.

[4] [2000] FCA 1587; (2000) 50 IPR1.

16.  It is for me to determine therefore whether the opponent has established that before 16 August 2011 its trade mark(s) were recognized by the public generally, or at least by a significant number of persons in the workwear and protective clothing market, and whether because of that reputation the use by the applicant of its trade mark on the designated goods would be likely to deceive or cause the public confusion.

17.  The Downey declaration gives considerable detail about the reputation claimed for the opponent’s YAKKA and HARD YAKKA trade marks in Australia. She submitted that it has used the YAKKA and HARD YAKKA trade marks continuously on its goods in Australia since the 1930s. It is clear from the consistently high sales figures from 2008 and from the list of stockists that the opponent has been trading in its goods for a very considerable time in Australia and that it enjoys a strong reputation in the marketplace (Annexure Confidential A, C and D). At the same time I do note that the evidence seems to favour the HARD YAKKA trade mark and does not provide break downs of how much revenue has been generated by the YAKKA trade mark solus.

18.  It is also clear, on the balance of probabilities, that the opponent’s considerable promotional activities are the product of a considerable advertising budget (Annexure Confidential D) which would appropriately be a reflection of the opponent’s demonstrably impressive sales figures of its YAKKA and HARD YAKKA branded goods. I am satisfied that the opponent’s YAKKA and HARD YAKKA trade marks have a reputation for its goods. The remaining question is whether the applicant’s use of its YAKKA TOOLS trade mark in respect of the range of work tools in class 8 is likely to cause deception or confusion in light of the opponent’s abovementioned reputation.

19.  In respect of the possibility of confusion, Ms Davies, counsel for the opponent submitted that:

·    YAKKA TOOLS is very similar to the YAKKA family of trade marks (including YAKKA and HARD YAKKA);

·    The opponent’s goods and the applicant’s goods are similar, sold in the same stores and purchased by the same consumer; and

·    The opponent’s goods are used with tools and the opponent advertises its goods alongside tools.

20.  While there is no longer a requirement that the application be at least deceptively similar to the trade mark identified by the opponent, I consider that aspects of similarity between the trade marks feed into the likelihood of deception or confusion occurring.  In this case the two trade marks to be considered are as follows:

Opponent’s trade mark	Applicant’s trade mark
HARD YAKKA	YAKKA TOOLS

21.  In considering the respective trade marks it becomes apparent that they share the same word YAKKA. The most striking element of the trade marks is the word YAKKA which is both visually and aurally unusual particularly when coupled with common and descriptive words such as HARD and TOOLS. The additional words HARD and TOOLS do not detract from the strong distinctive nature of the word YAKKA. I also note that the word TOOLS is directly descriptive of the applicant’s goods in class 8.

22.  The applicant has argued that there is no likelihood of deception or confusion between the trade marks because of the ordinary meaning which may be applied to the word YAKKA. The applicant suggested that the Australian public uses the word YAKKA as a colloquial reference to ‘work’. The applicant then goes on to draw inferences from the opponent’s evidence that this is how the word YAKKA is used with the opponent’s HARD YAKKA trade mark and its expressions such as “NOTHING’S TOUGHER THAN HARD YAKKA” and “IT TAKES HARD YAKKA TO DESIGN AND MANUFACTURE A GARMENT THIS STRONG”. However, I am not persuaded by this line of reasoning.

23.  While the word YAKKA does mean “work”, I do not believe, and nor does the applicant’s evidence demonstrate that it is commonly used interchangeably with the word ‘work’ by the general Australian public. The vast majority of the applicant’s evidence demonstrates some other traders also using the word YAKKA or YAKA as part of a trade mark on their unrelated goods and services (ID-2, ID-3, ID-5, ID-8).

24.  There is little doubt from the evidence before me that over the course of 80 years the opponent has spent a considerable amount of time and money into building up a strong reputation in its HARD YAKKA trade mark. I consider that given the billions of dollars the opponent has made from sales of its HARD YAKKA products, and the very considerable amount it has spent on advertising over the years, many Australians are only aware of the expression HARD YAKKA because of the opponent’s efforts and its advertisements depicting strenuous labor (LD-1 and Annexure confidential A).

25. I consider that the common use of the striking word YAKKA in the trade marks creates a considerable degree of similarity between the trade marks. However, I am in agreement with the applicant that the trade marks do have differences and I am satisfied that those differences between the respective trade marks preclude them from being considered deceptively similar under a section 44 ground of opposition. However, section 60 of the Act does not require that the trade marks be deceptively similar. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi[5] the delegate observed that:

The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties.

[5] [2012] ATMO 124 at [40]

26.   Given the degree of similarity between the trade marks, the opponent’s reputation in its HARD YAKKA trade marks and that the goods of interest to the opponent are likely to be sold in close proximity to the applicant’s work tools, I consider that a significant number of Australian consumers would at the very least entertain a reasonable doubt[6] as to some sort of connection between that well-known trade mark and the applicant’s YAKKA TOOLS trade mark. Particularly since the trade marks are similar, the degree of speculation would, in my assessment, rise to, at the very least, the reasonable doubt required to trigger section 60.

[6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

27. Therefore, the opponent has established a ground of opposition under the provisions of section 60. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds set out in the notice although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

Decision

28. Section 55 of the Act provides:

Decision

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.

29. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 60 argued at the hearing. Accordingly, I refuse to register trade mark application 1442906.

Costs

30.  It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant in terms of Schedule 8 of the Regulations.

Bianca Irgang
Hearing Officer
Trade Marks Hearings
15 May 2014