Paige, LLC v Sage and Paige Collective Pty Ltd

[2023] ATMO 57

TRADE MARKS ACT 1995

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

ReOppositions by Paige, LLC to trade mark applications 2094275 – Sage + Paige figurative – and 2094276 – Sage + Paige fancy mark – both in classes 14,18,25 & 35 and in the name of Sage and Paige Collective Pty Ltd.

Delegate:                 Debrett Lyons

Representation:       Opponent: Malcolm Bell, of Phillips Ormonde Fitzpatrick

Applicant: Max Steinhausen, of IP Service International Pty Ltd

Decision:                   2023 ATMO 57

Trade Marks Act 1995 (Cth) - Section 52 oppositions: ss 42(b), 44 and 60 considered – oppositions unsuccessful – trade marks to proceed to registration

Background

1. This decision concerns oppositions brought by Paige, LLC (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade marks the subject of the applications detailed below. The applications are in the name of Sage and Paige Collective Pty Ltd (‘the Applicant’):

Application Number:

2094275

Filing Date:

17 June 2020

Specification:

Class 14:         Amulets (jewelry); Bracelets (jewelry); Bracelets made of embroidered textile (jewelry); Brooches (jewelry); Chains (jewelry); Charms for jewelry; Clasps for jewelry; Cloisonne jewelry; Crucifixes as jewelry; Crucifixes of precious metal, other than jewelry; Gold thread (jewelry); Hat jewelry; Ivory jewelry; Jewelry; Jewelry cases (caskets or boxes); Jewelry charms; Jewelry findings; Jewelry hat pins; Jewelry hatpins; Jewelry of yellow amber; Jewelry rolls; Lockets (jewelry); Necklaces (jewelry); Pearls (jewelry); Pins (jewelry); Rings (jewelry); Shoe jewelry; Silver thread (jewelry); Threads of precious metal (jewelry); Wire of precious metal (jewelry)

Class 18:         Handbags; Handbags made of imitation leather; Handbags made of leather; Ladies handbags; Travelling handbags; Beauty cases (not fitted); Card cases (notecases); Cases, of leather or leatherboard; Cosmetic cases (not fitted); Credit card cases; Key cases; Leather cases; Make-up cases; Bags for sports; Bags made of imitation leather; Bags made of leather; Casual bags; Clutch bags; Cosmetic bags (not fitted); Evening bags; Gym bags; Jewellery bags (empty); Knitting bags; Leather bags; Luggage bags; Make-up bags; Messenger bags; Pouches (bags); Shopping bags; Shoulder bags; Shoulder bags for use by children; Sling bags; Tote bags; Travel bags; Waist bags; Weekend bags; Wristlets (bags); Clutch purses; Evening purses; Leather purses; Purses; Satchels

Class 25:         Apparel (clothing, footwear, headgear); Athletic clothing; Beach clothing; Belts (clothing); Cashmere clothing; Casual clothing; Clothes; Clothing; Clothing containing slimming substances; Clothing for sports; Clothing for surfing; Clothing for swimming; Clothing of fur; Clothing of imitations of leather; Clothing of leather; Combinations (clothing); Cowls (clothing); Dance clothing; Denims (clothing); Ear muffs (clothing); Embroidered clothing; Gabardines (clothing); Girl's clothing; Gloves (clothing); Headbands (clothing); Hoods (clothing); Interlinings for clothing; Jackets (clothing); Jump suits (clothing); Knitted clothing; Knitwear (clothing); Ladies clothing; Leather belts (clothing); Linen articles of clothing; Mantles (clothing); Maternity clothing; Men's clothing; Mitts (clothing); Muffs (clothing); Pants (clothing); Playsuits (clothing); Plush clothing; Silk clothing; Stuff jackets (clothing); Thongs (clothing); Three piece suits (clothing); Veils (clothing); Women's clothing; Woollen clothing; Woven articles of clothing; Wraps (clothing); Wristbands (clothing); Wristlets (clothing); Boys' clothing; Children's clothing; Clothing for babies

Class 35:         Online retail services; Retail clothing shop services; Retail services; Retailing of goods (by any means); Department store retailing; Discount services (retail, wholesale, or sales promotion services); Management of a retail enterprise for others; Advertising; Marketing; Business administration

Trade Mark:

Application Number:

2094276

Filing Date:

17 June 2020

Specification:

Class 14:         (the same as #2094275)

Class 18:         Beauty cases (not fitted); Card cases (notecases); Cases, of leather or leatherboard; Cosmetic cases (not fitted); Credit card cases; Key cases; Leather cases; Make-up cases; Bags for sports; Bags made of leather; Casual bags; Clutch bags; Cosmetic bags (not fitted); Evening bags; Gym bags; Jewellery bags (empty); Knitting bags; Leather bags; Luggage bags; Make-up bags; Messenger bags; Money bags; Pouches (bags); Shopping bags; Shoulder bags; Shoulder bags for use by children; Sling bags; Waist bags; Weekend bags; Clutch purses; Handbags; Handbags made of imitation leather; Handbags made of leather; Ladies handbags; Satchels; Bags made of imitation leather; Beach bags; Travel bags; Wristlets (bags); Cosmetic purses (not fitted); Evening purses; Leather purses; Purses

Class 25:         Apparel (clothing, footwear, headgear); Athletic clothing; Beach clothing; Belts (clothing); Cashmere clothing; Casual clothing; Clothing; Clothing containing slimming substances; Clothing for gymnastics; Clothing for sports; Clothing for surfing; Clothing for swimming; Clothing of fur; Clothing of imitations of leather; Clothing of leather; Combinations (clothing); Cowls (clothing); Dance clothing; Denims (clothing); Ear muffs (clothing); Embroidered clothing; Gabardines (clothing); Girl's clothing; Gloves (clothing); Halters (clothing); Headbands (clothing); Hoods (clothing); Interlinings for clothing; Jackets (clothing); Jerseys (clothing); Jump suits (clothing); Kerchiefs (clothing); Knitted clothing; Knitwear (clothing); Ladies clothing; Leather belts (clothing); Linen articles of clothing; Mantles (clothing); Maternity clothing; Men's clothing; Mitts (clothing); Money belts (clothing); Muffs (clothing); Pants (clothing); Playsuits (clothing); Plush clothing; Silk clothing; Sports clothing (other than golf gloves); Stuff jackets (clothing); Thongs (clothing); Three piece suits (clothing); Veils (clothing); Women's clothing; Woollen clothing; Woven articles of clothing; Wraps (clothing); Wristbands (clothing); Wristlets (clothing)

Class 35:         Department store retailing; Discount services (retail, wholesale, or sales promotion services); Management of a retail enterprise for others; Online retail services; Retail clothing shop services; Retail services; Retailing of goods (by any means); Advertising; Marketing; Business administration

Trade Mark:

1. Following advertisement of acceptance of the applications for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed Notices of Intention to Oppose the applications, supported later by Statements of Grounds and Particulars which in both cases nominated grounds of opposition under ss 42(b), 44 and 60 of the Act.

2. The Applicant subsequently filed Notices of Intention to Defend and the matters proceeded to evidentiary stages which then ran in parallel with evidence that pertained commonly to both oppositions, being the Opponent’s Evidence in Support comprising the declaration of Walter Lacher, Chief Financial Officer of the Opponent, with Exhibits WL-1 to WL-47 made 28 July 2021.  The Applicant filed Evidence in Answer comprising the declaration of Hing Fu Chau, Co-founder and Managing Director of the Applicant, made 1 November 2021 with Annexures A-R.  The Opponent did not file any Evidence in Reply.

3. The parties requested to be heard.  As a delegate of the Registrar of Trade Marks, I heard the matter on 2 March 2023, at which time Malcolm Bell, a principal at Phillips Ormonde Fitzpatrick, appeared for the Opponent, and Max Steinhausen, of IP Service International Pty Ltd, appeared for the Applicant.  Oral submissions were supplemented by the parties’ written submissions filed in a timely manner prior to the hearing.

   Discussion

4. The Opponent bears the onus of proof[1] to establish one of the grounds of opposition on the balance of probabilities[2].   The rights of the parties are to be determined at the filing date of the trade mark applications, 17 June 2020[3]. In this case the filing date is also the ‘priority date’ for the purposes of ss 44 and 60 (‘the Relevant Date’).

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

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

5. The evidence shows that the Applicant is an Australian company with an online women's fashion business selling directly to customers in Australia, New Zealand and the United States since February 2020.

6. The Opponent is a US company named after its co-founder, Paige Adams-Geller, selling casual clothing and accessories.  The Opponent is the owner of the Australian trade mark registrations detailed below (‘the Registrations’):

Reg.No.	Trade Mark	Priority Date	Goods
1018471	PAIGE	8 July 2004	8.       Class 25: Clothing, footwear, headgear
1168574	PAIGE	28 March 2007	9.       Class 3: Cosmetics; body care products (non-medicated); beauty care products; hair care products; skin care products (cosmetic); antiperspirants for personal use; deodorants for personal use; preparations for personal hygiene (non-medicated); dental care preparations (non-medicated); non-medicated lip care preparations; non-medicated preparations for the care of babies; non-medicated preparations for the care of the body; non-medicated preparations for the care of the hair; non-medicated preparations for the care of the hands; non-medicated preparations for the care of the mouth; non-medicated preparations for the care of the nails; non-medicated preparations for the care of the scalp; non-medicated preparations for the care of the skin; non-medicated preparations for the care of the teeth; soaps; perfumes; bath essences, not medicated; essences for skin care; fragrances; essential oils 10.     Class 18: Airline travel bags; articles of luggage being bags; athletics bags; baggage; bags for shaving kits; carrying bags (other than disposable carrier bags); casual bags; clutch bags; duffel bags; evening bags; garment bags; leather bags; make-up bags; portable bags (luggage); shoulder bags; sling bags; toiletry bags; tote bags; travel bags; work bags; purses; umbrella bags; umbrellas; parasols; walking sticks; satchels; leather wallets; packsacks; leather leashes; billfolds; collars for animals; imitation leather; leather; leashes (leads) for animals 11.
1495028	17 August 2011	12.     Class 25: Clothing and apparel, namely, jeans, pants, bottoms, shorts, skirts, tops, jackets

Section 44

1. Section 44 relevantly provides:

   (1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a)the applicant's trade mark is substantially identical with, or deceptively similar to:

   (i)a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   (2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a)  it is substantially identical with, or deceptively similar to:

   (i)  a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)  a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

2. The Registrations carry priority dates earlier than the Relevant Date and so the Opponent must establish that the Applicant has applied for goods that are similar to the goods of the Registrations, or for services that are closely related to those goods. Further, that the applied-for trade marks are substantially identical with, or deceptively similar to, a one or other of the trade marks of the Registrations.

3. The parties seemed to accept that the goods are similar and the services closely related. There was no debate on the point and I am also satisfied that s 44 is satisfied in this respect.

4. The Opponent’s submission is that the compared marks are both substantially identical and deceptively similar.  I cannot think of a scenario where two marks might be substantially identical but not deceptively similar and so I start by looking at deceptive similarity. 

5. Section 10 of the Act defines “deceptively similar” as follows:

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

6. The assessment of deceptively similarity was explained by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd  as follows:

   The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[4]

   [4] [1963] HCA 66, [13].

7. In its written submissions, the Opponent states that

   [i]t is clear from the … authorities that, where a mark takes an essential feature of an earlier mark, it will be at least deceptively similar, if not substantially identical.   

   …

   the Opposed Marks are … deceptively similar to the Opponent’s Prior Marks … because the Opposed Marks take the Opponent’s mark PAIGE in its entirety and adds other matter in the form of another name separated by the conjunction “+”.

8. Later, it reasons that:

   “the form of the Opposed Marks indicates a collaboration or partnership between the two names SAGE on the one hand and PAIGE on the other. Any mark which consists of two non-descriptive words joined by “and” or the equivalent, such as a “+” sign, indicates a combination of two entities. In this case, SAGE + PAIGE indicates an association between a person or other entity or brand SAGE and the brand PAIGE. Given the fact that the only relevant PAIGE is the Opponent, the mark SAGE + PAIGE is highly likely to, if not inevitably, indicate to consumers an association between the Opponent and SAGE.

9. The authorities referred to by the Opponent in support of these arguments are not, to my mind, instructive.  The UK cases of Baume & Co Ltd v AH Moore Ltd [5] and George Ballantine & Son Ltd v Ballantyne Stewart & Co Ltd[6], are described by the Opponent “as particularly apposite”, but I do not find that to be so since there are clear points of differentiation which I do not need to expand upon here.  Likewise, I do not find helpful the decisions of this Office, cited by the Opponent; Sushi Train (Australia) Pty Ltd v RGR Norman Pty Ltd as trustee for the Norman Family Trust [7] is not on all fours.  The other case of Woods v Viktoria Teed[8] held that the applied-for mark,

   was deceptively similar to the registered mark,

   but it is questionable whether the Delegate would have come to the same conclusion if “Viktoria” was spelt “Victoria”, and if the registered mark was “Woods +Victoria”.  The case does not assist me. 

   [5] [1958] RPC 226.

   [6] [1959] RPC 273.

   [7] [2016] ATMO 76.

   [8] [2018] ATMO 121.

10. Taking guidance from elsewhere, I am not persuaded to think that PAIGE is the essential feature of the compared marks.  The given name, PAIGE, is not the first word of the applied-for marks[9], it is not an uncommon name, it is not misspelt, and I cannot find a prima facie reason to otherwise treat it as the dominant or distinctive part of the whole.  The Applicant’s submission is that:

    SAGE is the name of a culinary herb, describes a person as mature or a venerable person of sound judgment, and is a popular English unisex name.

    PAIGE is an equally popular English unisex name[10]  and a common brand name in the fashion industry[11].

    Hence, the two elements SAGE and PAIGE in the Applicant’s marks should be given equal weight.

    [9] See, for example, London Lubricants (1920) Ltd's Appn, (1925) 42 RPC 264, holding that the first syllable should generally be given the most weight when comparing marks.

    [10] Hing Fu Chau declaration at [30].

    [11] Hing Fu Chau declaration at [35] and Annexure K.

11. The Opponent’s submission that, on seeing the applied-for trade marks, consumers are likely to understand some economic or organizational link to the Opponent would, in my assessment, only be likely if those consumers knew of the Opponent’s mark and it has recently been affirmed by the High Court that the influence of reputation is outside the perimeter of the s 44 analysis[12].

    [12] Self Care IP Holdings Pty Ltd & Anor v Allergan Australia Pty Ltd & Anor [2023] HCA 8.

12. None of the authorities cited by either side is closer to the present case than the decision in Bianca-Moden GmbH & Co. KG v Bianca and Bridgett Pty Ltd[13] where it was found that BIANCA AND BRIDGETT was not deceptively similar to the opponent’s registered mark, bianca.  In that case, the delegate referred to:

    [13] [2021] ATMO 30 (15 April 2021)

    … this Office’s Trade Marks Manual of Practice and Procedure (‘the Manual’), which in connection with s 44 deals with the very question before me and instructs that:

    When comparing a trade mark consisting of a given name and a trade mark that consists of two or more given names a real and tangible danger of confusion is less likely to occur between trade marks.

    In making this decision examiners should consider:

    ·The relative commonness of the given name;

    ·The goods and/or services the trade mark will be used on, and the marketplace in which the goods or services are traded

    ·Placement or representation of the name in the trade mark;

    ·Any other factors relevant to a decision of deceptive similarity.

    ·In limited circumstances confusion may be considered likely when the given name between the marks is extremely unusual, rare, or otherwise memorable, such as an invented given name.[14]

    That practice direction is exemplified in the Manual by the comparison marks below:

    [14] The IP Australia Trade Marks Manual of Practice and Procedure Part 26 Annex A1.

Trade Mark 1	Trade Mark 2	Goods/services claim	Action and Reasons
MARK	LUCA AND MARK	Commonplace goods/services	No Section 44 MARK is a very common given name. The additional name, LUCA, is the first word and more distinct element in the second trade mark. When used in relation to commonplace goods and/or services there is relatively little danger of confusion between the two trade marks.
CAMILLA	CAMILLA AND MARK	Commonplace goods/services	No Section 44 Although less common than MARK, CAMILLA is still a relatively common given name. The inclusion of the additional name MARK and use of the trade marks in relation to commonplace goods and services is sufficient to mitigate the danger of confusion between the two trade marks.

In keeping with that direction, the Applicant submits that ‘Bianca’ is a common name and is commonly used in trade marks in the fashion industry.  I am prepared to accept from my own knowledge that the name ‘Bianca’ is not uncommon and I also accept that it is frequently used in the fashion industry since the Roccisano declaration exhibits a list of fashion labels and a list of Australian trade mark registrations in class 25 which both include the name BIANCA.  Furthermore, the Roccisano declaration satisfies me that one of the fashion industry naming conventions referred to by the Applicant is that of coupling given names.

1. For trade marks to be considered deceptively similar there must be a real and tangible danger of deception or confusion occurring; a mere possibility is not sufficient.  There must be a real likelihood that an ordinary person would be caused to wonder whether the goods come from the same trade source.[15]  The simplest comparison is between the Opponent’s word mark, PAIGE, and the Applicant’s marks; whatever I find in that respect applies, a fortiori, to other comparisons. 

   [15] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).

2. The marks are not deceptively similar merely because the Opponent’s word mark is contained in the applied-for trade marks.   Nor do I find PAIGE to be the essential feature of either of the trade marks.  Further, the coupling of given names is shown by the case law to be a trend in the fashion industry, no more likely than not to signal a merger or collaboration of brands.

3. I find that the marks are not likely to confuse and are thus not deceptively similar. It follows that s 44 has not been established.

   Section 60

4. Section 60 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.

5. To succeed in this ground of opposition, the Opponent must establish a reputation existing in another trade mark in Australia before the Relevant Date; and because of the reputation of that other trade mark, use of either of the opposed trade marks would be likely to deceive or cause confusion.

6. Reputation refers to the “recognition of [the mark] by the public generally”[16].  It must be established by the Opponent as a matter of fact[17] by demonstrating that a significant number of people have been exposed to the trade mark[18], or by providing evidence of high volume sales[19], and/or extensive advertising other promotion of goods or services to which the trade mark applies[20].

   [16] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).

   [17] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

   [18] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ).

   [19] McCormick (n 16) [86].

   [20] Ibid.

7. The Opponent claims use of the Opponent’s marks in Australia since 2006, albeit that sales and advertising expenditure are only given since 2014. I note that by the Relevant Date, sales were half what they were in 2014. Advertising expenditure is not specific to the Australian market and is a single-digit percentage of total annual spend. The Opponent’s submission is that notwithstanding the diminishing sales, the brand awareness would remain. The Applicant submits that reputation in the fashion sector is dynamic and potentially short-lived.

8. My assessment is that the truth lies most likely somewhere in between. The evidence indicates that the Opponent’s trade marks have been used principally in respect of denim goods, mainly, jeans for women. The jeans are highly priced and have been bought and worn by various celebrities (again, mainly women) but the confidential sales figures in the period leading up to the Relevant Date are not at all very substantial for the fashion clothing sector. On balance, I find that, on the Relevant Date, the Opponent had a modest reputation in Australia in respect of jeans for women. I find, further, that any possible confusion would be limited to those particular goods, and I find that risk is defrayed by the differences in the trade marks, their lack of deceptive similarity, and (relevantly to s 60) the boutique status of the Opponent’s goods, something bound to stimulate the critical faculties of likely buyers.

9. On the evidence I do not find that s 60(b) is satisfied and so I find that the ground of opposition under s 60 is not established.

   Section 42(b)

10. Section 42(b) provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law.

11. As the basis for the ground of opposition under section 42(b) of the Act, the Opponent relies on ss 18 and 29 of the Australian Consumer Law (‘ACL’) of Schedule 2 of the Competition and Consumer Act 2010 (Cth) and the tort of passing off.

12. In order to succeed in an opposition under section 42(b) of the Act, the Opponent must demonstrate on the balance of probabilities that use of the trade marks would contravene ss 18 or 29 of the ACL or constitute passing off [21]. In this regard, the Opponent states that it relies for these claims on the same arguments it presented in respect of s 60.

    [21] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

    Australian Consumer Law

    37. Section 18 of the ACL requires there to be a likelihood that the relevant consumer would be misled or deceived as to the origin of the Applicant’s goods or services due to the conduct of the Applicant. Section 29 of the ACL concerns representations that are false or misleading. There is no material difference between the expression ‘mislead or deceive’ in s 18 of the ACL and ‘false or misleading’ in s 29 of the ACL.[22] The requirement to mislead or deceive the relevant consumer imports a stricter requirement than s 60 of the Act.[23]

    [22] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).

    [23] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44, [8] (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [32]-[33] (Stewart J).

13. For the reasons already given in relation to both s 44 and s 60, I find that it is not likely that use of the trade marks would be likely to mislead or deceive an ordinary or reasonable consumer of the relevant goods into believing that the trade marks and the Opponent’s marks are related.

    Passing Off

    39. Where use of a trade mark does not contravene the ACL, it is unlikely to amount to passing off.[24]  Justice Hill noted in Re Equity Access Pty Ltd v WestpacBanking Corporation [1989] FCA 771 that:

    [24] Monster Energy v USA Nutraceuticals Inc [2017] ATMO 22, [58] (Hearing Officer Robert Wilson).

    The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail: Taco Company of Australia Inc v. Taco Bell Pty Ltd (1982) 42 ALR 177, 206; Telmak Teleproducts (Aust) Pty Ltd v. Coles Myer Ltd (unreported) 21 July 1989 Full Federal Court at p 18.[25]

    [25] Re Equity Access Pty Ltd v WestpacBanking Corporation [1989] FCA 771, [40] (French J).

14. Sections 52 and 53 of the Trade Practice Act 1974 (Cth) were the antecedents of ss 18 and 29 of the ACL. Given my findings in relation to the ACL, I find that use of the trade marks would not constitute passing off.

15. Accordingly, the ground of opposition under s 42(b) has not been established.

    Decision

16. Section 55(1) relevantly provides:

    Unless subsection (3) applies to the proceedings, 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.

17. The Opponent has not established any of the nominated grounds of opposition. Accordingly, trade mark applications 2094275 and 2094276 may proceed to registration one month from the date of this decision.  Should the Registrar be served with a notice of appeal before registration, registration should not occur until the appeal has been decided or discontinued.

    Costs

    44. The Applicant sought an award of costs in its favour. I award costs against the Opponent under s 221 of the Act in line with Schedule 8 of the Trade Mark Regulations 1995.  The oppositions proceeded on the same evidence and so I award costs for the second of the two oppositions to be assessed in keeping with the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad (2001) 53 IPR 591.

    Debrett Lyons
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    10 May 2023