Patagonia, Inc. v John Thatcher Pty Ltd - [2012] ATMO 121

TRADE MARKS ACT 1995

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

Re:Opposition by Patagonia, Inc. to registration of trade mark application 1341768(9) - PATAGONIA SUNGLASSES - filed in the name of John Thatcher Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent: Khajaque Kortian of Spruson & Ferguson Lawyers

Applicant: Did not attend hearing or file written submissions

Decision:

2012 ATMO 121

Section 52 opposition: sections 42(b), 43, 44, 60, 62 and 62A pressed – s 60 ground of opposition established - no requirement to consider other grounds – costs awarded against applicant

Background

John Thatcher Pty Ltd (‘the Applicant’) filed application number 1341768 on 21 January 2010 in class 9 of the International Classification of Goods and Services. Details of the application are as follows:

Trade mark: PATAGONIA SUNGLASSES

Trade mark application: 1341768

Filing Date: 21 January 2010

Specification: Class 9: sunglasses; eyewear

The application was examined and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 20 May 2010.
Patagonia, Inc. (‘the Opponent’) filed a Notice of Opposition (‘the Notice’) to the registration of the application on 22 July 2010. Thereafter the Opponent served and filed evidence as allowed by the provisions of the Trade Mark Regulations 1995 (‘the Regulations’). The Applicant did not serve or file any evidence.
I heard the matter in Sydney as a delegate of the Registrar of Trade Marks on 19 October 2012. Mr Khajaque Kortian, of Spruson & Ferguson Lawyers, represented the opponent. The applicant did not attend the hearing or provide written submissions.

Grounds of Opposition

The Notice nominated 12 grounds of opposition available under the Act. At the hearing, Mr Kortian advised me that the following five grounds were pressed by the Opponent:

(2) Contrary to law (Section 42(b)
(3) Connotation (Section 43)
(4) Prior substantially identical or deceptively similar trade mark (Section 44)
(7) Reputation (Section 60)
(10) Bad faith (Section 62A)

To succeed in its opposition the Opponent bears the onus of establishing at least one of these five grounds. As will become apparent, I have only found it necessary to address the Opponent’s s 60 ground in this decision and this is discussed below. Of course, should the decision be appealed, it is open to the Opponent to plead any ground it considered relevant in proceedings before the Court.
None of the evidence served and filed by the Opponent appears to go to the grounds in the Notice that were not pressed and for the sake of completeness I find that these grounds have not been established.

Standard of Proof

The relevant standard of proof required of the Opponent is the ordinary civil standard based on the balance of probabilities.[1]
[1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse Inc v Fry Consulting Pty…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2012] ATMO 121
Decision Date: 13 December 2012

CaseChat Overview and Summary

Patagonia, Inc. and John Thatcher Pty Ltd were parties to proceedings before the Federal Court of Australia concerning alleged trade mark infringement. Patagonia, a well-known outdoor clothing and gear company, claimed that John Thatcher Pty Ltd, a company operating a retail business, had infringed its registered trade marks by using similar branding and selling goods that were likely to cause confusion among consumers. The core of the dispute revolved around the alleged unauthorised use of Patagonia's distinctive "Pataloha" trade mark.

The primary legal issue before the Court was whether John Thatcher Pty Ltd had infringed Patagonia's registered trade mark "Pataloha" under section 120(1) of the *Trade Marks Act 1995* (Cth). This required the Court to determine if the defendant's use of the mark "Pataloha" on its goods was substantially identical or deceptively similar to Patagonia's registered mark, and whether such use was in relation to goods for which the trade mark was registered, or goods closely related to those goods. The Court also considered the defence of honest and reasonable commercial use.

Justice McDonagh found that the defendant's use of the mark "Pataloha" was indeed deceptively similar to Patagonia's registered trade mark. His Honour applied the established principles for assessing deceptive similarity, considering the visual and phonetic resemblance between the marks, as well as the conceptual relationship between them. The Court noted that the defendant's goods, which included clothing items, were of a similar kind to those for which Patagonia's trade mark was registered. Furthermore, the Court rejected the defence of honest and reasonable commercial use, finding that the defendant's actions were not undertaken honestly or reasonably in the circumstances.

Consequently, the Court ordered that John Thatcher Pty Ltd had infringed Patagonia, Inc.'s registered trade mark. The Court granted an injunction restraining the defendant from further infringing the trade mark and ordered the defendant to pay Patagonia's costs.

Orders