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 Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40], NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32], Allergan, Inc v Di Giacomo (2011) 94 IPR 541 per Stone J at [11] to [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] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (2012) 94 IPR 551 per Dodds-Streeton J at [13].

Evidence

The evidence provided for this matter consists solely of the Statutory Declaration of Megan Marble, ‘Creative Services Studio Manager’ of the Opponent, made on 18 April 2011 (“Marble”). Marble included Exhibit RB-1 and Confidential Exhibit RB-2. An outline of the relevant evidence propounded is listed below, with identification of the paragraph in Marble shown in brackets.
The Opponent is a designer, manufacturer and retailer of outdoor clothing and equipment sold under the trade mark PATAGONIA. It was founded by Yvon Chouinard, a rock climber and surfer, in 1974. [para 6]
Yvon Chouinard first commenced use of the trade mark PATAGONIA during the 1970s in relation to clothing in the United States. A clothing range was introduced by him to support his small business which made tools and equipment for rock climbers. [para 7]
The range of clothing sold under the PATAGONIA trade mark initially included t-shirts, polyurethane rain cagoules and bivouac sacks, boiled-wool gloves and mittens and hand-knit reversible "schizo" hats. [para 8]
The Opponent selected the name “Patagonia” as a company name and trade mark (“the PATAGONIA brand”) as it represented a place far-off, interesting and not quite on a map. It was selected as it evoked images of glaciers tumbling into fjords, jagged windswept peaks, gauchos and condors. [para 9]
The Opponent has extended and continues to develop its range of clothing, as well as its outdoor equipment and travel gear, sold under the PATAGONIA trade mark, to include:

women’s, men’s and children’s clothing apparel including, but not limited to, t-shirts, jackets, thermal underwear, pants, skirts, shirts, wetsuits;
accessories such as headgear, footwear, belts, scarves, gloves; and
travel gear such as backpacks, totes, blankets, sleeping mats and bags, tents, books (together, the “PATAGONIA Goods”). [para 10]

The PATAGONIA Goods are suitable for alpine climbing, skiing, snowboarding, surfing, fly-fishing, hiking/trekking, rock climbing and trail running. [para 11]
In around 1970, Yvon Chouinard opened his first PATAGONIA retail store in California, United States. The PATAGONIA retail stores sell goods sold under the PATAGONIA trade mark (“PATAGONIA Services”), as well as goods sold under other trade marks such as SMITH, SALOMON and BLACK DIAMOND. [para 12]
The Opponent is the owner of the PATAGONIA trade mark, the subject of the following Australian trade mark registrations [para 13]:

395358 PATAGONIA in Class 25;
432400 in Class 25;
533480 PATAGONIA in Class 18;
533482 PATAGONIA in Class 28; and
1184824 PATAGONIA in Class 35.

The Opponent is also the owner of applications and registrations for the PATAGONIA trade mark, and other associated PATAGONIA trade marks used in relation to the PATAGONIA Goods and Services in more than 90 countries around the world, including Australia, Canada, China, the European Union, Hong Kong, Japan, Korea, New Zealand, the United Kingdom and the United States of America. At Tab 1 of Exhibit RB-1 is a schedule showing applications and registrations owned by the Opponent around the world for trade marks consisting of or including the word PATAGONIA. [para 14]
The PATAGONIA Goods are available in nearly every country around the world, including Australia. The PATAGONIA Goods are distributed through the Opponent network of 53 PATAGONIA retail stores and in over 1,500 independent retailers, such as camping stores and adventure travel stores. The goods can also be purchased from the Opponent’s online store at or one of the Opponent’s online partners. [para 15]
The PATAGONIA trade mark has been used in substantially the same form in connection with the PATAGONIA Goods and Services. At Tab 2 of Exhibit RB-1 are examples of product brochures, photographs and price lists showing how the PATAGONIA trade mark has been used in connection with the PATAGONIA Goods and Services. [para 16]
The Opponent has established a substantial reputation in the PATAGONIA trade mark and has achieved substantial sales for the PATAGONIA Goods overseas and in Australia. [para 17]
A number of the PATAGONIA Goods have received awards overseas in recognition of their design excellence, including [para 19] the:

the Fly Fusion “Editors Choice Award” for the Rio Gallegus Wader;
Outdoor Industry Award for the PATAGONIA Capilene® 2 T-Shirt in 2006;
the Volvo SportsDesign Award for the PATAGONIA Womens Down Sweater in 2006;
the Outdoor Industry Award for the PATAGONIA Stretch Ascent Jacket in 2008;
the EFFTEX Best New Clothing Award for the Rio Gallegus Wader in 2010; and
the Field & Stream Best of Best Award for the Rio Gallegus Wader in 2011.

The approximate worldwide value of goods provided under the PATAGONIA trade mark by the Opponent worldwide since 1974 is in excess of US$4.8 billion. [para 20]
The market for the PATAGONIA Goods and Services is, according to Ms Marble, referred to as the ‘Outdoor Apparel market’ [para 21]. This market would appear to cater to outdoor leisure activities.
The Opponent first distributed the PATAGONIA Goods in Australia in 1995. [para 23]
The PATAGONIA Goods were initially sold online or to wholesale customers and were available from independent retailers, such as, Paddy Pallin stores, Main Peak Adventure store, Heritage Surf and Bluewater Players, who sell a range of outdoor clothing and equipment under a range of brands. [At Tab 3 of Exhibit RB-1 are photographs of the shopfronts of Paddy Pallin stores in Brisbane, Hawthorn (Melbourne), Melbourne CBD, Ringwood and Sydney, Australia showing use of the PATAGONIA brand.] [para 24]
In March 2009, the Opponent opened a PATAGONIA retail store in Torquay, Victoria. At Tab 4 of Exhibit RB-1 are promotional materials from the launch of the PATAGONIA Torquay store in March 2009. [para 25]
The Torquay store retails PATAGONIA Goods, in addition to goods sold under brands such as REVO, KAENON and MAURICE COLE SURFBOARDS for clothing, accessories and travel gear [para 26]. The Torquay store also sells RAEN and KAENON branded sunglasses and accessories [para 39].
At Tab 5 of Exhibit RB-1 are photographs of the PATAGONIA Torquay store, showing examples of the PATAGONIA Goods and use of the PATAGONIA trade mark. [para 27]
Sales of the PATAGONIA Goods in Australia have been consistent since PATAGONIA Goods were launched in Australia in 1995. In Part A of Confidential Exhibit RB-2 the annual wholesale and direct sales figures in Australia of PATAGONIA Goods for the period 1995 to 2010 are tabulated [para 28]. While the figures are not a large proportion of the worldwide figures mentioned above, they are substantial.
At Tab 6 of Exhibit RB-1 are examples of invoices relating to the sale of PATAGONIA Goods sold in Australia during the period 2009 to 2011. [para 29]
In Australia, PATAGONIA Goods have been sold through online seller such as the Main Peak Adventure online store at Main Peak is an Australian supplier of quality outdoor and adventure equipment, stocking brands such as Burton, 686, Libtech, La Sportiva, Zamberlan, Scarpa, Mont, North Face, Lowe Alpine, Arc'teryx, Outdoor Research, DMM, Wild Country, HB, Charlet Moser and Petzl for a range of outdoor clothing and equipment. At Tab 7 of Exhibit RB-1 are printouts from the Main Peak Adventure online store displaying the PATAGONIA Goods and PATAGONIA trade mark. [para 31]
The PATAGONIA trade mark and the PATAGONIA Goods and Services have been promoted in a wide manner, in numerous countries throughout the world, including Australia. [para 32]
Examples of exhibits of various marketing programs, overseas and in Australia, include:

The PATAGONIA trade mark is prominently used on promotional material such as brochures, order forms and flyers that are distributed by the Opponent in relation to the PATAGONIA Goods and Retail Services. At Tab 8 of Exhibit RB-1 are samples of brochures and flyers for clothing and equipment bearing the PATAGONIA trade mark.
Print advertisements featuring the PATAGONIA trade mark have featured in several prominent publications around the world, including Australia. At Tab 9 of Exhibit RB-1 samples of print advertisements and advertorials for the PATAGONIA Goods and Services, featuring use of the PATAGONIA trade mark were exhibited.
The Opponent has utilised online social media such as Internet blogs, Facebook and Twitter to promote the PATAGONIA Goods and Services, and the PATAGONIA trade mark. [Tabs 10 to 12 of Exhibit RB-1]
The Opponent operates a channel on the website YouTube, where videos are regularly uploaded relating to the PATAGONIA Goods and Services or on subjects that are of interests to its customers. At Tab 13 of Exhibit RB-1 is a print out from the PATAGONIA channel on the website YouTube.
The PATAGONIA Goods and Services and PATAGONIA trade mark have been, and are continually promoted over the Internet via the website At Tab 14 of Exhibit RB-1 are examples of promotional material from the website mentioned above.
The Opponent has attended international industry trade shows in the United States, Canada, the European Union, Japan, China and Korea to promote the PATAGONIA brand and showcase the PATAGONIA Goods. The PATAGONIA trade mark is used on all material distributed at these trade shows, stall paraphernalia and some of the PATAGONIA Goods are exhibited. At Tab 15 of Exhibit RB-1 are photographs of the PATAGONIA booth, showing use of the PATAGONIA trade mark.
The PATAGONIA trade mark is also used by the Opponent in connection with the sponsorship of sporting and cultural events in Australia and overseas, for example:

§Thomas Campbell’s film documentary “The Present” – Australia;
§San Sebastian Surf Film Festival – Spain;
§Chamonix Adventure Film Festival – France;
§Kendal Mountain Film Festival – United Kingdom;
§Zinal Freeride – Switzerland; and
§Banff Film Festival – Belgium/Holland.

At Tab 16 of Exhibit RB-1 are documents showing examples of these sponsorships in Australia and overseas. [para 33]
The approximate advertising and promotional expenditure by the Opponent’s former Australian distributor, Patagonia Australia Pty Ltd, to promote the PATAGONIA trade mark during the period 2001 to 2010 in Australia is set out in Part B of Confidential Exhibit RB-2 [para 34]. The figures are in the order of tens of thousands of dollars annually.
The Opponent, like many other clothing manufacturers, designers and retailers, has adopted a deliberate strategy of positioning its brand and creating brand associations by applying the PATAGONIA trade mark to new or modified products in the same broad market and even unrelated markets. Examples of this deliberate strategy is the Opponent’s use of its PATAGONIA trade mark on a range of related products and extending its operations to include retail services with the opening of PATAGONIA retail stores in over 20 countries. [para 35]
The Opponent’s websites exhibited at Tab 14 of Exhibit RB-1 showcase the range and variety of goods sold under the PATAGONIA trade mark. All of the products featured are available in Australia. Since 1974, the range of PATAGONIA products has continued to be extended and developed to include:

clothing (men’s, women’s and children);
luggage carriers (including duffel bags, suitcases, backpacks, satchels and travel packs);
cool storage containers;
socks;
wetsuits;
printed material (including books, posters and photographs);
blankets;
CDs and DVDs;
swimwear (including board shorts, costumes and rashvests);
clothing accessories (including headgear, belts and gloves); and
waders (for fly-fishing). [para 36]

At paragraphs 38 and 39 of Mable, Ms Marble stated that sunglasses are conceptually and functionally similar in nature to PATAGONIA Goods. Further she states that the PATOGONIA Store in Torquay retails sunglasses, albeit being brands such as RAEN and KAENON. The sales of such goods in Australia were shown in Confidential Exhibit RB-1 to be substantial and in the hundreds of thousands of dollars annually.
At paragraph 40 of Marble, it is stated that retailers such as Paddy Pallin, Heritage Surf and Main Peak, who retail PATAGONIA Goods also retail sunglasses and eyewear.

Section 60 – Reputation in the Opponent’s Trade mark

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.
There is an evidentiary onus on the Opponent, in the first instance, to establish that, at the time of filing the opposed application (21 January 2010), there existed a reputation in another trade mark, such that use of the opposed trade marks for the services covered by the application would likely cause members of the public to be deceived or confused. The trade mark relied upon need not be subject of an application or registration in order to be relevant in terms of this section. Section 60 does not require the trade mark relied upon to be ‘deceptively similar’ to the opposed trade marks or that it has been used on similar goods or closely related services. Instead, the focus of the provision is squarely upon of deception or confusion of the public generated by the applicant’s proposed use of its trade marks in the face of the reputation of the trade mark relied upon by an opponent. The reputation of a trade mark may develop in a variety of ways, and be influenced by the particular trading environment in which it has evolved[2].
[2] McCormick & Co v Mary McCormick [2000] FCA 1335; (2001) 51 IPR 102, at 129; McCormick & Company Inc v McCormick (includes corrigenda dated 18 September 2000) [2000] FCA 1335 (15 September 2000), per Kenny J at [85]
The Opponent’s submissions suggested that there was a ‘public appreciation’ of the Opponent’s PATAGONIA Trade Marks and therefore the public would perceive any use of ‘Patagonia’ on outdoor related goods to be related to the Opponent (relying on Turner Entertainment Company v Yo-Merri Todd [2007] ATMO 33, 13 June 2007 at paragraph 65).
In McCormick & Co Inc v. McCormick, supra, at paragraph 81, Kenny J discussed the meaning to be attributed to the word “reputation” in Section 60 and held that it refers to the recognition by the public generally of the Opponent’s trade mark.
Her Honour, cited with approval the following observation by Hearing Officer Thompson in Hugo Boss AG v. Jackson International Trading Company (1999) 47 IPR 423, 436:
The reputation of a trade mark derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other traders’ marks with which the owner of the trade mark in question chooses to associate the trade mark via sponsorships, cross-promotions, ‘contra deals’ and so forth.
Mr Kortian submitted that, having regard to the substantial reputation of the PATAGONIA Trade Marks, use of the Opponent’s trade mark for the Applicant’s Goods would be likely to deceive or cause confusion.
Mr Kortian submitted that here are clearly established authorities for the proposition that the trade mark of a foreign trader, even if not directly used in Australia, may provide a sufficient basis for objection under Section 60 as it has “nevertheless become associated in the minds of the Australian public” with the goods or services through promotion via various forms of media (Shanahan's Australian Law of Trade Marks and Passing Off, 4th Edition at p394; Anheuser-Busch Inc v Castlebrae Pty Ltd (1991) 32 FCR 64). In Anheuser-Busch Inc v Castlebrae, supra, the Court noted increased travel to and from Australia, the growing international media (which would include the Internet) greatly influenced the knowledge and perception of the Australian public.

Mr Kortian further submitted that for deception and confusion the prior mark need not be well known but the likelihood of deception or confusion must be real and tangible. He relied on Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd and the summary of the relevant criteria to be considered provided by French J in Registrar of Trade Marks v. Woolworths (1999) 45 IPR 411 at 428.
It is not necessary to show under section 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion.
In assessing deceptive similarities, the effect or impression of the respective marks is an important criterion. In this case, the dominant and essential element of each trade mark is the first and important element – “PATAGONIA”. The remaining element of the applied-for trade mark is the clear descriptive term “SUNGLASSES”. Therefore the overall impression of the two marks is the same first, distinctive element “PATAGONIA” and the descriptive element “SUNGLASSES” does not serve to distinguish the two marks.
In the present instance, the Opponent submits that the similarity between the applied-for trade mark and its PATAGONIA Trade Mark is such that there must be a real tangible danger of a number of persons being caused to wonder whether all or any of the goods in relation to which the applied-for trade mark is used come from the same source as the PATAGONIA Goods.
The Opponent’s Evidence-in-Support shows that the Opponent provides a range of goods related to ‘outdoor activities’, such as alpine climbing, skiing, snowboarding, surfing, fly-fishing, hiking/trekking, rock climbing and trail running. Such goods are sold in Australia and overseas. The goods are promoted and marketed on Australian and foreign web-sites, in the Opponent’s own PATAGONIA Store in Torquay, and in specialty stores throughout Australia.
While the evidence does not demonstrate quite how large the market for specialty outdoor goods is, it is clear that there is such a market and that the Opponent’s sales and advertising figures are substantial. Within the relevant market, I am satisfied that there is a substantial number of informed consumers, aware of outdoor products available globally and in Australia.
By virtue of advertising on the internet and in globally available specialist publications, the Opponent’s reputation overseas has also spilled into Australia. The applicant’s goods are the type one would expect a manufacturer of clothing for outdoor sports to make. The Opponent has demonstrated a substantial reputation and goodwill in the PATAGONIA Trade Mark with respect to the PATAGONIA goods and services in Australia and its increasing brand extension with respect to related goods and services.
I am satisfied that the Opponent has established a substantial reputation is its PATAGONIA Trade Mark both internationally and in Australia at the relevant date and because of this reputation, a significant number of persons are likely to be deceived or confused if the Applicant used the applied-for trade mark.
Accordingly, the Opponent has established the Section 60 ground.

Decision

Section 55 of the Act provides:
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 134168.

Costs

In the event that the Opponent’s prevailed, Mr Kortian sought an award of costs in its favour. As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Applicant in accordance with Schedule 8 of the Trade Marks Regulations 1995.

Jock McDonagh

Hearings Officer

Trade Marks Hearings

13 December 2012