Polo/Laurent Company LP v Continental Shelf 128 Ltd

[2019] ATMO 91

TRADE MARKS ACT 1995

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

Re:Opposition by Polo/Laurent Company LP to registration of trade mark application 1805051 (3, 18, 25) - SANTA MONICA POLO CLUB & Polo Players (Device) - in

the name of Continental Shelf 128 Limited.

DELEGATE:  Iain Campbell Thompson

REPRESENTATION:             Opponent: Davies Collison Cave – written submissions Applicant: Collison & Co

DECISION:  2019 ATMO 91

Trade Marks Act 1995

Section 52 opposition to registration; grounds under sections 44, 60, 62A, and 42. Section 44 considered and partially established. Applicant given option to delete some goods – application may proceed to registration for goods accordingly amended, otherwise registration refused. Other grounds considered but none established

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Continental Shelf 128 Limited has applied for the registration of the trade mark that appears below:

Application No:        1805051

Priority Date:            26 October 2016

Goods:Class 3: Cosmetics; toiletries; make-up; moisturising preparations; perfume; eau de toilette; eau de cologne; aftershave; aftershave preparations; antiperspirant; deodorants; soap; shampoo; shampoo- conditioners; hair conditioner; shower preparations; shower gels, creams, foams; bath preparations; bath gels, oils, foams, creams, lotions; essential oils; baby oil; massage oil; aromatherapy oil; hair oil; hair care preparations; skin care preparations; sunscreen preparations; sun tanning preparations; sunblock; after-sun lotions; tooth care preparations; tooth paste, tooth polish, tooth gel, tooth powder; shaving preparations; shaving balms, creams, foam, gel, mousse; nail care preparations; depilatory preparations; eye gels, lotions, cream; cotton for cosmetic purposes; cotton wool buds and ball for cosmetic purposes

Class 18: Attaché cases; backpacks; bags, baggage; billfolds; brief cases; business cases, business card cases; canes; carryalls; carrying cases; coin holders; cosmetic bags and cases, sold empty; credit card

cases and holders; driving licence cases; folio cases; haversacks; hipsacks; holdalls; key cases, key holders, key pouches, key wallets; knapsacks; leather and imitation leather; leather straps; luggage; covers, straps, tags and label holders, all for luggage; make-up boxes and cases; notecases; overnight cases; parasols, parasol covers; portmanteaux; pouches; purses; reins; rucksacks; saddlery; shoulder belts; slings for carrying babies and or infants; suit carriers; suitcases; travelling trunks; umbrellas; umbrella bags and covers; valises; walking sticks; wallets Class 25: Articles of outerclothing; articles of underclothing; footwear; headgear; coats; jackets; socks; neckties; scarves; shawls; gloves; mittens; muffs

(‘the Goods’)

Trade Mark:

(‘the Trade Mark’)

1. The trade mark was examined in compliance with section 31 of the Act and advertised as accepted for possible registration on 16 March 2017 in the Australian Official Journal of Trade Marks.

1. On 16 May 2017, the Polo/Lauren Company, LP (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark followed, on 15 June 2017, by a Statement of Grounds and Particulars which details grounds under sections 44, 42, 60, and 62A.

1. On 28 July 2017, the Applicant filed a Notice of Intention to Defend.

1. Thereafter, on 8 November 2017, the Opponent filed its Evidence in Support (‘the EIS’). The EIS is a declaration by Anna Dalla Val, Vice President and Secretary for PRL International, Inc1 made on 8 November 2017 with Exhibits ADV-1 to ADV-31.

2. The Applicant has not filed Evidence in Answer.

1. Both parties have been informed of their right to be heard or to make written submissions. The Opponent has made written submissions by its attorneys, Davies Collison Cave.

1 The General Partner of the Opponent

1. Now, in order that the Registrar may discharge her obligation under section 55 of the Act to decide the matter, it has been passed to me, one of her delegates, for my decision on the written record which is comprised of those materials mentioned in the foregoing paragraphs.

Evidence

The Opponent

1. Ms Val states:

Since 1967, [the Opponent] has carried on the business of designing, manufacturing and marketing articles of contemporary high quality men’s clothing. Since at least as early as the mid 1970’s [the Opponent] has carried on the business of designing and authorising the manufacture of and promoting the sale of articles of contemporary high quality women’s and children’s clothing and accessories. In recent years, [the Opponent] has also carried on the business of designing, authorising the manufacture of and promoting the sale of contemporary high quality home furnishings.

1. The following factors concerning the Opponent in these proceedings emerge from Ms Val’s declaration:

Goods bearing the Opponent’s trade marks are sold in department stores and speciality stores throughout the world. Upscale department stores also include the “shops within shop boutiques” dedicated exclusively to products of The Polo/Lauren Company, L.P. The first such boutique store opened in Bloomingdales in New York in 1971.

In 1998 there were in existence 4,500 Polo Ralph Lauren “shops-within-shop boutiques” around the world, 43 free-standing stores in the United States and 76 international stores (together “Doors”). As of April 2016, Polo has more than 25,000 shops within shops throughout the world, including 583 concession-based shops and 493 free-standing stores.

1. Concerning the above-mentioned trade marks, Ms Val states that the Opponent has used these in the following manner:

·    The trade mark [above] was first used by [the Opponent] in the United States of America on clothing articles on 12 December 1972. Since then use of the trade mark has extended to rugs and wallpaper on 6 December

1983, to eyewear on 1 January 1976 and to towels, sheets, pillowcases and other home goods on 1 October 1983.

·    The [above trade mark] was adopted in 1971 when [the Opponent] was looking to select a device to be used with its word trade marks to reinforce [the Opponent’s] reputation in the “Polo” concept/idea. […] [This] trade mark was first used by [the Opponent] in the United States of America in relation to clothing articles on 12 December 1972 and subsequently in relation to small leather goods such as bags, satchels, clutches, cosmetic bags, grooming kits, coin purses/ wallets and key cases on 30 December 1975. Subsequently, use of the trade mark extended to watches, clocks and watch bands on 1 January 1976, to rugs and wallpaper on 6 December 1993, to towels, sheets, pillowcases and other home goods on 1 October 1983, to jewellery on 1 January 1976 and to rattan and wicker furniture on 31 May 1985.

·    The [above] trade mark was first used by Polo in the United States of America in relation to small leather goods such as bags, satchels, clutches, cosmetic bags, grooming kits, coin purses, wallets and key cases on 30 December 1975.

1. I will refer to the Opponent’s above trade marks collectively as “the Opponent’s Trade Marks”.

1. Concerning the registration and/or use of all of the Opponent’s trade marks (including the Opponent’s Trade Marks) in Australia, Ms Val specifies, inter alia, the following registrations2 in her declaration:

Registration No:        1245964

Priority Date:            12 June 2008 (

Goods/Services:        Class 25: Clothing, footwear and headgear

2 Noting that if the relevant grounds are not established in relation to these trade marks, those grounds would not be established in relation to other trade marks listed by Ms Val.

Trade Mark:

Registration No:        1325156

Priority Date:            12 October 2009
Goods/Services:        Class 25: Clothing, footwear and headgear

Class 35: Retailing services, including retail store services and retailing over the Internet

Trade Mark:                Registration No: 336470

Priority Date:            13 August 1979

Goods/Services:        Class 25: Clothing and all other goods in this class

Trade Mark:

Registration No:        382189

Priority Date:            7 October 1982

Goods/Services:        Class 25: All goods in this class excluding clothing and footwear designed specifically for polo players

Trade Mark:

1. Ms Val states that the Opponent’s Trade Marks have been used in Australia by the Opponent (or an authorised user since 1987) in the following manner:

From 1987 to at least 2002 this trade mark has been used in Australia in relation to men’s clothing (knits, sweaters, shirts, pants, outerwear, swimwear), headwear, scarves, belts, men’s and women’s small leather goods (including wallets, keycases and purses), shoes, luggage, umbrellas, towels and bedding/linen, Currently the (trade mark is used in relation to at least men’s, women’s and children’s clothing.

This trade mark has been used in Australia on men’s clothing (knits, sweaters, shirts, pants, outerwear, swimwear), headwear, ties, scarves, belts, men’s and women’s small leather goods (including wallets, key cases and purses), shoes, men’s and women’s hosiery, luggage, handbags, towels and bedding and linen.

The trade mark has been used in Australia on men’s clothing (knits, sweaters, shirts, pants, outerwear, swimwear) and headwear, but is now used as [the Opponent’s] corporate logo and is displayed on all ticketing (such as swing tags) which is attached to [the Opponent’s] goods before sale.

1. I note that, whilst the date of first use in Australia of the first of the immediately above trade marks are provided by Ms Val, the dates are not provided for the others of the Opponent’s Trade Marks.

1. Ms Val states:

In 1992 freestanding “Polo Ralph Lauren” stores were opened in the Queen Victoria Building, Sydney and at Greenwood Plaza, North Sydney. “Shop-within- shop boutiques” were opened in David Jones department stores in Brisbane, Adelaide, Melbourne and Sydney in 1989 and in Perth in October 2002. The said

“Polo Ralph Lauren” stores and “shop-within-shop boutiques” market [the Opponent’s] clothing and fashion accessories [bearing trade marks which include the Opponent’s Trade Marks]. In addition, products bearing the aforesaid trade marks have been sold in Myer Department Stores since approximately 1993 and in Daimaru Department stores.3 Since 1992, [the Opponent] has [in the period 1998 to 2003] opened [12] free standing “Polo Ralph Lauren”, “Polo Sport” and “Polo Jeans Co.” retail stores throughout Australia.

1. As well as through the above “bricks and mortar” retail outlets, the Opponent sells its goods through on-line trading partners in Australia.

1. Ms Val also provides annual revenue and advertising expenditure in relation to the Opponent’s Trade Marks and I would characterise these as being large.

The Applicant

1. The Applicant has not filed Evidence in Answer, so there is no information about it on the official record.

Onus and Relevant Date

1. The Opponent bears the onus of establishing a ground of opposition which is detailed in the Statement of Grounds and Particulars on the balance of probabilities.4

1. The relevant date (‘the Relevant Date’) at which the grounds must be considered is the filing date5 of the opposed application and I note that where sections 44 and 60 specify “the priority date” that is here the same as the filing date.

Section 44

Statement of Grounds and Particulars

1. It its Statement of Grounds and Particulars the Opponent asserts:

The Trade Mark is substantially identical with or deceptively similar to the following trade marks, which have an earlier date of priority than the Application and which are registered or applied for with respect to similar goods to the goods covered by the Application and, therefore, registration of the Application would be contrary to Section 44 of the Act and/or Regulation 4.15A of the Regulations. The

3 I note that the two Australian Daimaru stores (Melbourne and Gold Coast) closed in 2001.

4 Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per

Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132] to [133].

5 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.

Trade Mark has not been used by the Applicant to satisfy the requirements of Section 44(3) and/or 44(4) and/or 4.15A(3) and/or 4.15A(5).

[The Opponent then lists the Australian trade mark registrations which appear at

Annexure 1 to this decision].

1. I consider it accurate to observe that (in terms of the Opponent’s trade marks listed in the Statement of Ground and Particulars, which appear in the Annexure 1) if the opposition is not established in relation to those trade mark registrations (‘the Opponent’s Registrations’) which appear below, then it will not, a fortiori, be established in relation to those other trade mark which are listed in the Annexure:

Registration No:                   943887

Priority Date:  14 February 2003

Goods:Class 25: Clothing, footwear and headgear excluding clothing for the sport of polo, polo shirts and polo neck garments

Trade Mark:  POLO

Endorsements:  Provisions of paragraph 44(3)(b) applied.

Registration No:                   382189

Priority Date:  7 October 1982

Goods:  Class 25: All goods in this class excluding clothing and footwear designed specifically for polo players

Trade Mark:

Registration No:                   1245964

Priority Date:  12 June 2008

Goods:  Class 25: Clothing, footwear and headgear Trade Mark:  

Registration No:                   336470

Priority Date:  13 Aug 1979

Goods:  Class 25: Clothing and all other goods in this class

Trade Mark:

Registration No:                   528895

Priority Date:  16 Feb 1990

Goods:Class 25: Men’s ties and men’s underwear and all other goods in class 25

Trade Mark:  POLO BY RALPH LAUREN

Consideration

1. Absent evidence filed by the Applicant which addresses subsections 44(3) or (44(4) of the Act, section 44 of the Act relevantly provides:

44 Identical etc. trade marks

(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.

Note 1:For deceptively similar see section 10. Note 2:For similar goods see subsection 14(1). Note 3: For priority date see section 12.

1. In terms of subsection 44(1) it is incumbent upon the Opponent to establish each of the following:

   1.   That the registrations relied upon by the Opponent each have a priority date earlier than that of the Trade Mark; and

   2.   The Goods are “similar goods” to those in respect of which the Opponent’s trade marks are registered; and

   Priority Date

1. The Trade Mark is either substantially identical with, or deceptively similar to, those registered trade marks relied upon by the Opponent.

1. Each of the trade marks listed within the Statement of Grounds and Particulars has a priority date earlier than that of the Trade Mark.

1. The first requirement is, accordingly, established.

Similar Goods

1. Subsection 14(1) of the Act provides:

14 Definition of similar goods and similar services

(1)    For the purposes of this Act, goods are similar to other goods:

(a)if they are the same as the other goods; or

(b)if they are of the same description as that of the other goods.

1. It is convenient, in term of my discussion of the issues concerning the asserted similarity of the parties’ trade marks, to focus on the parties’ goods in Class 25. The parties’ goods in Class 25 are “similar goods” as the specifications encapsulate both “the same goods and goods of the same description”.6

2. The second requirement is thus established in relation to goods within Class 25 of the application.

Substantial identity/Deceptive Similarity

1. In the oft-quoted passage in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd

   (‘Shell’) Windeyer J said of “substantial identity”:7

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty

6 See for example, E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; (2009) 175 FCR 386; [2009] AIPC 92-337 at [70].

7 [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 1B IPR 523; 35 ALJR 355 at [12].

Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR,

at pp 114, 115, and Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.

1. In the comparison of the Trade Mark and each of the Opponent’s Registrations a total impression of dissimilarity emerges. Whilst the words “Santa Monica Polo Club” within the Trade Mark might lack somewhat in inherent adaptation to distinguish, they are not (in my view) of the same ilk as the word “Choc” which was in question in PB Foods Ltd v Malanda Dairy Foods Ltd.8 The presence of those words in the Trade Mark constitutes a material particular (or essential feature) which in itself contributes to the identity of the Trade Mark.

1. The Trade Mark is not substantially identical to any of the Opponent’s Registrations.

1. Concerning deceptive similarity, in Shell Windeyer J continued at [13]:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. 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 television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same” (1937) 58 CLR, at p 658.

[…]

8 [1999] FCA 1602; (1999) 47 IPR 47; [1999] AIPC 40-117 where the trade marks “Chill” and “Choc Chill” were found to be substantially identical in relation to ice-creams.

The deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.

1. The assessment of the likelihood of deception or confusion is moderated by the factors discussed in Registrar of Trade Marks v Woolworths by French J:9

In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR

592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

(i)  To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

(ii)   A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

(iii)  In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

(iv)    The rights of the parties are to be determined as at the date of the application.

(v)   The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

9 [1999] FCA 1020

In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353

at 362:

‘...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.’

1. Further, the question of deceptive similarity is to be assessed in the context of the marketplace for the goods. In Re Application by the Pianotist Co Ltd Parker J said:

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

1. Here the goods of the parties are ordinary consumer items of varying degrees of expense which are not likely to be purchased with the same degree of attention as, for example, a motor vehicle: LANCER - Trade Mark Application.10

1. With the above precepts in mind, I consider that, of the Opponent’s Registrations, 1245964 (below) is very obviously deceptively similar to the Trade Mark:

(‘the Three Polo Players’)

1. Alike the Trade Mark, the above trade mark is comprised of three polo players, the outer two of which have their mallets upraised. In both trade marks, the polo game is apparently underway. I am minded of the decision of Latham CJ, Dixon and McTiernan JJ in Jafferjee v Scarlett11 where Dixon J described the trade marks as follows:

10 [1987] RPC 303 (LANCER versus LANCIA).

11 [1937] HCA 36; (1937) 57 CLR 115.

The respondent’s application is for a mark in respect of flour. It consists in a picture of two runners finishing a race with the leader breasting the tape. Both are dressed in running costume. The tape is represented by a thin line. The mark includes the four words—“Best Australian Roller Flour”—two of which are above and two below the picture. The appellant already had upon the register a mark in respect of flour. He is a merchant in Ceylon who imports into that and other eastern countries Australian flour bearing his trade mark. It consists in a representation of two men apparently engaged in a fight with javelins. The men are dressed somewhat as the runners. The javelins, which are depicted by two lines, are crossed, one warrior holding his in his left hand and stretching out his right to his adversary, while the latter holds out his left hand towards him and bears the javelin in his right. The figures are within a circle which is not carried right under their feet. There the words “Double Javan” are printed. According to an indorsement on the example of the mark registered, these words mean “two warriors.” In practice the mark is applied by stencilling and the like to flour bags.

1. Latham CJ stated of those trade marks:

It should not be assumed by the court that the probable purchaser is a specially stupid man, or, on the other hand, that he is a man who sets trade marks side by side and examines them with particularity. Taking, as well as I can, the point of view which I have indicated, I think that there is a real and substantial similarity between the two marks now before the court. There are, as I have said, many differences between them, but the general idea of men in athletic costumes engaged in an athletic contest with a line across their fronts is to be found in each mark. Looking merely at the marks themselves, I am unable to say that there is no probability of purchasers being deceived. It is necessary also to consider the ear as well as the eye. Purchasers very frequently endeavour to describe a mark in order to obtain the same goods as they have bought on a prior occasion. In this case I am not prepared to say that purchasers would not naturally describe the opponent’s flour as the flour with the “two men” on it, or the “two athletes” or the “two runners” and then, in the latter case, mistake a poorly stencilled mark of the javelin men for the mark of the running men.

1. I note that in Jafferjee v Scarlett the onus was then on an applicant to show that a trade mark would not confuse or deceive, and that the onus is otherwise here. However, I also consider it likely that the device within the Trade Mark may be imperfectly remembered as being the Three Polo Players trade mark. The images of the three polo players have, as I have discussed, strong similarities which, in my consideration, will lead purchasers to be at least caused to wonder if those similarities indicate a common source in trade. The words “Santa Monica Polo Club” within the Trade Mark do not, in my view, go to dispel such assumptions and/or wonderings amongst potential purchasers.

1. Accordingly, I find that the Trade Mark and 1245964 (the Three Polo Players trade mark) are deceptively similar in relation to goods in Class 25 and that the opposition to registration under section 44 has been established.

Section 60

Statement of Grounds and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

The Opponent, its predecessors in title and/or related bodies corporate commenced use of its trade mark POLO in 1968 and the trade mark [appearing hereunder] in 1971 [‘the Section 60 Trade Marks’]. The Opponent, its predecessors in title, related bodies corporate and licensees have used the Section 60 Trade Marks for a wide range of goods and services since that time, including toiletries, bags and accessories, and clothing goods.

(‘the Player Trade Mark’)

1. To found this ground an opponent must first establish that the trade mark(s) upon which it relies have a reputation and, second, that because of that the use of an opposed trade mark would be likely to confuse or deceive.

1. Therefore, the initial consideration is the meaning of the word “reputation”; in McCormick & Co Inc v McCormick (‘McCormick’) Kenny J said:12

What is intended by the word “reputation” in s 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.

Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

12 [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].

1. Kenny J went on in McCormick13 to state concerning the assessment of reputation that:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91- 560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

1. Further, the assessment of the reputation of a trade mark is to take place in the context of the marketplace for the goods and services. Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee14 said (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955) that the reputation required to be demonstrated was to be:

... 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.

1. The goods involved here are general consumer goods which include fashion items and articles of personal adornment. However, I note that the Goods must be considered to the full extent of the specifications in Classes 3, 18 and 25 and that, accordingly, the Goods may include items at various price points. Therefore, any reputation of the Section 60 Trade Marks is to be looked for amongst the general purchasers of such goods in Australia.

1. Whilst the Statement of Grounds and Particulars specifies the Opponent’s trade mark POLO, there is no information in Ms Val’s declaration about that trade mark, used on its own, in Australia and accordingly it will not form a part of my considerations.

13 Op cit at [86].

14 [2000] FCA 1587; (2000) 50 IPR 1.

1. It is difficult to apportion with certainty a part of the Opponent’s sales revenue and advertising expenditure in relation the Opponent’s Trade Marks to the Player Trade Mark. However, in McCormick, Kenny J quoted, with approval, the Registrar’s delegate:

[As the delegate stated in] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 (“Hugo Boss”) at 436:

[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation 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 trader’s marks with which the owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, `contra deals’ and so forth.

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

1. Taking into account the appearances of the Player Trade Mark in the attachments to Ms Val’s declaration, I would conclude that it has a moderate reputation in Australia, with the proviso that when it appears it is usually with the indicia “Ralph Lauren” and/or “Polo”. This reputation exists, in the words of Ms Val in relation to:

Men’s clothing (knits, sweaters, shirts, pants, outerwear, swimwear), headwear, ties, scarves, belts, men’s and women’s small leather goods (including wallets, key cases and purses), shoes, men’s and women’s hosiery, luggage, handbags, towels and bedding and linen.

1. My next consideration is whether, because of the Opponent’s reputation in the Player Trade Mark, the use of the Trade Mark would be likely to confuse or deceive.

1. The words “confuse” and “deceive” refer to different forms of bewilderment. In Pioneer Hi- Bred Corn Co v Highline Chicks Pty Ltd Richardson J said, in the New Zealand Court of Appeal:15

   Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.

2. In Radio Corp Pty Ltd v Disney Rich J said of the word “confusion”:16

In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney”. The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney”. This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.

1. And in Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the Registrar’s delegate stated:17

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. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.

1. Here, I take the following factors into account in making my assessment:

   ·    The Player Trade Mark relied upon by the Opponent rarely appears on its own in the material attached to Ms Val’s declaration;

   
   

   15 [1979] RPC 410, at 423.

   16 1937] HCA 38; (1937) 57 CLR 448 at 454.

   17 [2012] ATMO 124 at [40].

·    The Player Trade Mark bears little resemblance to the image of three polo players within the Trade Mark;

·    The Trade Mark also contains the expression “Santa Monica Polo Club” which serves to further differentiate the respective trade marks; and

·    A number of polo clubs have registered their trade marks which include representations of polo players and words indicating the location of the club for similar goods without any demure from the Opponent or (seemingly) confusion or deception because of the reputation of the Player Trade Mark occurring.

1. In considering the above factors, I am not satisfied that there is a likelihood of confusion or deception arising out of the use of the Trade Mark because of the reputation of the Player Trade Mark.

1. The Opponent has not established its opposition under section 60 of the Act.

Section 42

1. Statement of Grounds and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

Based on the Opponent’s reputation in the [Section 60 Trade Marks] as noted above, use of the Trade Mark in relation to the goods of the Application is likely to:

a)   mislead or deceive consumers into believing that the goods offered under or by reference to the applied for Trade Mark are those of the Opponent, or otherwise associated or affiliated with the Opponent, in breach of Section 18 of the Australian Consumer Law 2010 (Cth).

b)   misrepresent to consumers that the Applicant and its goods are associated or affiliated with the Opponent or that the Applicant has obtained the Opponent’s sponsorship or approval to use the applied for Trade Mark, when this is not the case, in breach of Section 29 of the Australian Consumer Law 2010 (Cth).

c)    mislead the general public and thereby, cause damage to the Opponent’s reputation and goodwill under the [Section 60 Trade Marks] and amount to passing off at common law.

Therefore, use by the Applicant of the applied for Trade Mark in relation to the goods of the Application would be contrary to law.

1. As the Registrar’s delegate observed in Polo/Lauren Co LP v Horse Australia Pty Ltd:18

18 [2018] ATMO 150 at [29].

The onus is on the Opponent to establish that use of the Applicant’s trade mark would be, rather than could be, contrary to law on the balance of probabilities.19

[…]

In the present matter the Opponent has failed to establish a ground of opposition under s 60 of the Act. As the test for misleading or deceptive conduct under s 18 of the ACL is a more stringent test than that for deception or confusion under s 60,20 I am satisfied that the Opponent has also failed to establish that the use of the Applicant’s Trade Mark would be contrary to s 18 of the ACL. Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act 1974 (‘the TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.21 Sections 53(c) and 53(d) of the TPA are the equivalent provisions to ss 29(1)(g) and 29(1)(h) of the ACL. For these reasons I am not satisfied that use of the Trade Mark would be contrary to law. Therefore the Opponent has failed to establish this ground of opposition.

1. It is likewise here. The Opponent has not established its ground under section 42 of the Act.

Section 62A

Statement of Grounds and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

The Opponent and the Applicant had been engaged in discussions relating to the Opponent’s Marks in 2012 and 2013. Due to that correspondence, and the Opponent’s reputation in the [Section 60 Trade Marks], the Applicant would have been well aware of the Opponent’s rights in the [Section 60 Trade Marks] at the time the Application was filed. The Trade Mark incorporates elements of the Opponent’s branding indicia including logos of a polo player and horse. The Applicant therefore knew or ought to have known at the time of filing that it was not entitled to apply for registration of the Trade Mark in Australia, and the filing of the Application took unfair advantage of the Opponent’s rights in the [Section 60 Trade Marks] as noted above. The application was accordingly filed in bad faith.

1. 
   It terms of the ground as stated in the Statement of Grounds and Particulars, the Opponent has not filed evidence that supports the above assertion in the form of correspondence which is stated to have occurred between the parties. In any event, a mere awareness of the Section 60 Trade Marks—trade marks which I have found are unlikely to give rise to deception or

   19 Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

   20 See, eg: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ).

   21 [2003] FCA 104, [107].

confusion—is insufficient to mean that the application would be regarded as having been made in bad faith by persons adopting proper standards. The ground under section 62A has therefore also not been established.

Decision

1. Section 55 of the Act relevantly provides:

55 Decision

(1)    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.

Note:      For limitations see section 6.

1. I refuse to register the Trade Mark.

1. If, however, the Applicant applies to delete all of the goods in Class 25 from its application within three weeks of this decision, the trade mark application may then proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should be in accordance with the court’s order or direction.

Costs

1. The Opponent requested its costs if successful in this opposition.    Both parties might be regarded as having had a measure of success and I make no award.

Iain Campbell Thompson Hearing Officer

Trade Marks Hearings 19 June 2019

Annexure 1

The Opponent’s Australian Trade Mark Registrations

Registration No:                   943887

Priority Date:  14 Feb 2003

Goods:Class 25: Clothing, footwear and headgear excluding clothing for the sport of polo, polo shirts and polo neck garments

Trade Mark:  POLO

Endorsements:  Provisions of paragraph 44(3)(b) applied.

Registration No:                   1662644

Priority Date:  25 Jul 2014

Goods:Class 9: Binoculars, pince-nez cases (eyeglass cases), pince-nez, pince-nez cases, pince-nez chains, pince-nez cords, pince-nez frames, pince-nez chains (eyeglass chains), pince-nez cords, (eyeglass cords), corrective glasses, spectacle cases, spectacle frames, spectacle glasses, spectacles (optics), cases for sunglasses, cords for sunglasses, frames for sunglasses, chains for sunglasses, sunglasses

Class 25: Pullovers, shirts, sweatshirts; all the aforesaid goods not intended for polo and excluding polo-style clothing and polo shirts; gloves (clothing), belts (clothing), footwear; all the aforesaid goods not intended for polo; trousers, shorts, jackets, coats, vests, scarves, neckties, underwear, socks, sleepwear, dressing gowns, men’s suits, headgear for wear

Trade Mark:  POLO

Registration No:                   382189

Priority Date:  7 Oct 1982

Goods:  Class 25: All goods in this class excluding clothing and footwear designed specifically for polo players

Trade Mark:

Registration No:                   1245964

Priority Date:  12 Jun 2008

Goods:  Class 25: Clothing, footwear and headgear Trade Mark:  

Registration No:                   336470

Priority Date:  13 Aug 1979

Goods:  Class 25: Clothing and all other goods in this class

Trade Mark:

Registration No:                   1325156

Priority Date:  12 Oct 2009
Goods/Services:                   Class 25: Clothing, footwear and headgear

Class 35: Retailing services, including retail store services and retailing over the Internet

Trade Mark:  

Registration No:                   380900

Priority Date:  10 Sep 1982

Goods:Class 25: Articles of clothing, excluding neckwear and underwear and further excluding clothing and footwear designed specifically for polo players

Trade Mark:  POLO BY RALPH LAUREN

Registration No:                   528895

Priority Date:  16 Feb 1990

Goods:Class 25: Men’s ties and men’s underwear and all other goods in class 25

Trade Mark:  POLO BY RALPH LAUREN

Registration No:                   1662220

Priority Date:  25 Jul 2014

Goods:Class 9: Binoculars, pince-nez cases, pince-nez, pince-nez cases, eyeglass chains, eyeglass cords, eyeglass frames, eyeglass chains, eyeglass cords, eyeglasses, spectacle cases, spectacle frames, spectacle lenses, spectacles (optics), cases for sunglasses, straps for sunglasses, frames for sunglasses, chains for sunglasses, sunglasses

Class 14: Precious metals and their alloys and goods made of these materials or coated therewith not included in other classes; articles of jewellery, precious stones; timepieces and chronometric instruments

Class 18: Attaché cases, backpacks, beach bags, briefcases (leather goods), walking sticks, card cases (wallets), handbags, key cases, shoulder belts (straps) of leather, parasols, wallets, purses, clutch bags, school satchels, satchels, shopping bags, suitcases (carrying cases), covers for suits, shirts and dresses, travel bags, traveling trunks, suitcases, umbrellas, wallets

Class 25: Clothing for men, women and children, footwear, headgear for wear
Class 35: Retail sale services and online retail store services featuring clothing for men, women and children, footwear, headgear for wear, home collection articles and accessories

Trade Mark:  POLO RALPH LAUREN

Registration No:                   1715780

Priority Date:  26 Mar 2015

Goods/Services:                   Class 14: Precious metals and their alloys and goods made of

these materials or coated therewith not included in other classes; jewellery, precious stones; timepieces and chronometric instruments

Class 18: Attache cases, backpacks, beach bags, briefcases (leather goods), walking sticks, card cases (wallets), handbags, key cases, shoulder belts (straps) of leather, parasols, pocket wallets, purses, clutches of leather, school satchels (school bags), school satchels, saddlebags, shopping bags, carrying cases, garments bags for travel, travel bags, traveling trunks, suitcases, umbrellas, wallets

Trade Mark:

Class 25: Clothing for men, women and children, footwear, headgear for wear

Class 35: Retail services and online retail store services offering clothing for men, women and children, footwear, headgear for wear, accessories and household collections

Registration No:                   943888

Priority Date:  14 Feb 2003

Goods:  Class 25: Clothing, footwear and headgear
Trade Mark:  POLO SPORT

Registration No:                   701907

Priority Date:  06 Feb 1996

Goods:Class 25: Men’s, women’s and children’s clothing, namely, sweaters, shirts, including knitshirts, dress shirts, sportshirts, sweatshirts, and T-shirts; jackets, ties, suits, slacks, ascots, bathing suits, belts, jeans, blouses, skirts, dresses, coats, hats, caps, tuxedos, pants, jeans, shorts, tops, vests, robes, hosiery, scarves, pyjamas, underwear, kilts, mufflers, squares, shawls; footwear, namely, shoes, boots, slippers, and athletic shoes; blazers, headbands, wristbands, coveralls, overalls, sweat pants, and sleepwear

Trade Mark:  POLO JEANS CO.