Proposed revocation of acceptance of trade mark application number 1924884(25) – Sculpteur – in the name of The Brand Republik Pty Ltd.

[2019] ATMO 96

TRADE MARKS ACT 1995

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

Re:Proposed revocation of acceptance of trade mark application number 1924884(25) – Sculpteur – in the name of The Brand Republik Pty Ltd.

Delegate:	Debrett G. Lyons
Representation:	Applicant: Written submissions by One IP International Pty Ltd
Decision:	2019 ATMO 96 Trade Marks Act 1995: proceedings under sections 38 of the Act – whether reasonable to revoke acceptance – section 44 considered – acceptance revoked – application returned to examination.

Background

1. In these proceedings under the Trade Marks Act 1995 (‘the Act’) The Brand Republik Pty Ltd (‘the Applicant’) has applied for the registration of the trade mark which appear below in class 25 for “Swimwear; swimsuits; bikinis; slimming underwear; shapewear (slimming underwear); sportswear; clothing for swimming; clothing for surfing; bathing costumes; bras”.

   Application No:           1924884
   Priority Date:               7 May 2018
   Trade Mark:                Sculpteur

   (‘the Trade Mark’)

2. The Trade Mark was examined as mandated by section 31 of the Act and, subject only to agreement given by the Applicant that the Trade Mark was a French word which could be translated into English as “sculptor”, was accepted by a delegate of the Registrar of Trade Marks.

3. On 3 October 2018 the Trade Mark was accepted and on 11 October 2018 it was advertised as such for possible registration in the Australian Official Journal of Trade Marks.

4. On 11 December 2018 Speedo Holdings B.V. filed a notice of intention to oppose the registration of the Trade Mark and in its statement of grounds and particulars filed on 11 January 2019, the Opponent cited as the basis for the section 44 ground of opposition, its trade mark registrations 951236 and 1688764.

5. Thereafter, and in consequence of the intended opposition, another delegate of the Registrar of Trade Marks issued a notice dated 11 February 2019 proposing to revoke acceptance of the Trade Mark under section 38 of the Act (‘the Notice’). In the Notice the delegate wrote that it had come to his intention that the Trade Mark should not have been accepted because registration 1688764 (‘the Registration’) was an earlier conflicting trade mark for the purposes of section 44 of the Act.

6. The Applicant asked to be heard in respect of the intended revocation.  A hearing was set down in Canberra on 3 June 2019.  As a delegate of the Registrar of Trade Marks I was appointed to hear the matter and on 30 April 2019 I wrote to the Applicant requiring written outline submissions by 20 May 2019.  On that day I received submissions prepared by Mr Olaf Kretzschmar from One IP International Pty Ltd, the Applicant’s representative, who also indicated his intention to attend the hearing via video-conference.

7. On 3 June 2019 at and after the appointed time for the hearing Mr Olaf Kretzschmar did not join the conference and was unavailable at his office when attempts were made to contact him.  After further attempts to contact him failed the hearing was suspended and later that same day after email communication with him, I was informed that my decision could be made based on the written submissions received on 20 May 2019.  My decision is based on that material and on the official file for the Trade Mark.

   Section 38

8. Section 38 of the Act relevantly provides:

   38Revocation of acceptance

   (1)Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:

   (a)the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and

   (b)it is reasonable to revoke the acceptance, taking account of all the circumstances.

9. In Globalscope Pty Ltd the Registrar’s delegate set out some of the factors involved in considerations under section 38 of the Act:

   As a preliminary matter, I note that the application of section 38 is discretionary (that is: “...the Registrar may revoke the acceptance...”). That said, it would be difficult to imagine a scenario where, the requirements of both limbs having been satisfied, some other circumstance meant acceptance of the trade mark would not be revoked (given the provisions themselves take into account a consideration of “all the circumstances”).

   Most importantly, the provisions of section 38 require that both limbs of the test (i.e. ss 1(a) and 1(b)) must be satisfied before the Registrar of Trade Marks may revoke acceptance. For the avoidance of doubt, I would also add that these elements must be satisfied before the Registrar issues a letter of intention to revoke.

   […]

   The current section 38 was introduced via amendments to the Act in 2006. The Explanatory Memorandum to the Intellectual Property Laws Amendment Bill 2006 noted that the previous section 38 had been interpreted too narrowly, with the result that the protection of the public interest in keeping invalidly accepted trade marks from becoming registered had not been fully realized. As a result, the Explanatory Memorandum provided […]:

   Paragraph 38(1)(a) clarifies that the Registrar is able to take account of any circumstance that existed which should have prevented acceptance. It is not necessary that the Registrar knew or was in a position to know of the existence of the circumstances at the time the application was accepted for this paragraph to apply. This may include an error of judgement or omission on the part of the examiner, or information about the trade mark that was not available to the Registrar at the time of examination, for example:

   the examiner may have overlooked or discounted information that would lead, if properly considered, to the examiner rejecting the application; or

   an international application for a conflicting mark having an earlier priority date had not yet been filed in Australia.

   The Registrar is not limited in what he or she may consider.

   In relation to the second limb (section 38(1)(b)), the Explanatory Memorandum provided:[3]

   This consideration is not limited to the circumstances as they existed when the trade mark was accepted. Further, the Registrar is not limited in what he or she may consider.

   The new provision will allow the Registrar to revoke acceptance of a trade mark only when this course of action is reasonable, taking account of all of the circumstances. The intention of this provision is to focus attention on the reasonableness of the Registrar's actions, and not on whether or not an `error or omission' or a `special circumstance' preceded the registration of the trade mark.

   This provision ensures that the Registrar will be in a better position to effectively keep invalidly accepted trade mark applications from becoming registered, thus protecting the public interest.

   […]

   … guidance [is] provided in the Trade Marks Office Manual of Practice and Procedure (“the Manual”):

   It may also be reasonable to revoke acceptance in the circumstances where the decision to accept is one that cannot reasonably be supported by the accepted and defined tests and the decision made by the examiner is:

   •manifestly wrong,

   •clearly not just a difference of opinion, and

   •obviously disregards established authorities

10. With the above principles in mind, I turn to the circumstances of this proposed revocation. The Notice cites the Registration as the basis of a section 44 ground of rejection that should have been raised during examination. The Registration is for the trade mark SCULPTURE which has a priority date of 20 December 2013 and is registered for class 25 and 28 goods, the class 25 goods being “Clothing; footwear, headgear, swimwear, belts”

11. A primary examiner had, as stated, accepted the Trade Mark for possible registration but I am required to decide whether the decision to accept was one that could not reasonably be supported by the usual tests in relation to section 44 which states, for present purposes, that an application for the registration of a trade mark in respect of goods must be rejected if it is substantially identical with, or deceptively similar to another person’s registered or pending trade mark of earlier priority date for similar goods.

12. The Registration has a priority date earlier than that of the Trade Mark and the compared goods are “similar goods” as defined by section 14 of the Act, something which the Applicant concedes in its written submissions. It is not necessary for me to decide whether the compared trade marks are substantially identical or not if I find that they are deceptively similar. In that regard the accepted test for “deceptive similarity” was laid out in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) where Windeyer J said:

    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".

13. Further, the definition of the expression “deceptively similar” is defined by section 10 of the Act:

    10Definition of deceptively similar

    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.

14. The process of assessing the likelihood of deception and confusion is informed by the factors discussed by French J in Registrar of Trade Marks v Woolworths:

    (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.

    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."

15. Returning to the comparison of the trade marks, it is to be in the context of the marketplace for the relevant goods: Parker J said in In the Matter of An Application by the Pianotist Company Ltd for the Registration of a Trade Mark:

    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. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods ... you must refuse the registration, or rather you must refuse the registration in that case.

16. The Applicant’s submissions in relation to section 38(a) are, in summary, that “the marks are in completely different languages, pronounced differently, and also have different meanings.” In more detail the Applicant submits that:

    … the revoked mark “Sculpteur” only exists as a word in French, whereas the conflicting mark “SCULPTURE” is a well-understood word in English. In fact, the revoked mark is not only French, but also French-looking. The combination of letters “teur” is very rare in English, except for loanwords from French. Rather, this combination is usually associated with French words. In this case, the applicant has deliberately chosen a French and French-like word, since French brand names usually convey an image of luxury, exclusivity and sophistication.

    In French, “Sculpteur” means “sculptor” according to Wiktionary (EXHIBIT 7). This is conceptually distinct from the word “sculpture”. In the context of swimsuits, “sculptor” conveys the idea that the swimsuit will act as a “sculptor” to “sculpt” the wearer’s body, and therefore evokes a process of physical transformation. On the other hand, the word “sculpture” has a much narrower meaning that is usually confined to an inanimate object. As a finished product, it is devoid of any connotations of movement or ongoing process.

    Aurally, because the revoked mark is obviously in French, the relevant consumers would most likely pronounce it as per the word’s proper pronunciation in French. Amongst major fashion brands with a French name, such as Louis Vuitton, Christian Louboutin, Hermès, and Chanel, Australian consumers almost invariable approximate their French pronunciations, rather than pronounce them according to English orthography rules.

17. I would not challenge those submissions but at the same time I do not think that they assist the Applicant.  As stated in the Shell case, “marks are remembered … by general impressions” and even allowing for the small nuances of meaning averred to by the Applicant it remains that the compared terms have a shared linguistic heritage, are visually similar, sound similar when spoken, are of the same length and composure (being, in fact, anagrams), and to those not fully conversant in French might be assumed to have identical meanings.

18. I consider that there is a real tangible danger of deception or confusion occurring in the sense that a significant number of people would have cause to wonder whether it might not be the case that the goods come from the same source. The goods are the same and there is one class of consumers who would avail themselves of the goods. I am satisfied that section 44 of the Act existed as a ground for rejection.

19. Therefore, in the result, taking account of all the circumstances that existed when the application was accepted, I am satisfied that the application should not have been accepted. The first limb of section 38 is accordingly established and so I am now required to consider whether revocation is reasonable, taking into account all of the circumstances existing at the time of the decision whether to revoke. In that regard it has been said that revocation must be reasonable and the reasons for it more than a mere difference of opinion.

20. The Applicant’s submissions are that (i) the Notice did not specify the circumstances that were taken into account; (ii) even if the primary examiner’s decision “was incorrect on the balance of probabilities, it is not a decision that is without basis [since] … there are substantial differences between the [marks] … most notably, they are in different languages”; (iii) the (presently suspended) opposition is the better forum to resolve the issues raised by section 44; and (iv) the Applicant currently has around AUD1,000,000 worth of stock bearing the Trade Mark and has incurred significant marketing expense.

21. I have considered those points but, for the reasons expressed at [17]-[18] above, find that the intention expressed in the Notice could not properly be called a mere difference of opinion. Further, re-examination of the application under section 44 will avail the Applicant of the opportunity to address the examiner on issues such as honest concurrent use or other special circumstances set out in that section. Finally, I cannot appreciate that the Applicant is inconvenienced by unsold stock by reason only of this matter when it otherwise faces opposition from a third party.

22. I find that in all the circumstances it is reasonable to revoke the acceptance of the application.  It follows that the application will be returned to examination. 

    Decision

23. I am satisfied, in terms of section 38(1) of the Act, that the application should not have been accepted and that it is reasonable to revoke its acceptance.

24. Section 38(2) of the Act provides:

    If the Registrar revokes the acceptance:

    a.   (a)  the application is taken to have never been accepted; and

    b. (b) the Registrar must examine, and report on, the application necessary under section 31; and

    c.   (c)  sections 33 and 34 again apply in relation to the application.

25. Accordingly, the application will be returned to examination.

    Debrett Lyons
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    24 June 2019