Quiksilver International Pty Ltd v CK Clothing Pty Ltd

[2003] ATMO 52

TRADE MARKS ACT 1995

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

Re:Opposition by Quiksilver International Pty Ltd to registration of trade mark application 856751(25) - OXY - filed in the name of CK Clothing Pty Ltd.

Date of Decision:	11 September 2003
Delegate:	Ian Thompson
Representation:	Opponent Tim Allen of Corrs Chambers Westgarth Applicant Adam Sears of Davies Collison Cave
Decision:	1. Section 52 Opposition: s 55(b) registration allowed. 2. Costs awarded against opponent.

Background

1. CK Clothing Pty Ltd ("the applicant") of Preston, Victoria, filed trade mark application no. 8566751 on 10 November 2000 ("the priority date").  The application seeks registration of the trade mark OXY in respect of "Clothing, footwear" in Class 25 of the International (Nice) Classification of Goods and Services.

2. Advertisement of its acceptance for registration was advertised in the Australian Official Journal of Trade Marks on 15 March 2001

3. On 13 June 2001, Quiksilver International Pty Ltd ("the opponent") of Torquay, Victoria, filed notice of opposition to registration of the trade mark. Seven grounds of opposition were listed in the notice – however, at the hearing of the matter, the opponent relied on those grounds under sections 42, 44 and 60 of the Trade Marks Act 1995 ("the Act").

4. The parties have duly served and filed evidence in support and evidence in answer.  At the end of the process, the matter came to a hearing before me, as a delegate of the Registrar, in Melbourne, on 17 June 2003.  Mr Tim Allen of Corrs Chambers Westgarth represented the opponent.  Mr Adam Sears of Davies Collison Cave represented the applicant.

   Evidence

5. The evidence in support of the opposition is a statutory declaration by Michael John Owen who is Company Secretary and General Counsel of the opponent.  The statutory declaration which is evidence in answer is by Adam Matthew Sears.  Mr Sears is solicitor for the applicant.

6. Put briefly, the evidence shows that the opponent is a subsidiary of Quiksilver Inc (‘QI’) of California, USA.  In 1991, QI started using the trade mark ROXY on swimwear and in 1992 extended that use to clothing.  It is not clear from the Mr Owen’s declaration when the ROXY trade mark was first used in Australia, although he does give a figure for wholesale sales for goods bearing the trade mark ROXY in the year ending 30 June 2001 and these figures were substantial.  This shortfall in detail in Mr Owen’s declaration has no impact on the outcome in this matter.

7. Mr Owen’s declaration brings into evidence a number of registrations which include the word ROXY – the closest of these to the opposed trade mark is 793032 which is registered in Class 25 for ‘articles of clothing including wetsuits, footwear and headgear.’  The earliest registration in Class 25 owned by the opponent which includes the word ROXY is 600455 which has a priority date of 14 April 1993 – the assignment of this registration to the opponent by Deed of Assignment from Mango (Aust) Pty Ltd is dated 26 November 1998 and was recorded on 7 December 1998.

8. Mr Sears’ declaration brings into evidence some dictionary definitions of the words ROXY and/or OXY and a search of the Trade Marks Office data base of applications and registration of the part word OXY.  I will discuss some of this evidence under the heading Reasons, below.

   Reasons

9. The grounds under which this opposition is pursued fall under sections 42, 44 and 60 of the Act. Common, and central, to each of these grounds is a consideration of the resemblance that the trade marks of the parties have to each other. For any of the grounds to be established by the opponent, the trade marks are required to be, as a minimum, deceptively similar.

10. The expression ‘deceptively similar’ is defined at section 10 of the Act which provides:

    10  Definition 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.

11. Deceptive similarity was considered in Registrar of Trade Marks v Woolworths [1999] FCA 1020, above, by French J. At paragraph 50 he said:

    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.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (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."

12. Additionally, in Re Application by the Pianotist Co Ltd 1A IPR 379 at 380; (1906) 23 RPC 774 at 777, other factors which are to be taken into consideration were stated by Lord Parker (then Parker J):

    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 -- then you may refuse the registration, or, rather, you must refuse the registration in that case.

13. Mr Allen and Mr Sears both drew my attention to the tests for determining deceptive similarity which are set out by Windeyer J in Shell Co (Aust) Limited v Esso Standard Oil (Aust) Limited (1961) 109 CLR 407 at 414-415.

14. Mr Allen submitted that when determining the question of whether the marks are deceptively similar in accordance with the above tests, the Hearing Officer must consider notional use of the OXY mark, that is, assuming use in a  “normal and fair” manner for the goods covered by the application: Evershed J in Smith Hayden & Co Limited’s Application (1946) 63 RPC 97. In this regard, Mr Allen submitted a typed page showing the representations of the trade marks of the parties shown side by side in several fonts – these fonts appear to be more fancy than Times new Roman or Garamonde, for example: they are not plain type fonts.

15. Mr Allen drew my attention to the statutory declaration by Mr Sears in evidence and submitted that:

    Through the use of the letter X in combination with the particular letters “O” and “Y” word OXY is unusual and accordingly has a strong visual impact.

    This is supported by the fact that the word “OXY” has no meaning in the English language in and of itself. Exhibit AMS-1 to the Statutory Declaration of Adam Sears, submitted by the applicant as evidence-in-answer, reveals that OXY is defined in some English dictionaries as a “combining form” of Greek origin. However, as Exhibit AMS-1 also reveals, OXY appears as a prefix to only a handful of English words, the majority of which have a very particular medical or scientific meaning, and are not in common usage among the ordinary population. Words which include the letters “OXY” accordingly form a very small part of the English language, and would be used only by a small number of people in highly specialised professional contexts. 

    Accordingly, the existence of this handful of other words does not affect the fact that the combination of the letters OXY is likely to be regarded as unusual and memorable in the mind of the ordinary purchaser.

16. On the other hand, Mr Sears submitted that:

    When comparing marks due regard must be given to the idea that the marks convey (re: Broadhead's application (1950) 67 RPC 209, at 215). The likelihood of deception or confusion between marks is also reduced if one of the marks has a known meaning whereas the other does not (see Deeko Australia Pty Ltd v Décor Corp.Pty Ltd (1988) A.I.P.C 90-479 at 38,194 (Deeko v Décor)). A fortiore, the risk is reduced if both marks have different meanings.

    OXY has a number of known meanings, being a derivation of the Greek word for “sharp” or "acute", and a reference to a substance containing oxygen, such as oxyacetylene.  The word OXY is also an abbreviation for the word oxyacetylene.  See statutory declaration of Adam Matthew Sears at paragraph 3 and exhibit AMS-1. 

    ROXY also has a known meaning, being an adjective used in relation to clothing which denotes showiness or flashiness. See declaration of Adam Matthew Sears at paragraph 3 and exhibit AMS-1 – the Macquarie Dictionary.  In this regard ROXY has a somewhat descriptive meaning in relation to clothing.

    The fact that ROXY has a descriptive reference to clothing is a further point of distinction. In Conde Nast Publications Pty Ltd v. Virginia Taylor 41 IPR 505 Burchett J., in finding that the marks VOGUE and EUROVOGUE with device were not deceptively similar stated at page 511 that:

    “At the same time, it should be borne in mind that ‘vogue’ is neither a made up word nor a word wholly without any direct application, in the ordinary use of language to the goods in question.”

    The decision in the Conde Nast case was also applied in Bose Corporation v. QSL Audio Products Inc [2002] ATMO 118 (20 December 2002) at page 14 in deciding that the trade marks POWERWAVE and WAVE were not deceptively similar.

17. I think that the opponent’s concern about the applicant using a font similar to the one in which their ROXY trade mark is rendered is misplaced.  The fonts shown to me at the hearing are not plain ones and I have an initial concern that similarities which I might see could be dictated by the similarities in the fonts: it is quite possible that two trade marks which are actually quite dissimilar might appear to be similar when rendered in the same fancy font.  Additionally, the applicant is by now aware of the opponent’s trade mark because, at least, of these proceedings.  I have a concern that if I were to take notice of this line of argument, I would be imputing a course of dealing or behaviour to the applicant which is not borne out in the evidence.  I would be supposing what the applicant might do were it to act in bad faith where there is no evidence that the applicant has acted so.  This imputation would thus take the test beyond that in Smith Hayden.

18. I think that it is of relevance that the word ROXY has a meaning – that is, according to the Macquarie Dictionary, as denoting “showy; flashy” which is used as an adjective in relation to clothing or decor.  The word ROXY is also used as a female forename.  It is difficult to assume that many people in Australia would be aware that the combining form OXY- denotes sharpness and is derived from the Greek word ‘oxus’.  However, I think that most people would view the word has having some sort of relationship to the word ‘oxygen’.  The two words, OXY and ROXY must therefore be taken, I consider, to have at least some degree of familiarity to most Australians who, although some similarity between the words might be noted, would view the trade marks as denoting different things and as being otherwise unrelated.

19. Mr Allen also drew my attention to aural similarities between the trade marks.  He said:

    As detailed above, consideration of deceptive similarity between two marks also requires a comparison of the marks as they sound.

    The phonetic and aural similarities between ROXY and OXY are also obvious and significant.

    Even from a non-technical perspective, it is obvious that both words consist of two syllables, which are identical save for the initial sound created by the letter ‘R’ in the case of ROXY.

    However, when the words are put into the context of how they are used, the relevance of this “R” sound in differentiating the two marks diminishes significantly.

    In Re Application by Rysta Ltd (1943) 60 RPC 87 at 108, Luxmore J said:

    The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of section 12 of the Trade Marks Act 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows one word, and has perhaps an imperfect recollection of it, who is likely to be deceived and confused… The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person’s wants. 

    The tendency to slur a word beginning with ‘a’ is, generally speaking, very common. and the similarity between ‘Rysta’ and ‘Ristoc’ would, I think be fairly obvious. It would not surprising to learn that a person asking for ‘Aristoc’ stockings from a shop assistant who only knew of ‘Rysta’ stockings has been supplied with the latter and vice versa”.

    It is submitted that the effect of careless pronunciation is of particular relevance in the present case. In cases where a word begins with a vowel, the last consonant of the preceding word in the sentence will frequently intrude, to aurally become the first sound of that second word.   In sentences where that last consonant is an “R”, the potential for confusion is great.

    For example, in the following statements the marks sound virtually identical:

     I prefer OXY clothes; I prefer ROXY clothes;

     I like to wear OXY shoes; I like to wear ROXY shoes; and

     I’m wearing a blue T-shirt over OXY bikinis; I’m wearing a blue T-shirt over ROXY bikinis.

20. There are, I think, limits to the consideration of the surrounding circumstances which is espoused in Pianotist, and how far phonetic similarities as per Rysta, above, can be taken.  What is, or what is shown to be, normal in the particular commercial environment of the case defines those limits, or boundaries.  While I would readily agreed with Mr Allen that the two trade marks show marked similarities when used in the contexts of the expressions he has given, it is, I think, unrealistic for me to suppose that any of the above expressions might be used regularly, if at all, in a commercial environment where the goods are bought and sold.  The expressions do not strike me as normal requests for goods or assistance in a purchase as might be made in a commercial environment involving the goods in question.  It is easy to postulate examples of what might happen with various goods in various circumstances.  For example, a person might ask at a service station, “I need some oil for my car trip, Castrol please.”  This request might be very similar to an analoguous request for TRIPCASTROID; however, cases such as London Lubricants (1920) Ltd's Application, (1925) 42 RPC 264 (CASTROL/TRIPCASTROID) show that rational consideration of evidence of what does occur the commercial environment is what confronts the decision maker, not speculated and unsupported supposition about what might happen.  The trade marks, when in use, do not exist in a vacuum and the circumstances of the marketplace in which they are used must be considered but the consideration must be based on realistic and not speculated and improbable circumstances.  The opponent has not submitted evidence which shows that the above expressions are used regularly in the commercial environment and the expressions are such that I consider that it would be unusual if they were.

21. The trade marks here in question are different in appearance, meaning and sound. Whatever similarities exist between the trade marks are not such that the trade marks fall in the ambit of the expression ‘deceptively similar’ within the meaning of the Act. Accordingly, the opponent cannot establish the grounds which were argued at the hearing. Thus, the opponent has not established its grounds under sections 42, 44 and 60 of the Act.

22. I will add that the evidence led by the opponent is not such that it establishes that the trade mark ROXY had sufficient reputation at the priority date to found its opposition in terms of sections 42 and 60 of the Act. It is not possible to gauge from the evidence the extent of the opponent’s ROXY trade mark in Australia or the precise nature of the goods on which it was used, and, while I accept that the trade mark ROXY has been used in relation to some clothing elsewhere in the world, the evidence of that use is not of such precision and breadth, or provide such information, that it would bring the case within the considerations outlined in ConAgra Inc v McCain Foods (Australia) Pty Ltd, (1992) 33 FCR 302.

    Decision

23. I find that the opponent has been unsuccessful under the grounds of opposition pressed at the hearing. I therefore direct that (subject to payment of the registration fee) the trade mark application may 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.

    Costs

24. Both parties have sought their costs in this matter. It is usual for costs to follow the event. Accordingly, I award costs, in terms of the official scale, against the opponent.

    Ian Thompson
    Hearing Officer
    Trade Marks Hearings
    11 September 2003