Quiksilver International Pty Ltd v Ian Martin Bainbridge

[2002] ATMO 24

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 to registration of trade mark application 804084(25) – Quickbilly – filed in the name of Cloudbreak Australia Pty Ltd.

Background

The above-mentioned trade mark application was filed by Cloudbreak Australia Pty Ltd, of Redhead in New South Wales, on 18 August 1999.  On 6 September 1999, the trade mark was assigned to Ian Martyn Bainbridge, a principal of Cloudbreak Australia Pty Ltd.  For convenience, I will refer to Mr Bainbridge and Cloudbreak Pty Ltd as ‘the applicant’.

The applicant seeks registration of the trade mark QUICKBILLY in Class 25 of the International (Nice) Classification of Goods and Services in respect of ‘Clothing, t-shirts, shorts, swimmers, hats, pants, tracksuits”.

Following examination of the application, it was advertised on 15 June 2000 in the Australian Official Journal of Trade Marks as accepted for registration.

On 8 September 2000, within the time allowed to do so, Quiksilver International Pty Ltd (‘Quiksilver’) filed Notice of Opposition (‘the Notice’) to the registration of the trade mark.  Quiksilver is an Australian company of Torquay in Victoria.

On 6 June 2001, after seeking, and receiving, extension of time in which to do so, Quiksilver served its evidence in support of the opposition.  This consists of a statutory declaration by Michael John Owen with exhibits MJO-1 to MJO-13.  Mr Owen is Company Secretary and general Counsel of Quiksilver and attests to the adoption of the trade mark Quiksilver by his company in 1973 and the growth of the use and reputation of the trade mark which is considerable.  Relevant to this opposition, Quiksilver uses its trade mark on beach and surfwear and the QUIKSILVER trade mark has, since its inception in 1973, developed a considerable reputation in relation to these goods.

Quiksilver also has, the evidence shows, numerous registered trade marks – the most relevant and representative of these are:

Number:          274191

Priority Date:    23 November 1973

Class:              25

Goods:            Articles of clothing including casual and beachwear, boots, shoes and slippers

Trade Mark:     QUIKSILVER

Number:          662517

Priority Date:    31 May 1995

Class:              25

Goods:            Clothing, footwear and headgear

Trade Mark:     QUIKSILVER

The applicant has not submitted evidence in answer but has put in submissions by Mr Bainbridge.

Neither party has requested a hearing in this matter, which has, accordingly, come to me as a delegate of the Registrar of Trade Marks for a decision based on the material on the official file. It is apparent to me that the evidence would support argument in relation to grounds in the Notice under sections 44 and 60 of the Trade Marks Act 1995, and, accordingly, I will decide the opposition in terms of those sections.

Reasons

Sections 44 and 60

The applicant’s trade mark is unused and the application is in respect of goods; section 44 therefore provides, as much as is relevant to these proceedings:

Identical etc. trade marks

44.(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.

Section 60 provides:

Trade mark similar to trade mark that has acquired  a reputation in Australia

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

Both sections 44 and 60 have, in common with each other, a test of whether the trade marks in question are substantially identical or deceptively similar. If the trade marks in question are neither substantially identical nor deceptively similar, I need not proceed to the other factors specified for consideration in sections 44 and 60 and the opposition will fail.

In keeping with the above, I will only observe that the goods of the parties are, in terms of section 44, the same goods and, in terms of section 60 the opposition, would obviously succeed if I were satisfied that the trade marks at issue were substantially identical or deceptively similar.

Substantial identity is to be considered on a side-by-side comparison of the trade marks and is an objective test of similarity: Windeyer J in Australian Woollen Mills v F.S. Walton & Co. Ltd (1937) 58 CLR 641 at 658. On this test, the trade marks are obviously different from each other and are not substantially identical.

The tests to be applied in assessing whether trade marks are deceptively similar is the well-known test the well known test as stated, for example, in Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658 and Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1993) 109 CLR 407 at 415. The comparison to be made is one between the impression based on the recollection of the QUIKSILVER mark that persons of ordinary intelligence and memory would have and the impressions those persons would derive from the QUICKBILLY mark. The test is to be applied without the trade marks side by side, and taking into account the market and other surrounding circumstances in which the goods are traded and trade marks are used: Pianotist Co's Appn (1906) 23 RPC 774.

Both trade marks share the ‘suffix’ QUICK - the element QUIK in the trade marks of Quiksilver being phonetically identical to the word ‘quick’ and indistinguishable from it for the purposes of these reasons.  In London Lubricants (1920) Limited's Application to Register a Trade Mark (1925) 42 RPC 264 at 279, (applied by the Federal Court in Conde Nast Publications Pty Ltd v Virginia Taylor [1998] 864 FCA (24 July 1998)), Sargant LJ made the observation:

But the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.

However, the word QUICK is, in my experience, frequent within trade marks and I consider that the public is accustomed to seeing the word QUICK, or its phonetic equivalents, within the trade marks of different traders and, being accustomed to it, thus do not see the commonality of the word element as denoting a common origin in trade.  Thus, the presence of the shared word QUICK can be here distinguished from the principle applied in John Fitton & Co. Ltd's Application (1949) 66 RPC 110 at 113 where the evidence was aimed at “not so much towards showing that the two marks 'Jests' and 'Easyjests’ might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element 'Jest' in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from one and the same trade source.”

Further, the word QUIKSILVER is an obvious phonetic equivalent of the word QUICKSILVER, which is another word used to denote the metallic element mercury.  The word also has metaphorical uses which are used, for instance, to indicate a mercurial temperament.  This, I believe, contrasts with the word QUICKBILLY which has no obvious meaning.  Thus, it is likely that potential purchasers of the goods will view the trade marks as denoting different things and, if the trade marks do bring anything to mind, those things are likely to be quite different.

In Registrar of Trade Marks v Woolworths [1999] FCA 1020 , French J said at paragraph 45:

The position now is that the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

I am not satisfied that there is a reasonable likelihood of deception or confusion; in fact, I am satisfied that there is no likelihood of any deception or confusion.

Decision

Section 55 of the Act provides:

Decision

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.

In terms of section 55, I decide to register the trade mark as Quiksilver has not established its grounds of opposition.

Costs

I have had no submissions as to costs and make no order.  However, I note that Mr Bainbridge does not appear to have incurred any of the costs which are mentioned in Schedule 8 of the Trade Mark Regulations.

Ian Thompson
Hearing Officer

5 March 2002