Re: Opposition by Australian Black Sheep Pty Ltd to registration of trade mark application numbers 1803056 Australian Ugg Original and 1803057 Australian Ugg Original [stylised] - both in class 25 - both in the..
[2020] ATMO 119
•8 July 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Australian Black Sheep Pty Ltd to registration of trade mark application numbers 1803056 AUSTRALIAN UGG ORIGINAL and 1803057 AUSTRALIAN UGG ORIGINAL [stylised] – both in class 25 – both in the name of Australian Ugg Pty Ltd
| Delegate: | Adrian Richards |
| Representation: | Opponent: Written submissions Applicant: Written submissions |
| Decision: | 2020 ATMO 119 Trade Marks Act 1995 (Cth) – two oppositions under section 52 – grounds of opposition under sections 42(b), 44, 60 and 62A raised – no grounds of opposition established – successful party contributed unnecessarily to the cost of the proceedings – award of costs refused |
Background
On 16 October 2016 (‘Relevant Date’) Australian Ugg Pty Ltd (‘Applicant’) filed two applications for registration of trade marks (‘Trade Marks’) under the Trade Marks Act 1995 (Cth),[1] each claiming footwear in class 25 (‘Goods’). Application number 1803056 is for the plain words AUSTRALIAN UGG ORIGINAL and application number 1803057 is for the same words rendered in the stylised manner reproduced below.
[1] Except where otherwise specified a reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth).
The Trade Marks were examined and each accepted for possible registration with the endorsement ‘Evidence and/or other circumstances provided under subsection 41(4).’ Both were advertised for opposition purposes on 26 April 2018, and on 26 June 2018 Australian Black Sheep Pty Ltd (‘Opponent’) filed notices of intention to oppose registration. Statements of grounds and particulars followed on 26 July 2018 which were assessed by this office for adequacy and then passed on to the Applicant. The Applicant filed notices of intention to defend the applications on 20 August 2018.
The Opponent filed evidence in support of its oppositions on 28 November 2018, and the Applicant filed its evidence in answer on 11 March 2019. The Opponent filed evidence in reply on 14 May 2019 and so the oppositions were ready to be heard.
On 19 June 2019 the Applicant filed requests to be heard on these oppositions. Five days later this office issued to the parties an acknowledgement of those hearing requests. Despite no hearing date having been set at this point, the Applicant filed what purported to be written submissions on 19 July 2019 and, on 22 July 2019, a document apparently seeking to introduce new evidence. On 9 August 2019 this office issued letters to the parties setting a nominal hearing date of 21 October 2019, and drawing the parties’ attention to the statutory deadlines for filing submissions. The hearing was to proceed by way of written submissions.
As is usual the Opponent’s submissions were due to be filed first, on 7 October 2019. The Opponent’s attorney made what I accept to be a very minor error by filing a draft version of the Opponent’s submissions on that day. The final version was filed one day after, on 8 October 2019, with what appears to be slight corrections mainly in relation to spelling and grammar. Nothing in my decision turns on this one day delay.
The Applicant’s submissions were due to be filed on 14 October 2019. The Applicant’s second attempt to file submissions was on 7 October 2019. It then filed what appear to be the same submissions again on 8 October 2019. Accompanying this third set of submissions, however, were documents titled ‘COPIES OF INV’ with heavily altered and marked up copies of pages from the Opponent’s evidence. On 14 October 2019 the Applicant filed submissions for the fourth time, with 93 documents attached. These attachments, running to hundreds of pages, appeared to be an attempt to adduce further evidence a week before the nominal hearing date.
In consequence on 15 October 2019 I wrote to the Applicant allowing it a week to seek an extension of time to file evidence in answer or provide compelling reasons as to why any of its late filed material should be taken into account in deciding these oppositions. Before responding to my request, on 18 October 2019 the Applicant filed yet more submissions, referring to them as the ‘short version’. On 21 October 2019 the Applicant filed a response to my letter arguing among other things that there was no new material and that all of it was crucial to the outcome in these proceedings. After considering the Applicant’s arguments I advised the parties that the new material would be given no weight and provided my reasons for coming to that conclusion. I also stated that my decision on the oppositions would issue in the normal course.
The Applicant responded to my letter on 30 October 2019 but given what I had already stated in my letter of 22 October 2019 no reply seemed necessary. On 4 November 2019 the Opponent filed a third version of its submissions, this time marked up with tracked changes, attempting to further correct typographical errors. I did not see a reason to respond to this, but the Applicant did. On 7 November 2019, it filed yet more submissions. Again, I did not see any reason to respond.
Evidence
The properly filed evidence in both oppositions was materially the same. Brief details follow:
Evidence in support
Declaration of David Shoolman, patent and trade marks attorney for the Opponent, made 28 November 2018 with annexures DS01 to DS03Evidence in answer
Declaration of Vadim Sergienko, Sales Manager of the Applicant, made 11 March 2019 with annexures VS-01 to VS-08
Evidence in reply
Declaration of Peter Szpilczak, Managing Director and Secretary of the Opponent, made 14 May 2019 with annexures PS001 to PS008
The Opponent’s evidence in support is largely concerned with introducing evidence of use of its own trade marks and detailing correspondence it had with the Applicant prior to the Relevant Date. The Applicant’s evidence in answer not only leads evidence of use of the Trade Marks, but also seeks to show that aspects of the Opponent’s evidence of use was fabricated. In support of this very serious allegation, the Applicant relies on a forensic analysis report prepared by the Centre of Forensic Examinations and Inquiry, an organization said to be registered in the Russian Federation. Despite the effort apparently expended by the Applicant in relation to making good this rather unusual claim, for reasons of onus it has been unnecessary for me to refer to it in any detail while considering the grounds of opposition. The Opponent’s evidence in reply offers more evidence of use of its own trade marks and annexes details from the prosecution of the Trade Marks through examination.
Grounds and onus
Both statements of grounds and particulars nominate grounds of opposition under ss 42(b), 44, 60 and 62A. While it is routine to observe at this point that the onus falls on the Opponent[2] to show that any one of those grounds are established, this is of particular significance in relation to the Opponent’s failed pursuit of ss 42(b) and 60 and to the Applicant’s unnecessary acquisition of forensic services to scrutinise the evidence in support. All findings of fact herein are on the basis of the balance of probabilities[3] and the rights of the parties are assessed as they were at the Relevant Date.[4]
Discussion
[2] Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4 [16]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[3] Ibid.
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
Section 44
The aspects of this ground of opposition relevant to my discussion are below:
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 …
(ii) … 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 …
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.
The Opponent nominates three of its registered trade marks as forming bases for this ground of opposition. All three are registered in respect of footwear in class 25. Other pertinent details of each follow:
Registration number: 1533144
Priority date:24 February 2014
Representation:Endorsement: Provisions of subsection 41(5) applied.[5] Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.
[5] This endorsement appears to erroneously refer to a subsection of s 41 as it was before the section was replaced by amendments set out in the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth), which commenced on 15 April 2013. The current equivalent provision, and what most likely should have been recorded in the endorsement, is s 41(4). That provision, as can be seen below, was recorded as an endorsement to registration 1651711.
Registration number: 1605856
Priority date:24 February 2014
Representation:Endorsement: Provisions of paragraph s44(3)(b) and/or Reg 4.15A(3)(b) applied.
Registration number: 1651711
Priority date:9 October 2014
Representation:Endorsement: Evidence and/or other circumstances provided under subsection 41(4) applied. Provisions of paragraph s44(3)(b) and/or Reg 4.15A(3)(b) applied.
Each of these registered marks are in the name of someone other than Applicant, are from before the Relevant Date and are registered in respect of precisely the same goods as claimed by the present applications. The only question requiring analysis here is whether any of these three marks are substantially identical with or deceptively similar to either of the Trade Marks. The Opponent’s submissions give a short account of the similarities and differences and submits that each of the applied for marks is ‘at minimum’ deceptively similar to all three of the Opponent’s marks. The Applicant’s submissions simply assume that these marks are deceptively similar. I disagree with the submissions of both parties on this issue.
The reason for my departure from the parties relates to the descriptiveness of all of the textual elements in each of the marks in comparison,[6] the significance of which will necessarily be subject to discounting when comparing marks.[7] The word UGG is a type of footwear, and as such is not capable of distinguishing of the goods.[8] ORIGINAL/S in each of the contexts in which they appear may simply be understood as the first version, style, or (somewhat less likely) the earliest trade source, of that species of footwear. AUSTRALIA/N is a standard, and almost certainly the most used, geographical reference in this country. ESTABLISHED/SINCE [year] is a common motif for a trader to advertise how long it has been engaged in commerce.
[6] Frigiking Trade Mark [1973] RPC 739, 752 (Whitford J).
[7] Coca-Cola Co of Canada Ltd v Pepsi-Cola Co of Canada Ltd (1942) 59 RPC 127, 134 (Viscount Maugham, Lords Thankerton, Russell of Killoween, Macmillan and Clauson) (Privy Council).
[8] Deckers Outdoor Corp v B & B McDougall (2006) 68 IPR 322, 329 [34] (Hearing Officer Thompson).
As can be seen from the s 41(4) endorsements to each of the Trade Marks and to registrations 1533144 and 1651711, all four of these marks were considered by a delegate of the Registrar of Trade Marks to be to some extent but not sufficiently adapted to distinguish the footwear of the Applicant and the Opponent respectively from the footwear of other traders. The only reason any were accepted is because the parties provided evidence that each of those marks had or was likely to acquire some meaning—beyond their plainly descriptive meaning(s)—that would in fact permit relevant consumers to distinguish footwear offered in relation to the respective trade marks from others.
That registration 1605856 does not include this same endorsement is telling. While it carries similar elements to the others, this mark appears as a curved brass plate with an ornate rope effect border. It will have been those features that allowed this mark to be accepted by a delegate without the need for evidence under s 41. To put it plainly, it was considered capable of performing as a trade mark despite its text.
Given all of this (except for the non-textual elements of registration 1605856) it follows that the scope of protection afforded by any of these marks is minimal indeed. The reversal of the words in AUSTRALIAN UGG ORIGINAL and ORIGINAL/S UGG (AUSTRALIA) alone is sufficient to distinguish between the goods of the parties. What is more, those words as they appear in their respective orders are visually, aurally and conceptually distinct. In my view neither of the Trade Marks is deceptively similar to nor substantially identical with any of the Opponent’s nominated marks, so this ground of opposition is not established.
Section 60
The first limb of this ground of opposition requires that the Opponent demonstrate that at the Relevant Date another trade mark held a reputation in Australia. The Opponent nominates the trade mark appearing in registration 1533144 as that other mark. Its submissions refer to the ‘extent and duration of use’ of this mark as giving rise to the necessary degree of reputation to form a basis for this ground. This is said to have been substantiated by 33 invoices spanning over 20 years for small quantities of footwear sold mostly to retailers. No aggregate sales figures nor evidence of advertising expenditure whatsoever has been offered. This type of evidence is not enough to support a claim under this ground of opposition. The authorities contemplate ‘direct evidence of consumer appreciation of the mark’ or more commonly inferring a reputation from ‘a high volume of sales, together with substantial advertising expenditures and other promotions’.[9] Such evidence is needed because the reputation must be shown to have been appreciated by ‘a significant or substantial number of persons’.[10] Records of modest wholesaling to 33 or so businesses over the course of 20 years does not permit me to infer an appreciation of this trade mark among a significant or substantial number of persons in the market for footwear (being almost the entire population of Australia). The Opponent has failed to establish this first limb, meaning its second limb cannot be tested and consequently this ground of opposition cannot be established.
[9] See, eg, McCormick & Co Inc v McCormick (2000) 51 IPR 102, 129 [86] (Kenny J).
[10] Le Cordon Bleu BV v Cordon Bleu International Ltee (2000) 50 IPR 1, 19 [91] (Heerey J).
Section 42(b)
The Opponent’s case in relation to this ground of opposition asserts that use of the Trade Marks would be contrary to s 18 of the Australian Consumer Law[11] and the tort of passing off. Both rely on the reputation alleged in relation to the ground of opposition under s 60. Since no such reputation has been shown, it follows that neither of these laws would be contravened by use of the Trade Marks. This ground of opposition is not established.
[11] Competition and Consumer Act 2010 (Cth) sch 2.
Section 62A
This ground of opposition alleges that the act of filing of the applications of the Trade Marks was in bad faith. The Opponent’s evidence relies almost exclusively on the fact that it sent a letter to the Applicant five days before the Relevant Date. This does not in my view raise any issue about a filing made in bad faith. While it has been unnecessary for me to assess in any detail the Applicant’s evidence of use, that evidence has been provided and at least purports to extend back to 2009. The Opponent’s letter refers to its three registered trade marks all with priority dates in 2014. No assertion of earlier use or reputation is made in the letter. As such, in filing these applications, the Applicant was apparently seeking to protect any goodwill or reputation that had already attached to the Trade Marks by virtue of their potentially earlier use. In this context moving to file for registration cannot be coloured as having been in bad faith, so this ground of opposition is not established.
Decision and costs
Section 55 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.
The Opponent has failed to establish any of the nominated grounds of opposition. As such, both of the Trade Marks may proceed to registration one month from the date of this decision. If the Registrar of Trade Marks is served with a notice of appeal for either of the Trade Marks before that time, its registration shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of the opposition should be in accordance with the Court’s order or direction.
The Opponent has asked that costs be awarded. It is usual for costs to follow the event, but where the conduct of any party has contributed unnecessarily to the cost of the proceedings, it may be appropriate to either refuse to award costs or award costs against the successful party.[12] Failure to file submissions in accordance with the statutory timetable is another relevant factor in deciding upon an award of costs.[13] The Applicant’s repeated attempts to lead unnecessary evidence and file extra submissions well after they were due have contributed unnecessarily to the cost of the proceedings. Had it been that the Applicant’s late filings directly led to its success here I would have been inclined to award costs against the Applicant, even more so had proceedings been delayed to permit the Opponent to put on further evidence or submissions in response to the Applicant’s late filings. But it happens that the Applicant has been successful not due to its late filings but because the Opponent’s evidence was insufficient. As such I consider it appropriate that the parties bear their own costs, and I decline to award costs in relation to both of these oppositions.
[12] Millington v Fox (1838) 1B IPR 321 (Cottenham LC).
[13] Trade Marks Regulations 1995 (Cth) reg 5.17(7).
Adrian Richards
Hearing Officer
Delegate of the Registrar of Trade Marks
8 July 2020
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