Re: Opposition by Boohoo.com UK Limited to registration of trade mark application number 1865890 (classes 18, 25 and 35) - Babyboo Fashion in the name of Babyboo Fashion Pty Ltd.AndOpposition by..
[2020] ATMO 98
•2 June 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Boohoo.com UK Limited to registration of trade mark application number 1865890 (classes 18, 25 and 35) – BABYBOO FASHION - in the name of Babyboo Fashion Pty Ltd.
And
Opposition by Boohoo.com UK Limited to registration of trade mark application number 1865891 (classes 25 and 35) – BABYBOO - in the name of Babyboo Fashion Pty Ltd.
And
Opposition by Boohoo.com UK Limited to registration of trade mark application number 1865892 (classes 25 and 35) – BABYBOO - in the name of Babyboo Fashion Pty Ltd.
Delegate:
Louise Tuohy
Representation:
Opponent: Sonia Stewart, Counsel and Dunja Poljak of Clayton Utz.
Applicant: Not represented. Submission by Walsh and Associates.
Decision:
2020 ATMO 98
Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds under ss 42(b), 44, 49, 60, 62A – none established – trade marks to proceed to registration.
Background
1. This is an opposition filed by Boohoo.com UK Limited (‘the Opponent’) under section 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) and relates to three trade mark applications (collectively ‘the Trade Marks’) in the name of Babyboo Fashion Pty Ltd (‘the Applicant’) all filed on the 14 August 2017:
Application No:
1865890
Trade Mark:
BABYBOO FASHION
Priority Date:
14 August 2017
Specification:
Classes 18, 25 and 35[1]
[1] Full specification can be found in Annexure A.
And
Application No:
1865891
Trade Mark:
BABYBOO
Priority Date:
14 August 2017
Specification:
Classes 25 and 35[2]
[2] Full specification can be found in Annexure A.
And
Application No:
1865892
Trade Mark:
BABYBOO
Priority Date:
14 August 2017
Specification:
Classes 25 and 35[3]
[3] Full specification can be found in Annexure A.
2. Acceptance of the applications for possible registration were published in the Australian Journal of Trade Marks on 26 April 2018 for trade mark 1865890 and on 4 January 2018 for trade marks 1865891 and 1865892. The Opponent filed a Notice of Intention to Oppose registration of trade mark 1865890 on 25 June 2018 followed by a Statement of Grounds and Particulars (‘the SGP’) on 25 July 2018. The Opponent filed a Notice of Intention to Oppose registration of trade marks 1865891 and 1865892 on 15 February 2018 followed by the relevant SGPs on 12 March 2018.
3. The Applicant then filed Notices of Intention to Defend trade mark 1865890 on 21 August 2018, and trade marks 1865891 and 1865892 on 27 April 2018.
In due course, the Opponent and the Applicant filled evidence in accordance with the provisions of the Trade Marks Regulations 1995 (‘the Regulations’).
On 24 July 2019 the Opponent requested an oral hearing and that all three oppositions be heard together. The opposition was referred to me as a delegate of the Register of Trade Marks and I heard all three matters on 1 April 2020.
Grounds of Opposition, Relevant Date and Onus
In each of the SGPs the Opponent nominates the grounds of opposition under ss 42(b), 44, 59, 60 and 62A of the Act.
The rights of the parties are to be determined as at the date of the application[4] which is generally, but not always, the filing date[5]. For the purposes of s 44 and 60 which speaks of the priority date, the Relevant date is 14 August 2017 which, in this case, is the same as the filing date of the applications. Sections 42, 59 and 62A, however, do not refer to a filing date or a priority date. However, I will proceed on the basis that the filing date of 14 August 2017 is the Relevant date at which to assess all the grounds in the proceedings[6].
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592 at [595].
[5] See Sections 6, 12 and 72 of the Act.
[6] Apple Inc v Registrar of Trade Marks [2014] FCA 1304 at [45].
The Opponent bears the onus of establishing at least one of the grounds of opposition[7]. The standard of proof is the ordinary civil standard of the balance of probabilities[8].
[7] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 at [32].
[8] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132].
Evidence
Evidence in Support
·Trade Mark 1865890: Statutory Declaration by Catherine Michelle Cotter, Clayton Utz, made on 19 November 2018 with Exhibits CMC-01 to CMC-04 (‘Cotter’).
·Trade Marks 1865891 and 1865892: Statutory Declaration by Thomas Kershaw, Head of Group Legal of Boohoo.com UK, made on 1 August 2018 with Exhibits TK-1 to TK-20 (‘Kershaw’).
Evidence in Answer
·Statutory Declaration by Argylica Marie Conditsis, Director of Babyboo Fashion Pty Ltd, made on 7 November 2018 with Annexures A, B and C (‘Conditsis’).
Additional Material
·Submission of Sonia L Stewart, Counsel for the Opponent and Brett Doyle, Director, Brands & Trade Marks for Clayton Utz made on 18 March 2020 (‘Stewart’).
·Submission of Babyboo Fashion Pty Ltd by its Trade Mark Attorneys Walsh & Associates made on 25 March 2020 (‘Walsh’).
The Opponent’s Evidence in Support
9. The Kershaw Statutory Declaration avers that the Opponent was established in the United Kingdom in 2006[9] and is one of the largest global pureplay online own brand fashion retailers,[10] currently selling its products in over 100 other countries under its principle trade mark BOOHOO.[11]
[9] Kershaw [5].
[10] Kershaw [3].
[11] Kershaw [4].
10. In Kershaw it is stated that the Opponent does not have an office in Australian, instead, the Opponent has historically engaged consultants, marketing and public relations businesses with local expertise to grow the BOOHOO brand in Australia[12].
[12] Kershaw [6].
11. According to Kershaw the word BOOHOO was chosen as the name of the business because the company founders wanted a name which would transition well across global markets and was instantly recognisable to those in the online fashion and accessories markets.[13]
[13] Kershaw [7].
12. Exhibit TK-5 to Kershaw provides a list of the Opponent’s Australian Trade Mark Registrations for the trade mark BOOHOO and for its sub brands BOOHOO FIT, BOOHOO MAN and BOOHOO KIDS in classes 18, 24, 25 and 35.[14] Exhibit TK-6 provides a list of the Opponent’s registered trade marks and pending applications for the trade mark BOOHOO and its sub brands internationally. [15]
[14] Kershaw [14], [TK-5].
[15] Kershaw [15], [TK-6].
13. Confidential Exhibit TK-7 in Kershaw provides annual turnover figures for the Opponent for the financial years 2011-2012 to 2017-2018, which are very substantial.[16]
[16] Kershaw [16], [TK-7].
14. Confidential Exhibit TK-8 in Kershaw is a table showing the approximate percentage of Australian sales attributable to each product sector.[17]
[17] Kershaw [17], [TK-8].
15. Confidential Exhibit TK-9 in Kershaw is a table displaying the unit sales of products sold under the BOOHOO trade mark in Australia since 2012. [18]
[18] Kershaw [18], [TK-9].
16. The Opponent is an online retailer and in Kershaw it is submitted that the Opponent’s principle website is https//boohoo.com[19] and the Opponent’s registered domain name (registered in 2012)[20] redirects to the Australian specific website [21]
[19] Kershaw [9].
[20] Kershaw [11], [TK-3].
[21] Kershaw [11].
17. Exhibit TK-10 in Kershaw provides results for web traffic rankings in Australia under the section ‘Most Popular Websites in Shopping and Classifieds - Apparel and Accessories’ published by Hitwise, for the date 1 August 2017 which shows the Opponent ranks as the fourth most frequently visited website and on 1 July 2017 which shows the Opponent ranks as the sixth most frequently visited website.[22]
[22] Kershaw [19], [TK-10].
18. According to Kershaw, the Opponent’s market share of web traffic in Australia, across desktop, tablet and smartphone devices, published by Hitwise, stands at 1.9% in 2016 and 2.17% in 2017.[23] Furthermore, Exhibit TK-19 to Kershaw provides a copy of the Google Analytics results for the years 2011 to 2017 showing the number of page views for the Opponent’s Australian website Kershaw [19].
[24] Kershaw [25], [TK-18].
19. Confidential Exhibit TK-11 in Kershaw, is the Opponent’s Australian marketing and promotion budget for the financial years 2011-12 to 2017-18, which is high.[25]
[25] Kershaw [20], [TK-11].
20. According to Kershaw the Opponent promotes and advertises its BOOHOO trade marks in Australia through the following channels: collaboration with several international influencers who are known to Australian customers including Pepsi, Paris Hilton and French Montana;[26] social media platforms including Twitter since 2012;[27] media such as billboards, print, newspapers and trade magazines;[28] the publication ‘Style Fix’ which is mainly distributed as a parcel insert;[29] television advertising on free to air stations and Foxtel;[30] and sponsorship of high profile events.[31]
[26] Kershaw [21], [TK-12, TK-13].
[27] Kershaw [26], [TK19].
[28] Kershaw [22], [TK-14].
[29] Kershaw [23], [TK-15].
[30] Kershaw [24], [TK-16], [TK-17].
[31] Kershaw [27], [TK-20].
21. In Kershaw it is stated that on 7 August 2017, the Opponent’s lawyers, Clayton Utz, sought undertaking from the Applicant to: stop using the name BABYBOO; to change the name of its company to something which did not include the word BOO; and to cease using the domain name and related social media handles. Moreover, the opposed Trade Marks were filed on 14 August 2017, exactly one week after its Letter of Demand. [32]
[32] Kershaw [28].
22. The Cotter Statutory Declaration supports the opposition to Trade Mark A and includes the Kershaw Statutory Declaration under Annexure CMC-04.[33]
[33] Cotter [3], [CMC-04].
23. Annexure CMC-01 in Cotter provides details of the Australian Launch of the Opponent’s Spring/Summer 2015 Collection in Sydney and guest list which includes editors, fashion editors, bloggers, influencers and celebrities.[34]
[34] Cotter [2], [CMC-01].
24. Annexure CMC-02 in Cotter is a copy of a report by Tailor Maid Communications, the Opponent’s Australian public relations representative, on its exclusive screening of the film ‘A Rough Night’ on 14 June 2017 for Australian BOOHOO social media influencers.[35]
[35] Cotter [2], [CMC-02].
The Applicant’s Evidence in Answer
25. The Conditsis Statutory Declaration states that since the incorporation of the Applicant on 24 December 2013 the Applicant has continuously used the trade mark BABYBOO (and BABY BOO) in relation to clothing, fashion and associated retail services.[36] Prior to the incorporation of the Applicant the trade mark BABYBOO was used by the Applicant’s predecessor in title Argylica-Marie Conditsis since 2011.
[36] Conditsis [5].
26. Annexure B to Conditsis provides extracts from the Australian Business Registrar, for Trading Name BABY BOO, under the name Argylica-Marie Conditsis, dated 20 June 2011; NSW Government, Certificate of Registration of Business Name, for BABYBOO, dated 21 June 2011, under the name Argylica-Marie Conditsis; and ASIC Certificate of Registration of a Company, for Babyboo Fashion Pty Ltd, dated 24 December 2013.[37]
[37] Conditsis [19], [Annexure B].
27. According to Conditsis the Applicant is primarily an online trader, which has extensive trading infrastructure for supporting its customer base via its website Conditsis [6].
28. Conditsis submits that the name BABYBOO arose out of a nickname used to refer to friends as a term of endearment by the Applicant’s predecessor in title Argylica-Marie Conditsis[39] and was play on the concept that customers (women) wearing the Applicant’s clothing and fashions would morph into a ‘Babe’.[40]
[39] Conditsis [14].
[40] Conditsis [16].
29. In Conditsis it is stated that the Applicant’s predecessor in title Argylica-Marie Conditsis used the Trade Marks as a sole trader in 2011 and Annexure A in Conditsis provides copies of social media pages from Facebook and Twitter showing continued use since 2011.[41]
[41] Conditsis [18], [Annexure A].
30. According to Conditsis the Applicant heavily promotes and advertises the Trade Marks via social media and through its website.[42] Annexure C in Conditsis provides performance data of the Applicant’s business since its inception in 2011 and shows stready growth up to 2017.[43]
[42] Conditsis [27], [Annexure A].
[43] Conditsis [20], [Annexure C].
31. In addition, Conditsis claims that the timing of the Trade Marks filing on 14 August 2017 was a timely business decision.[44]
[44] Conditsis [35].
Discussion
Section 44 of the Act relatively 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.
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
[…]
33. In each of the SGPs the Opponent particularised the section 44 ground of opposition as follows:
The Opponent relies on its Australian Registered Trade Marks:
Number
Classes
Trade Mark
Priority Date
918971
18, 24
Boo Hoo
5.07.2002
1446091
18, 25, 35
BOOHOO
1.09.2011
1477780
25
BOOHOO
5.03.2012
1477782
35
BOOHOO
5.03.2012
1545654
35
BOOHOO
11.03.2013
1720714
25, 35
BOOHOO FIT
18.12.2014
1819951
18, 25, 35
15.02.2016
1839268
18, 25, 35
BOOHOO MAN
12.11.2015
1842224
18, 25, 35
BOOHOO KIDS
31.08.2016
Substantially Identical Trade Marks
34. In assessing whether trade marks are substantially identical the test stated by Windeyer J in Shell Company of Australia v Esso Standard Oil (Australia) Ltd is applied:
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 feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. [45]
[45] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1961) 109 CLR 407 at [414].
35. Furthermore, the Full Federal Court has said that to correctly apply the test set out by Windeyer J in determining whether the trade marks are substantially identical, first determine the ‘dominant cognitive cues’[46]of each of the trade marks under comparison or, in other words, the ‘essential features’ of the trade marks under comparison. The substance of the test itself has not changed.
[46] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56 at [206]; see also Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 at [51].
36. The Opponent argues that there are two ‘dominant cognitive cues’ or ‘essential features’, both of which are present in the Opponent’s trade marks and in the Applicant’s Trade Marks. These are: the dominant presence of the word BOO; and the dominant presence of the sound OO as the final syllable of both marks.[47]
[47] Stewart [62].
37. While the trade marks share the word BOO and the sound OO as the final syllable, the Trade Marks consist of the words BABY and BOO and together forms the word BABYBOO which is visually different to the Opponents BOOHOO trade marks and is used as a term of endearment, whereas the Opponent’s trade marks mean to cry noisily.[48]
[48] Walsh [9].
38. The Opponent further argues that the word BABY is descriptive and therefore must be discounted.[49] However, even by taking away the word BABY from the Trade Marks, the word BOO is visually and aurally different to the word BOOHOO and the word BOO has a different meaning to the word BOOHOO.
[49] Stewart [63].
39. I believe that the different features of the Trade Marks and the Opponent’s trade marks, even though they share the word BOO and the sound OO, means that there are enough dominant cognitive cues present in each trade mark that precludes them from being substantially identical.
Deceptively Similar Trade Marks
Section 10 of the Act defines a ‘deceptively similar’ trade mark as:
[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.
41. The concepts of ‘deceive’ and ‘cause confusion’ were clarified in the New Zealand case of Pioneer Hi- Bred Co v Hyline Chicks Pty Ltd, where Richardson J said:
‘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 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.[50]
[50] Pioneer Hi- Bred Co v Hyline Chicks Pty Ltd [1979] RPC 41 at [423].
In assessing deceptive similarity, the case of Australian Woollen Mills v F. S. Walton and Company Ltd Dixon and McTiernan JJ provided the relevant test for comparison:
[T]he marks ought not…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…The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.[51]
[51] Australian Woollen Mills v F. S. Walton and Company Ltd [1937] HCA 51; (1937) 58 CLR 641 at [658].
43. In relation to deceptive similarity the Opponent argues that the presence of the word BABY in the Trade Marks increases the likelihood of confusion or deception. The word is not likely to be understood as a distinguishing feature, but as a descriptive one, describing a brand extension or extension of the BOOHOO brand for children and/or babies, in the same way that MEN would denote a range for men.[52]
[52] Stewart [72].
44. The Opponent refers to the Australian Register of Trade Marks which contains numerous examples of brands in classes 18, 25 and 35 where there have been brand extensions into clothes, shoes and bags for a younger demographic of customer, including ranges for children and babies. The Opponent argues that this is frequently achieved by adding the word BABY to the main brand or trade mark.[53]
[53] Stewart [72].
45. Brand extension is a widespread marketing device which has been commented on by the Australia Courts.[54] In this instance it is noted that there are three of the Opponent’s trade marks which contain descriptive elements denoting different ranges, for example trade mark 1819951 BOOHOO MAN and trade mark 1842224 BOOHOO KIDS, in which the word MAN denotes a range for men and the word KIDS demotes a range for children, the positioning of the descriptive elements MAN and KIDS appears after the main and distinguishing element BOOHOO, whereas in the Applicant’s Trade Marks the word BABY appears before the word BOO and this word arrangement is likely to influence consumers recollection of it. Moreover, the word BOO looks and sounds different to the Opponent’s trade marks in which the main and distinguishing element is BOOHOO.
[54] Campomar Scoiedad, Limitada v Nike International Limited (2000) 202 CLR 45; (2000) 46 IPR 481; (2000) APIC 91-540 at [87-88].
46. Further, there are conceptual differences between the trade marks. Even if the word BABY was understood to be a descriptive element by consumers and the word BOO is taken to be the main and distinguishing feature of the Applicant’s Trade Marks the word BOO would be familiar to most users of the English language, as would the word BABYBOO, and the word BOOHOO and none of these words has a meaning in relation to the respective goods and services.
47. The trade marks have different meanings and are visually and aurally different, in my opinion, it seems unlikely that the trade marks would be mistaken for each or otherwise denote a common trade course.
48. For the reasons above, I am satisfied there is not a ‘real tangible danger’ that the Trade Marks would be imperfectly recollected as being any of the Opponent’s trade marks so as to cause deception or confusion.
49. The Opponent has not established the ground of opposition under section 44 of the Act.
50. Section 60 of the Act provides:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, 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.
In each of the SGPs the Opponent particularised the section 60 ground of opposition as follows:
The Opponent relies on the reputation that it has built up in its portfolio of trade marks including those consisting of or containing the sign BOOHOO in respect of fashion items including clothing, footwear, accessories, cosmetics, jewellery and giftware.
To establish a ground of opposition under section 60 the Opponent must demonstrate that the trade marks upon which it relies had a reputation in Australia at the priority date and because of that reputation the use of the Trade Marks would likely deceive or cause confusion.
In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in section 60. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’. [55] Her Honour quoted with approval the following words of Lockhard J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:
[55] McCormick & Company Inc v McCormick [2000] FCA 1335 at [81].
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner…[56]
[56] Re ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 at [118].
On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sale or turnover of goods sold under the 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 its esteem, or image, projected by that trade mark. The quantum sale, 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 sponsorship, 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 sale 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 association of the trade marks with the goods or services themselves. [57]
[57] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG [1999] ATMOS 23; (1999) 47 IPS 423 at [426].
As stated above, in assessing reputation under section 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. Heerey J in Le Cordon Blue BV v Cordon Blue International Ltd states (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1995) provided some guidance:
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 …[58]
[58] Le Cordon Blue BV v Cordon Blue International Ltd [2000] FCA 1587; (2000) 50 IPR 1.
56. The Opponent has filed evidence that the Opponent’s trade marks had, before the relevant date, acquired a reputation in Australia and it is persuasive. The Opponent’s trade marks have been well advertised and promoted, not only though more traditional channels such as television and in magazines, but also through social media influencers and sponsorship of high profile horse racing events. The sales figures in relation to the goods and services under the trade marks are very substantial as is the Opponent’s advertising budget in Australia.
57. The evidence before me overwhelming establishes that the Opponent’s trade marks had, prior to the relevant date acquired a reputation in Australia amongst a significant or substantial number of people in relation to clothing, shoes and fashion accessories and online fashion retailing. Therefore, I am satisfied that the first limp of the test for s 60 has been met.
I now turn to whether the existence of the Trade Marks would deceive or cause confusion because of the prior reputation of the Opponent’s trade marks. It is well known that the concepts of deceive or cause confusion are inexplicably linked to how similar the respective trade marks are. In Roger Seller & Myhill Pty Ltd v Reece Pty Ltd[59]the delegate said:
[59] Roger Seller & Myhill Pty Ltd v Reece Pty Ltd[2010] ATMO 5 at [39-40].
Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.
What can be said then of section 60 as we now find it is that it comprehends that the trade marks under comparison might be quite dissimilar, and yet, taken in combination with the repute of the opponent’s trade mark (and possibly other factors), deception or confusion is still more likely than not. Put another way, section 60 now contemplates that an opponent may prevail because of the reputation in the mark on which it relies notwithstanding that the trade marks under comparison may even be quite dissimilar.
In Coca Cola Company v All-Fect Distributors Ltd[60] Kitto J explained that there is no limit on the nature of the confusion and it is enough that the minds of the public are mixed up or perplexed about the relationship between the two trade marks.
[60]Coca Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107 at [39].
It is also important to recognise that reputation can be a double-edged sword which either reinforces or mitigates difference between the trade marks under comparison.
61. On the basis of the Opponent’s substantial reputation both in Australia and Internationally in relation to its goods and services and the differences between the Trade Marks and the Opponent’s trade marks I am satisfied on the balance of probabilities that no such deception or confusion would eventuate if the Trade Marks were accepted for registration in Australia for the Applicant’s goods and services.
62. The ground of opposition under section 60 of the Act has not been established.
Section 42(b) of the Act relatively provides:
Section 42(b) Trade Mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a)…
(b) its use would be contrary to law.
64. In each of the SGPs the Opponent has particularised the section 42(b) ground of opposition as follows:
Having regard to the reputation that other traders, including the Opponent, enjoy in trade marks that are substantially identical with or deceptively similar to the Trade Marks for goods and services of the same description as the Designated Goods and Services or for the goods and services closely related to the Designated Goods and Services (including the Opponent’s trade marks that consist or contain the sign BOOHOO), use of the Trade Marks on the Designated Goods and Services would be misleading or deceptive or likely to mislead or deceive in contravention of section 18 of the Australian Consumer Law and/or would pass off the Applicant’s Designated Goods and Services as and for those of other traders, including the Opponent, or as associated with other traders including the Opponent in breach of the common law and/or would infringe the Registered Trade Marks 918971 (Boo Hoo), 1446091 (BOOHOO), 1477780 (BOOHOO), 1477782 (BOOHOO), 1545654 (BOOHOO), 1720714 (BOOHOO FIT), 1819951 (boohooMAN), 1839268 (BOOHOO MAN) and 1842224 (BOOHOO KIDS) owned by the Opponent in contravention of section 120(1) or (2) of the Trade Marks Act 1995 (Cth).
As with all the grounds of opposition, the onus of proof rest with the Opponent and in that regard the case law on section 42(b) requires it to show that use of the Trade Marks would be, rather than could or might be contrary to law. [61]
[61] Advantage Rent a Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.
There is no relevant misrepresentation that would support this claim. Section 18 of the Australian Consumer Law [62] (‘ACL’) is concerned with misleading or deceptive conduct. I have found that the Opponent failed to establish a ground of opposition under section 60 of the Act and the case law relevant to the ACL has made it plain that section 18 imposes a more stringent test than that for deception or confusion under section 60.[63] Further, the alleged breaches of section 29 of the ACL can also be dismissed since it has been held that where a trade mark does not offend section 18 of the ACL, neither will it offend section 29 of the ACL [64] or constitute the tort of passing off.
[62] Schedule 2 to the Competition and Consumer Act 2010 (Cth).
[63] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; 91982) 149 CLR 191 at [198].
[64] In Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, Beaumont J considered – on connection with the superseded Trade Practices Act 1974 (‘TPA’) that ‘the Court’s conclusion on section 52 would necessarily carry with it a conclusion on section 53 (c) and (d). Sections 53(c) and 53(d) of the TPA are the equivalent provisions to sections 29(1)(g) and 29(1)(h) of the ACL.
The Opponent has not established the ground of opposition under section 42(b) of the Act.
68. Section 59 of the Act provides:
59 Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
69. In each of the SGPs the Opponent has particularised the section 59 ground of opposition as follows:
The Designated Goods and Services are broad. An intention to use the Trade Mark on such a range of goods and services is implausible and enquiries do not support use on all the Designated Goods and Services.
70. The act of applying for registration is taken to be evidence of a real and definite intention to use the trade mark in relation to all the goods and services nominated.[65]
[65] Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at [401].
71. The Full Federal Court in Food Channel Network Pty Ltd v Television Food Network GP found that the applicant’s lack of intention to use its trade mark must be established at the filing date, while acknowledging that “use (or non-use) after the date of application may be relevant in drawing inferences as to the issue of intention as at the date of application”. [66]
[66] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 at [74].
72. In Suyen Corporation v Americana International Ltd Dodds-Streeton J noted:
Because the intention concerns the applicant’s state of mind, it is, as the authorities make clear, difficult for an opponent to discharge the onus it bears under s 59 of the Act. … Opposition has … succeeded where the applicant advances no or no credible evidence of the intention or concedes its absence; or where documents or the circumstances indicate an intention which is, for example, not sufficiently definite, or not directed at use as a trade mark. [67]
[67] Suyen Corporation v Americana International Ltd [2010] FCA 638 at [212].
73. If an opponent establishes a prima facie case the onus shifts to the Applicant to establish that the requisite intention existed at the time of filing.[68]
[68] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100 at [163].
74. In support of its case the Opponent submits that the Applicant’s evidence states that it is a trader only ‘in relation to clothing, fashion and associated retail services’ and not the broad range of goods and services claimed. According to the Opponent this is confirmed by the statement that ‘the Applicant has a unique approach to its BABYBOO fashion promotions and marketing based on the philosophy that women make the clothes work, rather than the clothes make the women. The Applicant markets the concept of the BABYBOO babe that all our customers become when enabled by our products, particularly clothing.’ This is also consistent with the examples of the Applicant’s social media activity at Annexure A to Conditsis and reinforced by the name of the Applicant, ‘BABYBOO FASHION’. [69]
[69] Stewart [43].
75. The Opponent further claims that Applicant has drafted the specification for the opposed Trade Marks after reviewing the Opponent’s registrations and then copying and pasting slabs of the Opponent’s goods and services into the applications for the opposed Trade Marks.[70]
[70] Stewart [44].
76. However, even on the concession contained in Conditsis and Annexure A to Conditsis that the Applicant has an intention in relation to the goods and services albeit limited to clothing, fashion and associated retail services, mere non-use on part of the Applicant does not, of itself, imply a lack of intention to use the Trade Marks on all the goods and services in the Applicant’s specifications. In Suyen Corporation v Americana International Ltd Jacobsen J pointed out that:
There is a long standing recognition that the absence of the requisite intention to use cannot be inferred from lack of use per se, particularly as there may be good reason to defer use until the protection of registration is secured.[71]
[71] Suyen Corporation v Americana International Ltd [2010] FCA 638 at [207].
77. Moreover, the Opponent has provided no cogent evidence which would indicate that the Applicant would be incapable of providing, either alone or together with authorised commercial partners, the goods and services of the opposed applications and to use the Trade Marks across the scope of the specifications.
78. Accordingly, the evidence provided by the Opponent only goes towards non-use and I am not satisfied that the onus has shifted to the Applicant.
79. In relation to the claim that the Applicant’s trade mark specifications have been drafted using ‘slabs’ copied from the Opponent’s goods and services, there is no principle that the onus is displaced simply by an applicant having a specification of goods and services the same or similar to a specification of goods and services in a registered trade mark which is owned by a competitor.
80. The Opponent has not established the ground of opposition under section 59 of the Act.
81. Section 62A of the Act provides:
Section 62A - Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
82. In each of the SGPs the Opponent has particularised the section 62A ground of opposition as follows:
In view of the inherent nature of the Trade Marks and reputation of the Opponent, the Applicant knew or ought to have known that adoption and use of the Trade Marks and the filing of the trade mark applications would deceive or cause confusion amongst consumers or would make a false representation in connection with the Designated Goods and Services and so fell short of reasonable and acceptable business practices.
The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some illustrations of applications made in bad faith:
- persons who monitors new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;
- persons who have a history of applying for trade marks that deliberate misspellings of other registered trade marks; and
- persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.
As these illustrations are not exhaustive, in DC Comics v Cheqout Pty Ltd (‘DC Comics’) Bennet J observes that all of the circumstances surrounding the application to register a trade mark are relevant.[72] Moreover, conduct after the priority date can be used to shed light on the Applicant’s subjective intent at the filing date.[73]
[72] DC Comics v Cheqout Pty Ltd [2013] FCA 478 at [62].
[73] DC Comics v Cheqout Pty Ltd [2013] FCA 478 at [71].
In Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (‘Fry’) Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application:[74]
[74] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; Harrison’s Trade Mark Application [2004] EWCA Civ 1028; [2005] FSR 10.
Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.
… The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[75]
[75] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81 at [147].
Her Honour also considered:
The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.
Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand, or unconscientious character.[76]
[76] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81 at [165-166].
87. In support of its case the Opponent repeats it argument under its s59 grounds and notes the timing between the receipt of the Letter of Demand from the Opponent’s solicitor dated 7 August 2017 and the Relevant date of the Trade Marks.[77]
[77] Stewart [51].
88. The Opponent further contends that given the reputation and significant sales of the Opponent both at the time the Applicant claims to have adopted the Trade Marks, and at the Relevant date, the Applicant either was or ought to have been aware of the Opponent’s use of the BOOHOO trade marks in Australia. Particularly given Ms Conditsis’s stated business experience in the fashion industry over many years and at the time of filing the trade mark applications the Applicant was plainly aware of the specified goods and services in the Opponent’s registered trade marks, because the Applicant seems to have deliberately copied them for the purpose of making its applications.[78]
[78] Stewart [53].
89. According to Conditsis the trade marks were conceived without any prior knowledge of, or influence from, the Opponent[79] and the timing of the filing of the Trade Marks was merely a timely business decision. [80]
[79] Conditsis [15].
[80] Conditsis [35].
90. I note that the Trade Marks were filed within days of the Letter of Demand, and that while the Applicant may not have been aware of the Opponent’s reputation and its use of the BOOHOO trade marks in Australia prior to the adoption of its trade marks, at the time of filing the trade mark applications the Applicant would have been aware of the Opponents trade marks. That said, the mere knowledge, before the filing date, of another person’s trade mark, without more, does not alone constitute the basis for a finding of bad faith[81] and given the Applicant’s knowledge at the Relevant date, its applications to register its Trade Marks might equally be seen as reasonable commercial action to protect what it regarded as its intellectual property.
[81] 1872 Holdings VOF v Havana Club Holdings SA [2017] ATMO 12 at [64].
91. In relation to Opponents argument that the Applicant does not trade in all the goods and services specified in their applications and that large ‘slabs’ of the Opponents specified goods and services have been deliberately copied into the Applicant’s specification of goods and services, I consider the breath of the Applicant’s specifications not uncommon and I agree with the Applicant that it is open to the Applicant to select a statement of goods and services suited to its commercial objectives and ambitions at the Relevant date.[82]
[82] Walsh [88].
92. On balance therefore, there is insufficient cogent evidence before me to infer bad faith, as is clear from Dodds-Streeton J’s ultimate determination in Fry.
93. The Opponent has not established the ground for opposition under s 62A of the Act.
Decision
Section 55 of the Act provides:
55 Decision
(1)Unless subsection (3) applied to the proceeding, 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.
95. I find that the Opponent has failed to establish any of the grounds of opposition nominated in the SGPs. Accordingly, Trade Marks 1865890, 1865891 and 1865892 may proceed to registration not less than one month from the date of this decision. If the Registrar of Trade Marks is served with a notice of appeal within one month from the date this decision, I direct that the disposition of the applications be in accordance with the Court’s direction or order.
Costs
96. All three opposition matters had common evidence and this being the case I award costs against the Opponent in terms of Schedule 9 of the Regulations in the following way:
- Full costs as per scale, for filing the Notice of Intention to Defend on all three matters;
- Full costs as per scale, in relation to trade mark number 1865890; and
- At 20% of the scale in relation to trade mark numbers 1865891 and 1865892.[83]
[83] Hume Industries (Malaysia) Berhad v James Hardie & Co Pty Ltd (2001) 53 IPR 591.
Louise Tuohy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
2 June 2020
Annexure A
Application No:
1865890
Trade Mark:
BABYBOO FASHION
Priority Date:
14 August 2017
Specification:
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes namely briefcases, card cases, suitcases, handbags, wallets, purses, waterbags, credit card holders, diary cases, hat boxes, key cases, straps, luggage labels, note pad holders, animal skins; hides; trunks; belts; cases; handbags; briefcases; wallets; key cases; credit card cases; purses; umbrellas; parasols; walking sticks; shopping bags; cosmetics bags; luggage; suitcases; notepad holders; water bags
Class 25: Clothing; footwear; headgear; clothing, footwear and headgear for exercise and fitness; sportswear; exercise wear; fitness wear; ready-made clothing; outerclothing; underwear; sweaters; sweat pants; pullovers; hooded tops; tee-shirts; jerseys; sports jerseys; sports singlets; vests; jackets; trousers; shorts; leggings; leg warmers; tights; wristbands (clothing); beach clothes; layettes (clothing); swimsuits; bathing caps; clothing for gymnastics; waterproof clothing; theatrical costumes; dancing dresses; shoes; sports shoes; running shoes; hats; caps (headwear); hosiery; socks; gloves (clothing); scarves; belts (clothing); chasubles; sashes for wear; wimples; maniples; shower caps; sleep masks; wedding dresses; Articles of clothing; lingerie; bras; pants; thongs; stockings; tights; suspender belts; camisoles; dressing gowns; negligees; corsets; night dresses; sleep shirts; sarongs; shoulder wraps; leggings; footwear; boots; shoes; slippers; headgear; belts; trousers; shorts; jeans; wristbands; headbands; hats; gloves; jackets; coats; jumpers; shirts; T-shirts; sweaters; vests; trousers; skirts; waistcoats; waterproof clothing; bathing costumes; pyjamas; undergarments; scarves; socks; suits; dresses; blouses; sun visors; anoraks; articles of clothing for leisurewear; articles of clothing for casualwear; articles of clothing for sportswear; articles of outer clothing; articles of weatherproof clothing; blazers; denims; jerseys; knitwear; parkas; sweatshirts; tops; close fitting garments for wind protection; swimwear; mittens; layettes; sashes and shawls; bathing caps; braces; suspenders; collars; cuffs; ear muffs; fittings for boots and shoes; gaiters; garters
Class 35: Retailing of goods (by any means); Advertising; Marketing; Business administration; Retail services, electronic shopping retail services, mail order retail services and shop retail services, all connected with the sale of cosmetics, toiletries, hair care products, beauty care products, fragrances, candles, razors, heated curlers, curling tongs, hair straighteners, scissors, manicure sets, nail files, eyewear, spectacles and sunglasses, cases, chains, straps, cords and frames for spectacles and sunglasses, computers, covers and cases for computers, computer software and programs, software applications, electronic publications, mobile phones, covers and cases for mobile phones, audio and/or visual recordings, CDs, DVDs, electronic storage media, memory cards, cameras, covers and cases for cameras, magnets, electronic devices for use in exercise and fitness, pedometers, lighting equipment, torches, hair driers, cycles and parts and fittings therefor, jewellery, costume jewellery, jewellery charms, lapel pins, cufflinks, tie pins and tie clips, watches and clocks and parts and fittings therefor, key rings, key chains, key fobs, jewellery cases, printed matter, printed publications, books, catalogues, stationery, cards, photographs, prints and pictures, wrapping and packing materials, luggage, bags, travelling bags and cases, sports bags, athletic bags, kit bags, gym bags, beach bags, garment bags, boot and shoe bags, holdalls, back packs, rucksacks, folding bags and cases, handbags, shoulder bags, tote bags, shopping bags, satchels, pouches, toilet bags, cosmetic bags, covers for bags, wallets, purses, card wallets, card cases, credit card holders, key cases, luggage label holders, luggage tags, luggage straps, umbrellas, parasols, walking sticks, furniture, mirrors, picture frames, photograph frames, cushions, pillows, bedding, sleeping bags, bean bags, household or kitchen utensils and containers, brushes, glassware, porcelain, pottery and earthenware, drinking vessels, bottles, water bottles, bottle openers, corkscrews, flasks, ornaments, decorations, tents, textiles, household textile articles, textile piece goods, textiles for making articles of clothing, household linens, bath linen, towels, clothing, footwear, headgear, clothing, footwear and headgear for exercise and fitness, sportswear, exercise wear, fitness wear, badges, belt clasps, brooches and buckles, hat ornaments, hair ornaments, hair slides, shoe ornaments, rosettes, lanyards for wear, wall and floor coverings, games and playthings and parts and fittings therefor, toys and parts and fittings therefor, gymnastic and sporting articles and parts and fittings therefor, exercise and fitness apparatus and parts and fittings therefor; organisation, operation and supervision of loyalty programmes and of sales and promotional incentive schemes; advertising; marketing; promotional services; trade fairs; organisation of fashion shows for commercial or promotional purposes; information, advisory and consultancy services in relation to all of the aforesaid; The bringing together, for the benefit of others, of a variety of goods, namely beauty care products, cosmetics, perfumery, goods of precious metal or coated therewith, bath and bed linen, textile goods, eyewear, sunglasses, jewellery, briefcases, suitcases, handbags, wallets, purses, sport bags, articles of clothing, footwear and headgear, enabling customers to conveniently view and purchase those goods; operation and supervision of loyalty programmes and of sales and promotional incentive schemes; The bringing together, for the benefit of others, a variety of adult novelty products including body lotions, massage oils and creams, skin lubricants, electric massage apparatus, personal vibrators, genital rings, pre-recorded CDs and DVDs featuring adult films or sexual instruction, imitation sexual organs, leather accessories, including whips, wrist and ankle straps, blindfolds, inflatable dolls, clothing and accessories including men's and women's underwear, for customers to conveniently view and purchase such products in a retail store and via a global computer network; mail order and on-line retail and wholesale services in relation to such products; Retail services, wholesale services, mail order services and online retailing in respect of clothing, footwear, headgear, brassieres, corsets (underclothing), singlets, body suits, body dresses, bodices (lingerie), petticoats, leotards, nightgowns, pyjamas, dressing gowns, nightcaps, pullovers, swimming trunks, beach clothes, underwear, bath robes, bikinis, bathing suits, (clothing), slim pants, skirts, undershirts, T-shirts, sweatshirts, shawls, sandals; advertising; business management
And
Application No:
1865891
Trade Mark:
BABYBOO
Priority Date:
14 August 2017
Specification:
Class 25: Clothing; apparel (clothing, footwear, headgear); footwear; headgear for wear; hats; Articles of clothing; lingerie; bras; pants; thongs; stockings; tights; suspender belts; camisoles; dressing gowns; negligees; corsets; night dresses; sleep shirts; sarongs; shoulder wraps; leggings; footwear; boots; shoes; slippers; headgear; belts; trousers; shorts; jeans; wristbands; headbands; hats; gloves; jackets; coats; jumpers; shirts; T-shirts; sweaters; vests; trousers; skirts; waistcoats; waterproof clothing; bathing costumes; pyjamas; undergarments; scarves; socks; suits; dresses; blouses; sun visors; anoraks; articles of clothing for leisurewear; articles of clothing for casualwear; articles of clothing for sportswear; articles of outer clothing; articles of weatherproof clothing; blazers; denims; jerseys; knitwear; parkas; sweatshirts; tops; close fitting garments for wind protection; swimwear; mittens; layettes; sashes and shawls; bathing caps; braces; suspenders; collars; cuffs; ear muffs; fittings for boots and shoes; gaiters; garters
Class 35: Retailing of goods (by any means); Advertising; Marketing; Business administration; Retail services, electronic shopping retail services, mail order retail services and shop retail services, all connected with the sale of cosmetics, toiletries, hair care products, beauty care products, fragrances, candles, razors, heated curlers, curling tongs, hair straighteners, scissors, manicure sets, nail files, eyewear, spectacles and sunglasses, cases, chains, straps, cords and frames for spectacles and sunglasses, computers, covers and cases for computers, computer software and programs, software applications, electronic publications, mobile phones, covers and cases for mobile phones, audio and/or visual recordings, CDs, DVDs, electronic storage media, memory cards, cameras, covers and cases for cameras, magnets, electronic devices for use in exercise and fitness, pedometers, lighting equipment, torches, hair driers, cycles and parts and fittings therefor, jewellery, costume jewellery, jewellery charms, lapel pins, cufflinks, tie pins and tie clips, watches and clocks and parts and fittings therefor, key rings, key chains, key fobs, jewellery cases, printed matter, printed publications, books, catalogues, stationery, cards, photographs, prints and pictures, wrapping and packing materials, luggage, bags, travelling bags and cases, sports bags, athletic bags, kit bags, gym bags, beach bags, garment bags, boot and shoe bags, holdalls, back packs, rucksacks, folding bags and cases, handbags, shoulder bags, tote bags, shopping bags, satchels, pouches, toilet bags, cosmetic bags, covers for bags, wallets, purses, card wallets, card cases, credit card holders, key cases, luggage label holders, luggage tags, luggage straps, umbrellas, parasols, walking sticks, furniture, mirrors, picture frames, photograph frames, cushions, pillows, bedding, sleeping bags, bean bags, household or kitchen utensils and containers, brushes, glassware, porcelain, pottery and earthenware, drinking vessels, bottles, water bottles, bottle openers, corkscrews, flasks, ornaments, decorations, tents, textiles, household textile articles, textile piece goods, textiles for making articles of clothing, household linens, bath linen, towels, clothing, footwear, headgear, clothing, footwear and headgear for exercise and fitness, sportswear, exercise wear, fitness wear, badges, belt clasps, brooches and buckles, hat ornaments, hair ornaments, hair slides, shoe ornaments, rosettes, lanyards for wear, wall and floor coverings, games and playthings and parts and fittings therefor, toys and parts and fittings therefor, gymnastic and sporting articles and parts and fittings therefor, exercise and fitness apparatus and parts and fittings therefor; organisation, operation and supervision of loyalty programmes and of sales and promotional incentive schemes; advertising; marketing; promotional services; trade fairs; organisation of fashion shows for commercial or promotional purposes; information, advisory and consultancy services in relation to all of the aforesaid; The bringing together, for the benefit of others, of a variety of goods, namely beauty care products, cosmetics, perfumery, goods of precious metal or coated therewith, bath and bed linen, textile goods, eyewear, sunglasses, jewellery, briefcases, suitcases, handbags, wallets, purses, sport bags, articles of clothing, footwear and headgear, enabling customers to conveniently view and purchase those goods; operation and supervision of loyalty programmes and of sales and promotional incentive schemes; The bringing together, for the benefit of others, a variety of adult novelty products including body lotions, massage oils and creams, skin lubricants, electric massage apparatus, personal vibrators, genital rings, pre-recorded CDs and DVDs featuring adult films or sexual instruction, imitation sexual organs, leather accessories, including whips, wrist and ankle straps, blindfolds, inflatable dolls, clothing and accessories including men's and women's underwear, for customers to conveniently view and purchase such products in a retail store and via a global computer network; mail order and on-line retail and wholesale services in relation to such products; Retail services, wholesale services, mail order services and online retailing in respect of clothing, footwear, headgear, brassieres, corsets (underclothing), singlets, body suits, body dresses, bodices (lingerie), petticoats, leotards, nightgowns, pyjamas, dressing gowns, nightcaps, pullovers, swimming trunks, beach clothes, underwear, bath robes, bikinis, bathing suits, (clothing), slim pants, skirts, undershirts, T-shirts, sweatshirts, shawls, sandals; advertising; business management
And
Application No:
1865892
Trade Mark:
BABYBOO
Priority Date:
14 August 2017
Specification:
Class 25: Clothing; apparel (clothing, footwear, headgear); footwear; headgear for wear; hats; Articles of clothing; lingerie; bras; pants; thongs; stockings; tights; suspender belts; camisoles; dressing gowns; negligees; corsets; night dresses; sleep shirts; sarongs; shoulder wraps; leggings; footwear; boots; shoes; slippers; headgear; belts; trousers; shorts; jeans; wristbands; headbands; hats; gloves; jackets; coats; jumpers; shirts; T-shirts; sweaters; vests; trousers; skirts; waistcoats; waterproof clothing; bathing costumes; pyjamas; undergarments; scarves; socks; suits; dresses; blouses; sun visors; anoraks; articles of clothing for leisurewear; articles of clothing for casualwear; articles of clothing for sportswear; articles of outer clothing; articles of weatherproof clothing; blazers; denims; jerseys; knitwear; parkas; sweatshirts; tops; close fitting garments for wind protection; swimwear; mittens; layettes; sashes and shawls; bathing caps; braces; suspenders; collars; cuffs; ear muffs; fittings for boots and shoes; gaiters; garters
Class 35: Retailing of goods (by any means); Advertising; Marketing; Business administration; Retail services, electronic shopping retail services, mail order retail services and shop retail services, all connected with the sale of cosmetics, toiletries, hair care products, beauty care products, fragrances, candles, razors, heated curlers, curling tongs, hair straighteners, scissors, manicure sets, nail files, eyewear, spectacles and sunglasses, cases, chains, straps, cords and frames for spectacles and sunglasses, computers, covers and cases for computers, computer software and programs, software applications, electronic publications, mobile phones, covers and cases for mobile phones, audio and/or visual recordings, CDs, DVDs, electronic storage media, memory cards, cameras, covers and cases for cameras, magnets, electronic devices for use in exercise and fitness, pedometers, lighting equipment, torches, hair driers, cycles and parts and fittings therefor, jewellery, costume jewellery, jewellery charms, lapel pins, cufflinks, tie pins and tie clips, watches and clocks and parts and fittings therefor, key rings, key chains, key fobs, jewellery cases, printed matter, printed publications, books, catalogues, stationery, cards, photographs, prints and pictures, wrapping and packing materials, luggage, bags, travelling bags and cases, sports bags, athletic bags, kit bags, gym bags, beach bags, garment bags, boot and shoe bags, holdalls, back packs, rucksacks, folding bags and cases, handbags, shoulder bags, tote bags, shopping bags, satchels, pouches, toilet bags, cosmetic bags, covers for bags, wallets, purses, card wallets, card cases, credit card holders, key cases, luggage label holders, luggage tags, luggage straps, umbrellas, parasols, walking sticks, furniture, mirrors, picture frames, photograph frames, cushions, pillows, bedding, sleeping bags, bean bags, household or kitchen utensils and containers, brushes, glassware, porcelain, pottery and earthenware, drinking vessels, bottles, water bottles, bottle openers, corkscrews, flasks, ornaments, decorations, tents, textiles, household textile articles, textile piece goods, textiles for making articles of clothing, household linens, bath linen, towels, clothing, footwear, headgear, clothing, footwear and headgear for exercise and fitness, sportswear, exercise wear, fitness wear, badges, belt clasps, brooches and buckles, hat ornaments, hair ornaments, hair slides, shoe ornaments, rosettes, lanyards for wear, wall and floor coverings, games and playthings and parts and fittings therefor, toys and parts and fittings therefor, gymnastic and sporting articles and parts and fittings therefor, exercise and fitness apparatus and parts and fittings therefor; organisation, operation and supervision of loyalty programmes and of sales and promotional incentive schemes; advertising; marketing; promotional services; trade fairs; organisation of fashion shows for commercial or promotional purposes; information, advisory and consultancy services in relation to all of the aforesaid; The bringing together, for the benefit of others, of a variety of goods, namely beauty care products, cosmetics, perfumery, goods of precious metal or coated therewith, bath and bed linen, textile goods, eyewear, sunglasses, jewellery, briefcases, suitcases, handbags, wallets, purses, sport bags, articles of clothing, footwear and headgear, enabling customers to conveniently view and purchase those goods; operation and supervision of loyalty programmes and of sales and promotional incentive schemes; The bringing together, for the benefit of others, a variety of adult novelty products including body lotions, massage oils and creams, skin lubricants, electric massage apparatus, personal vibrators, genital rings, pre-recorded CDs and DVDs featuring adult films or sexual instruction, imitation sexual organs, leather accessories, including whips, wrist and ankle straps, blindfolds, inflatable dolls, clothing and accessories including men's and women's underwear, for customers to conveniently view and purchase such products in a retail store and via a global computer network; mail order and on-line retail and wholesale services in relation to such products; Retail services, wholesale services, mail order services and online retailing in respect of clothing, footwear, headgear, brassieres, corsets (underclothing), singlets, body suits, body dresses, bodices (lingerie), petticoats, leotards, nightgowns, pyjamas, dressing gowns, nightcaps, pullovers, swimming trunks, beach clothes, underwear, bath robes, bikinis, bathing suits, (clothing), slim pants, skirts, undershirts, T-shirts, sweatshirts, shawls, sandals; advertising; business management
0
22
1