Re: Opposition by Compagnie des Montres Longines S.A. (Longines Watch Co. Fancillon Ltd) to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark number 1911895

[2020] ATMO 72

TRADE MARKS ACT 1995

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

Re:Opposition by Compagnie des Montres Longines S.A. (Longines Watch Co. Fancillon Ltd) to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark number 1911895 (International Registration number 1392343) (classes 3, 14, 25) -  - in the name of POINT TEC Products Electronic GmbH.

Delegate:	Louise Tuohy
Representation:	Opponent: Russell Waters and Marine Guillou of Phillips Ormonde Fitzpatrick. Holder: Andrew Wiseman and Kimberly Evans of Allens Patent & Trade Mark Attorneys.
Decision:	2020 ATMO 72 Trade Marks Act 1995 (Cth) – opposition to extension of protection under regulation 17A.29 – ss 42(b), 44, 60 and 62A of the Trade Marks Act 1995, ss 42(b), 44 and 60 pressed, opposition not established.

Background

1. POINT TEC Products Electronic GmbH (‘the Holder’) has applied for extension of protection to Australia of International Registration 1392343 (‘the IRDA’). Relevant details of the IRDA are set out below:

   Trade mark:   

   Australian Trade Mark No:               1911895

   Filing Date:       30 May 2017

   Priority Date:  12 December 2016 (based on German application 302016035542)

   Specification:  Class 3: Perfumery; preparation for body and beauty care; soaps; hair lotions

   Class 14: Watches and chronometric instruments

   Class 25: Clothing; footwear; headgear

2. The IRDA was examined as required by regulation 17A.12 of the Trade Marks Regulations 1995(‘the Regulations’).  No ground of refusal was raised and IP Australia advertised its intention to extend protection to Australia in the Australian Official Journal of Trade Marks on 24 May 2018.   

3. On 28 May 2018, Compagnie des Montres Longines, Francillon S.A. (Longines Watch Co., Francillon Ltd) (‘the Opponent’) filed a Notice of Intention to Oppose the extension of protection to Australia of the IRDA pursuant to reg. 17A.33 of the Regulations.

4. On 18 June 2018 the Opponent filed a Statement of Grounds and Particulars (‘SGP’).

5. On 18 July 2018 the Holder filed a Notice of Intention to Defend the IRDA.

6. The parties each filed evidence in accordance with the Trade Marks Act 1995 (‘the Act’) and reg. 21.6 of the Regulations.

7. The parties presented their case before me, a delegate of the Registrar on 2 March 2020.

   Evidence

   Evidence in Support

   ·Statutory Declaration of Walter von Kanel, President of Compagnie des Montres Longines, Francillon S.A. (Longines Watch Co., Francillon Ltd), dated 26 October 2018 with Exhibits WVK-1 to WVK-13 (‘von Kanel 1’).

   Evidence in Answer

   ·Declaration of Nathalie Birk, Head of Sales at POINT TEC Products Electronic GmbH, dated 6 February 2019 (‘Birk’).

   Evidence in Reply

   ·Statutory Declaration of Walter von Kanel, President of Compagnie des Montres Longines, Francillon S.A. (Longines Watch Co., Francillon Ltd), dated 2 April 2019 with Exhibits WVK-1 to WVK-2 (‘von Kanel 2’).

   Additional Material

   ·Submission of Andrew Wiseman, Partner, Allens Patent & Trade Mark Attorneys for the Holder, dated 24 February 2020 (‘Wiseman’).

   ·Submission of Phillips Ormonde Fitzpatrick, Attorneys for the Opponent, filed on 17 February 2020 (‘POF’).

   Preliminary Matters

8. On 2 April 2019, the Holder wrote to IP Australia and applied under reg. 21.19 of the Regulations for the Registrar to take into account the declaration of Lena Balakrishnan which annexes the decisions of the Opposition Division of the EUIPO No. B2958471 and the German Federal Patent Court No. 302016024973.

9. The Holder, submits that these decisions provide an ‘entire picture’ of the subject opposition proceedings[1] and carry a considerable degree of weight given that the comparison of marks under European Union and German trade mark law is virtually identical to Australian law.

   [1] See Man Ag v Beiqui Foton Motor Co, Ltd [2015] ATMO 90, [5-7].

10. At the commencement of the hearing the Opponent asked to be heard on this matter.

11. The Opponent objected to the consideration of this evidence and argued that: unlike the position in Man Ag v Beiqui Foton Motor Co, Ltd[2] the Opponent was not given an opportunity to file further evidence; the Holder’s further evidence seeks to remedy a mistake in the first evidence in answer and does not show the ‘entire picture’; the decision of the German Federal Patent Court No. 302016024973, does not include an English translation as required by reg. 21.2(2)(b) of the regulations; and that the evidence should be given minimal weight.

    [2] Man Ag v Beiqui Foton Motor Co, Ltd [2015] ATMO 90, [5-7].

12. Notwithstanding the lateness of the filing of this evidence, in certain circumstances it may be appropriate for a delegate to take into account material that is filed out of time. As the delegate, I may do so as I am not bound by the rules of evidence but may be informed on any matter in a way that I reasonably believe to be appropriate[3] and/or may take into account information available to me that is relevant subject to the parties having been provided with this information and having a reasonable opportunity to make representations about the information[4]. The application of these provisions is discretionary and a party cannot compel the Registrar or a delegate in this regard.  

    [3] Reg. 21.15(4) of the Trade Marks Regulations 1995.

    [4] Reg. 21.19 of the Trade Marks Regulations 1995.

13. The party who has filed the out of time material must make a compelling case in favour of it being considered.  In this matter I am not satisfied that a compelling case has been made and I decline to consider the evidence.  In particular, I note that the evidence itself, had it been admitted, would have had no impact on my ultimate decision in this matter.

    The Opponent Evidence in Support

14. The Statutory Declaration of Walter Von Kanel (No. 1) deposes the following:

15. The Opponent is a wholly owned subsidiary of the Swatch Group Ltd[5] and is the owner of various trade marks for a winged hourglass device in class 14 including, trade mark numbers: 265852 (Class 14); 494501 (Class 9); and 1581251 (Class 14)[6].

    [5] von Kanel 1 [1].

    [6] von Kanel 1 [3], [WVK-1].

16. The Opponent’s logo consisting of the winged hourglass was first used in 1867 and this logo was systematically stamped on calibres produced by the Longines Factory from 1867 and first registered as a trade mark in 1889. Moreover, although the logo has undergone some minor changes, the main elements of the winged hourglass trade mark have been retained [7].

    [7] von Kanel 1 [4], [WVK-2]

17. The Opponent owns trade mark registrations for the winged hourglass device and for the word LONGINES and winged hourglass device in Australia and a large number of countries throughout the world[8].

    [8] von Kanel 1 [5], [WVK-3].

18. The Opponent submits first commenced use of the winged hourglass trade mark in Australia in 1891 in relation to watches and that use of the winged hourglass trade mark has been continuous since that date[9].

    [9] von Kanel 1 [6], [WVK-4].

19. The Opponent’s goods bearing the winged hourglass trade mark are currently being sold through 83 Australian retailers[10] .

    [10] von Kanel 1 [6]. [WVK-5].

20. The winged hourglass trade mark or the LONGINES and winged hourglass trade mark are used on the crown, buckle of the leather strap or clasp of the metal watchbands of the Opponent’s watches[11]. The Opponent’s trade marks are also applied to the Opponents merchandise including pens, pins, caps, umbrellas, bags, fans, binoculars, ties, blankets, shoe polish sets, luggage tags, holders, portfolios, sunglasses, scarfs and cufflinks[12].   

    [11] von Kanel 1 [7], [WVK-6].

    [12]von Kanel 1 [7], [WVK-7].

21. The Opponent has a long history of involvement and sponsorship in sports timekeeping worldwide and in Australia[13].

    [13] von Kanel 1 [9], [WVK-8].

22. Marked as confidential, the Opponent’s annual sales figures for the years 2012 to 2018 in Australia, are moderate[14].

    [14] von Kanel 1 [10], [WVK-9].

23. The Opponent has spent millions of dollars advertising and promoting the goods bearing the trade marks worldwide. In Australia the advertising and promotion expenditure, marked as confidential, for the years 2012 to 2018, is respectable[15].

    [15] von Kanel 1 [11], [WVK-10].

24. The Opponent promotes its goods bearing the trade marks in Australian media including in newspapers, magazines, television, signage, social networks, catalogues and point of sale material[16].

    [16] von Kanel 1 [12], [13], [WVK-11], [WVK-12].

25. The Opponent also points out that major watchmakers such as Cartier International N.V and Bulgari S.P.A sell watches as well as a variety of other goods including clothing and cosmetics[17].

    [17] von Kanel 1 [14], [WVK-13].

    The Holders’s Evidence in Answer

26. According to the Birk declaration, the Holder is a German Company and has been designing and developing watches for over 22 years[18]. The Holder’s watches have been sold under trade marks that are associated with aviation including Iron Annie, Junkers and Zeppelin[19].

    [18] Birk [8].

    [19] Birk [9-10], [XX-I tab 1], [XX-1 tab 2].

27. Birk submits that between 1997-2017 the logos which accompanied its watch range had a ‘Bauhaus’ design characterised by minimalistic and uniform triangular, tetrahedral and stroke designs. However, in or around 2017, to draw a closer connection with aviation, the Holder created new logos for each in its range. These new logos still included elements of the ‘Bauhaus’ movement, but with additional elements devised from common pilot/military badges[20]. It was through this development that the Trade Mark was created, which notably includes the triangular device and pilot wings[21].

    [20] Birk [12].

    [21] Birk [13].

28. In regards to the Opponent’s ‘winged hourglass’ device Birk states that the documented history of the ‘winged hourglass’ device confirms that it was always the Opponent’s intention for its device to be seen as a ‘winged hourglass’ and that the public have come to recognise the Opponents device is a ‘winged hourglass’[22].

    [22] Birk [14] [XX-1 tab 3].

29. According to Birk, having reviewed the evidence in von Kanel 1, use of the ‘winged hourglass’ device is in immediate proximity of the word LONGINES[23].

    [23] Birk [15].

30. To finalise, Birk has provided a list of the Holder’s overseas registered rights in the IRDA[24] and notes that the Holder has secured protection in a number of countries where the Opponent also has rights, and that the Opponents ‘winged hourglass’ device was not cited against any of the Holder’s applications[25].

    [24] Birk [16], [XX-2].

    [25] Birk [17].

    The Opponent’s Evidence in Reply

31. The Statutory Declaration of Walter Von Kanel (No.2) provides a rebuttal of the assertion by Birk that use of the ‘winged hourglass’ device is in immediate proximity of the word LONGINES, noting that in particular the ‘winged hourglass’ device without the word LONGINES appears on several locations on the shown watches and in particular the crown of some watches, as well as the clasp and buckle of some straps[26].

    [26] von Kanel 2 [4].

32. In addition, von Kanel 2, advises that the list of the Holder’s overseas registrations provided in Birk, refers to German application 30 2016 027 973 and European Union application no. 1, 349, 160, where the Holder stated that ‘Longines filed an opposition which was, however, rejected’[27], yet the oppositions against German application 30 2016 027 973 and European Union application no. 1, 349, 160 are still pending[28]. Moreover, in Turkish application no 2018/30164 (not listed in the Birk Annexure XX-2) the Opponent obtained a favourable decision in an appeal proceeding, where the registration of the Trade Mark was refused over the Opponent’s prior marks[29].

    [27] von Kanel 2 [5].

    [28] Von Kanel 2 [6] [WK-1].

    [29] Von Kanel 2 [6] [WK-2].

    Grounds of Opposition, Relevant Date and Onus

33. In the SGP the Opponent nominates the grounds of opposition under ss 42(b), 44, 60 and 62A of the Trade Marks Act 1995 (‘the Act’). At the hearing the Opponent relied on the ss 42(b), 44 and 60 grounds of opposition.

34. The rights of the parties are to be determined as at the date of the application[30] which is generally, but not always, the filing date[31]. For the purposes of sections 44 and 60 which speaks of the priority date, the relevant date is 12 December 2016 which, in this case, is not the same as the filing date of the application because the IRDA obtains a convention date based on German application 302016035542. Sections 42 and 62A, however, do not refer to a filing date or a priority date. However, I will proceed on the basis that the priority date of 12 December 2016 is the ‘Relevant date’ at which to assess all the grounds in the proceedings[32].

    [30] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, [595].

    [31] See Sections 6, 12 and 72 of the Act.

    [32] Apple Inc v Registrar of Trade Marks [2014] FCA 1304, [45].

35. The Opponent bears the onus of establishing at least one of the grounds of opposition[33]. The standard of proof is the ordinary civil standard of the balance of probabilities[34].

    [33] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

    [34] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132].

    Discussion

36. 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.

    […]

    37.In the SGP the Opponent particularised the section 44 ground of opposition as follows:

    The Opponent is the owner of Australian Trade Mark registrations:

Number	Classes	Mark	Priority Date	Description
265852	14	16 February 1973	winged hourglass
268010	14	4 May 1973	LONGINES and winged hourglass
1581251	14	10  April 2013	winged hourglass
1840686	9, 14, 35	26 June 2016	LONGINES and winged hourglass

Further particulars:

There has been no honest concurrent use of the Opposed Trade Mark with the Prior Trade Mark/s and no other circumstances exist such that the Registrar should be satisfied that it is proper to accept the Opposed IRDA subject to any conditions or limitations that the Registrar thinks fit to impose. The Opposed IRDA was accepted without submissions to the Registrar that would allow for acceptance under s.44(3) or regulation 4.15A(3).

The provisions of subsection 44(4) of the Act should not be applied in favour of registering the Opposed IRDA in relation to any or all of the Goods and/or Services. The Opposed IRDA was accepted without Submissions to the Registrar that would allow for acceptance under s.44(4) or regulation 4.15(A)(5).

Priority date

1. The priority date of the Opponent’s trade marks are 16 February 1973, 4 May 1973, 10 April 2013 and 26 June 2016 respectively, which are earlier than the priority date of the IRDA being 12 December 2016.

   Substantially Identical Trade Marks

2. Although the SGP pleaded both substantial identity and deceptive similarity, the Opponent’s submission only pressed the latter limb, as did those of the Holder.

3. I agree with the parties’ approach, and I am not satisfied that the competing trade marks are substantially identical[35]. Therefore, I turn to the question of whether the competing trade marks are deceptive similarly.

   [35] See Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HVA 66: (1963) CLR 407, [414-415].

   Deceptively Similar Trade Marks

4. 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. 

5. 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[36].

   [36] Pioneer Hi- Bred Co v Hyline Chicks Pty Ltd [1979] RPC 410, [423].

6. 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[37]

   [37] Australian Woollen Mills v F. S. Walton and Company Ltd [1937] HCA 51; (1937) 58 CLR 641, [658].

7. Furthermore, the Full Federal Court has said that to correctly apply the test for deceptive similarity, first determine the ‘dominant cognitive cue’[38]of each of the trade marks under comparison or, in other words, the essential feature of the trade marks under comparison. The substance of the test itself has not changed.

   [38] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56; see also Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83.

8. The Opponent argues that all the signs can be described as ‘a graphic consisting of extended wings’ and with the central figure representing very similar geometrical objects, being broader than the rest of the representation. Average, reasonably informed, observant and circumspect consumer will not perceive the differences between the signs[39].

   [39] POF.

9. I note that all the trade marks comprise the common element of a winged device, however, I believe this is where any similarity between the trade marks ends.

10. In terms of the IRDA and the Opponent’s trade mark numbers 265852 and 1581251 for the graphical device of the winged hourglass, the visual differences between the device elements in the trade marks are apparent. The Opponent’s trade marks consist of a rectangle with and X inside forming a geometric hourglass design and four feathers on either side forming a geometric wing span in descending order, with the wing span starting above and finishing half way down the hourglass, whereas the IRDA contains the words IRON ANNIE and the graphical device of a front of plane which features three triangles converging to form a larger triangle and three separated drooped wing tips in descending order on either side.

11. When comparing the IRDA and the Opponent’s trade mark numbers 268010 and 1840686 and noting the discussion in relation to the device elements above, the meaning and the visual impact of the words IRON ANNIE which refers to the nickname of the Junkers Ju 52 transport aircraft and the word LONGINES which is of French origin and associated with the site of the Opponent’s factory, are so completely different that, in my opinion, it seems unlikely that the trade marks would be mistaken for each other or otherwise denote a common trade source.

1. Moreover, as the Holder argues and I agree, the goods under consideration are luxury items and would be purchased by consumers who are informed and attentive[40].

   [40] Wiseman [4.8].

2. The Opponent proffers a further argument centred around the ‘idea’ of the trade marks as all the trade marks contain a graphic consisting of extended wings with a geometric object in the centre, meaning that even though the trade marks under comparison contain a number of differences they should be considered deceptively similar because of the similar take away impression left with the potential consumer[41].  

   [41] POF.

3. However, considering the high price point of the goods, I maintain that it is unlikely that a purchaser would to be deceived or confused by similarities between the trade marks under which they are sold.

4. I believe that the striking features of the IRDA and the Opponent’s trade marks, even though they share winged devices, means there are enough dominant cognitive cues present in each trade mark that precludes them from being deceptively similar and also prevent the possibility of confusion in the marketplace.

5. The ground of opposition under s 44 of the Act has not been established.

   Section 60

6. 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.

7. In the SGP the Opponent particularised the section 60 ground of opposition as follows:

   The Opponent’s LONGINES name and logo have been used by the Opponent in Australia since at least the early 1970’s in relation to watches and allied products, and have acquired a significant reputation for such products in Australia as a result. Use of the opposed mark in relation to the specified goods is likely to lead to deception or confusion as a result.

8. To establish a ground of opposition under section 60 the Opponent must demonstrate that the trade mark upon which it relies had a reputation in Australia at the priority date and because of that reputation the use of the IRDA would likely deceive or cause confusion.

9. 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’ [42]. Her Honour quoted with approval the following words of Lockhard J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [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…[43]

   [42] McCormick & Company Inc v McCormick [2000] FCA 1335, [81].

   [43] Re ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [118].

10. 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 [44].

    [44] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG [1999] ATMOS 23; (1999) 47 IPS 423, [426].

11. 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 …[45]

    [45] Le Cordon Blue BV v Cordon Blue International Ltd [2000] FCA 1587; (2000) 50 IPR 1.

12. The Opponent filed evidence that its trade marks have, before the relevant date, acquired a reputation in Australia. The evidence before me shows that the Opponent’s trade marks have been well advertised and promoted, through channels such as advertising in magazines, social media, and through the sponsorship or timing of prestigious sporting events.  The sales figures in relation to goods sold under the trade mark are moderate and the advertising figures are respectable.

13. In my assessment, the Opponent’s trade marks had prior to the relevant date a strong reputation amongst a significant number of people in Australia, in relation to its watches and chronometric instruments and are associated with prestige and quality. Even though the sales revenue and advertising expenditure in Australia is not overwhelming, the Opponent through its worldwide activities has demonstrated it also have a spill over reputation in Australia.

14. I now turn to whether the existence of the IRDA 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[46]the delegate said:

    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.

    [46] Roger Seller & Myhill Pty Ltd v Reece Pty Ltd[2010] ATMO 5, [39-40]

15. In Coca Cola Company v All-Fect Distributors Ltd[47] 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.

    [47]Coca Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, [39].

16. 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[48].

    [48] Flight Centre v World Flight Centre [2003] ATMO 60, [22].

17. I have already found that the IRDA is not substantially identical or deceptively similar to any of the Opponent’s trade marks. On the basis of the Opponent’s worldwide reputation in relation to watches and chronological instruments and the differences between the IRDA and the Opponent’s trade marks I am satisfied on the balance of probabilities that no such deception or confusion would eventuate if the IRDA was extended protection in Australia for the Holder’s goods.

18. The ground of opposition under section 60 of the Act has not been established.

19. 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.

20. The SGP the Opponent has particularised the section 42(b) ground of opposition as follows:

    The mark LONGINES name and logo have been used by the Opponent Australia in relation to watches and allied products since at least the early 1970s. The Opponent has extensively distributed, sold and promoted the LONGINES brand by reference to the LONGINES name and logo in Australia including online and through traditional retail outlets. As a result the LONGINES logo has acquired a significant reputation in Australia. Use of the Opposed Trade Mark is likely to mislead or deceive in breach of the Australian Consumer Law and to consitute pass off at common law.

21. 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 Mark would be, rather than could or might be contrary to law [49].

    [49] Advantage Rent a Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

22. There is no relevant misrepresentation that would support this claim. Section 18 of the Australian Consumer Law [50] (‘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 [51]. 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 [52] or constitute the tort of passing off.

    [50] Schedule 2 to the Competition and Consumer Act 2010 (Cth).

    [51] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; 91982) 149 CLR 191, [198].

    [52] 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.

23. The Opponent has not established the ground of opposition under section 42(b) of the Act.

    Decision

24. Regulation 17A.34N(1) of the Regulationsprovides the following:

    17A.34N Decision on opposition

    (1)          Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

    (a)    to refuse protection in respect of all of the goods or services listed in the IRDA; or

    (b)          to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

    having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

25. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Therefore, extension of protection to Australian trade mark application 1911895 may proceed to registration not less than one month from the date of this decision. If the Registrar has been served with a notice of appeal before this time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Courts order or direction.

    Costs

26. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent in terms of Schedule 8 of the Regulations.

    Louise Tuohy

    Hearing Officer

    Oppositions and Hearings

    Trade Marks and Designs

    5 May 2020