Re: Opposition by Jolita Pty Ltd to registration of trade mark application 1827003 (25) - Mummactiv (Figurative) in the name of Joanne Elizabeth Shepherd

[2020] ATMO 5

TRADE MARKS ACT 1995

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

Re:Opposition by Jolita Pty Ltd to registration of trade mark application 1827003 (25) – MUMMACTIV (Figurative) - in the name of Joanne Elizabeth Shepherd

Delegate:	Nicholas Smith Decision on the Written Record
Decision:	2020 ATMO 5 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 44, 58A and 60 considered – grounds not established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Jolita Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Joanne Elizabeth Shepherd (‘Applicant’): 

Application Number:

1827003

Filing Date:

20 February 2017

Goods:

Class 25: Athletic clothing; Clothing; Clothing for sports; Clothing for swimming; Combinations (clothing); Dance clothing; Ladies clothing; Maternity clothing; Ready-to-wear clothing; Sports clothing (other than golf gloves); Women's clothing

(‘Applicant’s Goods’)

Trade Mark:

(‘Trade Mark’)

1. Following the advertisement on 13 July 2017 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 12 September 2017.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 11 October 2017, which was rectified by this office to delete improper material on 21 November 2017. The SGP (as rectified) raised grounds of opposition under ss 44, 58A and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 18 December 2017.

   Evidence

2. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 4 April 2018.  This evidence consists of a declaration by Jonathan Shirley, Director of the Opponent, made on 4 April 2018 with Exhibits JS1 to JS4 (‘Shirley 1’). 

3. The Applicant filed Evidence in Answer (‘EIA’) on 11 July 2018.  This evidence consists of a declaration by Joanne Shepherd, the Applicant, made on 5 July 2018 with Exhibits MUM1 to MUM10 (‘Shepherd Declaration’). 

4. The Opponent filed Evidence in Reply (‘EIR’) on 19 September 2018.  This evidence consists of a second declaration by Jonathan Shirley, made on 18 September 2018 with Exhibits JS5-JS7 (‘Shirley 2’). 

5. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  Neither party requested a hearing and on 5 December 2018 a letter was sent to the parties providing them with an opportunity to file any written submissions in this matter.  The Applicant filed written submissions on 20 February 2019 (‘Applicant’s Submissions’).  The Opponent filed written submissions on 4 January 2019 and submissions in reply on 9 July 2019 (collectively ‘Opponent’s Submissions’).  

6. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.  In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

7. The Opponent is an Australian company that offers clothing for sale, targeted at mothers.   The Opponent is the registered owner of the trade mark listed below (‘Opponent’s Trade Mark’).   

Mark	Priority Date	Opponent’s Goods
1768766	4 May 2016	Class 25: Apparel (clothing, footwear, headgear); Athletic clothing; Clothing; Clothing for sports; Maternity clothing; Women's clothing

1. Shirley 1 contains the following claims/statements:

   ·     The Opponent was incorporated on 13 November 2015 and has since 19 February 2016 used the Opponent’s Trade Mark, both separately and in conjunction with the Opponent’s house mark MAMMOJO in relation to activewear for pregnant women and nursing mothers.

   ·     The Opponent maintains a website through which it markets its garments.  The Applicant sells the same goods to the same market under the Trade Mark.  

2. Shirley 2 provides a chronology of the use of the Opponent’s Trade Mark.  Notably the Opponent commenced sale of gift cards with the Opponent’s Trade Mark and commenced sale of the Opponent’s Goods for sale in May 2017 (Shirley 2 states that garments were available for purchase in October 2016 but it appears no products were actually physically accessible to the Opponent until May 2017).  Shirley 2 also provides information as to the without prejudice negotiations engaged in between the parties, information that I have had no regard to in my decision.

   The Applicant

3. The Applicant is an individual that has been operating a business under the name Mummactiv as a sole trader since 22 April 2016.  

4. The Shepherd Declaration contains the following claims/statements:

   ·     The Applicant outsourced the design of the Trade Mark to a third party and at the time of the brief was unaware of the Opponent.  It first used the Trade Mark on 22 April 2016 by publishing it on social media.

   ·     Since 30 April 2016 the Applicant has used the Trade Mark to promote its goods on social media, public events and print media, with the Applicant’s Goods being available for sale from October 2016. 

   ·     The Opponent only launched its business on social media on 13 May 2017.  

   Grounds of Opposition, Onus and Standard of Proof

5. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 44, 58A, and 60 of the Act. To successfully oppose the application the Opponent needs to establish at least one of those grounds. The s 58A ground of opposition is only relevant when the Trade Mark has been accepted because of s 44(4). As noted below I have found that the Opponent has failed to establish the s 44 ground of opposition without reference to s 44(4). Consequently, it is unnecessary that I consider the s 58A ground. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

6. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 20 February 2017 (‘relevant date’), being the filing date of the application in Australia (except in circumstances not present here, in which a different priority date is provided for in the Act).[3]

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

   [2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 44

7. The relevant provisions of the Act with respect to the ground of opposition pursuant to s 44 are reproduced below:

   Section 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)it is substantially identical with, or deceptively similar to:

   (i)            a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)           a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1: For deceptively similar see section 10.

   Note 2: For similar goods see subsection 14(1).

   (2)…

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)            the similar goods or closely related services; or

   (ii)           the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.

   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

8. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that the Opponent’s Trade Mark, being registered by another person:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

9. In the event that each of these requirements are satisfied by the Opponent it may be possible for the Registrar to accept the application if the Registrar is satisfied that there has been honest concurrent use of the Trade Mark, other circumstances exist which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark, pursuant to ss 44(3) and 44(4) of the Act.

10. Both the Opponent’s Trade Mark and the Trade Mark are registered or sought to be registered in respect of clothing.  The Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Mark.  The first and third requirements are satisfied. 

    Substantially identical or deceptively similar

11. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

    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 features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[4]

    [4] (1963) 109 CLR 407, [12].

12. The Trade Mark and the Opponent’s Trade Mark are set out below:

13. In short, the trade marks are utterly dissimilar, with the only possible relevant similarity being the use of (quite different) triangle devices.  I do not accept the Opponent’s Submissions that consumers would see the devices as both representing an ‘M’ and even if this was the case there remain significant differences between the marks.  The differences between the respective trade marks are sufficient for me to conclude that the respective trade marks are not substantially identical.  I move then to consider whether the Trade Mark and Opponent’s Trade Mark are deceptively similar.

14. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

    On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

    Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[5]

    [5] Ibid [13].

15. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

    Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

    First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[6] at [49]; Australian Woollen Mills[7] at 658.

    Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[8] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

    Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

    Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

    Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[9] at 594 – 595.

    Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

    Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

    Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

    Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[10]

    [6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

    [7] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

    [8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

    [9] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

    [10] [2012] FCA 1022, [38]-[46].

16. For the reasons outlined in paragraph 21 above I find that the trade marks are not deceptively similar.  The impression of the respective trade marks, whether visually, aurally or conceptually, is very different.  It would be very unlikely that, even allowing for imperfect recollection, that the use of the Trade Mark will deceive or cause confusion among a substantial number of persons because of any similarity it has to the Opponent’s Trade Mark.

17. In the interests of completeness I note that I do not accept the submissions of the Opponent to the extent that they suggest that the Applicant may only use part of its Trade Mark and for that reason I should find the marks deceptively similar; it is the marks as a whole that must be compared.  Nor do I accept the Opponent’s submission that the respective marks should be found to be deceptively similar because they may be displayed on ‘small, tiny’ tags.  If this were the case then virtually all device marks applied to clothing could be deceptively similar to other device marks.

18. I find that the Opponent has failed to establish the ground of opposition under s 44 of the Act.

    Section 60

19. Section 60 of the Act is reproduced below:

    Section 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.

20. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.[11]

    [11] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

21. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 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’.[12]  Her Honour quoted with approval the following words of Lockhart 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 …[13]

    [12] [2000] FCA 1335, [81].

    [13] (1992) 33 FCR 302, 343.

1. 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 sales or turnover of goods sold under that 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 of sales, 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 sponsorships, 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 sales 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 associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[14]

   [14] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

2. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[15] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide 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 … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[16]

   [15] (2000) 50 IPR 1.

   [16] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

3. Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[17]

   [17] Qantas Airways Limited v Edwards [2016] FCA 729 at [142].

4. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

   The Opponent was registered on 13/11/2015.  Mammojo is the opponent's “house mark” and the Trade Mark is the device used by the opponent, separate from the house mark, in similar fashion to the Nike tick.  The Mammojo business is the Opponent's vehicle for trading in the Goods.  Mammojo was registered as a business name 19/11/2015.  The Trade Mark subject of Registration No. 1768766 as been used by the Opponent before the priority date of the Opposed Mark in respect of the Goods and has been used continuously ever since.

5. The Opponent’s case has two significant issues:  The Opponent’s evidence does not satisfy me that the Opponent used the Opponent’s Trade Mark in connection with the Opponent’s Goods until some time after the relevant date (The Opponent does claim that the Opponent’s Goods were offered for sale from October 2016 but it is unclear if any sales were made prior to the products shipping on May 2017).  Furthermore the Opponent provides no evidence of reputation of either of those marks, including no evidence of sales, advertising, third-party recognition or indeed any use of the mark other than a limited use on its own website (to which no visitor numbers are provided).  In short the Opponent has utterly failed to show that prior to the relevant date, that either the Mammojo mark or Opponent’s Trade Mark had acquired a reputation in Australia.

6. Furthermore, even if the Opponent had a reputation, for the reasons set out in paragraph 21 above the Trade Mark and Opponent’s Trade Mark are so dissimilar that there is no real prospect of confusion. I reach the same conclusion with respect to the Mammojo mark, which is utterly visually dissimilar to the Trade Mark and highly aurally and conceptually distinctive. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act.

   Decision

7. The Opponent has failed to establish any of the grounds of opposition it raised.  Trade mark application no. 1827003 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 that 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 Court’s order or direction.

   Costs

8. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

   Nicholas Smith
   Hearing Officer
   Oppositions and Hearings
   14 January 2020