Re Opposition by Luxottica Group SpA to registration of trade mark application 1827778 (9) ROGUE Eyewear in the names of Anthony Ghosen and Tiger Vision Pty Ltd

[2020] ATMO 12

TRADE MARKS ACT 1995

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

ReOpposition by Luxottica Group SpA to registration of trade mark application 1827778 (9) – ROGUE EYEWEAR - in the names of Anthony Ghosen and Tiger Vision Pty Ltd

Delegate:                 Robert Wilson

Representation:       Opponent: King & Wood Mallesons

Applicants: Stevens Vuaran Lawyers

Decision:                   2020 ATMO 12

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 42(b) and 44 considered – neither ground established – trade mark may proceed to registration

Background

1. This decision concerns an opposition brought by Luxottica Group SpA (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade mark the subject of the application detailed below in the names of Anthony Ghosen and Tiger Vision Pty Ltd (‘the Applicants’):

Application Number:	1827778
Filing Date:	23 February 2017
Goods:	Class 9: Eyewear, Spectacles, Sunglasses, Frames for prescription lenses, Spectacle cases (‘the Applicants’ Goods’)
Trade Mark:	ROGUE EYEWEAR	(‘the Applicants’ Trade Mark’)

2. On 13 July 2017 the application’s acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks. The Opponent filed a Notice of Intention to Oppose the registration on 5 September 2017 and a Statement of Grounds and Particulars (‘the SGP’) on 5 October 2017. The SGP nominated grounds of opposition under ss 42(b), 44, 60 and 62A of the Act. The Applicants filed a Notice of Intention to Defend on 24 November 2017.

Evidence and submissions

3. No evidence was filed by either party.

4. 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 to be heard. On 12 November 2018 the Applicants filed submissions which were prepared by their legal representative, Stevens Vuaran Lawyers. On 14 November 2018 the Opponent filed written submissions which were prepared by their legal representative, King & Wood Mallesons. On 15 November 2018 the Opponent filed supplementary submissions which included responses to the Applicants’ submissions.

5. As a delegate of the Registrar of Trade Marks I am to decide the matter on the material discussed above.

The Opponent

6. According to the Opponent’s submissions:

The Opponent is the world’s leader in premium, luxury, and sports eyewear with over 7,400 retail stores around the world. In Australia, the Opponent operates the OPSM, Laubman & Pank, and Sunglass Hut retail stores. …

The Opponent, jointly with Condé Nast SA [‘CN’], owns Australian Trade Mark no 490755 … (‘the VOGUE Trade Mark’) …

[CN] is the global owner of the VOGUE brand and trade mark, including for magazines and publications.

7. Details of the VOGUE Trade Mark’s registration are as follows:

Trade Mark Number:

490755

Priority Date:

8 July 1988

Goods:

Class 9: Sun-glasses, sight-glasses, lenses, frames, chains and cases for all the foregoing; contact-lenses

(‘the Opponent’s Goods’)

Trade Mark:

The Applicants

8. There is nothing before me from which I might provide a background of the Applicants.

Grounds of Opposition, Onus and Standard of Proof

9. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 60 and 62A; however, in its submissions the Opponent indicated that it is pressing only the grounds of opposition under ss 42(b) and 44.

1. 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 23 February 2017, being the filing date of the application (‘the Relevant Date’).[3] The Relevant Date is also the priority date for the purposes of s 44.

Discussion

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

[2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].

Section 44

1. Relevant provisions of the Act with respect to the s 44 ground 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)the applicant's trade mark is substantially identical with, or deceptively similar to:

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

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

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

Note 1: For deceptively similar see section 10.

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

Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

1. …  

1. 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.

2. 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.

3. In the SGP the Opponent nominated the VOGUE Trade Mark in respect of s 44. The particulars included the following:

   [The Applicants’ Trade Mark] is substantially identical with or deceptively similar to the VOGUE Trade Mark registration and [the Applicants’ Goods] are the same or similar to [the Opponent’s Goods].

4. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish that the VOGUE Trade Mark:

   ·     is registered by a person other than the Applicants (‘the first requirement’); and

   ·     has a priority date which is earlier than the Relevant Date (‘the second requirement’);

   ·     the Opponent’s Goods are similar to the Applicants’ Goods (‘the third requirement’); and

   ·     is substantially identical with or deceptively similar to the Applicants’ Trade Mark (‘the fourth requirement’).

A preliminary matter

1. In their submissions the Applicants noted that the Opponent had filed no evidence in this matter and submitted:

   The Opposition based on section 44 must be rejected because there is no evidence to support it (and to the extent that deceptive similarity may in very clear situations, be established without the need for evidence, this is not a clear situation).

2. It is possible that all four requirements of a successful opposition under s 44 can be satisfied in the absence of evidence. For this reason, the mere absence of evidence is not a basis to reject this ground without considering it in full.

The first requirement

1. The VOGUE Trade Mark is registered by a person other than the Applicants, thus satisfying the first requirement.

The second requirement

1. The VOGUE Trade Mark has a priority date which is earlier than the Relevant Date, thus satisfying the second requirement.

The third requirement

1. The Opponent’s Goods are clearly similar to the Applicants’ Goods. The third requirement is thus satisfied.

The fourth requirement

Substantially identical?

1. The Opponent has not pressed that the VOGUE Trade Mark is substantially identical with the Applicants’ Trade Mark. In undertaking the usual side by side comparison,[4] it is clear that there are sufficient differences between the two trade marks such that they are not. For example, there is a distinctive ‘V’ device in the VOGUE Trade Mark which is not present in the Applicants’ Trade Mark.

Deceptively Similar?

[4] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12].

1. Guidance for determining whether trade marks are deceptively similar is generally found in 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] [1963] HCA 66, [13].

2. Further guidance is to be found in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd, wherein Jacobson J stated:

   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 judgement 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.[6]

   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.[7]

   Third, allowance must be made for imperfect recollection.[8]

   Fourth, the effect of the spoken description must be considered.[9]

   Fifth, it is necessary to show a real tangible danger of deception or confusion.[10]

   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.[11] …

   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.[12]

   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.[13]

   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.[14] 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.[15] [16]

   [6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49]; Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658.

   [7] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, 415 (Windeyer J).

   [8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [74].

   [9] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [75]; Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658.

   [10] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [43], [50]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [76]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594–5.

   [11] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

   [12] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [86]–[89]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

   [13] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43, 632 (Mason J).

   [14] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [79].

   [15] Ibid [100].

   [16] [2012] FCA 1022, [37]–[46].

3. With respect to deceptive similarity the Opponent’s submissions referred to the following principles:

   Two trade marks that may be visually and conceptually distinguishable may nonetheless be considered deceptively similar because of aural similarity (for example, LEVI’S was considered deceptively similar to REVISE …[17]

   Where a trade mark combines a device with a word, customers will more naturally refer to the word when referring to the product.[18] Similarities in the verbal features of the trade marks may thus give rise to confusion despite any dissimilarity in appearance.[19]

   Furthermore, it is well established that consumers commonly misread or mishear marks: ‘the human eye has a well-known tendency to see what it expects to see and the human ear to hear what it expects to hear’.[20] …

   [17] Wingate Marketing Pty Ltd v Levi Strauss & Co [1994] FCA 1001.

   [18] Chilcott Laboratories Pty Ltd’s Application (1956) 26 AOJP 1194.

   [19] Havana Club Holding SA v Pac-Rim Management Services Ltd (1998) 43 IPR 177; Wendy’s International Inc v Wendy’s Supa Sundaes Pty Ltd (2001) 52 IPR 239.

   [20] Aveda Corporation v Dabur India Ltd [2013] EWHC 589 (Ch) [48] (Arnold J).

4. The Opponent submitted:

   Although the VOGUE Trade Mark features a ‘V’ device and slightly stylised lettering of the word VOGUE, it is nonetheless pronounced and known to consumers as VOGUE. As noted above, customers will more naturally refer to the word found in a combined device/word mark. We submit, therefore, that the overall impression conveyed by the VOGUE Trade Mark is essentially the word VOGUE.

   [The Applicants’ Trade Mark] consists of the word ROGUE and the descriptive word EYEWEAR. In the context of a trade mark for eyewear, we submit that the second word EYEWEAR has little bearing on the overall impression conveyed by [the Applicants’ Trade Mark]. The key feature of the mark is ROGUE.

   On this basis, we submit that the appropriate comparison … is between the words VOGUE and ROGUE.

   VOGUE differs from ROGUE by only one letter. Such a minor variation is likely to cause confusion amongst consumers about the origin of either the Opponent’s or [the Applicants’] goods. We note in particular, that:

   (a)VOGUE and ROGUE are very similar in appearance and pronunciation;

   (b)four out of five letters are identical – OGUE – and are a very uncommon spelling combination;

   (c)that the minor variation in the first letter of each word is highly likely to result from typographical error or mispronunciation, such that consumers may be directed to the goods of [the Applicants] when in fact, that consumer wished to purchase the goods of the Opponent; and

   (d)the ‘V’ and ‘R’ letters are both commonly typed (on QWERTY computer keyboards) with the index finger of the left hand, and in the context of modern communications technology this may result in business being directed to [the Applicants] instead of to the Opponent;

   In the context of such striking aural similarity, the visual and conceptual differences between the VOGUE Trade Mark and [the Applicants’ Trade Mark] are of minor importance. Confusion between the two marks is therefore highly likely, whether or not it results from observation of the marks as written or from typographical or pronunciation error.

5. I agree with the Opponent that in the context of verbal representations of the respective trade marks a comparison of VOGUE and ROGUE is of primary importance. I am not persuaded, however, that the conceptual differences between those words should be discounted to the extent suggested by the Opponent. In respect of this the Applicants submitted:

   [The Opponent’s submissions] do not touch, even to the slightest extent, on the meaning of the words ‘vogue’ and ‘rogue’. Instead, those submissions focus on the mere fact of the rhyme and (with respect, improbably) on the locations of ‘V’ and ‘R’ on a QWERTY keyboard. As to the latter submission, the ‘fat fingered typist’ is no is no more the appropriate arbiter of what is deceptively similar than was Foster J’s famed ‘moron in a hurry’.[21] …

   [T]he image created by the word which is chosen [for a trade mark] is central to the idea of the trade mark and to the impression of the goods or services to which the trade mark is applied.

   [21] No citation for this quote was provided by the Applicants.

6. The concepts conveyed by VOGUE and ROGUE are very different and sufficiently widely understood that definitions are probably unnecessary; nevertheless, I will provide brief definitions here. According to the definition provided by the Applicants in their submissions (taken from the Shorter Oxford English Dictionary), ROGUE can be used as a noun and as an adjective. As a noun, its meanings include: ‘a dishonest or unprincipled person, esp. a man’. As an adjective, its meanings include: ‘inexplicitly aberrant, uncontrolled, undisciplined, irresponsible’. From the definitions provided by the Applicants, VOGUE can be used as a noun, an adjective or a verb. A likely meaning attributed to the word in connection with the Opponent’s goods is: ‘the prevailing fashion; a thing in (esp. short-lived) favour at a particular time’. Whichever accepted meaning is attributed by a consumer to ROGUE it will be different from the meaning attributed to VOGUE. This difference results in the trade marks being conceptually very different.

7. I am also not persuaded that mispronunciation and/or mishearing of one or the other of the trade marks is very likely. This can be contrasted with the LEVI’S vs REVISE comparison, mentioned by the Opponent, above. The ‘lee’ sound and the ‘ree’ sound at the beginnings of those words are far more similar than the ‘vo’ and ‘ro’ sounds at the beginnings of the trade marks under comparison here. The foregoing assumes that REVISE is pronounced ‘reevise’ to rhyme with ‘LEVI’S’: a somewhat unnatural pronunciation in my view but one which Lockhart J at first instance found ‘is the pronunciation adopted by a significant number of people’.[22] While professing no personal qualifications in linguistics it is readily apparent that the manner in which the ‘lee’ sound is produced during speech is quite close to the way ‘ree’ is produced. This seems to make mispronunciation or mishearing far more likely than in the case of ‘ro’ and ‘vo’: those sounds being produced in very different manners. Overall, the aural similarity between LEVI’S and REVISE is far greater than the aural similarity between VOGUE and ROGUE. I am not satisfied that when rendered verbally the VOGUE Trade Mark so nearly resembles the Applicants’ Trade Mark that it is likely to deceive or cause confusion. The visual differences between the respective trade marks are even more marked.

   [22] [1993] FCA 325, [38].

1. I am not satisfied that the VOGUE Trade Mark is deceptively similar to the Applicants’ Trade Mark. Consequently, the Opponent has failed to establish this ground of opposition.

Section 42(b)

1. Section 42 of the Act is reproduced below:

   42 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.

2. The onus is on the Opponent to establish that use of the Applicants’ Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.[23]

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

3. The ground of opposition pursuant to s 42 of the Act was particularised in the SGP as follows:

   The Opponent has used [the VOGUE Trade Mark] in Australia for a significant period of time prior to [the Relevant Date], and by reason of that use, has acquired a substantial reputation in [the VOGUE Trade Mark].

   By virtue of the Opponent’s reputation in the VOGUE Trade Mark in Australia, the registration and use of the Opposed Trade Mark would constitute misleading or deceptive conduct in breach of Sections 18 and/or 29 of the Australian Consumer Law and/or would constitute passing off at common law.

4. The Opponent has filed no evidence in this matter. The Applicants have submitted relevantly:

   The opposition based on section 42(b) must be rejected because … there is no evidence to support it …

5. The Opponent responded to this submission as follows:

   ‘[T]he Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate’.[24] The Opponent’s fame and reputation in respect of the VOGUE Trade Mark is a matter of public record, and we submit that this is a matter that the Registrar ought to take into account in reaching her decision.

   [24] Trade Mark Regulations 1995 (Cth) reg 21.15(4).

6. I am not of the view that the Trade Mark Regulations 1995 (Cth) reg 21.15(4) allows the Registrar to accept that the VOGUE Trade Mark had acquired a reputation by the Relevant Date on the basis of any fame and reputation it might have, and in the absence of evidence.

7. I am not satisfied that the VOGUE Trade Mark has acquired the ‘substantial reputation’ relied upon by the Opponent in its particulars (or any reputation for that matter). For this reason, the Opponent has failed to establish this ground of opposition.

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

   (1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:For limitations see section 6.

2. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Accordingly, application 1827778 may proceed to registration after 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 a court so orders.

Costs

1. The Applicants have sought an award of costs in their favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under s 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.

Robert Wilson
Hearing Officer
Trade Mark Oppositions and Hearings
31 January 2020