Re: Opposition by Winter Holding GmbH & Co KG to registration of trade mark application number 1964940 (class 25) - Betty BAustralian Securities and Investments CommissionS (figurative) in the name of SASS Clothing Pty Ltd

[2021] ATMO 55

TRADE MARKS ACT 1995

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

Re:Opposition by Winter Holding GmbH & Co KG to registration of trade mark application number 1964940 (class 25) – BETTY BASICS (figurative) - in the name of SASS Clothing Pty Ltd.

Delegate:	Adrian Richards
Representation:	Opponent: Meher Gaven of Counsel instructed by Finn Roache Lawyers. Applicant: Written submissions by Churchill Attorneys.
Decision:	2021 ATMO 55 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 44 and 58A considered – no grounds established – trade mark to proceed to registration.

Background

1. This is a decision on the opposition to registration of the mark  (‘Trade Mark’) by Winter Holding GmbH & Co KG (‘Opponent’). On 26 October 2018 (‘Relevant Date’), SASS Clothing Pty Ltd (‘Applicant’) filed an application for registration of the Trade Mark with this office (‘Application’), claiming the following goods:

   Class 25:Apparel (clothing, footwear, headgear); Knitwear (clothing); Blouses; Jackets (clothing); Shorts; Slacks; Coats; Frocks; Dresses; Suits; Swimwear; Leggings (trousers); Belts (clothing); Scarves; Underwear; Socks; Tights; Pantyhose; Formal evening wear

2. As required by the Trade Marks Act 1995 (Cth),[1] the Trade Mark was examined, accepted for possible registration and advertised for opposition purposes. The Opponent filed notice of its intention to oppose registration of the Trade Mark on 4 July 2019 and a statement of grounds and particulars (‘SGP’) on 2 August 2019. The Applicant filed notice of its intention to defend the Trade Mark from opposition on 9 October 2019.

   [1] Each reference to a section in these reasons is a reference to the Trade Marks Act 1995, and each reference regulation is a reference is to a regulation in the Trade Marks Regulations 1995 (Cth).

3. The parties filed evidence in accordance with the timetable set out in reg 5.14. The Opponent filed evidence in support on 16 December 2019. The Applicant filed Evidence in answer on 9 April 2020. The Opponent filed evidence in reply on 10 June 2020. The Opponent filed additional evidence on 16 April 2021.

4. The Opponent requested an oral hearing and filed written submissions. The Applicant did not attend the hearing but elected to file written submissions. The oral hearing was held by a delegate of the Registrar of Trade Marks on 23 April 2021. In attendance for the Opponent was Meher Gaven of Counsel instructed by Finn Roache Lawyers. The opposition to registration of the Trade Mark was heard together with the oppositions to the extension of protection to two international registrations designating Australia, which have been given trade mark application numbers 1971431 and 1983811.

5. The delegate who initially heard the matter is presently not working within the Hearings and Oppositions section of IP Australia. For that reason the opposition has been handed to me to decide, in my capacity as a delegate of the Registrar of Trade Marks. I have read the evidence and submissions of the parties and viewed the recording of the hearing. What follows is my decision, with reasons, based upon the evidence, submissions, and the recording.

Grounds and onus

1. The SGP nominates grounds of opposition under ss 44 and 58A. The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]

   [2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

2. The Opponent relies on the following Protected International Trade Marks and International Registration Designating Australia (‘Opponent’s Marks’):

TM No.	Trade Mark	Goods/Services	Priority Date
940176 (IR 793492)	Class 25: Clothing, footwear, headgear (and goods in classes 3, 14, 18, and 24)	17 May 2002
1078841 (IR 861264)	Class 25: Clothing, footwear, headgear (and goods in classes 14 and 18).	22 September 2004
1983811 (IR 1445068)	Class 25: Clothing, headgear, footwear.	29 May 2018

Evidence

1. The following evidence was filed under reg 5.14:

   Evidence in support

   Declaration of Christian Brinker, in-house counsel of Opponent, made on 16 December 2019 with Exhibit WH1.

   Evidence in answer

   Declaration of Talitha Becker, Director of the Applicant, made on 9 April 2020 with Exhibits TB1 to TB2.

   Evidence in reply

   Declaration of Christian Brinker made on 10 June 2020 with Exhibit WH1.2.

2. The Opponent filed additional evidence, being the declaration of Liam James, solicitor for the Opponent, with Exhibit LJ1, made on 16 April 2021. The Applicant objects to the filing of the additional evidence. However, for the reasons discussed below I give no weight to the additional evidence.

3. Mr Brinker outlines in the evidence in support that the Opponent’s Marks originate from the USA and are used for women’s apparel and accessories. Use in Australia was initially in slightly stylised cursive formats between 1999-2018 (since 2002 as per trade mark nos. 940176 and 1078841). The brand was updated in 2018 to an uppercase sans-serif font (per trade mark no. 1983811). Revenue figures indicate a healthy level of sales under the Opponent’s Marks since 2001. Mr Brinker also provides illustrative examples of use of the Opponent’s Marks in relation to women’s apparel, and on invoices issued to Australian customers since 2005.

4. Ms Becker declares in the evidence in answer that the BETTY BASICS brand was developed in 2010 initially with a retro styling and a device element. Use of the Trade Mark in its present form commenced in 2015 in relation to apparel, accessories, and non-apparel goods. Ms Becker claims significant sales revenue since 2015. Ms Becker provides examples of promotion of the goods under the Trade Mark via social media between 2015-2018 in relation to women’s apparel and accessories. Ms Becker also queries the accuracy of specific claims made in Mr Brinker’s declaration regarding use of the Opponent’s Marks in Australia.

5. Mr Brinker responds in the evidence in reply to that criticism by Ms Becker. He also clarifies earlier statements regarding use of the Opponent’s Marks during 2016-2019. Mr Brinker also queries the accuracy of aspects of Ms Becker’s declaration.

6. Overall, I consider that each party has raised some legitimate criticisms of the evidence filed by the other side. Each side has also raised issues or expressed views that are irrelevant or that are more accurately characterised as opinion rather than evidence. These opinions and criticisms are almost exclusively directed toward the nature and extent of any use of the parties’ trade marks. However, as I have found the marks are too dissimilar to support a s 44 ground of opposition, it has not been necessary to consider the parties’ respective claims of use in detail.

7. For the same reason, the additional evidence contained in the declaration of Mr James, which also goes to an aspect of trade mark use, has no bearing on the outcome of the decision. I have given it no weight.

Discussion

Section 44

1. To establish the s 44 ground what is required is a mark that has a priority date under the Trade Marks Act 1995 (Cth) earlier than the priority date of the Trade Mark. That earlier mark must claim similar goods (or closely related services) and be substantially identical or deceptively similar to the Trade Mark.

2. Each of the Opponent’s Marks has a priority date that is before the filing date of the Trade Mark. Further, each of the Opponent’s Marks claims ‘clothing, footwear, and headgear’, a broad claim which effectively encompasses all the goods of the Application.

3. It is then necessary to determine whether the Trade Mark is substantially identical or deceptively similar to any of the Opponent’s Marks. I set out the respective marks below.

Trade Mark Opponent’s Marks

1. The test for substantial identity requires trade marks to be assessed as follows:

   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] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).

2. I am satisfied that the Trade Mark is not substantially identical to the Opponent’s Marks, considering that the Trade Mark consists of two words BETTY and BASICS, and each of the Opponent’s Marks contain the distinctive word BARCLAY. While the respective marks all contain the word BETTY, given the other significant differences, it is not possible to conclude that there is a total impression of resemblance.

3. The test for deceptive similarity is broader and requires that one trade mark so nearly resemble another so that it is likely to deceive or cause confusion.[5] In determining deceptive similarity, the following must be taken into account:

-There must be a real, tangible danger of confusion. A mere possibility of confusion is not enough.[6]

-The impression of the respective trade marks must be considered from the point of view of ordinary consumers (not those with high perception or exercising habitual caution, and not those who are exceptionally careless or stupid).[7]

-The effect of sound and meaning of the respective trade marks.[8]

-The way in which the goods or services are ordinarily sold or provided.[9]

-A likelihood of confusion can be established if a number of consumers would be caused to wonder whether the applicant’s goods or services come from some other source.[10]

-Consumers may retain an imperfect recollection of a mark or its essential features.[11]

-The impression of the respective marks as a whole must be considered, including the size, prominence and stylisation of word and device elements and their relationship to each other.[12] However, deceptive similarity can also be found where the later mark uses an essential or distinguishing feature of the earlier mark.[13]

-It may be relevant that an element of the trade marks under consideration is descriptive. However, descriptiveness does not preclude a finding of deceptive similarity.[14]

[5] Trade Marks Act 1995 (Cth) s 10.

[6] Southern Cross Refrigerating v Toowoomba Foundry (1954) 91 CLR 592, 595 (Kitto J)

[7] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan J).

[8] Ibid.

[9] Ibid.

[10] Coca‑Cola Co v All‑Fect Distributors Ltd [1999] FCA 1721, [39] (Black CJ, Sundberg and Finkelstein JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

[11] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville, and Emmett JJ).

[12] Optical 88 Ltd v Optical 88 Pty Ltd [2010] FCA 1380, [100] (Yates J); Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [91]-[103] (Moore, Sackville, and Emmett JJ).

[13] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 174-5 (Viscount Maugham); De Cordova v Vick Chemical Co (1951) 68 RPC 103, 105-6 (Lord Radcliffe).

[14] Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd [2014] FCAFC 75, [64] (Besanko, Yates, and Mortimer JJ).

1. The obvious similarity between the Opponent’s Marks and the Trade Mark is that each share the word BETTY as their first word, and a second word with the prefix BA. I accept that the first word, and the beginning of a mark generally, is of particular importance in considering whether there is a deceptive similarity. However, this factor is not determinative, and any decision must be made based on the similarities and differences of the trade marks as a whole.

2. A cursory search of the register indicates that trade marks consisting of given names and surnames, or combinations of the two, or combinations of one or the other with other elements, are relatively common. Personal names are one of the oldest and most popular indicators of trade source. Logically, the more distinctive and unusual a particular name, the greater potential for confusion with other trade marks sharing the same element. Similarly, if a name is more common or recognisable, then there is less likelihood of confusion, as consumers are often exposed to brands consisting of names, many of which share either a given name or a surname.

3. The Opponent submits that “Betty” is an unusual female name, being a diminutive of Elizabeth and/or Beatrice, which is relatively old fashioned and not presently in popular use. While it may be the case that Betty is not a particularly popular name amongst current generations (although no evidence has been filed to support this conclusion), I do not consider this lessens the significance of BETTY as an easily recognisable given name.

4. A name may also not be popular for present day children yet may still be popular for branding purposes. A brief search of the register in Class 25 indicates co-existence of the following trade marks (aside from the Opponent’s Marks) for apparel: BETTY BOND, BETTY BOOP & device, SWEATY BETTY, BETTY’S FROCK SHOP & device, BETTY SMITH, BETTYS & Device, BETTY 4 GEORGE, BETTY TRAN, SWEATY BETTY, BETTY WHO, and FAT BETTY. While the state of the register is not always reflective of the state of the market, it at the very least indicates that numerous traders view BETTY as a name that is desirable for inclusion in a trade mark, and that the Registrar has on several occasions determined that such trade marks are able to co-exist without a real, tangible, danger of confusion.  

5. Turning to the other elements in the respective trade marks, I am not satisfied that the words BASICS and BARCLAY, when combined with BETTY, create composite wholes that are likely to be confused. The word BARCLAY is a distinctive and equally important element of the Opponent’s Marks. I agree with the Opponent that the term BASICS has some descriptive qualities in relation to apparel. However, while the word BETTY is the more distinctive element of the BETTY BASICS mark, I do not agree with the Opponent’s submissions that the mark BETTY BASICS as a whole is likely to be abbreviated to BETTY. Nor does the test, which requires I estimate the impression of the whole of each mark, permit me to simply disregard the word BASICS. Both marks, BETTY BASICS and BETTY BARCLAY in my view are more likely to be perceived and remembered by consumers in their entirety, particularly as the first word of each mark easily flows into the second word as both are alliterative and present as a first name and surname combination. Further, when spoken, the BARCLAY element in BETTY BARCLAY tends to be emphasised, and the termination of BARCLAY (-CLAY) is not particularly susceptible to slurring or mispronunciation. In the present context, to divide up the respective trade marks into their constituent components and reach a finding of deceptive similarity on this basis would be artificial.

6. I have also had regard to the nature of the goods which are likely to be purchased with a degree of care, and which will usually either be visually inspected or viewed online prior to purchase. The likelihood of aural confusion in such circumstances is significantly reduced.

7. I also note the similarity in font between the Trade Mark and the Opponent’s trade mark no. 1983811. While the shared use of a modern sans-serif font creates a visual point of similarity, I do not consider that it significantly increases the likelihood of confusion. This ground of opposition is not established.

Section 58A

1. As I am not satisfied that grounds for rejection exist under s 44(1), the provisions of s 44(4) are not relevant. As s 58A applies only where s 44(4) is applied, the ground cannot be established.

Decision and costs

1. The Opponent has not established any of the grounds of opposition. As such, the Trade Mark should proceed to registration one month from the date of this decision. But if the Registrar of Trade Marks is served with a notice of appeal before that time, registration should not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of the opposition should be in accordance with the Court’s order or direction.

2. It is usual for costs to follow the event. However, this opposition has been decided concurrently with two related oppositions to trade mark nos. 1971431 and 1983811. As all matters were decided on substantially similar evidence, and each party has had a measure of success in the various proceedings, I decline to award costs against either party.  

Adrian Richards

Hearing Officer

Delegate of the Registrar of Trade Marks

28 June 2021