Re: Opposition by World Bodyboards Pty Ltd to registration of trade mark application no. 1624470 (25, 35) - BSC in stylized letters in the name of Body Science Properties Pty Ltd as trustee for The Body Science..

[2020] ATMO 85

TRADE MARKS ACT 1995

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

Re:Opposition by World Bodyboards Pty Ltd to registration of trade mark application no. 1624470 (25, 35) – BSC in stylized letters - in the name of Body Science Properties Pty Ltd as trustee for The Body Science Properties Trust

Delegate:

Bianca Irgang

Representation:

Opponent: Mills Oakley Lawyers

Applicant: Self represented

Decision:

2020 ATMO 85
Trade Marks Act 1995 (Cth) - Section 52 opposition: Section 44 established but evidence sufficient to overcome ground of opposition. No other grounds established.

Background

1. Body Science Properties Pty Ltd as trustee for The Body Science Properties Trust (‘the applicant’), filed divisional trade mark application number 1624470 on 2 April 2012 in classes 25 and 35 of the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:   (‘the Trade Mark’)

   Trade mark application no: 1624470            

   Filing Date:  2 April 2012

   Specification:  Class 25: Clothing; footwear; headgear; clothing adapted to be worn close to the skin; clothing for men, women, children and babies; clothing for sports; compression garments for sporting applications; underwear including compression underwear; anatomically shaped clothing; close fitting support clothing; clothing for gym; exercise wear; outerwear; leisure clothing; jackets; jumpers; pullovers; sports jerseys; vests; shirts; T-shirts; pants; trousers; shorts; swimwear including bathing trunks and bathing suits; thermal clothing; wetsuits; waterproof clothing; socks; stockings; tights; padded clothing; padded clothing for men, women, children and babies; parts, fittings and accessories for the aforesaid goods

   Class 35:Retail, wholesale, mail order, e-commerce, sale and distribution services

2. Acceptance of the application for possible registration was published in the Australian Official Journal of Trade Marks on 17 November 2016. Subsequently World Bodyboards Pty Ltd (‘the opponent’) filed its Notice of Intention to Oppose registration followed by its Statement of Grounds and Particulars[1].

   [1] which together constitute ‘the Notice’

3. The applicant then filed its Notice of Intention to Defend. No evidence was filed by the opponent in the opposition. However, the opponent had a trade mark registration in support of its section 44 ground of opposition in its Statement of Grounds and Particulars.

4. This matter was delegated to me for a decision on the written papers on 14 February 2020.

   Grounds of Opposition

5. The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995 (‘the Act’) however, in this case I am only able to consider the ground of opposition under section 44 given that the opponent has not filed any evidence. The onus is upon the opponent to establish one or more of its grounds of opposition. The Full Bench in Telstra Corporation Limited v Phone Directories Company Pty Ltd[2] affirmed the approach in Pfizer Products Inc. v Karam[3] where Gyles J referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’.

   Evidence

   Evidence in Answer

   • Declaration of Gregory Young dated 24 March 2018 accompanied by exhibits BSC-1 to BSC-5

   Discussion

   [2] [2015] FCAFC 156, [133]

   [3] [2006] FCA 1663, [26]

   Section 44 – Deceptive similarity

6. Subsection 44(1) of the Act is relevant in this case and reproduced below:

   (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.

   (2)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a)  it is substantially identical with, or deceptively similar to

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

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

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

   Note 1:       For deceptively similar see section 10.

   Note 2:       For similar services see subsection 14(2).

   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.

7. To establish a ground of opposition under section 44 of the Act, the opponent must show all of the following:

   Øa trade mark, either registered or pending registration, in the name of a person other than the applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;

   Øthe trade mark in the name of the other person must be in respect of similar goods/services or closely related goods/services; and

   Øthe priority date of the trade mark of the other person is earlier than the priority date of the applicant’s trade mark.

8. The opponent has listed a trade mark registration which it has put forward in support of the section 44 ground of opposition. The details of the trade mark registration are as follows:

   Trade mark:      (‘opponent’s trade mark’)

   Trade mark registration no:           1220223

   Filing Date:  24 January 2008

   Specification:  Class 25: Men’s clothing

   Class 28: Surfing apparatus

   
   Class 35: Retailing of goods (by any means)

9. I note that the opponent’s trade mark has an earlier priority date than the Trade Mark. I also consider that the opponent’s claimed goods in class 25 and its services in class 35 are the same as those of the Trade Mark.

10. Now I need to determine whether the opponent’s trade mark is substantially identical or deceptively similar to the Trade Mark. Young has stated that the applicant believes the trade marks are not identical. Therefore, I will consider the respective trade marks to determine if they are deceptively similar.

11. Deceptive similarity is defined by section 10 of the Act. The determination of deceptive similarity requires a comparison of the impression which persons of ordinary intelligence and memory would have upon recalling the opponent’s trade mark, to the impression that they would form from the opposed trade mark.[4] The likelihood of deception must be finite and non-trivial.[5]

    [4] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 [415] (‘Shell’)

    [5] Registrar of Trade Marks v Woolworths Limited 45 IPR 411 [43]

12. The test to determine whether trade marks are ‘deceptively similar’ is set out in Shell at 415:

    The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … 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 impression that such persons would get from the defendant’s [trade mark]

13. The Court added at 416, that:

    [The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.

14. Below are the respective trade marks.

Opponent’s trade mark Trade Mark

1. Both trade marks contain the letters BSC and some stylization. While the stylization is different in both trade marks the only aural reference that could be given to the trade marks is that of the letters, BSC. Both trade marks also emphasis the beginning letter “B” in their trade marks by a star and a circle respectively. It is highly likely that Australian consumers would aurally refer to the respective trade marks as BSC without any reference to the stylization. I am satisfied that the trade marks are deceptively similar at the very least. Therefore, the opponent has established the requirements under section 44. However, this need not be fatal to the applicant’s Trade Mark. The applicant has provided evidence of use and other circumstances which I will consider to determine if the provisions of subsection 44(3)(a) and 44(4) are applicable.

2. Mr Young avers that the applicant came up with and has used its Trade Mark since 1999 in Australia to apply to compression, performance and everyday clothing as well as nutritional supplements. To this end, the applicant applied for and obtained registration of trade mark no. 892549  in class 5 which has a priority date of the 20 October 2001. According to Young, over the next 18 years its trader mark was used continuously throughout Australia on a number of health and fitness services as well as its nutritional supplements and performance and compression clothing. The applicant saw significant growth in the business and in particular, its activewear and compression clothing[6].

   [6] Annexure BSC-2 accompanying Young

3. Over the course of 18 years the applicant engaged in significant advertising for its goods and services which included catalogues, televisions advertisements, sponsorship deals, sales representatives, expos, trade fairs, printed and online materials including its own website which it operated as an online store for its goods and servies.[7] The applicant has also significantly engaged in social media platforms such as Twitter, Facebook and Pinterest. where the applicant has a moderate social following given the size of the fitness industry[8]. The applicant has had its website established since 2001 and has offered its nutritional goods and performance and compression clothing for sale throughout all of Australia since that time[9]. Mr Young avers that the applicant’s goods are sold through a number of large retailers including Woolworths, Coles, Rebel Sport and Priceline Pharmacies. 

   [7] Annexures BSC-2, BSC-4 and BSC-5 accompanying Young

   [8] Annexures BSC-2 and BSC-3 accompanying Young

   [9] Annexure BSC-3 accompanying Young

4. The applicant also has an active YouTube® channel which contains the applicant’s trade mark on clothing and towards the services for which it is seeking registration. According to Young, the aapplicant’s trade mark was branded on its sales team uniforms, webpages, company cars and all business letterheads, stationary, business cards and marketing collateral[10].

   [10] Annexure BSC-2 accompanying Young

5. The applicant has used its BSC trade mark on nutritional supplements and compression and activewear clothing since at least 2002 based upon the evidence before me[11]. Annexure BSC-4 contains dated images of sports shorts worn by the Sydney Roosters in 2002 which are branded with the opponent’s trade mark. Further to this, the applicant has engaged in high profile sponsorship engaging with Athletes and Sporting Teams[12]. In 2007, Tony Harvey endorsed the applicant’s compression pants bearing the Trade Mark[13] and since that time the applicant has appeared on Bondi Rescue, The Apprentice, The Crew and Excess Baggage[14]. Taken all together I am satisfied that the applicant has been continuously using its Trade Mark before the priority date of the opponent’s trade mark to the present day on all the goods and services listed in the application. Therefore, the applicant has overcome the section 44 ground of opposition through the provision of evidence sufficient to satisfy me that section 44(4) applies.

   [11] Annexure BSC-3 accompanying Young

   [12] Annexure BSC-4 accompanying Young

   [13] Annexure BSC-3 accompanying Young

   [14] Annexure BSC-5 accompanying Young

   Decision

6. Section 55 of the Act provides:

   55  Decision

   (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:          Forlimitationssee section 6.

7. The opponent has established the ground of opposition under section 44, however, the applicant has provided sufficient evidence that section 44(4) applies. Therefore, the trade mark application may accordingly proceed to registration 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 of the trade mark shall not occur until the appeal has been decided or discontinued.

   Costs

8. 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 under section 221 of the Act in terms of Schedule 8 of the Regulations.

   Bianca Irgang

   Hearing Officer

   Oppositions and Hearings

   20 May 2020