Redsbaby Pty Ltd v Wensheng Zhou
[2018] ATMO 186
•9 November 2018
TRADEMARKSACT1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re: Opposition by Redsbaby Pty Ltd to registration of trade mark application 1793833 (25 & 35) redbaby & Device in the name of Wensheng Zhou
DELEGATE: Michael Kirov
REPRESENTATION: Opponent: Sonia Stewart of Counsel, instructed by FB Rice
Applicant: Self represented and appeared in person
DECISION: 2018 ATMO 186
Opposition under s 52 of the Trade Marks Act 1995: Grounds under ss 42(b), 44, 58, 60 and 62A considered – Applicant’s trade mark and Opponent’s trade mark cover different goods and services – neither deception nor confusion likely – claim to ownership not displaced - no evidence of bad faith - opposition not established.
Background
This is an opposition brought by Redsbaby Pty Ltd (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Wensheng Zhou (“the Applicant”): Application Number: 1793833
Trade Mark: (“the Opposed Mark”)
Priority Date: 1 September 2016
Goods: Class 25: Apparel (clothing, footwear, headgear)
Services:Class 35: Compilation and provision of online directories; Online advertising on a computer network; Online data processing services; Online promotion on a computer network; Providing information, including online, about advertising, business management and administration and office functions
(collectively, “the Applicant’s Goods and Services”)
Acceptance of the Opposed Mark for possible registration was advertised in the Australian Official Journal of Trade Marks on 2 February 2017. The Opponent filed a Notice of Intention to Oppose on 31 March 2017, followed by a Statement of Grounds and Particulars (“SGP”) on 26 April 2017. The Applicant filed a Notice of Intention to Defend the application on 4 May 2017.
I heard the matter as a delegate of the Registrar of Trade Marks on 4 September 2018 in Canberra, with both parties appearing via video link. The Applicant, Mr Zhou, represented himself. Sonia Stewart of Counsel, instructed by FB Rice, Patent & Trade Mark Attorneys, appeared for the Opponent. The Opponent’s and Applicant’s oral submissions were supplemented by written submissions dated 7 June and 14 June respectively.
Grounds of Opposition, Onus and Standard of Proof
The SGP lists grounds corresponding to ss 42(b), 44, 58, 60 and 62A of the Act and all were pressed at the hearing. To succeed the Opponent bears the onus of establishing at least one of these five grounds, with the standard of proof required being the ordinary civil standard based on the balance of probabilities.1 In this case the date for assessing the registrability of the Opposed Mark for all of the grounds pressed is the date it was filed, 1 September 2016 (“the Relevant Date”).2
The Evidence
For their evidence the parties filed the following declarations in a timely manner, in accordance with the Trade Marks Regulations 1995 (“the Regulations”):
Evidence in Support
▪ Megan Redelman made 11 August 2017, with Annexures MR-1 to MR-19 (“Redelman 1”)
Evidence in Answer
▪ Wensheng (Davis) Zhou made 11 October 2017, with Annexures WZ-1 to WZ-11 (“Zhou 1”)
Evidence in Reply
▪ Megan Redelman made 13 November 2017, with Annexures MR-1 to MR-5 (“Redelman 2”)
▪ Lara Gun made 13 November 2017, with Annexures LG-1 to LG-5 (“Gun 1”)
1 Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26], affirmed by the Full Federal Court (Besanko, Jagot & Edelman JJ) in Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) 116 IPR 207 at [132]-[133].
2 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595.
Overview of the Evidence
Meagan Redelman is a co-founder of the Opponent and has been its Managing Director “since [it] was founded in 2013.”3 As she explains in Redelman 1:
5. [The Opponent] commenced business in 2013. [The Opponent] is a manufacturer and retailer of baby carriages, strollers, prams, bassinettes and accessories for these goods; vehicle harness safety restraints; nursery and children’s furniture and related nursery items.
Ms Redelman provides details of the Opponent’s trade mark registration 1619604, which underpins the s 44 ground of opposition, and of its later, then pending applications 1828198 REDSBABY and 1828199 . Only registration 1619604 is relevant to the opposition and its current details are set out below:
Registration Number: 1619604
Trade Mark: Priority Date: 28 April 2014
Goods:Class 12: Baby carriages; Baby strollers; Covers for baby carriages; Hoods for baby carriages; Prams (baby carriages); Aprons for prams; Harnesses for prams; Vehicle safety harnesses for pram bodies; Vehicle safety restraints for use with pram bodies; Aprons for strollers; Babies' strollers; Stroller covers (pushchairs); Strollers; Apparatus in the nature of trolleys for the transportation of children; Automobile safety seats for children; Car safety seats for children; Carriages for children; Child booster cushions for vehicle seats; Child carrying seats for use in vehicles; Child restraint devices for use with vehicle seats; Child safety seats for use in vehicles; Children's bicycles (for transport); Children's four-wheeled vehicles (for transportation); Children's riding vehicles (for transportation); Children's seats for use in cars; Children's seats for use in vehicles; Frames for supporting a child in a vehicle; Ride-on vehicles for children; Safety seats for children (for vehicles); Vehicle booster seats for children; Vehicle safety apparatus for children; Vehicle safety seats for children; Vehicles for use by children; Wheeled transport for children
3 As Mr Zhou observes in Zhou 1, the Opponent was incorporated on 24 December 2013.
Class 18: Baby carriers (slings or harnesses); Baby slings; Pouch baby carriers
Class 20: Baby changing mats; Baby changing platforms; Baby gates; Baby nests in the nature of padded baby carriers; Stands for baby baths; Support pillows for use in baby car safety seats; Support pillows for use in baby seating; Nursery cots; Nursery furniture; Nursery furniture for use by children; Nursery furniture for use by infants; Shelves being nursery furniture; Articles of furniture adapted for use by children; Chairs for children; Children's beds; Children's beds made of cloth in the form of a bag; Children's cradles; Cots for use by children; Furniture for children; Portable barriers for household use for the protection of children; Seats for children
I mention that it is use or reputation, as the case may be, of the marks subject of registration 1619604 and application 1828198 REDSBABY in particular which are specified in the SGP as underpinning the ss 42(b), 58, 60 and 62A grounds of opposition. As the Opponent has done in the SGP, I will hereafter refer to these two marks collectively as “the Opponent’s Marks”. I do however note that the Opponent uses the term “Opponent’s Marks” in its evidence and submissions to include a third mark, being the mark subject of its application (now registration) 1828199 . The three marks in question are nevertheless substantially identical in my view and I confirm that where relevant I have taken use of all three variants into account, with nothing in this decision turning on any slight differences that do exist between them.
After identifying “baby carriages, bassinettes, strollers, prams, hoods and related items and accessories for these goods” as the “Goods” (“the Pram Goods”)4 and “related retail services for these goods” as the “Services,” Ms Redelman says that:
14. The trade mark REDSBABY is a coined term derived from the element RED in my surname REDELMAN and the element RED combined with the term BABY to denote [the Opponent’s] field of business, being baby-related products.
4 I am unsure from the evidence what the essential differences between baby carriages, strollers and prams are, but I confirm that the distinction between the terms, if any, is not relevant to my decision. Where necessary I will for convenience refer to these goods generically as “prams”.
15. [The Opponent] first used the [Opponent’s Marks] in 2013 in respect of the Goods and Services, with the first sale being in January 2014. Since this time, [the Opponent] has expanded its range of goods to include nursery and children’s furniture and nursery items and related retail services.
Somewhat confusingly, the specific goods for which use of the Opponent’s Marks is claimed are identified slightly differently at different times in the Opponent’s evidence and in the SGP, while the services are invariably described using words following the identified goods such as “and related retail services” or similar. In the SGP the goods and services are described as “baby carriages, strollers, prams, hoods and related items as well as retail services in respect of these goods” (with use claimed “since January 2014”) and “nursery and children’s furniture, cots, beds and related items as well as retail services in respect of these goods” (with use claimed “since August 2016”). While nothing significant turns on this, for the avoidance of doubt I confirm that I will hereafter refer to the goods as identified in the SGP as “the Opponent’s Goods” and to the retailing of these goods as “the Opponent’s Service” (collectively “the Opponent’s Goods and Service”). My understanding from the evidence as a whole is that “related items” as far as the Opponent’s prams are concerned refers to items such as detachable bags, hoods and rain covers, drink or umbrella holders and additional padding. The evidence does not indicate what “related items” refers to in the context of the furniture, but this is in any event of marginal relevance to the opposition given the Opponent only claims use for any of these goods since August 2016, a matter of days before the Relevant Date.
Annexed to Redelman 1 are screenshots taken on 27 June 2017 of the Opponent’s website at <redsbaby.com.au> which Ms Redelman says “show use of the [Opponent’s Marks] in respect of the following goods and related retail services of goods which include prams, strollers, bassinettes, accessories and nursery furniture.” Also annexed are similar screenshots from the Opponent’s website as it was at various times before the Relevant Date, the earliest being as at 5 February 2014. I note that on the homepage of the website the words “Redsbaby is available exclusively online” are prominent.
Also annexed to Redelman 1 are:
18. …the following examples of use of [the Opponent’s Marks], with dates as indicated:
2013-2014 product range - prams and strollers, hoods and covers for prams and strollers, baby carriages, and point safety harness padding;
2015-2016 – prams, strollers, hoods and covers for prams and strollers;
2016-2017 - prams, strollers, hoods and covers for prams and strollers, nursery furniture;
Product warning label artwork sheet [for a pram] dated 14 August 2015; and
Product packaging, including close up images of packaging, images of packaged products on a truck, [all being cardboard boxes bearing the Opponent’s Marks] and artwork for product packaging dated 28 July 2015.
Ms Redelman says that the Opponent:
20. …advertises and promotes [the Pram] Goods…by the following methods:
Website: Third party Internet advertising
Retargeted display advertising (Facebook Ad Network and Criteo)
Organic Social media – Facebook, Linkedin, Instagram and YouTube
Paid Social Media – Facebook, Instagram Search Engine Marketing (SEM) Redsbaby Demonstration Days
National Baby Fairs and Expos
Competitions via social media and third party websites Influencer marketing
Electronic Direct Marketing (emails with Redsbaby content) Third party Electronic Direct Marketing
Radio
Sponsored content via pregnancy and new-parent websites
Ms Redelman goes on to provide more detail of these advertising and promotional activities and in some cases annexes examples or other supporting material, albeit much of this is undated or dated after the Relevant Date. Much of the information provided is claimed as confidential and so I will refrain from discussing it here other than in general terms. I do however observe that the information provided about the Opponent’s “retargeted display advertising,” its “organic” or paid or other social media activity, its electronic direct marketing and its “demonstration days” is such that I am unable to say what the position may have been as at the Relevant Date. Of the seven examples of “national baby fairs and expos” given, four clearly took place
after the Relevant Date or are merely dated “2016.” Of the 10 examples of “influencer marketing” provided,5 two are dated shortly before the Relevant Date and the balance are dated thereafter. The sole example given of “competitions via social media and third party websites” took place in early 2016 and “attracted 5,800 entrants.”6 The radio advertising mentioned occurred in 2017.
On a confidential basis Ms Redelman discloses the approximate amount the Opponent spent in total on advertising and promoting the Opponent’s Goods and Service, (including the cost of its demonstration days), for (relevantly) the years 2014, 2015 and 2016, albeit the figure for 2016 is not refined into the amount actually spent before the Relevant Date. While it is apparent the amount spent increased significantly (off a low base) in the years since 2014, I would characterize the figures for 2014 and 2015 in particular as relatively modest.
Ms Redelman also annexes seven third party online articles about the Opponent, commenting that, “While these articles were published shortly after the [Relevant Date], they demonstrate the strong reputation [the Opponent] had established prior to [that date].” She likewise annexes a selection of third party blogs which mention the Opponent’s prams.
5 Ms Redelman explains that “influencer marketing” is “where products are gifted to celebrities and social influencers to stimulate word of mouth exposure to hundreds of thousands of consumers by means of social media such as Instagram.”
6 This figure is not claimed as confidential.
Noting that “[the Opponent] and its products bearing [the Opponent’s Marks] are regularly searched on the Google database,” Ms Redelman also annexes (on a confidential basis) “a screenshot showing organic search statistics for users of the Google database entering the term “REDSBABY” between 1 January 2014 to 23 April 2017.” The three year plus time span covered by this single page screenshot is not however broken down and it is accordingly impossible to say what activity occurred before the Relevant Date.
Ms Redelman provides further confidential data on “the number of persons who have visited the REDSBABY section of the [third party] website [<productreview.com.au>] to read reviews of [the Opponent’s] products” and she provides similar information for the third party website <babycentre.com.au>. The numbers disclosed do not however strike me as being particularly significant.
Ms Redelman also discloses on a confidential basis the annual retail sales revenue for the Opponent’s products for (relevantly) the years 2014, 2015 and 2016, albeit once again the figure for 2016 does not disclose the amount generated before the Relevant Date. It is nonetheless apparent from the figures provided that off a relatively low base in 2014 revenue increased around five-fold in 2015 and likewise again increased significantly in the full year 2016. Ms Redelman annexes a selection of sales invoices issued to customers during the three years in question (and beyond), which I note show there had been sales to people in every State of Australia by the Relevant Date.
Ms Redelman says that the Opponent first became aware of the Opposed Mark when informed by its attorneys in early 2017, following the opposed application’s acceptance for registration. She says that in opposing the application the Opponent’s fear is that:
53. The Applicant’s use and registration of the Opposed Mark in relation to baby or children’s clothing or any other infant related goods or services, including any online retail, advertising or marketing services is likely to lead consumers to be confused about the trade source of these goods or services and/or mistakenly believe the goods or services provided by the Applicant under the Opposed Mark emanate from [the Opponent] or that these products or services are associated with or are otherwise endorsed by [the Opponent].
Turning to the Applicant’s evidence in answer, Mr Zhou describes himself thus:
1. I achieved a Master Degree in 1994 and started import/export between Australia and China since 2003 I registered “AUSTRALIA ELLI-DAISY ENGINEERING & RESOURCES COMPANY” ABN 64127926026. [sic]
2. I have owned online business for exporting and for importing since 2016 (share same ABN number). Prior to this, I have worked with Costco Australia, Specialty Fashion Group, Harvey Norman on the role of International Supply Chain Logistic Officer, Global Supply Chain Analyst and Supply Chain Coordinator, my then work focused on more than 1000 items importing from China, Vietnam, Cambodia, Bangladesh, etc, and manage all items imported to Australia in compliance with All applicable Australia Law. [sic]
He explains the provenance of the Opposed Mark in China and his apparent connection with it as follows:
3. Early in 2006 while I was running “AUSTRALIA ELLI-DAISY ENGINEERING & RESOURCES COMPANY”, I already built up business relationships with REDBABY suppliers in China. [sic]
REDBABY was initially lodged Trademark Number 4803727 in Class 25 to Trademark office of The State Administration for Industry & Commerce of the People’s Republic of China on 28/07/2005. [sic]
Till 2011, REDBABY and its online store in China had hit US$189 million in revenue, many REDBABY products selling in Australia Market were imported by Australia importers and resold via online store like: Ebay, Gumtree, Etsy, Zazzle, etc. [sic]
Due to rising competition, since 2012 REDBABY and its online store in China went to decay, finally in late 2012 REDBABY and its online store were sold. Sooner REDBABY suppliers lost business. [sic]
Mr Zhou annexes copies of documentation supporting the above statements, with screenshots taken from the online Chinese Trade Marks Register showing that the applicant in 2005 for application 4803727 in Class 25 was a Chinese company named (in English translation) Beijing Redbaby IT Co., Ltd (“Beijing Redbaby”). I note that the mark subject of Chinese application 4803727, shown below, is substantially identical to the Opposed Mark:
Mr Zhou also annexes two financial articles published online on 13 December 2011 and 25 September 2012 respectively which discuss Beijing Redbaby’s initial stellar success following the launch of its e-commerce website (<redbaby.com.cn>) in 2004, its gradual decline in the face of competition and its eventual sale in 2012. Both
articles contain graphics featuring the mark shown below:7
Of the sale of Beijing Redbaby’s e-commerce business, the 2012 article observes:
$66 million is better than a slap in the face – but it’s a hasty and rather desperate exit for Chinese infant supplies e-commerce site Redbaby, once thought to be one of China’s most promising specialist e-tailers. Redbaby is acquired by Suning.
Mr Zhou does not explain what relationship, if any, he has or had with Beijing Redbaby or with Suning, simply saying:
4. Attributes to a good relationship with REDBABY suppliers, since early 2014, REDBABY suppliers encouraged me to build up B2C E-Commerce in Australia. Based on 2013 China & Australia trade data published by MOFCOM, considering 90% of selling products in Class 25 and 28 were imported from China, therefore, on 1st July 2014, I applied…to IP Australia for Trademark 1631541 in Class 25,28. [sic]
Details of Mr Zhou’s now lapsed application 1631541 for the Opposed Mark in Classes 25 and 28 are set out below. Mr Zhou notes that acceptance of the application for registration, which was advertised on 20 November 2014, was not opposed and he says that the only reason it lapsed and he was obliged to file the currently opposed application was that he was otherwise occupied at the relevant time and failed to pay the registration fee.
7 I mention that I am able to read Chinese characters and can accordingly confirm that the three characters here, (“hóng hái zi” in Pinyin), may be translated into English as “red boy”, red child” or “red baby”.
Application Number: 1631541
Trade Mark: Priority Date: 1 July 2014
Goods: Class 25: Apparel (clothing, footwear, headgear)
Class 28: Action figures (toys or playthings); Air pistols (toys); Articles of clothing for toys; Balloons (toys); Bath toys; Battery operated toys; Bouncing toys; Building blocks (toys); Building bricks (toys); Caps for pistols (toys); Children's toys; Construction toys; Costumes for toys; Craft toys sold in kit form; Cuddly toys; Detonating caps (toys); Drawing toys; Educational toys; Electronic activity toys; Electronic activity toys incorporating a talking mechanism; Electronic remote controlled toys; Electronic toys; Fighting machines being toys; Figurines being toys; Fluffy toys; Inflatable pool toys; Inflatable toys; Miniature car models (toys or playthings); Miniature vehicles being toys; Mobiles (toys); Model aeroplanes (toys or playthings); Model aeroplanes (toys or playthings) being capable of flight; Model animals (toys or playthings); Model cars (toys or playthings); Model cars (toys or playthings) having a motor and driven by remote control; Model figures (toys or playthings) for sale in kit form; Model vehicles (toys or playthings); Musical toys; Paper toys; Pedal- propelled wheeled toys; Plastic models being toys; Remote control toys; Ride-on toys; Rubber toys; Scooters (toys); Shovels (toys or playthings); Soft toys; Stuffed animals (toys); Toys; Water toys (other than swimming aids); Whistling toys; Wooden toys
It is also significant to note that Mr Zhou annexes details of the Opponent company obtained from the database of the Australian Securities & Investments Commission which show it was incorporated on 24 December 2013.
The remainder of Zhou 1 refers directly to the SGP and is in the nature of submissions which need not be set out here. I do however mention, (as Ms Redelman herself points out in Redelman 2 discussed below), that several of these submissions appear on the face of it to be based upon false premises, such as mistaking the relevant priority dates of the parties’ marks or similar.
The Opponent’s evidence in reply consists of Redelman 2 and Gun 1. Much of Redelman 2 is concerned with addressing some of the misconceived submissions in Zhou 1 and, again, it is not necessary to detail these here. Referring to an inconsistency in her first declaration highlighted by Mr Zhou, Ms Redelman does however clarify in Redelman 2 that:
4. …In my declaration I stated at paragraph 15 that [the Opponent’s] first sale was January 2014 but later at paragraph 50 in the document I stated that [the Opponent’s] first sale occurred in February 2014. I wish to correct this error and confirm that the first sale took place on 12 February 2014.
Ms Redelman does not say what that first sale specifically related to, although my understanding from the totality of the Opponent’s evidence is that it would most likely have been the sale of a baby carriage, pram or stroller.
Further to the issue of early use, Ms Redelman says that “in late 2013 [the Opponent] had a landing page for its website which incorporated [the Opponent’s] REDSBABY Mark and a ‘teaser’ image with the words ‘Coming Soon’.” She annexes an email dated 28 December 2013 from (I understand) the person who developed the website in question and which congratulates the Opponent on the website’s eventual “launch,” albeit noting that she is “unable to provide the art work or a screenshot of this page and it is not available via the Internet Wayback Machine as the page was hosted on a redirected URL to which [she] no longer [has] access.” Also annexed is “a screenshot of a video from [the Opponent’s] YouTube Channel which bears the REDBSBABY Mark and which is date stamped 20 January 2014.”
The second declaration constituting the evidence in reply (Gun 1) was made by Lara Gun, a solicitor with the firm acting for the Opponent. Referring to the claim in Zhou 1 that Mr Zhou had “owned the online business for importing, since 2016,” Ms Gun annexes an investigator’s report she commissioned dated 13 February 2017 which found no then current website corresponding to this URL and no evidence suggesting that such a website had ever existed. Indeed, the investigator reports that the URL in question was listed for sale at the time of his
enquiries. The investigator did find that the websites <redbaby.com.cn> and
<redbaby.com> were registered to an individual with an address in China and were “in use,” but found no evidence Mr Zhou was associated with either website. Further online enquiries made by the investigator through, inter alia, social media websites located no use of the Opposed Mark in Australia, although he does annex a screenshot taken from the website <ebay.com.au> obtained after a search of the site for the word “redbaby” which “disclosed three items for sale, all from China and none connected to
the TM in this matter.”8
Ms Gun also details the results of enquiries she herself made which located no use of the Opposed Mark in Australia and found no apparent connection between Mr Zhou and any relevant Chinese-based person or entity. Her conclusion is that Zhou 1 “does not provide any evidence to support the Applicant’s ownership of the Opposed Mark or use of the mark in Australia or in any other country.”
As had Ms Redelman, Ms Gun also addresses some of the misconceived submissions contained in Zhou 1. Again, it is unnecessary to detail these here.
Further Evidence
As mentioned, the Opponent and the Applicant filed written submissions in early June 2018, prepared by Ms Stewart in the Opponent’s case and by Mr Zhou himself in the case of the Applicant.9 After considering the Applicant’s submissions the Opponent’s attorneys filed a request with IP Australia on 19 June for an extension of time to file further evidence (under reg 5.15), or in any event to rely on further evidence (under reg 21.19), on the basis that the Applicant’s submissions contained
new evidence which required answering (“the FE request”). The FE request was accompanied by the proposed further evidence itself, being a second declaration by Ms Gun made on 19 June 2018, with Annexures LG-6 to LG-8 (“Gun 2”).
8 While not relevant to my decision, I note that the items in question were a dress for a “baby girl” and two “infant headbands.”
9 The parties were directed to file their written submissions that long before the hearing because the matter had originally been scheduled for hearing in June before a different Hearing Officer before
being rescheduled in September and allocated to me.
A delegate of the Registrar responded on 26 June advising that an extension based on reg 5.15 could not be considered because the evidence stages of the opposition had already concluded. Insofar as the FE request relied, in the alternative, on reg 21.19, the delegate pointed out that it did not conform with the formal requirements for such requests set out in Part 51.2.6 of IP Australia’s publicly available Trade Marks Office Manual of Practice and Procedure (“the Manual”). She accordingly advised the Opponent to resubmit its request addressing the matters specified in Part 51.2.6 and said that the person delegated to hear the substantive opposition would then consider the request “at the appropriate time.” In this regard, as she highlighted in her advice, Part 51.2.6 specifies, inter alia, that:
The delegate will not consider out of time evidence as a matter of routine. The party filing the evidence must make a compelling case in favour of it being considered. The issues the filing party needs to address in its submissions include:
· Why the evidence was filed after the due date
· If the evidence stage in proceedings has concluded and the matter is ready for determination, why the evidence was not filed earlier
· What the evidence shows
· Why that information is crucial to the delegate’s decision
· Why it is in the public interest to have the information considered
· What is the balance of convenience for the parties if the information is considered.
…
If the delegate is not satisfied that there is a compelling case, both parties will be advised that the matter will proceed to hearing and decision based on evidence that has been properly filed. If the delegate is satisfied there is a compelling case, the other party will be given an opportunity to make representations in the matter before the delegate decides whether or not to consider the information.
The Opponent’s attorneys responded on 10 July by refiling the FE request, this time taking the requirements of Part 51.2.6 into account. The hearing of the substantive opposition was subsequently allocated to me and it has accordingly fallen to me to
decide whether or not to take the proposed further evidence contained in Gun 2 into account in deciding the substantive opposition. In my initial contact with the parties, via email on 30 July, I indicated I was inclined to do so, but added:
I will however reserve my ultimate decision regarding admission of Gun 2 in case Mr Zhou objects. If Mr Zhou does object then I ask that he let me know via email by Tuesday, 21 August next, explaining the reasons for the objection. I will hear any further submissions the parties may want to make on the issue at the commencement of the hearing proper on 4 September.
If Mr Zhou does not object, then I ask that he let me know as soon as possible. In this case I will allow Mr Zhou 14 days to file further evidence in answer if relevant, limited to responding to any new matters raised in Gun 2.
On 19 August Mr Zhou did formally object to admission of Gun 2, with the objection styled as a declaration made by Mr Zhou that day, with Annexures WZ-12 and WZ- 13 (“Zhou 2”). As foreshadowed, I heard the parties’ further oral submissions on the admissibility of Gun 2 at the commencement of the hearing proper on 4 September. I said that I would consider these further submissions and include my final determination of the FE request in my eventual decision on the substantive grounds of opposition pressed. It was agreed that this could be done even if I were to allow admission of Gun 2, given Mr Zhou confirmed he was content to rely on my also admitting Zhou 2 in response to Gun 2 and he would not therefore require more time to file additional evidence in answer.
Having now considered the parties’ submissions on the substantive grounds and on the relevance of the proposed further evidence I have concluded that, far from being “crucial” as indicated in Part 51.2.6 of the Manual, the evidence in question would in fact have no bearing at all on my ultimate decision. In this regard the principal reasons for its claimed relevance were summarized by the Opponent’s attorneys in their resubmitted FE request of 10 July as follows:
On 14 June 2018, the Applicant filed its submissions in relation to the present opposition proceedings (the Applicant’s Submissions). Inter alia, the Applicant’s Submissions contained entirely new and previously unseen material purporting to support claims made by the Applicant in
relation to the Applicant’s use of the Opposed Mark before the [Relevant Date].
Critically, some of the new material contained in the Applicant’s Submissions indicated that a number of these activities appeared to have been engaged in by the Applicant after the [Relevant Date], but which are impliedly held out in the Applicant’s Submissions to be pre-priority date activities. These activities relate to use of the website which is registered to the Applicant. It is evident from the Applicant’s Submissions that the Applicant will use this website to promote and sell its goods under the Opposed Mark and may have done so already (post priority-date).
The Applicant’s Submissions also detailed certain other activities on other websites registered to the Applicant < and <shop.pharmacyspecialty.com.au>. This activity does appear to have been undertaken very recently and indicates that the Applicant is planning to sell under the Opposed Mark goods which are a direct overlap with the Opponent’s goods (namely, baby carriers, prams, strollers) or are closely related to them, such as children’s clothing.
I do not however agree with the Opponent that Mr Zhou claims in Zhou 1 that he has ever used the Opposed Mark for any particular goods or services, whether before or after the Relevant Date. As noted earlier, all Mr Zhou says is that, “Early in 2006…I built up business relationships with REDBABY suppliers in China,”10 that “Attributes to a good relationship with REDBABY suppliers, since early 2014, REDBABY suppliers encouraged me to build up B2C E-Commerce in Australia” (sic)11 and “Since 2006 all kinds of ‘REDBABY’ products already existed in Australia market far earlier than opponent’s REDSBABY products” (sic)12 Nor do I consider that anything in Mr Zhou’s submissions of 14 June “purports to support [such] claims.” Moreover, whether or not Mr Zhou has ever used the Opposed Mark has not been a factor in my consideration of any of the opposition grounds pressed in any event.
Nor can I agree that anything said by Mr Zhou in Zhou 1 or in his submissions of 14 June “indicates that the Applicant is planning to sell under the Opposed Mark goods which are a direct overlap with the Opponent’s goods (namely, baby carriers,
10 Zhou 1 at [3].
11 Zhou 1 at [4].
12 Zhou 1 at [7].
prams, strollers) or are closely related to them, such as children’s clothing.” I note that such use for baby carriers, prams or strollers is likely on the face of it to infringe the Opponent’s registration 1619604 whether or not the opposed application eventually achieves registration given it does not cover these goods, but that is not in any case a relevant consideration in my determining the present opposition. That the Applicant may be “planning to sell [goods] such as children’s clothing” is unremarkable given what the opposed application does cover. As discussed below, I do not however agree that children’s clothing is “closely related to,” (or to use the appropriate terminology found in the Act, “similar to”), “the Opponent’s goods (namely, baby carriers, prams, strollers).”
The FE request is accordingly refused and I confirm that my consideration below of the five opposition grounds pressed is based solely on the properly filed evidence identified in paragraph 5 above.
Discussion
Section 44
Only ss 44(1) and (2) are relevant in this case and these are 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.
The ground based on s 44 is particularised in the SGP as follows:
The Opposed Mark is substantially identical with or deceptively similar to the following trade mark, within the meaning of section 44, as set out below and which has an earlier priority date than the [Relevant Date], which is registered in relation to the same or similar goods as the goods and services for which the Opposed Mark is sought to be registered:
Trade Mark Number Filing Date Class Status 1619604 28 April 2014 12, 18
& 20
Regis- tered
Clearly the priority date of the Opponent’s registration 1619604, being 28 April 2014. is earlier than the Relevant Date. To establish its section 44 ground then, the Opponent needs to establish on the balance of probabilities that:
•the Applicant’s Goods and Services are, as the case may be, similar to, or closely related to, the goods covered by registration 1619604 (“the s 44 Goods”); and
•the Opposed Mark is substantially identical with, or deceptively similar to, the Opponent’s registered mark (“the s 44 Mark”).
The s 44 Goods were set out in full in paragraph 7 above. Although they encompass a relatively large number of items, I note all are intended for use by or with babies or young children and I accordingly proceed on the basis that the relevant market for the goods in question would principally be the actual or prospective parents of such children. As for the goods in Class 25 covered by the opposed application, these might be of interest to anyone (above a certain age) in the population generally, while
the services covered are on the face of it somewhat more specialized and likely to be of interest only to those engaged in a commercial endeavour of some kind.
That said, it is convenient to begin with the issues of substantial identity and deceptive similarity. As far as substantial identity is concerned, Ms Stewart referred to the generally accepted test for assessing this described by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd13 (“Shell”) and, based on more recent
decisions of both the High Court14 and Full Federal Court,15 made out a strong case in
support of the Opponent’s “[contention] that on a side-by-side comparison there is a total impression of resemblance between the Opposed Mark and the [s 44] Mark.”
Mr Zhou, for his part, made no distinction between the concepts of substantial identity and deceptive similarity, simply submitting that the differences between the marks apparent from a side by side comparison meant that, as he put it in Zhou 1 at [7]:
Any honest person will admit “the above 2 trade marks are totally different in visual, in contextual, in colour, in word, in pattern”, it is easy to distinguish the difference between. It is not “Substantially identical/deceptively similar” [sic, original emphasis retained].
It is however not necessary to reach a concluded view on whether the parties’ marks are substantially identical in this case given s 44 is triggered in any event if I am satisfied the marks are at least “deceptively similar.” As I indicated at the hearing, I am satisfied that the marks are undoubtedly sufficiently similar to, in principle, meet this threshold. Contrary to Mr Zhou’s apparent understanding, (as Ms Stewart emphasized, again citing Windeyer J in Shell), it is universally accepted that in assessing deceptive similarity the marks in question are not to be considered side by side. Rather, I should attempt to assess the effect or impression produced in the minds of new or prospective parents, who know of the s 44 Mark (and perhaps have an imperfect recollection of it), when they encounter the Applicant’s Goods and Services being offered under the Opposed Mark.
13 (1963) 1B IPR 523; 109 CLR 407 at IPR 528; CLR 415.
14 E & J Gallo Winery v Lion Nathan (Aust) Pty Ltd (2010) 241 CLR 144.
15 Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56 and Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83.
As Ms Stewart also highlighted, the words “deceptively similar”, (unlike the words “substantially identical”), are defined in the Act itself, with s 10 specifying that “a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.” As she
noted, after reviewing relevant case law on the issue in Australian Postal Corporation v Digital Post Australia Pty Ltd the Full Federal Court concluded:16
[70] It is clear from the above passages that the threshold for confusion is not high. Courts must compare the marks visually and aurally in the context of how the marks are used, and decide if there is a reasonable probability that the ordinary person to whom the marks are targeted, entertains a reasonable doubt as to the relationship between the marks. But there must be a realistic assessment, and a mere possibility of confusion is not enough.
As is apparent from the Full Court’s words, whether marks are “deceptively similar” in the sense required by the Act depends not only on any visual or aural similarity they may have, but also upon the context in which the marks are, or might be, used. In other words it also depends upon the nature of the goods or services involved and the extent to which they might reasonably be considered, in terms of s 44, “similar” or “closely related.” As French J put it in Registrar of Trade Marks v Woolworths
Limited:17
[40] In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services.
It is important also to stress that I must assume use of the parties’ trade marks in a “normal and fair manner” for the actual goods or services covered by the Opponent’s registration and the opposed application.18 It is the statutory right to use granted by registration that I must consider in the case of s 44 and, in the case of the Opposed Mark in particular, not feared future use beyond the scope of the registration sought.
16 (2013) 105 IPR 1 at [59]-[70].
17 (1999) 45 IPR 411.
18 Smith Hayden & Co. Ltd’s Application (1946) 63 RPC 97 (Ch D); Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411 at [50].
Bearing this in mind, I turn now to the second significant matter that the Opponent need establish, namely whether any of the Applicant’s Goods and Services are “similar” (in the case of the goods) or “closely related” (in the case of the services) to the s 44 Goods. Dealing firstly with the Applicant’s Goods, (“Apparel (clothing, footwear, headgear)”), s 14(1) of the Act provides the following definition:
Definition of similar goods…
(1) For the purposes of this Act, goods are similar to other goods:
(a)if they are the same as the other goods; or
(b)if they are of the same description as that of the other goods.
Obviously none of the Applicant’s Goods are the same as any of the s 44 Goods. Nor, notwithstanding Ms Stewart’s submissions to the contrary, do I believe any are “of the same description.” In so concluding I mention that I do agree in the main with her submissions regarding the applicable principles that inform this issue,19 which were conveniently summarized by Kenny J in McCormick & Co Inc v McCormick (“McCormick”):20
[18] The authorities establish that there are three principal factors to be considered in this regard. They are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold. As to the last-mentioned matter, it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade…
While the Courts have often emphasised that no single factor is necessarily determinative of the issue, I would firstly observe that the first two matters identified by Kenny J are clearly inapplicable in this case. “Apparel” is not on the face of it of the same nature, nor does it share the same origin or characteristics, as any of the items in Classes 12, 18 or 20 included in the s 44 Goods. Moreover, there is obviously no overlap between the use or purpose of apparel and that of any of the s 44
19 Based upon the well known U.K. authorities Jellinek’s Application (1946) 63 RPC 59, Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369 and Re Lyons & Co Ltd’s Application [1959] RPC 120, which have been followed, as she noted, in numerous Australian decisions since.
20 (2000) 51 IPR 102 at [18].
Goods. The fact that the Applicant’s apparel may be intended for babies or young children is no more relevant in this regard than it would be in the case of, say baby formula or children’s toys.
As to the third factor mentioned, there is no evidence before me that apparel shares the same trade channels as any of the s 44 Goods. On the face of it, manufacturers of apparel, even apparel intended primarily for infants, would not in the ordinary course also produce goods intended for use by or with infants in Classes 12, 18 or 20 and would not usually be considered as belonging to the same trade as the Opponent. It is possible, of course, that the parties’ goods might be sold in the same shops, particularly in large department stores, and in this regard might in principle be sold to “the same sort of customers,” but this alone does not strike me as sufficient reason to characterize them as “similar goods” in the sense contemplated by s 44.
Nor do I consider that the Applicant’s Services are closely related to any of the s 44 Goods. While Ms Stewart’s submissions did not specifically address this issue in any detail, I understand the Opponent is principally concerned about the online advertising and promotion services covered by the opposed application. In this regard it fears that the online services the Applicant intends to provide under the Opposed Mark might be used to advertise or promote the goods of third parties which are either the same as the s 44 Goods or at the very least suitable for use by babies or young children.
In Qantas Airways Limited v Edwards21 (“Qantas”) at [106]-[129] Yates J examined the issue of closely related goods and services, referring in detail to earlier decisions of the Federal Court that had addressed the question. Yates J was considering s 44(1) in that case and specifically whether “Clothing; footwear; headwear; shirts; T-shirts” in Class 25 were closely related to “advertising, marketing and merchandising” services in Class 35. He concluded that they were not. As he put it at [126]:
What is it then, in the present case, that makes “advertising, marketing and merchandising services” and more particularly (on the appellant’s case) “merchandising services”, services that are “related” to “clothing; footwear; headwear; shirts; T-shirts” beyond the fact that each of the respondent’s goods is capable of being, along with a vast range of other
21 (2016) 119 IPR 271.
goods and services, the subject of “advertising, marketing and merchandising”? The answer is, in truth, nothing. The respondent’s goods are no more and no less related to “advertising, marketing and merchandising services” than any other goods or services that can be advertised, marketed or merchandised. How then is it said that the appellant’s services are “closely related” to the respondent’s goods? The simple fact is that, in the present case, there is no close relationship between the two for the purposes of s 44(1)(a)(i) of the Act.
Whereas Yates J’s assessment was made in the context of s 44(1) rather than, as here, s 44(2), I do not think this suggests I should reach a different conclusion. Indeed, while in the present case the opposed application does cover (online) advertising services and other services which might fairly be described as “marketing” services, unlike the case with Qantas it does not actually cover services in the nature of
“merchandising” at all.22
In summary, in my estimation the opposed application covers neither goods that are similar to, nor services that are closely related to, the s 44 Goods. Accordingly, despite the apparent similarity between the Opposed Mark and the s 44 Mark the Opponent has not established its s 44 ground of opposition.
Section 58
Section 58 is reproduced below:
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
The ground based on s 58 is particularised in the SGP as follows:
The Opposed Mark is substantially identical with or deceptively similar to the following trade marks which have been used continuously in Australia before the [Relevant Date] and in relation to the same or similar goods/services in relation to which the Opposed Mark is sought to be registered (called the Opponent’s Marks):
Trade Mark
Number
Filing Date
Class
Status
22 Even retailing services per se would not necessarily be “closely related” to the Applicant’s Goods. See the discussion on this point by Yates J in connection with ss 100 and 101 of the Act in Optical 88 Ltd v Optical 88 Pty Ltd (2010) 275 ALR 526; 89 IPR 457 at [221] and his Honour’s conclusion that, “there is no principle of general application in Australian trade mark law that use of a mark in relation to retail services for goods is use in relation to the goods themselves.”
1619604
28 April 2014
12, 18
& 20
Regd.
REDSBABY
Unregd.
The Opponent’s Marks were first used in Australia in January 2014 and use of the marks has been continuous since that date.
The Opponent’s Marks have been used in relation to baby carriages, strollers, prams, hoods and related items as well as retail services in respect of these goods, since January 2014 and continue to be used for these goods and services. The Opponent’s Marks have been used in respect of nursery and children’s furniture, cots, beds and related items as well as retail services in respect of these goods since August 2016 and the marks continue to be used for these goods and services.
The Applicant is therefore not the owner of the Opposed Mark within the meaning of section 58.
I am satisfied based on Ms Redelman’s evidence that the Opponent’s Marks were used in relation to the Opponent’s Goods and Service before the Relevant Date. I am moreover satisfied such use occurred before the Opposed Mark was itself used in Australia for any particular goods or services (of which, as earlier indicated, there is no specific evidence before me). However the references in the SGP to “deceptively similar” marks and to “similar goods/services” are on their face misconceived. In order to establish its s 58 ground the Opponent must in addition to relevant use, show that (1) the Opposed Mark is at least substantially identical to the Opponent’s Marks and (2) the Applicant’s Goods and Services (or at least some of them) are “the same
kind of thing” as (at least some of) the Opponent’s Goods or as its Service.23
Ms Stewart’s written submissions on the s 58 ground, which are set out below (minus footnote), do nevertheless acknowledge these requirements:
87. The Opponent contends that it, and not the Applicant, is the owner of the REDBABY word mark in Australia because:
(i) it has used in Australia a trade mark, REDSBABY, which is substantially identical to the opposed mark (see above in relation to s 44);
23 Re Hicks’ Trade Mark (1897) 22 VLR 636; Carnival Cruise Lines v Sitmar Cruises Ltd (1994) 31 IPR 375; Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 74 IPR 246, particularly per Kenny J at [10]-[22] and Allsop J at [87]-[94].
(ii) that use was in relation to services which are the same or the “same kind of thing” as the services specified in the relevant application; and
(iii) its use predated the Applicant’s trade mark application for, and first use of, the Opposed Mark
88. By reason of the evidence provided in the Redelman declarations, and in particular that outlined above in relation to s 60, the Opponent has used the mark in relation to goods and services which are “the same kind of thing” as the services in relation to which registration of the Opposed Mark is sought.
I would clarify that the Opponent’s contention, as set out in this submission, “that it, and not the Applicant, is the owner of the REDBABY word mark in Australia” is one thing, but that it is whether the Opponent is the owner of the Opposed Mark as a whole that I must in fact decide. In this regard, as the submission otherwise recognizes, the s 58 ground depends on whether the Opposed Mark as a whole is substantially identical to the Opponent’s Marks. As mentioned in my earlier discussion on the s 44 ground, I accept that there is at least a reasonable case for holding the parties’ respective marks substantially identical. Nevertheless, it is once again unnecessary here to consider this issue in detail or to express a concluded view since I am not in any event satisfied any of the parties’ relevant goods or services are “the same kind of thing.”
As is apparent from Ms Stewart’s submission, the Opponent’s claim to ownership of the Opposed Mark in fact only extends to the services covered by the opposed application, these said in paragraph 87(ii) to be the same kind of thing as the services for which the Opponent’s Marks were used before the Relevant Date and, (possibly in the alternative), said in paragraph 88 to be the same kind of thing as both the services and the goods for which the Opponent’s Marks were so used. That said, I think it self evident none of the services covered by the opposed application are the same kind of thing as any of the goods listed in the SGP, being “baby carriages, strollers, prams, hoods and related items” and “nursery and children’s furniture, cots, beds and related items” (collectively “the s 58 Goods”). Indeed, as indicated in my discussion on the s 44 ground I do not consider any of the Applicant’s claimed services meet the even lower threshold required by s 44 of being “closely related” to any of the s 58 Goods.
The remaining issue for determination is accordingly whether any of the Applicant’s claimed services are the same kind of thing as the service of retailing the s 58 Goods (“the s 58 Service”). Again, in my view, none are. The fact that the s 58 Service has, as I understand it, been provided primarily via the Applicant’s website and that some, at least, of the Applicant’s claimed services would be provided online, has little bearing on this issue. The claimed services involve the compilation and provision of online directories, advertising and promotion, data processing and the provision of “information, including online, about advertising, business management and administration and office functions.” Such services are clearly very different in my estimation from retailing services and, even were the question of substantial identity settled in the Opponent’s favour, I do not think the Opponent’s claim to ownership of the Opposed Mark for the s 58 Service would also extend to any of the Applicant’s claimed services.
The opposition ground based on s 58 of the Act is therefore not established.
Section 60
Section 60 of the Act is reproduced below:
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.
Note: For priority date see section 12.
The ground based on s 60 is particularised in the SGP as follows:
The Opponent’s Marks have been used in Australia since as early as January 2014 in relation to baby carriages, strollers, prams, hoods and related items as well as retail services in respect of these goods. The Opponent’s Marks have been used in Australia since August 2016 in respect of nursery and children’s furniture, cots, beds and related items as well as retail services for these items.
The Opponent’s Marks have acquired a significant reputation in the Australian marketplace.
Use of the Opposed Mark by the Applicant (or any other person) in relation to the same or similar goods/services in relation to which the Opposed Mark is sought to be registered would be likely to deceive or cause confusion contrary to section 60.
As mentioned earlier, “the Opponent’s Marks” referred to here are defined in the SGP as being the word “REDSBABY” (rendered in plain capital letters) and the slightly stylised version of this word that is subject of its registration 1619604 (to which I earlier referred as “the s 44 Mark”). As I said earlier, the two marks are in my view clearly substantially identical and I again confirm nothing in the discussion which
follows turns on any actual differences between them.24 I will accordingly continue to
refer to both marks collectively in the same manner as does the SGP.
I agree with Ms Stewart that what needs to be considered is the fair notional use the Applicant might make of the Opposed Mark in relation to the actual goods and services in Classes 25 and 35 covered by the opposed application. The issue is whether such use would be likely to deceive or cause confusion amongst, as it is usually put, a “significant” or “substantial” number of potential consumers of the Applicant’s Goods and Services because of the reputation of the Opponent’s Marks as at the Relevant Date, 1 September 2016.
As I indicated earlier, potential consumers of the Applicant’s goods in Class 25 would I think include almost all of the Australian population above a certain age, while the services in Class 35 claimed are on the face of it likely to be of interest only to those engaged in some kind of commercial endeavour. On the other hand, the “reputation” of the Opponent’s Marks is likely to reside amongst a different (albeit potentially overlapping and not necessarily insignificant) cohort, principally being new or prospective parents. Bearing this in mind, I note that Kenny J provided the following
guidance in McCormick regarding the nature of the reputation contemplated by the section:25
24 See also paragraph 8 above.
25 (2002) 51 IPR 102 at [81]-[82].
[81] What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:
reputation … 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute …
2. favourable repute; good name … 3. A favourable and publicly recognised name or standing for merit, achievement, etc … 4. The estimation or name of being, having done, etc, something specified.
Compare The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.
[82] Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?
In terms of the present matter then, the question becomes: “Does the evidence establish that in Australia before 1 September 2016 the Opponent’s Marks were recognised by the public generally and, because of that, the use by the Applicant of the Opposed Mark would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing the Applicant’s Goods and Services to the Opponent?”
As mentioned in my earlier discussion on the s 44 ground I accept, as Ms Stewart highlighted, that “the threshold for confusion is not high.”26 I accept too that, as Yates J put it in Qantas,27 “the ‘other’ mark need not have acquired a reputation in Australia that is specific to the goods or services which are the subject of the opposed
application,” albeit significant differences between the parties’ relevant goods or services are undoubtedly an important consideration in assessing the likelihood of confusion or deception. Nevertheless, based on my assessment of the Opponent’s evidence, I find I am not satisfied significant public confusion was likely.
In so concluding I firstly note that the reputation of the Opponent’s Marks would effectively only relate to the Pram Goods (and their retail via the Opponent’s
26 As indicated by the Full Federal Court in Australian Postal Corporation v Digital Post Australia Pty Ltd (2013) 105 IPR 1 at [70].
27 (2016) 119 IPR 271 at [143].
website), given that use for nursery furniture and related items only commenced in August 2016. The Pram Goods, as discussed earlier, are on the face of it, rather different from apparel in Class 25 or any of the claimed services in Class 35.
Moreover, while the evidence does show that sales of the Pram Goods have increased significantly since the Opponent’s first sale in February 2014 and that the amount spent on advertising and promoting the goods has grown similarly since then, it is also apparent that most of this growth occurred from 2016 onwards and, as my earlier summary of Ms Redelman’s evidence suggests, quite possibly after the Relevant Date.
Citing the decision of Hearing Officer Thompson in Hugo Boss AG v Jackson International Trading Company Kurt D Bruhl Gessellschaft MBH & Co KG,28 Ms Stewart did in addition submit that, “Reputation for the purpose of s 60 of the Act comprises a combination of recognition of the trade mark by the Australian public as well as the ‘esteem’ with which it is regarded by the Australian public.” I am,
however, unable to say whether the Opponent’s Marks were regarded with esteem as at the Relevant Date based on the Opponent’s evidence. Certainly there is no evidence before me of any of the things suggested by Mr Thompson (at 436) as likely to contribute to the “esteem component” of the Opponent’s Marks’ reputation, such things as the “credit, image and values projected,” association with the well known marks of others, “sponsorships, cross-promotions, ‘contra-deals’ and so forth.”
Nor can I agree with Ms Stewart’s submission, referring again to Mr Thompson’s words (at 437), that as at 1 September 2016 “the public perception” of how the Opponent’s Marks were “being used, developed and exploited” or the Opponent’s “propensity towards brand extension and a diversified portfolio of goods and services” would be significant factors in this case, given the Opponent’s expansion into the field of nursery furniture on which she relied did not occur until August 2016.
28 (1999) 47 IPR 423 at 436, cited with approval by, inter alia, Kenny J in McCormick and Yates J in
Qantas.
Finally, the parties’ marks, while undoubtedly similar, are not the same. The conjoined words “redbaby” combined with the image of a cherub to my mind convey a certain whimsical idea which is entirely absent from the apparently made up word “redsbaby” alone. This I think would also be a factor, albeit I accept a minor factor, in mitigating the risk of deception or confusion.
In summary, I am not satisfied the reputation of the Opponent’s Marks as at the Relevant Date was such that use of the Opposed Mark for the Applicant’s Goods and Services was then likely to deceive, or cause confusion amongst, a significant number of the relevant potential consumers. The Opponent has accordingly not established its ground of opposition under s 60.
Section 42(b)
Section 42(b) of the Act is reproduced below:
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.
The ground based on s 42(b) is particularized in the SGP as follows:
Because of use and reputation in the Opponent’s Marks, in Australia since as early as January 2014, use of the Opposed Mark in relation to the same or similar goods and/or services would be likely to mislead or deceive consumers contrary to sections 18 and 29 of the Australian Consumer Law (Schedule 2 to the Australian Competition and Consumer Act 2010 (Cth)) or alternatively, constitute the common law tort of passing off.
Insofar as relevant, ss 18 and 29 of the Australian Consumer Law (“the ACL”) are set out below:
Section 18: Misleading or deceptive conduct
(1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
Section 29: False or misleading representations about goods or services
(1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:
…
(g) make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; or
(h) make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation.
I note that these provisions of the ACL are in essentially identical terms to ss 52 and 53(c) and (d) of the now repealed Trade Practices Act 1974 (“the TPA”) and, as Ms Stewart’s submissions acknowledge, case law under the TPA in this area is also relevant to interpretation of ss 18 and 29 of the ACL.
It is invariably the case that where an opponent is unsuccessful in establishing its s 60 ground, it would inevitably also be unable to establish the relevant sections of the ACL (or TPA) had been breached in circumstances where the reputation of the very same trade mark or trade marks is relied on. This is the case here in my view. Unlike s 60 of the Act, ss 18 and 29 of the ACL and the tort of passing off are not concerned with behaviour that “would be likely to deceive or cause confusion”. The relevant provisions of the ACL require a likelihood that relevant consumers be misled or deceived as to the true origin of the Applicant’s Goods and Services or their connection to the Opponent, rather than mere confusion or simply being caused to wonder as is the case with s 60 of the Act. As for passing off, this has been described as “an action concerned with misrepresentation by which the goodwill of the plaintiff’s business is deflected to the use of the defendant with consequent damage
(or a likelihood thereof) to that business.”29
There are several decided cases confirming that more is required to establish a likelihood of misleading or deceptive conduct (or, by extension, conduct amounting to the making of false representations or, indeed, passing off) than is the case with trade marks likely to deceive or cause confusion under s 60. In Parkdale Custom Built
29 Shanahan’s Australian Law of Trade Marks and Passing Off, Lawbook Co., 4th ed, 2008 at [95.1005].
Furniture Pty Ltd v Puxu Pty Ltd,30 by way of example, Gibbs CJ noted with respect to s 52 of the TPA:
In McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.
I consider the reasoning set out earlier in rejecting the Opponent’s case based on s 60 of the Act is no less applicable to its claims that the Applicant’s use of the Opposed Mark as at the Relevant Date would have breached ss 18 and 29 of the ACL or amounted to passing off. In particular, I am not satisfied that the reputation of the Opponent’s Marks was such that use of the Opposed Mark for the Applicant’s Goods and Services was likely to mislead or deceive, amount to the representations alleged, or constitute passing off.
Accordingly, the Opponent has not established its ground under s 42(b) of the Act.
Section 62A
Section 62A is reproduced below: below:
Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
The ground based on s 62A is particularized in the SGP as follows:
By reason of reputation in the Opponent’s Marks, which the Applicant could have or should have been aware, the filing of the Opposed Mark is a filing in bad faith being an application that is substantially identical with or deceptively similar to the Opponent’s Mark, in relation to the same or similar goods/services as covered by the Opposed mark.
I would firstly make clear that I do not accept the premises upon which the s 62A ground is said to be based. For the reasons discussed previously in connection with the ground under s 44, I do not agree that the Opposed Mark covers “the same or similar goods/services” as any of the Applicant’s Goods or Service. Nor do I think
30 (1982) 1A IPR 684 at 688.
the reputation of the Opponent’s Marks as at the Relevant Date was such that Mr Zhou “should have been aware” of them. I accept that he could have been aware of them when he filed the opposed application, but even if there were any evidence of this before me, which there is not, I do not believe this would necessarily reflect on his bona fides at the time in any event.
Moreover it is impossible to ignore Mr Zhou’s evidence, (filed of course some months after the SGP was filed), that the Opposed Mark is based upon a substantially identical mark filed in China in 2005, several years before the Opponent company was incorporated in 2013, began using the Opponent’s Marks and applied to register the s 44 Mark in 2014. I note too Mr Zhou’s evidence discussed earlier that he originally applied to register the Opposed Mark on 1 July 2014 for, inter alia, the identical goods in Class 25 as the opposed application.
Ms Stewart’s written submissions on the s 62A ground begin with the following general observation, which in the main I am happy to accept:
As noted in Shanahan 6th edition (2016) at [50.2685], the consensus of decisions which have explored the meaning of “bad faith” suggests the following test for bad faith:
For an assessment of “bad faith”…it would appear that there would need to be an element of intentional dishonesty or a deliberate attempt to mislead the Registrar in some way in the claim made by means of the application. In circumstances where an applicant claims that the application was not made in bad faith but, rather, as a result of its own ignorance or naivety, then the evidence would need to show that the circumstances were such that the “reasonable man” standing in the shoes of the applicant, should be aware that he ought not to apply for trade mark registration.
I cannot however agree with Ms Stewart’s subsequent submission that this imposes an obligation on the Applicant in this case to “[deny] that [his] application was not made in bad faith, or [assert] that it was made as a result of [his] own ignorance or naivety.”
Nor do I think any claimed inconsistencies between what is said in Zhou 1 and the findings in the investigator’s report annexed to Gun 131 suggest the opposed application was filed in bad faith.
31 Discussed at paragraph 33 above.
For the sake of completeness I note that Ms Stewart’s final submission on the s 62A ground was:
…that the evidence shows that that the “reasonable man” standing in the shoes of the Applicant, should have been aware of the Opponent’s pre- existing Registered Mark or at least conducted a search of the Australian Trade Mark Register. There is no evidence that the Applicant did so despite his business experience and education identified [in Zhou 1], and no evidence that the Applicant has any independent or otherwise legitimate rights in the Opposed Mark. Accordingly, a conclusion of bad faith is open to be drawn.
There is no evidence before me one way or the other as to whether Mr Zhou searched the Register before filing the opposed application or indeed whether he, or for that matter the hypothetical reasonable man, was likely to be sufficiently thorough as to locate the Opponent’s registration 1619604 in Classes 12, 18 and 20 if he had. It is of course possible Mr Zhou was aware of the Opponent’s Marks, (either from searching the Register or by other means), but believed, as I do, that the parties’ respective trade marks could coexist covering different goods and services. I cannot in any event agree that failure to search the Register necessarily means that “a conclusion of bad faith is open to be drawn” at all. I do not do so in this case.
The opposition ground based on s 62A of the Act is therefore not established.
Decision
100.Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:
…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.
101.I have found the Opponent has not established any of the grounds pressed. The Opposed Mark 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 shall not occur until the appeal has been decided or discontinued.
Costs
102.Both parties requested an award of costs in their favour. As the successful party, the Applicant is entitled to his costs and I accordingly award costs against the Opponent as per Schedule 8 of the Regulations.
Michael Kirov Hearing Officer
Oppositions and Hearings 9 November 2018
Key Legal Topics
Areas of Law
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Civil Procedure
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Commercial Law
Legal Concepts
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Abuse of Process
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Stay of Proceedings
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Res Judicata
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