Richard McDonnell & Beaumont Management Services Pty Ltd v Karl Dawson
[2023] ATMO 58
•11 May 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Richard McDonnell and Beaumont Management Services Pty Ltd to registration of trade mark application number 2090214 (classes 9, 35 & 38) – puggle post - in the name of Karl Dawson
Delegate:
Tracey Berger
Representation:
Opponents: Dr Anthony Place of Patentable
Applicant: Andrew Petale of YIP Legal Pty Ltd
Decision:
2023 ATMO 58
Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 44, 58 and 60 considered – s 58 established for class 9 goods – no grounds established for services in classes 35 & 38 – opportunity to amend – application amended – trade mark to proceed to registration in classes 35 and 38
Background
1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Richard McDonnell and Beaumont Management Services Pty Ltd (‘Opponents’) to registration of the following trade mark:
[1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) (‘Regulations’) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’).
Trade mark number: 2090214 (‘Application’)
Trade mark: puggle post (‘Trade Mark’)
Applicant:Karl Dawson (‘Applicant’)
Filing Date: 21 May 2020
Specification: Class 9: Electronic publications including those sold and distributed online; weekly publications downloaded in electronic form from the internet (‘Applicant’s Goods’)
Class 35: retail services; online retail services; retail of gift sets; product marketing; provision of an online marketplace for buyers and sellers of goods and services; retail of gift baskets
Class 38: electronic transmission (uploading, posting or displaying) of data, information, pictures, images, audio and/or video via online forums; providing online forums; providing user access to a global computer network and online sites containing information on a wide range of topics; transmission of information on a wide range of topics, including online and over a global computer network
(collectively the services claimed in classes 35 and 38 are referred to as the ‘Applicant’s Services’)
2. The Trade Mark was examined and advertised as accepted for possible registration on 22 October 2020.
3. On 9 November 2020, the Opponents filed a Notice of Intention to oppose the Trade Mark, followed on 24 November 2020 by its Statement of Grounds and Particulars (‘SGP’), which was subsequently amended in September 2021 to add s 58 as a ground of opposition and amend some of the particulars of the other grounds. The Applicant filed a Notice of Intention to Defend the opposition on 10 March 2021.
4. The parties then proceeded to file their evidence in accordance with the Regulations with the Opponents filing evidence in support (‘EIS’) on 1 September 2021, followed by the Applicant’s evidence in answer (‘EIA’) on 28 February 2022 and concluding with the Opponents’ evidence in reply (‘EIR’) on 29 April 2022.
5. Once the evidence had been filed, the parties were given the opportunity to request a hearing. The Opponents requested an oral hearing and filed written submissions on 3 March 2023. The Applicant requested to be heard by written submissions which were lodged on 10 March 2023. I heard this matter, as a delegate of the Registrar of Trade Marks, by videoconference on 17 March 2023. At the hearing, Dr Anthony Place of Patentable made oral submissions on behalf of the Opponents. I make this decision based on the information contained in the documents and evidence filed as outlined above, written submissions of the Applicant and the Opponents’ written and oral submissions.
Grounds, Onus and Relevant Date
6. In the SGP (as amended), the Opponents particularised grounds of opposition under ss 42(b), 43, 44, 58 and 60. However, only ss 44, 58 and 60 were pressed in the Opponents’ written submissions and at the hearing. I treat the grounds under ss 42(b) and 43 as abandoned and have not considered those grounds.
7. The Opponents bear the onus of establishing at least one of the nominated grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]
8. The date at which the rights of the parties are to be determined is 21 May 2020 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.
Evidence
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
The following evidence was filed in these proceedings:
EIS
Declaration of Richard McDonnell, director of the Opponents, made on 31 August 2021 with Exhibits RM01 to RM04 (‘McDonnell 1’).
Declaration of Richard McDonnell, made on 31 August 2021 with Exhibits RM05 to RM17 (‘McDonnell 2’).
EIA
Declaration of Karl Dawson, Applicant, made on 24 February 2022 with Annexures KD-1 to KD-6 (‘Dawson Declaration’).
EIR
Declaration of Richard McDonnell, made on 29 April 2022 with Exhibits RM018 TO RM25 (‘McDonnell 3’).
Opponents’ Evidence
10. Mr McDonnell attests that the term PUGGLE was coined in the early 1980s when Anthony A. Barber published a book named ‘The Puggle Tales’ about a PUGGLE. Mr Barber also used the mark PUGGLE in relation to a soft toy version of the book’s character. In 1989, Mr Barber published a book named ‘The Lost Forests’ about the PUGGLE character and its ecosystem.
11. In 1989, Mr Barber and Mr McDonnell’s family formed a joint venture through the company Zipper De Doo Dah Pty Ltd to promote the PUGGLE toys and characters. The PUGGLE range of toys expanded to 13 different characters featured in 13 different books (‘Puggle Books’) and by the 1990s, the business had expanded to 19 ‘The Lost Forest’ retail stores located in Australia, the USA and New Zealand selling PUGGLE toys, books and merchandise. Mr McDonnell has provided an estimate of the annual revenue generated from these stores during the 1980s and 1990s and percentage of revenue attributable to PUGGLE merchandise which was substantial. As records were not computerized at that time and due to the length of time that has passed no documentary evidence of these sales is available.
12. According to McDonnell 1[4], in 1992, the McDonnell family acquired ownership of Zipper De Doo Dah Pty Ltd including the rights in the PUGGLE brand and copyright in the Puggle Books, which rights were assigned to Beaumont Management Services Pty Ltd (‘BMS’) in April 2001. Mr McDonnell claims that BMS have maintained those rights and the PUGGLE brand to the present time. Any reference to the Opponents in this decision includes a reference to its predecessors in title.
[4] Exhibit RM-03.
13. In 1995, ‘The Lost Forest’ stores were closed and it appears that the Opponents’ business ceased for some years.[5]
[5] McDonnell 2 Exhibit RM15.
14. The Opponents claim that despite the temporary closure of the Opponents’ stores, it maintained a reputation in its PUGGLE mark. For example, a past customer established a Facebook account titled ‘Bringing Back Puggles and the Lost Forest Stores’ in 2012.[6] The Opponents also undertook their own activities to maintain a reputation including establishing a website in 2007 and ‘The Lost Forests’ Facebook page in 2013 to promote the Opponents’ PUGGLE brand.[7]
[6] Ibid Exhibit RM05.
[7] Ibid Exhibit RM11
15. In 2017, the Opponents opened a new ‘The Lost Forest’ store in the Docklands, Melbourne and established the present website at (‘Opponents’ Website’) to sell and promote PUGGLE products. The Opponents established social media accounts on Instagram, Facebook, Flickr and YouTube to promote its PUGGLE range and the Opponents’ Website. Various extracts from the Opponents’ Website using the Wayback Machine, for example from 4 December 2018 and 9 August 2019, are provided[8] as well as extracts from the Opponents’ The Lost Forests YouTube account including an image of a video on the channel dated 26 May 2008 about PUGGLES characters. The Puggle Books were also digitally remastered and offered for sale as ebooks on the Opponents’ Website and eBay. Details of sales of PUGGLE books, toys and accessories from 2017-2020 are provided.
[8] Ibid Exhibit RM10.
16. McDonnell 1 and 3 attest to various trade marks in the name of BMS, a number of which were filed after the Relevant Date, but including the following trade marks which have an earlier prior date than the Relevant Date (‘Opponent’s Marks’):
Trade Mark Number
Trade Mark
Priority Date
Goods
591557
PUGGLE
3 December 1992
Class 28:Toys, including soft toys puppets, games, playthings and all other goods in this class
1104651
22 March 2006
Class 35: Wholesaling and retailing of toys, books, CD's and DVD's
17. The Opponents have used the mark PUGGLE POST since the 1990s for its newsletter and more recently, for a blog. Extracts from the Opponents’ Website on 22 April 2005, 3 April 2012 and 1 April 2016 promoting the Opponents’ PUGGLE POST newsletter are provided.[9] From 2018, the PUGGLE POST has been sent bimonthly to about 1100 members to promote the Opponents’ PUGGLE toys, books, music and videos.
[9] Ibid Exhibit RM13.
18. McDonnell 3 recounts much of the history of the PUGGLE brand and comments on the Applicant’s EIA. It also annexes the online Macquarie dictionary definition of ‘Puggle” which is “trademark of a range of soft toys; applied to the baby echidna because of a perceived similarity in appearance to the toy”.[10]
[10] McDonnell 3 Exhibit RM18.
Applicant’s Evidence
19. Mr Dawson attests that he has been a volunteer rescuer and carer for Wildlife Victoria since 2012 and Vice President of the Macedon Ranges Wildlife Network (‘MRWN’) since June 2017, which organisations are involved in rescuing and caring for Australian native animals that have been injured or displaced.
20. In 2020, Mr Dawson decided to establish a business selling Australian made products and use the sale proceeds to support wildlife rescue efforts and shelters through Wildlife Victoria and MRWN. The Trade Mark was chosen to indicate a connection with Australia wildlife due to ‘puggle’ being a term for baby echidnas and ‘post’ to indicate that the sold items would be mailed to customers. The Dawson Declaration attaches an ABC News website article and Wikipedia entry referring to ‘puggle’ as the name for a baby echidna.
21. Mr Dawson attests that he was aware of a third-party business operated by Ms Carmel Griffith trading under the mark PUGGLE POST selling Australian themed games and toys on Instagram (‘Griffith Business’), which was available for sale on Instagram. Although Ms Griffiths agreed to sell the Griffith Business to the Applicant, Ms Griffith subsequently informed the Applicant on 19 May 2020 that she would not proceed with the sale as a result of correspondence she received from Mr McDonnell claiming use of PUGGLE POST by her (or the buyer of the Griffith Business) infringed his intellectual property rights. The Dawson Declaration annexes a copy of the email correspondence between Mr McDonnell and Ms Griffith on 18 and 19 May 2020.
Preliminary Matter
22. On 3 March 2023, the Opponents sought to further amend its SGP. Most of the amendments requested were unnecessary and the only relevant amendments proposed were to:
·add registration number 1519608 to the marks relied on by the Opponent in support of the s 44 ground of opposition (‘First Amendment’); and
·amend the s 58 ground to claim prior use of the Trade Mark by a third party named Carmel Griffith (‘Second Amendment’).
23. Regulation 5.12 provides:
5.12 Amendment of statement of grounds and particulars
(1) An opponent may request the Registrar to amend the statement of grounds and particulars to:
(a) correct an error or omission in the grounds of opposition or the facts and circumstances forming the basis for the grounds; or
(b) amend a ground of opposition; or
(c) add a new ground of opposition; or
(d) to amend the facts and circumstances forming the basis for the grounds.
(2) The Registrar may grant the request on terms that the Registrar considers appropriate.
(3) However, the Registrar may grant a request to:
(a) amend a ground of opposition; or
(b) add a new ground of opposition;
only if the Registrar is satisfied that the amendment or addition relates to information of which the opponent could not reasonably have been aware at the time of filing the statement.
(4) If the Registrar grants the request, the Registrar must give a copy of the amended statement to the applicant.
24. By letter dated 9 March 2023, I advised the Opponents and Applicant that I refused to amend the SGP as requested on the basis that the First and Second Amendments related to information that was, or should have been, known to the Opponents at time of initially filing the SGP, or at least by September 2021 after the Opponents appointed their attorneys who initially amended the SGP, and because to allow these amendments would deny the Applicant natural justice.
25. On 10 March 2023, the Opponent filed further submissions arguing that the First and Second Amendments should be allowed on the basis that a consideration of whether the information was known to the Opponent at the time of filing the SGP is only relevant to amending a ground of opposition or adding a new ground and not amending the facts and circumstances forming the basis of the claimed grounds. In the alternative, the Opponent submitted that the information in the Amendment should be considered under Regulation 21.19. The Applicant was given a copy of this correspondence and filed submissions arguing against the amendment of the SGP as it would severely prejudice the Applicant and submitting that regulation 21.19 does not provide a mechanism for changing the particulars of a ground of opposition.
26. At the hearing, the Opponents made brief submissions that the amendment to the SGP should be allowed or alternatively, the information regarding the PUGGLE POST business of Carmel Griffiths should be considered under Regulations 21.15 or 21.19. The Opponents argue that the information is already in evidence, the Applicant cannot be unduly prejudiced as the information relating to the Second Amendment was introduced by the Applicant in its EIA, the Opponent had assumed they could rely on the information relating to the Second Amendment as it is in evidence, it is in the public interest for the information to be considered and the s 58 is broadly particularised in the SGP. After the hearing, the Opponent filed a written reply to the Applicant’s submissions as they had not had the benefit of seeing those submissions prior to the hearing. I have taken into consideration the submissions of both parties.
27. The purpose of the SGP is to give an applicant fair notice of the case to be answered and to define the issues of the opposition. Simply claiming a ground of opposition does not entitle an opponent to raise any matter falling within the scope of the ground without proper notice to an applicant by way of notice in the particulars of the SGP.
28. It is not clear what the distinction is between amending a ground of opposition under Regulation 5.12(1)(a) and amending the facts and circumstances forming the basis of a ground of opposition under Regulation 5.12(1)(d). It seems to me that in many cases, amending the basis of a ground of opposition amounts to an amendment of the ground itself. In any event, Regulation 5.12(1)(d) does not specify any factors which the Registrar must consider in order to determine whether it is appropriate to exercise the discretionary power to allow an amendment to the facts and circumstances forming the basis of a ground of opposition. In K-Tec Inc v Healthy Foods LLC,[11] the Delegate noted:
[11] [2016] ATMO 4 (Hearing Officer A. Richards).
The factors that will generally need to be taken into account in the exercise of the Registrar’s discretion to amend an SGP are the likely prejudice to the parties, the public interest, whether the ground proposed to be added is sufficiently particularised and the nature and importance of the requested amendment. In the present matter the timing of the amendment request and the reasonableness of the explanation offered for the delay in requesting the amendment are also relevant.[12]
[12] Ibid, [23].
29. Although the above comments were made in the context of an amendment to add a new ground of opposition, I consider that these factors have relevance to other amendments to an SGP. The power to amend an SGP is discretionary and thus I may have regard to a range of factors in deciding if it is appropriate to allow an amendment.
30. There is a timetable for filing various opposition documents, each stage of which depends largely on the last. In the words of the majority in Aon Risk Services v Australian National University[13] (‘Aon’) :
[13] (2009) 239 CLR 175, 212 [112] (Gummow, Hayne, Crennan, Kiefel and Bell JJ).
A party has the right to bring proceedings. Parties have choices as to what claims are to be made and how they are to be framed. But limits will be placed upon their ability to effect changes to their pleadings, particularly if litigation is advanced. That is why, in seeking the just resolution of the dispute, reference is made to parties having a sufficient opportunity to identify the issues they seek to agitate.
31. In my opinion, when the Opponent knew of the information forming the basis of the requested amendment is a relevant consideration in determining whether it is appropriate to allow an amendment to the SGP. Allowing an amendment to the particulars forming the basis of a ground of opposition late in the proceedings affects the applicant’s opportunity to address the ground and may prejudice an applicant. This is not the case if the particulars are amended early in the proceedings prior to the filing of the parties’ evidence.
32. In this instance, the Applicant has not had any opportunity to address the trade mark which is the subject of the First Amendment. With respect to the Second Amendment, although the Applicant was the first to raise the issue of Carmel Griffith potentially having used the Trade Mark for retailing services, the evidence from both parties about this business is sparse and had the Applicant been on notice that the Opponents intended to rely on Ms Griffith’s alleged use of the Trade Mark in support of its s 58 ground, the Applicant may have filed more comprehensive evidence on this point. It is apparent from the Dawson Declaration that the Opponents, through Mr McDonnell’s correspondence with Ms Griffith, were aware of Ms Griffith’s purported use of PUGGLE POST on Instagram before the Relevant Date. The filing of the Dawson Declaration should have prompted the Opponents to consider requesting an amendment of the SGP at that time or at least when filing its evidence in reply. Instead, the Opponent has delayed more than 12 months since the filing of the EIA until close to the hearing. In all the circumstances, I am not satisfied that it is appropriate to allow amendment of the SGP.
33. With respect to Regulations 21.15 and 21.19, I agree with the Applicant that these provisions are concerned with considering information and evidence relevant to the grounds of opposition as particularised in the SGP and are not a means of considering new bases for grounds claimed.
34. Even if I permitted the Second Amendment or considered the information relating to Ms Griffith’s purported use of PUGGLE POST under Regulation 21.15 or 21.19, I do not believe that this would assist the Opponents. The Dawson Declaration simply claims he was aware of a business which apparently sold toys and games on Instagram under the name PUGGLE POST and that Ms Griffith immediately ceased trading upon receipt of Mr McDonnell’s email of 19 May 2020. McDonnell 3 contends that the Applicant has conceded it is not the owner of the Trade Mark for retailing services by referencing Ms Griffith’s use of PUGGLE POST on Instagram and annexes an extract of Ms Griffiths Instagram account from March 2022, after the priority date. There is no documentary evidence for me to be satisfied that at the Relevant Date, Ms Griffith was offering retail services under the mark PUGGLE POST. Given she was apparently trying to sell her purported business, it is possible that she no longer had stock for sale or that she had abandoned the mark on 19 May 2020 following receipt of Mr McDonnell’s email correspondence regarding the Opponents’ use of PUGGLE. The existence of a business name registration or delay in cancelling that registration is not evidence that a retail business was being conducted under the name or that the mark had not been abandoned at the Relevant Date. At the hearing, the Opponents argued that Ms Griffith was still in negotiations with Mr McDonnell at the Relevant Date and could sell the trade mark even if she was not trading but none of this is in evidence. The Opponents bear the onus of demonstrating through evidence that a person other than the Applicant had prior use of the Trade Mark in Australia for the ‘same kind of thing’ as the Applicant’s Services before the Relevant Date. I do not consider based on the evidence filed that I could be satisfied that this is the case.
35. With respect to the First Amendment, as noted above, the Applicant has not had any opportunity to address trade mark number 1519608 in evidence or otherwise. Further, I note that registration number 1519608 THE PUGGLES in class 38 has expired and the grace period for late renewal has now passed.
36. For the reasons set out above, I make my decision based on the Opponents case as particularised in the grounds of opposition in the SGP as amended in 2021.
Discussion
Section 58
37. Section 58 provides that a trade mark may be opposed on the grounds that the Applicant is not the owner of the Trade Mark.
38. It is well established that only a small amount of use of a trade mark is required to prove ownership of that mark.[14]
[14] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [166]-[169] (Greenwood, Besanko and Katzmann JJ); Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414, 432 (Deane J), 421 (Gibbs CJ, Mason and Wilson JJ), 446 (Dawson J).
39. To succeed in this ground of opposition, the Opponents must establish the following:
· The Trade Mark is identical, or substantially identical, to an earlier trade mark;[15]
[15] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).
· The earlier trade mark has been used in respect of good or services that are ‘the same kind of thing’ as the Applicant’s Goods and Services;[16] and
[16] Re Hicks’s Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, 640 (Holroyd J).
· Another person has an earlier claim of ownership based on use of the earlier trade mark before the Relevant Date.[17]
[17] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50] (Greenwood, Jagot and Beach JJ).
40. In support of this ground of opposition, the Opponents rely on its use of PUGLLE and PUGLLE POST since at least 2007 in relation to ‘subscription electronic communication/services and a broad range of retail products in the supply of toys, games, books, CDS, DVCDs, clothing.
41. The Opponents’ mark PUGGLE POST is obviously identical to the Trade Mark. Therefore, the question is whether the Opponents have used PUGGLE POST as a trade mark for the ‘same kind of thing’ as the Applicant’s Goods and Services before the Relevant Date.
42. The Opponents attest to use of PUGGLE POST since before the Relevant Date for its VIP newsletter and blog. In support of this contention, the Opponents provide extracts from MailChimp, an automated marketing platform and email marketing service, showing its PUGGLE POST newsletter was sent to its mailing list in July, September and October 2018, bi-monthly from January to July 2019 and monthly from September to December 2019. [18]Examples of the Opponents’ PUGGLE POST newsletters from October 2017, July 2018, January 2019 and October 2019 are also provided[19] and a blog post from January 2019.[20] The Opponents’ evidence also includes various extracts from the Opponents’ Website showing that visitors to that site can subscribe to the Opponents’ PUGGLE POST newsletter.
[18] McDonnell 2, Exhibit RM-14.
[19] McDonnell 3, Exhibit RM-22.
[20] McDonnell 2, Exhibit RM-24.
43. A newsletter sent electronically is an electronic publication and hence, these goods are the same kind of thing as the class 9 goods claimed by the Applicant.
44. The Applicant argues that there is no evidence that the Opponents used the mark PUGGLE POST in relation to its newsletters between December 2019 and the Relevant Date. Nevertheless, the Opponents have demonstrated consistent (if irregular) use of PUGGLE POST for its newsletters for a number of years before the priority date and there is no evidence that the Opponents had abandoned the Trade Mark.
45. The Applicant also contends that the Opponents used variations of PUGGLE POST. The evidence shows use of variations such as VIP Very Important Puggle Post, Very Important Puggle Post, The Puggle Post - Halloween Edition, Puggle Post Online as well as PUGGLE POST solus. In my view, the addition of these non-distinctive words does not detract from PUGGLE POST and the evidence does show use of PUGGLE POST solus for newsletters.
46. Based on the Opponents evidence, I am satisfied that the Opponents are the owners of the mark PUGGLE POST for electronic publications.
47. The class 38 services claimed by the Applicant are telecommunications services. Although it seems based on the Applicant’s evidence, that the Applicant’s interest is likely in class 41 services rather than the class 38 services, the question is whether any of the telecommunications services claimed are the same kind of thing as the Opponents’ newsletter or blog. A blog is a regularly updated website or webpage. The Opponents’ newsletter and blog are not the same as the electronic transmission services claimed by the Applicant.
48. I turn now to a consideration of the Applicant’s class 35 services. The Opponents have not used the mark PUGGLE POST in relation to retail services and the services claimed in the Application in class 35 are not the same kind of thing as newsletters or blogs. However, the Opponents claim to have used the mark PUGGLE for retailing services. Clearly, the marks PUGGLE and PUGGLE POST are not identical and therefore, I must consider whether these marks are substantially identical.
49. The test for whether two marks are substantially identical requires that they 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.[21]
[21] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J) (‘Shell’).
50. In my opinion, PUGGLE and PUGGLE POST are not substantially identical. The Trade Mark is two words and hence longer than the single word PUGGLE. On a side by side comparison, the additional word POST in the Trade Mark renders that mark visually and aurally distinct from PUGGLE simpliciter. I am satisfied that there is not a total impression of resemblance between the marks. Hence the Opponents cannot succeed on the s 58 ground based on use of the mark PUGGLE.
51. The Opponents have established a ground of opposition under s 58 for the Applicant’s Goods but have not established this ground with respect to the Applicant’s Services. Accordingly, I will now consider the remaining grounds with respect to the Applicant’s Services.
Section 60
52. Section 60 provides:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
Note: For priority date see section 12.
53. To succeed on this ground, the Opponent must establish a reputation in a trade mark existing in Australia at the Relevant Date. If reputation is established, the Opponent must then prove that because of the reputation in the mark relied on by the Opponent, use of the Trade Mark is likely to deceive or cause confusion.
54. The reputation in the other trade mark must be amongst a ‘significant’ or ‘substantial’ number of Australian consumers[22] but this is tempered by the nature of the relevant market. In the present case, the relevant market is large as a significant proportion of the Australian population are potential consumers of the sorts of services claimed by the Applicant.
55. The reputation must also be established as a matter of fact by the Opponent.[23]
56. The reputation of a trade mark may be demonstrated in a variety of ways. For example, it may be established by demonstrating a significant number of people are exposed to a trade mark,[24] or inferred from a high volume of sales,[25] advertising expenditure or other promotion.[26]
57. In Rodney Jane Racing Pty Ltd v Monster Energy Company O’Bryan J observed that:
The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally...[27]
[22] See Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170 (Moore, Tamberlin, Goldberg JJ); ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [118] (Lockhart J).
[23] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [77] (Lockhart J).
[24] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).
[25] McCormick & Co Inc v McCormick [2000] FCA 1335, [86] (Kenny J).
[26] Ibid.
[27] [2019] FCA 923, [83].
58. In the SGP, the Opponents claim that the Trade Mark is similar to the Opponents’ marks PUGGLE and PUGGLE POST “which have acquired a significant reputation and are well known in Australia and overseas in relation to the manufacturing and supply of the Toys, Games, Books, CDs, DVDs, Retail stores, Clothing, Puggle Post Blog, Facebook, Pinterest, Instagram, Flickr and Newsletter.”
59. The Opponents assert that there exists a significant reputation in the mark PUGGLE as a result of the continued use of that mark for over 40 years in Australia and elsewhere. Based on the Opponents’ evidence, it appears that its PUGGLE brand was very successful from the early 1980s to mid-1990s generating significant sales of toys, clothing, books and merchandise in Australia, the USA and New Zealand. The mark PUGGLE gained sufficient notoriety that it was listed in the Macquarie Dictionary and the term was adopted as the name for baby echidnas. However, the continuity of the Opponents’ use of PUGGLE is questionable. All of the Opponents’ stores closed in 1995 so it is unclear how the Opponents continued using the PUGGLE mark between 1995 until at least 2007 when its initial website was established.
60. The Applicant is critical of the Opponents’ evidence including that the Opponents’ have made bare assertions about their sales and they contend that there is a lack of engagement with the Opponents’ social media sites and newsletter.
61. I accept the Opponents’ submission that proof of sales in the 1980s and 1990s is not available due the length of time that has passed and note that the Opponents have provided evidence of sales of PUGGLE products since November 2017 to March 2020. Unhelpfully, the sales revenue has not been collated but there appears to have been about 4,500 items sold which based on the average price of the units is not an insignificant amount of revenue but does not equate to “substantial” revenue as the Opponents’ claim. Further, the Applicant’s comments about the number of followers of the Opponents’ social media accounts and newsletter have merit. I do not consider that 1000 subscribers to the Opponents’ PUGGLE POST newsletter constitutes a significant number of persons in the relevant market, particularly when only about 20-25% of those subscribers open the email sending the newsletter.
62. In my assessment of the evidence, the Opponents’ PUGGLE brand was likely popular in the 1980s/1990s and there would be some people who were children at that time who remember PUGGLE toys and have purchased PUGGLE products more recently for their own children. However, this does not amount to a reputation in the mark PUGGLE at the Relevant Date amongst a significant number of persons in the relevant market.
63. I am not satisfied that the Opponents had a reputation in the marks PUGGLE or PUGGLE POST at the Relevant Date amongst a significant number of persons and therefore, the s 60 ground of opposition is unsuccessful with respect to the Applicant’s Services.
Section 44
64. Section 44 relevantly provides:
(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.
This ground requires the Opponents to establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of person other than the Applicant, in respect of services that are similar to the Applicant’s Services, or goods that are closely related to the Applicant’s Services.
In the SGP, the Opponents identified the Opponents’ Marks and trade mark number 2128017 Puggle in class 25 but that registration has a priority date of 14 October 2020 which is after the Relevant Date. Hence, only the Opponent’s Marks are relevant. In the Opponent’s written submissions, the Opponent relies only on trade mark numbers 591557 PUGGLE (’57 Mark’) and 1519608 THE PUGGLES. I have already determined at [25]-[39] that it is not appropriate to consider trade mark number 1519608.
The Opponent does not argue that the Opponent’s mark PUGGLE is substantially identical to the Trade Mark but does submit that these marks are deceptively similar. Nevertheless, for completeness, I note that I have already determined at [50] that PUGGLE and PUGGLE POST are not substantially identical and the composite mark which is the subject of registration 1104651 is even more different from the Trade Mark than PUGGLE POST, hence it follows that this composite mark is not substantially identical to the Trade Mark.
Section 10 of the Act defines ‘deceptively similar’ as set out below:
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
The approach for assessing whether trade marks are deceptively similar was outlined by Windeyer J in Shell:
The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[28]
[28] [1963] HCA 66, [13].
The basis for any deception or confusion is the impression or recollection of the trade marks that is carried away and retained by the ordinary consumer.[29] Accordingly, an allowance is made for imperfect recollection of the trade marks.[30] The impression comes from the trade marks in their entirety[31] and is informed by the look, sound and ideas conveyed by the trade marks.[32]
[29] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).
[30] Crazy Ron's Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [77] (Moore, Sackville, and Emmett JJ).
[31] Clarke v Sharp (1898) 15 RPC 141, 146 (Byrne J).
[32] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).
For trade marks to be considered deceptively similar there must be a real and tangible danger of deception or confusion occurring.[33] This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the services come from the same trade source.[34]
[33] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).
[34] Ibid.
The Opponents submit, and I agree, that the essential element of its 57 Mark is PUGGLE being the only element of the mark. They also argue that PUGGLE is an essential element of the Trade Mark and that it is this element which consumers will recall as ‘POST’ has a descriptive connotation.
The Applicant contends that both the words ‘puggle’ and ‘post’ have multiple meanings with ‘puggle’ meaning both a baby echidna or breed of dog and ‘post’ meaning mail, a postal service, a position of duty/employment, a strong piece of timber set upright, amongst others. Thus, the Applicant considers that any connotation is not immediately apparent in the context of the Applicant’s Services. The Applicant is of the view that the Trade Mark is sufficiently different in look, sound, structure and meaning. In support of these arguments, the Applicant refers to the findings that BULL and RED BULL,[35] VOGUE and EUROVOGUE & Device,[36] JOCKEY and THROTTLE JOCKEY,[37] and REBELLION and SOUL REBELLION[38] were not deceptively similar. However, I do not find these decisions persuasive because each of these cases can be distinguished for a number of reasons including that in my view, the various meanings of the term ‘puggle’ are not as well understood as words such as ‘BULL’ or ‘VOGUE’, the EUROVOGUE mark contained a prominent device element, VOGUE made reference to the goods in question and THROTTLE JOCKEY changed the meaning of JOCKEY. In the present case, whilst both the words PUGGLE and PUGGLE POST have dictionary meanings, neither mark has any readily discernible meaning in relation to the Applicant’s Services.
[35] Red Bull GmbH v Reschke Pty Ltd [2010] ATMO 119 (Hearing Officer J. McDonagh)
[36] Conde Nast Publications Pty Ltd v Taylor [1998] FCA 864 (Burchett J).
[37] Jockey International, Inc v Darren Wilkinson [2010] ATMO 22 (Hearing Officer J. Spence)
[38] Chris Kingsley v David Scott [2011] ATMO 20 (Hearing Officer H. Wilson).
Two marks may be deceptively similar because they incorporate the same “essential” or “distinguishing” feature, particularly where that feature is distinctive and memorable.[39] The word PUGGLE is the only, and hence the essential, element of the 57 Mark and in my view is an essential element of the Trade Mark. As PUGGLE is the first word of the Trade Mark, consumers are likely to place greater emphasis on this element making it more memorable.[40] Taking into account the imperfect recollection of consumers, I consider that consumers of the Applicant’s Services may be caused to wonder whether the marks PUGGLE and PUGGLE POST are related. For the aforementioned reasons, I am satisfied that the marks PUGGLE and PUGGLE POST are deceptively similar.
[39] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147; Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [79]-[90] (Moore, Sackville and Emmett JJ).
[40] London Lubricants (1920) Limited's Application (1924) 42 RPC 264, 279 (Sargant J).
Although the Opponents’ submissions do not extend to trade mark number 1104651, I note for completeness that given the word ‘Puggles’ forms only a small part of that mark and is overshadowed by the other elements of the mark, I do not regard that mark as a whole as being deceptively similar to the Trade Mark.
Having found the marks PUGGLE and PUGGLE POST to be deceptively similar, I turn to a consideration of whether the goods covered by the 57 Mark are closely related to the Applicant’s Services.
The test for whether goods and services are closely related is not defined in the Act. French J noted in Registrar of Trade Marks v Woolworths (‘Woolworths Metro’):
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... Consistently with that proposition, the registrar or a judge on appeal from the registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant's marks would be likely to deceive or cause confusion.[41]
[41] [1999] FCA 1020, [40].
Some of the factors to consider in determining the closeness of the relationship between the goods and services include whether customers expect that the particular goods and their retail typically originate from the same source, the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold, and the character of the consumers of the goods and services.
The Opponent submits that as class 28 goods particularly toys are often ‘gifts’, the goods of the 57 Mark are closely related to the Applicant’s class 35 services such as retail of gifts and gift baskets. I do not find this argument persuasive as virtually any item can be gifted and hence this argument would mean retail services of goods and those goods themselves are generally closely related. In Woolworths Metro, the primary judge Wilcox J considered that in general, the connection between retailing of goods and the goods themselves was not sufficiently strong for those goods and services to be regarded as closely related.[42] Whilst I appreciate that there may be changes over time in business practice or technological developments that may affect the relationship between goods and services,[43] and there has been a considerable expansion in retailing services being offered online and through social media, I consider that most retailers of toys, games and class 28 goods sell third party products and consumers do not expect those retailers to be selling their own goods. As the Applicant notes in its submissions, there is no evidentiary basis for finding to the contrary. I am satisfied that the Opponent’s class 28 goods are not closely related to the class 35 services of the Application.
[42] [1998] FCA 126.
[43] Shanahan’s Australian Law of Trade Marks & Passing Off (7e, 2022), [35.1515].
In my opinion, there is no nexus between class 28 goods and the telecommunications services claimed by the Applicant. These goods and services are completely unrelated.
For the above reasons, the s 44 ground of opposition is unsuccessful with respect to the Applicant’s Services.
Decision
Section 55 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.
The Opponent has established a ground of opposition under s 58 in respect of the Applicant’s Goods. None of the grounds of opposition have been established with respect to the Applicant’s Services.
On 1 May 2023, I informed the Applicant that it was my intention to refuse to register the Trade Mark unless class 9 was deleted from the Application.
On 8 May 2023, the Applicant availed itself of the opportunity to amend the specification and the Application now covers the Applicant’s Services.
The Trade Mark may now proceed to registration in classes 35 and 38 one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should otherwise be in accordance with the Court’s order or direction.
Both parties sought an award of costs. As both parties have had some measure of success, I decline to award costs.
Tracey Berger
Hearing Officer
Delegate of the Registrar of Trade Marks
11 May 2023
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