Rivers (Australia) Pty Ltd v Ezibuy Limited

[2000] ATMO 48

TRADE MARKS ACT 1995

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

Re:Opposition by Rivers (Australia) Pty Ltd to registration of trade mark application 721619(25) - STONERIVER- filed in the name of EziBuy Limited.

This issue arises out of the filing on 13 November 1996 of application 721619 in the name of EziBuy Limited ('EziBuy').  The application seeks registration of the trade mark STONERIVER in Class 25 in respect of "clothing, footwear and headgear".

Following examination, the application was advertised in the Official Journal of Trade Marks as accepted on 8 May 1997.  On 8 August 1997, within the time allowed to do so, Rivers (Australia) Pty Ltd., ('Rivers' or 'the opponent') filed notice of opposition to the registration of the trade mark.  Rivers filed evidence in support of the opposition on 12 March 1998 and, on 11 December 1998, EziBuy filed evidence in answer.  On 11 June 1999, Rivers filed evidence in reply.

The issue was heard before me as delegate of the Registrar of Trade Marks.  Rivers was represented by Adrian Ryan of Counsel, instructed by Freehills, Patent and Trade Mark Attorneys; Mr David McBeth of Phillips Ormonde & Fitzpatrick represented EziBuy.

Prior to outlining the submissions, I will summarise the evidence filed by the parties in relation to this issue.

Declaration in Support	Referred to as	Declaration dated	Exhibits
Phillip Harry Goodman	Goodman 1	10 March 1998	PHG1 - - PHG14
Declarations in Answer	Referred to as	Declaration dated	Exhibits
Miles William Wadley	Wadley	9 December 1998	MWW-1
David Paul MacBeth	MacBeth	11 December 1998	DPM-1 - DPM-3
Declarations in Reply	Referred to as	Declaration dated	Exhibits
Kathryn Elizabeth Beer	Beer	10 June 1999
Colin Yeung	Yeong	10 June 1999	CY1 - CY5
Phillip Harry Goodman	Goodman 2	10 June 1999	PHG1 - PHG13

The following is a summary of what I see as the pertinent facts attested to in the Goodman 1 declaration.  The declaration shows that on 21 December 1995 Paddle Bros Shoes Pty Ltd changed its name to Rivers (Australia) Pty Ltd.  Rivers, or its predecessor,  was incorporated in 1928 and, until 1985, its main business activity was in the manufacture and sale of boots and shoes in Australia.  Since 1985, Rivers has diversified its product range to include clothing and headgear.  Inspiration for the RIVERS trade mark occurred to Mr Goodman, Managing Director of Rivers, while driving on Bridge Road, Richmond in 1978.  He initially thought of the trade mark BRIDGES and, by thought association, arrived at the trade mark RIVERS.  The trade mark RIVERS has been used by the opponent in relation to shoes and boots since then.  Rivers' use of the trade mark RIVERS in relation to shirts started in 1985 and this use in relation to clothing has expanded to include trousers, jackets, coats, jumpers, vests, socks, shorts and t-shirts.

Sales of the opponent's goods bearing the RIVERS trade mark have been through chains of large department and shoes stores.  Additionally, the opponent has some 19 of its own stores throughout New South Wales, the Australian Capital Territory and Victoria where both the shop signage and goods sold bear the trade mark.

In addition to the trade mark RIVERS, Rivers has various registered variants on its RIVERS trade marks, including DR RIVERS SPIDER BITERS, RIVER BLUE and RIVERS REBOUND RUBBER.

Sales of goods in relation to the RIVERS trade mark have been considerable.  As Rivers has requested confidentiality, I will note only that sales are in the order of several hundred million dollars annually and that ten percent of such sales are of the Rivers clothing products.  Annual expenditure on advertising has been in order of several hundred thousand dollars and proportional to the sales figures when considered on an annual basis.

The declaration further shows that Rivers, and its trade mark RIVERS, have become well-known for good quality, up-market, smart, casual clothing and footwear.

Some of the other declarations involve observations about various trade marks which incorporate the word RIVER and are either registered as trade marks, in use, or both, within Australia.  I appreciate this evidence is adduced by the parties in order to support their positions either that the trade mark is unique (and therefore mostly identified with Rivers) or, conversely, that the word is comparatively common within trade marks in the clothing field and therefore not uniquely identified with Rivers.  However, (while the material must be taken into consideration) I believe that a detailed discussion of it tends to divert attention from the essential questions of the similarity of the trade marks in question, the similarity of the goods, how these are to represent themselves to the public and so forth.  While the existence of other trade marks incorporating the word RIVER may be a factor in my considerations, it is not the sole, major or deciding factor.

Another of the declarations involves evidence from a Rivers employee concerning alleged instances of confusion between the RIVERS trade mark and another trade mark not here at issue.  I believe that the evidence is presented with the aim of showing that the word RIVER(S) is identified in Australia only with the opponent by demonstrating that the use of trade marks incorporating such features by traders other than the opponent has brought about confusion.  I view this evidence in the following way.  If the trade mark of which the opponent's employees complain is not registered, it has nothing to do with these proceedings and should be disregarded: these are common-law matters and are ultra vires my powers.  If the trade mark complained of is registered, any finding which accepted this evidence affirmatively would have to cast a long shadow over any such registration.  Obviously, as a delegate of the Registrar, I should regard every registration as being properly made and having a continuing validity.  Therefore, I must state unequivocally that I disregard this evidence in its entirety.

Submissions

The Notice of Opposition addresses grounds in terms of sections 41, 42, 43, 44, 58 and 60 of the Trade Marks Act 1995 ('the Act').However, the submissions of both parties were predominantly argued in terms of sections 44 and 60 of Act. Lest there be any doubt, I now dismiss the opposition as far as sections 41, 42, 43 and 58 of the Act are concerned as these gronds were not supported in the evidence or argued in the submissions.

Reasons

Section 44 provides, inter alia:

Identical etc. trade marks

44.(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.

To support his argument in relation to subsection 44(1), Mr Ryan relied on five of the Rivers trade mark registrations.  However, for the sake of brevity, I will discuss my reasons in terms of the three most relevant of these (detailed below) as, whichever way the decision goes, the result is unaltered by reference only to these three registrations.

Ref.	Reg. No.	Trade Mark	Goods	Class	Priority Date
1	343107	RIVERS	Footwear, boots, shoes and slippers	25	20/02/1980
2	422196	RIVERS	Men's footwear	25	13/02/1985
3	540069	RIVERS	Clothing	25	15/08/1990

I note that the first of the above registrations (1) was accepted in Part B of the Register under the Trade Marks Act 1955 ('the old Act'); the second (2) was accepted in Part A under the provisions of subsection 24(2) old Act; and, the third (3) was also accepted in Part A under the provisions of subsection 24(2) of the old Act.  The terms of these acceptances reflect the surnominal signification of the word RIVERS, the latter two registrations being accepted on evidence of the factual distinctiveness of the trade marks.

As discussed by the parties at the hearing, given that the goods are the same goods and the priority dates of the registrations are earlier than that of this application, the remaining questions are whether the EziBuy and Rivers trade marks are either substantially identical or deceptively similar. 

The tests for substantial identity and deceptive similarity are those stated by Windeyer J in Australian Woollen Mills v F.S. Walton & Co. Ltd (1937) 58 CLR 641 at 658:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106 . Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115 , and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291 , per Jordan C.J. (1944) 44 SR (NSW), at p 298 , where the meaning of the expression was considered.

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106.

These tests are to be applied in the context of comments by French J in Registrar Of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 where he said of the 'notional user' test (applicable under section 12 of the UK Act, section 33 of the 1955 Act and section 44 of the 1995 Act) in Re Smith Hayden and Co’s Application (1946) 63 RPC 97 at 101:

So far as this passage, reflected in oral submissions, suggests that an applicant must satisfy the registrar or the court that there will be no reasonable likelihood of deception and confusion it does not represent the law as it stands under the 1995 Act. The position now is that the registrar and the court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

I note that the dispute between these parties has a close parallel to that (under the old Act) in Home Court International Limited v Rivers (Australia) Pty Ltd [1997] ATMO 48, a decision of the delegate Mr Forno. In this decision Mr Forno said (albeit in relation to subparagraph 28(a) of the old Act) that the trade mark ROCK RIVER, opposed by Rivers, had "to be considered as a whole and I think that is obvious that it is suggestive of a fanciful place name". On the other hand, speaking of the RIVERS trade mark, Mr Forno said that the public "would infer that it was being used in a surnominal and proprietorial sense - RIVERS boutiques, RIVERS shoes, RIVERS shirts and so on - despite the lack of an apostrophe to indicate possession".

I agree.  The trade mark STONERIVER brings to my mind a place name, or name of a particular geographic feature.  To me, the trade mark RIVERS presents as a surname or possibly as referring to certain aquatic geographical features in a general or abstract sense.  Notwithstanding the genesis of the RIVERS trade mark, the register confirms that the surnominal viewpoint was also the view of the delegates when the Rivers trade marks were accepted.

Here I will pick up the latter part of the evidence and note that the surnominal signification of the word RIVERS is likely to have been seen by the delegate as one of the factors mitigating against conflict with the prior registered trade mark SNOW RIVER at the time the first RIVERS trade mark was accepted.  I will note that the trade marks SNOW RIVER and STONERIVER are arguably (according to the opponent's viewpoint, discussed below) on all fours since they both involve the juxtaposition of the word RIVER with a word which can denote a colour.  In short, the opponent's own trade marks have been accepted for registration on the basis that there is no reasonable possibility of confusion with the trade mark SNOW RIVER which is a very close parallel with the trade mark STONERIVER.

Accordingly, I am not satisfied, in the sense of being 'convinced', that the trade marks are deceptively similar as per Woolworth's Metro, supra.

I note that the opponent has suggested that the element STONE can be discounted (for the purposes of comparison) from the EziBuy trade mark because of its connection with a method of treating jeans cloth, or because it might denote a particular colour.  The Oxford Dictionary gives the definition:

d. A fashion shade of yellowish or brownish grey; stone-colour. Also attrib. or as adj. Cf. sense 19.

The stone treatment or washing of cloth achieves a particular texture and finish to that cloth.

Thus, it is argued, that confusion might arise when a member of the public requests a stone (coloured or treated) River garment.  However, I do not believe either of these thoughts will be uppermost in the minds of the public when they are considering, for example, the purchase of a pair of black corduroy trousers or a blue tee-shirt.  The first problem with the approach suggested by Rivers is that it anticipates, before the analysis begins, that the element RIVER in the opposed trade mark is identified only with the opponent.  To my mind, the approach suggested by the opponent also requires me to dissect the trade mark; to not view the trade mark as being a whole with its own identity; to adopt meanings or denotations of the dissected elements which are by no means the most obvious; and, then to presuppose a number of very limited circumstances in which the trade marks might be argued to be deceptively similar in use.  These circumstances might pragmatically be viewed as only arising by coincidence and rely on the presumption that the element RIVER is only identified with the opponent.  This chain of dissection, speculative analysis and presupposition does not seem to sit well with the approach adopted by French J in Woolworth's, supra, or his adaptation of the test in Smith Hayden.  If there is to be a reasonable likelihood of confusion or deception, it should be such that it arises under reasonable, likely and normal situations in trade.  I am not satisfied in this issue that this is so.

As the test as to deceptive similarity is integral to both sections 44 and 60, if the trade marks are found to be not deceptively similar (at the least), the opposition must fail under both sections. Which it, accordingly, does here.

There remains the issue of the trade mark ROCK RIVER referred to in Mr Forno's Home Court reasons, supra. . I told the legal representatives of the parties at the hearing that I thought that the similarity of the ROCK RIVER trade mark to the STONERIVER trade mark could be an issue in terms of section 44 of the Act. After close consideration of their submissions, I believe the issue to be very much 'on balance'. I note, for example, that in similar cases where the finding has been that the public would view the trade marks to be a 'series' (and I use that term loosely), those findings have been predicated upon evidence and use of the trade marks: Semigres Trade Mark [1979] RPC 330. There is no evidence here that would support such an analysis. Accordingly, I am not convinced, in terms of Woolworths, supra, that the two trade marks ROCK RIVER and STONERIVER are deceptively similar.

Decision

As the trade marks are not deceptively similar, the opposition fails on the grounds it was argued at the hearing, namely in terms of sections 44 and 60.

Costs

Costs may follow the event and I award costs against Rivers, it having been unsuccessful in its opposition.

Ian Thompson
Hearing Officer

25 May 2000