Rivers (Australia) Pty Ltd v River Island Clothing Co. Limited
[2011] ATMO 28
•31 March 2011
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Oppositions by Rivers (Australia) Pty Ltd to extension of protection of International Registrations Designating Australia 1188355 (35) - RIVER ISLAND - and 1208986 (14, 18, 25, 35) - RIVER ISLAND - filed in the name of River Island Clothing Co. Limited
Delegate: | Michael Kirov |
Representation: | Opponent: Ed Heerey of Counsel, instructed by Michael Grant of Patent Attorney Services Holder: Tim Allen of Corrs Chambers Westgarth, Lawyers |
Decision: | 2011 ATMO 28 Regulation 17A.29 opposition: Grounds under ss 44 and 60 pressed (pursuant to reg. 17A.28)– trade marks not deceptively similar (s 44 ground not established) –reputation established, but deception or confusion not likely (s 60 ground not established) - extension of protection to Australia allowed. |
Background
Applications 1188355 and 1208986, being international registrations designating Australia (“IRDAs”), were filed in the name of River Island Clothing Co. Limited (“the Holder”) under the Madrid Protocol on 2 March 2007. Following examination of the IRDAs, IP Australia advertised on 30 July 2007 and 13 December 2007 respectively its intention to extend protection to Australia.
Details of the IRDAs are as follows:
Application Number: 1188355
International Number: 757209
Priority Date: 2 March 2007
Services:Class 35: The bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a retail clothes and fashion accessories store or from a clothing and fashion accessories catalogue by mail order or by means of telecommunications; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchases those goods in a department store or from a general merchandise catalogue by mail order or by means of telecommunication
(“the Services”)
Trade Mark: RIVER ISLAND
Application Number: 1208986
International Number: 869289
Priority Date: 2 March 2007
Goods:Class 14: Jewellery; clocks, watches
Class 18:Bags, cases, umbrellas, trunks, parasols, walking sticks; articles made from leather or imitation leather
Class 25: Articles of clothing
(“the Goods”)
Trade Mark: RIVER ISLAND
I refer hereafter to the RIVER ISLAND trade marks collectively as “the Trade Mark”.
Rivers (Australia) Pty Ltd (“the Opponent”) filed Notices of Opposition (“the Notices”) to extension of protection of the IRDAs to Australia on 30 November 2007 and 6 March 2008 respectively pursuant to reg. 17A.29 of the Regulations under the Trade Marks Act 1995 (“the Act”).
The parties served and filed Evidence in Support, Evidence in Answer, Evidence in Reply and supplementary evidence as follows:
Evidence in Support
▪ Statutory Declaration by Philip Harry Goodman made 19 May 2008, with Exhibits PHG-1 to PHG-7, PHG-9 and PHG-11 to PHG-16[1]
[1] When the Goodman declaration of 19 May 2008 was served on the Holder the Opponent claimed confidentiality in relation to its accompanying Exhibits PHG-8 and PHG-10. However, when the parties failed to agree on the terms of this confidentiality they agreed that the Opponent could withdraw those two Exhibits and effectively replace them with a supplementary statutory declaration by Mr Goodman. This supplementary declaration was sworn on 11 November 2009 and constitutes the Opponent’s “supplementary evidence” in this matter.
▪ Statutory Declaration by Colin Brown made 23 June 2008
▪ Statutory Declaration by Brendan Anthony Ainsworth made 4 August 2008
▪ Statutory Declaration by Bruce Richard Packard made 19 December 2008
Evidence in Answer
▪ Statutory Declaration by Gillian H Smaggasgale made 20 January 2010, with Exhibits GHS-1 to GHS-4
▪ Statutory Declaration by John Moore made 20 January 2010, with Exhibits A to J
Evidence in Reply
▪ Statutory Declaration by Colin Brown made 2 July 2010
▪ Statutory Declaration by Brendan Anthony Ainsworth made 21 July 2010
▪ Statutory Declaration by Timothy James Langenbacher made 22 July 2010
▪ Statutory Declaration by Daniel Roland Plane made 22 July 2010, with Exhibits DRP-1 to DRP-14
Opponent’s supplementary evidence
▪ Statutory Declaration by Philip Harry Goodman made 11 November 2009
The evidence of the Holder’s Company Secretary, John Moore, is that the Holder was incorporated “many years ago [in the United Kingdom] and by the 1960s was trading under the name Chelsea Girl Limited”. It first adopted the Trade Mark in the UK in 1984, changed its company name to River Island Clothing Co. Limited in 1992 and, as at 20 January 2010[2], used the Trade Mark “to identify clothing items, as well as accessories including boots, shoes, sunglasses, jewellery, bags, umbrellas, hair ornaments, perfumery and cosmetics”. It sells these goods in the UK and elsewhere through retail stores and franchise outlets whose store fronts prominently display the Trade Mark[3], as well as by mail order and via its website at < Mr Moore says that the Holder had a very substantial worldwide turnover in 2008 in the order of A$1.5 billion in relation to its goods and retail services provided under the Trade Mark. Although the Holder has no stores in Australia, Mr Moore exhibits with his declaration records indicating that in 2008 more than 59,000 Australians, and in 2009 more than 85,000 Australians, visited its website and he says the Holder has “not encountered any incidence of confusion between [its] products and those of [the Opponent] anywhere in the world”.
[2] Being the date the Moore declaration was made.
[3] As at 20 January 2010 the goods were sold through some 234 RIVER ISLAND branded retail stores in the UK and a further 58 such stores or franchise outlets in Europe, the Middle East and Singapore.
As for the Opponent, the evidence of its “proprietor” and CEO, Philip Goodman, is that it was originally incorporated in Victoria in 1928 under the name Paddle Bros. Pty Ltd, that from 1977 it was known as Paddle Bros. Shoes Pty Ltd and that it changed its name to Rivers (Australia) Pty Ltd in 1995. The Opponent has continuously used the trade marks RIVERS and/or (referred to hereafter collectively as “the RIVERS brand”) for footwear in Australia since around 1978, for clothing and headgear since approximately 1985 and “more recently” for “a wide range of other goods including accessories such as bags, belts, caps and hats, homewares, shampoo, aftershave, pocket tools, picnic kits, bicycle repair kits, shoe creams and suede and nubuck cleaners and protectors”. In addition to selling these goods through its own RIVERS branded retail stores and regional and clearance outlets[4], the Opponent also sold its RIVERS branded goods until around 2004 “to significant department stores and speciality chains in each State and Territory throughout Australia” which then sold the goods to the public[5]. Goods have also been promoted and sold through the Opponent’s website at < “since at least 1997” and the website apparently receives “an average of 1.4 million visitors per year”. Mr Goodman confirms that the Opponent has spent “many millions of dollars each year” on advertising its RIVERS branded goods since 1998 and that “many millions of units of clothing and footwear” bearing the RIVERS brand have been sold annually since 2003[6].
[4] There were some 140 of these stores in all States and Territories of Australia as at 19 May 2008 when the first Goodman declaration was declared.
[5] Approximately 800 retailers throughout Australia participated in this arrangement at its peak.
[6] The Lagenbacher declaration confirms that “the percentage of [these] sales referable to Australia [is] no less than 99%”.
At the heart of the current oppositions is the claimed deceptive similarity of the Trade Mark to the RIVERS brand as used and/or registered in Australia as at the 2 March 2007 filing date of the IRDAs (“the Priority Date”).
I heard the matter as delegate of the Registrar of Trade Marks on 6 December 2010 in Melbourne. Ed Heerey of Counsel, instructed by Michael Grant of Patent Attorney Services, appeared for the Holder. Tim Allen of Corrs Chambers Westgarth, Lawyers appeared for the Opponent. The parties’ oral submissions before me were supplemented by written submissions filed and exchanged prior to the hearing.
Grounds of Opposition and Onus
While the Notices specified several grounds corresponding to various provisions of the Act, Mr Allen confirmed at the hearing that the Opponent would be pressing the grounds in the Notices based on ss 44 and 60 of the Act only. These grounds are discussed below. I treat the remaining grounds listed in the Notices as abandoned.
I proceed on the basis that the Opponent need only establish one (or both) of its grounds of opposition on the balance of probabilities[7] and that the relevant date for assessing the rights of the parties is the Priority Date.
Discussion
[7] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [26] and Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [26] to [39].
Section 44
The ground based on s 44 of the Act as it relates to IRDA 1208986 is indicated in the Notices as follows:
The Opposed Trade Mark is substantially identical with or deceptively similar to one or more trade mark registrations and/or applications having an earlier priority date in respect of similar goods/services or closely related goods/services (namely Australian trade mark nos. 343107, 422196, 510491, 540069, 619830, 763432, 924380, 947906, 947908, 947909, 983406 & 1023216) (s 44 and reg. 4.15A)
The s 44 ground as it relates to IRDA 1188355 is essentially identical, but only nominates prior registrations 924380, 947908, 947909 & 983406.
At the hearing, however, Mr Allen advised the Opponent would be relying only on registrations 343107, 422196, 540069, 763432, 924380 and 947908 (“the Opponent’s Registrations”). All of these registrations are owned by the Opponent and are for the trade mark RIVERS rendered in plain capital letters. Further relevant details of the Opponent’s Registrations are set out in the table below:
| Number | Specification(s) |
| 343107 | Class 25: Footwear, boots, shoes and slippers |
| 422196 | Class 25: Men's footwear |
| 540069 | Class 25: Clothing |
| 763432 | Class 3: After-shave lotions; soap including antiperspirant soap, deodorant soap, cakes of toilet soap, shaving soap and soap for foot perspiration; cosmetics; eau de cologne; perfumery; hair lotions; shampoos; shaving preparations; nail care preparations; cosmetic preparations for skin care; toiletries; talcum powder for toilet use; boot cream; boot polish; creams for leather; shoe cream; shoe polish and shoe wax Class 18: Attache cases, backpacks, garment bags for travel, bags for campers, beach bags, briefcases, card cases, cases of leather or leatherboard, suitcases, handbags, key cases, pocket wallets, purses, rucksacks, satchels, sports bags and umbrellas |
| 924380 | Class 35: Retail and wholesale services; retail and wholesale services conducted over a global communications network; mail and telephone order services; catalogue sales |
| 947908 | Class 9: Eyeglasses; sunglasses and spectacles; sunglass and spectacle cases; frames, cords, chains and accessories for sunglasses and spectacles; optical glass; optical lenses; signs in this class Class 14: Precious metals and their alloys and goods of precious metals or their alloys or coated therewith, not included in other classes; jewellery, costume jewellery; precious stones; horological and chronometric instruments Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; books, magazines, periodicals, stamps, stickers, transfers, cards, calendars, paper towels, paper tissues; removable tattoos; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks; signs in this class Class 20: Mattresses and pillows Class 21: Household or kitchen utensils (not of precious metals or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, namely glasses (containers), figurines and small-scale models made of glass, glass marbles, glass balls, glass cups, glass tanks (containers), glass lids, glass bottles, glass goblets, glass stoppers, glass phials, glassware (painted), glass tableware; porcelain namely articles made of porcelain, porcelain tableware, porcelain tea caddies, chinaware; earthenware; terracotta namely stoneware, tableware, busts, flowerpots, flowerpot holders, earthenware, stoneware goblets and glasses (containers), stoneware, jars and pots; basins and bowls; toilet articles; birdcages, pet cages; shoehorns; shoe trees; tieracks; pepper and salt shakers; candelabras not made of precious metal; figures and figurines, statues, knick knacks, bric-a-brac, objects d'art and works of art made of glass, porcelain, earthenware, terracotta, stoneware and crystal; all the foregoing not of precious metal or coated therein; figurines of terracotta, oil cruets not made of metal Class 24: Textiles and textile goods, not included in other classes; bed and table covers; flags; travellers rugs; textile goods for bathroom use, towels Class 25: Clothing, footwear, headgear |
All of the Opponent’s Registrations have priority dates earlier than the 2 March 2007 priority date of the IRDAs, as required by s 44 of the Act. Insofar as relevant to this matter, s 44 is reproduced below:
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.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
While the Opponent has identified six registrations as underpinning its s 44 ground against the two IRDAs, it is enough for the Opponent to establish on the balance of probabilities that:
•opposed IRDA 1188355 covers “similar services”[8] to those covered by registration 924380;
•opposed IRDA 1208986 covers “similar goods”[9] to those covered by registrations 540069, 763432 and 947908; and
•the Trade Mark is “deceptively similar”[10] to the trade mark RIVERS subject of the registrations.
[8] As defined in s 14(2) of the Act, namely the same services and/or services of the same description.
[9] As defined in s 14(1) of the Act, namely the same goods and/or goods of the same description.
[10] The Opponent did not claim the Trade Mark was substantially identical to its RIVERS trade mark.
I am satisfied that the first two requirements are met, since:
• the services of opposed IRDA 1188355 are essentially the same as the services covered by registration 924380;
• the Class 14 goods of opposed IRDA 1208986 are essentially the same as the Class 14 goods of registration 947908;
• the Class 18 goods of opposed IRDA 1208986 are essentially the same as the Class 18 goods of registration 763432; and
• the Class 25 goods of opposed IRDA 1208986 are essentially the same as the goods covered by registration 540069.
I accordingly now turn to the question of whether the Trade Mark is deceptively similar to the Opponent’s RIVERS trade mark. In this regard s 10 of the Act says that “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”. It is well established that in assessing any resemblance the trade marks should not be compared side by side[11]. Rather, they are to be considered according to the impression that persons of ordinary intelligence would have based on recollection of the earlier mark (with due allowance for imperfect recollection) and the impression such persons would get from the later mark. As Dixon and McTiernan JJ put it[12]:
An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought…The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or aural description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.
[11] Australian Woollen Mills Ltd v F.S. Walton & Co (1937) 58 CLR 641 (at 658); Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (op. cit. at CLR 415; IPR 529)
[12] Australian Woollen Mills Ltd v F.S. Walton & Co (op. cit. at 658)
In Registrar of Trade Marks v Woolworths Limited[13] (“the Woolworths Metro case”), a case cited by both parties’ representatives, French J (as he then was) said of deceptive similarity:
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include 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 probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:
"...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."
[13] Registrar of Trade Marks v WoolworthsLimited (1999) 45 IPR 411 (at 428)
Referring in particular to point (ii) in the above quote by French J, Mr Allen submitted on behalf of the Opponent that confusion was likely amongst a substantial number of Australian consumers because:
The Goods and the Services were essentially identical to those covered by the Opponent’s relevant registrations;
“The competing marks both begin with the distinctive word RIVER” which was “not a natural or descriptive term for use in connection with the relevant goods and services” and which “provides a prominent visual, aural and conceptual identifier pivotal to the recognition of the competing marks by consumers”;
“The word ISLAND … is of relatively low distinctiveness in relation to clothing and associated retail services since it suggests a vacation mood and thereby brings to mind clothing which is casual and relaxed”;
The Trade Mark contained the “essential feature” of the RIVERS trade mark, (which he identified as the element RIVER);
The evidence of the Opponent’s trade witness Colin Brown was that on the basis of his experience in the footwear industry “Australian consumers would be likely to assume [the Holder’s] products were in some way associated with RIVERS” and it was “likely that consumers would regard RIVER ISLAND as being a sub-brand of RIVERS” in the way that “the ARMANI brand has ARMANI EXCHANGE as a sub-brand”;
The evidence of the Opponent’s trade witness Brendan Ainsworth was that on the basis of his experience in the footwear industry “Australian customers would be likely to assume [the Holder’s] products were in some way associated with Rivers”, that “RIVER ISLAND branded products…would leverage of the strength of the RIVERS brand”, that “customers would think the two brands were related” and “would regard RIVER ISLAND as being a sub-brand of RIVERS”;
The results of a survey conducted on the Opponent’s behalf by Roy Morgan Research Pty Ltd supported the “contention that the use of RIVER ISLAND in respect of clothing is likely to confuse a significant number of persons into thinking that goods bearing the RIVER ISLAND mark are sourced from the Opponent”; and
The absence of any actual confusion between the Trade Mark and the Opponent’s RIVERS mark was not relevant since the Langenbacher declaration confirmed that, with the exception of “minimal amounts of products sold via the Internet”, the Opponent has not traded in any of the countries where the Holder operates its RIVER ISLAND branded stores. As for the Opponent’s Internet sales, less than $25,000 worth had been made to the UK between 2003 and 2007, with only very minimal sales made to other countries in which the Holder operated.
For the Holder, Mr Heerey countered that:
The Opponent’s relevant registrations for the RIVERS trade mark already coexisted on the Register with a large number of registrations owned by third parties for combination marks featuring the element RIVER and covering identical goods and services in Classes 14, 18, 25 and 35. A consistent approach thus suggested the Trade Mark could also coexist with all these marks, including with the Opponent’s RIVERS trade mark;
Moreover, the Opponent had unsuccessfully opposed registrations 642831 (25) ROCK RIVER (“the ROCK RIVER opposition”)[14] and 721619 (25) STONERIVER (“the STONERIVER opposition”)[15], had withdrawn oppositions to the marks RIVER BEND, WHITE RIVER, TWEED RIVER, RIVER CANYON and RIVERWORKS (all now registered for Class 25 goods) and had apparently chosen not to oppose any of the many other registered marks of this kind currently on the Register. This, he said, indicated neither the Registrar, nor even the Opponent itself, believed the Opponent had a monopoly in marks featuring the element RIVER for Class 25 goods;
The parties’ trade marks already coexist for relevant goods and services without apparent difficulty on the Registers of Hong Kong, India, New Zealand, Singapore, Taiwan, the U.S.A. and Vietnam and should therefore be able to do so in Australia without undue confusion.
[14] Home Court International Limited v Rivers (Australia) Pty Ltd [1997] ATMO 48
[15] Rivers (Australia) Pty Ltd v Ezibuy Limited [2000] ATMO 48
The numerous currently coexisting Australian registrations to which Mr Heerey referred were detailed in the Smaggasgale declaration. I have set out brief details of the most relevant of these in the table below, adding for convenience details of IRDAs 1188355 and 1208986 in bold:
Number
Class
Trade Mark
506092
25
RIVER GUM
548517
25
WILD RIVER
586064
25
RIVER OF SILK
587240
18
RIVER OF SILK
602789
18
RIVER GUM
642831
25
ROCK RIVER
711381
25
WILD RIVER
719929
18, 25
719930
18, 25
RIVERDANCE
721619
25
STONERIVER
837390
25
River Bend
887017
35
934937
25
RIVER RAPIDS
939552
35
942911
25
WHITE RIVER
962096
25
TWEED RIVER
1019951
25
Saint River
1031768
25
RIVER CANYON
1051857
18, 25
1054726
25
MountainRiverSea
1089524
25
SNOWY RIVER
1142755
35
FOUR RIVERS
1187662
14
Blue River Diamonds
1188355
35
RIVER ISLAND
1199218
25
Jack River
1208986
14, 18, 25
RIVER ISLAND
1213978
25, 35
1244676
25
RIVER WOODS
1284548
25
RIVERWORKS
With reference to the state of the Register as highlighted in the Smagglesgale declaration, Mr Allen argued “many” of the coexisting registered trade marks identified were:
clearly distinguishable from the Opponent’s RIVERS trade mark. For example, the RIVER GUM mark (506092 and 602789), is easily recognised as referring to the “River Gum” or “River Red Gum” native species of eucalypts, and is unlikely to be confused with RIVERS.
He then identified eight of the registered marks as being “arguably ‘closest’ to RIVERS”, being WILD RIVER, RIVER BEND, RIVERBANK, RIVER RAPIDS, RIVER CANYON, RIVER RUN, RIVER WOODS and RIVER WORKS[16] and noted that Internet and telephone enquiries in or about July 2010 detailed in the Plane declaration suggested seven of these were not then in use in Australia. (In fact, on my understanding of the information in the Plane declaration, at least three of the eight marks the Opponent elected to research were in use in Australia.) Relying on Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 (at 590) and British Sugar plc v James Robertson & Sons Limited [1996] RPC 281, (both being cases that concerned the inherent registrability of the trade marks in suit and where the judges concerned had said the state of the Register was not relevant to that issue), he submitted that:
…in the present case, it is not the state of the Register that is relevant for the purposes of determining the level of exclusivity enjoyed by the Opponent’s RIVERS trade mark, but the state of the marketplace in terms of marks comprising or containing RIVER which are, or have been, in use.
[16] I mention in passing that it is by no means apparent to me why this selection of eight registered marks are “arguably ‘closest’ to RIVERS”.
Mr Heerey submitted that the state of the Register, rather than evidence as to the state of the marketplace, was indeed relevant for s 44 purposes, arguing that:
The point is that the Registrar has determined that all of these marks should co-exist on the Register and may be used concurrently, without undue confusion, for any and all of the goods or services for which they are registered.
The Registrar was not required to consider how each of those marks have or have not, in fact, been used in any particular ways which might diminish the risk of confusion, as [the Plane declaration] attempts to demonstrate.
On the contrary, the Registrar was required to consider the potential use of each mark across the full spectrum of goods and services specified in each registration, yet still found no sufficient risk of confusion to refuse acceptance and registration.
Mr Heerey submitted that, whereas Jacobs J in the British Sugar decision had said “in any event one has no idea what the circumstances were which led the Registrar to put the [earlier] marks concerned on the Register”, in the present case we do have a clear idea of the Registrar’s thinking through the decisions in the ROCK RIVER and STONERIVER oppositions. He quoted extensively from those decisions and, because I have found the reasoning of the delegates concerned germane and persuasive with respect to both the s 44 and s 60 grounds pressed by the Opponent, I reproduce relevant parts of those decisions below.
In the ROCK RIVER opposition Hearing Officer Forno concluded that, even taking into account the “substantial reputation” of the Opponent’s RIVERS mark, use of the ROCK RIVER mark was “not likely to deceive or cause confusion” in terms of s 28(a) of the now repealed Trade Marks Act 1955:
The opponent’s reputation at [the priority] date in this country, with respect to its own mark and goods, is undisputed. From the evidence, the opponent had established, at the appropriate date, a substantial reputation in this country for its trade marks. I think that it would be fair to say that most people who purchase male casual clothing and shoes would have some knowledge of those trade marks through the extensive advertising which the opponent has carried out. I agree with [the Opponent’s attorney] that the primary focus of this reputation is on the word RIVERS. From the manner of its use, I think that most users 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. On the other hand, the applicant has not produced any examples of use of its mark ROCK RIVER. This means I cannot assess its reputation, if indeed it has one, for the goods claimed. I agree with [the Opponent’s attorney] that the fact that the applicant agreed to disclaim the word ROCK means that more emphasis should be given to the word RIVER as the remaining distinctive feature. However, the mark needs to be considered as a whole and I think that is obvious that it is suggestive of a fanciful place name. As [the Opponent’s attorney] pointed out, another trade mark which suggests a place name, SNOW RIVER, was on the Register when the opponent first lodged its own RIVERS trade mark. That the latter mark succeeded in gaining registration, in the face of whatever reputation the SNOW RIVER mark possessed. This suggests that the Registrar felt, at that time, that purchasers can make the distinction between trade marks which contain a common word for the same goods, and which respectively suggest a place and a person, without being caused to wonder whether the marks share a common proprietor. I think that the present instance is analogous and that buyers would not be deceived and confused by the co-existence of the subject trade marks on the Register.
Notwithstanding the above, it is true that there are cases, such as De Cordova v Vick Chemical Co. supra, and Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, where it was found that, if the later mark incorporated the essential or distinguishing feature of the earlier mark, then confusion was likely to result. However, as I have previously said, I do not agree that the present case falls into this category. The common element in the applicant’s and opponent’s trade marks is the word RIVER. However, as I have said, I think that the inference to be drawn from them is different. Taking all of the preceding factors into consideration, I am satisfied that use of the applicants’ trade mark will not lead to deception or confusion. I therefore find that the requirements of paragraph 28(a) have not been made out.
On the question of “deceptive similarity” per se, the Hearing Officer held:
Here, the situation relies upon the so-called “imperfect recollection” of the marks in the market place. In the present case, there has been no evidence adduced of any instances of actual confusion occurring. I will therefore have to consider the matter from a theoretical viewpoint. I note here that [the Opponent’s attorney] has said that this is because the present trade mark has not yet been used.
The opponent does have several registered trade marks which include the word RIVERS in class 25 - in addition to its own trade mark RIVER BLUE. However, these trade marks have co-existed on the Register with clothing marks belonging to other traders and which include the word RIVER. These include marks such as SNOW RIVER, RANDY RIVER, SNOWY RIVER, RIVER GUM, WILD RIVER, MARGARET RIVER, RIVER OF SILK and RED RIVER. I have nothing before me to suggest that there have been any instances of deception or confusion between any of the marks mentioned. I therefore cannot believe that the present case would be any different.
In the STONERIVER opposition Hearing Officer Thompson took an essentially similar view:
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 [the] Woolworth's Metro [case].
As mentioned, I find the above-quoted reasoning of the delegates concerned persuasive in the present opposition. In this regard I note Hearing Officer Williams also had argument based on the state of the Register before him in Re Unilever plc’s application to register the trade mark PHOENIX [2001] ATMO 39. The Hearing Officer referred to the following words by Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 (at [35]):
I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.
and commented:
The [above-quoted] paragraph is important. Firstly, consistency in public administration is desirable. Secondly, there is a difference between the role of the court and that of the Trade Marks Office in such matters. It is the responsibility of an administrator to take reasonable steps to understand, consider and assess the pattern of his/her own agency in dealing with past matters, where these are directly relevant. It is only if the decision-maker is satisfied that a current matter can be distinguished from past decisions, for whatever reason, that an established pattern can be varied in good conscience.
In this case, I find it difficult to agree with Mr Allen that the Trade Mark is significantly different from the ROCK RIVER and STONERIVER trade marks subject of the Trade Marks Office decisions quoted above. Or, indeed, is significantly different from many of the other trade marks currently registered in Classes 14, 18, 25 and 35 listed in paragraph 22 above. Mr Allen did argue that:
The word ISLAND in the [Trade Mark] is of relatively low distinctiveness in relation to clothing and associated retail services, since it suggests a vacation mood and thereby brings to mind clothing which is casual and relaxed. The Opponent submits that the word ISLAND in the [Trade Mark] is not so prominent as to displace the commonality of the word RIVER.
However, I think this proposition does not withstand close scrutiny. Essentially similar claims could be made about the words “wild” or “dance” appearing in the registered WILD RIVER and RIVERDANCE trade marks, for example. Rather, to the extent that the Trade Mark does “suggests a vacation mood and thereby brings to mind clothing which is casual and relaxed”, this strikes me as a significant point of difference between the parties’ marks when considered as wholes since the Opponent’s RIVERS trade mark, to my mind, bears no such suggestion. In this regard I agree with the view of the Hearing Officers in the ROCK RIVER and STONERIVER oppositions that “most users would infer that [RIVERS] 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”[17].
[17] I note in passing that the Search for Australian Surnames search facility indicates the surname RIVERS occurs some 522 times on the Australian Electoral Role and that RIVER occurs 6 times.
As pointed out by Mr Heerey, it has long been held that marks must be compared as wholes and here, to my mind, the marks as wholes neither look alike nor sound alike. As was said in Clark v Sharp[18]:
One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.
[18] (1898) 15 RPC 141 (at 146)
An additional matter raised by Mr Heerey was the fact that by majority the Full Court in the Woolworths Metro case (French and Tamberlin JJ; Branson J dissenting) expressly approved the taking of reputation into account when assessing deceptive similarity under s 44 in circumstances “where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken” since “it would be artificial to separate out the physical features of the mark from the viewer’s perception of them”[19]. The Full Court in CA Henschke v Rosemount Estates Pty Ltd (2000) 52 IPR 42 considered (at [52]) that the Woolworths Metro case stood for the proposition that:
…in assessing the nature of a consumer’s imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration.
[19] Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411, per French J at [61].
In the present opposition, both parties referred to the 1999 decision of Goldberg J in Dr Martens Australia Pty Ltd v Rivers (Australia) Pty Ltd & Ors[20], where his Honour considered the evidence before him established RIVERS was even then a “prominent and well known” brand name (at [192]) and that “the Rivers name is well known in the footwear and clothing industry” (at [250]). Mr Heerey did argue any reputation thereby confirmed should be confined to footwear aimed primarily at mature aged men, this being the essential subject matter with which Goldberg J was concerned in the Dr Martens case, but I am in any event satisfied by all the evidence before me that the Opponent’s RIVERS trade mark enjoyed a substantial reputation in Australia as at the Priority Date for, effectively, all of the Goods and all of the Services.
[20] (1999) 44 IPR 281, confirmed on appeal by the Full Court at (1999) 47 IPR 499.
In this regard I am inclined to agree with Mr Allen’s submission that:
Given the fame of the RIVERS trade mark and the apparent absence from the Australian marketplace of any competing brand remotely close to RIVERS, the Opponent submits that its exclusive reputation as at the Priority Date is such that consumers are likely to recognise the RIVERS trade mark with ease as indicative of goods emanating from the Opponent (including clothing, footwear, headgear and the like) as well as retail and merchandising services in respect of those goods and other consumer products generally.
That said, I think Mr Heerey is right that, to the extent the reputation of the RIVERS trade mark is such “that consumers generally must be taken to be familiar with it”, then this is yet another reason why relevant consumers are unlikely to confuse the RIVERS mark with the trade mark RIVER ISLAND. As he put it in his submission:
Where a mark is very famous, the comparison between the impression held in the consumer’s mind and the direct impression of the latter mark is one which may occur in a context in which the chances of the average consumer having forgotten the earlier mark is “vanishing small”.
Confusion was also unlikely, submitted Mr Heerey[21], because the Goods:
…are not the type of “fast moving consumer goods” which might commonly be purchased on a whim without the consumer paying some care and attention. On the contrary, before buying such products, consumers usually take time to try them on to see how they fit. This is a relevant circumstance which points to a likelihood that consumers will correctly distinguish rather than confuse the source of the respective parties’ goods and services.
[21] Referring to the commentary and cases mentioned in Shanahan’s Australian Law of Trade Marks and Passing Off (4th ed.) at [30.2005].
As regards the Opponent’s survey evidence, I have not found this sufficiently cogent as to tip the balance in the Opponent’s favour in this instance. Mr Heerey criticised this evidence on a number of fronts, and I agree in particular with his criticism that the initial question put to the survey respondents, (namely, “If you saw clothing marketed under the brand RIVER ISLAND, which particular retailer, if any, would you think was the source of this branded clothing?”), puts the respondents in an unrealistic position. As he argued, in reality a potential consumer would instead encounter the Trade Mark in the context of the marketplace such as on the front of a store or on labels attached to clothing or similar goods. The consumer would then most likely simply assume RIVER ISLAND was the source of the goods or services and not be concerned to further analyse whether that source is associated with any other “particular retailer”. Thus a survey question which effectively forces the respondent to embark on such an analysis is not only artificial, but also implies the “particular retailer” will be one with which the respondent is likely to be familiar already. As Mr Heerey argued, many respondents would inevitably then discount the possibility that RIVER ISLAND simply identified a “new” retailer.
When all the foregoing matters are weighed up and I attempt to assess the marks’ likely effect or impression in the minds of relevant consumers, I find I am not satisfied deception or confusion amongst a significant number of such consumers was likely as at the Priority Date. I do not on balance believe there was a real tangible danger of a number of such persons being left in doubt or caused to wonder whether the relevant goods and services dealt with under the parties’ respective trade marks came from the same source.
The s 44 opposition ground is accordingly not established.
Section 60
The ground based on s 60 is indicated in the Notices as follows:
Another trade mark had, before the priority date of the opposed [IRDAs], acquired a reputation in Australia such that use of the…Trade Mark would be likely to deceive or cause confusion (s 60).
Section 60 of the Act is reproduced below:
Trade mark similar to trade mark that has acquired a reputation in Australia
60. 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 2: For priority date see section 12.
The Opponent says that its RIVERS brand (the RIVERS word mark and/or the composite mark) had acquired the requisite reputation in Australia as at the Priority Date necessary to underpin the s 60 ground. As with the s 44 ground discussed above, what needs to be considered in the case of s 60 is the notional use the Holder might make of the Trade Mark, assuming use in a “fair and reasonable manner”[22]. The issue is whether such use would be likely to deceive or cause confusion in light of the reputation of the RIVERS brand as at the relevant date.
[22] These being the often quoted words of Evershed J (as he then was) in Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97, at 101.
As discussed earlier, despite Mr Heerey’s argument that based on Goldberg J’s decision in the Dr Martens case any such reputation is only established in relation to footwear primarily aimed at mature aged men, I am satisfied from the totality of the evidence before me that the RIVERS brand enjoyed a significant reputation for essentially all of the Goods and the Services amongst a substantial number of people as at the Priority Date. The evidence shows the brand had been widely advertised in Australia for many years and the number of RIVERS branded stores and other outlets throughout the country, and the activity evidenced on the Opponent’s website, speak for themselves in my view.
That said, there is nothing in the manner in which the RIVERS brand has been used or promoted, or in the nature of its reputation, which suggests to me the Holder’s use of its RIVER ISLAND mark would be likely to deceive or cause confusion amongst a significant or substantial number of Australian consumers. Indeed, as indicated earlier, I am inclined to agree with Mr Heerey that, in this case, the notoriety of the RIVERS brand renders it most unlikely consumers would recollect it in any other way than as “RIVERS”. Given that RIVERS and RIVER ISLAND do not look alike, nor sound alike, nor convey the same idea, and given consumers might generally be expected to carefully inspect goods such as clothing, footwear and fashion accessories before purchasing them, I thus believe the parties’ respective trade marks should be able to coexist without difficulty.
I accordingly find that the Opponent has not established its s 60 ground.
Decision
Regulation 17A.34 provides:
17A.34 Decision on opposition
(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.
(2) The Registrar must tell the International Bureau of his or her decision.
I have found that neither ground relied on by the Opponent has been established and as the Registrar’s delegate in this matter I thus direct that protection of the Trade Mark be extended to Australia one month from the date of this decision in respect of all of the goods and services listed in the IRDAs. If the Registrar has been served with a notice/notices of appeal before that time, I direct that extension of protection shall not occur until the appeal(s) has/have been decided or discontinued or, if this decision be successfully appealed, that the IRDAs be dealt with as the Court sees fit. If the Registrar has not been served with a notice/notices of appeal before that time the International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accord with Regulation 17A.34(2).
Costs
Both parties requested an award of costs in their favour. As the successful party, the Holder is entitled to its costs and I accordingly award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995, with costs for the second of the two oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad (2001) 53 IPR 591.
Michael Kirov
Hearing Officer
Trade Marks Hearings
31 March 2011
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9
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