Rochelle Dale Morris-Starr v Australian Brands Alliance Pty Ltd

[2022] ATMO 62

TRADE MARKS ACT 1995

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

Re:Opposition by Rochelle Dale Morris-Starr to registration of trade mark application number 2046500 (class 25) – ST. MRLO – in the name of Australian Brands Alliance Pty Ltd

Delegate:

Katrina Brown

Representation:

Opponent: Francesca Colubriale & Vivian Tran of Spruson & Ferguson

Applicant: Max Steinhausen of IP Service International Pty Ltd

Decision:

2022 ATMO 62

Trade Marks Act 1995 (Cth) – opposition under s 52 – grounds pursued under ss 58, 60 and 62A – no grounds established – trade mark to proceed to registration.

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Rochelle Dale Morris-Starr (‘Opponent’) to registration of the following trade mark.

Trade mark no: 2046500

Trade mark:  ST. MRLO (‘Trade Mark’)

Applicant:  Australian Brands Alliance Pty Ltd (‘Applicant’)

Filing date:  25 October 2019

Goods:  Apparel (clothing, footwear, headgear) (‘Applicant’s Goods’)

1. The trade mark was examined as required by s 31 of the Act. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 26 March 2020.

2. The Opponent filed a Notice of Intention to Oppose on 29 April 2020, followed by a Statement of Grounds and Particulars (‘SGP’) on 13 May 2020.

3. The Applicant filed a Notice of Intention to Defend on 18 August 2020.

4. The Opponent filed the following declarations as evidence in this matter:

• Declaration of Rochelle Dale Morris-Starr (Opponent) made on 19 November 2020 with Annexures A to O (‘Morris-Starr Declaration’); and

• Declaration of Rochelle Dale Morris-Starr made on 30 April 2021 with Annexures P to T.

1. The Applicant filed the following declaration as evidence in this matter:

• Declaration of Paul Elsibai (Director of the Applicant) made on 24 February 2021 with Annexures 1 to 13 (‘Elsibai Declaration’).

1. Once the time allowed for filing evidence ended, an oral hearing was requested. The matter was heard by me, a delegate of the Registrar of Trade Marks, on 7 April 2022. Max Steinhausen of IP Service International Pty Ltd filed written submissions and appeared at the hearing on behalf of the Applicant. The Opponent did not take part in the oral hearing, but written submissions were filed on their behalf by Francesca Colubriale and Vivian Tran of Spruson & Ferguson.

Grounds of opposition, onus, and relevant date

1. In the SGP, the Opponent adequately particularised grounds of opposition under ss 58, 59, 60 and 62A of the Act. The ground under s 59 was not pressed in the Opponent’s written submissions. As such, I consider the ground under s 59 to be abandoned.

2. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

3. The date at which the rights of the parties are to be determined is 25 October 2019 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

Section 58

1. Section 58 of the Act provides:

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

2. The term ‘owner’ is not defined in the Act. However, it is well established that in the absence of fraud, the owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application for it in Australia, whichever is the earlier.

3. To succeed under this ground of opposition, the Opponent must establish that:

1. the trade mark relied upon by the Opponent is identical or substantially identical with the Trade Mark;[3] and

2. the Applicant’s Goods are the ‘same kind of thing’ as the goods for which the trade mark relied upon by the Opponent has been used;[4] and

3. a person (other than the Applicant) has the earlier claim to ownership based on use, of the trade mark relied upon by the Opponent, prior to the application to register the Trade Mark or any actual use of the Trade Mark (whichever is the earlier).[5]

   [3] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).

   [4] Re Hicks’s Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

   [5] Settef SpA v Riv-Oland Marvle Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

1. In the SGP, the Opponent nominated the following trade mark as the basis for this ground of opposition: SAINT MARLO (‘Opponent’s Trade Mark’).

2. My first consideration is whether the Opponent’s Trade Mark is identical or substantially identical to the Trade Mark. It is evident that the Opponent’s Trade Mark is not identical to the Trade Mark.

3. The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd:

   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.[6]

   [6] [1963] HCA 66, [12] (Windeyer J).

4. The Opponent submits that the trade marks are substantially identical because they are comprised of the same essential features, namely ‘SAINT’ and ‘MARLO’. I agree with the Opponent to the extent that ‘ST.’ and ‘SAINT’ are essentially interchangeable and if that were the only difference, I would be inclined to find the trade marks to be substantially identical.

5. However, I do not agree with the Opponent’s submission that ‘MARLO’ can be characterised as an essential feature of the Trade Mark. The Trade Mark does not contain the word ‘MARLO’, rather it contains ‘MRLO’. Whilst there may only be a difference of one letter, the removal of that letter effectively transforms a known word[7] (MARLO) into a string of individual letters of the alphabet (MRLO).

   [7] ‘Marlo’ is a first name and a location in Victoria, Australia.  

6. Despite this, the Opponent asserts that ‘MARLO’ and ‘MRLO’ would be read the same. This seems to be, at least in part, due to the Applicant’s explanation of why it chose the Trade Mark. In the Elsibai Declaration it is stated that the Applicant originally chose ‘ST MARLO’ but ultimately decided to proceed with the Trade Mark in line with a recent trend for ‘all capitals, vowel-reduced brands’ (noting that there is nothing before me to substantiate such a trend). Nonetheless, the comparison for the purposes of s 58 of the Act, is from the view point of a consumer encountering the relevant trade marks side by side. The evidence does not establish that ‘MRLO’ would be understood by consumers, without knowledge of the origin story of the Trade Mark, as a reference to ‘MARLO’. For example, there is nothing before me to suggest that ‘MRLO’ is a known abbreviation or colloquialism of ‘MARLO’.

7. Furthermore, the Opponent has not provided any evidence that ‘MARLO’ and ‘MRLO’ would be spoken in the same manner. I accept that ‘MARLO’ is likely to be spoken as ‘MAAR-LOW’. However, it is not clear to me how ‘MRLO’ would be spoken. There is nothing before me to suggest that the letters ‘MR’ are ordinarily, or likely to be, pronounced as ‘MAAR’. Without such evidence, it seems likely that a consumer would either speak each letter separately (SAINT M-R-L-O) or break the letters up into recognisable words and sounds (SAINT MR. LO).  

8. In my opinion, a total impression of resemblance does not emerge from a side by side comparison of the Trade Mark and the Opponent’s Trade Mark. Whilst the trade marks are deceptively similar, I am not satisfied that they are substantially identical for the reasons explained above.

9. Consequently, the s 58 ground of opposition has not been established.

Section 60

1. Section 60 of the Act provides:

   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.

2. To establish this ground of opposition, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia at the Relevant Date. The Opponent must then establish that because of the aforesaid reputation use of the Trade Mark would be likely to deceive or cause confusion.

3. In the SGP, the Opponent’s Trade Mark is nominated as the basis for this ground of opposition.

Reputation

1. For the purposes of s 60 ‘reputation’ is ‘the recognition of the [trade mark] by the public generally’.[8] It has also been expressed as recognition of the other trade mark by a ‘significant’ or ‘substantial’ number of people or potential consumers[9] but this is tempered by the nature of the relevant market. Reputation cannot be assumed; it must be established as a matter of fact by the Opponent.[10] In Rodney Jane Racing Pty Ltd v Monster Energy Company it was 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.[11]

   [8] McCormick & Company Inc v McCormick [2000] FCA 1335, [81] (Kenny J).

   [9]Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

   [10] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

   [11] [2019] FCA 923, [83] (O’Bryan J).

2. Turning to the evidence, the Morris-Starr Declaration indicates that the Opponent’s Trade Mark is used in relation to fashion items including shoes, jewellery, clothing, handbags, and hair scrunchies. The Opponent’s Trade Mark has been used in the course of trade since 27 September 2018, approximately 13 months prior to the Relevant Date. By any measure this is a relatively short period of time in which to accrue the goodwill and public recognition envisioned by s 60 of the Act.

3. The Opponent has provided figures for the financial years ending 30 June 2019 and 30 June 2020 in relation to the number of units and total sales revenue of goods bearing the Opponent’s Trade Mark. I note that only a proportion of the figures provided for the financial year ending 30 June 2020 are before the Relevant Date, and the Opponent has not provided any means to distinguish sales made between 1 July 2019 and the Relevant Date. Notwithstanding, the figures for each financial year are modest.  

4. It is declared that goods bearing the Opponent’s Trade Mark are sold via the website ‘saint-marlo.com’ (‘Opponent’s Website’), third party retailers and at community markets. In respect of the community markets, the Morris-Star Declaration states that goods bearing the Opponent’s Trade Mark are sold at various community markets ‘including, but not limited to’ the Beaches Markets, Annual Avalon Market Day, Annual Newport Market Day, and the Annual Mona Vale Christmas Markets. The use of ‘including, but not limited to’ is unhelpful in quantifying reputation. The supporting information only substantiates goods bearing the Opponent’s Trade Mark being available at the four markets specifically named in the declaration. Notably, three of the four markets are only held annually and each of the markets is in the Northern Beaches area of Sydney. Similar language is used in respect of the third-party retailers. Of the nine third-party retailers named in the Morris-Starr Declaration, only two are in Australia and were stockists of goods bearing the Opponent’s Trade Mark before the Relevant Date.

5. The Opponent’s Trade Mark is promoted via the Opponent’s Website and social media. The Opponent has provided printouts of pages from the Opponent’s Website which are declared to be representative of the content published on the website since September 2018. Whilst the printouts clearly show use of the Opponent’s Trade Mark, I have not been provided any means by which to quantify the exposure that Australian consumers had to the Opponent’s Website prior to the Relevant Date, such as the number of visitors to the relevant webpages.  The Opponent has also provided screenshots of various posts on social media platforms such as Facebook and Instagram. Some of these posts are clearly dated before the Relevant Date and show use of the Opponent’s Trade Mark. However, the number of likes or followers is modest.

6. For the above reasons, I am not satisfied that at the Relevant Date the Opponent’s Trade Mark had acquired a reputation in Australia amongst a significant or substantial number of consumers.

7. Consequently, the s 60 ground of opposition has not been established.

Section 62A

1. Section 62A of the Act provides:

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

2. The phrase ‘bad faith’ is not defined in the Act. In DC Comics v Cheqout Pty Ltd, Bennett J explained:

   Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.

   The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[12]

   [12] [2013] FCA 478, [62].

3. Accordingly, I must determine what the Applicant knew at the time of making the application for the Trade Mark and then, considering that knowledge, whether it fell short of acceptable standards of commercial behaviour in applying for the Trade Mark.[13] In doing so, I note that all of the surrounding circumstances are relevant to determining bad faith.[14]

   [13] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [166] (Dodds-Streeton J).

   [14] Ibid [167] (Dodds-Streeton J).

4. The Opponent submits that the application for the Trade Mark was filed in bad faith because the Applicant was aware of the Opponent and its prior use of the Opponent’s Trade Mark. Mere awareness of the Opponent and the Opponent’s Trade Mark is not, of itself, sufficient to amount to bad faith. Additionally, the evidence relied upon by the Opponent does not establish that the Applicant was aware of the Opponent’s Trade Mark at the Relevant Date. As set out in relation to the s 60 ground of opposition, there had only been limited use and promotion of the Opponent’s Trade Mark at the Relevant Date.

5. The Opponent also relies on ‘inappropriate’ responses to third party enquiries on the Applicant’s social media pages as evidence of the Applicant’s likely awareness of the use of the Opponent’s Trade Mark at the Relevant Date. The responses establish that the Applicant was aware of the Opponent and the Opponent’s Trade Mark on 22 December 2020, more than a year after the Relevant Date. However, the responses (inappropriate or otherwise) do not establish that the Applicant was aware of the Opponent or the Opponent’s Trade Mark at the Relevant Date.

6. Additionally, the Opponent draws my attention to the fact that prolonged competition between the parties may be sufficient to support a finding of bad faith where the trade marks are deceptively similar. On the facts before me, there has not been prolonged competition between the parties. The evidence does not suggest that there was competition or conflict between the parties prior to the filing of the application for the Trade Mark. The Opponent’s Trade Mark was first used on 27 September 2018. The Applicant filed the application for the Trade Mark on 25 October 2019 and first used the Trade Mark on 1 November 2020. As such, any competition between the parties did not commence until after the Relevant Date and in my opinion, could not be characterised as prolonged.

7. In Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited, the Registrar’s delegate stated:

   The onus of demonstrating ‘bad faith’ falls squarely on the party making such an allegation with the need for evidence able to fulfil the degree of proof required to satisfy the civil standard of ‘balance of probabilities’. That said, the allegation of ‘bad faith’ is a very serious one and a finding of bad faith should not be taken lightly. [15]

The evidence before me does not establish that the knowledge of the Applicant at the Relevant Date was such that the decision to apply for the Trade Mark would be regarded as in bad faith by persons adopting proper standards.

[15] [2009] ATMO 26, [12] (emphasis added).

1. The s 62A ground of opposition has not been established.

Decision

1. Section 55 of the Act relevantly provides:

   (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.

2. The Opponent has not established a ground of opposition.

3. Accordingly, trade mark application number 2046500 may proceed to registration one month from the date of this decision.

4. 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 the disposition of the application should otherwise be in accordance with the Court’s order or direction.

Costs

1. Both parties have sought costs. I see no reason to depart from the general rule that costs follow the event. Accordingly, I award costs against the Opponent under s 221 of the Act in accordance with the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Katrina Brown

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

27 April 2022