Rocket Trademarks Pty Ltd v Coolibar, Inc

[2008] ATMO 67

TRADE MARKS ACT 1995

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

Re:Opposition by Rocket Trademarks Pty Ltd to registration of trade mark application 1087283 (9, 18, 25) - TREE DEVICE - filed in the name of Coolibar, Inc.

Delegate:

Claudia Murray

Representation:

Opponent: Angela Dahlke, Patent Attorney, of Cullen & Co.

Applicant: Ike Papageorge, Consultant, of Freehills.

Decision:

2008 ATMO 67

Section 52 opposition: sections 42, 44 and 60 - registration proceeding - costs awarded against opponent.

Background

1. Coolibar, Inc. (“Coolibar” or “the applicant”) filed trade mark application number 1087283 on 24 November 2005. The subject trade mark is:

1. The application was filed in classes 9, 18 and 25 of the International (Nice) Classification of Goods and Services, in respect of:

Class 9:

Optical apparatus and instruments; sunglasses; goggles; optical lenses

Class 18:              

Goods made of leather and imitation leather; umbrellas; parasols; walking sticks; trunks; travelling bags; purses; wallets; hand bags; bags in this class

Class 25:              

Clothing; footwear; headgear; hats; caps; headwear; shoes; shirts; pants; gloves; shorts; skirts; swimsuits; jackets; sarongs; cover-ups; rompers; t-shirts; and driving sleeves.

1. No grounds for rejection under the Trade Marks Act 1995 (“the Act”) were raised against the application during examination. It was advertised as accepted for registration in the Australian Official Journal of Trade Marks on 23 March 2006.

2. On 10 May 2006, Rocket Trademarks Pty Ltd (“Rocket” or “the opponent”) filed notice of opposition to registration of the trade mark. Fifteen grounds of opposition were listed in the notice.

3. Rocket’s evidence in support was duly served and filed. By regulation 5.11 notice dated 8 December 2006, Coolibar indicated that it did not intend to serve or file any evidence in answer. The opponent then requested the opposition to be heard. After some delay, a hearing was held before me, as a delegate of the Registrar of Trade Marks, in Canberra, on 20 March 2008. Mr Ike Papageorge, consultant, of Freehills Patent & Trade Mark Attorneys, Melbourne, represented the applicant at the hearing. Ms Angela Dahlke, of Cullen & Co. Patent & Trade Mark Attorneys, Brisbane, represented the opponent.

Evidence

1. Rocket’s evidence in support of its opposition comprises a single Statutory Declaration by Maria Manning, Company Secretary of Billabong International Limited and its wholly owned subsidiaries including Rocket Trademarks Pty Ltd, GSM (Trademarks) Pty Ltd and GSM (Operations) Pty Ltd (the “Billabong Group”). The declaration is dated 5 September 2006, and is accompanied by a variety of supporting documentation, in the form of Exhibits MM-1 to MM-35. Ms Manning’s declaration provides a comprehensive picture of the international business activities of (and very substantial revenue generated by) the Billabong Group in the active sports market, including surfing, skateboarding and snowboarding. Her declaration describes its transition from a small Gold Coast partnership between Gordon and Rena Merchant which began trading under the BILLABONG trade mark in 1973, into a “world famous international organization” as a “well publicised Australian success story”.

2. The Billabong Group has a considerable portfolio of trade marks, with its “core brands” including ELEMENT, BILLABONG, VON ZIPPER, NIXON and KUSTOM. The trade marks associated with the ELEMENT brand are the focus of Rocket’s opposition. The signature trade marks of the ELEMENT brand are the word mark ELEMENT and tree device mark subject of trade mark registration number 865202, illustrated in the table below. The tree device mark was created by American skateboarding enthusiast Johnny Schileriff to symbolise a tree (being the living form of natural wood out of which skateboards may be constructed). The brand was originally established in the US in 1992. Billabong International Ltd set up its subsidiary Rocket Trademarks Pty Ltd to take over ownership of, and to develop the ELEMENT brand, which it did in 2001. Ms Manning attests to the expansion of the ELEMENT brand from a speciality brand (focusing on products, including apparel, bags, accessories and sporting goods for skateboarding and the skateboarding lifestyle) to a lifestyle brand, similar to other brands owned by the Billabong group.

Grounds of opposition

1. At the hearing, Ms Dahlke indicated that the opponent wished to pursue only three grounds of opposition, those under sections 42, 44 and 60. I will deal with them here in the order in which they were dealt with at the hearing. For completeness, I find that the other grounds raised in the notice of opposition have not been successful.

Section 44

Submissions

1. Subsection 44(1), applied to the present circumstances, provides that an application for registration must be rejected if it is substantially identical, or deceptively similar, to another person’s trade mark application or registration that has an earlier priority date, and covers goods that are similar to the applicant’s goods. The definition of "deceptively similar" in section 10 is 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". Section 14 defines “similar goods” as goods which are “the same”, or “of the same description”.

2. Ms Dahlke began by indicating that the opponent sought to rely, for the purposes of section 44, on the following trade mark registrations, particularly 865202, all relating to its ELEMENT brand, as described in its evidence in support:

TM No.	Trade Mark	Filing Date	Class / Statement of Goods
865202	7 Feb 2001	Class: 18 Bags in this class; carrying bags, including backpacks, wallets and holders for CD’s Class: 25 Clothing, including T-shirts, sweatshirts, sweat pants, pants and shorts; headgear, including hats, caps and visors; footwear including socks, belts Class: 28 Sporting goods; skateboards and skateboard accessories, including, wheels, bearings, rails and trucks; toys, including fingerboards
906390	14 Mar 2002	Class: 28 Sporting goods and accessories including sporting goods and accessories for skateboarding, snowboarding, surfing and other action sports including skateboards and skateboard accessories, including skateboard decks, wheels, bearings, rails and trucks; covers for sporting goods; grips, binders, leg ropes and tethers for sporting goods; waxes for boards and skis; toys including finger boards
1033508	8 Dec 2004	Class: 14 Precious metals and their alloys; goods of precious metals and their alloys, imitation precious metals, or coated therewith, not included in other classes; jewellery and costume jewellery, including earrings, necklaces, chains, bracelets, amulets, anklets, brooches, rings, charms, trinkets (jewellery), ornaments (jewellery) including pendants, ear ornaments, ornamental lettering, ornamental pins, hat, belt and shoe ornaments, tie clips, cuff links, wrist cuffs, wrist bands, collar tips, boot chains; precious stones and semi-precious stones; horological and chronometric instruments, watches and clocks, and other timepieces, and parts of the aforegoing goods, watch accessories including watch bands, watch chains, watch straps and watch cases; jewellery cases, jewellery boxes and jewellery pouches in this class, medallions and badges of precious metal or coated therewith; keyrings, key cases, key chains, key tags and key fobs in this class, hair ornaments and hair jewellery including hair clips and hair combs, headbands in this class

1. There was no dispute between the parties as to the question of the earlier priority dates of the opponent’s registrations. However, Ms Dahlke herself raised the issue of whether the goods covered by trade marks numbered 906390 and 1033508 were indeed the same goods, or goods of the same description as those covered by Coolibar’s trade mark. Without pursuing the issue in any depth at that point, she submitted that “at least” the applicant’s goods covered by classes 18 and 25 were similar goods to those covered by the earliest tree device registration, number 865202, and further, that the marks themselves were “at least” deceptively similar.

2. Before moving on to the familiar tests for deceptive similarity outlined by Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd, (1937) 58 CLR 641, and in Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415, Ms Dahlke commented that:

   The words “likely to deceive or cause confusion” in the definition of “deceptive similarity” place no limitation upon the nature of the confusion or deception so envisaged, as stated in John Fitton & Co Ltd's Appn (1949) 66 RPC 110.

   The deception or confusion contemplated by section 10 (and sections 44 and 60) of the Act, could occur by any means, including: visual confusion between the marks; aural confusion between the marks; contextual confusion; and/or deception or confusion as to the trade provenance of the goods. (Emphasis in original)

3. It was the opponent’s submission that, applying the doctrine of imperfect recollection as taught in Re Rysta Ltd's Application (1943) 60 RPC 87, and following the decision of the Full Federal Court in Re Dial An Angel Pty Limited v Sagitaur Services Systems Pty Limited [1990] FCA 211; 96 ALR 181 19 IPR 171 (29 June 1990), together with a number of subsequent ATMO decisions, I should find the applicant and opponent’s tree devices to be deceptively similar. Aurally, both tree devices could be described in the same manner, and visually, the common idea of a simplified tree device comprising a central vertical straight line and three straight oblique lines extending outward from either side was likely to be retained by customers, and result in them mistaking one trade mark for the other. Relevant circumstances of the trade for the respective goods tending to increase the likelihood of confusion or deception included background noise, multiple brands sold in close proximity, obstruction of tags, etc.

4. Ms Dahlke explored the principle of “contextual confusion”, as described in John Fitton’s Application, supra, and Kodak (A/asia) Pty Ltd's Appn (1936) 6 AOJP 1724. She submitted that:

   A trade mark may be found to be deceptively similar to another trade mark or a family of trade marks because of a likelihood of ‘contextual confusion’, that is, of consumers believing the trade marks indicate goods from the same trade source.

   Contextual confusion may occur because of the common practice of traders (including in relation to opposed goods) adopting a certain symbol or theme in its branding and trade marks and constructing other trade marks for distinguishing their goods, or characteristics of their goods, by using variants (e.g. which incorporate a basic or common or consistent or dominant feature of the branding) (as with the various TREE device marks). (Emphasis in original)

5. Ms Dahlke then concluded her submissions in terms of section 44 by observing that, as the applicant had led no evidence of its own use or intended use of its trade mark, it followed that it may not claim any entitlement to registration under the honest concurrent use or prior use provisions of that section, should a finding of deceptive similarity between the relevant trade marks be found.

6. Responding to the opponent’s submissions, Mr Papageorge drew on many of the same sources in arguing that the trade marks in question were not deceptively similar. Comparing the essential elements of the trade marks, he observed:

   The dominant or essential features of the respective trade marks are completely different. This is, for example indicated by the Trade Mark Office's characterisation of the Opponent's trade mark no 865202 as a mark consisting of "3-stacked arrows in 2 concentric circles, 1 broken" whilst the Applicant trade mark is described as a "stylised tree".

   ·The Opponent's trade mark no 865202 comprises competing elements in that the central arrow device and the concentric circles both attract the eye equally. There are, in essence, 7 individual components of the mark which, collectively, form an intricate elaborate mark which is highly distinctive. In contrast, the Applicant's trade mark is a simple stand alone image of a tree as a sole and dominant element.

   ·The idea conveyed by the Applicant's trade mark is simple, it is a stylised tree unembellished by any detail or framing. It is a simple stark device whereas the Opponent's device consists of elaborate, distinct and separate elements. It can be clearly argued that the essential component of the Opponent's trade mark no 865202 does not convey the idea of a tree but rather a chevron or equally 3 stacked arrows.

   ·The Applicant's mark is stark and angular and completely distinct from the (intricate) rounded composite nature of the Opponent's trade mark no 865202.

   ·The best oral description of the Applicant's mark would simply be a "tree device" whilst the Opponent's trade (no 865202) mark could be described as a "double circled device encompassing a rocket or 3 arrows....."

   The Opponent has the burden of satisfying the Registrar that there is a reasonable likelihood of confusion or deception. A mere possibility of confusion is not enough (Registrar of Trade Marks v Woolworths 45 IPR 411). The Opponent's trade mark no 865202 is consistently referred to as ELEMENT TREE DEVICE (see paragraph 5 of the Statutory Declaration of Manning). [See also USA and Canadian copyright registrations referring to the Opponent's title of works as "ELEMENT" logo - Exhibit MM2].

Discussion

1. After carefully considering the submissions of both sides upon this point, I have come to the conclusion that the trade marks at issue are not in fact deceptively similar. Ms Dahlke drew my attention to the familiar words of Justices Dixon and McTiernan in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd, supra, at page 658, and I believe they continue to provide valuable and practical guidance to decision makers as to how the fundamental principles should be applied:

   In deciding this question, the marks ought not, of course, to be compared side by side. 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 impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. 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 verbal description by which buyers will express their desire to have the goods, their 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.

2. Considering the relevant trade marks in light of these observations, I find I cannot share the opponent's opinion that they are deceptively similar. It is not easy to see on what basis an impression created by Coolibar’s trade mark might be mistaken for the impression created by any of Rocket’s trade marks, even if (as has not been established) all their use was on the same or similar goods. The trade marks are visually quite distinct. As Coolibar has itself observed, its trade mark is notable for its simplicity and starkness. This is the first impression which strikes the eye, and is retained in the memory. The tree devices in Rocket’s trade marks are by no means substantially identical to the Coolibar device. Further, all contain, in addition to those devices, very significant additional material, resulting in much more complex, and quite different, visual impressions.

3. Aurally, the trade marks are also easily distinguishable. Rocket’s registrations numbered 906390 and 1033508 would be known by the words present in the trade marks: TWIGS and ELEMENT, respectively. Trade mark number 865202, the focus of the opponent’s submissions, may conceivably, without its border, have been aurally identified by some customers as a stylized tree device, in similar vein as Coolibar’s tree device. Even then, I believe the differences between the devices would likely militate against their being confused, one for the other. In the event, this is a false enquiry[1], an entirely inappropriate comparison to make. The trade mark as a whole has a round double border device which entirely transforms the impression it creates, and accordingly the manner in which customers would be likely to describe it. I accept Ms Manning’s description given in evidence of the device having been designed to evoke “the living form of natural wood”, relating also to the four basic elements of wind, water, fire and earth, and tying in with a philosophy of “being one with a skateboard and in harmony with nature” (paragraph 8). However, I find myself much more in agreement with Mr Papageorge’s description of the device, quoted above. From my perspective, the device definitely evoked a strong and lasting first impression of a circular target and arrow device.

   [1] Anheuser-Busch, Inc v Budejovicky Budvar, Narodni Podnik [2002] FCA 390 (the "Australian Budweiser case") paragraph 154.

4. 
   The situation here, then, is that the marks in question neither look nor sound alike, and any commonality of the idea they invoke is debatable. The Full Federal Court, in Sports Cafe Ltd v Registrar of Trade Marks [1998] 1614 FCA (18 December 1998), (the Sports Cafe case), decided that the following word and device trade marks were not deceptively similar:

The Court stated, at page 5:

The fact that two marks convey a common idea becomes relevant only if the marks themselves look and sound alike. Commonality of idea might then tip the balance in favour of a finding that the likeness is deceptive.

1. For completeness, I will also address the question of whether, as the opponent has argued, there is a possibility of contextual confusion arising, based upon consumers believing that Coolibar’s trade mark is merely a variant of Rocket’s family of trade marks. The essence of this argument depends upon there being a common element in the trade marks at issue, as was held to be the case in the trade marks JESTS and EASYJESTS in John Fitton’s Application, supra. For the reasons I have already canvassed, I do not believe this to be the case. The opponent’s own evidence shows that it has been very diligent and successful in promoting the common element of its trade marks, as ELEMENT the word and the brand. Any subsidiary association made by customers, as the opponent has also described, would be around the natural elements of wind, water, fire and earth and perhaps, even more distantly, wood as a raw material for skateboards. There is nothing to suggest that Rocket has also attempted to associate its trade marks in the minds of its buying public with a generalized tree theme, such as might also encompass Coolibar’s trade mark, and I believe there is no reason for this to have naturally occurred otherwise. In fact, it is hard to see how such an action would be at all to the advantage of a business wishing to create a strong, clearly identifiable image evocative of a sporting, outdoors lifestyle. It is common knowledge that the use of images of trees in that context is a popular and natural one, and the crowded (forested?) state of the Australian Trade Marks Register reflects this.

1. In Conde Nast Publications Pty Ltd v Taylor, Justice Burchett found the trade marks VOGUE and EUROVOGUE with device not deceptively similar. Although he was dealing with a popular word, rather than image, his observations are nevertheless relevant here:

   [I]t should be borne in mind that “vogue” is neither a made-up word nor a word wholly without any direct application … to the goods in question. A trader is not entitled to monopolise such a word, denying its use entirely to other traders. Deceptive or confusing use is barred by the applicant’s registration, but the court should be careful not to shut out inappropriately other traders from the fair use of the language in ways that will not in reality deceive or confuse.[2]

   [2] Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505, 511-12 (Burchett J).

2. To conclude, I find the applicant’s trade mark is not deceptively similar to the opponent’s trade marks. The opponent’s ground of opposition under section 44 is therefore unsuccessful.

Section 60

1. Coolibar’s trade mark application was filed before a significant amendment to section 60 came into force on 23 October 2006. Accordingly, the pre-amendment version of the section applies.[3] At that time section 60 read:

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)      it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

   [3] Apple Computer Inc. v Todaytech Group Pty Ltd, 2007 ATMO 40

2. The comparison is between an existing substantially identical or deceptively similar trade mark that “had acquired a reputation in Australia”, and the opposed trade mark. The relevant date for assessing the reputation of the opponent’s mark is the filing date of Coolibar’s trade mark, 24 November 2005. It is not a requirement of section 60 that the trade mark relied upon by an opponent is either an applied-for or registered trade mark, merely that it has acquired a reputation as at the priority date of the opposed trade mark.

3. The threshold test to be met under section 60 is whether the trade marks in question are deceptively similar. I have already found that the registered trade marks cited by the opponent in relation to its section 44 ground of opposition are not deceptively similar. Ms Dahlke drew my attention, in relation to section 60, to a number of unregistered variations (some pictured below) of those trade marks, also used by Rocket in relation to ELEMENT brand clothing and other articles.

1. While the opponent’s evidence shows use of these variations of the opponent’s trade marks, Ms Dahlke was unable to point to information relating to the dates of first use, or volumes of sales in relation to those marks, which would have been critical for a determination of the extent of the opponent’s reputation in those trade marks at the time of filing of Coolibar’s application. In any event, I find that, as with the section 44 ground, this ground of opposition also fails at the hurdle of deceptive similarity. All of the common law variations of the opponent’s device marks contain other quite distinctive matter in addition to its tree device, and none are deceptively similar to Coolibar’s device. The ground of opposition under section 60 therefore cannot succeed.

Section 42

1. The opponent made only very brief submissions in relation to its ground of opposition under section 42. Subsection 42(b) of the Act provides:

   An application for the registration of a trade mark must be rejected if:

   ...

   (b) its use would be contrary to law.

2. Justice Madjwick's findings in Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 clarified the responsibilities of the Registrar of Trade Marks in considering whether the use of a trade mark would be contrary to laws other than the Trade Marks Act 1995. At paragraph 28, he said:

   I acknowledge the claim made by counsel for the Registrar that such an approach requires the Registrar to look at questions of law outside his or her expertise and that this can be difficult and may place a large and onerous responsibility upon the Registrar. However, the Registrar has the comfort that the criterion is that the use "would" not "could" be contrary to law...It should also be noted that what is required is that the Registrar form a view as to whether the use of a trade mark would be contrary to law.

3. Section 52 of the Trade Practices Act 1974 deals with misleading or deceptive conduct. Subsection 52(1) states:

   (1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

D R Shanahan, in Australian Law of Trade Marks and Passing Off, 1990, at page 456, says "Misleading conduct does not merely cause confusion; it actually directs a person towards the wrong choice". There is no evidence before me that the applicant's use of its trade mark either has, or is likely to, mislead or deceive members of the public in this way.

1. In terms of section 42, I cannot be satisfied that the applicant's use of its trade mark would be contrary to the trade practices legislation, or indeed to any other law. This ground of opposition has therefore also failed.

Decision

1. As the opponent noted in its submissions, the onus was upon it to establish its grounds of opposition. Ms Dahlke cited Pfizer Products Inc v Karam [2006] FCA 1663 (1 December 2006), where Justice Gyles referred to the standard of proof required in terms of a “balance of probabilities”. I find that the opponent has not met the onus upon it, in terms of any of the grounds of opposition it pursued. Rocket’s trade mark application may therefore proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

1. The opponent has sought its costs in this matter. However, it is usual for costs to follow the event, and I see no reason here to deviate from that course. I award costs, according to the official scale, against the unsuccessful opponent, Rocket Trademarks Pty Ltd.

Claudia Murray

Hearing Officer

Trade Marks Hearings

30 July 2008