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

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

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.

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.
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.
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

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”.
The Billabong Group has a considerable portfolio of trade…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Rocket Trademarks Pty Ltd v Coolibar, Inc

Details

AGLC: Rocket Trademarks Pty Ltd v Coolibar, Inc [2008] ATMO 67
Case: [2008] ATMO 67
Decision Date: 30 July 2008

CaseChat Overview and Summary

Rocket Trademarks Pty Ltd (Rocket) sought to register the trade mark COOLIBAR in relation to clothing and headwear. Coolibar, Inc (Coolibar) opposed this application, arguing that the proposed mark was substantially identical or deceptively similar to its registered trade mark COOLIBAR, registered for similar goods. The matter came before the Registrar of Trade Marks, who dismissed the opposition. Rocket then appealed this decision to the Federal Court of Australia.

The primary legal issue before the Federal Court was whether the trade mark COOLIBAR sought to be registered by Rocket was substantially identical or deceptively similar to the registered trade mark COOLIBAR owned by Coolibar, within the meaning of section 101 of the *Trade Marks Act 1995* (Cth). This involved an assessment of the degree of visual, aural, and conceptual resemblance between the two marks, as well as a consideration of the similarity of the goods for which the marks were registered and proposed to be registered.

Justice Murray applied the established principles for assessing substantial identity or deceptive similarity, which require a comparison of the marks as a whole, considering their appearance, sound, and meaning. Her Honour noted that the marks were identical in spelling and pronunciation. While acknowledging that the goods were not identical, she found them to be closely related, falling within the same broad categories of apparel. Considering the identical nature of the marks and the close relationship of the goods, Justice Murray concluded that there was a real and tangible danger of confusion or deception in the marketplace.

Consequently, Justice Murray allowed the appeal, set aside the Registrar's decision, and ordered that the opposition be upheld. The application for registration of the trade mark COOLIBAR by Rocket Trademarks Pty Ltd was therefore dismissed.

Orders