Rocket Trademarks Pty Ltd v Cunliffe Management Pty Ltd

[2004] ATMO 29

TRADE MARKS ACT 1995

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

Re:Opposition by Cunliffe Management Pty Ltd to registration of trade mark application 830377 (25, 28) - ELEMENT - filed in the name of Rocket Trademarks Pty Ltd.

and

Opposition by Rocket Trademarks Pty Ltd to registration of trade mark application 835988 (25, 28) - E ELEMENT - filed in the name of Cunliffe Management Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Cunliffe: Ken McInnes, attorney, of Hodgkinson & McInnes

Rocket: Elisa McCutcheon, solicitor, of Cullen & Co

Decision:

1. 830377 refused, unless amended

2. 835988 refused.

3. Parties to bear own costs

Background

1.     These matters are cross-oppositions.  The first party to file its trade mark application was Rocket Trademarks Pty Ltd ("Rocket").  Its application to register a trade mark is as follows:

Application Number:

830377

Priority date:

4 April 2000

Goods:

Class 25: Clothing, footwear and headgear, including T-shirts, sweatshirts, sweatpants, pants, shorts, hats, caps and

 visors, all in this class.

Class 28: Sporting goods, including skateboards and skateboard accessories, including, wheels, rails and trucks; surfboards and surfboard accessories; and toys, including, fingerboards, all in this class.

Trade Mark:

ELEMENT

Advertised:

2 May 2002

2.     The other party in these matters is Cunliffe Management Pty Ltd (“Cunliffe”), whose trade mark is as follows:

Application Number:

835988

Priority date:

22 May 2000

Goods:

Class 25  Clothing, including UV resistant items of clothing

Class 28: surfboards

Trade Mark:

Advertised:

3 May 2001

3. On 2 November 2001, Rocket filed notice of opposition pursuant to section 52 of the Trade Marks Act 1995 (“the Act”). The notice specified 12 grounds of opposition, effectively each of the grounds provided by the Act.

4. On 1 August 2002, Cunliffe also filed notice of opposition pursuant to section 52 of the Act. The notice specified 11 grounds of opposition, likewise in effect each of the grounds provided by the Act.

5.     The matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Canberra on 6 February 2004. Ms Elisa McCutcheon, solicitor of Cullen & Co, Patent and Trade Mark Attorneys of Brisbane, represented rocket.  Mr Ken McInnes, attorney of Hodgkinson & McInnes, Patent and Trade Mark Attorneys of Sydney, represented Cunliffe.

6.     With the consent of the representatives of the parties, the hearing commenced with my hearing opposition to the application with the earliest priority date, 830377, followed by my hearing opposition to 835988.

Opposition to 830377

7.     The evidence filed in this opposition can be summarized as:

Declarant	Referred to as	Date made	Annexures	Remarks
Evidence in Support
1.	Ian Cunliffe	Cunliffe declaration	22.10.02	Also filed as EIA 835988
2.	Claire Fitzpatrick	Fitzpatrick 1	1.11.02	A
3	Claire Fitzpatrick	Fitzpatrick 2	1.11.02	A	Also filed as EIA 835988
4	Claire Fitzpatrick	Fitzpatrick 3	4.11.02	A	Also filed as EIA 835988
Evidence in Answer
5	Dougall Walker	Walker	15.07.03	DW-1 to DW-25	Also filed as EIR 835988
6	Maurice Stanley Keane	Keane	18.07.03	A	Also filed as EIR 835988
7.	Tom Tsipris	Tsipris	12.08.03	A	Also filed as EIR 835988

8.     Although Mr McInnes did not formally abandon any grounds of opposition, save for the s42 ground, the bulk of his submissions concerned the s44 ground.

9.     Mr McInnes noted that the registration of Rocket’s application 830377 was endorsed “Provisions of subsection 44(4) applied”.  A copy of the Trade Marks Office official file had been annexed to Fitzpatrick 1.  Registration 860834, owned by Cunliffe, for the word mark element for goods in Class 28 (surfboards, skateboards, deckgrips and accessories in this class relating to these goods) had a priority date of 26 July 1999 and had been cited as deceptively similar during examination of 830377.

10.   Mr McInnes referred to the evidence of prior continuous use provided by Rocket and stated that had not covered all of the goods in the Class 28 specification.  Referring to Newport Electronics Inc v Newport Scientific Pty Ltd (2000) 50 IPR 81, and to Shanahan’s Australian Law of Trade Marks and Passing Off 3^rd Edition (at p 260), he submitted that registration of a mark could not be permitted in relation to conflicting goods where the applicant has not shown any use of the mark in relation to those goods.  A mark may proceed to registration where the statement of gods is restricted to those goods in respect of which the applicant shows use of the trade mark prior to the opponent’s priority date.

11.   Having examined all of the evidence filed in these oppositions, I can find no evidence of use of Rockets registration 830377 in respect of surfboards.  While there is evidence of other goods being sold in so called “surf and skate” shops, the goods are limited to skateboard and skateboard-oriented goods.

12.   I am not satisfied that the applicant has used its trade mark in respect of all the goods claimed in the specification, namely surfboards and surfboard accessories.  It is inappropriate in terms of s44 (4) to permit registration of a trade mark in respect of conflicting goods where no use in relation to those goods has been shown.  Accordingly, I refuse the application.

13.   However, I direct that the application may proceed to registration after 30 days from the date of this decision, on payment of the appropriate fees and subject to the amendment of the goods to delete the words “surfboards and surfboard accessories”.  If the Registrar has been served with notice of appeal before the elapse of 30 days, I direct that registration shall not occur until the appeal has been decided or discontinued.

14.   Mr McInnes made submissions relating to perceived irregularity of the assignment to Rocket by its predecessor in title of the trade mark.  However, having considered the evidence and submissions made by Ms McCutcheon I find that the assignment was valid.

15.   In the absence of supporting evidence or submissions relating to the other grounds of opposition, I formally dismiss them.

Opposition to 835988

16.   The evidence filed in this opposition can be summarized as:

Declarant	Referred to as	Date made	Annexures	Remarks
Evidence in Support
1.	Matthew Perrin	Perrin	7.03.02	MDP-1 to MDP-8
Evidence in Answer
2.	Claire Fitzpatrick	Fitzpatrick 4	6.11.02	A
3.	Ian Cunliffe	Cunliffe declaration	22.10.02	Also filed as EIS 830377
4.	Claire Fitzpatrick	Fitzpatrick 2	1.11.02	A	Also filed as EIS 830377
5.	Claire Fitzpatrick	Fitzpatrick 3	4.11.02	A	Also filed as EIS 830377
Evidence in Reply
6.	Dougall Walker	Walker	15.07.03	DW-1 to DW-25	Also filed as EIA 830377
7.	Maurice Stanley Keane	Keane	18.07.03	A	Also filed as EIA 830377
8.	Tom Tsipris	Tsipris	12.08.03	A	Also filed as EIA 830377

Ground 1: Trade mark not capable of distinguishing (s. 41)

17.   On behalf of Rocket, Ms McCutcheon submitted that 835988 is not capable of distinguishing the Cunliffe’s goods/services within the meaning of s.41, as consumers would associate the goods with Rocket and its predecessor in title and would incorrectly infer that the goods carrying the applied for trade mark are associated with, or in some way connected with, the goods of the opponent and/or its predecessor in title.

18. Subsection 41(2) of the Act provides that an application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods from those of other traders.

19.   In order to be capable of distinguishing, a trade mark must be to some degree inherently adapted to distinguish.  In determining whether or not a trade mark may be regarded as being adapted to distinguish, Kitto J, in Clark Equipment Co v Registrar of Trade Marks, (1964) 111 CLR 511) said:

That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it.  The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing the goods from the goods of others.

and in Registrar of Trade Marks v W. & G. Du Cros Ltd, (1913) 30 RPC 660, Lord Parker of Waddington, said in relation to whether or not a proposed trade mark is adapted to distinguish:

The applicant's chance of success in this respect must, I think, largely depend upon whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods.

20.   In my opinion, Rocket has not demonstrated that the Cunliffe trade mark is not capable of distinguishing Cunliffe’s goods from those of other traders.  Accordingly, I dismiss this ground of opposition.

Ground 2: Contrary to law (s. 42)

21. In assessing whether use would be contrary to law under s. 42(b), the Registrar is obliged to take into account the operation of laws and legislation other than the Act. It was submitted that use of the trade mark would contravene the consumer protection provisions relating to misleading or deceptive conduct under s. 52, s 53(c) and (d) of the Trade Practices Act 1975.  Use, it was submitted, would cause or be likely to cause consumers to believe that the applicant's goods have the sponsorship, approval, licence or are in some other way connected to the opponent. The evidence by Rocket’s officers and the trade declarants were said to address this issue

22.   For this ground to be established, it must be shown that the use of the trade would, not could, be contrary to law.  Evidence is required to support assertions, such evidence needs to be more than evidence from an opponent’s legal representatives and employees: Red Hat Inc v Martinek (2002) 56 IPR 292, Stepsam Investments Pty Ltd v Time Warner Entertainment Co LP [2002] AIPC 91-830.

23.   The evidence of trade distributors, the Keane and Tsipris declarations, expressed an opinion that there was a likelihood of deception or confusion in the marketplace.  Neither cited any instances of such deception or confusion.  I am not satisfied that the evidence goes beyond establishing that there could be contravention of the Trade Practices Act.

24.   I dismiss this ground of opposition.

Ground 3: Deception or confusion (s. 43)

25.   Section 43 provides that registration may be refused if, because of some connotation that the trade mark (or constituent part of it) has, the use of the trade mark is likely to deceive or cause confusion.

26.   It has been confirmed in Winton Shire Council v Lomas (2002) 56 IPR 72 that this ground is directed to the mark itself, and not to any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect is dealt with under s60.

27.   A second meaning of connotation has been recognized by the Registrar of Trade Marks, that is where there is a connotation of sponsorship, endorsement, affiliation or connection with another entity may arise.  This other entity must possess a degree of notoriety that surpasses the concept of reputation.

28.   The evidence showed that Rocket has sold large quantities of goods bearing the element mark in Australia.  However, I am not satisfied that the evidence clearly establishes more than reputation.   I am not satisfied that the evidence demonstrates that consumers or relevant parts of he community would assume that Cunliffe’s mark has the sponsorship, authority, license or is in some other way connected to Rocket or its predecessor in title

29.   I dismiss this ground of opposition.

Ground 4: Substantially identical with or deceptively similar to earlier registered or pending trade mark (s. 44)

30.   To establish the s44 ground, the opponent must establish all of the following:

·     At the priority date

·     there was a substantially identical or deceptively similar trade mark application or registration

·     in respect of similar goods or closely related services

·     in the name of a person other than the applicant.

31.   Rocket relied upon its trade mark registration No. 830377, which I have already decided to refuse to register.  Rocket is no longer entitled to rely on the registration under this ground.  I dismiss this ground of opposition.

Ground 5: Ownership (s58)

32.   Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.  In order to establish this ground, it is incumbent upon an opponent to show that, in the time before filing, the applicant is not the first user in trade in Australia of the applied-for trade mark.  To do so, the opponent must show, at a minimum, that not only is the applied-for trade mark substantially identical to the older trade mark, but that it is applied to the same kind of goods: Re Hicks’ Trade Mark (1897) 22 VLR 636 at 640.

33.   It is obvious that the competing marks are not substantially identical, and this ground cannot succeed.  I dismiss this ground of opposition.

Ground 6: Reputation (s60)

34.   To satisfy section 60, the opponent has the burden of establishing the following elements:

·     a pre-existing trade mark;

·     substantial identity or deceptive similarity between the applied for trade mark and the pre-existing trade mark;

·     the acquisition of a reputation in Australia by the pre-existing trade mark; and

·     a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

35.   

Rocket again relied on its element mark 830377, which I notice in the evidence is often used in conjunction with the following device mark, being registration 865202:

36.   This combination of the two marks is used on Rocket’s invoices, its catalogues, its swing tickets, its advertising and some of its goods.

37.   I note that Rocket’s goods are sold in surfing-related shops and sports stores as well as skateboard-specific stores.  The evidence shows that the marks have been sold in such stores since about 1991.

38.   Applying the usual tests for deceptive similarity according to the familiar tests (Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR, 407 at 415 and Re Application by the Pianotist Co Ltd (1906) 23 RPC 775 at 777.) I am satisfied that the competing marks are deceptively similar. The word part of Cunliffe’s mark, the verbal pronunciation and manner in which the mark will be used and referred to is the same.

39.   I am satisfied that the opponent’s evidence clearly establishes that the Rocket has, as at the priority date, acquired a reputation in Australia.  I am also satisfied that I can infer from the evidence of sales and marketing that the reputation would be amongst a significant section of the public.

40.   I am also satisfied that there is a real and tangible likelihood that use of the applicant’s mark would deceive or cause confusion.  The source of the deception or confusion has been discussed by the trade declarants, and is obvious.  Having become used to a variety of goods bearing a variety of Rocket’s element marks, consumers would readily assume that Cunliffe’s mark is another version of Rocket’s mark.

41.   I find that this ground of opposition has been established.  Accordingly I refuse the application.

Other Grounds

42.   The remaining grounds of opposition were not supported by evidence and I dismiss them.

Decisions

43.   I refuse to register 830377.  However, I direct that the application may proceed to registration after 30 days from the date of this decision, on payment of the appropriate fees and subject to the amendment of the goods to delete the words “surfboards and surfboard accessories”.  If the Registrar has been served with notice of appeal before the elapse of 30 days, I direct that registration shall not occur until the appeal has been decided or discontinued.

44.   I refuse to register 835988.

Costs

45.   Both parties sought their costs. I see no reason why costs should not follow the general rule that costs follow the event.  Each party successfully prosecuted its opposition, but unsuccessfully defended its application.  Therefore I find it appropriate that the parties bear their own costs.

Jock McDonagh

Hearing Officer

Trade Marks Hearings

28 May 2004