Rodale Inc v Gardmail Pty Ltd

[2006] ATMO 84

TRADE MARKS ACT 1995

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

Re:Opposition by Rodale Inc to registration of trade mark application 811173(25) - RUNNERS WORLD and RUNNER DEVICE - filed in the name of Gardmail Pty Ltd.

Delegate:

Terry Williams

Representation:

Opponent: Tracey Berger, legal practitioner, Spruson & Ferguson, patent attorneys

Applicant: Written submissions by Davies Collison Cave, patent attorneys

Decision:

S 52 opposition: s 44 - goods not of same description; sections 42 and 60 not established for want of convincing evidence.  Registration to proceed

Background

1. Trade mark application 811173 was filed by Gardmail Pty Ltd on 22 October 1999.  Registration is sought in respect of:

   Sporting footwear including in particular running shoes; sporting clothing and headgear including tracksuits, t-shirts, singlets, shorts, headbands.

2. The applicant’s trade mark is as follows:

1. The application has been accepted for possible registration, but this is opposed by Rodale Inc (Rodale).  Rodale is a magazine publisher, the source of the magazine RUNNER’S WORLD, which deals with recreational running.  After Rodale filed (and served a copy of) the evidence in support of the opposition, it requested the opposition be heard and decided, the applicant having elected not to rely on evidence in answer.  I conducted the hearing and am to decide the opposition under delegation from the Registrar of Trade Marks.  At the hearing, Rodale was represented by Tracy Berger of the attorney firm Spruson & Ferguson.  The applicant relied on written submissions prepared by its patent attorney, Davies Collison Cave.

Grounds of opposition considered.

1. At the hearing, Ms Berger relied on only three of the nominated grounds of opposition, section 44 (dealing with rights arising from a prior trade mark registration) and sections 60 and 42 (each dealing, albeit differently, with an allegedly conflicting reputation).  I will address them in that order, though, to come to the heart of it, all three of them fail.

Section 44

1. Without setting out in full the terms of s 44(1), an essential aspect of the test for conflict between a prior trade mark registration and a pending application, when both are in respect of goods, is the presence in each of “similar goods”.  Section 14(1) further defines these as being either “the same” goods or “goods of the same description”[1].  Despite Ms Berger’s arguments to the contrary, this ground of opposition cannot be established because that essential ingredient is missing.  Rodale’s registration, 722387, is in respect of a magazine with a focus on recreational running.  The applicant’s goods, on the other hand, are sports clothing.  Nothing in the authorities to which Ms Berger referred suggests to me, despite her arguments, that clothing and magazines could be goods of the same description. 

   [1] Ms Berger’s submission variously referred to “similar or related goods” or “closely related goods”, clearly shorthand references.  The legislation is quite specific on this point, and a conflict under s44(1) devolves to a consideration of “goods of the same description” only.

2. The question of “goods of the same description” for the purposes of s 14(1) has been well traversed by the courts.  That terminology is carried over from that used by the courts in this country and in the United Kingdom for many years.  Essentially, the question requires a comparison of the nature, uses and trade channels of the goods.  Ms Berger referred to McCormick & Company, Incorporated v Mary McCormick[2], at 18:

   The authorities establish that there are three principal factors to be considered in this regard. They are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold. As to the last-mentioned matter, it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade: see In Re Jellinek's Application; In Re John Crowther & Sons (Milnsbridge) Ltd's Application ("Crowther's Application"); In Re Frank George Whiting's Application; and Reckitt & Colman (Australia) Ltd v Boden. As the High Court stated in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd ("Southern Cross"):

   The fact that examination of the nature of the applicant's goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant's goods are not specified by the regulations as being within the same class of goods: see In re The Australian Wine Importers Ltd  and Reckitt & Colman (Australia) Ltd v Boden per Latham CJ. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In re Jellinek's Application. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek's Case ... the Assistant-Comptroller elaborated on the observations of Romer J in the following manner: `In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application ..., Romer J classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are "of the same description"': In re an Application by John Crowther & Sons (Milnsbridge) Ltd. Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Australia) Ltd v Boden when he said: `What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments'.

   [2] 2000 FCA 1335

3. Ms Berger attempted to fortify her argument by reference to American Express Co v NV Amev (1985) AIPC 90-258. The latter dealt with magazines on the one hand and travel agent services on the other. The hearing officer was clearly swayed by the resemblance between printed publications including magazines and the brochures that are very much the stock in trade of a travel agent. Ms Berger noted that similar factors are present here. Magazines about running carry advertisements of relevant sporting products and are, consistently, directed at the consumers of the latter class of goods. Again, magazines carry order forms and may be a vehicle for distributing, as an inclusion, the catalogues of suppliers of relevant products including sports clothing. These things, however, are peripheral.

4. The nature of a magazine is that of a periodical publication, typically sold but sometimes given away.  The fact that a magazine may be directed towards a particular field or sphere of interest does not change the fact that its nature is that of a printed publication.  There is no apparent linkage of magazines to the clothing trade, either by nature or by trade channel, other than the superficial resemblance of a magazine to a catalogue.  That basis for the American Express decision, supra, has since been criticised by the authors of Shanahan’s Australian Law of Trade Marks and Passing Off (3^rd Edition) at [8.30] and a comparable approach was rejected in Air Express International (Aust) Pty Ltd v Australian European Insurance Brokers Pty Ltd (1999) 49 IPR 435. I do not think that I can give the superficial resemblance of a magazine to a catalogue of sports clothing and footwear as much weight as was given in American Express, supra.  That case is, at best, a contentious guide as to whether goods and services might be “closely related” for the purposes of s 44(2).  Existing case law suggests that it is inappropriate to give it great weight in deciding questions of “goods of the same description”. 

5. Ms Berger also noted that promotional goods such as caps and t-shirts may be used as a vehicle for promoting magazines.  I agree with her observation.  However, the same might be said of promotional clothing and any other sort of goods from motor vehicles to telescopes.  The possibility is of only limited relevance.

6. Ms Berger suggested that consumers knowing of the opponent’s magazine would expect some sort of connection between the magazine and the applicant’s goods.  It is clear in principle that the extent of reputation of a trade mark used for a magazine may lead to confusion if the same trade mark is used on clothing[3].  However, consumer perceptions about an individual or particular trade mark are more properly the province of s 60, to which I will turn below.  The most that can otherwise be said is that consumer expectations about magazines, as a class of goods in general, can have some weight in deciding if the trade channels are, or might be seen, to be the same.  I cannot say that the weight here is particularly high when there is otherwise little in common by reference to the nature of the goods, their uses or their trade channels.

   [3] I note that the trade mark VOGUE is registered as a defensive trade mark in class 25.  The tests under s 185(1), which permits the registration of a defensive trade mark, are comparable to some of the elements of s 60.

7. Accordingly, the s 44 ground is not established.

Reputation: sections 60 and 42

1. Very briefly, section 60 provides a ground of opposition based on the existence of a reputation in a deceptively similar trade mark, such that use by the applicant would cause deception or confusion.  Section 42, as invoked by Rodale, would have something of a similar focus.  It is alleged that Rodale had, at the date the applicant made the opposed application, a reputation such that the use proposed by the applicant would mislead or deceive a significant and non-trivial number of people, being therefore “contrary to law” (s 52 or 53 of the Trade Practices Act1974) for the purposes of s 42.  That test has a focus on the potential to actually mislead or deceive, as opposed to causing mere confusion.  Though the tests under sections 42 and 60 would tend to adjoin at one edge, it is clear that s 42 would trigger at a somewhat higher threshold.  Thus, if the s 60 ground fails, the s 42 ground would fail with it.    

2. Rodale apparently uses two trade marks, one as its magazine masthead and the other on its website.  There is some uncertainty in my own mind about precisely what these trade marks are.  In Rodale’s evidence, Mr McGinley, a general counsel of Rodale, asserts that the trade mark appears on Rodale’s publications in a particular form, which he illustrates.  The illustration is precisely identical to the applicant’s trade mark.  However, his assertion may be in error as he then goes on to set out the usage on his company’s website.  This in turn apparently depicts the form of the masthead that Rodale is, despite Mr McGinley’s assertion, actually using on the magazine.  According to the website, the relevant marks are as follows, copied for convenience from Ms Berger’s submissions and with her own comment retained:

1. Mr McGinley sets out evidence of Australian sales of Rodale’s magazine since January 1987.  However, Australian sales are quantified in a way that is very ambiguous for the purposes of this opposition.  He declares:

   Since 1990, in excess of 1750 copies of the Goods[4]  bearing the Trade Mark were distributed in Australia on a monthly basis with the monthly distribution increasing over the years.  Presently, approximately 22,000 copies of goods bearing the trade mark are distributed monthly in Australia.   

   [4] “Goods”, by his definition earlier in the declaration, means magazines only

2. His declaration is dated 2 May 2003.  It is, quite simply, impossible to come to a clear reading that would quantify the extent of sales in Australia over times prior to the priority date of the opposed application, 22 October 1999.  It is this date that is critical for s 60 and s 42 purposes.  Very clearly, there has been a great expansion, at some time or other, from 1750 copies per month to the 2003 figure of 22,000.  Given this, it would be unsafe to attempt to infer, from statements about 2003 sales, that the pre-1999 sales were particularly significant. 

3. The applicant’s written submissions suggest that I should give the distribution figures little weight because the asserted Australian sales are not supported by “direct evidence”.  I think this goes too far: it is presumably within Mr McGinley’s competence to set out his company’s Australian sales.  Had he done so more helpfully, I would have taken them at face value.  However, given his apparent earlier unfortunate slip about the form of the mark that is actually in use by Rodale, I am particularly reluctant to try and infer 1999’s facts from Mr McGinley’s 2003 ambiguities.

4. There is nothing else from which I could satisfactorily quantify the extent of the reputation of Rodale’s trade mark at the priority date or in any other way assess the likelihood of deception or confusion at that date.  Mr McGinley sets out worldwide sales over time.  Clearly, an extensive overseas reputation has potential for spillover reputation but an opponent wanting to rely on such a favourable inference needs to do more than invite me to speculate on such favourable circumstances.  Bald recitations of overseas sales and promotion of Rodale’s magazine are unconvincing in this regard.  Annexure E to Mr McGinley’s declaration is a two page extract from the company’s website[5].  He does not declare when the information was extracted but at the earliest it could be only 2001, the purported copyright date.  There appears to be no information about the situation at the priority date in 1999.  Accordingly, Rodale’s s 60 case fails at the reputation threshold and with it, as I have said, dies its s 42 ground.

   [5] Strictly, there is no evidence that the website is owned by Rodale.  The applicant’s attorneys assert the contrary but in view of the overall shortcomings of the material there is no need to resolve that matter.

Conclusion

1. No ground of opposition has been established.  The 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 discontinued or registration is otherwise ordered by the court.

2. I direct that Rodale pay the costs of the applicant to the extent set out in the scale in the regulations.

Terry Williams

Hearing Officer

Trade Marks Hearings

27 October 2006