Roger Maier v Asos Plc

[2014] ATMO 7

TRADE MARKS ACT 1995

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

Re:Opposition by Roger Maier to registration of trade mark application no. 1366279 (classes 3, 18, 25 and 35) – ASOS – filed in the name of Asos Plc

Delegate:	Deirdre O’Brien
Representation:	Opponent: Sarah Dixon, solicitor of Chrysiliou IP, Patent and Trade Mark Attorneys Applicant: Sean McManis, solicitor and partner of Shelston IP, Patent and Trade Mark Attorneys
Decision:	2014 ATMO 7 Section 52 opposition: s 44 ground partially established but section 44(4) applies – s58A ground partially established. Registration may proceed if goods and services limited, otherwise registration is refused. Costs awarded against applicant.

Background

1. Asos Plc, a UK company (‘the applicant’), has filed an application under the Trade Marks Act 1995 (‘the Act’) for registration of the trade mark hereunder:

Application No:    1366279

Priority Date:       9 June 2010

Goods/Services:    Class 3: Soaps; cosmetics; perfumery; essential oils; eau de parfum; eau de toilette; cologne; fragrances and fragrance products for personal use; massage oils; hair lotions; dentifrices; cosmetics; cosmetic preparations for skin care; skin care cosmetics; skin care preparations; astringents for cosmetic purposes; preparations for the bath and shower; shower gel; bath gels; scented body lotions and creams; scented moisturizing skin cream; moisturisers; body lotions and creams; moisturising creams; scented skin soap; body oil; face, lip and cheek make-up; face powder; face glitter; lipstick, lip gloss, non-medicated lip balm, lip pencils; perfumed shimmer sticks; eye shadow, eye pencils, mascara, eye make-up, eyeliners, eye creams, eye gels, eye balms; highlighters; masks; cleansers; toners; clarifiers; exfoliators; foundation make-up; blusher; compacts; make-up remover; fragrance sachets; room fragrances; beauty care preparations; beauty care products; beauty creams; beauty tonics for application to the body; beauty tonics for application to the face; non-medicated beauty preparations; non-medicated skin care beauty products; skin care products for personal use, namely face, eye and lip moisturisers; face and skin creams; lotions and serums; anti-aging treatments; foundation for the face; hair care products, shampoo, hair conditioners, hair gel and hair spray; nail care preparations, nail polish, nail strengtheners, and nail polish remover; shaving cream, shaving gel, after-shave preparations, after-shave lotion; depilatory preparations; personal deodorant; antiperspirants; potpourri; sun tanning preparations; cosmetic preparations for skin tanning; artificial tanning preparations 

Class 18: Articles of leather and imitations of leather; trunks and travelling bags; travel cases; luggage; suitcases; holdalls; portmanteaux; valises; bags; handbags; shoulder bags; toilet bags; carrier bags; rucksacks; backpacks; bumbags; sports bags; casual bags; briefcases; attache cases; music cases; satchels; beauty cases; carriers for suits, for shirts and for dresses; tie cases; credit card cases and holders; wallets; purses; umbrellas; parasols; walking sticks; shooting sticks; belts; parts and fittings for all the aforesaid goods 
Class 25: Articles of clothing; footwear; boots, shoes, slippers, sandals, trainers, socks and hosiery; headgear; hats; caps; berets; scarves; gloves; mittens; belts (being articles of clothing); shirts, casual shirts, T-shirts, polo shirts, sports shirts, football and rugby shirts; trousers, jeans, shorts, sports shorts, football shorts, rugby shorts; swimwear; underwear; lingerie; tracksuits; football boots, rugby boots; articles of outerwear, coats, jackets, ski jackets, casual jackets, waterproof and weatherproof jackets and coats, parkas, ski wear; suits; jumpers and cardigans; knitwear; leggings; neckties; pyjamas; waistcoats; headbands and wristbands; men's wear; women's wear; children's wear
Class 35: Retail services in the fields of perfumery, toiletries and cosmetics, bathing and personal cleansing and care products, candles, pharmacy goods, hardware and metal goods, cutlery, electrical goods, computers, computer programmes, photographic and video equipment and accessories, optical goods and sunglasses, books and printed materials, audio tapes, audio, video and television systems, CDs, records and video tapes, films, telephones and mobile phones, lighting equipment and fixtures, bicycles, musical instruments, stationery, printed publications and printed matter, diaries and personal organisers, greeting cards, gift wrap and ribbons, furniture, furnishings and decorations, kitchenware, domestic utensils, crystal, glassware, porcelain and chinaware, brassware, ornaments, hair accessories, hampers, piece goods, sewing accessories, bags made from canvas, straw, plastic and PVC, bed and table linen, towels, bags, leather and travel goods, luggage, clothing and accessories, footwear, carpets and rugs, artwork, toys (including novelty toys), games, playthings and sporting goods, fitness equipment, equestrian goods, decorations, food and confectionery, non-alcoholic and alcoholic beverages, pets, apparatus for use in assisting relaxation; mail order services and online and Internet retail services relating to the aforesaid goods 

Trade Mark:   ASOS   (‘the Trade Mark’).

1. Following examination the Trade Mark was accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks dated 14 October 2010.

2. On 11 January 2011 Roger Maier, a Swiss citizen (‘the opponent’), filed a notice of opposition (‘the notice’) to the registration of the Trade Mark.

3. The declarations filed and served by the parties as evidence are as follows:

Declarant	Position	Date	Exhibits
Evidence in support	Sarah Dixon (‘Dixon1’) Beaufort Noel Jones Galland Sarah Dixon (‘Dixon2’)	Opponent’s legal representative Managing director of opponent’s distributor	11.10.2011 02.11.11 03.11.11	SD-1 to SD-10 BG-1 BG-3 to BG-5 SD-1 to SD-17
Evidence in answer	Fergus Collins (‘Collins1’) Sean Francis McManis	Head of legal of the applicant Applicant’s legal representative	02.02.12 10.02.12	FC-5 FC-7 & FC-8 FC-6
Evidence in reply	Spiro Pappas	Opponent’s legal representative	10.08.12	SP-1 to SP-16
Applicant further evidence	Fergus Collins (‘Collins2’)	25.10.12

1. The parties were heard by a delegate of the Registrar of Trade Marks on 15 April 2013.  The opponent was represented by Sarah Dixon, a solicitor of Chrysiliou IP, Patent and Trade Mark Attorneys.  The applicant was represented by Sean McManis, a solicitor and partner of Shelston IP, Patent and Trade Mark Attorneys.

2. The delegate who conducted the hearing subsequently left the employ of IP Australia and the matter has been allocated to me, also a delegate of the Registrar, for decision based on the submissions made at the hearing,[1] the evidence and the written submissions tendered prior to the hearing.

   [1] obtained from the recording of the hearing.

Grounds of Opposition

1. In its written submissions and at the hearing, the opponent indicated that it relied on five of the grounds as set out in the notice and relating to the provisions of sections 42(b), 44, 58, 58A and 60 of the Act respectively. For the sake of completeness, I find that the other grounds listed in the notice have been abandoned.

Onus & Relevant Date

1. The opponent bears the onus of establishing a ground of opposition on the balance of probabilities.[2]  The relevant date at which the grounds must be considered is the filing date of the application for registration.[3]

The Evidence

[2] Pfizer Products Inc v Karam (2006) 70 IPR 599 per Gyles J at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

Evidence in support

1. Ms Dixon is the opponent’s Australian legal representative for this matter.  In Dixon1 and Dixon2 she brings into evidence the following information:

   ·     The opponent is the owner of Australian trade mark registration 1095912 for the trade mark ASSOS. 

   ·     The opponent is the holder of International Trade Mark Registrations 872524 and 1058579 for the same trade mark.  The opponent has requested the extension of protection to Australia of the International Registrations and the relevant International Registrations Designating Australia (‘IRDA’) are currently under examination.  The other countries designated are Bulgaria, China, Europe, Japan, Republic of Korea, Kazakhstan, Norway, Romania, Russian Federation, Slovania and the United States.

   ·     The opponent is the holder of International Trade Mark Registration 1059286 for the trade mark depicted below:

   ·     The Swiss company ASSOS SA[4] has registered the domain name with the opponent as the nominated contact person.  Information downloaded from that website on 8 September 2011 indicates that ASSOS goods can be purchased at cycling stores throughout the world.

   [4] Elsewhere in the exhibits to Dixon1 the company is referred to as ASSOS of Switzerland SA.

   ·    The business name ‘Assos Australia’ was registered in Victoria in 1999.

   ·    The Australian distributor for ASSOS goods is BRB Enterprises which maintains the website The goods have been sold at the distributor’s stores in Melbourne and Sydney and online at the aforesaid website.

   ·    ASSOS goods can also be purchased in Australia using the websites and a decision dated 9 November 2010 in relation to the opponent’s opposition to the registration of the Trade Mark in the European Union for goods and services in classes 3, 14, 18, 25 and 35, the Office for Harmonization in the Internal Market (OHIM) ruled that the opposition had succeeded in respect of some of the nominated goods and services based on the opponent’s earlier trade mark registration for goods in classes 3, 12 and 25. 

   ·    The use of the Adidas, Calvin Klein, Lululemon, Reebok, Country Road, Supre and Cotton On brands has been extended to goods different from those on which the brands were first used and for which they allegedly have a reputation.

10.Exhibits to the Dixon declarations include:

·    Two discussions in a cycling forum maintained at  Both discussions took place in 2011 and were in relation to ASSOS branded leg warmers and the level of service offered by ASSOS SA.

·    Two articles about a visit by Zack Vestal of VeloNews to the ASSOS clothing showroom in Switzerland in or about September 2010.

·    An article titled ‘Leading Information about Assos Cycling’ which was posted online at an Australian website on 18 May 2010.  The article reads as if it has been produced by an automated translator.  For example, it refers to Assos Cycling apparel in relation to rowing clothing as follows:

Assos Cycling apparel has been shown to get this commanders [sic] within these sector when it comes to originality as well as privacy. Assos elevates your edge within hunting down one of the best rowing clothing, mainly because its major segment could be the individuals who stay in Swiss. Assos made sure that your accessories some people come up with are prepared through amazing components as well as chamois.

·    A description of the ASSOS jacket at downloaded on 31 October 2011.  I note that the jacket is available for purchase at that website. 

·    The results of a search for ‘cycling clothing’ appearing in web pages in the .au domain of the world wide web.  The search was conducted on 28 October 2011 using the Google search engine.

·    An article titled ‘Image pedallers can’t resist the extra gear’ which was published in the newspaper The Age on 6 July 2003.

·    An advertorial titled ‘Gearing Up For Training’ which appeared in the ‘health&fitness’ section of the Herald Sun newspaper on 28 July 2003.

·    An advertisement which appeared in Cycling World Magazine in 1998.

11.Beaufort Noel Jones Galland is the Managing Director of BRB Enterprises Pty Ltd which he declares has been the Australian distributor of ASSOS goods since 1996 and which has traded as Assos Australia since 1999.  Mr Galland identifies the range of goods sold in Australia by the distributor under the ASSOS trade mark as including clothing (comprising arm, knee and leg warmers, booties, chronosuits, gloves, headwear, rain wear, socks and helmets), store gift vouchers, active wear cleanser, skin repair gel, chamois cream, water bottles, musettes, umbrellas, notebooks, pocket knives, coffee mugs, bike seats and bags.  

12.At the date of Mr Galland’s declaration the distributor sold the goods at the website and at its Melbourne store.  It had also supplied goods to 300 retail outlets throughout Australia since 1996.  Mr Galland provides examples of ASSOS goods being offered for sale by other traders using websites such as and Mr Galland has not provided any sales figures for the ASSOS goods sold by the distributor.

13.According to Mr Galland the ASSOS trade mark has been

promoted in four nationally distributed and available magazine publications and newspaper articles over the last 17 years including The Age and Herald Sun, Ride Magazine, Bicycling Australia and Ride On.  Assos also appears in Pro Cycling and Cycle Sport all available in Australia.

He has not provided the amounts spent by the distributor in advertising and promoting the ASSOS goods.  Nor has he provided any examples of the promotions.

Evidence in answer

14.The applicant’s evidence in answer consists of two signed declarations and a copy of a declaration which was filed during examination of IRDA 1085911.[5] 

[5] IRDA 1085911 for the same Trade Mark and including the same goods and services as the present application was withdrawn following the cessation of the International Registration on which it was based.

15.Fergus Collins is the applicant’s Head of Legal.  Exhibited at FC-5 to his declaration of 2 February 2012 is a copy of his declaration (unsigned) filed during examination of IRDA 1085911. The earlier declaration had exhibits FC-1 to FC-4. 

16.Exhibit FC-6 was not filed and served because of the applicant’s concerns about the confidentiality of the information contained therein.  Instead a redacted version was filed and served as the exhibit to the declaration by the applicant’s legal representative, Sean Francis McManis.  The McManis declaration serves no other purpose than to bring exhibit FC-6 into proceedings.

17.In his declaration of 2 February 2012 Mr Collins confirms the statements he made in his earlier declaration. For the purposes of this decision I have summarized the relevant information in both declarations as follows:

·The applicant is a UK company.  It was established as As Seen On Screen Plc in 2000 when it commenced trading as an online retailer at the website ASOS stands for As Seen On Screen. 

·The applicant adopted its current name in 2003.

·By 2010 it was the largest online fashion and beauty retailer in the UK and had received multiple industry awards. 

·Since at least 2005 it has sold ASOS ‘own brand’ men’s and women’s fashion and casual clothing, clothing accessories and footwear as well as jewellery and cosmetics to customers located in Australia.  Detailed monthly sales figures from April 2005 until September 2009 are in evidence. 

·Dated and legible[6] examples of labels and swing tickets displaying the ‘own brand’ are as follows:

[6] Some of the exhibits are black and white photocopies of coloured originals and are illegible.

2006-2008

2008-2009

·A snapshot downloaded from the applicant’s website on 16 March 2010 shows that ASOS is used in descriptions of the applicant’s ‘own brand’ goods for men and women and ASOS.com is used in relation to its online retailing services.

·By 30 November 2011 the applicant had over 300,000 customers in Australia, the majority of which were women, and in the previous 12 months it had made approximately 250,000 sales.

Evidence in reply

18.Spiro Pappas is also the applicant’s legal representative in this proceeding.  His declaration beings into evidence the following information:

·    The applicant has opposed registration of the opponent’s ASOS trade mark in Malaysia.

·    The OHIM decision exhibited to Dixon1 was appealed by the applicant and the subsequent decision of the Fourth Board of Appeal, exhibited to the Pappas declaration, was to dismiss the appeal except for some goods in class 18.

19.The other exhibits to the Pappas declaration are:

·    A copy of the official file for IRDA 1085911 with the exception of confidential exhibit FC-2 to the Collins declaration.

·    A Wikipedia article about the applicant.

·    A copy of part of the applicant’s Facebook page.

·    Snapshots of the applicant’s website as it appeared at various dates between 2004 and 2009 obtained using the Internet Archive Wayback Machine at further evidence

20.Collins2 explains that prior to 2004 (in the case of women’s clothing) and 2007 (in the case of men’s clothing) the goods sold under the applicant’s ‘OB’ or ‘own brand’ were designs that could also be obtained from other traders.  In 2004 and 2007 respectively the applicant introduced own label women’s and men’s clothing which had been designed exclusively for the applicant.

Discussion

21.Section 44 allows a trade mark to be rejected or refused registration based on its substantial identity with, or deceptive similarity to, the trade mark of an earlier trade mark application or registration for similar or closely related goods or services. Subsections 44(3) and (4) provide exceptions to this rule based on evidence of trade mark use or the existence of ‘other circumstances’.

22.Here the opponent relies on the trade mark of the registration detailed below:

Registration No:               1095912

Registration Date:            14 June 2005
Goods:  Class 25: Clothing, footwear, headgear
Trade Mark:  ASSOS

23.The priority date of registration 1095912 is earlier than that of the present application.  The applicant concedes that the Trade Mark is deceptively similar[7] to the ASSOS trade mark and that its goods in class 25 and some of its services in class 35 are similar goods[8] or closely related services[9] to the goods of registration 1095912. The section 44 ground is clearly established.

[7] Section 10 of the Act provides: For the purposes of this Act, 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.

[8] Section 14(1) of the Act defines similar goods as goods which are the same or of the same description.

[9] There is no definition of closely related services in the Act. In considering the issue the courts have given regard to whether the services are offered in relation to the goods. See Registrar of Trade Marks v Woolworths (1999) 45 IPR 411 at 424-5.

24.I note that the same finding was made during examination and that the Trade Mark was only accepted for possible registration after the provisions of paragraph 44(3)(b) had been applied. 

25.Kenny J in McCormick & Co Inc v McCormick observed:

Within Div 2 of Pt 4, s 44(1) provides for a ground for rejecting an application before acceptance by the registrar. Section 44(1) expressly states that it is subject to s 44(3), the honest concurrent user provision. The whole of s 44 is expressed as an interlocking series of subsections. Section 60, which is part of a division specifically setting out the grounds for opposing registration, is directed to the position after acceptance. Section 60 is not expressed to be subject to s 44(3), any analogous limitation, or even the Act generally: contrast s 89(1). On its face, it is a stand-alone provision. Furthermore, s 60 is apparently intended to afford a ground of opposition that is additional to the grounds set out in Pt 4. Section 57 expressly states that the grounds of opposition may be ‘any of the grounds on which an application for the registration of a trade mark may be rejected under Division 2 of Part 4’ (which includes s 44). Sections 58–62 add further grounds for opposition. On its face, there is no honest concurrent user exception to s 60.[10]

[10] (2000) 51 IPR 102 at [93]

Her Honour concluded that ‘s 44(3) of the Act does not provide an exception to s 60.’[11]

[11] Ibid at [96]

26.With this in mind I will first consider whether the section 60 ground is established.

Section 60 – use of trade mark likely to deceive or cause confusion because of the reputation of another trade mark in Australia

27.Section 60 of the Act relevantly 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.

28.The date at which the opponent has to establish that the ASSOS trade mark had acquired a reputation in Australia is 9 June 2010.  The opponent must establish the reputation as a matter of fact.[12]  Reputation can, for example, be demonstrated through direct evidence of consumer appreciation and it can be inferred from sales and advertising figures.[13] 

[12] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193 at 234

[13] McCormick & Co Inc v McCormick (2000) 51 IPR 102 at [86]

29.Both Ms Dixon and Mr Galland claim that ASSOS goods have a reputation world-wide but I find this is not substantiated by the evidence.  The evidence shows that ASSOS cycling clothing has been sold in Australia since 1996 but length of use alone does not establish trade mark reputation.  If the opponent is unable or unwilling to provide sales figures and advertising expenditure from which a reputation can be inferred, he needs to supply sufficient evidence of consumer appreciation. 

30.The market for ASSOS goods comprises professional, sporting and recreational cyclists.  Thus, the opponent could have provided evidence such as:

·     the inclusion of ASSOS goods in lists appearing in the cycling press such as ‘best cycling clothing’;

·     ASSOS goods having a significant share of the market for cycling clothing;

·     the sponsorship by ASSOS of cycling events;

·     ASSOS goods having received awards recognized by the cycling community;

·     frequent mention of ASSOS goods in newspaper and magazine articles or in online cycling forums;

·    the inclusion of the ASSOS brand in lists compiled by the marketing industry of well-known brands.

31.Ms Dixon submits that ‘the ASSOS mark has … been exposed to extensive media coverage in the Australian market for at least the past 17 years’ and refers to the Galland declaration as well as to the exhibits to her declarations[14] which, she says, are examples of such exposure since as early as 1998. 

[14] described in detail at paragraph 10 of these reasons.

32.In his declaration Mr Galland states that ASSOS has been promoted in four nationally distributed newspapers and magazines but he has not said how and when.  There is an advertorial for the opponent’s cycling clothing from 2003 in evidence and a newspaper article from the same year about the nature of the market for cycling clothing and bicycles for which Mr Galland and other Melbourne traders were interviewed.  There is an advertisement for ASSOS clothing in a cycling magazine from 1998 which appears to be distributed in Australia although this is not specifically stated by Ms Dixon. It may be that such advertorials appeared regularly before the relevant date and that the advertisement is an example of those frequently placed in popular Australian cycling magazines.  On the other hand, it could be the case that the examples in evidence are the only ones. 

33.Four of the other five exhibits[15] which purport to show the exposure of the ASSOS brand in the Australian market are from after the relevant date and are, in any event, unconvincing.  Ms Dixon gives weight to the results of the Google search conducted on 28 October 2011 for ‘cycling clothing’ whereby the ASSOS website was the second one listed and claims this demonstrates ‘its prevalence in the market’.  However, it is my understanding that Google allows businesses to pay for the position of their websites in search results.  Even if this were not the case for the applicant, I find that its appearance in the results for a specific search (conducted after the relevant date) is not indicative of reputation in Australia.

[15] I give no weight to the remaining exhibit (which is from before the relevant date) for reasons that are obvious from my description of it at paragraph 10.

34.I am not satisfied from the information before me that the ASSOS trade mark had acquired a reputation in Australia at the relevant date. In the absence of a trade mark with the requisite reputation, section 60 cannot be established.

35.I return now to the section 44 ground.

Section 44 ground – trade mark identical with or deceptively similar to trade mark of earlier application or registration

36.As previously noted, the applicant concedes that its goods in class 25 are similar to those of the cited registration and that its retailing of clothing, clothing accessories and footwear is a service closely related to those goods.  The opponent submits that the applicant’s goods in classes 3 and 18 are also similar goods to those in class 25.  The applicant does not agree and refers to findings by the Registrar to the contrary.[16]  Having regard to the nature of the goods, their intended purpose and the trade channels through which they are bought and sold[17] I agree with the applicant that they are not similar goods.

[16] Mossimo Inc v Bossini Pty Ltd (1999) 48 IPR 116; Warnaco US Inc v Estee Lauder Cosmetics Ltd (2000) 50 IPR 143

[17] Jellinek’s Application (1946) 63 RPC 59

37.I find that the section 44 ground is established for all the goods in class 25 and for the retailing of clothing, clothing accessories and footwear in class 35.

38.Subsections 44(3) and (4) relevantly provide:

(3)  If the Registrar in either case is satisfied:

(a)  that there has been honest concurrent use of the 2 trade marks; or
                  (b)  that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

(4)  If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:
     (a) beginning before the priority date for the registration of the other
     trade mark in respect of:

(i) the similar goods or closely related services; or
    (ii) the similar services or closely related goods; and

(b) ending on the priority date for the registration of the applicant’s
     trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.

39.The application of the provisions of subsection 44(3) is at the Registrar’s discretion.  There is no such discretion with respect to subsection 44(4).  If the Registrar finds that there has been prior continuous use of a trade mark in relation to the similar/closely related goods or services the application cannot be rejected, or, as in the present matter, registration refused.  However the similar/closely related goods or services must be limited to those for which use has been demonstrated. 

40.In the present matter I am satisfied from the detailed monthly sales in evidence that the applicant has continuously used the Trade Mark in relation to men’s and women’s fashion and casual clothing, clothing accessories and footwear and for the online retailing of said goods from April 2005 to September 2009.  The opponent submits that the evidence shows the applicant has used trade marks which are not the same as the Trade Mark and that I cannot be satisfied that use of the Trade Mark has been continuous.  However I consider that the various incarnations of the Trade Mark to which the opponent refers, some of which were used by the applicant at the same time, are not substantially different trade marks.[18]  In particular, given that the applicant’s services are offered online and its goods are procured online, I find that the addition of the .com suffix does not substantially affect the identity of the Trade Mark.

[18] Pursuant to section 7(1) of the Act the Registrar may ‘decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark’.

41.There are no Australian sales figures in evidence post-September 2009 but the fact that as at 30 November 2011 the applicant had over 300,000 Australian customers and had made 250,000 sales in the previous year, satisfies me on the balance of probabilities that use of the Trade Mark was continuous from April 2005 (which is before the priority date of the cited registration) to 9 June 2010 (the priority date of the present application).  I find that subsection 44(4) applies for the similar goods ‘fashion and casual clothing, clothing accessories and footwear for men and women’ and for the closely related services ‘online retailing of fashion and casual clothing, clothing accessories and footwear for men and women’.

42.As I intend to apply subsection 44(4) I must now consider the opposition ground pursuant to section 58A.

Section 58A ground – opponent’s earlier use of similar trade mark

43.Section 58A relevantly provides:

(1) This section applies to a trade mark ( section 44 trade mark ) the application for registration of which has been accepted because of:

(a) subsection 44(4); or

(b) a similar provision of the regulations made for the purposes of Part 17A.

(2) The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark ( similar trade mark ) or the predecessor in title:

(a) first used the similar trade mark in respect of:

(i) similar goods or closely related services; or

(ii) similar services or closely related goods;

before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

(b) has continuously used the similar trade mark in respect of those goods or services since that first use.

44.I note that section 58A is said to apply if the application has been accepted because of subsection 44(4).  In the present matter I have found that the application may be registered because of subsection 44(4).  However, nothing hangs on this.  The salient fact is that subsection 44(4) is applied and whether this occurs during examination or opposition is not relevant. 

45.I am satisfied from the evidence that the opponent has used its ASSOS trade mark in relation to men’s and women’s cycling clothing in Australia since 1996 and that the use has been continuous.  The parties agree that the Trade Mark and the ASSOS trade mark are deceptively similar. 

46.Thus, there has been earlier use of a similar trade mark on goods which are similar to the applicant’s class 25 goods and closely related to some of its class 35 retail services. The section 58A ground is established with respect to those goods and services.

Other grounds

47.The opponent is also relying on the grounds pursuant to sections 42(b) and 58. I do not intend to discuss those grounds in detail other than to note that a pre-requisite for establishing the section 42(b) ground[19] is that there are a substantial number of persons in the relevant market who are ‘familiar’ with another trader’s ‘product’.[20] I have already found that this is not the case in relation to the section 60 ground. Thus, the section 42(b) ground cannot be established.

[19] The opponent argues that use of the Trade Mark would constitute misleading or deceptive conduct.

[20] Equity Access Pty Ltd v Westpac Banking Corp (1989) 16 IPR 431; ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193; Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (2007) 72 IPR 261

48.As for the section 58 ground, even if I were to find that the Trade Mark and the ASSOS trade mark are substantially identical, the opponent has only demonstrated first use on clothing for cyclists. [21] As I have already found the section 58A ground is established for these goods, it is therefore not necessary for me to consider the section 58 ground.

[21] To establish section 58 the opponent needs to show, inter alia, that another person was the first to use the Trade Mark, or a trade mark that is substantially identical to the Trade Mark, in Australia in relation to the same kind of thing as the applicant’s goods and services.

Decision

49.Subsection 55(1) of the Act relevantly provides:

(1)  Unless the proceedings are discontinued or dismissed, 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.

50.I have found that the grounds pursuant to sections 44 and 58A have been established for some of the applicant’s goods and services. The application may not be registered for the goods and services as they are currently specified.

51.However, if the applicant limits its goods in class 25 to:

fashion and casual clothing, clothing accessories and footwear for men and women; none of the foregoing being for use by cyclists

and amends its services in class 35 as indicated below:

Retail services in the fields of perfumery, toiletries and cosmetics, bathing and personal cleansing and care products, candles, pharmacy goods, hardware and metal goods, cutlery, electrical goods, computers, computer programmes, photographic and video equipment and accessories, optical goods and sunglasses, books and printed materials, audio tapes, audio, video and television systems, CDs, records and video tapes, films, telephones and mobile phones, lighting equipment and fixtures, bicycles, musical instruments, stationery, printed publications and printed matter, diaries and personal organisers, greeting cards, gift wrap and ribbons, furniture, furnishings and decorations, kitchenware, domestic utensils, crystal, glassware, porcelain and chinaware, brassware, ornaments, hair accessories, hampers, piece goods, sewing accessories, bags made from canvas, straw, plastic and PVC, bed and table linen, towels, bags, leather and travel goods, luggage, clothing and accessories, footwear, carpets and rugs, artwork, toys (including novelty toys), games, playthings and sporting goods, fitness equipment, equestrian goods, decorations, food and confectionery, non-alcoholic and alcoholic beverages, pets, apparatus for use in assisting relaxation; mail order services and online and Internet retail services relating to the aforesaid goods; online retailing of fashion and casual clothing, clothing accessories and footwear for men and women other than such goods for use by cyclists 

the section 58A ground falls away and registration may proceed under the provisions of section 44(4).

52.  I am allowing the applicant 10 days from the date of this decision in which to request that its application be so amended and to send a copy of its request to the opponent.  If it does so, the amended application may be registered.  If it does not, registration of the application is refused.

53.  As this decision may be appealed (see covering letter), the amendment, if requested, will not be carried out until the period allowed in which to file an appeal at the relevant court and to notify the Registrar has expired.  If there is an appeal, and it is not discontinued, I direct that the disposition of the application be in accordance with the court’s order or direction.

Costs

54. The application as it now stands may not be registered. The opponent is therefore the successful party in this proceeding and I award costs according to Schedule 8 of the Trade Marks Regulations 1995 against the applicant.

Deirdre O’Brien
Delegate of the Registrar of Trade Marks
Trade Marks Hearings
28 January 2014