Roman Borisov v Shellin Pty Ltd

[2017] ATMO 75

TRADE MARKS ACT 1995

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

Re:Opposition by Roman Borisov to registration of trade mark application 1656341(18) – JUMBO Logo - in the name of Shellin Pty Ltd

Delegate:	Jock McDonagh
Representation:	Opponent: Written submissions by Davies Collison Cave Patent and Trade Mark Attorneys Applicant: Gerard Skelly and Kathryn Mytton of Shelston IP Patent and Trade Mark Attorneys
Decision:	2017 ATMO 75 Section 52 opposition: Sections 42(b), 44, 59, 60 and 62A pressed – s 60 successful –Trade Mark refused registration.

Background

1. This matter relates to an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of a trade mark filed by Shellin Pty Ltd (‘the Applicant’). Relevant details of the opposed application are set out below.

Application No	1656341
Trade Mark	(‘the Trade Mark’)
Filing Date:	7.11.2014 (‘the Priority Date’)
Goods:	Class 18: Bags made of leather and imitation leather; briefcases made of leather and imitation leather; cases of leather or leatherboard; cases made of imitation leather; handbags made of leather and imitation leather; belts (shoulder) made of leather and imitation leather; wallets made of leather or imitation leather

1. The Trade Mark was examined in compliance with section 31 of the Act and was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 26 March 2015. Roman Borisov (‘the Opponent’) filed Notice of Intention to Oppose the registration of the Trade Mark on 26 May 2015 and a Statement of Grounds and Particulars (‘the Statement’) on 26 June 2015.  Thereafter the Applicant filed Notice of Intention to Defend on 6 August 2015. The parties then filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

2. I heard the matter in Canberra on 2 March 2017 as a delegate of the Registrar of Trade Marks. The Opponent relied upon written submissions prepared by Davies Collison Cave Patent and Trade Mark Attorneys and did not appear. The Applicant was represented by Gerard Skelly and Kathryn Mytton of Shelston IP Patent and Trade Mark Attorneys.

   Grounds of Opposition

   4. The Opponent nominated the following grounds of opposition under the Act, all of which were pressed at the hearing:

   ·Section 44: The Trade Mark is substantially identical with or deceptively similar to a prior application or registration;

   ·Section 60: The Trade Mark is similar to a mark that has acquired a reputation in Australia;

   ·Section 42(b): Use of the Trade Mark would be contrary to law;

   ·Section 59: The Applicant has no intention to use the Trade Mark; and

   ·Section 62A: The application was made in bad faith.

3. To succeed in its opposition the Opponent bears the onus of establishing at least one of these five grounds on the ‘balance of probabilities’.[1]

   [1] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26], affirmed by the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

4. As will become apparent, I have only found it necessary to address the section 60 ground in this decision and this is discussed below. Of course, should the decision be appealed, it is open to the Opponent to plead any ground it considers relevant in proceedings before the Court.

5. The time at which the grounds of opposition must be established is the date of filing of the application for registration.[2]

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595

   Evidence

   8.     The evidence consists of the following declarations:

Declarant	Position	Date Made	Annexures
Evidence in Support
Roman Borisov (‘Borisov’)	Opponent and Director of Binder Enterprise Pty Ltd	18.11.2015	RB-1 to RB-20
Michael Kaper (‘Kaper 1’)	Director of Binder Enterprise Pty Ltd	18.11.2015	MK-1 to MK-9
Cheryl Hrvoj (‘Hrvoj 1’)	Solicitor employed by Opponent’s Attorneys	18.11.2015	CH-1 to CH-12
Evidence in Answer
Jian Chen (‘Chen’)	Director of the Applicant	23.02.2016	JC-1 to JC-7
Kathryn Ruth Mytton (‘Mytton’)	Solicitor employed by Applicant’s Attorneys	23.02.2016	KRM-1 to KRM-5
Evidence in Reply
Michael Kaper (‘Kaper 2’)	Director of Binder Enterprise Pty Ltd	29.04.2016	MK-1 to MK-3
Cheryl Hrvoj (‘Hrvoj 2’)	Solicitor employed by Opponent’s Attorneys	3.05.2016	CH-1 to CH-12

1. Borisov provides details of the Opponent’s sales of goods in Australia under what it refers to as ‘JUMBO UGG brands’ since the late 1980s. The ‘JUMBO UGG brands’ are the  ‘JUMBO UGG Label’, the ‘JUMBO UGG Logo’ and the ‘JUMBO UGG word mark’ each defined below. The evidence in Borisov is that the JUMBO UGG Label is affixed to the Opponent’s sheepskin products, which are primarily footwear and has continuously been used by the Opponent since the commencement of its sales in Australia. The Opponent also has, since the commencement of its sales in Australia used the JUMBO UGG WORD Mark in written matter where a logo is not appropriate.  Since 2007, the Opponent used the JUMBO UGG Logo, which is used in advertisements, promotional materials and labelling not affixed to the Opponent’s goods.

2. The  Opponent has registered each of the ‘JUMBO UGG brands’ as trade marks, the details of which are provided in the table below:

Trade Mark No.	Trade Mark	Goods/services	Priority Date
979452	‘JUMBO UGG Logo 1’	Class 25: Sheepskin footwear, hats	24.11.2003
1417769	JUMBO UGG ‘JUMBO UGG word mark’	Class 25: Footwear, including boots, shoes, sheepskin boots Class 35: Retail and wholesale services; retail stores; retail services provided over the Internet, mail, telephone and electronic order services; retail and wholesale services in respect of clothing, footwear, including boots, shoes, sheepskin boots, gloves, headgear, articles made from sheepskin, leather and imitation leather including bags and wallets; retail stores in respect of clothing, footwear, including boots, shoes, sheepskin boots, gloves, headgear, articles made from sheepskin, leather and imitation leather including bags and wallets; marketing and advertising services in this class; retail services provided over the Internet, mail, telephone and electronic order services in respect of clothing, footwear, including boots, shoes, sheepskin boots, gloves, headgear, articles made from sheepskin, leather and imitation leather including bags and wallets; none of the above being directed to exporting, wholesale or retailing of beer, mineral waters, aerated waters, soft drinks or other alcoholic drinks Endorsement: Provisions of subsection 41(5) applied.	1.04.2011
1417769	‘JUMBO UGG Logo’	Class 25: Footwear, including boots, shoes, sheepskin boots Class 35: Retail and wholesale services; retail stores; retail services provided over the Internet, mail, telephone and electronic order services; retail and wholesale services in respect of clothing, footwear, including boots, shoes, sheepskin boots, gloves, headgear, articles made from sheepskin, leather and imitation leather including bags and wallets; retail stores in respect of clothing, footwear, including boots, shoes, sheepskin boots, gloves, headgear, articles made from sheepskin, leather and imitation leather including bags and wallets; marketing and advertising services in this class; retail services provided over the Internet, mail, telephone and electronic order services in respect of clothing, footwear, including boots, shoes, sheepskin boots, gloves, headgear, articles made from sheepskin, leather and imitation leather including bags and wallets; none of the above being directed to exporting, wholesale or retailing of beer, mineral waters, aerated waters, soft drinks or other alcoholic drinks Endorsement: Provisions of subsection 41(5) applied.	1.04.2011

1. Borisov states that the Opponent sells sheepskin footwear and other sheepskin products in Australia through over 150 wholesale customers and over 5,000 registered retail customers. The retail price of footwear is between $120 and $250. Between 2003 and 2014, the approximate total value of sales of goods bearing the JUMBO UGG Label is over $50 million, which equates to over 900,000 pairs of footwear.

2. Borisov also demonstrates extensive promotion and advertising of the Opponent’s sheepskin footwear and other sheepskin products in magazines and newspapers (local and national) in Australia, catalogues, and promotional materials directed at international visitors at Australian international airports. The examples are provided for the period 2009 to 2014. The JUMBO UGG Label can be seen on photographs of goods in such material. The JUMBO UGG Logo is prominent in all advertising and promotional materials. Where logos are not appropriate in written text, the JUMBO UGG Word Mark is inevitably used.

3. Kaper 1 discusses a number of matters relating to the Applicant’s business activities in China. As these are not relevant to the successful ground of opposition I do not intend to discuss them further.

4. Hrvoj 1 provides details of the Applicant’s business enterprises and trade marks, particularly in relation to the Applicant dealing in sheepskin products.

5. Chen provides a background to the Applicant’s commercial activities in China and Australia and to its use of various trade marks in relation to various products. As it is not specifically relevant to my decision, I shall not discuss it further.

6. Mytton provides the results of internet searches conducted by a solicitor for the Applicant based on the word JUMBO, as well as telephone enquiries to ten retailers of sheepskin products as to whether they stocked sheepskin handbags bearing the same brand as any sheepskin footwear stocked.

7. The internet searches annexed to Mytton identified a large number of products branded as JUMBO. However, the only sheepskin products listed are those of the Opponent, and no leather goods are listed in the search results.

8. None of the sheepskin product retailers contacted by telephone stocked sheepskin handbags bearing the same brand as its sheepskin footwear. Only two of the ten retailers stocked the Opponent’s footwear.

9. Kaper 2 and Hrvoj 2 provide evidence that there are numerous sheepskin (or ‘ugg’) boot retailers and wholesalers and manufacturers that sell articles made of leather including bags, cases and wallets under the same brand as their footwear brand.

   Discussion

   Section 60: Trade mark similar to trade mark that has acquired a reputation in Australia

10. Section 60 of the Act is reproduced below:

    Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

    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.

11. To establish its ground of opposition under section 60 the Opponent must demonstrate that as at the Priority Date there was another trade mark that had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.

12. It is necessary to bear in mind that each of the Opponent’s trade marks listed above is a separate mark for the purpose of considering the operation of s 60 of the Act in the present case.[3]

    [3] Qantas Airways Limited v Edwards [2016] FCA 729 (‘Qantas’) at [160]

13. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[4] by Kenny J at [81] – [82]:

    What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

    reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

    Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

    Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

    [4] (2000) 51 IPR 102

14. Further, at [86], Kenny J said:

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

15. The Opponent submitted that the amount of goods sold by the Opponent and its licensees over more than 18 years, its annual turnover figures, and the extensive promotion and advertising were substantial and reflected the reputation required to support this ground.

16. Borisov and Kaper 1 establish that the JUMBO UGG Label JUMBO UGG Logo have substantial goodwill and reputation in Australia as at the Priority Date of the Trade Mark.

17. While I am satisfied that the requisite reputation in relation to the JUMBO UGG Label JUMBO UGG Logo has been made out, the Registrar must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion.

18. It is to be noted that, unlike a section 44(1) ground of opposition, the ground under section 60 of the Act is not based on the requirement that the allegedly conflicting marks are substantially identical or deceptively similar. However, for the purposes of section 60 of the Act, the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.[5]

    [5] Qantas at[142]

19. As his Honour Yates J observed “the standard of ‘confusion or deception’ under section 60 of the Act is the same as under s 44(1) of the Act. Therefore, the principles [cited in Registrar of Trade Marks v Woolworths Ltd[6] (‘Woolworths’) at [50]], apply here”[7], namely:

    (ii)  A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    (iii)            In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    [6] [1999] FCA 1020

    [7] Qantas at [145]

20. The Trade Mark is not identical to either the JUMBO UGG Label or the JUMBO UGG Logo; however, there is a marked degree of similarity in the way the essential feature of the respective marks i stylized and presented, in particular the curved word JUMBO. JUMBO is the distinguishing and memorable element in the respective marks. UGG BOOTS are descriptive elements.

21. I am also satisfied that the goods for which the JUMBO UGG Label and JUMBO UGG Logo have a reputation are sold through the same channels and directed at the same target market as the Applicant’s Class 18 goods designated in the opposed application. 

22. The evidence provided by the Opponent of the number of ugg boot retailers and wholesalers and manufacturers that sell articles made of leather including bags, cases and wallets under the same brand as their footwear brand, suggests that such brand extension is common and may exacerbate the likelihood of deception or confusion. 

23. Further, I consider that ordinary potential consumers are likely to consider that the Trade mark might be an evolution of the JUMBO UGG Logo, with the descriptive elements removed due to the different nature of goods.

24. I find that consumers who are aware of JUMBO UGG branded boots and products, upon seeing a JUMBO brand on articles made of leather including bags, cases and wallets, may be caused to wonder if it might not be the case that the products come from the same source. I find that by reason of the reputation of the Opponent’s goods bearing the JUMBO UGG Label the use of the Trade Mark on the Applicant’s designated goods in Class 18 would be likely to cause confusion.

25. I am satisfied that this ground of opposition has been established.

    Decision

26. Section 55(1) of the Act provides:

    Unless subsection (3) applies to the proceedings, 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.
    Note: For limitations see section 6.

27. Subsection (3) does not apply to these proceedings.

28. I have found the opposition to be successful on the ground raised pursuant to section 60 of the Act. I accordingly refuse to register the trade mark.

    Costs

29. The Opponent sought an award of costs in its favour. As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Applicant in accordance with Schedule 8 of the Trade Marks Regulations 1995.

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    26 July 2017