Rundles Pty Ltd. v Trussardi S.p.A

[1993] ATMO 7

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by TRUSSARDI S.p.A. to Application No. 483809 in the Name of RUNDLES PTY LTD

Application no. 483809 was lodged on 22 March 1988. The application was in the name of RUNDLES PTY LIMITED, a New South Wales company, and sought registration of the word mark FUSARDI in respect of all goods in International Class 25 including men's clothing. Class 25 comprises "Clothing, footwear, headgear." Acceptance of the application was advertised in the Official Journal of 23 November 1989 and on 22 May 1990 notice of opposition to registration of the trade mark was lodged in the name of TRUSSARDI S.p.A., an Italian company, in accordance with the provisions of s49 of the Act. The opponent's evidence in support of the opposition was served on the applicant on 19 February 1991 and service of the applicant's evidence in answer was completed on 17 January 1992. On 12 May 1992 the opponent requested a hearing of the matter in accordance with reg 49 and a hearing was set down for 25 August 1992. Mr John Waters of Phillips Ormonde & Fitzpatrick appeared for the opponent while the applicant was represented by Mr Hector Cumming of Davies Collison Cave.

Mr Waters made it clear from the outset that although there were various grounds set out in the notice of opposition the opponent intended to rely on the provisions of ss28 and 33 of the Act. The opponent is the registered proprietor of trade mark no. 367051 which consists of the word TRUSSARDI together with a cartoon device of a greyhound's head. This mark is registered in respect of the same goods as those for which the applicant seeks registration of its mark, namely, all goods in International Class 25.

the evidence

Mr Waters then took me to the evidence in support of the opponent's case. This consists of a declaration of Dr Nicola Trussardi, the president and managing director of the opponent company, dated 23 January 1991, a declaration dated 14 February 1991 of Annette Donnini, a director of the sole distributor in Australia of clothing manufactured in Italy by or for the opponent, and a declaration by Mr Waters himself dated 15 February 1991. Dr Trussardi relates the history of the opponent which commenced business in Italy in 1910 as a glovemaker later extending its activities to leather clothing accessories and later still to ready-to-wear clothing, particularly leather and woollen garments. In 1976 the first TRUSSARDI shop was opened in Milan and at the date of the declaration there were 110 TRUSSARDI boutiques in Italy and the rest of the world (the number of these existing in Australia at that date has been left blank). The range of clothing sold under the TRUSSARDI trade mark includes men's, women's and children's wear. The TRUSSARDI and greyhound logo has been registered in many countries throughout the world.

Ms Donnini states that her company commenced selling goods bearing the TRUSSARDI trade mark in May 1987. At first sales were limited to her company's retail outlet in Melbourne but in January 1989 sales were extended to other parts of Victoria and to New South Wales, Queensland, South Australia and Western Australia. Total sales for the year ended 30 June 1990 approached one million dollars. Advertising and other promotional activities have been carried out by the opponent itself and by the local distributor. Samples of some of the advertising material are exhibited to the declaration.

Mr Waters' declaration relates the results of a search of the Constituent Particulars Index of Trade Marks which he carried out. This search was of marks indexed in Class 25 which were lodged before the opposed application, which were still pending or had been registered and which ended in -ARDI. There were three such marks: the word VACARDI, the applicant's registered mark and a third mark consisting of the words GILBERTO DOARDI together with the letters GD.

Mr Waters went on to submit that on the basis of this last piece of evidence, namely, that there was only one other mark on the official records consisting of or containing a word with the ending -US(S)ARDI, in respect of the relevant goods, that an objection to the registration of the applicant's mark existed in terms of s33 of the Act, that the applicant's mark was deceptively similar to the the opponent's registered trade mark. The word element of the mark was that by which the mark would be identified, the device of the dog being of less significance. Even if the marks could be distinguished on a side-by-side comparison it was essential to bear in mind the effect of imperfect recollection. The onus was on the applicant to show that there was no reasonable likelihood of confusion between the two marks. Mr Waters further submitted that although the two words appeared on the face of it to be invented words TRUSSARDI was in fact an Italian surname although a rare one in Australia. It therefore conveyed no particular mental image or idea, the only impression being that it was an unfamiliar word. The "idea" of both words was simply that they were foreign words of European origin. The words were, he said, visually similar in that the letters TR resembled the letter F and also aurally similar because the stress fell on the second syllable in each case. There were no instances of actual deception because as yet the opponent had only limited use in relation to tailored men's clothing which were the goods in connection with which the applicant had used its mark. What I had to take into account, however, was use of both marks in a fair and normal manner on all the goods covered by the opponent's registration and the applicant's application which in both case was all the goods comprehended in Class 25.

In relation to s28 Mr Waters submitted that the applicant's conduct had been blameworthy inasmuch as the persons responsible had either omitted to search the Register before adopting the mark or had disregarded the existence of the opponent's mark and had gone on to create a substantial business using a deceptively similar trade mark. The applicant should have known, he submitted, that the use of the mark it had adopted would lead to the deception or confusion of the public.

In response Mr Cumming stated that the applicant's mark was an invented word, that a search of the Register had been carried out but that it was considered by the applicant that its mark was not deceptively similar to the opponent's registered trade mark so that no blameworthy conduct could be imputed to the applicant. The view that the marks were not deceptively similar was obviously shared by the examiner, he said, because the opponent's mark had not been cited against the application at any time during the examination of the application. Mr Cumming pointed out that the applicant commenced to use its mark within a month of lodging the application on 22 March 1988 whereas the opponent's application to register its mark was lodged on 20 October 1981 and yet by its own evidence use of the mark in Australia did not begin until 1987 some 7 years later. In March 1988 the opponent had had very limited use of its mark and that in relation only to jeans.

With respect to the case against the application under s33 of the Act Mr Cumming submitted that the question to be decided was whether there was a real risk that the result of the user of the mark would be that a number of persons would be caused to wonder whether it might not be the case that the two products came from the same source: Southern Cross Refrigerating Company v Toowoomba Foundry proprietary Limited (1954) 91 CLR 592. In deciding whether the two marks were substantially identical the marks should be compared side by side and their similarities and differences noted. In considering whether the marks were deceptively similar, on the other hand, the marks should not be looked at side by side the comparison being between the impression based on recollection of the earlier mark that persons of ordinary intelligence and memory would have and the impressions that such persons would get from the applicant's mark: Shell Co. (Aust.) Ltd v Esso Standard Oil (Aust.) Ltd (1961) 109 CLR 407; William Charlick Ltd v Wilkinson & Co. Pty Ltd (1913) 16 CLR 370. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded: Australian Woollen Mills Ltd v F.S. Walton & Co. Ltd. The net impression of the marks is to be considered and the phenomenon of imperfect recollection taken account of. As Lord Radcliffe observed in the Privy Council in de Cordova v Vick Chemical Co. (1951) 68 RPC 103 at 106: "...in most persons the eye is not an accurate recorder of visual detail and marks are remembered rather by general impression or by some significant detail than by any photographic recollection of the whole". Mr Cumming also submitted that in modern marketing conditions the sound of marks is becoming of diminishing importance in comparison with their visual appearance: Hamish Robertson & Co. Ltd.'s Application (1988) 13 IPR 69. Mr Cumming further referred to the principle that as a rule the first syllable of a word is by far the most important for the purpose of distinction: London Lubricants (1920) Ltd's Application (1925) 42 RPC 264 at 279. In the light of the principles established by the above cases Mr Cumming argued that the applicant's and opponent's marks were not deceptively similar since the marks were visually different, the first syllable of the two words being markedly different because the hard consonant "t" of the word TRUSSARDI contrasted sharply with the soft "f" of FUSARDI. The opponent's mark also contained a significant difference in the device of the greyhound's head which would be remembered and looked for by purchasers. Moreover, he said, the class of purchasers of the respective goods was different as the opponent produced high fashion clothes. Customers for these goods would pay careful attention to the labels borne by the garments and would be unlikely to be misled.

With respect to the opponent's evidence Mr Cumming submitted that it showed very little use of the opponent's mark before the date of the application and that in relation to accessories rather than clothing proper. That evidence was therefore insufficient to make out a case under s28 which must be based on the opponent's reputation in Australia. Mr Cumming referred me to the applicant's evidence which consists of a declaration dated 18 December 1991 by Peter David Rundle, managing director and chief executive officer of the applicant company, together with Exhibits PDR1 to PDR4. Mr Rundle states that the trade mark the subject of application 483809 was first used in Australia in April 1988 and has been used continuously since then in relation to tailored suits, jackets and trousers. Annual retail sales of these goods are approximately one million dollars. Exhibits PDR1-PDR3 consist of samples of advertising material, packaging and labels and a copy of a certificate of registration of the mark in New Zealand. Exhibit PDR4 consists of 27 letters from customers of the applicant expressing support for the applicant, ignorance of the opponent's mark and the opinion that the two marks are not deceptively similar. Mr Cumming conceded that this evidence was hearsay but argued that it was probative being from persons in the trade in the relevant goods.

Mr Cumming went on to submit that if I should find against him on the question of s33 then the Registrar's discretion should be exercised in favour of the applicant under s34. He said that the applicant had shown concurrent use of its mark for 4 years since 1988, that that use had been extensive, that registration would not be likely to lead to confusion, that there had been no instances of actual confusion and that the marks had already coexisted in the marketplace for a period of 4 years. In support of this submission hereferred me to Jean Patou Parfumeur v Crisena Corp Pty Ltd 20 IPR 660.

Mr Waters did not contest the correctness or the appropriateness of the cases cited by Mr Cumming but submitted that they supported the opponent's case rather than the applicant's. He claimed that the difference between the high fashion and general sectors of the market were becoming blurred at present with many high fashion brands coming "down market". In any case, he said, the Rundle declaration showed that use of the applicant's mark had been restricted to tailored men's clothing, mainly suits and jackets. Furthermore, that declaration provided no evidence about the adoption of the applicant's mark or how it came to be coined. Mr Waters submitted that the extent of the applicant's use of its mark was insufficient to enable the provisions of s34 to be applied, that in any case all that use had taken place since the date of lodgment of the application. He submitted that if, however, s34 were to be applied the resulting registration should be limited to the goods in relation to which use of the mark had been shown.

decision

Sections 28 and 33

The tests to be applied under ss.28 and 33 of the Act may be stated as follows, paraphrasing the words of Evershed J. in Smith Hayden & Co Ltd's Application (1946) 63 RPC 97, in which he compared the tests under ss.11 and 12 of the Trade Marks Act 1938 (UK), which correspond to ss.28 and 33 of the Trade Marks Act 1955 (Cth):

The questions for my decision ... have been formulated, and I think accurately formulated, as follows:

(a) (Under s.28) "Having regard to the reputation acquired by the name TRUSSARDI, is the Registrar satisfied that the mark applied for, if used in a normal or fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons?";

(Under s.33) "Assuming user by the opponent of its mark TRUSSARDI in a normal and fair manner for any of the goods covered by the registration of that mark ... is the Registrar satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant also uses its mark FUSARDI and device normally and fairly in respect of any goods covered by their proposed registration?"

The date at which the opponent's reputation is to be assessed is the date of lodgment of the applicant's application: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592. I do not think that the evidence is sufficient to show that as at 22 March 1988 the reputation of the opponent was such as to cause a substantial number of persons to be deceived or confused by the use by the applicant of its mark in relation to the goods in respect of which registration is sought.

In relation to s33, however, my conclusion is different. Here I am obliged to take into account the scope of the registration enjoyed by the opponent and that sought by the applicant. Although it is necessary to restrict the consideration of the possibility of deception and confusion to the normal and fair use of the respective marks I still find that use of those marks in relation to certain goods would lead at best to confusion and at worst to the deception of potential purchasers of the goods. The opponent's mark, it is true, does contain a device element. Nevertheless, the mark would be known by the word TRUSSARDI to which I consider the word FUSARDI to be deceptively similar.

Section 34

The consequence of my finding that an objection exists in terms of s33 is that I now must consider whether the provisions of s34 can be applied in the applicant's favour. Section 34 is in the following terms:

34. (1) In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do, the Registrar may permit the registration of trade marks which are substantially identical or deceptively similar, or, but for the honest concurrent use or other special circumstances would be deceptively similar, for the same goods or services or other goods or services, by more than 1 proprietor subject to such conditions and limitations (if any) as the Registrar imposes.

(2) Where a person has, by himself or his predecessors in business, continuously used a trade mark before the use, or before the date of registration, whichever is the earlier, of another registered trade mark by the registered proprietor of that other trade mark, by his predecessors in business or by a registered user of that other trade mark, the Registrar shall not refuse to register the first-mentioned trade mark by reason of the registration of that other trade mark.

No attempt was made by the applicant to make out a case under sub-s(2) and indeed on its own evidence it could hardly do so. I need therefore consider only the case for honest concurrent use or other special circumstances. It is well settled that in matters concerning honest concurrent use the relevant date before which that use must have occurred is the date of application for registration made by the party seeking to avail itself of those provisions: "Granada" Trade Mark [1979] RPC 303, 312; Gloy and Empire Adhesives Ltd's Application (1934) 51 RPC 63, 69. The relevant date here, then, is 22 March 1988. According to the Rundle declaration the applicant did not commence to use its mark until April 1988, some weeks after the date of application. It follows that the provisions relating to honest concurrent use cannot be applied to this application. The supporting declarations from the applicant's trade customers while being to some extent self-serving do show, I believe, that since April 1988 the applicant has established a very substantial reputation in the challenged mark in relation to certain goods and that the refusal of the application would cause considerable hardship to the applicant.

While I have found that, obliged as I am to consider the full scope of the applicant's proposed registration, an objection to that registration exists under s33, it appears that in practice the confusion or deception of customers contemplated by that section would be minimised if the applicant's mark were used only in relation to those goods in which it has established its reputation. Bearing in mind that fact as well as the relative inconvenience to the parties of refusing the application I am prepared to apply the special circumstances provision of sub-s 34(1) to this application provided the specification of goods is limited to "Men's tailored suits, jackets and trousers". I therefore allow the applicant two months in which to consent to the necessary amendment of the application otherwise the application will be refused. As the opponent has been largely successful in these proceedings I award costs to the opponent in accordance with the regulations.

Michael Homann
Hearing Officer

28 January 1993