Russell Brands LLC v Christopher Russell

[2013] ATMO 81

TRADE MARKS ACT 1995

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

Re:Opposition by Russell Brands LLC to registration of trade mark application 1434644 (25) – Russell & Co with crest device - filed in the name of Christopher Russell.

Delegate:	Bianca Irgang
Representation:	Opponent: Mr Chris Sgourakis of Griffith Hack Applicant: Not present at the hearing
Decision:	2013 ATMO 81 s.52 opposition – s 60 ground of opposition established for all goods - trade mark use likely to deceive or cause confusion - no requirement to consider other grounds – registration refused.

Background

1. Christopher Russell (‘the applicant’) filed application number 1434644 on 5 July 2011 in class 25 of the International Classification of Goods and Services. Relevant details of the application are set out below.

Trade mark:  

Trade mark application:      1434644

Filing Date:  5 July 2011

Specification:  Class 25: Apparel (clothing, footwear, headgear)

1. The Application was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 27 October 2011. Russell Brands LLC (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to the registration of the application on 27 January 2012. Thereafter the opponent served and filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

2. I heard the matter in Canberra on 24 July 2013 as a delegate of the Registrar of Trade Marks. Mr Chris Sgourakis of Griffith Hack represented the opponent. The applicant was not present at the hearing.

Grounds of Opposition

1. The Notice nominated most of the grounds of opposition available under the Trade Marks Act 1995 (‘the Act’). The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

   [2] [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

2. At the hearing the opponent advised that it was not formally withdrawing any of the grounds of opposition listed in the Notice but that it would provide submissions only on the grounds under sections 58, 44 and 60 of the Act. None of the evidence served and filed by the opponent appears to go to the other grounds in the Notice and for the sake of completeness I find that those grounds have not been established.

3. Therefore, the grounds remaining for my consideration are those under sections 58, 44 and 60 of the Act. Should the opponent establish one ground of opposition in relation to all of the applicant’s goods specification, there is no requirement for the other grounds of opposition to be considered.

Evidence

1. The evidence consists of the following statutory declaration:

Declarant	Position	Date Made	Exhibits
Evidence in Support
T. Leslie Dooley	Vice President and Assistant Secretary within Russell Brands	22 October 2012	Annexure A to Annexure Y

Opponent’s Evidence

1. The statutory declaration of T. Leslie Dooley (‘the Dooley declaration’) states that the opponent was founded in Alabama in 1902 by Benjamin Russell, as “Russell Manufacturing Company” which was a small factory that made football team uniforms. By the 1960s, Russell Manufacturing Company had become one of the largest manufacturers of sports apparel and uniforms in the US. The Dooley declaration states that the business has since grown to become a leading manufacturer and supplier of sporting apparel and sporting equipment throughout the world.

2. Russell Brands first used its trade marks RUSSELL and RUSSELL ATHLETIC for sporting apparel in the US in the 1920s. Products are sold in over a dozen countries throughout the world including USA, Australia, New Zealand, Singapore, Indonesia, Sri Lanka, Italy, Spain, Germany, France, Holland, Ireland, Canada, China, Iceland, Japan and Panama.

10.  The Dooley declaration states that the opponent has used its RUSSELL and RUSSELL ATHLETIC trade marks in Australia continuously since at least 1990 in relation to sporting apparel, including t-shirts, tank tops, pants, sweat shirts, hoodies, jackets, hats, beanies, socks and bags. Since this time, the opponent has also used its R device in conjunction with its RUSSELL and RUSSELL ATHLETIC trade marks and it provides numerous examples of such use in Annexure C. The images in Annexure C depict apparel that was on sale in Australia prior to 5 July 2011.

11.  The opponent is also the registered owner in Australia of two trade marks. The details of these registrations are as follows:

Trade mark:  

Trade mark application:      529373

Filing Date:  23 February 1990

Specification:  Class 25: Clothing including articles of clothing for athletes and articles of sports clothing; all other class 25 goods

Endorsements: Registration of this trade mark shall give no right to the exclusive use of the letter R except as represented in the mark, and the words RUSSELL ATHLETIC. The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.

Trade mark:  

Trade mark application:      1431958

Filing Date:  21 June 2011

Specification:  Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; athletic bags; backpacks; duffel bags; umbrellas, parasols and walking sticks; whips, harness and saddlery

Class 25:Clothing, footwear, headgear; sportswear and casual wear; namely, pants, shorts, shirts, sweatshirts, sweatpants, T-shirts, athletic jerseys, athletic team uniforms, jackets, socks, underwear and hats

12.  Both of the above trade mark registrations have an earlier priority date than that of the applicant’s trade mark. I also note from the opponent’s evidence that the opponent has used its RUSSELL ATHLETIC trade marks in a variety of different forms although the words RUSSELL ATHLETIC[3] are prominent in all the examples provided by the opponent in Annexures L through to Y accompanying the Dooley declaration.

[3] For the sake of ease throughout the decision the opponent’s trade marks shall be collectively referred to as ‘RUSSELL ATHLETIC’.

13.  The Dooley declaration states that the opponent has sold its RUSSELL ATHLETIC branded athletic goods through major sporting retailers including Rebel Sport, Sportswear, AMart All Sports, InSport, Paul’s Warehouse, Trade Secrets and Sportsmans Warehouse. These retailers have a considerable number of stores across Australia. The investment that the opponent has made in regards to advertising its goods since 2003 is very significant as is the revenue it has made through sales of its RUSSELL ATHLETIC branded goods.

Discussion

Section 60 - Reputation in Australia

14. Section 60 of the Act provides:

1. 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.

15. Unlike sections 44 or 58 of the Act, section 60 does not require that the goods upon which the opponent uses its trade mark be of a specified standard of similarity with the goods of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. It is now for me to determine if the opponent has acquired a reputation in Australia for its RUSSELL ATHLETIC trade marks which is sufficient to establish that the applicant’s use of the opposed RUSSELL & CO trade mark would be likely to deceive or cause confusion.

16.  The principles relevant to the assessment of the likelihood of confusion, etc, were set out by French J in Registrar of Trade Marks v Woolworths[4]:

[4] [1999] FCA 1020 at paragraph 50

(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.

(iv) The rights of the parties are to be determined as at the date of the application.

(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc[5]:

[5] [1973] HCA 43; (1973) 129 CLR 353 at 362

“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

17.  Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[6] by Kenny J at paragraph 81:

[6] [2000] FCA 1335

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?

18.  Considering the evidence, there is little doubt that the opponent enjoys a very extensive and long standing reputation for its RUSSELL ATHLETIC branded goods in the US. However, the onus is on the opponent to demonstrate that a reputation in its RUSSELL ATHLETIC trade marks existed in Australia before the priority date of the opposed trade mark such that use of the opposed mark would be likely to deceive or cause confusion. This is more than merely indicating prior use, the opponent’s trade mark needs to be “associated in the minds of the Australian public”[7].

[7] Seven Up Co v OT Ltd (1947) 75 CLR 203 at 211

19.  The opponent has extensively promoted its RUSSELL ATHLETIC branded goods through print media such as trade catalogues and brochures, magazines, online publications, street posters and advertisements on the sides of buses (Annexure F through to Annexure Y). These advertising efforts combined with its RUSSELL ATHLETIC branded goods being promoted through prizes, endorsements and sponsorship deals including through becoming the Official Uniform Supplier for a number of sports clubs makes it likely that a considerable number of Australian customers are aware of the opponent’s relevantly branded goods.

20.  The evidence also shows that the revenue generated by sales of its RUSSELL ATHLETIC goods to Australian customers is very considerable, particularly given the average and modest cost of these goods. To generate such considerable sales figures in Australia the opponent would have needed to sell a considerable number of items of the relevant goods. These sales occurred between the years 2000 and 2010 which is before the priority date of the opposed application. I am satisfied that that the opponent has established the existence of a significant reputation in Australia for its RUSSELL ATHLETIC trade marks before the priority date of the opposed trade mark.

21.  I now need to determine if, given this reputation in Australia, use of the applicant’s trade mark would be likely to deceive or cause confusion. In my consideration of the likelihood of confusion or deception, I am not to be influenced by the evidence that the applicant uses its trade mark on goods which may be different from the opponent’s goods. I am to consider any of the uses of the opposed trade mark that would be within the scope of the registration which is sought should it be granted in the terms presently sought. In essence, the question comes down to my being satisfied that there is a “finite and non-trivial” risk of deception or confusion[8].

[8] Registrar of Trade Marks v Woolworths Limited (1999) AIPC 91-499 at 36, 697-8 (per Justice French) and 39, 703-4 (per Justice Branson)

22.  A consideration of the opponent’s RUSSELL ATHLETIC trade marks reveals that the most striking and prominent feature of the marks is the word RUSSELL and in some cases, the letter R. The applicant’s trade mark is the expression RUSSELL & CO with a shield device containing a prominent letter R and the words DESIGNER COLLECTION in small print contained within the shield device.

23.  The opponent has also put forward examples of various ways in which its trade marks have been used over the years. It is clear from that evidence that over the years the opponent has used its RUSSELL ATHLETIC trade marks in a number of differing formats and scripts including fancy scripts with the addition of shield devices with or without the letter R being present. Therefore, even though the respective trade marks contain additional features such as differing devices and the words “ATHLETIC”, “DESIGNER COLLECTION” and “& CO”, I consider that the common word RUSSELL is the most distinctive and striking part of the trade marks. In particular, I believe that the use of the shield device, the letter R and the additional terms in the applicant’s trade mark alludes to an association with the opponent. I believe that this, along with the opponent’s well established propensity to use its RUSSELL ATHELIC trade marks in so many different formats each year, is likely to further emphasise a possible connection between the opponent’s goods and those of the applicant.

24.  I consider that, given the reputation evidenced by the opponent in its RUSSELL ATHLETIC trade marks, a significant number of Australian consumers would, at the very least, subscribe to a reasonable doubt[9] as to some sort of connection between that well-known trade mark and the applicant’s trade mark. Since the trade marks are quite similar, the degree of speculation would, in my assessment, rise to, at the very least, the reasonable doubt required to trigger section 60.

[9] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

25. The ordinary consumer would, in my view, be justified in holding the view that the applicant’s RUSSEL & CO trade mark had been adopted for no reason other than to denote a connection with the commercial success of the opponent’s RUSSELL ATHLETIC trade marks. Therefore, the opponent has established a ground of opposition under the provisions of section 60.

26. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds set out in the notice although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

Decision

27. Section 55 of the Act relevantly provides:

Decision

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.

28. I find that the opponent has met the onus upon it, in terms of the grounds of opposition under section 60 argued at the hearing. I refuse to register trade mark application 1434644.

Costs

29. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the trade mark applicant Christopher Russell.

Bianca Irgang
Hearing Officer
Trade Marks Hearings
17 October 2013