RYD Brand Australia Pty Ltd v Limited Edition Surf Hardware Pty Ltd

[2023] ATMO 136

TRADE MARKS ACT 1995

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

Re:Opposition by LIMITED EDITION SURF HARDWARE PTY LTD to registration of trade mark application number 2149207 (class 28) – RYD MAY THE WAVES BE GOOD WHERE YOU ARE (Figurative) - in the name of RYD Brand Australia Pty Ltd

Delegate:	Sheona Robertson
Representation:	Opponent: Not represented Applicant: Not represented
Decision:	2023 ATMO 136 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pursued under sections 43, 44, 58A and 60 – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by LIMITED EDITION SURF HARDWARE PTY LTD (‘Opponent’) to registration of the trade mark the subject of the application detailed below:

Application Number:	2149207
Trade Mark:	(‘Trade Mark’)
Filing Date:	14 January 2021 (‘Relevant Date’)
Applicant:	RYD Brand Australia Pty Ltd (‘Applicant’)
Goods:	Class 28: Surfing apparatus; Surf boards (‘Applicant’s Goods’)

1. Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks on 1 June 2022, the Opponent filed a Notice of Intention to Oppose the registration on 7 June 2022, followed by a Statement of Grounds and Particulars (‘SGP’) on 14 June 2022.  The Applicant filed a Notice of Intention to Defend on 25 July 2022. 

2. The Opponent filed the following evidence in support of its opposition:

   ·     Declaration made on 15 August 2022 by Mark Damien Britten, co-owner of the Opponent, and Annexures MB-01 to MB-15 (‘Britten 1’).

3. The Applicant filed the following evidence in answer: 

   ·     Declaration made on 30 August 2022 by Brad Bricknell, Director of the Applicant, and Annexures A to G (‘Bricknell Declaration’).

   ·     Declaration made on 7 November 2022 by AJ Calitz, the legal representative of the Applicant, and annexures.  

4. The Opponent filed the following evidence in reply:

   ·     Declaration made on 1 December 2022 by Mark Damien Britten, with Annexures MB-R01 to MB-R06 (‘Britten 2’).

5. The evidence filed by both of the parties contains statements in the nature of submissions, rather than evidence. Such statements will be treated as submissions for the purpose of this decision.

6. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing. The Opponent requested that the matter proceed to a decision without hearing and paid the appropriate fee.  As a result the matter has been allocated to a delegate of the Registrar for a decision based on the written record.

7. As a delegate of the Registrar of Trade Marks, I have decided the opposition as required by s 55 of the Act. In doing so I take account of the materials filed during the proceedings, being the materials mentioned in paragraphs [2] to [5] of this decision.

   Grounds of opposition, onus and standard of proof

8. The SGP nominated grounds of opposition under ss 43, 44, 58A and 60 of the Act.

9. The onus of establishing at least one of the grounds of opposition rests upon the Opponent.[1]   The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]   

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ) (‘Food Channel’).

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

10. The date at which the rights of the parties are to be determined is the Relevant Date, being both the filing and the priority date of the Trade Mark.

    The Opponent

11. The Opponent is the owner of the following registered trade marks (together, the ‘Opponent’s Trade Marks’):

Registration No.	Trade mark	Priority date	Class	Goods
1615346	(‘Opponent’s Figurative Mark’)	3 April 2014	28	Leashes (surfboard); Surf boards; Surfboard covers; Surfboard leashes; Surfboard leg ropes (leashes); Surfboards
2072958	Ryder Surfboards (‘Opponent’s Word Mark’)	3 March 2020	28	Surfboards

1. The Opponent in the SGP and its evidence claims use of the Opponent’s Trade Marks on surfboards, skim boards, bodyboards, surfboard leashes, surfboard leg ropes, surfboard covers and on associated product packaging continuously since 2014.

2. The Opponent owns the domain name (‘Opponent’s Website’).

3. Annexures MB-11 to MB-13 of Britten 1 contain a product catalogue and screenshots of the Opponent’s Facebook and Instagram pages, showing use of various trade marks consisting of, or containing, the word ‘Ryder’. The trade marks shown in Britten 1 include variants that differ somewhat from the Opponent’s Trade Marks:

First Variant Second Variant

1. It is declared in Britten 1 that the Opponent’s products are available in more than 150 surf and action sports stores across Australia, as well as internationally. According to Britten 2, current distribution of the Opponent’s ‘RYDER’ branded products is throughout Europe and French Polynesia, and the Opponent’s prior distribution network included North and South America, Asia and the company’s world headquarters in Australia. Annexure MB-R05 of Britten 2 contains letters from two of the Opponent’s current distributors in Europe and French Polynesia respectively.

2. Annexure MB-14 of Britten 1 contains undated photos of the Opponent’s surfboards being used in surf schools. Britten 2 states that RYDER branded surfboards are also sold online. Annexure MB-R06 of Britten 2 contains Google search results listing a number of these online retailers, some of which appear to be Australian websites.

   The Applicant

3. The Applicant is a family business that began its operations in Cape Town in 2014. The Applicant is described as a surf accessories brand that also operates in the travel, bodyboarding, skateboarding and clothing industries. Annexures B, D and G of the Bricknell Declaration contain examples of use of the Applicant’s RYD trade marks on clothing, headgear, bags, travel accessories and surfboard accessories.

4. It is stated in the Bricknell Declaration that the Applicant’s RYD brand “is one of the most prominent and well-known surf brands currently on the market, both locally and internationally”.[3] The Applicant asserts that the RYD brand is recognised and respected in Africa, USA, Asia, Europe and Australia.

   [3] Bricknell Declaration, [9.1].

5. It is declared that RYD branded products are available for sale in a large number of stores internationally, including 18 stores in Australia, as well as online. The Applicant has distribution centres in Africa, Asia, Australasia, North America and Europe.

6. The Applicant is the owner of the domain name Besides the Australian web domain, the Applicant also owns domain names in the United Kingdom ( and South Africa (

7. It is declared that the Applicant’s social media accounts have thousands of followers, but further details have not been provided.

8. The Applicant sponsors surfers in the World Surf League. Annexure C to the Bricknell Declaration contains an article about the partnership between the Applicant and surfing champion Caio Ibelli.

9. It is declared that the Applicant has applied to register trade marks featuring the word ‘RYD’ in South Africa, the USA and the European Union. The USA trade marks referred to in the Applicant’s evidence, namely serial numbers 88577262 and 88577210, appear to have since been abandoned.[4] The applicant on record for these USA marks is not the Applicant itself but RYD Brand International Limited, the parent company of the Applicant.

   Discussion

   [4] Britten 2, Annexure MB-R02.

   Section 43

10. The Opponent relies upon s 43 of the Act, which relevantly provides:

    An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

11. In the SGP, the Opponent has particularised this ground of opposition as follows:

    The trade mark is deceptive as it uses an abbreviation of our trademarks for the same/similar goods. Abbreviating our registered trademarks 'RYDER' (Trademark 1615346) or 'RYDER SURFBOARDS' (Trademark 2072958) to the opposed trademark, 'RYD', suggests a connotation of an association to our business. Deception or confusion would arise in regards to the connection in the mind of the buying public.

12. To establish a ground of opposition under s 43 of the Act, the Opponent must clearly identify a connotation in the Trade Mark, or a part of it. The ‘connotation’ is one which must be inherent in, or arising from, the Trade Mark itself, and not from a comparison with another trade mark.[5]

    [5] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [140] (Katzmann J); Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J).

13. The Opponent has not identified an inherent connotation in the Trade Mark, and I am not satisfied that there is an inherent connotation that is likely to deceive or cause confusion.

14. Accordingly, the ground of opposition under s 43 of the Act is not established.

    Section 44

15. Section 44 of the Act relevantly provides:

    (1)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

    (a)  the applicant’s trade mark is substantially identical with, or deceptively similar to:

    (i)  a trade mark registered by another person in respect of similar goods or closely related services; or

    (ii)  a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

    (b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

16. To establish this ground, there must be at least one trade mark which satisfies the following requirements:

    i.it is in the name of a person other than the Applicant;

    ii.it has a priority date which is earlier than the Relevant Date;

    iii.it is substantially identical with, or deceptively similar to, the Trade Mark; and

    iv.it is in respect of goods and/or services which are either similar and/or closely related to the Applicant’s Goods.

17. In the SGP, the Opponent identifies the Opponent’s Trade Marks as the basis for this ground of opposition. The details of these trade marks are set out at [12] of this decision. From those details, it is evident that the Opponent’s Trade Marks are each held in a name other than that of the Applicant, and that the priority dates of the Opponent’s Trade Marks are earlier than the Relevant Date. Accordingly, the first and second requirements listed above are satisfied.

18. It is evident that the Applicant’s Goods are the same or of the same description as the goods for which the Opponent’s Trade Marks are registered. It is not in dispute that the parties target the same markets and that there is overlap in the goods being provided, namely surfboards and accessories for surfboards. The fourth requirement listed above is also satisfied.

19. The next consideration is whether the Trade Mark is substantially identical with, or deceptively similar to, the Opponent’s Trade Marks.

    Substantially identical

20. The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[6]

    [6] [1963] HCA 66, [12] (Windeyer J) (‘Shell’).

21. It is clear from a side-by-side comparison that there are visual and phonetic differences between the Trade Mark and the Opponent’s Trade Marks. The only common element shared by the marks is the letters ‘RYD’.

22. In my opinion a total impression of resemblance does not emerge from a side-by-side comparison of the Trade Mark and the Opponent’s Trade Marks. I am satisfied that the trade marks are not substantially identical.

    Deceptively similar

23. Section 10 of the Act defines “deceptively similar” as:

    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.

24. In Shell, Windeyer J provided the following insights on deceptive similarity:

    The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[7]

    [7] Ibid [13].

25. For the purposes of considering deceptive similarity, the reputation of the Opponent’s Trade Mark is not a relevant factor.[8] It is also unnecessary for me to consider the Opponent’s evidence regarding the Applicant’s lack of use of the Trade Mark in relation to the Applicant’s Goods, or the Applicant’s use of trade marks other than the Trade Mark. What must be considered is the impression that a person of ordinary intelligence and memory would likely have of the Trade Mark and of the Opponent’s Trade Marks, having regard to the look, sound, and ideas conveyed by the respective marks, and allowing for imperfect recollection.

    [8] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [93] (Yates, Abraham and Rofe JJ); Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [49] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

26. The Opponent asserts that the trade marks are deceptively similar because they share the same essential feature, namely the letters ‘RYD’. The Opponent submits that ‘RYD’ is merely an abbreviation of the word ‘RYDER’ that is the most prominent element of the Opponent’s Trade Marks, and that the Applicant’s and Opponent’s goods are likely to be known as ‘RYD surfboards’ and ‘RYDER surfboards’ respectively. The Opponent submits that, as a result, the buying public are likely to be deceived or confused.

27. Both of the Opponent’s Trade Marks and the Trade Mark begin with the letters ‘RYD’. However, that does not necessarily mean that the Opponent’s Trade Marks and the Trade Mark are deceptively similar. The question to be considered is whether the similarity gives rise to a real and tangible risk of confusion. In Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) O’Bryan J stated:

    That question is not answered simply by observing the degree of similarity (in the sense of the number of common words in the marks), but by considering the effect of the similarity. Attention must be given to the impression produced by the entirety of the marks, recognising that one word or feature of a mark can be more striking and memorable than another.[9]

    [9] [2021] FCA 328, [245].

28. The shared element ‘RYD’ in the Trade Mark and the Opponent’s Trade Marks is not, on its own, a sufficient basis to conclude that the trade marks are deceptively similar. The likely impression that a person of ordinary intelligence and memory would have of the Opponent’s Trade Marks is the common first name or surname ‘Ryder’. The likely impression of the Trade Mark is that of an invented word or an acronym consisting of the letters ‘RYD’ and the slogan ‘MAY THE WAVES BE GOOD WHERE YOU ARE’ (‘Slogan’).

29. Each of the trade marks must be considered in their entirety.[10] The Slogan presents the words ‘WAVES BE GOOD’ in a large, stylised font contrasted by the words ‘MAY THE’ and ‘WHERE YOU ARE’ in a simple block font immediately above and below the stylised text. The Slogan is placed adjacent to the slightly spaced and encircled letters ‘RYD’. Having regard to the Trade Mark as a whole, I consider the Slogan is likely to be recalled as an essential feature of the Trade Mark.

    [10] Food Channel (n 1) [92].

30. With regard to the Opponent’s Trade Marks, the Opponent’s Word Mark consists of the word ‘Ryder’ in conjunction with the descriptive term ‘Surfboards’. The Opponent’s Figurative Mark consists of curved lines above and below the word ‘RYDER’ in block letters. The stylisation of the Opponent’s Figurative Mark is minimal.

31. The Opponent also asserts, and the Applicant does not dispute, that the word ‘RYD’ in the Trade Mark is a play on the word ‘ride’ and the word ‘RYDER’ in the Opponent’s Trade Marks is a play on the word ‘rider’. For this reason, it is alleged that the Opponent’s Trade Marks and the Trade Mark convey the same idea, namely that of a surfer or ‘rider’ of a surfboard that ‘rides’ the waves. As evidence of this, the Opponent has cited the slogans used by the parties, namely:

    i.The Opponent’s use of “RYDERS OF FOAM”, ‘Designed by RYDER, for the RYDER’ and ‘Add some accessories to your Ryde’;[11] and

    ii.The Applicant’s use of the slogan ‘RYD WITH US’.[12]

    [11] Britten 1, Annexure MB-05.

    [12] Ibid Annexure MB-06.

32. Although it is a factor to be considered, the fact that two trade marks convey the same idea is not, in itself, generally sufficient to create a deceptive similarity between them. Based on my own personal knowledge, the words ‘ride’ or ‘rider’ are likely to be in common use in the market for surfboards and accessories therefor. For this reason, I am of the view that the Opponent cannot claim a monopoly on words conveying the concept of ‘riding’ the waves in the context of surfboards and accessories therefor. I consider the fact that the Trade Mark and each of the Opponent’s Trade Marks contain some variation of the word ‘ride’ is not sufficient to give rise to a real and tangible danger of confusion.

33. Lastly, in assessing whether there is a likelihood of deception or confusion, it is appropriate to consider the surrounding circumstances, including the prospective purchaser[13] and the normal and fair use for the Applicant’s Goods and for the goods for which the Opponent’s Trade Marks are registered.[14] I note the Applicant’s submission that the nature of the market for surfboards  is such that consumers are likely to be well-informed and educated, and consequently there is unlikely to be confusion between the trade marks. It is reasonable that the prospective purchaser would pay a considerable degree of attention when purchasing an item that falls within the scope of the Applicant’s Goods.

    [13] Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50] (French J).

    [14] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43, [11] (Mason J).

34. Considering all of the above, I am not satisfied that the Trade Mark is deceptively similar to either of the Opponent’s Trade Marks. Consequently, ground of opposition under the s 44 of the Act has not been established.

    Section 58A

35. The Opponent also relies on s 58A of the Act. Section 58A applies only when an application has been accepted under s 44(4) on the basis of prior continuous use or a similar provision of the Trade MarksRegulations1995 (Cth) (‘Regulations’) made for the purposes of Part 17A.[15]

    [15] Act s 58A(1).

36. The application for the Trade Mark was not accepted under the provisions of s 44(4) of the Act (or similar provisions under Part 17A), nor have I applied s 44(4) of the Act in my decision above. Accordingly, the ground of opposition under s 58A of the Act is not available to the Opponent.

1. The ground under s 58A of the Act is unsuccessful.

   Section 60

2. 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.

3. To establish a ground of opposition under s 60 of the Act, the onus is on the Opponent to demonstrate that:

   i.as at the Relevant Date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons; and

   ii.because of that reputation use of the Trade Mark would be likely to deceive or cause confusion.

4. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60 of the Act. Her Honour considered the definition provided in the Macquarie Dictionary and decided that reputation is ‘the recognition of the [trade mark] by the public generally’.[16]  Reputation cannot be assumed; it must be established as a matter of fact by the Opponent.[17]

   [16] [2000] FCA 1335, [81].

   [17] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

5. In Rodney Jane Racing Pty Ltd v Monster Energy Company, O’Bryan J observed that:

   The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[18] 

   [18] [2019] FCA 923, [83].

6. The Opponent’s Trade Marks are nominated as the basis for this ground of opposition in the SGP. The Opponent claims use of Opponent’s Trade Marks in Australia in relation to surfing apparatus and surf boards since around 2014, being approximately 7 years before the Relevant Date. The relevant market for the Opponent’s goods would be broad, being members of the Australian population with an interest in bodyboarding or surfing, as well as operators of surf schools.

7. The Opponent has provided very little evidence regarding its use of the Opponent’s Trade Marks in the Australian market. In support of its claim to a reputation, the Opponent refers to the number of stores across Australia that offer the Opponent’s RYDER products for sale. No details are provided as to the identity and location of the retail stores, or how long they have been offering the Opponent’s products for sale. Images of the Opponent’s RYDER surf boards being used by surf schools are also provided, but these images are undated and no details of the names or locations of any surf schools using the Opponent’s products are provided.

8. It is submitted that the Opponent’s Trade Marks are promoted on the Opponent’s Website. However, the Opponent has not provided any indication of the exposure of the Opponent’s Website in the marketplace, such as the number of visitors or views. The Opponent refers to use of the Opponent’s Trade Marks on social media but does not detail the number of followers of these accounts. Based on the evidence provided, it appears the Opponent’s Facebook page has a modest following.

9. The Opponent has not provided any details of revenue derived from, or promotional expenditure relating to, either of the Opponent’s Trade Marks. In the absence of any metrics in relation to the Opponent’s revenue and advertising, it is difficult to conclude that the Opponent had a reputation in either of the Opponent’s Trade Marks. 

10. On the evidence before me, I am not satisfied that the Opponent has established, as a matter of fact, that either of the Opponent’s Trade Marks were recognised in Australia at the Relevant Date by a significant or substantial number of potential consumers.

11. The s 60 ground of opposition has not been established.

    Decision

12. Section 55 of the Act relevantly provides:

    (1)  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.

13. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application number 2149207 may proceed to registration not less than one month from the date of this decision. 

14. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

    Costs

15. The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Regulations.

    Sheona Robertson
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    8 September 2023