Saks & Company v Ebru Sak

[2012] ATMO 32

TRADE MARKS ACT 1995

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

Re:Opposition by SAKS & COMPANY to registration of trade mark application 1287716 (44) - SAKS INTERNATIONAL - filed in the name of Ebru Sak.

Delegate:

Bianca Irgang

Representation:

Opponent: Mr Khajaque Kortian of Spruson & Ferguson

Applicant: Not present at the hearing.

Decision:

2012 ATMO 32

s. 52 opposition: sections 42, 43, 44, 60 and 62A pressed – s 60 ground of opposition established for all services - trade mark use likely to deceive or cause confusion - no requirement to consider other grounds.

Background

1. Ebru Sak (‘the applicant’), filed application number 1287716 on 4 March 2009 in class 44 of the International Classification of Goods and Services (‘Nice’ classification). The application was examined, accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 9 July 2009.  Current details of the application are set out below.

Trade mark:  Saks International

Trade mark application:              1287716

Filing Date:  4 March 2009

Specification:  Class 44: Hairdressing salons; beauty salon services; beauty salons

1. SAKS & COMPANY (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to the registration of the application on 9 October 2009. Thereafter the opponent served and filed evidence in support in accord with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

2. I heard the matter in Sydney as a delegate of the Registrar of Trade Marks on 20 October 2011. The opponent was represented by Mr Khajaque Kortian of Spruson & Ferguson. The applicant did not appear at the hearing but did provide written submissions for consideration.

Grounds of Opposition

1. The Notice nominated most of the grounds of opposition under the Trade Marks Act 1995 (‘the Act’). However, the primary grounds the opponent pursued at the hearing were under sections 42, 43, 44, 60 and 62A of the Act.

2. 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, has been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

   [1] 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]

Evidence

1. The evidence of the parties consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Gerard James Skelly	Principal of Spruson & Ferguson	11 October 2010	GJS-1 to GJS-4
Sunny S. Park	Vice President and Associate General Counsel for Saks, Incorporated	7 December 2010	A to D

Opponent’s Evidence

1. Mr Park states in his declaration (‘the Park declaration’) that the opponent opened its flagship store on September 15, 1924 in New York, United States. Since then, the opponent has enjoyed business success and maintains a strong global presence through its well respected line of department stores and its website:

2. The opponent is the owner of the following registered “SAKS” trade marks in Australia:

Trade mark:  

Trade mark registration:             404341

Filing Date:  27 February 1984

Specification:  Class 25: Clothing, footwear, headgear

Endorsements: The provisions of section 24(2) and section 34(1) applied. The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.

Trade mark:  

Trade mark registration:             404342

Filing Date:  27 February 1984

Specification:  Class 42: Department store services and services in this class rendered or associated with the retailing of clothing, footwear and head gear.

Endorsements: The provisions of section 24(2) and section 34(1) applied. The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.

Trade mark:  SAKS FIFTH AVENUE

Trade mark registration:             957725

Filing Date:  12 June 2003

Specification:  Class 25: Clothing, footwear, headgear; clothing for men, women and children, including suits, leather coats, leather jackets, pant suits, coats, dresses, skirts, shirts, tops, bottoms, jackets, blouses, pants, sweaters, vests, jumpsuits, bodysuits, bustiers, underwear, lingerie, pyjamas, loungers, bras, camisoles, panties, stockings, socks, gloves, swimsuits, bathrobes, scarves, belts, hats, caps, collars, ties, cumberbunds, T-shirts, tunics, turtlenecks, cardigans, shirt jackets, shirt dresses, jeans, blazers, sweatpants, sweatshirts, tights, leggings, trousers, loungewear, jogging sets, evening gowns, unitards, leotards, jerseys, chemises, beachwear, blouses, boxer shorts, capes, clothing dusters, foundation garments, fur coats, fur jackets, fur stoles, head wear, housecoats, jeans, jodhpurs, jogging suits, knit shirts, neckerchiefs, neckties, negligees, night gowns, night shirts, pedal pushers, peignoirs, petticoats, polo shirts, pullovers, rainwear, robes, sun visors, teddies, leg warmers, boots, sneakers, sandals and shoes for men, women and children

Endorsements:  Provisions of paragraph 44(3)(b) applied

1. Mr Park also states that the opponent has used its SAKS trade marks in relation to beauty salons and that 17 of its United States retail stores currently feature beauty salons and spas called “The Salon at Saks Fifth Avenue”.

2. According to Mr Park, the opponent has over 15,000 employees and operates 47 SAKS FIFTH AVENUE stores and 58 SAKS FIFTH AVENUE OFF 5^TH stores. In the summer of 2000, the opponent also launched is saks.com website offering the same goods as its SAKS FIFTH AVENUE stores to Internet users worldwide.

3. Mr Park states that the opponent has regularly placed advertisements in English language publications that are made available in Australia (exhibit A). Exhibit A also contains a listing of the advertisements placed since February 2005 along with a table listing their publication dates. The opponent’s store has also been featured in prominent films and television programs which are distributed in Australia. Recent examples include Sex & the City (television series, 1998), What Women Want (2000), Gossip Girl (television series, 2007) and The Women (2008).

4. Mr Park says that the opponent has enjoyed a ‘robust popularity with international customers, and Australian customers in particular’. Exhibit B accompanying the Park declaration does demonstrate that a number of Australian customers have purchased goods from the opponent via the telephone and online services provided. These sales are a significant amount particularly given that the opponent’s sales have only been made by internet and telephone orders.

Discussion

Section 60 - Reputation in Australia

1. 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.

1. To establish the ground of opposition under section 60, the opponent must demonstrate:

Øthat, at the priority date of the opposed application, another trade mark had acquired a reputation in Australia; and

Øthat because of the reputation of the other trade mark, use of the applicant’s trade mark would be likely to deceive or cause confusion.

1. 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 and services 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 SAKS trade marks which is sufficient to establish that use of the opposed trade mark would be likely to deceive or cause confusion.

2. The principles relevant to the assessment of the likelihood of confusion, etc, are set out by French J in Registrar of Trade Marks v Woolworths[3]:

   [3] [1999] FCA 1020 at paragraph 50

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (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[4]:

   [4] [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.”

3. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[5] by Kenny J at paragraph 81:

   [5] [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?

4. Considering the evidence, there is little doubt that the opponent enjoys a very extensive and long standing reputation for its SAKS FIFTH AVENUE branded goods and services in the US and internationally. However, the onus is on the opponent to demonstrate that a reputation in its SAKS 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”[6].

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

5. The opponent’s advertising of its SAKS goods and services through printed publications combined with its SAKS store placements in feature films and television programs makes it likely that a considerable number of Australian customers are aware of the opponent’s goods and services. In saying this I also turn to the evidence of tourism levels between Australia and the US which is located in exhibit D. These official figures from the U.S. Department of Commerce, International Trade Administration and Office of Travel and Tourism Industries demonstrate considerable traffic between the US and Australia which has occurred prior to the filing date of the opposed application. It is likely a number of Australian tourists would have come into contact with some of the opponent’s advertising material while in the US and brought these impressions back with them to Australia.

6. It is clear that the opponent has enjoyed a significant reputation for its SAKS stores which has spread to Australia. The evidence does show that the numbers of sales to Australian customers is considerable and that these sales took place prior to 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 SAKS trade marks before the priority date of the opposed trade mark.

7. It now needs to be determined 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 services which may be different from the opponent’s goods and services. 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[7].

   [7] 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)

8. A consideration of the opponent’s SAKS FIFTH AVENUE trade marks reveals that the most striking and prominent feature of the mark is the word SAKS. The applicant’s trade mark is the expression SAKS INTERNATIONAL. Even though the respective trade marks contain additional words such as FIFTH AVENUE and INTERNATIONAL, I consider that the common word SAKS is the most distinctive and striking part of the trade marks. In particular I note that the use of the word INTERNATIONAL in the applicant’s trade mark alludes to an ‘international’ association. I believe that this word is likely to further emphasise a possible connection between the opponent’s SAKS goods and services and those of the applicant.

9. I consider that, given the reputation evidenced by the opponent in its SAKS trade marks, a significant number of Australian consumers would at the very least subscribe to a reasonable doubt[8] as to some sort of connection between that well-known trade mark and the applicant’s trade mark. Particularly since the trade marks are similar, the degree of speculation would, in my assessment, rise to, at the very least, the reasonable doubt required to trigger section 60.

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

10. The ordinary consumer would, in my view, reasonably subscribe to the view that the applicant’s SAKS INTERNATIONAL trade mark had been adopted for no reason other than to denote a connection with the commercial success of the opponent’s SAKS trade marks. Therefore, the opponent has established a ground of opposition under the provisions of section 60. 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

1. Section 55 of the Act 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.

1. 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 1287716.

Costs

1. 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 Ebru Sak.

Bianca Irgang

Hearing Officer

Trade Marks Hearings

30 March 2012