Sara Lee Corp v Bali Blue Pty Ltd

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TRADE MARKS ACT 1995



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

Re:Opposition by Sara Lee Corporation to registration of trade mark application 884745(25 & 39) - BALI BLUE - filed in the name of Bali Blue Pty Ltd.

Delegate: Mary Skivington
Representation: Opponent: Banki Haddock Fiora Lawyers who filed written submissions.
Applicant: Unrepresented and did not file submissions.
Decision: Section 52 opposition - grounds of opposition under sections 58 and 60 not established - registration allowed.

Background

  1. Bali Blue Pty Ltd, ('the applicant'), filed trade mark application number 884745, on 3 August 2001. The subject trade mark is BALI BLUE.  The application specifies clothing in class 25 and travel and tourism services in class 39.

  2. Acceptance of the application was advertised in the Australian Official Journal of Trade Marks on 23 May 2002.

  3. Sara Lee Corporation, ('the opponent'), filed a notice of opposition on 23 August 2002, citing numerous grounds of opposition under the Trade Marks Act 1995, ('the Act'). The opponent's evidence in support of the opposition was filed on 16 April 2003.  The opponent advised that its courier was unable to locate the applicant's address for service and subsequent correspondence about this problem, from the IP Australia to the applicant, was unanswered.  In these circumstances, the evidence was taken to have been served and the date for evidence in answer was set for 23 August 2003. That date passed without any evidence being forthcoming and on 1 October 2003 the opponent requested a hearing and advised that it would rely on written submissions.

  4. Mr Simon Kneebone, a Partner with Banki Haddock Fiora, Lawyers, filed written submissions on 21 October 2003.  As a delegate of the Registrar of Trade Marks I am to decide the matter.

    The Evidence

  5. Evidence in Support

Date Declarant Exhibits
4 April 2003 Arthur J Debaugh, Assistant Secretary of Sara Lee Corporation and its Chief Counsel Intellectual Property. AJD-1 to AJD-3
25 March 2003 Douglas Ingleheart Steele, Managing Director of Dickory Dock (Aust) Pty Limited. DIS-1 to DIS-4

  1. Mr Debaugh, who is the Assistant Secretary of Sara Lee Corporation and its Chief Counsel for Intellectual Property, declares that the opponent is the owner of numerous trade mark registrations throughout the world, for the word BALI, which it uses in respect of brassieres, panties and foundation garments, ('the goods').  He declares that the first registration of the trade mark BALI was recorded in 1955 in Honduras but first use of the trade mark occurred in Canada in 1936.  Mr Debaugh declares that the opponent is the owner of Australian trade mark application number 924583, in class 25, for the word BALI. I note that the priority date of the opponent's application is later than that of the subject application. Mr Debaugh reports that the goods bearing the BALI trade mark are sold in Australia through its distributor, Dickory Dock (Aust) Pty Limited and that the BALI trade mark has been in continuous use in Australia since 1986.  Mr Debaugh provides sales…

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Details
Case
[2003] ATMO 81
Decision Date

CaseChat Overview and Summary

This matter concerned an opposition by Sara Lee Corporation (the opponent) to an Australian trade mark application by Bali Blue Pty Ltd (the applicant) for the word "BALI" in class 25, relating to clothing. The opposition was heard by a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were whether the grounds of opposition under sections 58 and 60 of the relevant Act were established. Section 58 concerns opposition on the basis that the applicant is not the owner of the trade mark, requiring proof that the opponent's mark and the subject mark are substantially identical, the goods are of the same kind, and the opponent's use predates the applicant's claim to ownership. Section 60 relates to opposition on the grounds that the applicant's trade mark is deceptively similar to a trade mark that the opponent has used or acquired a reputation in Australia.

The delegate considered evidence of the opponent's use of the "BALI" trade mark since 1936, primarily on brassieres and intimate apparel, with continuous use in Australia since 1986. However, the delegate found the sales figures to be modest and the promotional materials, while of high quality, did not demonstrate sufficient public exposure or awareness of the trade mark in Australia to establish the necessary reputation for the purposes of section 60. The delegate noted that while invoices showed sales of brassieres, they did not explicitly confirm the use of the "BALI" trade mark on those goods. Consequently, the delegate concluded that neither section 58 nor section 60 grounds of opposition were established.

The opposition was unsuccessful, and the delegate directed that the trade mark application could proceed to registration, subject to payment of the registration fee, unless an appeal was filed. No order for costs was made against the opponent.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

Mr Simon Kneebone, a Partner with Banki Haddock Fiora, Lawyers, filed written submissions on 21 October 2003. As a delegate of the Registrar of Trade Marks I am to decide the matter.The Evidence Evidence in Support Mr Debaugh, who is the Assistant Secretary of Sara Lee Corporation and its Chief Counsel for Intellectual Property, declares that the opponent is the owner of numerous trade mark registrations throughout the world, for the word BALI, which it uses in respect of brassieres, panties and foundation garments, ('the goods'). He declares that the first registration of the trade mark BALI was recorded in 1955 in Honduras but first use of the trade mark occurred in Canada in 1936. Mr Debaugh declares that the opponent is the owner of Australian trade mark application number 924583, in class 25, for the word BALI. I note that the priority date of the opponent's application is later than that of the subject application. Mr Debaugh reports that the goods bearing the BALI trade mark are sold in Australia through its distributor, Dickory Dock (Aust) Pty Limited and that the BALI trade mark has been in continuous use in Australia since 1986. Mr Debaugh provides sales figures, in American dollars, for the period March 1997 to May 2001. I regard these figures as modest. Exhibit AJJD-3 consists of copies of invoices to Dickory Dock(Aust) Pty Limited for this period. While it is clear that the invoices relate to brassieres there is no indication on the invoices as to what trade mark is used on these goods, so that they provide no proof of use of the trade mark in Australia during that period. Mr Steele declares that for twenty-three years he has been the Managing Director of Dickory Dock (Aust) Pty Limited, the Australian distributor of the opponent's products. He reports that Dickory Dock has continuously sold goods bearing the BALI trade mark, since 1986. Mr Steele declares that his firm supplies the goods to twenty outlets in the capital cities of Australia. These outlets are boutiques that specialise in intimate apparel. Mr Steele declares that the goods are promoted by way of direct marketing. Exhibit DIS-2 contains copies of price lists for BALI trade marked goods, in Australia, for the years 1998/1999, 1999/2000 and 2000/2001. Exhibit DIS-3 comprises a number of brochures used by Dickory Dock to promote goods bearing the trade mark, BALI. These brochures also show that BALI is used as a house mark in conjunction with many other trade marks, such as, 'Enchantress, Silken Desire, Eve's Leaves or Fitting Tribute'. Exhibit DIS-4 is a brassiere with the BALI trade mark sewn into the garment which also carries a swing tag with the BALI trade mark. Grounds of opposition Mr Kneebone submitted that the opponent relied on grounds of opposition under the provisions of sections 58 and 60 of the Act. He stated that the submissions relate only to clothing in class 25. I regard the remaining grounds of opposition specified in the notice of opposition as not established and formally dismiss them.Submissions and the lawSection 589.Section 58 of the Act provides that registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. Mr Kneebone submitted that the three elements that need to be established in order to satisfy this ground of opposition are:· it must be shown that the opponent's trade mark and the subject trade mark are at least substantially identical as held in Carnival Cruise Lines Inc. v Sitmar Cruises Limited, 31 IPR at 375; · the goods must be 'the same kind of thing' as per Hick's Trade Mark, (1897) 22 VLR 636 at 640; and · use of the opponent's trade mark must predate the applicant's claim to ownership.

Decision

Reasons for decision

To support its case, the opponent relies on the Debaugh and Steele declarations which provide some details of the opponent's history and commercial activities in both Australia and overseas. Specifically, Mr Debaugh's declaration indicates that, since the first use of the BALI trade mark in 1936, it has been used and registered in many countries of the world. The trade marks have been used essentially on brassieres and other items of intimate apparel. However, in my opinion, sales in Australia are not high and the direct marketing method of promotion means there has been only limited exposure of the trade mark to the Australian public at large. The reputation in Australia cannot be assumed - it must still be established as a question of fact - per Lockhart J, in Conagra Inc v McCain Foods (Aust) Pty Ltd, (1992) 33 FCR at 302. There is no evidence demonstrating a public awareness of the BALI trade mark. While as Mr Kneebone said, the brochures provided to retailers are high quality productions, there is no evidence that anyone other than the retailers themselves see them and there is no evidence of any other form of advertising. It is one thing to sell goods, it is quite another to show that they have amassed a reputation which is sufficient to lead consumers into deception or confusion and to satisfy the requirements of section 60. The materials on file are insufficient to show that the requisite reputation had been established by 3 August 2001. On that basis I find that the section 60 ground of opposition has not been established.Decision None of the grounds of opposition has been made out. The opposition is therefore unsuccessful. I direct that the trade mark application may proceed to registration, subject to the payment of the registration fee, one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.Costs It is usual for costs to be awarded against the unsuccessful party. In this case, I do not think the applicant has incurred any costs in these proceedings and therefore I make no award of costs against the opponent.Mary SkivingtonHearing OfficerTrade Marks Hearings 19 December 2003

Ratio Decidendi

Legal Principle Established

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