Sara Lee Corp v Bali Blue Pty Ltd
[2003] ATMO 81
•19 December 2003
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
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.
Acceptance of the application was advertised in the Australian Official Journal of Trade Marks on 23 May 2002.
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.
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
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
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 law
Section 58
9.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.
The specification of goods in class 25 in the subject application reads, 'clothing'. Clearly this is an inclusive term that embraces the goods in which the opponent trades. It cannot be disputed that the goods are 'the same kind of thing.
Mr Steele's evidence demonstrates that the opponent has used the BALI trade mark on clothing from a date that predates the priority date of the BALI BLUE trade mark. Two of the three elements have therefore been established. It remains for me to consider if the two trade marks are substantially identical.
In determining if trade marks are substantial identical, Mr Kneebone said that the tests were set out by Windeyer J, in Shell Co of Australia v Esso Standard Oil, (1961) 109 CLR 407, at 414, where he said,
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.
Mr Kneebone argued that the essential feature of both trade marks is the word BALI and the word BLUE in the applicant's mark is only a descriptive reference to colour. He submitted that because the word BALI is the whole of the opponent's trade mark and the first word of the subject trade mark there is a 'total impression of resemblance or similarity' between the trade marks which, in his opinion, indicates that the trade marks are substantially identical.
I do not agree with Mr Kneebone. In Carnival Cruise Lines, supra, Gummow J said in respect of substantially identical trade marks,
It requires a total impression of similarity to emerge from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other.
In a side by side comparison there are obvious differences in the trade marks. The word BLUE is a major element of the applicant's trade mark which is not present in the opponent's trade mark. I consider that it alters the identity of the trade mark in a substantial way. BALI and BLUE are both four-letter words that are equally prominent in the opposed trade mark. Individually neither of these words is well adapted to distinguish as one is a colour description and the other the name of an island province of Indonesia. Bali has been a holiday destination for Australians for many years and since the tragic events of 12 October 2002, there would be few Australians unaware of its geographic significance. However, in combination the two words, BALI and BLUE create an unusual, distinctive, and alliterative expression. The idea of the trade mark BALI BLUE is different from the ideas created by the individual words from which it is composed.
I find that that BALI and BALI BLUE are not substantially identical. This ground of opposition has not been established.
Section 60
In order to satisfy a ground of opposition under section 60 of the Act, the opponent must establish that the applied for trade mark is substantially identical with or deceptively similar to another trade mark that acquired a reputation in Australia before the priority date of the applied for trade mark, and because of that reputation, use by the applicant of its trade mark, would be likely to deceive or cause confusion. Section 60 does not require the relevant goods or services to be the same or closely related nor does it require the trade mark on which the opponent relies to be registered or the subject of an earlier filed application for registration.
I have already found that the trade marks are not substantially identical so I must now consider if they are deceptively similar.
Mr Kneebone submitted that the respective parties' trade marks 'have the distinctive word BALI in common'. While the common element in these trade marks is the word BALI, I do not agree with Mr Kneebone, that it is a distinctive word. It is word, widely recognised as having geographic significance. Geographic place names may be used in trade marks to indicate the place of origin of the goods, rather than indicating the trader from whom the goods originate. Any trader in Bali who produces clothing is entitled to use the word Bali to indicate the geographic origin of the clothing. I note that there is a clothing industry in Indonesia and that Bali is the origin of some of the goods produced there.
Other traders include a geographic name in their trade marks with the intention of bestowing on the goods or services some of the aura, glamour, prestige or mystique associated with the geographic name. For these reasons when comparing trade marks for deceptive similarity, a geographic name in a trade mark can be afforded little weight if it is likely that the relevant goods could be produced there.
In support of his argument that the trade marks are deceptively similar Mr Kneebone referred to London Lubricants Ltd's Application, 42 RPC 264 and Hannaford & Burton Ltd v Polaroid Corporation, [1976] 2NZLR 14 at 19. Mr Kneebone submitted that the opponent's trade mark is BALI and the inclusion of this word as the first word of the applicant's trade mark means that the trade marks look and sound deceptively similar. He added that given the principle of imperfect recollection there is a high likelihood of deception and confusion between the trade marks. Mr Kneebone also referred me to Registrar of Trade Marks v Woolworths Ltd, 45 IPR 411, Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, Torpedo's Sports Wear Pty Limited v Thorpedo Enterprises Pty Limited, (2003)FCA 901 and Anheuser-Busch Inc v Budejovicky Budvar, 56 IPR 182 at 217.
In John Fitton & Co Ltd's Application (1949) 66 RPC 110 at 113 the Assistant Comptroller said:
..the Registrar is required to postulate a simultaneous use of the two marks under consideration, whether or not one is already in use, and to assess to the best of his ability the likelihood of ensuing confusion or deception, and no limitation is, to my mind, placed upon the nature of the confusion or deception so envisaged, whether it be visual or phonetic confusion of the marks themselves, or what is termed contextual confusion, or confusion or deception as to the trade provenance of the goods.
I do not think that BALI and BALI BLUE are deceptively similar in a visual sense or a phonetic sense but if the trade marks were used in respect of the same goods and the goods so marked, were available for purchase in the same stores I think that there is a real risk that consumers would believe that they came from the same source and for this reason I find that they are deceptively similar.
Turning now to the matter of the opponent's reputation in its trade mark, Mr Kneebone submitted that the Debaugh and Steele declarations, attesting to use of the trade mark, BALI, demonstrate that the mark had acquired a reputation in Australia prior to the priority date, 3 August 2001, of the subject application. He said that the evidence of promotion of the goods and the sales figures indicate that at the filing date the opponent had a strong reputation in Australia.
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 Skivington
Hearing Officer
Trade Marks Hearings
19 December 2003
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