Sarah Cocker v Vincona Pty Ltd

[2012] ATMO 109

TRADE MARKS ACT 1995

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

Re:Opposition by SARAH COCKER to registration of trade mark application nos. 1348079 (16) and 1348080 (35) - ASK ALICE - filed in the name of VINCONA PTY LTD.

Delegate:

Heath Wilson

Representation:

Opponent: Ian Horak of Counsel instructed by Davies Collison Cave, Patent and Trade Mark Attorneys

Applicant: Peter Dummer of Wallington – Dummer, Patent & Trade Mark Attorneys

Decision:

2012 ATMO 109

Section 52 opposition – sections 58, 59, 60, 62A of the Act pressed – section 58 and 59 established for one trade mark – one trade mark refused and one trade mark proceeds to registration – no award of costs.

Background

1.     On 1 March 2010, Vincona Pty Ltd (‘the Applicant’) applied to register the following trade marks:

TM No.	Trade Mark	Class / Statement of Goods and Services
1348079	ASK ALICE	Class 16: Cases for stationery; cassettes for adhesive tapes for stationery use; chalk being articles of stationery; document cases for files (stationery); document containers (stationery); document files (stationery); document folders (stationery); document holders (stationery); document pockets (stationery); document pouches (stationery); document wallets (stationery); envelopes (stationery); erasers (stationery); etching devices for stationery use; expanding envelopes (stationery); expanding files (stationery); files (stationery); forms (stationery); gift stationery; glitter glue for stationery purposes; index cards (stationery); inserts for files (stationery); label holders (stationery); laminated cards (stationery); loose-leaf stationery; magnetic letters (stationery); note blocks (stationery); notelets being stationery for social purposes; office stationery; office supplies (stationery); paper stationery; party stationery; plastic covers for use as stationery; pocket books (stationery); polyester tape for stationery use; portfolios being stationery cases for holding documents; portfolios being stationery cases for holding plans; pouches (stationery); printed continuous stationery; printed stationery; project folders (stationery); quick bonding adhesives for stationery use; quick release files (stationery); rolls of adhesive for stationery use; rubber adhesives for stationery use; rubber bands (stationery); rubber based adhesives for stationery use; rubber based cements (adhesives) for stationery use; sample folders (stationery); scented stationery; school supplies (stationery); sealing compounds for stationery purposes; sealing tape for stationery use; sealing tape of plastics for stationery use; sealing tape of rubber for stationery use; starch paste (adhesive) for stationery or household purposes; stationery; stationery cabinets (other than furniture); stationery cases; stationery for children's educational activities; stationery for computers; stationery for domestic purposes; stationery for household purposes; stationery for use in the carrying out of financial transactions; stationery for use in the educational field; stationery for use with computers; stationery for use with data processing apparatus; stationery goods; stationery holders for desks; stationery in the form of cards; stationery in the nature of files; stationery materials; stationery paper; stationery racks; stationery relating to holidays; stationery trays; stencils (stationery); stickers (stationery); storage wallets of card (stationery); storage wallets of cardboard (stationery); surface adhesives for stationery use; tabs (stationery); tags (stationery); tags made of plastics materials (stationery); tape for binding (stationery); tape for wrapping (stationery); wallets of plastics for holding documents (stationery); wallets of plastics for holding papers (stationery); webs of paper-backed plastics (stationery); wrappers (stationery); writing cases (stationery)
1348080	ASK ALICE	Class 35: Discount services (retail, wholesale, or sales promotion services); distribution of goods (not being transport services) (agent, wholesale, representative services, by any means)

2.     The above trade mark applications were examined and their acceptance was advertised in the Australian Official Journal of Trade Marks on 1 July 2010. The trade marks were opposed by Sarah Cocker (‘the Opponent’) via notices of opposition filed on 12 July 2010. The notices nominated each available ground of opposition under the Trade Marks Act 1995 (‘the Act’).

3.     Evidence was duly filed and served by the respective parties comprising:

Evidence in Support

·     Statutory declaration of Sarah Cocker dated 19 October 2010 with exhibits SC-1 to SC-10.

·     Statutory declaration of Catherine Shann (Director of ‘Bobangles’ - the Opponent’s distributor) dated 19 October 2010 with exhibits CS-1 to CS-6.

Evidence in Answer

·     Statutory declarations of Daisy Lam (Director of the Applicant) dated 25 March 2011 with exhibits Dl-1 to DL-15 and DLL-1 to DLL-3.

·     Statutory declaration of Kitty Yi dated 25 March 2011 with exhibits KY-1 and KY-2.

Evidence in Reply

·     Statutory declaration of Kimberley Trainor dated 18 November 2011 with exhibits KJT-1 to KJT-3.

·     Statutory declaration of Sarah Cocker dated 16 November 2011 with exhibits SC-1 to SC-3.

4.     The Opponent Ms Cocker declares that she originally came up with the trade mark ‘ASK ALICE’ to use in relation to her new range of stationery as:

I was aware of a general interest in the classic storybook fantasies such as “Alice in Wonderland” and the projection of a creative image amongst consumers. I was also inspired by a line in a song by “Jefferson Airplane”, namely, “go ask Alice when she’s ten feet tall”.[1]

[1] First statutory declaration of Sarah Cocker, paragraph 5.

5.     According to the filed evidence, the Opponent subsequently developed the following ‘ASK ALICE logo’ in December 2008:

6.     Around this time, the Opponent began contacting various printing companies to develop and manufacture her line of stationery bearing her trade marks. These stationery products were later distributed in Australia and internationally by Bobangles (hereafter ‘the Distributor’). In February 2009, the Distributor first displayed a sample range of the Opponent’s stationery including a notebook and cards bearing the ASK ALICE trade mark(s) at a trade show in Sydney. The Opponent’s trade mark(s) have been used in Australia since that date in relation to a broader range of stationery.

7.     The declaration of Daisy Lam (Managing Director of the Applicant) indicates that she has been in the fashion and accessories industry for many years and the Applicant’s creation of its ASK ALICE label began in August 2009. She declares[2]:

I came up with the name ASK ALICE because I was inspired by Tim Burton’s “Alice in Wonderland” remake film. My goal was to complete the concept and production of my ASK ALICE range by the time the movie was released for public viewing in 2010.

[2] First statutory declaration of Daisy Lam, paragraph 14.

8.     Unlike the Opponent’s statutory declaration outlining the coining of her ASK ALICE trade mark(s), the above statement does not explain why the original expression ‘ASK ALICE’ was adopted as a trade mark by the Applicant. Ms Lam later makes the general statement that trends emerge in business and suggests that two traders coming up with the same expression around the same time is simply indicative of a trend arising from the popularity of the then upcoming ‘Alice in Wonderland’ film.

9.     In February 2010, the Distributor attended the Reed Gift Fair in Sydney to promote the Opponent’s stationery products, a gift fair that the Applicant also attended. Both the Opponent and Ms Shann attest to a discussion regarding the use of the ASK ALICE trade marks in relation to stationery with Ms Lam, director of the Applicant. After the conversation, on 1 March 2010 (the day after that discussion, according to Ms Shann), the Applicant filed the opposed trade mark applications. The Opponent argues that while the Applicant was using ASK ALICE in relation to clothing and accessories at the time of the fair, the Applicant’s trade mark use in relation to stationery products only commenced after filing.

10.   After the Applicant’s trade marks were accepted at the examination stage (but before that acceptance was advertised), an email was sent from the Ms Lam to the Opponent on 21 June 2010 anticipating the filing of oppositions to its trade mark applications. The contents of that email are pertinent to this decision and will be discussed later.

11.  As anticipated, the Applicant’s trade marks were opposed by the Opponent. Once all evidence stages had been completed and written submissions had been served and filed by the parties, I heard the opposition in Canberra on 22 August 2012 as a delegate of the Registrar of Trade Marks. Ian Horak of Counsel instructed by Davies Collison Cave, Patent and Trade Mark Attorneys appeared for the Opponent. Peter Dummer of Wallington-Dummer appeared via teleconference on the Applicant’s behalf.

12. The Opponent only pursued the grounds of opposition under sections 58, 59, 60 and 62A of the Act. The onus of establishing one (or more) of these grounds in relation to each trade mark application rests with the Opponent and the requisite standard of proof to which the Opponent must establish one of the grounds is the balance of probabilities.[3]

[3] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26] and Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per McKerracher J at [9] to [10].

Reasons

13. Section 58 of the Act provides:

Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:For applicant see section 6.

14.   It is well established that the first person to apply to register a trade mark will, in most cases, be entitled to claim to be the owner.  An exception to this general statement will apply if a trade mark has been used before the filing date (in this instance, 1 March 2010).  In that event, and in the absence of fraud, the owner of a trade mark in Australia for the particular goods or services is taken to be the first person to use it (‘first user’) in the course of trade in Australia in relation to those goods or services.[4] The first user need not have invented or first thought of the trade mark,[5] but rather it is the first party to use it in a trade mark sense in Australia.

[4] Settef SpA v Riv-OlandMarble (Vic) Pty Ltd 10 IPR 402 at 413.

[5] Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391; [1960] ALR 605; 34 ALJR 242 at 399 per Fullagar J.

15.   If the Opponent establishes that a party other than the Applicant first used a ‘substantially identical’[6] trade mark in Australia on goods/services that are the ‘same kind of thing’[7] as the Applicant’s goods and services, then the Opponent will have established that the Applicant is not the owner of the trade marks.

[6] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375.

[7] Re Hicks Trade Mark (1897) 22 VLR 636.

A ‘Substantially Identical’ Trade Mark  

16.   The relevant test for the assessment of whether two trade marks are substantially identical was set out by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:[8] 

[the trade marks] 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.

[8] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at [414-415].

17.   At the hearing of the opposition, the Applicant did not dispute that the Opponent was using an identical trade mark (being the words ASK ALICE simpliciter) or at the very least one that is substantially identical (the ASK ALICE logo[9]) to the opposed trade mark applications. In relation to the composite ASK ALICE logo, that trade mark does contain certain differences to the opposed trade marks (such as the border encompassing each letter accompanied by a small numeral – giving a visual impression of ‘Scrabble®’ pieces)[10], but the essential identifying feature (i.e. the expression ‘ASK ALICE’) remains identical and there is a total impression of resemblance between the Opponent’s and the Applicant’s trade marks. I find that they are substantially identical and "in a real sense a claim to proprietorship of the one extends to the other."[11]

[9] See paragraph 5 of this decision.

[10] See Wagner Spraytech Australia Pty Ltd v Anest Iwata Australia Pty Ltd [2009] ATMO 32; Warner- Lambert Co v Harel (1995) 32 IPR 189; George Weston Foods Ltd v Peerless Holdings Pty Ltd (1999) 48 IPR 145 for examples where the inclusion of a simple device and/or border did not preclude a finding of substantial identity.

[11] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 (at page 391).

18.   The decisive issue is when the Opponent’s use of its ASK ALICE trade marks commenced in relation to both stationery and the provision of retail services. The consideration of whether that trade mark use was in respect of the ‘same kind of thing’ as the goods and services in the Applicant’s specifications forms part of the consideration.

The Applicant’s Trade Mark Use

19.   Ms Lam declares that the creation of the Applicant’s ASK ALICE brand began in August 2009 with preparation for the concepts and images comprising the ASK ALICE range of stationery commencing in October 2009, but it was not until February 2010 that the ASK ALICE range was officially launched.[12] I note that the Applicant does not deny the Opponent’s allegation that it was only using ASK ALICE in relation to jewellery and clothing at the Sydney Trade Fair in February 2010. In any event, the evidence does not support use of the trade marks in relation to stationery products from that early date. Exhibits DL-6 and 7 consist of an undated piece of artwork for a swing tag featuring the words “ASK ALICE Welcome to our Wonderland…” In the absence of a clear statement of its use in relation to stationery,  it is likely that this artwork was originally for items of clothing or jewellery, being items that more commonly bear swing tags and ‘woven labels’ (as they are described in the exhibit).  

[12] First declaration of Daisy Lam, paragraphs 12 and 15.

20.   Exhibit DL-8 consists of emails between Ms Lam and her graphic designer from November until December 2009. While there are numerous discussions of various animal print designs, there is no mention anywhere in this correspondence of the trade mark ‘ASK ALICE’ and the products referred to are instead prints for dresses and shirts rather than for stationery.

21.   Ms Lam indicates that the Applicant only sells and offers ASK ALICE products via the Internet and at trade fairs. According to her declaration the Applicant apparently launched clothes, scarves and handbags under the ASK ALICE range on the Vincona website ( some time before February 2010. The examples provided in support of this statement refer to the domain name which was registered by the Applicant in December 2009. Therefore the earliest use of the Applicant’s trade marks was somewhere between December 2009 and February 2010, but only in relation to clothing, bags and accessories.     

22. All other evidence of the Applicant’s trade mark use (including that in relation to stationery) occurs after the priority date. The Opponent must therefore demonstrate use of her trade marks before 1 March 2010 in relation to the Applicant’s goods and services in order to establish the section 58 ground of opposition.

Use of the Opponent’s Trade Marks

23.   The Opponent has provided dated evidence of the creation and design of her ‘ASK ALICE logo’ from 19 December 2008.[13] While this is not evidence of trade mark use in the course of trade,[14] it does provide a firm basis which highlights the natural progression of the trade mark use to follow. Until January 2009, the Opponent engaged in various discussions with possible manufacturers for the stationery.    

[13] Declaration of Sarah Cocker, exhibit SC-1.

[14] P & T Basile Imports Pty Ltd v Societe Des Produits Nestle SA (2002) 55 IPR 216 where the design of a label did not by itself amount to use of the trade mark.

24.   The Opponent attests to use of the ‘ASK ALICE logo’ in relation to a display of sample stationery at the Sydney Reed Gift Fair in February 2009. The Opponent’s participation in this event is confirmed by emails from third parties after the fair asking to feature the Opponent’s products in their magazines and photo shoots.[15] In exhibit SC-9, the display of product samples was described by the production supervisor of the Reed Gift Fair as “mock ups displayed on site”. While there does not need to be an actual sale of goods for use to be established, the offer for sale or the distribution of samples must occur when the goods are available for order or purchase.[16] I am not satisfied from the evidence supplied that this was the case at that time. As a consequence, I find that this display of samples did not amount to use in the course of trade.

[15] Exhibits CS-1, CS-2 and SC-9.

[16] Radford & Co's Application (1951) 68 RPC 221; Settef SpA v Riv-Oland MarbleCo (Vic) Pty Limited (1987) 10 IPR 402.

25.   Despite my finding above, I am satisfied that at least by July 2009, the Opponent’s stationery bearing her ASK ALICE trade marks was available in the course of trade. In the July/August 2009 edition of Greetings and Gifts (a publication of the Reed Gift Fair) the Opponent and its products are clearly featured. I am further convinced that use of the trade marks by the Opponent has been continuous since that time on stationery products. This is evidenced in part by advertisements under the Distributor’s name appearing in printed publications such as “Greetings and Gifts” (September/October 2009), “Milieu” (August 2009) and the “Australian Gift Guide” (July-September 2009).

The ‘Same Kind of Thing’

26.   The statutory declaration of Catherine Shann (Director of the Distributor) and the attached exhibits indicate that the Distributor is the company offering retail services albeit under the ‘Bobangles’ brand. One of the products offered for sale under that brand are the Opponent’s ASK ALICE stationery products. Therefore, the Distributor in the words of the Explanatory Note to the 9^th Edition of the Nice Classification brings together:

[F]or the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods; such services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes.

27.   However, I am not satisfied that the trade mark ASK ALICE has been used by the Opponent in relation to retail services before the priority date of the opposed trade mark applications. I must then consider whether stationery items are ‘the same kind of thing’ as the “Discount services (retail, wholesale, or sales promotion services); distribution of goods (not being transport services) (agent, wholesale, representative services, by any means).” I note that those services include (but are not limited to) the retail, wholesale and distribution of stationery.

28.   In the decision of GSM (Trademarks) Pty Ltd v Blue Eye Holdings Pty Ltd[17], the delegate found that use in relation to ‘mobile phones’ was the ‘same kind of thing’ as ‘Retailing and wholesaling of mobile phones, accessories and telecommunication services packages’. She referred to the Hicks' Trade Mark (supra) case commenting:

When that case was decided service marks were not recognized. Trade marks could only be registered in respect of goods. The phrase ‘the same kind of thing’ is somewhat lacking in precision or exactness and for this reason I consider that in a market where both goods and service marks may be registered it may be interpreted as encompassing goods and closely related services.

[17] GSM (Trademarks) Pty Ltd v Blue Eye Holdings Pty Ltd [2005] ATMO 44 at [17]

29.   The primary judge in Colorado Group Ltd v Strandbags Group Pty Ltd (No 2)[18] found:

In my opinion, speaking generally it is only when retailing services consist of supplying the very goods in respect of which it is said the services are related that the services and goods will be closely related: see Warnaco US Inc v Estee Lauder Cosmetics Ltd (2001) 50 IPR 143, K Mart Corporation v Artline Furnishers Supermarkets Pty Ltd (1991) 23 IPR 149.

[18] Colorado Group Ltd v Strandbags Group Pty Ltd (No 2) [2006] FCA 880; (2006) 69 IPR 281; [2006] AIPC 92-206.

30.   However, as said Yates J in Optical 88 Limited v Optical 88 Pty Limited (No 2):[19]

There is a suggestion in the literature that use of a mark in relation to retail services for goods is use equally in relation to the goods themselves. In my view that simply does not follow.…

It is perhaps sufficient for me to say that there is no principle of general application in Australian trade mark law that use of a mark in relation to retail services for goods is use in relation to the goods themselves.

[19] Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380 [at 221].

31.   I do not find that use of the Opponent’s trade marks in relation to stationery constitutes use on goods that are the ‘same kind of thing’ as the services contained in class 35 of the Applicant’s specification.  

32. The aforementioned use of ASK ALICE on goods is in relation to postcards, envelopes, pencils, sketch books and notebooks and these goods are the ‘same kind of thing’ as the Applicant’s goods in class 16. The Applicant argued that if the Opponent has established any trade mark use, it is only in relation to a smaller range of stationery than that claimed in the Applicant’s specification of goods. Despite this argument, I am satisfied on the balance of probabilities that use of ‘ASK ALICE’ on the same kind of thing as the class 16 goods has been demonstrated and the Applicant is not the owner of trade mark no. 1348079. Section 58 has been established in relation to that trade mark only.

33. Section 59 of the Act provides:

Applicant not intending to use trade mark

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or

(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note:  For applicant see section 6.

34.   The relevant date for assessing the intention to use the trade mark is at the time of filing although circumstances arising after that date may be relevant for drawing inferences as to the Applicant’s original intention.[20] An assessment of section 59 begins with the prima facie assumption that by filing the trade mark the applicant has an intention to use it on or in relation to the goods.[21] That assumption however may be rebutted by slight evidence[22] from the Opponent.  

[20] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [at 74].

[21] Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391; [1960] ALR 605.

[22] Estex Clothing Manufacturers Pty Ltd v. Ellis and Goldstein Ltd [1966] HCA 51; (1967) 116 CLR 254

35.   The timing of the filing of the opposed trade mark applications should be considered in light of all the other surrounding circumstances. As previously highlighted, the Reed Gift Fair ran from 27 February 2010 to 3 March 2010 and the day after the conversation took place between Ms Shann and the Applicant, the Applicant filed for the trade marks in classes 16 and 35. However, it is also noteworthy that on the same day the Applicant applied to register a number of identical ASK ALICE trade marks in a range of different classes. The other ASK ALICE trade marks were broadly in relation to clothing in class 25 (no. 1348066), handbags in class 18 (no. 1348070) and jewellery in class 14 (no. 1348072).

36.   Prior to 1 March 2010, the Applicant had previously registered a number of other trade marks some claiming stationery items in class 16. Ms Lam declares that[23]:

All of my trade mark labels cover a broad range of products – from fashion garments and accessories to stationery. I have always had the intention of including stationery as part of my broad product range.

[23] At paragraph 11 of her first statutory declaration.

37.   The crucial issue is not whether the Applicant intends to include stationery within its product range but whether that intention extends to use of the opposed ASK ALICE trade marks in relation to stationery and retail services.

38.   In the evidence there is an email from Ms Lam to ‘Sass’ (defined at the hearing as the Opponent) dated 21 June 2010. It is marked ‘Without Prejudice’ but it forms part of both the Opponent’s and the Applicant’s evidence[24] and neither party have claimed its contents as confidential. Ms Lam writes:

I understand you may trading under Ask Alice Stationary and have a logo for Ask Alice. But you have not file the trade mark for either of them. (sic)

…If the range goes well I will continuing with this range and maybe extend to more products besides existing range, that is the reason why when I apply for the trade mark I have include an extensive category but it does not means I have intention to do any of the stationary or anything similar to yours (sic).

[And in relation to the anticipated opposition] Ms Lam also wrote:

… I believe it will cost you quite a bit of money and honestly speaking I don’t think it is worth if just want to refrain me to using “Ask Alice” as I have no intention to do any product          similar to yours by using this name and I don’t want to see you to waste your money on it (sic).

[24] Statutory declaration of Sarah Cocker (exhibit SC-10) and statutory declaration of Daisy Lam (exhibit DL-15).

39.   Ms Lam attempts to explain the contents of that email by stating:[25]

…I do not wish to be restricted or prevented from using my ‘Ask Alice’ marks in relation to the goods and services registered for my ASK ALICE range, including stationery items. However, I also do not wish to prevent Sarah Cocker from using her stylised form of the mark in relation to stationery.

[25] Statutory declaration of Daisy Lam, paragraph 23.

40.   The Applicant’s apparent lack of intention to use the trade mark was resolved by the first use of the trade mark on the Applicant’s website in relation to stationery in August 2010. On the other hand, this use occurs after the acceptance of the trade marks, after the above email was sent and after the notices of opposition were filed by the Opponent. The later use of the trade mark by the Applicant is therefore coloured by the previous events and admissions. I am not convinced that this later use of the trade mark accurately reflects the Applicant’s original purpose in filing the ASK ALICE trade mark for stationery. 

41.   At the very least the Applicant’s email points to the filing of the trade marks as a defensive tactic when viewed in combination with the broad range of products applied for that include the word ‘stationery’ in their description. At the time of filing, I find that the Applicant applied for the trade mark without the ‘resolved and settled purpose’[26] to use ASK ALICE on stationery items. I find on the balance of probabilities that the Applicant did not have the requisite intention at filing to use the ASK ALICE trade mark in relation to stationery.

[26] Re Ducker’s Trade Mark [1929] 1 Ch 113 at 402 per Lord Howarth MR.

42.   I am not similarly satisfied that the Opponent has discharged the onus of establishing a lack of intention to use the trade mark in relation to general retail services. The email from Ms Lam is silent as to the intention to use ASK ALICE in relation to services and since it is a broad claim, the Applicant may arguably have the intention to use the trade mark in relation to the retail of clothing, jewellery and accessories. At the time of filing the Applicant was offering those goods for sale on its website and at the trade fair.  

43. On the balance of probabilities, I find that the section 59 ground of opposition has only been established in relation to the Applicant’s trade mark no. 1348079 and not trade mark no. 1348080.

44. Section 60 of the Act provides:

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.

45. In order to be successful under the section 60 provisions of the Act, the Opponent must firstly establish a reputation existed in Australia in relation to its ASK ALICE trade marks before the priority date of the opposed trade mark applications (which, in this case is 1 March 2010). Once that reputation is demonstrated, the Opponent bears the onus of establishing that the reputation (whether it be the extent, nature of the reputation or both) is such that the use of the Applicant’s trade marks in Australia would be likely to deceive or cause confusion amongst the relevant consumers.

46.   Evidence of the Opponent’s reputation in ASK ALICE is contained within the Sarah Cocker and the Catherine Shann declarations. Those declarations indicate that the establishment of the reputation in ASK ALICE for stationery commenced in early 2009. As a consequence, there has been approximately a year of trade mark use in which the Opponent may establish the requisite reputation. Due to that short period of trade, the extent of the Opponent’s reputation and esteem in its trade marks would need to be high for deception or confusion to be likely.  

47.   The wholesale and retail figures for products bearing the Opponent’s trade mark[27] in the period February 2009 to July 2010 are substantial, especially when considering the nature of the goods. At exhibit CS-4, the list of Australian stockists for the Opponent’s product indicates a wide distribution but it was a current list at the time of making the declaration and does not indicate which stores offered the stationery at the time of filing. The Opponent evidently expended reasonable amounts on advertising before the Applicant’s priority date but the majority of that advertising is limited to trade show publications and attendance at the associated trade shows. While the sales figures are noteworthy, the confusion arising from the reputation in a trade mark must be likely amongst a ‘significant’[28] number of consumers.   

[27] Statutory declaration of Catherine Shann, paragraph 15.

[28] Re Smith Hayden & Co Ltd's Application (1946) 63 RPC 97.

48.   Even allowing for the fact that the trade marks are identical (or at least substantially identical) I am not convinced that a reputation in ASK ALICE sufficient for deception or confusion to occur has been demonstrated.  Balancing the short period of limited use with the advertising and sales demonstrated by the Opponent, I am not satisfied that deception or confusion arising from the Applicant’s use of its trade marks would occur as a result of the Opponent’s reputation in ASK ALICE.

49. The ground of opposition under section 60 of the Act has not been established for either of the Applicant’s trade marks.

50. Section 62A of the Act provides:

Application made in bad faith

The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

51. The requisite test for bad faith under section 62A has been articulated by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse Inc:[29]

Bad faith, in the context of s 62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.

The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone.

[29] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81 (at 164-5).

52.   A finding of bad faith does not need to be founded in intentional dishonesty on the Applicant’s part, nor does it need to be a deliberate attempt to mislead the Registrar in some way. If the act of filing the trade mark is determined on the balance of probabilities to fall short of reasonable standards of acceptable commercial behaviour, that is sufficient. Having said that (and while the standard of proof remains the balance of probabilities) a finding of bad faith should not be lightly made.

53. For the Opponent, Mr Horak relied on the set of facts addressed earlier under the section 59 ground - namely the fact that the Applicant applied to register its trade marks in relation to the Opponent’s goods of interest the day after becoming aware of the Opponent at the trade fair in Sydney. He also referred to the email from the Applicant to the Opponent and argued that it not only pointed to a lack of intention to use the trade marks but that it established filing the trade marks was an act of bad faith.

54.   The points in the Applicant’s favour are that it has used different trade marks on stationery in the past and it cannot be said that the Applicant has suddenly and unexpectedly applied to register a trade mark in relation to goods it has never traded in previously. Additionally, the Applicant has provided some explanation for adopting the trade mark in 2009 despite my earlier comments that the Opponents’ explanation is more convincing. The Applicant had, prior to filing, also commenced preliminary steps prior to filing to use the ASK ALICE trade marks (albeit in relation to clothing, accessories and jewellery). These steps included the design of the artwork and registering the domain name on 17 December 2009. As previously mentioned, some stationery has subsequently been advertised on the Opponent’s website post filing in relation to the aforementioned domain name.

55. After weighing up the above factors with the circumstances considered under section 59 I cannot, on the relevant standard of proof, be satisfied that the Applicant was acting in bad faith by filing the two ASK ALICE trade marks applications. The Opponent has not established the ground of opposition under section 62A of the Act.

Decision

56.   Section 55 (1) of the Act provides:

(1) 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.

Note:  For limitations see section 6.

57. The Opponent has established a ground of opposition under the Act in relation to trade mark application no. 1348079. The Applicant is unsuccessful and I refuse to register trade mark application no. 1348079: ASK ALICE.

58.   The Opponent has not established a ground of opposition in relation to trade mark application no. 1348080. I direct that trade mark application no. 1348080 may proceed to registration after one month from the date of this decision.

59.   If the Registrar is served with a notice of appeal on or before that time, I direct that registration of trade mark no. 1348080 shall not occur until the appeal has been discontinued, or in the event of a decision from the court, that the application be subject to that order.

Costs

60.   The Opponent and the Applicant have each enjoyed a measure of success. I find that each party should bear their own costs in this matter.

Heath Wilson

Hearing Officer

Trade Marks Hearings

13 November 2012