Satnam Imports Pty Ltd v Simon Walter Sharpe

[2018] ATMO 130

TRADEMARKSACT 1995

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

Re:Opposition by Satnam Imports Pty. Ltd to registration of trade mark application 1763149 (35) - DISCOUNT PARTY WAREHOUSE (Logo) - in the name of Simon Walter Sharpe

DELEGATE:

M. Cooper

REPRESENTATION:

Opponent: Marcel Fernandes instructed by Coleman Greig Applicant: Simon Walter Sharpe

DECISION:

2018 ATMO 130

Trade Marks Act 1995 (Cth): opposition under s.52 - ss.58, 60 and 42(b) grounds considered – no ground established.

Background

1. This matter concerns an opposition by Satnam Imports Pty Ltd (“the Opponent”) under

   s.52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark detailed below in the name of Simon Walter Sharpe (“the Applicant”):

   Application Number: 1763149

Trade Mark:

(“the Trade Mark”) Filing Date: 6 April 2016 Services:

Class 35: Retailing of goods (by any means); Wholesaling of goods (by any means); Discount services (retail, wholesale, or sales promotion services); Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); The bringing together, for the benefit of

others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods; Advertising; Marketing

(“the Services”)

1. The Trade Mark was examined and advertised as accepted for possible registration on 1 September 2016 in the Australian Official Journal of Trade Marks.

1. On 31 October 2016, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 30 November 2016, a Statement of Grounds and Particulars (“SGP”) was filed which cited opposition grounds under sections 42(b), 58 and 60 of the Act.

1. On 10 January 2017 the Applicant filed a Notice of Intention to Defend.

Evidence

1. On 7 April 2017 the Opponent requested an extension of time to 13 June 2017 within which to file its Evidence in Support. A delegate of the Registrar responded on 26 April 2017, indicating that she was not satisfied that it was appropriate to grant the extension and allowed the Opponent 14 days within which to file further reasons in support of its request. The Opponent did not respond to this request, filing its intended Evidence in Support, a declaration of Mr. Deepak Gidwani, the Opponent’s sole director, on 10 May 2017 (“the Gidwani declaration”). The Registrar’s delegate formally refused to grant the extension of time on 7 June 2017. The material filed on 10 May 2017 was noted to have been filed out of time and the parties were advised that the person hearing the application would decide whether there was a compelling case for the material to be considered. On 21 June 2017 the Opponent filed submissions in respect of this evidence and contended that it should be accepted under r.21.15(4) of the Trade Mark Regulations 1995 (Cth) (“the Regulations”). I have addressed this issue further below.

1. The Applicant’s (then) representative was advised that he had until 7 September 2017 to provide Evidence in Answer. The Applicant filed a document on 7 September 2017 however it was not in the proper form. A delegate of the Registrar advised the Applicant of this and allowed him until 29 September 2017 to file compliant material. No further documents were filed by the Applicant in evidence.

1. A delegate of the Registrar wrote to the parties on 1 November 2017 advising that no Evidence in Answer had been filed and consequently it was open to either party to request a hearing. The Opponent did so and consequently a hearing was scheduled for 7 June 2018, which was allocated to me to decide as the Registrar’s delegate.

1. Mr. Marcel Fernandes appeared for the Opponent and the Applicant appeared in person, both by telephone. As directed, both parties also filed written submissions prior to the hearing..

Out of time evidence

1. As noted above, on 21 June 2017 the Opponent’s representative filed submissions seeking that the declaration and attached exhibits filed on 10 May 2017 be allowed into evidence under r.21.15(4) of the Regulations. He noted that a copy of the evidence had been provided to the Applicant on 20 June 2017.

1. It was claimed that the declarant, Mr. Gidwani, is the Opponent’s director and “solely responsible for all facets of the business…[a]nd instructing lawyers on all legal issues which may arise”. His position meant that he alone was “extensively apprised with details of the Opponent’s use of the ‘Discount Party Warehouse’ mark” and consequently had

   been unable to delegate the work associated with the collection of the relevant evidence. It was claimed that from 10th [of January] until the end of January 2017 Mr. Gidwani was overseas meeting suppliers, attending trade shows and the like. On his return to Australia in early February he became ill and, when it became apparent that he would not be able to file his evidence in support within time, a request for extension was lodged.

1. The evidence was said to be important because it “comprehensively demonstrates that the Opponent was the first user and therefore the owner” of the Trade Mark in Australia. This use was claimed to have commenced around 2002, with the logo/words “Discount Party Warehouse” in the table below having been used in connection with the sale and promotion of party supplies since that date.

DISCOUNT PARTY WAREHOUSE

(“Discount Party Warehouse word mark”)

Word

(“Discount Party Warehouse Logo 1”)

Fancy

(“Discount Party Warehouse Logo 2”)

Word, Device

1. It was also claimed that the evidence demonstrated the Opponent’s substantial reputation in, and use of, the above marks. It was further submitted that it was in the public interest to allow the material because the Opponent would otherwise be forced into an appeal where it would not be excluded. In addition, it was said to be “an important principle that a serious opposition should be able to be decided on the merits, with all the relevant information available to the delegate” and this is a “potent factor to be weighed into the balance whenever a delegate exercises discretion under the legislation that has the potential to exclude evidence critical to an opposition outcome”.

1. The Applicant, in his submissions, had opposed the inclusion of the material.

1. At the hearing the Opponent’s counsel, Marcel Fernandes, reiterated the above claims, noting that pragmatically, if the Opponent’s evidence in support was not allowed, the process would be futile. There was no prejudice or procedural unfairness to the Applicant because he had had the materials for over a year.

1. I asked Mr Fernandes why the Opponent had not responded to the specific request of the Registrar’s delegate on 26 April 2017 to provide reasons why the material should be permitted to be filed out of time, but instead had simply filed it, aware that the delegate’s preliminary view was that it should be refused. The representative apologised and acknowledged it “was not ideal”. He said he assumed that the Opponent had just wanted to ensure that everything that needed to be filed was filed as soon as possible.

1. I asked the Applicant if he wanted to comment on his submission that the material should not be accepted. He continued to oppose inclusion of the material. When asked how it would prejudice him, he responded that, because of the incompetence of his representative, he had not received any of the evidence or materials until two weeks previously. He claimed he had not been able to find another solicitor in the time available because it was too close to the hearing date. I noted that it had been open to him to ask for an adjournment of the hearing and he responded that he did not know he could make such a request. When asked, he said he last made contact with his representative in August 2017. I observed the Applicant had apparently “sat on his hands” for some time before following up his application and that the failings of his legal representative should not be attributable to the Opponent or allowed to prejudice its case. The Applicant maintained that the material should not be allowed into evidence.

1. I have had regard to the relevant considerations in such circumstances, as outlined in the Trade Marks Office Manual of Practice and Procedure at Part 51, paragraph 2.6 which provides:

   The delegate will not consider out of time evidence as a matter of routine. The party filing the evidence must make a compelling case in favour of it being considered.

   Nevertheless, there may be instances where the failure to consider that evidence is not in the public interest of the register being a true reflection of the marketplace. It is also undesirable if the true owner of a trade mark at common law is unable to prevent it being registered by another party. The Registrar acknowledges that sometimes it may be appropriate for the delegate deciding the merits of the opposition to take the information contained in evidence filed out of time into account. The delegate may do so as he or she is not bound by the rules of evidence, but may be informed on any matter in a way that he or she reasonably believes to be appropriate (reg 21.15(4)).

1. In this context, I note that:

• The Opponent relies on its common law ownership of the word and logo marks set out above (paragraph 11).

• The reason for late filing was the absence and illness of the Opponent’s sole Director.

• The information/evidence is of probative value and has the potential to significantly affect the outcome of the decision.

• The material was made available to the Applicant in a timely manner, and, while noting and sympathising with the Applicant’s problems with his representative, these problems were not in any way attributable to, nor should they prejudice, the Opponent.

• There may be some inconvenience to the Applicant but this is outweighed by the strong public interest in ensuring the integrity of the Register and the need to ensure an Opponent has a full opportunity to put its case.

1. I regard these factors as constituting a compelling case favouring inclusion of the Gidwani declaration and, for this reason, it will be allowed into evidence under reg. 21.15(4).

The Opponent’s evidence

1. In his declaration, Mr. Gidwani claimed that he has operated his party supply business in Australia since 4 September 2002 under the brand “Discount Party Warehouse” and has sold products through his stores in Auburn and Campbelltown (NSW) and online (at since 2006. He claimed 50,000 product lines including balloons, novelties, games, costumes, plates, lollies, drinkware, tableware, glassware and the like. He asserted that the Opponent is a leading retailer and distributor of party supplies to the Australian consumer market, online and in-store.

1. He claimed continuous use of the plain and stylised words, “Discount Party Warehouse”, in relation to the retailing of party supplies throughout Australia, under the unregistered trade marks at paragraph 11, which are referred to collectively as “the  Opponent’s marks”.

1. Mr. Gidwani also claimed the Opponent had:

·     incurred significant advertising and promotion expenditure and enjoyed substantial turnover and revenue,

·     a substantial internet reputation as demonstrated by search results,

·     received over 300,000 visitors to its website ,

·     placed advertising and had exposure of the “DISCOUNT PARTY WAREHOUSE” brand online and in several newspapers and other publications,

·     a Facebook page operating since 2013 with 11,000 “likes” and over 600 visits,

·     an Online Party Balloons Catalogue which he claimed to have been available since 2010,

·     incorporated the Opponent’s trade marks in stationery, letterhead and business cards since 2002 and featured them on quotes, invoices and order forms since 2002,

·     incurred  significant  cost, time and effort  since  2002  in arranging  for  use of the Opponent’s trade marks in instore signage,

·     received business awards in the name “Discount Party Warehouse” in 2013.

1. Mr. Gidwani claimed that through the extensive use of the Opponent’s trade marks it has developed a significant reputation in Australia in respect of party supplies. Given this, he asserted that consumers and competitors “now identify and associate the Opponent’s trade marks with the Opponent and its Party Supplies.”

1. He contended that the Trade Mark is substantially identical “or at the very least deceptively similar to the Opponent’s marks”, the dominant feature being the phrase “Discount Party Warehouse”, and noting that in both marks the emphasis is placed on “party” in the centre of each mark.

1. Due to his involvement in the industry for over 15 years, Mr. Gidwani claimed he was aware of the key players and competitors but had “not come across the Applicant or its business”. He said he was unaware of its mark or that it had any online presence in Australia.

1. He believed that if the Applicant was to commence using the Trade Mark it would cause confusion for customers because the marks are deceptively similar, both businesses operate in the same industry and supply the same or similar goods and both businesses target the same consumer base.

The Applicant’s evidence

1. As noted above, there is no properly filed evidence from the Applicant.

Submissions

Opponent’s written submissions

1. In its written submissions the Opponent claimed that it had used the word mark “DISCOUNT PARTY WAREHOUSE” since 2002 and the Discount Party Warehouse Logo 1, since November 2009. The submissions also note that in November 2009 and February 20161 Mr Gidwani applied to register the Discount Party Warehouse Logo 1. Although the marks did not proceed to registration, it was submitted that they support the Opponent’s claims of use.

1. Those lapsed applications for registration are detailed below:

30.  Trade Mark	TM Number 32.  Priority date	33.    Class	34.  Owner
35.	36.  1330317 (lapsed  not protected) 37.  19       Nov 2009	Class 28: 38.	39.  Deepak Gidwani
40.	41.  1635864 (lapsed not protected) 42.  21 July 2014	Classes: 1, 7, 21, 25, 28, 35 43.	44.  Satnam Pty Ltd

1. It was submitted that the Trade Mark application should be refused for three reasons:

·The Applicant is not the owner of the Trade Mark. The Opponent (or its closely related entities) has demonstrated “clear first actual use of [its] trade mark as a trade mark” (paragraph 22). The Trade Mark is to be applied to the same kind of goods and services as those of the Opponent, being party supplies, in class 35. The Trade Mark

1 The Register indicates that the Opponent’s trade mark application for 1635864 was made in July 2014. A later application was made for Discount Party Warehouse Logo 2 (1896590) on 21 December 2017 and it is still pending, under examination.

uses the same words as in the Opponent’s word mark which, relying on Mr. Gidwani’s statement, has been in use by the Opponent since 2002. The Opponent has used the same words in its logo marks since 2009. A total impression of similarity emerges from a comparison of the marks such that they may be regarded as substantially identical. The Applicant has provided no evidence of use. The Opponent is “plainly the common law owner of the marks.”

·     The Trade Mark is similar to the word mark already used by the Opponent since 2002 and in which it has acquired a significant reputation. The reputation in respect of a party supplies business since 2002 is established by “proof of sales, advertising and suchlike”. The Trade Mark is deceptively similar to the Opponent’s marks because of the high degree of aural similarity, visual similarity and the presence of common words. Therefore use of the Trade Mark will likely deceive or cause confusion.

· Use of the Trade Mark would be contrary to law because it would be contrary to s.18 of the Australia Consumer Law and the common law tort of passing off. It was claimed that there was a real not remote chance or possibility of persons being misled or deceived by use of the Trade Mark. It was also said to constitute passing off because the Opponent has a demonstrated reputation or goodwill, there has been deceptive conduct by the Applicant, and there is a loss or threat of loss to the Opponent as a result of that conduct.

1. The Opponent also relied on its operation of its online store through the domain name as evidence of use of the Trade Mark, and the prominent display of its marks on its website and the operation of its Facebook page since 2013.

1. The Opponent sought costs.

Applicant’s written submissions

1. The Applicant described his difficulties with his (then) representative, and his unsuccessful attempts to contact him, and noted that his submissions had been made without an attorney’s assistance. He briefly outlined the history of his application, as lodged by that representative, and stated that, following acceptance, he had registered the

business   name   “Discount   Party  Warehouse”  and  also   obtained  a  domain  name “discountpartywarehouse.net.au” which had been “live” since December 2016.

1. He disputed the Opponent’s claims to ownership of the mark, noting the failure of applications 1330317 and 1635864 for the Discount Party Warehouse Logo 1, and contended that this was “negligent and a sign of not showing any true intention to take ownership of this trademark to be used for business purposes.” Noting that the Trade Mark contains “3 common words” it was submitted that there could not be any deception or confusion.

1. Referring to s.151 of the Act the Applicant submitted that the Opponent’s claims to ownership of the Trade Mark were intentionally false and misleading. It was submitted that the Opponent’s “very recent changes” to its logo (from the Discount Party Warehouse Logo 1 subject of lapsed applications 1330317 and 1635864 to the Discount Party Warehouse Logo 2 subject of the Opponent’s currently pending trade mark application 1896590) mimicked or mirrored the Trade Mark. In addition, its claim to be a leading retailer and distributor of party supplies was denied, with the Applicant stating that there are “many other retailers and distributors of such goods in Australia who are just as large if not larger.”

1. In relation to the Opponent’s submissions regarding s.58 of the Act, the Applicant denied the contention that the Trade Mark and the Opponent’s trade marks are indistinguishable. Referring to the Opponent’s logo marks in particular, he submitted that they “are vastly different logo marks” from the Trade Mark. Relevantly he claimed that “an avid user would be able to recognise immediately that they are vastly different logo marks and therefore possibly 2 individually owned and operated business/companies.”

1. In relation to the passing off allegation, the Applicant denied that he was “trying to deceive or misrepresent ourselves or trading to the public” and noted the failure of the Opponent to file its evidence in time. He disagreed with the Opponent’s claims as to ownership, noting that its previous trade mark applications “were never followed through”. In this context the Applicant referred to s.120 of the Act however his submissions in this regard were unclear.

1. In conclusion, he rejected as untrue and inaccurate many of the claims made by the Opponent and pressed that the late filed evidence should not be accepted. The Applicant sought costs.

Hearing

1. At the hearing the Opponent’s representative reiterated its submissions. That is, in summary, that the Opponent is the true owner of the Trade Mark at common law, having used it in Australia well before the 6 April 2016 filing date of the opposed application (“the Relevant Date”) given that its marks, which use the same words, are substantially identical to it. It was submitted that the word “party” isolates the brand function and, in both the Applicant’s and Opponent’s logos, it has prominence. Given the Opponent’s use of the Trade Mark for over a decade, it was contended that there was potential for many people to be misled. In relation to s.42(b), because of this substantial identity of the marks, it was claimed that the reasonable consumer would be misled in such a way as to constitute passing off, and that there was an obvious threat of loss to the Opponent.

1. I queried the contents of the Gidwani declaration, noting that many of its annexures did not in fact support the claims made as to prior use, either being undated or dated after the Relevant Date. The Opponent’s representative expressed the view that this was unfortunate but that the critical point is that there is some evidence of prior use. I was directed to the few annexures which were supportive of these claims.

1. In relation to the claims made concerning the Opponent’s reputation, in particular its expenditure on advertising and promotion and its revenue, I also observed that these assertions did not appear to be supported by objective evidence. The representative maintained that there was enough evidence to establish the relevant reputation.

1. In his submissions, the Applicant argued that the logos were vastly different and that a consumer conducting proper searches would know the difference. He stressed that he had no intention to mislead or misrepresent his product to the public, that he had conducted searches and filed his application on the basis that the Opponent had not followed through its earlier trade mark applications. He said he never would have applied to register the Trade Mark if it had already been registered. He said his intentions were genuine and he

had registered his business name and domain name on this basis. As far as he was aware, the Opponent had not intended to use its trade marks.

1. In conclusion, the Opponent’s representative contended that the similar domain names of the Opponent and Applicant emphasised the likelihood of confusion. He confirmed that the Opponent did not allege that the Applicant had been intentionally misleading.

Grounds, onus and standard of proof

1. In respect of proceedings under section 52, the Opponent bears the onus of establishing one or more of the grounds of opposition in relation to the relevant goods and services of an opposed trade mark and the standard of proof required is on the balance of probabilities.2 As mentioned, the opposition grounds asserted are s.42(b), s.58 and s.60.

1. The time at which a ground of opposition must be established is the date of filing of the application for registration 3 which, in this application, is 6 April 2016 (“the Relevant Date”).

Consideration and reasons

1. The Opponent’s grounds of opposition are discussed below.

Section 58

1. Section 58 of the Act provides:

   58 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.

1. In its SGP the Opponent stated that

Satnam lmports Pty Ltd is the true owner of the "Discount Party Warehouse" trade marks in Australia. The Opponent first commenced use of the plain words and stylised words "Discount Party Warehouse" in or about 2006 and since that time has used the same or substantially similar trade marks in respect of the retailing of a variety of party supplies and goods in Australia. The Opponent's

2 Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599, [6-26].

3 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, [595].

first use of these trade marks was before the Applicant's priority date of 6 April 2016.

1. In relation to s.58, the Full Federal Court in Pham Global identified the relevant principles.4 To succeed on this opposition ground, an opponent needs to establish that its mark or marks is/are identical or substantially identical to the opposed mark, that its mark(s) had been used in respect of goods and services that are “the same kind of thing” as those covered by the opposed mark and that it has the earlier claim to ownership based on its use of its mark/s before the use of, or before the filing of an application to register,

   the opposed mark.

1. Windeyer J outlined the relevant test for substantial identity in The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd 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. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 R.P.C. 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig [1944] NSWStRp 28; (1944) 44 S.R. (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW),

   at p 298, where the meaning of the expression was considered. 5

2. The Opponent’s marks and the Trade Mark are set out side by side below:

The     Opponent’s marks	The           Trade Mark
67.	68.

4 Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (“Pham Global”) [2017] FCAFC 83, [50].

5 The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407, [414].

69.     DISCOUNT PARTY WAREHOUSE	70.
71.	72.

1. Self-evidently. the Trade Mark and the Opponent’s marks contain the same words, “Discount Party Warehouse”. These words are essentially descriptive of the respective businesses, that is, on the evidence, they both sell discounted party supplies directly to consumers. In that context the words should be largely discounted when comparing the marks. The use of colour in the Opponent’s logo marks is immaterial because there are no limitations to colour recorded and therefore the trade marks in question are taken to be registered for all colours (s.70 of the Act).

1. When considered as a whole, on a side by side basis, having discounted the shared, descriptive words, the differences between the marks are apparent. They are of different shapes, the text is in different fonts/style and the Trade Mark has an additional device (the stars). Overall I consider an impression of dissimilarity emerges such that the compared marks cannot be considered “substantially identical”.

1. Given this, it is unnecessary to consider the other elements of s.58 and, for the above reasons, I am not satisfied that the Opponent has established this ground of opposition.

Section 60

1. Section 60 provides as follows:

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.

Note:         For priority date see section 12.

1. Therefore to establish the s.60 ground of opposition, an Opponent must demonstrate that, at the Relevant Date ,

   ·     there was another trade mark

·     that had acquired a reputation in Australia and

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

1. In its SGP the Opponent claimed in relation to s.60:

   This opposition is based on trade marks which have acquired a substantial reputation in Australia. My client first commenced use of the name Discount Party Warehouse in or about 2006. Since that time, my client has used the plain words and a number of stylised/composite marks predominantly containing the words DISCOUNT PARTY WAREHOUSE in relation to the retailing of a variety of party supplies and goods in Australia.

   The opponent has continuously used these trade marks in Australia since 2006 and before the Applicant's priority date of 6 April 2016.

   It is submitted that the Opponent's "Discount Party Warehouse" trade marks are substantially  identical  or  closely  resemble  the  Applicant's  "Discount  Party Warehouse"  composite  mark.  The  Opponent  submits  that  because  of  the similarity and the Opponent's use and reputation in its marks, the use of the "Discount Party Warehouse" mark by the Applicant would be likely to deceive or cause confusion. Further and better particulars of the reputation of the Opponent in the "Discount Party Warehouse" trade marks and the likelihood of deception or confusion will be provided as part of the Opponent's evidence in support.

1. As discussed above, that evidence in support included assertions of significant advertising and promotion expenditure; of over 300,000 visitors to the organisation’s website and a significant social media presence; advertising and exposure of the brand online and in several newspapers and other publications; the incorporation of the Opponent’s trade marks in stationery, letterhead and business cards since 2002 and evidence that they featured on quotes, invoices and order forms since 2002; and recognition by way of Business Awards issued to the Opponent in the name “Discount Party Warehouse” in 2013. The Trade Mark was contended to be deceptively similar to the Opponent’s marks because of the  high degree of aural similarity,  visual similarity and the presence of

common words. As a consequence, it was submitted, use of the Trade Mark would likely deceive or cause confusion.6

1. In his submissions, the Applicant rejected the claims of deceptive similarity, contending that consumers would appreciate the differences between the Trade Mark and the Opponent’s marks.

1. Kenny J’s remarks in McCormick & Co Inc v McCormick in relation to s.60 and the measurement of reputation are relevant:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.7

1. The Opponent asserted reputation on the basis of its ownership and use of its marks, in Australia, as badges of origin in relation to the retail supply of party supplies and goods, since at least 2006. The Gidwani declaration provided a figure which indicated significant expenditure on advertising and promotion since 2002 however the figure claimed was not supported by any objective evidence. There was no indication of how this amount was calculated, to which of the Opponent’s marks or services it related, nor over what period of time (i.e. whether before or after the Relevant Date ) the marketing and promotional activities occurred. In this context, where the purpose, use or timing of the figure is unable to be gauged, I attach little weight to this assertion as evidence of the Opponent’s relevant   significant   advertising  expenditure.  Similarly  the  Opponent   has  claimed

6 Since amendment to the Act in 2006 a finding of “deceptive similarity” is no longer required for s 60 to be established. Nevertheless, as Yates J noted in Qantas Airways Limited v Edwards [2016] FCA 729, [142], “the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.”

7 McCormick & Co Inc. v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192, [86].

substantial sales revenue in respect of its party supplies in 2014 and 2015. I  note, however, that these purported amounts cover only a limited period of time and do not demonstrate what goods were sold and/or whether they were sold with any reference to the Opponent’s marks. Overall, for the above reasons, I attach limited weight to the Opponent’s financial claims in assessing the reputation of its marks.

1. The Opponent also relied on other aspects of the use of its marks as establishing its reputation. They were:

• evidence of the two business awards from Auburn City Council to “Discount Party Warehouse” in 2013,

• social media use,

• use of an email address ending in @discountpartywarehouse.com.au,

• use of the website “ from which an  extensive range of products are/were available and which demonstrates significant use of the Opponent’s marks as trade marks,

• the Opponent’s retail stores and significant signage instore displaying the Opponent’s marks.

1. As discussed with the Opponent’s representative at the hearing, there is little by way of objective evidence before me which supports the Opponent’s claims on which this reputation is said to be based.

1. Many of the annexures which were said to demonstrate advertising and promotion were either undated or dated after the Relevant Date. For example, despite the claims that annexures D and E evidenced use of the Opponent’s trade marks on its website and the high number of visitors to it, annexure D is undated and annexure E indicates a period of time after the Relevant Date. Similarly the evidence of advertising and promotion claimed in annexures F, G-H and M is either undated or post the Relevant Date. The business stationery and business cards (annexure N) are undated, as are the catalogue copies (annexures L and P) and the balloon order form (annexure Q). Reputation is also said to

be demonstrated by the fact that the “top organic results” from two internet search engines refer to the Opponent. I note however that there could be a number of reasons for the Opponent appearing first in these search results, which do not necessarily demonstrate or correlate to reputation. As discussed further below, the descriptive nature of the words in the Opponent’s marks may account for the search results. Alternatively the Opponent may have paid the relevant search engine for a priority ranking.

1. I acknowledge that some annexures do indicate some use of the Opponent’s marks before the Relevant Date. They are as follows:

• The Opponent’s business names - Discount Party Warehouse-Auburn and Discount Party Warehouse – Campbelltown which were registered in 2014 (annexure B).

• Store signage plans dated 2015 and early 2016 displaying the word mark and logo marks (annexure O).

• Two awards from Auburn City Council in 2013 to “Discount Party Warehouse” (annexure R).

• One email dated 2 May 2011 to [email protected] headed “excellent service” (message content redacted) (annexure I).

• Facebook pages dated 1 July 2013, 24 and 31 October 2013, and 6 November 2013 advertising decorations, drink dispensers and balloons and displaying both  the Opponent’s logo marks and indicating a total of 9 “likes” over all pages (annexure K).

1. As the Full Court said in Renaud Cointreau in relation to reputation, and endorsing Heerey J’s approach in Le Cordon Bleu B.V. v Cordon Bleu International Ltee, that

   [H]is Honour correctly stated the test as being whether the reputation [of the mark] is one of which a significant number of people would be aware. He proceeded to say that the reputation of the trade mark must be of such a nature and extent as to create a real tangible danger of deception or confusion.” 8

2. I am not satisfied the evidence before me establishes that a significant number of people were aware at  the Relevant  Date of the Opponent’s  marks.  While I  accept  that  the

8 Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91]; Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

Opponent’s use of its marks preceded the Relevant Date, it appears to me that any likelihood of deception or confusion would more likely be due to factors other than the reputation of the Opponent’s marks, including the descriptive nature of the words used in the marks. That is, noting that the words “Discount Party Warehouse” are common to the parties’ marks, and notwithstanding the different stylisation of the words in the marks, on the face of it they are apt for normal description of the class 35 services provided by the

Opponent and Applicant.9

1. As was noted by Hearing Officer Kirov in The BBQ Store Pty Ltd v Plantation Outdoor Kitchens Pty Ltd:

   To the extent that there were a risk of genuine deception or confusion arising from use of the Opposed Mark in light of consumers’ knowledge of the Opponent’s [trade mark], I consider this would in large part be because the Opponent has chosen to trade by reference to a convenient, essentially descriptive, phrase. I agree with Mr. Elkington’s submission that the reasoning of the High Court in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd, albeit a case concerning alleged misleading or deceptive conduct, is relevant in this regard.

   In his leading judgment in that case Stephen J had this to say of what was effectively the plaintiff’s claim to exclusive rights in the descriptive phrase “Building Information Centre”:

   [21] The use by the [plaintiff] of the three descriptive words was no doubt convenient. It thereby acquired a name which at the same time very clearly described its activities. ...

   [22] There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor's trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words – “So long as descriptive words are used by

9 Although the Applicant’s designated services are broadly described, the oral submissions at hearing confirmed that the nature of the services provided are the same, or very similar to, those provided by the Opponent.

……..

two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.” The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.

42.  Like the descriptive phrase “Building Information Centre” in relation to a business which provides advice about building, the phrase “The BBQ Store” is on the face of it apt for normal description of a business which sells barbeques. That the opposed application covers “barbeques” in Class 11 rather than, say, “retail and wholesale of barbeques” in Class 35, does not alter this fact. As such some potential confusion between the parties’ businesses, and by extension their respective goods, might be anticipated. However, as Stephen J counselled, the risk “must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words.”

43.  To conclude, taking into account the limited use the Opponent’s ... Marks appear to have enjoyed both as to range and duration, and taking into account the low inherent distinctiveness of the words “The BBQ Store” effectively claimed as the trade mark underpinning the s 60 ground, I am not satisfied any of the Opponent’s marks had the requisite reputation contemplated by s 60 amongst potential consumers of the Claimed Goods as at the Priority Date. Any deception or confusion arising from use of the Opposed Mark is more likely to be because both parties’ marks incorporate the descriptive words “The BBQ Store” rather than because of any significant reputation attributable to the Opponent’s ... Marks.

44. The Opponent has accordingly not established its ground of opposition under s 60.10

1. I consider these findings apposite to the circumstances of this opposition. Just as the phrase “the BBQ store” was considered “apt for normal description of a business which sells barbeques”, so “Discount Party Warehouse” is apt for normal description of a business which sells discounted party supplies. Taking into account the paucity of objective evidential support for the Opponent’s claims of reputation in its common law marks, and the low inherent distinctiveness of the words “Discount Party Warehouse” in all of the marks, I am not satisfied that the Opponent’s reputation in its marks is of such a degree that any deception or confusion that might arise would arise because of it.

1. Even accepting that a degree of confusion may arise, I consider other factors, such as the descriptive  nature of the words, the similarity of the  marks and  domain  names,  the

10 [2015] ATMO 34, [40 – 43].

operation of the Opponent and the Applicant in the same industry selling to the same customer base, would significantly contribute to the likelihood of any deception or confusion from use of the Trade Mark. It follows that I am not satisfied that, at the

Relevant Date, the Opponent’s marks had the “requisite reputation contemplated by s.60 amongst potential consumers”11 of the claimed services such that use of the Trade Mark would be likely to deceive or cause confusion.

92. It follows that the Opponent has not established the s.60 ground of opposition.

Section 42(b)

1. Section 42(b) of the Act provides:

Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

(a)  …; or

(b)its use would be contrary to law.

1. In its SGP the Opponent simply stated that “use of Trade Mark 176319 would be contrary to the Schedule 2 of the Competition and Consumer Act 2010(Cth) and the tort of passing off.”

1. In submissions, the Opponent specified s.18 of the Australian Consumer Law (“the ACL”) as the provision that would be contravened. Relying on the various authorities and noting the three elements of passing off, it was contended that the Opponent had established the first two (reputation and deceptive conduct by the defendant). In relation to the “plaintiff’s consequent loss”, it was submitted that “there is a clear threat of loss to the Opponent, which is precisely why it is opposing the Application.”

1. As was noted by Rangiah J in Primary Health Care Limited v Commonwealth of Australia, with whom Katzmann J and Greenwood J agreed on this point:

   Section 42(b) of the [Act] requires that the use of a trade mark “would be” contrary to law. It is not enough for a party opposing registration to show that s 18 of the ACL or s 52 of the [Trade Practices Act 1975 (“the TPA”)] might be contravened. The opponent must prove, on the balance of probabilities, that the provision would be contravened by use of the trade mark. 12

11 Ibid.

12 Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [411].

1. Therefore the onus is on the Opponent to establish, in Madgwick J’s words,13 that use of the Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.

1. Section 18 of the ACL (formerly s.52 of the TPA ) requires a likelihood that Australian consumers be misled or deceived as to the true origin of the designated goods and/or services or their connection with the Opponent.

1. Several previous cases confirm that more is required to establish a likelihood of misleading or deceptive conduct under the ACL than is the case with trade marks likely to deceive or cause confusion under s 60. For example, in Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd,[8] Gibbs CJ said with respect to (then) s 52 of the TPA:

In McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.

100.I note my findings above that the s.60 ground of opposition has not been established. In this context, where the Opponent has not established the relevant reputation, I am not satisfied, in the absence of any further persuasive evidence in this regard, that it has discharged the onus on it to establish that use of the Trade Mark would be likely to mislead or deceive within the meaning of s.18 of the ACL. It follows that I am not satisfied that the Opponent has established that use of the Trade Mark would be contrary to law in the sense that the Applicant would be regarded as having engaged in misleading or deceptive conduct as required by s.18 of the ACL.

101.In relation to passing off, the Opponent made similar claims to those it made in respect of

s.18 of the ACL and asserted that the loss element required for a successful passing off action is “clear”.

13 Advantage Rent-A-Car Inc v Advantage Car Renal Pty Ltd (2001) 52 IPR 24, [28].

102.The relationship between passing off and (then) s.52 of the TPA was addressed by Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation where he said:

The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another,

failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.14

103.That is, where use of a trade mark does not contravene s 18 of the ACL, neither will it amount to passing off. Further, there is no persuasive evidence before me that indicates or even suggests a relevant misrepresentation by the Applicant.

104.The Opponent has not established that use of the Trade Mark would be contrary to law in the sense that it constituted passing off.

105.Accordingly the s 42(b) ground of opposition has not been established.

Decision

106.Section 55 of the Act relevantly provides:

Decision

(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.

Note: For limitations see section 6.

1. The Opponent has failed to establish any of the grounds of opposition it nominated in its SGP.

108.This Application may accordingly proceed to registration after one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I

14 Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [39]; (1989) 16 IPR 431.

direct that registration shall not occur until either the appeal is withdrawn or a court so orders.

Costs

1. Both parties sought costs. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent as per Schedule 8 of the Regulations.

M. Cooper Hearing Officer

Oppositions and Hearings 17 August 2018