Sebastiano John Amenta v Tina Estelle Lowe & Leroi Harlan Waddington

[2018] ATMO 122

TRADE MARKS ACT 1995

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

Re:Opposition by Tina Estelle Lowe & Leroi Harlan Waddington to registration of trade mark application 1677926 (25) – ROUTE AUS 66 (Device) - in the name of Sebastiano John Amenta

Delegate:	Nicholas Smith Decision on the Written Record
Decision:	2018 ATMO 122 Trade Marks Act 1995 (Cth) - Section 52 opposition: s 44 considered – ground established – registration refused

Background

1. This is an opposition brought by Tina Estelle Lowe & Leroi Harlan Waddington (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Sebastiano John Amenta (‘Applicant’): 

Application Number:	1677926
Filing Date:	27 February 2015
Goods:	Class 12: T-shirts and hooded jumpers (‘Applicant’s Goods’)
Trade Mark:	(‘Trade Mark’)
Endorsement:	Provisions of subsection s44(4) and/or Reg 4.15A(5) applied. *

2. Following the advertisement on 24 March 2016 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 19 May 2016.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 6 June 2016. The SGP raised grounds of opposition under ss 43, 44, 58A and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 1 July 2016.

Evidence

3. The Opponent did not file Evidence in Support of its opposition.  The Applicant filed Evidence in Answer (‘EIA’) on 19 December 2016.  This evidence consists of a declaration made on 19 December 2016 by Sebastiano John Amenta, the Applicant (‘Amenta Declaration’).  The Opponent chose not to file any evidence in reply.

4. The EIA makes reference to (but does not extract or enclose) material filed with IP Australia as part of the examination process.  This consists of a declaration made on 18 January 2016 by Sebastiano John Amenta, the Applicant (the ‘Earlier Declaration’). The Earlier Declaration was not filed with the Registrar as part of the trade mark opposition proceedings pursuant to the requirements of Reg 5.14 of the Trade Marks Regulations1995 (Cth) (‘Regulations’). Reg 5.14 also provides that information filed with the Registrar as part of the opposition proceedings must be copied to the other party: This obviously did not occur with the Applicant’s material filed with IP Australia as part of the examination process.

5. On 10 July 2018, I issued a direction to the parties indicating that, unless the Applicant objected, I proposed to exercise the discretion available pursuant to Reg 21.19 of the Regulations to have regard to the Earlier Declaration for the purpose of this decision. The Applicant did not object to that course of action. As part of that direction I provided a copy of the Earlier Declaration to the Opponent and provided the Opponent with an opportunity to make representations about the earlier declaration. The Opponent chose not to provide any representations about the Earlier Declaration.

6. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  Neither party chose to avail themselves of these opportunities.  By letter dated 7 June 2017 IP Australia notified the parties that as neither of them had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon.  Neither party filed any submissions. 

7. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide on the basis of the written record, which as noted above comprises the materials mentioned in the preceding paragraphs:

(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.

The Opponent

8. The Opponent has provided no evidence and, therefore, I am unable to provide any information about the Opponent other than what is set out in the EIA and on the Register. 

9. The Opponent is the registered owner of the trade marks set out below (‘Opponent’s Trade Marks’). 

Number	Trade Mark	Priority Date	Goods
989996	(‘Device Mark’)	23 February 2004	Class 25: Clothing, headwear, footwear Endorsements: Provisions of subsection 44(4) applied.
1478587	Route 66 (‘Word Mark’)	6 March 2012	Class 35: Discount services (retail, wholesale, or sales promotion services); presentation of goods on communication media, for retail purposes; retail clothing shop services; retail services; retailing of goods (by any means)

The Applicant

1. The Applicant is an individual

2. The Amenta Declaration contains the following claims/statements:

   • “My t-shirts and hooded jumpers have been used since 2001 and have provided this evidence of prior use in my declaration signed 18 January 2016. I say that my clothing line is not deceptively similar to 989996 and 1478587 and that my t-shirts and hooded jumpers primarily are used by members of my car and bike club. Other purchases are made by the wider public who are followers and supporters of our club as well as the members, family and friends of our club. I also say that the club has not sold its merchandise in a traditional retail settings as the opponent appears to currently be trading.”

3. The Amenta Declaration does not provide any documentary evidence supporting any claim that the Applicant has sold clothing bearing the Trade Mark.

4. The Earlier Declaration contains the following claims/statements:

   • “I wish to firstly correct a statement in my previous declaration where it was mentioned that the Trademark was chosen 10 years ago in 2005 on my birthday 12 January 2005. This needs to be clarified that the logo in question was in fact worn at private and fundraising events in early 2001 as demonstrated by invoices dated in 2001. The idea came from the Route 66 big mother road in America. As a result of positive feedback from the design we decided to make personal t-shirts, hooded jumpers and caps (within the car scene)”
   • “Eventually, in 2005 we decided to make Route 66 the main logo for our car and bike club on 12 January 2005.  We would give out a free t-shirt and sticker every time a new member joined the club.”
   • “The turnover associated with the merchandise since using the ROUTE AUS 66 logo is approximately $30,000. There has not been any costs other than the merchandise mentioned and there has been no money spent on advertising.

5. The Earlier Declaration contains evidence that an order was placed on 25 October 2001 for 100 Route 66 Hooded Jumpers, with further orders placed in 2002 and 2003.  These orders were in the name of Route 66 Car and Bike Club.  The orders do not indicate whether these items of clothing use the Trade Mark, some other Route 66 logo, or merely the words Route 66 (the name of the club they were purchased by), nor is there any evidence that this clothing was ever sold, as opposed to used in the private capacity by members of the Route 66 Car and Bike Club.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above the SGP nominates grounds of opposition under ss 43, 44, 58A and 60 of the Act. To successfully oppose the application the Opponent bears the onus of establishing at least one of those grounds. ^[1] As will become apparent, the Opponent has successfully established a ground of opposition pursuant to s 44. Consequently, it is unnecessary that I consider the remaining grounds. Of course, should the decision be appealed, it would remain open to the Opponent to plead any grounds available to it under the Act in proceedings before the Court.

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32], see also Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

2. The relevant standard of proof required of the Opponents is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 27 February 2015, being the filing date of the application in Australia.[3]

   [2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

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

Discussion

Section 44

1. The relevant provisions of the Act with respect to the s 44 ground are reproduced below:

Section 44 - Identical etc. trade marks

1. Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a)it is substantially identical with, or deceptively similar to:

   (i)            a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)           a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

1. …

1. If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

2. If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (c)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)            the similar goods or closely related services; or

   (ii)           the similar services or closely related goods; and

   (d)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.
   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

3. To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with, or deceptively similar to, the Trade Mark (‘the second requirement’); and

   ·     is in respect of “similar” goods (in the case of registration 989996), and/or services which are “closely related” (in the case of registration 989996), to the Applicant’s Goods (‘the third requirement’).

4. In the event that each of these requirements are satisfied it may yet be possible for the Registrar to accept the application if the Registrar is satisfied that there has been honest concurrent use, that “because of other circumstances it is proper to do so,” or that the Applicant has continuously used the trade mark beginning before the relevant priority date of the Opponent’s relied upon mark, pursuant to ss 44(3) and s44(4) of the Act.

5. The Opponent has particularised the ground of opposition in the SGP with reference to the Opponent’s Trade Marks as follows:

Trademark No. 1677926 is deceptively similar to our Trademark No. 989996 class 25 including clothing as well as our Trademark no. 1478587 with the words “Route 66” class 35 for Retail, Wholesale and Promotional Services.

1. For the purposes of comparison, I need only compare the Trade Mark to the Device Mark. The Device Mark has the earlier priority date, covers goods that are undoubtedly ‘similar’ (as defined in s 14(1) of the Act) to the Applicant’s Goods and, as is apparent, is at least deceptively similar to the Trade Mark. Were the ground of opposition under s44 to fail in respect of the Device Mark, it would also fail in respect of the Word Mark.

2. The Device Mark has a priority date that is earlier than the priority date of the Trade Mark.  The first requirement is satisfied.  The Device Mark is registered for ‘Clothing, headwear, footwear’ which encompasses the Applicant’s Goods.  The third requirement is thus satisfied.  It is therefore necessary to consider the second requirement.

Substantially identical or deceptively similar?

1. The Trade Mark and the Device Mark are set out below:

1. The Opponent does not press its claim that the Device Mark is substantively identical to the Trade Mark.  It is therefore only necessary to consider whether the Trade Mark is deceptively similar to the Device Mark.  The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

   Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[4]

   [4] Ibid [13].

2. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[5] at [49]; Australian Woollen Mills[6] at 658.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[7] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[8] at 594 – 595.

   Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[9]

   [5] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [6] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   [7] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

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

   [9] [2012] FCA 1022, [38]-[46].

3. I find that the marks are at least deceptively similar.  While there are minor differences in shading between the two marks and the Trade Mark contains the letters ‘AUS’ (which I consider most consumers would perceive as an abbreviation for “Australia”), each of the key elements of the Device Mark, being the words ‘Route’, ‘66’ and the shield device are reproduced in the Trade Mark.  The respective marks are visually, aurally and conceptually very similar.  I find that allowing for imperfect recollection, there is a real tangible danger that the use of the Trade Mark will result in deception or confusion.

4. The Opponent has established a ground of opposition pursuant to s 44(1) of the Act. It is then necessary to consider whether the Registrar should accept the application on the basis of ss 44(3) or 44(4) of the Act.

Subsection 44(3): Honest Concurrent Use

1. In McCormick & Co Inc v McCormick[10] Kenny J stated:

   Section 44(3) gives the Registrar a discretion to accept an application that would otherwise be rejected under s 44(1) in the case of honest concurrent use or other circumstances making it proper to do so. The authorities establish that the principal criteria for determining whether registration should be permitted pursuant to s 44(3) include:

   (1) the honesty of the concurrent use;

   (2) the extent of the use in terms of time, geographic area and volume of sales;

   (3) the degree of confusion likely to ensue between the marks  in question;

   (4) whether any instances of confusion have been proved; and

   (5) the relevant inconvenience that would ensue to the parties if registration were to be permitted.

   See In Re Alex Pirie & Sons Ltd’s Application (1932) 49 RPC 195; (1933) 50 RPC 147 at 159-160; In Re John Fitton & Co Ltd’s Application (1949) 66 RPC 110 at 112; and Stingray Surf Co Pty Ltd v Lister [1997] ATMO 3; (1997) 37 IPR 306 at 310-311. These factors are not necessarily exhaustive of the matters to be considered, but they are a useful guide: see In Re Electrix Ltd’s Application [1957] RPC 369 at 379.

   [10] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192, [30].

1. When considering the likelihood of confusion I note that (given the lack of geographical restrictions in either mark) in the present case the respective trademarks fall into the category of ‘triple identity’ which the Trade Marks Office Manual of Practice and Procedure (‘the Manual’) defines as those cases involving ‘trade marks which are identical or substantially identical, and used for the same goods/services in the same geographical area’. I agree. In such a case, the Manual requires that the evidence of honest, concurrent use produced by the Applicant should be substantial in terms of volume, duration and area of use.

2. The issue with the evidence of use provided by the Applicant is that it solely consists of evidence of purchase of clothing described as ‘Route 66’ by the Route 66 Car and Bike Club. There is no evidence of the Applicant’s connection with the Route 66 Car and Bike Club or any use the Trade Mark by the Applicant. There is no documentary evidence that any of the clothing displayed the Trade Mark, as opposed to ‘Route 66’ or some other wording relating to the Route 66 Car and Bike Club. Finally there is no documentary evidence of any sales of clothing bearing the Trade Mark – rather it appears that the much of the purchased clothing was given away to members of the Route 66 Car and Bike Club. Such use is not use of the Trade Mark for the Applicant’s Goods under s17 of the Act, which requires the trade mark to be used to distinguish goods or services provided in the course of trade. Rather, the free distribution of ancillary promotional material is generally regarded as not use, or use in relation to the product or service being promoted (in this case car and bike club services) rather than being use in relation to the goods which carry the advertisement.[11]

   [11] Watermark Restaurant Pty Ltd v The Watermark Hotel Group Pty Ltd (2002) 55 IPR 406, 415.

3. It is unclear whether the Applicant’s evidence that the turnover was $30,000 reflects the cost of purchasing the clothes or revenue from sales, but even if the latter, that is a very limited annual turnover.

4. While I accept the Applicant’s evidence that the Applicant adopted the Trade Mark without any knowledge of the Opponent and, given the limited trade it has engaged in, there has been little confusion I find that the evidence of use of the Trade Mark by the Applicant (if any) is insufficient to persuade me that this is an appropriate case to allow the registration to proceed pursuant to s 44(3)(a) of the Act.

Subsection 44(4): prior continuous use

1. Subsection 44(4) gives an applicant the option of overcoming a finding under s 44(1) through the provision of evidence showing that it continuously used the Trade Mark for a period beginning before the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

2. In the present case the priority date for the registration of the Device Mark is 23 February 2004.

3. For the reasons set out in paragraph 30 above, I find that the Applicant has not satisfied its burden to provide evidence showing that it continuously used the Trade Mark from before 23 February 2004 on the Applicant’s Goods.  The evidence merely shows that prior to 23 February 2004 the Route 66 Car and Bike Club purchased clothing described as “Route 66”.  It does not show:

a)That the clothing bore the Trade Mark;

b)That the Trade Mark was used in the course of trade to distinguish the Applicant’s Goods from other providers.  There is no evidence of clothing bearing the Trade Mark ever being sold.  Rather it appears that (certainly prior to 2005) the clothing ordered by the club was given away to members and hence merely ancillary promotional material to the services offered by the Route 66 Car and Bike Club; and

c)That any use of the Trade Mark was use by the Applicant as opposed to use by the Route 66 Car and Bike Club.  No explanation about the connection between the Applicant and the Route 66 Car and Bike Club has been provided.   

1. Given the above I am not satisfied on the evidence before me that the requirements under ss 44(4) of the Act are satisfied and accordingly find that the Opponent have established its ground of opposition under s 44(1) of the Act.

Decision

1. I have found the Opponent has established the ground of opposition it raised pursuant to s 44 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark.

Nicholas Smith
Hearing Officer
Oppositions and Hearings
7 August 2018