Sixty International SA v New Balance Athletic Shoe, Inc

[2012] ATMO 37

TRADE MARKS ACT 1995

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

Re:Opposition by Sixty International SA to registration of trade mark application 1266508(25) - N ERGY (Logo) - filed in the name of New Balance Athletic Shoe, Inc.

Delegate:

Iain Thompson

Representation:

Opponent: Written submissions by Watermark, Patent & Trade Mark Attorneys.

Applicant: Fiona Symons of Davies Collison Cave

Decision:

2012 ATMO 37

s52 proceedings, s44, trade marks not deceptively similar. Section 60, evidence does not establish reputation of opponent’s trade mark. Opposition not established

Background

1. These proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) concern opposition to the registration of a trade mark, current details of which appear below:

Application No: 1266508

Owner:  New Balance Athletic Shoe, Inc. (‘the applicant’)

Priority Date:  9 October 2008

Goods:  Class 25: Clothing, footwear and headgear

Trade Mark:  

1. The application was examined in compliance with section 31 of the Act and advertised in the Australian Official Journal of Trade Marks as accepted for possible registration on 12 February 2009. On 6 May 2009, International Stars SA filed Notice of Opposition (‘the Notice’) to the registration of the trade mark: the Notice includes the grounds under sections 44 and 60 which were subsequently argued at a hearing. The trade mark registrations and rights on which International Stars SA relied have been assigned to Sixty International SA (‘the opponent’)[1] and the opposition now proceeds as if the Notice had been filed in the name of the opponent. Section 53 of the Act allows:

   [1] I note that the registration on which the opponent relies was assigned to Arabella Pte Ltd of Singapore on 15 December 2011 (and a new address for service in Australia has been entered on the registration) but I have not received notice that the opposition is to proceed as if the Notice of Opposition was filed by Arabella Pte Ltd.

   53Circumstances in which opposition may proceed in name of a person other than the person who filed the notice

   If:

   (a)after a person has filed a notice of opposition, the right or interest on which the person relied to file the notice of opposition becomes vested in another person; and

   (b)the other person:

   (i)notifies the Registrar in writing that the right or interest is vested in him or her; and

   (ii)does not withdraw the opposition;

   the opposition is to proceed as if the notice of opposition had been filed in that other person’s name.

   Note:For file see section 6.

The Hearing

1. The hearing was before me as a delegate of the Registrar of Trade Marks in Melbourne on 6 March 2012.  The opponent relied on written submissions by its attorneys, Watermark Patent and Trade Mark Attorneys.  Ms Fiona Symons of Davies Collison Cave represented the applicant.

Onus

1. The opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.  See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146; 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 at [22] to [26] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051.

The Evidence

1. The evidence in support consists of:

   ·   Statutory Declaration of Brian Morton Hendy dated 6 August 2010 together with Exhibits “BMH-1” to “BMH-2” (“the First Hendy Declaration”)

   ·   Statutory Declaration of Peter G. McWhirter dated 6 December 2010 together with Annexure A (“the McWhirter Declaration”).

2. The evidence in answer consists of:

   ·   Statutory Declaration of Ricky Bryan Knight dated 2 June 2011 together with Exhibits “RBK-1” to “RBK-11” (“the Knight Declaration”);

   ·   Statutory Declaration of Fiona Marie Symons dated 3 June 2011 together with Exhibit “FMS-1” (“the Symons Declaration”).

3. The evidence in reply comprises:

   ·   Statutory Declaration of Brian Morton Hendy dated 5 September 2011 together with Exhibits “BMH-1” to “BMH-3” (“the Second Hendy Declaration”).

4. The first Hendy declaration establishes that the opponent relies in its section 44 ground on the Australian trade mark registration which is summarised below:

Registration No:              1076640

Priority Date:  20 September 2005

Goods:  Class 25: Clothing, footwear, headgear

Trade Mark:  ENERGIE

1. Mr McWhirter in his declaration states that he is a director of Brother Sista Pty Ltd (‘BS’) which was an Australian wholesaler and retailer of goods which bear the opponent’s trade mark.  Mr McWhirter states that the goods BS distributed and retailed bearing the ENERGIE trade mark were, “apparel, footwear and accessories.”

2. Mr McWhirter gives a history of BS’s distribution and retail of goods bearing the ENERGIE trade mark through wholesale to stores “eg David Jones” and through BS’s own two stores in Brisbane and Melbourne.  The total number of goods sold by BS in Australia between 2007 and 2009 was around 25,000 “products”.  While Mr McWhirter is not specific about what the opponent’s product is, I surmise from an advertisement exhibited to his declaration that the goods on which the opponent’s trade mark is used are sports shoes.  Mr McWhirter concludes his declaration by stating at [10]:

   I have been involved in the clothing industry for 38 years. During that time I have become familiar with the names and brands used in the industry. I am not aware of any other clothing brands in Australia or elsewhere that use the trade mark ENERGIE, ENERGY or similar. I believe that throughout Australia the trade mark ENERGIE (and English spelling ENERGY) denotes the products of the Opponent exclusively and is recognised by the relevant trade and purchasing public as being associated with the Opponent.

3. Ms Symons is a solicitor employed by the attorneys for the applicant.  In her declaration, she states that she searched the records of the Australian Trade Mark Office at and found that the word ENERGY and its phonetic equivalents are common elements of trade marks registered in Class 25 of the International (Nice) Classification of Good and Services.  Ms Symons located about 30 registrations and applications which contain or consist of the word ENERGY (or its phonetic equivalents) of which some of the most relevant are:

Registration No:              640477

Owner:  Target Australia Pty Ltd

Priority Date:  14 September 1994

Goods:  Class 25: Clothing, footwear and headgear

Trade Mark:  ENERGY SPORT

Registration No:              701577

Owner:  John James Gilmore

Priority Date:  2 February 1996

Goods:Class 25: Clothing: (eg) shirts, T-shirts, shorts, pants, underwear, sports clothing, hats, caps footwear, and accessories

Trade Mark:  

Registration No:              763329

Owner:  Krites Pty Limited

Priority Date:  27 May 1998

Goods:  Class 25: Clothing

Trade Mark:  NRG

Registration No:              996756

Owner:  Progetto Impact di Luca Capelli & C. S.a.s.

Priority Date:  16 January 2004

Goods:  Class 25: Clothing, shoes and hats

Trade Mark:  SPRING ENERGIE

Registration No:              1049673

Owner:  Rylor Pty Limited

Priority Date:  8 April 2005

Goods:Class 25: T-shirts; tank tops; shirts; jeans; baseball caps; beanies; thongs; and other footwear in this class; shorts; boardshorts; swimming costumes; jackets; jumpers; sweat shirts; tracksuits

Trade Mark:  URBAN ENERGY

1. Ms Symons in her search of the Register of Trade Marks also located the trade marks which were then registered in the name of the opponent including that which is specified at paragraph 8, above, as well as the one which appears immediately below:

Registration No:              965138

Priority Date:  6 August 2003

Goods:Class 25: Footwear excluding socks, stockings and hosiery; headgear

Trade Mark:  

1. Mr Knight in his declaration declares that he is Pacific Area Manager of New Balance Australia Pty Ltd, a position he had then held for the last seven years.  Mr Knight attests to the use of the opposed trade mark in Australia by the applicant since 1999.

2. The opposed trade mark is one, states Mr Knight, which has evolved out of, and which references, the applicant’s well-known trade marks which appear below:

   and  

3. Retail sales of the applicant’s footwear in Australia bearing the above trade marks have been well in excess of ten million dollars a year since 2005.

4. In his evidence in reply Mr Hendy refers to a decision of the Office for Harmonisation in the Internal Market (OHIM) involving both the same trade marks and parties in which OHIM upheld the opposition to registration.  In doing so, Mr Hendy states, OHIM made the following observations:

   •         ‘Although they are not depicted in the same way they still show some visual resemblance as these letters are represented in quite a standard script in contested sign’

   •         ‘Aurally, the earlier sign and contested mark are pronounced in the same way ... /E-NER-DJI/ in English’

   •         ‘The stylization of the initial N of the contested mark ... makes it stand as an isolated letter which is not to be linked to the ensuing letters. Hence its pronunciation ... (/EN/)’

   •         ‘Obviously, the stress is in the same first syllable ... and the rhythm and the intonation are identical’

   •         ‘The visual differences in the letters at the beginning and at the end of both marks are therefore not noticeable at aural level’

   •         ‘the signs... convey the same semantic concept and are conceptually identical’

Discussion

Section 44

1. Section 44 of the Act relevantly provides:

   44Identical 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)the applicant’s trade mark 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.

2. It is not argued by the opponent that the trade marks are substantially identical.  Additionally, the trade mark on which the opponent primarily relies has an earlier priority date than that of the opposed application and the goods in question are similar goods.  Therefore I need only to consider here whether the trade marks are deceptively similar.

3. The expression ‘deceptively similar’ is defined by section 10 of the Act:

   10Definition 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.

4. The expression ‘deceptively similar’ has also been the subject of judicial consideration.  In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at paragraph 13 Windeyer J said:

   [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 television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same”. (1937) 58 CLR, at p 658

5. The assessment of the deceptive similarity of the trade marks is not an abstract one: the assessment is contextual and is to take place against the marketplace in which the goods in question are sold: this aspect of the comparison was stressed in In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, above, where Parker J said:

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

6. Further, the comparison is to be moderated by the factors discussed in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [50] by French J who said:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) 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 it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

7. Additionally, the nature of the trade marks themselves must be considered: Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; (1952) 86 CLR 536 (RAINMASTER v RAIN KING); “Frigiking” Trade Mark [1973] RPC 739 (THERMO-KING v FRIGIKING);[2] Conde Nast Publications Pty Ltd v Virginia Taylor [1998] FCA 864; (1998) 41 IPR 505 (VOGUE v EUROVOGUE & Device); Miss World (Jersey) Limited & Anor v Mrs of the World Pageants, Inc. [1988] FCA 12; (1988) AIPC 90-460 (MISS WORLD v MRS WORLD); Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100 (2008) 75 IPR 478 (INNER HEALTH PLUS v HealthPlus); Coca-Cola Co (Canada) Ltd v Pepsi- Cola Co (Canada) Ltd (1942) 59 RPC 127 (COCA COLA v PEPSI COLA); Sports Cafe Ltd v Registrar of Trade Marks [1998] FCA 1614; (1998) 42 IPR 552.

   [2] Per Whitford J “necessarily [the Court’s deliberations] involve some enquiry as to the inherent distinctiveness of a part which is common to both marks under consideration”.

8. The opponent submits that:

   The question of whether there is a likelihood of confusion is to be answered not by reference to the manner in which the Opponent has used its mark in the past, but by reference to the use to which the Opponent can properly put its ENERGIE mark: Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353 at 362 per Mason J.

   Accordingly, we submit that for the purposes of Section 44 of the Act, the question of whether there is a likelihood of confusion must be tested as if the Opponent has registered (or uses) its ENERGIE mark in the same manner and in the same font and in the same style (including ellipse)[3] as that to which the Applicant has applied to register the N ERGY mark

   [3] I take the opponent’s reference to the ‘ellipse’ as referring to the lozenge shape within the opposed trade mark.

9. I do not consider this submission to be well-founded.  Some guidance as to the possible notional uses of the opponent’s trade mark 1076640(25) ENERGIE can be gauged by a consideration of the effects of subsection 7(1) which provides:

   7Use of trade mark

   (1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

   Note:For prescribed court see section 190.

10. If the opponent’s trade mark registration 1076640(25) ENERGIE was ‘got up’ in a similar manner to the opposed trade mark, would that be a use of the registration without alterations or additions which do not substantially affect its identity?  The obvious and immediate answer to this question is ‘no’.  The use of the opponent’s trade mark ‘got up’ in a similar manner to the opposed trade mark would not be a use of the trade mark as registered – there are very obvious differences between the identities of the registered trade mark and the postulated trade mark – a factor inherently conceded by the opponent in not pressing argument that the trade marks are substantially identical.

1. The opponent also submits that the trade marks in question are likely to be imperfectly remembered for each other and draws my attention to Rysta Limited’s Application (1943) 60 RPC 87 at 108, where Luxmore LJ held that:

   It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.

   The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person’s wants.

2. The opponent submits that, “There are clear and obvious visual, phonetic and conceptual similarities between the marks.  Both marks are essentially the same word (ie. ENERGY) although with slight stylisation, and phonetically identical but with different spelling. As such, the respective marks are phonetically and conceptually identical, and visually they differ only immaterially.”

3. The opponent further submits:

   We submit that the impression or recollection which is carried away and retained by consumers of the Opponent’s mark(s) is the word ENERGY. The mark, being a mark used in respect of clothing, footwear and headgear, is from its nature likely to be the source of some verbal description by which buyers will express their desire to have the goods (eg. to retail shop assistants, phone enquires) or have the goods promoted to them (eg. by radio, word-of-mouth).

   We submit that if a consumer was to refer to the marks “N ERGY/ENERGIE” verbally, the listener would be unable to differentiate between the Opponent’s mark and the Applicant’s mark. A shop assistant is likely to ask a consumer “Do you mean ENERGY?” to which the consumer’s response must be “Yes”. The risk of confusion is real and not trivial.

   It would be impossible for the Applicant to advertise its clothing on the radio without confusing consumers. Such aural similarities are important for the purposes of determining the likelihood of deception or confusion. For example, an Australian travelling overseas may purchase the Opponent’s goods in Europe and be informed that the Opponent’s clothing is also available in Australia. In this scenario, there is a reasonable likelihood that this person (or a friend of this person) will erroneously conclude that clothing, footwear and headgear marketed and sold under the mark N ERGY in Australia is in fact the Opponent’s clothing. We submit that it would not be unreasonable for a consumer to believe that the Opponent’s mark might have a different spelling in Europe than in English speaking countries like Australia. Further, as can be seen from the Opponent’s registrations, it has adopted different stylisations of its mark over time.

   The prominent, memorable and essential feature of the respective marks is the same. We submit that consumers would expect that two marks sharing the same word element would belong to the same trader, albeit in different international markets. As stated in the McWhirter Declaration, the Opponent’s Australian distributor for nine years, with 38 years experience in the clothing industry, is not aware of any other clothing brands in Australia or elsewhere that use the trade mark ENERGIE, ENERGY or similar.

   We submit that there is a very real risk that a consumer will hear or see an advertisement for ENERGIE clothing, and mistakenly purchase clothing bearing the trade mark N ERGY. Further, we submit that there is a very real risk that a consumer will hear or see an advertisement for N ERGY clothing and immediately recall the Opponent’s mark ENERGIE. It is precisely this sort of imperfect recollection that could lead to a purchase of a product that does not originate with the Opponent, when in fact they had intended to do so. This likelihood of confusion contributes to the deceptive similarity of the Applicant’s mark.

   Sargant LJ made the following observation in In the Matter of London Lubricants (1920) Limited’s Application to Register a Trade Mark (1925) 42 RPC 264 at 279:

   But the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.

   We submit that Sargant LJ’s comments are directly relevant to determining the likelihood of confusion in the present case, given that the first syllable is identical (ie. “EN” v “N”).

4. If the opponent’s arguments have merit and force, I consider that its own registrations should have been impossible to obtain in the face of registration 763329(25) NRG in which the letters appear as an obvious shortform of the word ENERGY.  Clearly, in view of registration 763328(25) NRG and, for example, 996756(25) SPRING ENERGIE (which contains the opponent’s registered trade mark) there are additional factors to be considered when assessing the deceptive similarity of trade marks in Class 25 which contain the word ENERGY or its phonetic equivalents.

5. Moreover, the registrations and applications exhibited to Ms Symons’s declaration make it plain that in registering the trade mark ENERGIE in Class 25, the opponent has not gained a monopoly in the word ENERGY (and its phonetic equivalents) per se in relation to the goods of interest.

6. Although the use of the word ENERGY in relation to sports clothing and footwear is anthropomorphic, the word does impart a desirable attribute to the goods or an effect produced in the use of such goods by the purchaser.  While such an attribute may be unlikely or even impossible for such goods to effect, this claim is one which reflects the nature of modern commerce and marketing.  This claim is also mirrored in the 30 Australian trade mark registrations and pending applications which contain the word ENERGY or its phonetic equivalent which are listed in Ms Symons’s declaration.

7. Viewed in this manner, the question becomes a consideration of whether the trade marks have sufficient differences between them to be adequately distinguished by potential purchasers without the likelihood of deception or confusion arising (keeping in mind that the trade marks refer to a desirable attribute in the goods or the effect of the goods on the purchaser).

8. Ms Symons also referred to imperfect recollection in her submissions and I consider that there is some strength in her observations.  Ms Symonds referred me to the words of French J in METRO at [61]:

   His Honour’s reference to the familiarity of the name “Woolworths” in Australia was appropriate. Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, as is the present case, it would be artificial to separate out the physical features of the mark from the viewer’s perception of them. For in the end the question of resemblance is about how the mark is perceived. In the instant case the visual impact of the name “Woolworths” cannot be assessed without a recognition of its notorious familiarity to consumers.

9. This observation was further discussed by the Court in C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; [2001] ATPR 41-793; [2000] AIPC 91-640; (2000) 52 IPR 42 (‘HILL OF GRACE’) at [52]:

   Woolworths was not an infringement case and, of course, the notoriety taken into account was not any notoriety attaching to marks already registered (or marks applications for which had been lodged before the Woolworths application); the notoriety attached to an element of the mark for registration of which Woolworths had applied. Nevertheless, in our view, Woolworths suggests a proposition for which the cases on which the appellants rely may be taken as authority. It is that, in assessing the nature of a consumer’s imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration. It is unnecessary to consider whether the cases are authority for precisely that proposition. All that is necessary for present purposes is to hold, as we would, that they are authority for no wider proposition in relation to the relevance, on a question of deceptive similarity in proceedings where it is alleged under s 120(1) that a registered mark has been infringed, of evidence as to the reputation attaching to the mark. A wider proposition would not, in our view, be consistent with the earlier, and binding, authority to which we have referred. It is unnecessary, in order to decide this case, to go further.

10. The opponent’s well-known trade mark which appears, above, at paragraph 14 of these reasons is prominent within the opposed trade mark.  Mr Knight in his declaration has attested to well in excess of ten million dollars annually of sales of sports shoes under the applicant’s well-known trade mark in Australia.  I am satisfied that, in view of the principle enunciated in METRO and HILL OF GRACE, above, that the trade marks are unlikely, on the balance of probabilities, to be imperfectly remembered for each other.

11. Further, although there are abstract similarities between the trade marks, there are (when considered in relation to the effects on potential purchasers of the nature of the trade marks, the goods, and the context of the marketplace) considerable visual and conceptual differences between them.  The differences between the trade marks when these contextual factors are taken into consideration are such that it is unlikely, in my consideration, that the abstract similarities are likely to be the source of confusion or deception.  The trade marks are, in my consideration, quite different ways of imparting the same idea about a desirable attribute or effect of the goods.

12. In my consideration, the OHIM decision concerning the same trade marks laid weight on the abstract similarity of the trade marks while not balancing that weight with consideration of nature of the trade marks and the marketplace context of their use and the effects of these factors on the potential purchaser.

13. The opponent has not established its opposition under section 44 of the Act.

Section 60

1. Section 60 of the Act provides:

   60Trade 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.

2. The threshold over which an opponent must cross in the establishment of this ground is that its trade mark must have had a reputation in Australia before the priority date of the opposed application in respect of those particular goods or services.

3. Reputation is to be assessed according to the tests in McCormick & Company Inc v McCormick [2000] FCA 1335 stated by Kenny J at [81]:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

4. Kenny J went on to say at [86]:

   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.

5. Mr McWhirter in his declaration does not give precise details of the particular goods on which the opponent’s trade mark has been used.  He initially refers in his declaration to the opponent’s ENERGIE trade mark as being used since 2006 on “apparel, footwear and accessories” and he subsequently refers to such use as being on “the product”.  Elsewhere, Mr McWhirter expresses his opinion about the likelihood of confusion between “clothing brands”.  I have speculated that the opponent’s goods might be sports shoes due the appearance of those goods in an advertisement exhibited to the declaration.  Apart from the exhibit to the declaration, there is no real information as to whether the opponent trade mark might have gained a reputation in respect of sports shoes or, for example, boiler suits or bridal gowns.

6. Further, while discussing the advertising expenditure in relation to the trade mark, Mr McWhirter states, “According to my records, [amount redacted] was expended in advertising and marketing the Miss Sixty and Energie products in Australia from 2003 – 2009.”  This is problematic since I have no idea whether the amount stated should be apportioned between the opponent’s MISS SIXTY and ENERGIE trade marks or if the trade marks are used together on the goods.

7. Additionally, the goods, if they be sports shoes, are mass-market items and both the annual advertising expenditure (below $20,000) and the wholesale sales figures which Mr McWhirter provides do not satisfy me that the opponent’s trade mark was, at the priority date, “recognised by the public generally” in terms of the test in McCormick.

8. When the concerns in the preceding two paragraphs are added to the general imprecision of the opponent’s evidence about the particular nature of its goods, I do not consider that it is open for me to find that the opponent has established to my satisfaction that its trade mark had a reputation in relation to any particular goods at the priority date.

9. The onus is on the opponent to establish that its trade mark had a reputation in Australia in relation to particular goods before the priority date and I am not satisfied that the evidence demonstrates this.

10. The opponent has not established its opposition in terms of section 60 of the Act.

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

   (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.

2. The opponent has not established its opposition to the registration of the trade mark.

3. The trade mark application may then proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application be in accordance with the Court’s order or direction.

Costs

1. The applicant, having been successful, is entitled to its costs which I award against the opponent at the official scale.

Iain Thompson

Hearing Officer

Trade Marks Hearings

18 April 2012