Sixty International SA. v Rodi Jeans Pty Ltd

[2011] ATMO 62

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 1244924 (25) - ENERGY - filed in the name of RODI JEANS PTY LTD.

Delegate:

Bianca Irgang

Representation:

Opponent: Mr Brian Hendy of Watermark

Applicant: Not present at the hearing

Decision:

2011 ATMO 62

Section 52 opposition: sections 44, 58 and 60 pressed at the hearing – s44 ground of opposition established for all goods –applicant’s trade mark is deceptively similar- no requirement to consider other grounds - Costs awarded against the applicant.

Background

1.     Rodi Jeans Pty Ltd (‘the applicant’), filed trade mark application number 1244924 on 16 June 2008 in class 25 of the International Classification of Goods and Services. Current details of the application are set out below.

Trade mark:  

Trade mark application:              1244924

Filing Date:  16 June 2008

Specification:  Class 25: Clothing  

2.     The application was accepted for possible registration and the official notice of acceptance was published in the Australian Official Journal of Trade Marks dated 16 October 2008. Subsequently Sixty International SA (‘the opponent’), formerly International Stars SA, filed a Notice of Opposition (‘the Notice’) to registration of the application. Thereafter the parties served and filed evidence in accord with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

3.     I heard the matter in Canberra as a delegate of the Registrar of Trade Marks on 20 April 2011. The opponent was represented by Mr Brian Hendy of Watermark. The applicant was not present at the hearing and was not represented.

Grounds of Opposition

4.     The Notices nominated most of the grounds of opposition available under the Trade Marks Act 1995.  The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His Honour’s findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

[1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599; (2006) AIPC 92-146

[2] [2009] FCA 891, (2009) AIPC 92-355; (2009) 82 IPR 13, para 22-27

5.     At the hearing the opponent advised that it was not formally withdrawing any of the grounds of opposition listed in the Notice but that it would provide submissions only on section 44, 58 and 60 of the Act. However, the opponent has not provided any evidence specific to prosecuting the grounds under the remaining grounds of opposition. Without more information than the opponent has provided in its evidence these grounds cannot be established and I find that they have not been established.

Evidence

6.     The evidence of the parties consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Robynne Lyndsay Sanders	Attorney at Watermark Patent and Trade Mark Attorneys	5 February 2010	RLS-1 to RLS-2
Evidence in Answer
Atilla Atasever	Operations Manager at Rodi Jeans Pty Ltd	6 May 2010	-
Evidence in Reply
Peter G McWhirter	Director of Brother Sista Pty Ltd	6 December 2010	Annexure A

Opponent’s Evidence

7.     The statutory declaration of Ms Robynne Lyndsay Sanders (‘the Sanders declaration’) states that the opponent is the owner of a number of trade mark registrations for the trade mark ENERGIE in many countries around the world including Australia. Some of the international trade mark registrations date from 1990 (Exhibit RLS-1).

8.     Details of these Australian registrations are as follows:

Trade mark:  

Trade mark registration:             854658

Filing Date:  24 October 2000

Specification:  Class 9: Eye-glasses and sun-glasses

Endorsements:  The applicant has advised that the translation of the French word ENERGIE appearing in the trade mark is ENERGY.

Trade mark:  

Trade mark registration:             965138

Filing Date:  6 August 2003

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

Endorsements:  The applicant has advised that the translation of the French word ENERGIE appearing in the trade mark is ENERGY.

Trade mark:  ENERGIE

Trade mark registration:             1042319

Filing Date:  16 February 2005

Specification:  Class 18: Leather and imitations of leather and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery

Endorsements:  The applicant has advised that the translation of the French word ENERGIE appearing in the trade mark is ENERGY.

Trade mark:  ENERGIE

Trade mark registration:             1076640

Filing Date:  20 September 2005

Specification:  Class 25: Clothing, footwear, headgear

9.     The Sanders declaration also states that the opponent has just celebrated 20 years of trading using its ENERGIE trade mark. Print outs from the opponent’s website indicate that the opponent has been using its ENERGIE trade mark on goods for 20 years (Exhibit RLS-2). However, the evidence suggests that while the ENERGIE trade mark has been used overseas for 20 years, it has only recently been used in Australia.

10.   The statutory declaration of Mr Peter McWhirter (‘the McWhirter declaration’) states that the company Brother Sista Pty Ltd (‘Brother Sista’) has been a distributor in Australia for the opponent for 9 years. According to Mr McWhirter, apparel, footwear and accessories bearing the opponent’s ENERGIE trade marks have been sold either directly to Australian consumers through Brother Sista’s own retail stores located in Brisbane and Melbourne Central or to its wholesale customers (eg David Jones) who would in turn sell ENERGIE branded goods to Australian consumers through their own retail stores.

11.   The McWhirter declaration also outlines the total number of goods bearing the ENERGIE trade mark purchased since 2007 and the financial total of Brother Sista’s wholesale sales of these products in Australia. The total profit derived from sales of these goods is not insignificant. Mr McWhirter also states that a considerable sum has been spent on advertising and marketing the ENERGIE goods since 2003. An example of an advertisement for the ENERGIE goods is included in Annexure A to the McWhirter declaration although the advertisement is undated.

Applicant’s Evidence

12.   The statutory declaration of Mr Atilla Atasever (‘the Atasever declaration’) states that the applicant adopted its ENERGY trade mark due to being unable to supply its Mish Mash branded goods to two locations in (I assume) the same geographic area. Mr Atasever says that the applicant decided to use the word ENERGY as its trade mark because its Mish Mash label had the phrase ‘New Rising Energy’ on the garments.

13.   Mr Atasever attests that the applicant started showing new customers the sample range of goods bearing its new ENERGY trade mark in 2008 at roughly the same time its trade mark application was advertised as having been accepted. The applicant received a number of orders for its ENERGY goods but Mr Atasever says that the ENERGY trade mark was only put on five or six garments before the rest of the range was put on hold due to opposition proceedings commencing against its trade mark application.

Section 44 - Identical etc. trade marks:

14.   Section 44 of the Act relevantly provides:

44Identical etc. trade marks

(1)Subject to subsections (3) and (4), and 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)…; 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.

15.   To establish its opposition in terms of section 44 of the Act the opponent must show all of the following:

Ø  a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the present applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;

Ø  the trade mark(s) in the name of the other person must be in respect of similar goods or closely related services; and

Ø  the priority date(s) of the other person’s trade mark(s) is (are) the earlier.

16.   The opponent is the owner of trade mark registration 1076640 which has an earlier priority date to that of the opposed trade mark. The opposed trade mark application covers the same goods in class 25 as those relevant to the opponent’s trade mark. The remaining issue for me to determine is whether the opposed trade mark is either substantially identical or deceptively similar to the opponent’s previously registered trade mark.

Comparison of the trade marks

17.   It is obvious that the applicant’s ENERGY trade mark is not substantially identical to the opponent’s various ENERGIE trade marks according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd[3].  

[3] (1963) 109 CLR 407 at 414

18.   On the other hand, the determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have recalling the opponent’s trade mark, to the impression they would get from the applicant’s trade mark.[4]  The probability of deception must be finite and non-trivial.[5]

[4] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, per Windeyer J at 415

[5] Registrar of Trade Marks v Woolworths Limited 45 IPR 411, per French J at [43]

19.   The test to determine whether trade marks are ‘deceptively similar’ is set out in Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited (1961) 109 CLR 407 at 415:

The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … 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 impression that such persons would get from the defendant’s [trade mark]

20.   The Court added at 416, that:

[The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.

21.   The principles laid out in these tests have not been challenged.

22.   In comparing the two trade marks, I find the opposed ENERGIE trade mark to be deceptively similar[6] to the opponent’s registered ENERGY trade mark, taking into account the standard tests involving imperfect recollection of the opponent’s trade mark when faced with the application trade mark. A judgement which provides direction on the issue is Rysta Limited’s Application[7], where Luxmoore LJ held at 108 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.

[6] Registrarof TradeMarks v Woolworths Limited, 45 IPR 411 at [50], Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd, (1963) 109 CLR 407 at 414, Australian Woollen Mills Limited v F. S. Walton and Co Limited, 58 CLR 641 at 658

[7] (1943) 60 RPC 87

23.   The opponent argued that the marks look similar, are pronounced similarly and convey the same idea so that consumers with knowledge of the opponent’s trade mark would erroneously purchase the applicant’s goods on a mistaken belief that goods sold under the applicant’s trade mark were the opponent’s goods. I agree with the opponent in this regard.

24.   Visually, both trade marks are a single word which begins with the same five letters ‘ENERG-‘. The trade marks only differ in the spelling of the endings and ‘-Y’ and ‘-IE’ are common substitutions for each other. I also note that ENERGIE is the French word for the English word ENERGY.

25.   After applying the relevant tests and with reference to Re Application by the Pianotist Co Ltd[8] I accept that the visual and aural similarities between ENERGIE and ENERGY only serve to emphasise that, phonetically, it is probable the trade marks would be pronounced very similarly (if not being pronounced exactly the same way) by the general monolingual Australian customer. This is particularly given the tendency in the English language to slur the termination of words[9].

[8] Re Application by the Pianotist Co Ltd  (1906) 1A IPR 379

[9] London Lubricants (1920) Limited Application (1995) 42 RPC 264

26.   As already discussed, the trade marks consist of the single and phonetically equivalent words ENERGIE and ENERGY. I note the stylized font in which the applicant’s ENERGY trade mark is rendered but this is a minor variation and the trade mark is always likely to be referred to simply as ENERGY. This similarity will be likely to induce traders and the public to believe that goods branded with this trade mark or those branded with opponent’s ENERGIE trade mark emanate from the same trade source.

27.   I am satisfied there is a real tangible danger of these trade marks being confused in the marketplace in respect of the goods in class 25 which both parties are claiming. Taking everything into account, the opponent has established the ground of opposition under the provisions of section 44, in respect of the goods in class 25.

28.   However, subsections 44(3)(a) or (b) of the Act make provision for the applicant to overcome a section 44 ground of opposition on the basis of prior use, honest concurrent use or other circumstances.

29.   A consideration of the evidence demonstrates that the applicant had not used its ENERGY trade mark before the priority date of the opposed trade mark. The applicant has not been able to provide any evidence of use before its filing date so the provisions of section 44(3)(a) are not applicable. Nor has the applicant been able to provide any evidence which would support acceptance of its trade mark because of other circumstances relevant to a consideration of the provisions of section 44(3)(b). Therefore, the opponent has established the section 44 ground of opposition.

30.   Having found in favour of the opponent in terms of section 44 there is no need for me to discuss the other grounds set out in the notice although these grounds or any others in the Act may also be relied on in the event of an appeal from this decision.

Decision

31.   Section 55 of the Act provides:

Decision

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.

32.   I find that the opponent has met the onus upon it, in terms of the grounds of opposition under section 44 argued at the hearing. Accordingly, I refuse to register trade mark application 1244924.

Costs

33. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark applicant Rodi Jeans Pty Ltd.

Bianca Irgang

Hearing Officer

Trade Marks Hearings

14 July 2011