Societe Guy Laroche v Uniopt GmbH

[2005] ATMO 54

TRADE MARKS ACT 1995

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

Re:Opposition by Societe Guy Laroche to registration of trade mark application 925452(9) - ROBERT LA ROCHE - filed in the name of Uniopt GmbH.

Delegate:	Terry Williams
Representation:	Opponent: Michael O’Donnell, Phillips Ormonde & Fitzpatrick, patent attorneys Applicant: written submissions by Adrina Chia, solicitor, Schweizer Kobras
Decision:	S 52 opposition:  ROBERT LA ROCHE not deceptively similar to GUY LAROCHE – S 44: spectacles and sunglasses not of same description as ‘fashion goods’ in classes 25, 18 14 – s 60: overseas reputation not shown to be extensive, nor to have extended to Australia – no grounds established, registration to proceed.

Background

1. Uniopt GmbH (“the applicant”) has applied to register the trade mark ROBERT LA ROCHE in respect of spectacle frames, spectacle cases, optical glasses and sunglasses.

2. The Trade Marks Office has examined the application and advertised it for possible registration.  However, Societe Guy Laroche (“the opponent”) has filed a notice opposing registration of the trade mark. 

3. Very briefly, the opponent is a company that now constitutes the clothing design business started by Guy Laroche in the 1950s.  More recently M. Laroche was awarded the Knight of Legion of Honour, in 1987, in recognition of his “outstanding works and contribution to the French economy”. 

   Evidence

4. The opposition has involved the service and filing of evidence in terms of the scheme set out in part 5 of the Trade Mark regulations, with evidence in support of the opposition, in answer to it and in reply.  I also granted permission to the opponent to serve and rely on further evidence.

   Opponent’s evidence in support

Declaration by	Annexures
Jena Francois Ferrandiz	1-10

Applicant’s evidence in answer

Statement by	Annexures
Michael Pachleitner	A - W
David Wymond	A

Opponent’s evidence in reply

Declaration by	Annexures
Saskia Jahn	SJ-1

Opponent’s further evidence

Declaration by	Annexures
Michael O’Donnell	MOD 1-4

1. I note that Mr O’Donnell may well have raised a valid procedural point with regard to the applicant’s evidence.  This is not in the form of a declaration, despite the express requirement of reg 21.17(1).  The format, including making of the declaration before an authorized person, is controlled by reg 21.6 and 21.7.  Ordinarily, staff at the Trade Marks Office would raise this matter with a party that filed such non-declaratory material by way of evidence.  However, this is a courtesy only.  I think that the recipient, if it wishes to dispute the matter, also has some responsibility to bring the failing to light, rather than to leap from ambush at the hearing.  I will give weight to the statements; to allow the opponent to strike out the applicant’s entire filing of material so late in the day would be completely unjust in the present case.  It will be observed that, in the matters that follow, very little hangs on the applicant’s material.  Additionally, the opponent itself relies on the material when it is convenient to do so, in order to use the unsworn statement to bring the applicant’s claim of ownership into question.  I would not want to put a premium on such strategies.  In general, however, were the applicant needing to establish, for instance, a critical act of first user or the honesty of its adoption, reliance on unsworn statements would be risky.

   Grounds argued at hearing

2. Ultimately, the matter was set down for me to hear and decide under delegation from the Registrar of Trade Marks.  At the hearing, the opponent was represented by Michael O’Donnell, who made submissions by telephone.  The applicant, having been served with the relevant evidence and given the opportunity to be heard, has made written submissions, prepared by Adrina Chia of the solicitor firm Schweizer Kobras.

   At the hearing, Mr O’Donnell relied on grounds under s 58, and under s 44 and 60. The latter pair have a common issue, for present purposes, of deceptive similarity.

   Section 58

3. This provision goes to lack of ownership.  It is normally used to press a claim by another firm to the earlier use of the same trade mark for the same goods.  However, it is also broad enough to deal with, as here, claims about a defect in the circumstances attending the filing of the application by the applicant itself.

4. In the present matter, the defect is said to lie in the fact that the actual owner of the trade mark is, in the opponent’s view, Dr Micheal Pachleitner.  Dr Pachleitner is the Chief Executive Officer of the applicant, and owns 90% of the shares of the applicant, which is an Austrian company.  The opponent relies on statements by Dr Pachleitner that he, rather than the applicant company, is the registered owner of certain European and international (Madrid Protocol) registrations.  Dr Pachleitner received those registrations by assignment from Robert Steinko La Roche.  Dr Pachleitner declares that there is “an informal licence agreement” between himself and the applicant company. 

5. This ground of opposition does not succeed.  It may be that certain European trade mark registrations and others registered under the Madrid Protocol are owned by Dr Pachleitner.  For Australia, he has taken the decision to allow the company that is, to all practical purposes, his own personal vehicle, to make an application for registration.  Since it will be the company itself that makes the goods and exports them to Australia, this appears to be entirely logical.

6. The matter is of some resemblance to one I recently decided.  This was an opposition by Orlane SA to registration of trade mark application 794413 in the name of Seri Somboonsakdikul.  In that case, the converse argument was raised.  The director of the company chose to retain ownership of the trade mark while relying on authorised use by his company.  The application came under fire because the degree of authorisation of the user was unclear to the opponent, who asserted that ownership rested with the user, not with Mr Somboonsakdikul.  There, as here, I decided that where ownership is under challenge the focus should be on more tangible failings.  It would be completely inappropriate to attempt to impugn the ownership based on nothing more than a very abstract line between an individual and the company of whom he is a director and, in this case, effectively the owner.  Without evidence of some tenable claim by a third party[1], the ownership ground will generally be too blunt an instrument for fine-tuning of the administrative arrangements set up by an applicant.  The ground of opposition is not established.

   [1] Under the heading of “third party” I would include, for example, dissenting directors or other claimants such as disgruntled former users.  There are none in either of the cases I have dealt with, in contrast to the more complex situation in Segal v Comfort Concepts Pty Ltd (2005) AIPC 92-064.

   Sections 44 and 60

7. It will be convenient to draw these two somewhat different grounds of opposition together because they both fail at the threshold, on the question of the existence of a competing and deceptively similar trade mark.  That issue is dealt with by s 10:

   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.

8. For section 44 purposes, the opponent relies on trade mark registrations for the trade mark GUY LAROCHE.  The details of the registrations are immaterial for this purpose.

9. For section 60 purposes, the opponent relies on reputation arising from use of its GUY LAROCHE trade mark. 

10. I agree with many aspects of Mr O’Donnell’s submissions on this point.  I am to allow for any normal and fair use that the applicant may chose to make of its trade mark.  I must allow for deceptive similarity.  He referred me to the caution in Jafferjee v Scarlett, [2]where Latham CJ noted:

    Two marks, when placed side by side, may exhibit many and various differences, yet the idea left upon the mind by both may be the same, so that a person acquainted with a mark, first registered and not having the two side by side for comparison, might well be deceived if goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. 

    [2] (1973) 57 CLR 115 at 121-122

11. Mr O’Donnell categorised the difference between La Roche, in the applicant’s mark, and Laroche, in the opponent’s mark, as immaterial.  I agree entirely.  He consequently noted that the single point of distinction is between Robert on one hand and Guy on the other.  He argued that both Christian names will be pronounced in the French fashion.  I am not convinced that this is particularly likely, since in my own view Robert has long been known, at least in Australia, as an English and Scottish Christian name.  There is certainly no evidence to support Mr O’Donnell’s claim that it will be pronounced as “rob-air” in the applicant’s trade mark though this might happen, particularly among those who are aware of the opponent’s apparent fame, at least overseas, as a fashion house.  However, since it does not affect my decision, I will assume that the two names Robert and Guy are both pronounced with a French style, rather than a conventional Australian accent.

12. Mr O’Donnell stressed the importance that would be given, in relation to fashion accessories, to the surname.  He noted R K H Pty Ltd v Christian Dior[3].  Mr O’Donnell relied on the portion in italics but I have added some additional material from the original, for better understanding.

    Strictly speaking, the trade mark DION is not an essential feature of the trade mark CHRISTIAN DIOR.  But the words “Dion” and “Dior” are substantially identical nevertheless; indeed they are as close as they possibly can be.  In my opinion, the applicant’s mark stands in much the same case as it would if, instead of consisting of the word “Dion”, it actually consisted of the name “Dior”.  For all practical purposes, then, the mark does, in my opinion, consist of an essential feature of the trade mark of the opponent.  Add to this the fact that the opponent’s mark consists of a personal name; and accepting, as I think most people do, that the identity of any person is established first and foremost by reference to his family name, and bearing in mind that “Dior” is the family name element of the opponent’s trade name, the mark applied for falls squarely within the prohibition suggested by the abovementioned cases.

    [3] (1985) 6 IPR 78 at 81

13. In that case, the mark sought to be registered was simply DION.  There is, of course, no way of knowing what conclusion might have been reached had the applicant’s mark been, more relevantly for present purposes, something like FRED DION. 

14. Mr O’Donnell, however, stressed that fashion items connected in the course of trade with designers such as Gianni Versace, Giorgio Armani or Christian Dior are usually ordered by reference to surname only.  With well-known designers such as these (and the opponent, argues Mr O’Donnell) customers would expect to obtain the designers’ goods by reference to a surname alone.

15. With all due respect to the opponent, its evidence does not sufficiently support the claim that, in Australia, at the date when the applicant filed the opposed application, the opponent was known as a fashion house or that, consequently, it would be likely to be known simply as LAROCHE.  To judge from the opponent’s own material, it promotes itself overseas using the trade mark in full:  GUY LAROCHE.  I will deal with that failing further, below, under the s 60 heading, but suffice to say now that the claim cannot illuminate the issue of comparison of marks.

16. There is accordingly no good reason to expect that ROBERT LAROCHE (taking Mr O’Donnell’s point about the spelling of the surname) will be confused with GUY LAROCHE, or that the coexistence of the two will cause confusion.  They are unlike in look and in sound, except insofar as any two names with a surname in common are alike. 

17. It is true that the surname in question is not, to my knowledge based on the records of the Trade Marks Office, at all common.  La Roche occurs 66 times, Laroche only 11, in a compilation of surnames listed on the consolidated electoral rolls. 

18. Were it also clear that the public considered Laroche to be the identifier of a fashion house, perhaps the position would be different.  But, firstly, that is simply not the case and not anything like a notorious fact of which I could properly take some notice.  And, secondly, the distinguishing elements GUY and ROBERT are clear and prominent and very different in look and sound.  It may be said that the name of a person is capable of distinguishing because of the comparative rarity of the surname.  However, it does not follow from this that other trade marks, being names that share the same surname, somehow become deceptively similar, ipso facto, to the first. 

19. In the event of an appeal from this decision, it may assist the parties if I point out some additional failings which obtain to the respective grounds.

    Section 44

20. I am not satisfied that the opponent holds a registration for any similar goods, defined by s 14 to be “goods of the same description”.  Here Mr O’Donnell specified registrations (and classes) as follows:  395456 (class 25), 558779 (class 14) and 821139 (class 18).  Mr O’Donnell relied on Jellinek’s Application 63 RPC 59, for the classic determinants of this issue: nature, uses and trade channels. I am not at all convinced that eyewear is a good of the same description as any one of the goods to which he referred: clothing, footwear, headgear, watches and leather and goods made of leather such as handbags.

21. In particular, I reject Mr O’Donnell’s principal argument; that it is sufficient that all such goods are fashion items.  That may be so, but it is not decisive that fashion houses, such as those noted in the Jahn declaration, may trade in goods, or in designs, for all such fashion items.  That is no substitute for the simple fact that the physical nature of a pair of sunglasses is very different from any of the other items.  So, typically, is the point of display, even in a department store or chemist’s shop. 

22. Similarly, I think it would be extreme to say that the use of a pair of sunglasses is the same as that of a hat, let alone a handbag or any of the other goods in question.  In the interests of brevity I will not belabour the fact that a hat is worn on the top of the head, or set out what I understand hats to be made of, but such things are consistent with the main use of hats, even simple sunshade items; the covering of the head and/or the face.  The fact that some hats keep glare from the eyes is, I think, simply a coincidence arising from the fact that the brim of the hat is intended to shade the face and nose of the wearer.

    Section 60

23. As to the reputation necessary to establish an opposition under s 60 as at the filing date of the opposed application, 2 September 2002, I have already flagged that the evidence does not meet the onus that is on the opponent to establish necessary facts.  There is, to be sure, evidence of a history in France, and of promotion in places as diverse as Germany, Italy, the Philippines, Pakistan and Malaysia.  The original business started by Guy Laroche has extended from clothing, which now includes ready-to-wear lines, to perfumery or fragrances for men and women and, more recently, eyewear.  Annual turnover for the opponent company appears to be falling but is still very extensive indeed, with worldwide sales of $159 million dollars in 2002, the year in which the opposed application was filed.

24. Mr O’Donnell relied on Conagra Inc v McCain Foods (Aust) Pty Ltd for the following proposition, with my own emphasis added:

    It is not necessary that a plaintiff, to maintain a passing off action, have a place of business in Australia nor for his goods to be sold here.  It is sufficient if his goods have a reputation in Australia among persons of a sufficient degree to establish there is a likelihood of deception among consumers and damage to his reputation.  Reputation may be proved by a variety of means including advertisements on various forms of media and exposure of people within the forum to the goods of the overseas owner..

25. However, the portion quoted draws attention to the requirement to prove the reputation.

26. Mr O’Donnell also noted Seven Up Co v OT Ltd[4], by Williams J.:

    Further, if at the date of the application for registration, the mark of the foreign trader, although it has not been used in Australia, has nevertheless become associated in the minds of the Australian public with goods because it has become associated in the minds of the Australian public with his goods because it has been advertised in publications which have circulated extensively in Australia or in some other manner,…

    [4] (1947) 75 CLR 203, at 211

27. While in McCormick & Co Inc v McCormick[5] Kenny J noted that it was common to infer reputation from a high volume of sales, together with substantial advertising expenditures, he was not talking of such an inference being made on the basis of overseas figures alone.  In any case, the extent of reputation overseas is not compelling, from the evidence. 

    [5] McCormick & Co Inc v McCormick, (2001) 51 IPR 102, at page 127,

28. Mr O’Donnell based his case essentially the “the increase in travel to and from Australia, and the increasingly international flavour of the media and worldwide circulation of magazines and newspapers”.  These things are, of course, obvious[6], but it is far from clear that the magazines on which the opponent relies will have come to a significant level of attention among people in this country or among Australians travelling abroad.  (The examples in JFF-3 and 4, while appearing to be foreign language editions of magazines that would be well-known in Australia, are all dated at about, or after, the date on which the opposed application was filed.  They are of no relevance to demonstrating a reputation already extant at that date.) 

    [6] Mr O’Donnell noted Anheuser-Busch v Castlebrae Pty Ltd (1991) 23 IPR 54 at 58

29. Similarly, it is said that, for instance, the opponent’s goods were promoted in the in-flight entertainment magazines of Eastern Air Connections and Emirates airlines.  It is not, however, at all clear to me that any but a handful of Australians would have travelled on those airlines on the dates in question and seen the relevant in-flight item.  In total, I would not infer that, based on what I have in front of me, the reputation of the opponent has spilled over into Australia.  It is of course within the bounds of possibility that some Australians, some time in 2002 or earlier, have gained knowledge of the opponent.  However, anything beyond that would be, in my view, an exercise in unsafe speculation. 

30. The opponent has not been able to directly quantify its Australian sales, which are apparently limited to a chain of three High and Mighty stores in Melbourne.  This chain of clothing stores sells goods under a number of brands.  It is hard to tell more about the stores from the evidence but it might be fair to call some of the other lines advertised in the stores’ 1999 catalogue, which is in evidence, fashion labels: Hugo Boss, Trent Nathan and Cassini are vaguely familiar to me. 

31. The direct evidence of any Australian reputation is, however, very flimsy.  It appears that the staff of the firm in question are not prepared to give evidence in declaratory form.  I accept that Mr O’Donnell has acted in all good faith in an attempt to fill this gap by giving his own testimony.  However, his declaration about what he was told by an officer of the firm in question is indirect evidence and therefore lacks force.  Nor are the sales figures that he seeks to establish at all high: something over $40,000 in each of the calendar years 1999 to 2004 is not suggestive of a significant reputation.  Also, as Ms Chia pointed out in her written submission, the sales figures are somewhat misleading as to the extent of sales, because the price of each item is high, with shirts ranging from $65 to $115 and suits from $500 upwards.  

1. Such Australian promotion as there has been also appears to have been suitably modest and, as Ms Chia points out in her written submissions, the opponent’s goods amount to a very small proportion of the space in an indeterminate number of catalogues.  Australia-wide circulation is claimed for these but the basis for this claim is not explicit and the extent to which it is true is completely unknowable from the present evidence.  There have been a number of newspaper advertisements in 2002: a “sample” of five, appearing in either The Age or the Melbourne Herald-Sun, is in evidence, but the extent to which they are but part of a bigger picture is unstated.  Five such advertisement, themselves only some few months before the opposed application was filed, do not suggest that the sort of reputation that could found a s 60 ground was extant at the time the opposed application was filed.

2. In general, I am left with the view that either the opponent has not taken the Australian market seriously, or vice versa.

3. There is some evidence of use of GUY LAROCHE in respect of spectacles or sunglasses in Australia, as Mr O’Donnell noted, as far back as May 2000.  Apparently an Australian company obtained samples of these, some during the Mido fair.  Mr O’Donnell’s written submissions stress the prominence of this as a trade fair.  Be that as it may, the quantities set out in exhibit JFF 10 are small, and I can give no weight at all to invoices or similar documents where the date is either incomplete – the majority of the exhibit – or clearly post that of the filing of the opposed application. 

   Conclusion

4. No ground of opposition has been established.  The trade mark application may 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.  I direct that the opponent pay the costs of the applicant to the extent set out in the scale in the regulations.

   Terry Williams
   Hearing Officer
   Trade Marks Hearings
   30 September 2005