Sojo Pty Ltd v Saltash Pty Ltd

[2022] ATMO 191

TRADE MARKS ACT 1995

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

Re:Opposition by Sojo Pty Ltd to registration of trade mark application number 2063815 (Class 35) – tradieswear & device - in the name of Saltash Pty Ltd and Anstal Enterprises Pty Ltd.

Delegate:	Blake Knowles
Representation:	Opponent: Susan Gatford of counsel instructed by FAL Lawyers.    Applicant: No representation.
Decision:	2022 ATMO 191 Trade Marks Act 1995 (Cth) – opposition under s 52 – grounds of opposition pressed under ss 44, 60, and 42(b) – s 44 established – registration refused.

Background

1. This is a decision on the opposition by Sojo Pty Ltd (‘Opponent’) to the registration of trade mark application number 2063815 (‘Application’) filed by Saltash Pty Ltd and Anstal Enterprises Pty Ltd (‘Applicants’) on 21 January 2020 (‘Relevant Date’), for the trade mark and services below:

   Trade Mark:                (‘Trade Mark’)

   Goods & Services:     Class 35: Retail clothing shop services (‘Applicants’ Services’)

2. The Application was examined and later accepted and advertised for opposition on 22 June 2020. The Opponent filed notice of its intention to oppose the Application on 30 July 2020 and a statement of grounds and particulars (‘SGP’) on 27 August 2020. The Applicants, after requesting and subsequently being granted an extension of time, filed a notice of intention to defend on 4 December 2020.

3. The parties were given the opportunity to file evidence in accordance with the timetable set out in the Trade Marks Regulations 1995 (Cth).[1] The Opponent filed Evidence in Support (‘EIS’) on 4 June 2021. The Applicants filed Evidence in Answer (‘EIA’) on 1 October 2021. The Opponent did not file Evidence in Reply.

   [1] Trade Marks Regulations 1995 (Cth) reg 5.14. Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).

4. The parties were given the opportunity to be heard by videoconference or written submissions. The Opponent elected to be heard by videoconference. The Applicants did not request to be heard. The matter was heard before me as a delegate of the Registrar of Trade Marks on 19 October 2022. The Opponent was represented by Susan Gatford of counsel instructed by Michelle Wilson of FAL Lawyers. I have decided this matter based on the particulars set out in the SGP, the evidence, and the written and oral submissions of the parties.   

Grounds and onus

1. The SGP nominates grounds of opposition under ss 42(b), 44, 58, and 60. However, in submissions, the Opponent only presses grounds under ss 44, 60 and 42(b).

2. The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]

   [2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

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

Evidence

1. The following evidence was filed:

   EIS

   Declaration of Benjamin Goodfellow, Director of the Opponent, made on 4 June 2021, with exhibit 0.1 to 4.1.5.

   EIA

   Declaration of Robert Tirrell, Director of Anstal Enterprises Pty Ltd (‘Anstal’), made on 1 October 2021.

EIS

1. Mr Goodfellow declares that the brand TRADIE (‘TRADIE Mark’) has been used in Australia since 2010. Mr Goodfellow provides details of use of the TRADIE Mark in relation to a variety of goods, primarily apparel but also including other goods such as coolers, sunglasses, beverages, and tool kits.

2. Mr Goodfellow declares that Tradie Holdings Pty Ltd (‘THPL’), an entity related to the Opponent, holds 132 pending and registered trade marks in Australia, including for the TRADIE Mark.

3. Given that I have decided this matter under s 44, it is not necessary to provide a detailed summary of the EIS. However, I note that the evidence indicates that a significant reputation exists in the TRADIE Mark in the Australian market, particularly for apparel.

EIA

1. Mr Tirrell declares that Anstal operates several businesses under its umbrella, including one going by the name ‘tradieswear’. Anstal sells workwear through its website (‘Applicants’ Website’).

2. Mr Tirrell declares that the Trade Mark was created in order to focus on the supply of clothing to persons working in the trades (i.e. ‘tradies’). Mr Tirrell also indicates that there is little or no brand awareness of the Trade Mark in the marketplace, and that sales and promotional expenditure relating to the Trade Mark have been modest. The Facebook page for the business at the time of Mr Tirrell’s declaration had 91 followers, and the Applicants’ Website also had a relatively low number of visitors.

3. Mr Tirrell contends that the Trade Mark ‘presents a precise and exact description of the nature of the business and the activities it undertakes – the sale of tradies’ wear’. Mr Tirrell also opines that that the term ‘Tradie’ is generic and part of the Australian vernacular.  

4. Mr Tirrell provides examples of other online businesses in various fields using the term ‘Tradie’ as part of their brand, all of which appear to be directed at tradespersons.  

5. Mr Tirrell declares that a search for the phrase “websites with the word ‘tradieswear’” in Google returned only 145 hits, which Mr Tirrell contends does not support the Opponent’s claim of a likelihood of deception or confusion with the TRADIE Mark.

6. Mr Tirrell sets out the differences in visual appearance of the Trade Mark and the TRADIE Mark, and contends that it has no resemblance to ‘any of the Opponents known logos and to state otherwise is a spurious claim’.

Discussion

Section 44

1. To establish ground of opposition under ss 44(2), the Opponent must rely on at least one pending or registered trade mark with a priority date earlier than the priority date of the Application, and which is in the name of a person or persons other than the Applicants. The earlier mark must be substantially identical with or deceptively similar to the Trade Mark, and must be filed or registered in respect of services that are similar to the Applicants’ Services or goods that are closely related to the Applicants’ Services.

2. The Opponent relies on various Australian registered trade marks owned by THPL, namely trade mark numbers 1526635, 1622501, 2007442, 2008956, and 2051275. For the purposes of this decision, it is only necessary to refer to trade mark registration number 2008956 (‘Earlier Registration’) for the TRADIE Mark covering Class 25: Clothing (‘Registered Goods’). The priority date of the Earlier Registration is 21 May 2019, which is earlier than the priority date of the Application (21 January 2020).     

3. The Opponent does not allege that the Trade Mark is substantially identical with the TRADIE Mark, merely that the two are ‘deceptively similar’. The test for whether trade marks are deceptively similar requires that one trade mark so nearly resemble another so that it is likely to deceive or cause confusion.[4] In determining deceptive similarity, I am guided by the following principles:

-There must be a real, tangible danger of confusion, not just a mere possibility.[5] Likelihood of confusion can be established if a number of consumers would be caused to wonder whether the applicant’s goods or services come from some other source. It is enough if the ordinary person entertains a reasonable doubt.[6]

-The impression of the respective marks as a whole must be considered, including the size and prominence of word and device elements and their relationship to each other.[7] However, deceptive similarity can also be found where one mark uses an essential feature of the other.[8]

-Consumers may retain an imperfect recollection of a mark or its essential features.[9]

-It may be relevant that an element of the trade marks under consideration is descriptive. However, descriptiveness does not preclude a finding of deceptive similarity.[10]

-The impression of the mark on ordinary consumers is relevant, not the impression on those who are particularly perceptive or cautious, or those who are exceptionally careless or stupid.[11]

-It must be considered how the goods or services are ordinarily sold or provided.[12]

[4] Trade Marks Act 1995 (Cth) s 10.

[5] Southern Cross Refrigerating v Toowoomba Foundry (1954) 91 CLR 592, 595 (Kitto J).

[6] Coca‑Cola Co v All‑Fect Distributors Ltd [1999] FCA 1721, [39] (Black CJ, Sundberg and Finkelstein JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

[7] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [100] (Yates J); Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [91]-[103] (Moore, Sackville, and Emmett JJ).

[8] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 174-5 (Viscount Maugham); De Cordova v Vick Chemical Co (1951) 68 RPC 103, 105-6 (Lord Radcliffe).

[9] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville, and Emmett JJ).

[10] Lift Shop P/L v Easy Living Home Elevators P/L [2014] FCAFC 75, [64] (Besanko, Yates, and Mortimer JJ).

[11] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan J).

[12] Ibid.

1. In deciding the issue of deceptive similarity, I am mindful that the term ‘tradie’ is as Mr Tirrell submits part of the Australian vernacular, and apt in certain contexts for descriptive use in relation to goods or services which are intended for use by tradespersons. However, notwithstanding its descriptive qualities, THPL has succeeded in obtaining registration of the TRADIE Mark on the basis of its use and/or other relevant circumstances in Australia. As such, while I consider that the descriptive qualities of the TRADIE Mark have some relevance when comparing it to the Trade Mark, this is not sufficient in itself to avoid a finding of deceptive similarity.   

2. The Trade Mark consists of several elements, being the word ‘TRADIESWEAR’ (presented in different colours so as to emphasise two separate words ‘TRADIES’ and ‘WEAR’) and a distinctive device element that resembles the letter Q. In this context, the term ‘TRADIES’ is the most memorable feature of the Trade Mark. The word WEAR is purely descriptive of apparel. Given that the most memorable feature of the Trade Mark is nearly identical to the TRADIE Mark (the former being the plural or possessive of the latter), and the additional word WEAR is merely descriptive of the Registered Goods and the goods sold via the Applicants’ Services, on balance, I consider that a significant number of consumer may be caused to wonder whether the respective goods and services of the parties originate from the same trade source or are otherwise connected. While the device element in the Trade Mark does provide an additional point of difference, I do not consider this sufficiently mitigates the real, tangible danger of confusion particularly when aural use is considered. I am therefore satisfied that the Trade Mark is deceptively similar to the TRADIE Mark.

3. I now must determine whether the Applicants’ Services are closely related to the Registered Goods. In Kicking Horse Coffee Co. Ltd, Hearing Officer Brown summarised the authorities as follows:

   The words ‘closely related’ are not defined in the Act. In the Registrar of Trade Marks v Woolworths French J made the following observations:

   The term "closely related" recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word "similar" does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as "closely related"… it is a term of wider import than “similar”…

   In 1979 around the time when the concept of closely related was first introduced into Australian trade mark legislation, FJ Smith, the then Registrar of Trade Marks explained the nature of the relationship between goods and services that would support a finding that they were closely related:

   It will be an exercise of the Registrar’s judgement and ultimately of his discretion whether goods and services are closely related. The relationship would have to be close, not merely a tenuous or remote connection. Where the services are performed upon, or in relation to, or even by means of certain goods, this is a factor which would make deception or confusion between marks used in respect of those services and goods more likely.

   In Woolworths French J stated that the ‘relationships may, and in perhaps most cases will, be defined by the function of the service with respect to the goods’. Similarly, in Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co Lockhart J stated that ‘confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods’.[13]

   [13] [2018] ATMO 193, [19]-[21] (citations omitted).

4. I note that the retail of clothing and apparel is often undertaken under the same brand that appears on the apparel itself. Manufacturers of apparel often sell their products via their own retail outlets (either online or bricks and mortar) in addition to also selling via other third party retailers. Consumers have come to expect that the same brand will be used by a trader for both apparel as a good and retail outlets that sell that apparel. As such, I consider, consistently with longstanding practice of the Registrar, that the Applicants’ Services are closely related to the Registered Goods.

5. As I have determined that the Earlier Registration is for a deceptively similar trade mark covering closely related goods, I must now determine whether the Trade Mark should be accepted based on evidence of honest concurrent use or other relevant circumstances (s 44(3)) or prior and continuous use (s 44(4)).

6. The Applicants’ evidence suffers from a significant deficiency which renders it of little probative value. Both ss 44(3) and (4) rely at the very least on the Applicant demonstrating use of the Trade Mark prior to the Relevant Date. However, while Mr Tirrell claims that use of the Trade Mark commenced in April 2019, there is no dated evidence (e.g. invoices, Internet Archive Wayback Machine extracts etc.) that substantiates that claim or that otherwise indicates that the Trade Mark was used prior to the Relevant Date. The only evidence of actual use appears to be a screenshot from the Facebook page and website statistics for the Applicants’ Website taken after the Relevant Date.  

7. Given the lack of evidence of use of the Trade Mark prior to the Relevant Date, I am not satisfied that the Trade Mark should be registered under ss 44(3) or (4).

8. For the reasons given above, the Opponent has succeeded in establishing a ground of opposition under s 44. As such, it is not necessary that I consider the remaining grounds of opposition.

Decision and costs

1. The Opponent has established a ground of opposition. As such, I have decided to refuse the Application. Noting the appeal period, this refusal will be recorded one month from the date of this decision unless the Registrar of Trade Marks is served with a notice of appeal. If an appeal is filed, the disposition of this opposition will be for the court.

2. The Opponent has requested an award of costs in its favour. Costs usually follow the event. There being no reason to make an exception here, I award costs against the Applicants.

Blake Knowles

Hearing Officer

Delegate of the Registrar of Trade Marks

31 October 2022