Source Co International Pty Limited - [2023] ATMO 39

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2079519 (class 25) – AUS WOOLI – in the name of Source Co International Pty Limited

Delegate:

Nicholas Barbey

Representation:

Applicant: IP Service International Pty Ltd

Decision:

2023 ATMO 39

Trade Marks Act 1995 (Cth) – section 33 proceeding – section 44 considered – trade mark deceptively similar to earlier registered trade mark – no evidence of use filed – trade mark application rejected.

Background

On 2 April 2020, Source Co International Pty Limited (‘Applicant’) filed an application to register the following trade mark:
Trade Mark:  AUS WOOLI       (‘Trade Mark’)
Application no.: 2079519
Priority Date:  2 April 2020
Specification:  Class 25: apparel (clothing, footwear, headgear); clothing; footwear (‘Goods’)

The application was examined as required by s 31 of the Trade Marks Act 1995 (Cth) (‘Act’) and an examination report was issued to the Applicant setting out the following grounds for rejection under s 44 of the Act:
Your trade mark resembles the [four] earlier trade marks as they all have AUSWOOL/AUS WOOL/AUS WOOLI as a prominent and memorable feature. I have considered the additional material, however it is not sufficient to differentiate the trade marks as AUSWOOL/AUS WOOL/AUS WOOLI remains a prominent and memorable feature. Consumers are likely to be confused and infer a trade connection between the trade marks.
AND
The goods are similar because your claim for apparel (clothing, footwear, headgear) in Class 25 is similar to the claims for clothing , footwear and headgear also in Class 25 for the earlier trade marks.
In response, the Applicant asserted that the grounds for rejection should be withdrawn because the Trade Mark was substantially different to the four earlier trade marks. In its opinion, consumers would be discerning given the Goods are for personal adornment and this further decreased the likelihood of deception or confusion occurring. The examiner was not persuaded and maintained the grounds for rejection in a second examination report.
The Applicant subsequently filed non-use applications against the four earlier trade marks. This resulted in two of the trade marks being withdrawn as grounds for rejecting the application.[1] However, the remaining two trade marks (together ‘Cited Marks’) were maintained.[2] Details of the Cited Marks are reproduced below:
[1] This was achieved by partially removing trade mark registrations 909515 and 934229 from the Australian Register of Trade Marks in respect of class 25.
[2] The non-use applications filed against the Cited Marks were unsuccessful. See Auswool Products Pty Ltd v Source Co International Pty Ltd [2022] ATMO 173.
Trade Mark: (‘Device Mark’)

Registration no.:              1037351
Owner:  Auswool Products Pty Ltd
Priority Date:  11 January 2005
Specification:  Class 24: quilt, underblanket, bedding products
Class 25: clothing, hats, footwear

Trade Mark:  AUSWOOL PRO (‘Word Mark’)
Registration no.:              1037358
Owner:  Auswool Products Pty Ltd
Priority Date:  11 January 2005
Specification:  Class 24: quilt, underblanket, bedding products
Class 25: clothing, hats, footwear

The Applicant filed further submissions claiming that the Trade Mark was sufficiently different to the Cited Marks. Emphasis was placed on the descriptiveness of the word elements of each trade mark. In the Applicant’s view, ordinary consumers would understand ‘AUS’ as an abbreviation for Australia and ‘WOOL’ as describing a clothing material. In this context, the Applicant submitted that the trade marks would not be confused when used in relation to clothing. Unpersuaded, the examiner maintained the grounds for rejection. Following receipt of the third examination report, the Applicant requested to be heard.
A hearing was scheduled and additional written submissions were filed by the Applicant (‘Submissions’). As a delegate of the Registrar of Trade Marks (‘Registrar’), I heard this matter by video conference on 1 March 2023. Max Steinhausen of IP Service International Pty Ltd presented submissions on the Applicant’s behalf.
As a preliminary observation, I note that the grounds for rejection must be considered afresh and s 33 of the Act embodies a presumption of registrability which provides that the Registrar must accept an application for registration, unless satisfied that there are grounds under the Act for rejecting it or the application has not been made in accordance with the Act.

Section 44

Section 44 of the Act relevantly provides:
Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:
(a) 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.
At the hearing, Mr Steinhausen proposed to confine his submissions to the Word Mark. The rationale being that if the Word Mark is determined not to be at least deceptively similar to the Trade Mark, the same conclusion will apply to the Device Mark given it has additional points of dissimilarity. I agreed with this approach and note the following discussion will do likewise.
Section 44 of the Act constitutes a valid ground for rejection if the Word Mark satisfies the following requirements:

it is in the name of a person other than the Applicant;
it has a priority date which is earlier than the Trade Mark’s priority date;
it is in respect of similar goods and/or closely related services to the Goods; and
it is substantially identical with, or deceptively similar to, the Trade Mark.

The Word Mark is registered by another person and has a priority date of 11 January 2005 which is earlier than 20 April 2020. The Word Mark has achieved registration for ‘clothing, hats, footwear’ in class 25 which are evidently similar to the Goods. Requirements (i), (ii) and (iii) above are satisfied and the Applicant conceded this.
Establishing the ground for rejection thus hinges on satisfying requirement (iv) as mentioned at [10] of this decision. The test for ‘substantial identity’ was articulated by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[3]
[3] [1963] HCA 66, [12] (‘Shell’).
In Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd, the Full Federal Court explained that:
A side-by-side comparison of two marks is a studied comparison. It highlights the differences between the marks just as much as it shows their sameness, in order to reach a conclusion as to whether the two marks are, in fact, substantially identical.[4]
[4] [2020] FCAFC 186, [98] (Middleton, Yates and Lee JJ).
The trade marks are reproduced below:

Trade Mark	Word Mark
AUS WOOLI	AUSWOOL PRO

A side by side comparison reveals notable differences. The elements ‘AUS’ and ‘WOOLI’ constitute the entirety of the Trade Mark. By contrast, the Word Mark is comprised of ‘AUSWOOL’ and ‘PRO’. Whilst I acknowledge that ‘AUSWOOL’ is not materially distinct from ‘AUS WOOL’,[5] it must be recalled that the comparison is with ‘AUS WOOLI’ (emphasis added). To this end, the letter ‘I’ situated at the end of the Trade Mark imports an appreciable difference that would not be overlooked on a studied comparison of the trade marks. Likewise, the addition of ‘PRO’ further differentiates the trade marks. Obviously, ‘PRO’ retains a degree of descriptiveness in the context of apparel and footwear.[6] However, it is by no means an utterly descriptive element akin to, for example, ‘pants’ for apparel or ‘shoes’ for footwear. In my assessment, these differences contribute to a total impression of dissimilarity emerging from the relevant comparison and precludes a finding of substantial identity.
[5] See, eg, Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [63] wherein Gummow J stated ‘there would, in my view, be no material distinction to be drawn between "Fun Ship" and "Funship"’.
[6] See discussion at [20] of this decision.
With respect to deceptive similarity, s 10 of the Act provides that ‘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’. The assessment of deceptive similarity was outlined in Shell wherein Windeyer J stated:
The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[7]
[7] Shell (n 3) [13].
The Full Federal Court in Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel clarified:
The distinction between consideration of whether one mark is deceptively similar to another, rather than substantially identical, lies in the point of emphasis on the impression or recollection which is carried away and retained of the registered mark. In this context, allowance must be made for the human frailty of imperfect recollection.[8]
[8] [2021] FCAFC 8, [27] (McKerracher, Gleeson and Burley JJ) (emphasis added).
In my view, the Trade Mark is deceptively similar to the Word Mark. The lead element of the Word Mark, ‘AUSWOOL’, has a near identical length to ‘AUS WOOLI’ and notably the first 6 letters in each are the same. The inclusion of ‘PRO’ as a separate element in the Word Mark does not subsume or diminish the visual significance of ‘AUSWOOL’. This is particularly so given ‘PRO’ is a short, 3 letter word located at the tail end of the Word Mark. It follows that the trade marks are visually similar.
The Submissions posit that the Word Mark would ‘be pronounced with a strong emphasis on the element AUS, a lesser emphasis on WOOL and again a strong emphasis on the element PRO’ whereas the Trade Mark would ‘be pronounced with a softer AUS and a stronger emphasis on WOOLI’.[9] There is some merit in the Applicant’s position insofar as ordinary consumers tend to slur the ending of words.[10] However, I do not accept that the trade marks would be pronounced in a significantly dissimilar manner. The pronunciation of each is most naturally broken into three separate syllables – namely, ‘AUS-WOOL PRO’ and ‘AUS WOOL-LI’. The first two syllables of each trade mark are therefore identical. With respect to the third syllable, there is nothing to suggest that the last syllable in either trade mark would be stressed. As ‘WOOLI’ is an obvious misspelling of ‘woolly’, the ‘LI’ syllable in the Trade Mark would likely be pronounced in a similar manner to ‘lee’ as it is in ‘deli’ or ‘chili’. The corollary of this is that ‘LI’ naturally forms the unstressed syllable. Meanwhile, I do not consider ‘PRO’ to be aurally dominant in the Word Mark given its positioning and monosyllabic nature. Nor does the Word Mark lend itself to being shortened to ‘PRO’ simpliciter. Rather the converse is more probable given the positioning of ‘AUSWOOL’ as the lead element. As such, the trade marks share an aural resemblance.
[9] Submissions, [41]–[42].
[10] London Lubricants (1920) Limited's Application (1925) 42 RPC 264, 279 (Sargant LJ).
The trade marks are also conceptually similar. The Submissions contend that consumers would understand ‘AUSWOOL’ as denoting Australian wool and ‘PRO’ as being an abbreviation for professional.[11] I agree and note that the meaning of ‘PRO’ was discussed in Caterpillar Inc v Puma SE (‘Caterpillar’).[12] In Caterpillar, O’Bryan J observed that ‘PRO’ is ‘a colloquially accepted abbreviation for the word professional’ and, in connection with apparel and footwear, it ‘can be used to delineate professional products from casual or novice products’.[13] With this in mind, the idea conveyed by the Word Mark is Australian wool that is ‘a professional or high performance grade of product’.[14] This shares obvious parallels with the idea conveyed by the Trade Mark. As noted above, ‘WOOLI’ is an obvious misspelling of ‘woolly’ which itself describes something that is made of wool.[15] When ‘AUS’ and ‘WOOLI’ are combined, the idea conveyed by the Trade Mark is an Australian wool product. The trade marks therefore conjure a similar idea.
[11] Submissions, [27]. It was also contended that ‘PRO’ would be understood as an abbreviation for ‘product’. However, this contention was not expanded on in the Submissions.
[12] [2021] FCA 1014 (O’Bryan J) (‘Caterpillar’).
[13] Ibid [102], [109].
[14] Ibid [103].
[15] Submissions, [28]. This was conceded in the Submissions albeit with a short one sentence suggestion that ‘WOOLI’ could alternatively be perceived as an invented word. The Submissions did not expand on this line of argument.
Two main contentions were raised in the Submissions which the Applicant claimed tended against a finding of deceptive similarity. The first was that trade marks are ‘highly suggestive marks in the context of clothing and footwear’[16] and this meant that smaller differences between the trade marks were sufficient to prevent confusion. The second pertained to the surrounding circumstances of how the Goods are sold which requires emphasis to be placed on the look of each trade mark as well as the price point of the Goods. In the Applicant’s opinion, both circumstances diminished the likelihood of confusion occurring between the trade marks.
[16] Submissions, [38].
Turning to the first contention, it is true that non-distinctive elements of a trade mark should be afforded less weight for comparative purposes.[17] It follows that, if additional distinctive material is present in each trade mark, a finding of deceptive similarity based solely on shared non-distinctive elements is unlikely.[18] Equally, however, the ‘authorities do not say that where there is a common descriptive element in marks that component is to be ignored for the purposes of comparison’.[19] Simply put, each matter must be considered on its own merits and circumstances. I accept that neither trade mark is particularly distinctive of apparel and footwear especially for those which are made from wool. Be that as it may, this alone does not preclude a finding of deceptive similarity. It must be borne in mind that the Word Mark has attained registration and is accordingly entitled to protection. Whilst the scope of protection afforded to the Word Mark may be construed narrowly, this does not mean that only substantially identical trade marks are relevant and deceptively similar trade marks are to be disregarded. To do so would impermissibly conflate the tests for substantial identity and deceptive similarity. Here, the significant difficulty faced by the Applicant is that deceptive similarity is concerned with the impression of each trade mark based on the imperfect recollection of ordinary consumers. It is not a side by side comparison. In this setting, the minor differences between the respective trade marks, of which some will be imperfectly recalled (if at all), do not sufficiently alter the similar overall impression produced by the entirety of the trade marks. The trade marks remain visually, aurally and conceptually similar.
[17] Re Broadhead's Application (1950) 67 RPC 209, 215 (Evershed MR).
[18] See, eg, Cars on Demand IP Pty Ltd v Cars on Demand Limited [2014] ATMO 87. But see The BBQ Store Pty Ltd v BBQ Factory Pty Ltd [2019] ATMO 132.
[19] Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel [2021] FCAFC 8, [78] (McKerracher, Gleeson and Burley JJ).
As regards to the second contention, it is well settled that all the surrounding circumstances should be considered when assessing the likelihood of deception or confusion.[20] These circumstances include the environment in which the Goods are sold together with the character of the prospective purchaser. At the hearing, Mr Steinhausen highlighted that the Goods are generally made from wool and typically retail at a price point of approximately $100. I have no reason to doubt this information, however, it does not assist the Applicant because it is the notional scope of the Goods which must be considered.[21] In this matter, the Goods are not restricted to wool products nor is there any designated price point. Apparel and footwear have been characterised as being ‘common, everyday purchases which, individually, are modestly priced’.[22] Given this, the inherent nature of the Goods actually increases the likelihood for deception or confusion to occur as ordinary consumers are unlikely to heavily scrutinise the products. Likewise, I accept that the visual impression of the trade marks should be given greater emphasis because apparel is normally selected upon visual inspection.[23] However, for the reasons provided above, I consider that the trade marks share a strong visual similarity and thus this consideration does not advance the Applicant’s position. As such, the surrounding circumstances do not assist in diminishing the potential for deception or confusion between the trade marks.
[20] Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50(iii)] (French J).
[21] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43, [11] (Mason J).
[22] Caterpillar (n 12) [110].
[23] Taiwan Yamani Inc v Giorgio Armani SpA (1989) 17 IPR 92, 96.
Finally, my attention was drawn to a Canadian Federal Court decision[24] which the Applicant submitted was analogous to the present matter. I do not find this to be probative given a decision issued by the Canadian Federal Court is non-binding in Australia, subject to different laws and turns on its own facts and evidence. To this end, I note the services under consideration were insurance and financial services which are markedly different to the Goods. I therefore attach no weight to this decision.
[24] Assurant Inc v Assurancia Inc [2018] FC 121 (LeBlanc J).
Considering the above, I am satisfied that the Trade Mark and the Word Mark are deceptively similar. Requirement (iv) detailed at [10] of this decision is satisfied. No evidence has been filed that would enable a finding of honest concurrent use or prior use under the Act.[25] Nor has my attention been drawn to any other circumstances under s 44(3)(b) of the Act which would make it proper to accept the application.
[25] Act ss 44(3)(a), 44(4).
Accordingly, I am satisfied that a ground for rejection exists under s 44 of the Act.

Decision

Section 33 of the Act provides:
Application accepted or rejected
(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it.
Note: For this Act see section 6.
(2) The Registrar may accept the application subject to conditions or limitations.
Note: For limitations see section 6.
(3) If the Registrar is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it;
the Registrar must reject the application.
(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.
Note: For applicant see section 6.

I am satisfied on the balance of probabilities that there is a ground for rejecting the application to register the Trade Mark under s 44 of the Act.
Accordingly, I reject trade mark application number 2079519 in accordance with s 33(3) of the Act. If the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the application be in accordance with the court’s direction or order.

Nicholas Barbey

Hearing Officer

Delegate of the Registrar of Trade Marks

27 March 2023