South Cone, Inc v Casio Keisanki Kabuskiki Kaisha

[2001] ATMO 85

TRADE MARKS ACT 1995

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

Re:Opposition by South Cone, Inc. to the registration of trade mark application number 727395 made by Casio Keisanki Kabushiki Kaisha for a trade mark comprising the word REEF, in Class 14.

Background
Application number 727395 was filed on 10 February 1997 by Casio Keisanki Kabushiki Kaisha (the applicant).  The application was to register the word REEF as a trade mark and covered the statement of goods "Electronic watches and clocks, parts and fittings in this class for all the aforesaid goods," in Class 14.

Following examination, the trade mark was advertised as accepted in the Australian Official Journal of Trade Marks of 14 August 1997.  After being granted an extension of time within which to do so, South Cone, Inc. (the opponent) filed notice of opposition to the trade mark’s registration on 10 February 1998.  The opponent completed its service of evidence in support in the matter on 31 May 1999, the applicant finalised the service of its evidence in answer on 29 August 2000 and finally, the opponent served its evidence in reply on 28 May 2001.  The applicant then requested a hearing to determine the opposition and it came before me, as a delegate of the Registrar, in Canberra on 15 August 2001.  Representing the opponent at the hearing was Mr Robin Kelly of Fisher Adams Kelly.  Appearing on behalf of the applicant was Mr Trevor Stevens, assisted by Ms Marion Heathcote, of Davies Collison Cave.

The notice of opposition listed a wide range of grounds but at the hearing, Mr Kelly advised that he would only be relying in his submissions upon grounds under ss.44, 43 and 60.

The Evidence
The evidence in support comprises declarations by the following people: Roderick Barr, dated 17 February 1999 (first Barr declaration); Paloma Del Campo, dated 19 February 1999; David Makous, dated 10 March 1999; Christine Cox, dated 31 March 1999; Peter Donkin, dated 31 March 1999; Geoff Foot, dated (blank) April 1999; Alan Atkins, dated 6 April 1999; Patrick Drummond, dated 12 April 1999; Steve Kay, dated 23 April 1999; James Clark, 29 April 1999; Rod Adams, dated 26 April 1999; David Kennedy, dated 8 April 1999; David Sutton, dated 13 May 1999; Rob Bain, dated 7 May 1999; Paul Neilsen, dated 14 May 1999; Chris Pudney, dated 20 May 1999; and Steve Robertson, dated 14 May 1999.

The evidence in answer comprises declarations made by the following people: Marion Heathcote, dated 29 June 2000; Victoria Tycho, dated 29 August 2000; and Katherine Kemp, dated 29 August 2000.

The evidence in reply consists of declarations from the following people: Anthony Conagham, dated 23 February 2000; and Roderick Barr, dated 2 May 2001 (second Barr declaration).

Submissions and analysis
As I have already said, Mr Kelly advised at the hearing that he would only be making submissions on the grounds under ss.44, 43 and 60.  Consequently, those grounds form the basis of this decision and the reasons for it.  I will not repeat, in detail, Mr Kelly's submissions on behalf of the opponent, or those made by Mr Stevens on behalf of the applicant.  However, I will refer briefly to any points which they made, where I consider it would be relevant to explaining how I have come to my decision.

Section 44
Substantially identical or deceptively similar trade marks
The relevant part of s.44 reads as follows:

44.(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.

The prior registered trade marks relied upon by the opponent, in relation to this ground, are the following, together with their respective statements of goods:

1. REEF BRAZIL Footwear, including sandals.
   

2. Clothing in this class.
   

3. Clothing in this class excluding hosiery.

1. REEF BRAZIL Leather and imitations of leather, and goods made of these materials including bags, animal skins, hides; trunks and travelling bags; umbrellas.

2. REEF BRAZIL Games and playthings; gymnastic and sporting articles including surfboards and body boards.

3. REEF                Clothing excluding wetsuits; footwear and headgear.

4. REEF                Leather and imitations of leather, and goods made of these materials including bags, animal skins, hides; trunks and travelling bags; umbrellas.

5. REEF                Games and playthings; gymnastic and sporting articles including surfboards and body boards

Mr Kelly's main arguments centred around the proposition that the applicant's trade mark, REEF, is substantially identical with, or at least deceptively similar to the opponent's prior registered trade marks, for similar goods.  The tests to determine whether trade marks are substantially identical or deceptively similar may be found in such cases as Australian Woollen Mills Ltd v F. S. Walton & Co Ltd (1937) 58 CLR 641. and Shell v Esso, supra, where, in the latter case, Windeyer J said, at 414 and 415:

(In relation to substantial identity) (the marks should) 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,

(In relation to deceptive similarity) 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 television exhibitions.

It is obvious that, when the first of these tests is applied to the respective party's trade marks, the subject mark and some of those on which the opponent is relying are the same.  The word REEF is the whole of the applicant's trade mark and also those covered by the opponent's registration numbers 651542, 663507 and 663508.  Mr Stevens conceded this was so at the hearing.  I therefore find that those trade marks are substantially identical with each other.

I now move on to compare the remaining of the opponent's marks with the subject trade mark, in relation to the opponent's claim of deceptive similarity.  Section 10 of the Act defines a trade mark as being deceptively similar to another trade mark if it so nearly resembles that mark that it is likely to deceive or cause confusion.  Consideration should also be given to a normal person's impression based on a recollection of the opponent's marks.  In this regard, Luxmoore, L.J. expounded the test referred to as the doctrine of "imperfect recollection" in Rysta Ltd.'s Appn. (1943) 60 RPC 87.

Notwithstanding this, the tests for deceptive similarity have recently been revisited by Finn J in 35 C A Henschke & Co v Rosemount Estates Pty Ltd [1999] FCA 1561 (11 November 1999). At paragraph 35 his Honour says:

The signposts suggested by the case law … are

(i) when comparing names one must judge them by look and sound:
(ii) one must take account of the way in which the mark is likely to be referred to or heard;

(iii) particular attention ought be paid to the first part of a name for generally the first word or syllable provides the most important means of distinguishing marks … save where the initial word or syllable is both common to the marks and is common to the trade or is commonly used by a number of trade mark proprietors, in which case the emphasis is to fall on other portions of the mark as a means of distinguishing them.

In his argument against a finding of deceptive similarity, Mr Stevens said that, although the opponent's remaining trade marks all included the word REEF, they also incorporated the word BRAZIL.  He said that the latter word was especially significant and memorable because it is a well known geographical place name and, as such, it was an easily recollected and clear identifying feature of the opponent's marks.  I do agree that, in relation to the trade mark which is the subject of the opponent's registration numbers 484626, 663509 and 663510, the word BRAZIL is equally as prominent as the word REEF and thus cannot be discounted in any comparison.  However, contrary to Mr Stevens' argument, I believe that precisely because the word BRAZIL is a geographical name, it is likely that those in the market would infer that word as merely indicating the origin of the goods and not as being trade mark material.  Also, in the trade mark covered by registration numbers 565847 and 643028, the word REEF is far larger than the word BRAZIL and, in my opinion, the latter word assumes lesser importance when comparing those trade marks with the applicant's mark.

Notwithstanding the above, when the tests expounded by Finn J in Henschke v Rosemount, supra, are applied to the present instance, I believe that, although the applicant's word trade mark REEF, simpliciter, and all of the opponent's remaining trade marks do have differences in respect of the number of words contained in them, the most memorable feature of all of the marks, and the way that they would all most likely be referred to, is the word REEF - even in the instances where the word BRAZIL is the same size.  I believe that this would be so because the word REEF is the first and thus the most memorable portion of the opponent's trade mark.

I therefore find that the applicant's trade mark and registration numbers 484626, 565847, 643028, 663509 and 663510, all owned by the opponent, are deceptively similar to each other.

In order to determine the second element of the s.44 ground, I will now turn to determine whether the goods of the parties can be regarded as similar, in terms of the Act.  Again, the opposing parties are in disagreement on this point.  Mr Stevens pointed to the classic tests to determine whether goods are of the same description as each other.  These are found in such cases as McCormick & Company Inc v McCormick [2000] FCA 1335; and Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (the SOUTHERN CROSS case); et al.  Mr Kelly argued in reply that, although watches and clocks are not traditionally seen as goods of the same description as clothing and footwear, the opponent's evidence revealed that modern marketing methods and changing public attitudes suggested that there could be a relationship between the applicant's Class 14 goods, and the Class 25, 18 and 28 goods covered by the opponent's registration numbers 651642, 663507 and 663508, respectively.  He said that it was obvious, from the testimony of the opponent's trade declarants, that clocks and watches are also sold in specialised retailing outlets which stock "surfwear"; and that the major companies, such as QUIKSILVER, MAMBO, BILLABONG and RIPCURL, which market beachwear or surfwear, also offered watches, bags, sunglasses, backpacks, key rings and stickers for sale.  Accordingly, he submitted, the term "surfwear and accessories" included all of the foregoing goods.  He said that these goods all had similar uses, i.e. for the personal adornment of surfers and they were commonly sold through the same channels.

Sub-section 14(1) of the Act defines similar goods as those being either the same or of the same description as each other.  As Mr Stevens pointed out, in arriving at a decision upon this issue, the precedent cases show that I need to take account of a number of factors.  In the SOUTHERN CROSS case, supra, Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ said, at 606:

The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods: see Re Australian Wine Importers Ltd (1889) 41 Ch D 278 at 291; Reckitt & Colman (Aust) Ltd v Boden (1945) 70 CLR 84 per Latham CJ at 90. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in Re Jellinek’s Application (1946) 63 RPC 59; 1A IPR 393. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s case the assistant comptroller elaborated on the observations of Romer J in the following manner:  In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application Romer J classified these various factors under three heads, viz the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasised that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description”.

With these tests in mind, I have given consideration as to the whether the nature and uses of the respective goods can be regarded as similar.  I note that the applicant's goods are specified as electronic watches and clocks - together with their parts and fittings.  On the other hand, the goods covered by the various registrations relied on by the opponents, are clothing, footwear, leather goods, sporting articles, and games and playthings.

At first sight, there would not appear to be any similarity in nature between the applicant's and the opponent's goods.  The former party's goods are electronic watches and clocks, while those of interest to the latter are surf clothing, bags made of cloth and leather, sporting goods, such as surfboards and bodyboards, and gymnastic articles and games.  Also, the uses of both sets of goods would appear, on the surface, to be quite different.  The applicant's goods are intended to keep time, and are either worn on the wrist, or are placed on a shelf or wall.  Conversely, the opponent's clothing goods are designed to protect the wearer from the elements, maintain modesty or, as is apparent from the opponent's evidence, to allow the wearer to identify the wearer as a particular type of individual - a devotee of the surf and the surfing lifestyle.  Additionally, the leather and other bags are designed to convey other articles; the surfboards and bodyboards for recreation in the surf; the gymnastic articles for keeping bodies fit; and the games to keep them amused.

Notwithstanding the prima facie differences in the nature and uses of the respective sets of goods, Mr Kelly asked me to consider that "surfwear and accessories" must include watches, because both surf related clothing and watches are both worn for the adornment of surfers and because they "compliment each other".  He said that those who purchased surfing articles and watches would regard these goods as being similar because several major surfwear manufacturers traded in both surf clothing, boards and watches.  This was especially evident when the goods are sold from the same surfing supplies and surfwear outlets.  Mr Stevens said in response that, although this might be the case, the wide range of goods sold by such stores included sunscreen, water bottles and videos - goods which could not be inferred as being of the same description as each other, let alone being similar to watches and clocks.

I have considered both of these arguments.  I believe it to be the case that the overwhelming majority of watches and clocks are sold in specialised outlets, such as jewellers, department stores and the like.  I understand that most of the opponent's goods would usually be found in surfwear shops but that other items, including watches especially made for surfers, are also sold in such stores.  However, merely because watches, which are specifically designed to survive the rigours of surfing, or which might have a surfing "look", might also be offered in these outlets, this does not mean that it is the norm for all clocks and watches to sold in close proximity to surfboards, swimsuits, sunglasses and surf wax.  To properly consider the usual situation in this regard, I must also consider the notional fair use of the competing sets of goods, as contemplated by Evershed J in Smith Hayden & Co Ltd's Application (1946) 63 RPC 97. Having done so, I do not agree, as contended by the opponent, that those in the wider marketplace, who might be about to buy one of the applicant's watches or clocks, would assume that these goods were similar in nature to one of the opponent's surfboards, board shorts or duffle bags.

Given all of the foregoing, I cannot agree with the opponent here that the respective parties' goods are "similar", in terms of the Act, based on any of the accepted criteria.  Accordingly, despite the fact that I have decided that the respective trade marks are either substantially identical with or deceptively similar to each other, I find the opponent is unsuccessful on this ground of its opposition, because the goods sold by the respective parties are not similar to each other.

Section 43
This section reads:

43  Trade mark likely to deceive or cause confusion

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

Mr Kelly's submission here was that there is a connotation in the applicant's mark, sufficient to trigger the provisions of s.43.  He argued that this connotation arises from the reputation attaching to the opponent's association with the word REEF.  He submitted that that connotation would lead to the false suggestion that the applicant might be claiming a form of sponsorship, approval or affiliation with the opponent.  Mr Stevens, in his argument for the applicant, said that the word REEF had a variety of dictionary meanings but, in the Australian context, it had a readily identifiable connotation in relation to the Great Barrier Reef, one of this country's best known travel destinations.  He said that, in any case, the opponent had not shown that any use by the applicant of the present trade mark on its specified goods would lead to real and tangible deception or confusion occurring.

In determining the s.43 ground, I note that previous decisions by delegates of the Registrar - such as Down To Earth (Victoria) Co-Operative Society Ltd v Schmidt (1998) 41 IPR 632 - the CONFEST case; Amalgamated Television Services Pty Ltd v Linda Cameron Pickard, Alexandra Cameron Pickard and Linda Louise Pickard [1999] ATMO 103 (11 October 1999) - the SUMMER BAY case; and Twentieth Century Fox Film Corporation v Michael F Durkan (2000) 47 IPR 651 - the BRAVEHEART case - have all said that the word "connotation" refers to that which is implied in a trade mark, in addition to its essential or primary meaning.  A connotation can result from the trade mark as a whole, or can result from a sign contained within the trade mark.  The prominence and context of the potentially deceptive or confusing element in the trade mark is important in deciding whether the trade mark is likely to deceive or cause confusion.  I note that the Explanatory Memorandum to the Trade Marks Bill 1995 spells out the meaning of this section at paragraph 45.  Section 43, it says, provides that an application for registration must be rejected if the trade mark:

…because of some signification inherent to it, would be likely to deceive or cause confusion regarding a characteristic of the goods...(my emphasis)

Considerations under s.43 must therefore concentrate on the matter within the trade mark that could cause deception or confusion in the mind of the relevant buying public.  It is possible, as is shown in the CONFEST, SUMMER BAY and BRAVEHEART cases, all supra, that evidence can reveal a relevant association.

Mr Kelly has said that purchasers might incorrectly infer, from the applicant's trade mark, some sort connection with the opponent.  He appeared to base his claim here on the opponent's use of its various REEF trade marks and their ensuing notoriety with the surfing fraternity.  It is true that the opponent's trade declarants have all attested that, if they saw that word attached to the applicant's goods, then they would conclude that the opponent had given its sanction for such use.  However, it appears from the declarants' words that their shared belief was stimulated only by reference to the opponent's trade mark.  Notwithstanding this, as I have said, it is clear from all of the precedent decisions on this topic that the operation of this section does not depend upon the existence of a conflicting trade mark but only on something within the opposed mark.  I note here that the word REEF has many meanings, as Mr Stevens said, and these are not necessarily linked to surfing activities, or to the opponent.

While it might be the case that someone might believe that there is a link between the opponent's surf goods and the applicant's wrist watches if encountered together in a surfwear outlet, I do not think that that possibility would be sufficient to satisfy the test for deception or confusion dealt with in the judgment of Justice French in Registrar of Trade Marks v Woolworths Limited 45 IPR 411 (the WOOLWORTHS METRO case) at 426, where he said, in considering the phrase "likely to deceive or cause confusion":

The use of the word "likely" in this context does not import a requirement that it be more probable than not that the mark has that effect.  The probability of deception or confusion must be finite and non-trivial. There must be a "real tangible danger of its occurring": Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5 per Kitto J.

In the present case, notwithstanding any similarity between the respective parties' marks, there is also a total lack of evidence before me which would assist me to arrive at a finding that the use of the word REEF on the goods covered by the specification would be likely to deceive or cause confusion, in the appropriate market, because of a connotation contained within it.  Given all of the foregoing, I find that the opposition, so far as it relies upon s.43, is not made out.

Section 60
Trade mark similar to trade mark that has acquired a reputation in Australia
This section reads:

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)  it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

There is no change in the law from the Trade Marks Act 1955 that there is an evidentiary onus on the opponent, in the first instance, to establish the extent of its reputation for its mark in Australia - re Heerey J., when referring to s.28 of that Act, in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 at 501 (the NETTLEFOLD case).

In order to satisfy the onus, the opponent must show:

1. that it had a reputation;

2. the reputation was known by a substantial number of persons;

3. the reputation existed at the date of the filing of the application - here 10 February 1997; and that,

4. as a result of the reputation, a substantial number of persons likely to be concerned in the purchasing of the particular goods were likely to be deceived or confused if the applicant used the applied for trade mark.

[Southern Cross Refrigerating v Toowoomba Foundry, supra and The Kendall Company v Mulsyn Paint and Chemicals (1963) 109 CLR 300].

I have already found, in relation to the s.44 ground, that the applicant's and opponent's trade marks are either substantially identical with, or deceptively similar to each other.  I must now assess whether elements 1 through 4 (above) have been satisfied.

The sales figures, shown in Australia, of goods bearing the various REEF marks in the first Barr declaration, are limited to footwear from 1991 to the beginning of 1999.  In my estimation, these figures appear to be not very significant, when considered in relation to the Australian footwear industry.  There is also mention, in the evidence, of the sale of non-footwear items - such as t-shirts, rash vests, socks, magnets, stickers, backpacks, key rings and caps - but they are not attributed to a particular financial year and no dollar values are given in the evidence.  As Mr Stevens also submitted, the number of items, said to be sold, also appears to be so small as to be of little consequence, when considered in relation to the potential market.  Mr Stevens also criticised the Barr declaration because much of the material attached to it is either undated, or relates to dates after the critical date.  I agree that this appears to be the case and accordingly, such instances are not relevant in this context.  This situation is also evident from the advertising figures given in the second Barr declaration, where the first amounts given are from the 1998-1999 financial year.  In my opinion, this part of the opponent's evidence is not particularly convincing, in relation to its establishing that there existed a wide reputation in Australia for anything except footwear, prior to the date of filing of the present application.

Notwithstanding the above, Mr Kelly asked me to consider the situation relative to the modern market place.  He said that the opponent's reputation extended to all surfing lifestyle products which enhanced one's overall "image".  He said that this could include such items as watches, because these were seen as a natural extension of today's fashion and surfing brand sales.  He argued that particular fashion houses such as NIKE, TOMMY HILFIGER, PRADA, CHANEL, DOLCE GABBANA and others - including such surfing "icons" as RIPCURL and BILLABONG - marketed goods in a wide variety of classifications, and that these companies saw goods in Class 14 as natural extensions of their normal product ranges.  He said it followed that the public readily accepted that such goods as clothing, watches, perfumes and other items could have a common origin.  Mr Stevens argued that this was not necessarily the case for a substantial number of people in the community and, in any case, the goods of interest here included clocks, and parts and fittings - not just the surfing-style watches of apparent interest to the opponent.

Mr Kelly also pointed to the statements made by the opponent's trade declarants, which he said strongly supported the opponent's claims of a substantial reputation in Australia.  I have reviewed these declarations and agree that the declarants all appear to have wide individual experience, in relation to the Australian surfing scene.  This experience stems from their various involvements in the surfwear retail industry, surfboard and body board sales, professional and recreational surfing, surf carnival and competition administration, and surf journalism and publishing.  Most of the declarants are aware of the practice of selling watches bearing famous "surf brands" in surfwear outlets.  They all attest that they would believe that there would be some connection between the applicant's watches and the opponent's goods if they saw them on sale.  However, I note that most of the declarants state their beliefs regarding possible confusion, as at the date of their declaration.  In mitigation, it does appear to be the case that the majority of these persons have been aware of the opponent's trade mark for some years.

Notwithstanding all of the foregoing, I have already said, in relation to the s.44 ground, that the usual points of sale of electronic watches, clocks, and parts and fittings for these goods, are not surfwear shops but instead, jewellers and department stores.  The opponent's declarants have all stated that they would be deceived or confused if they saw the word REEF on watches because of their exposure to the opponent's reputation.  Some even said that this deception or confusion would be shared by others in the market.

I agree with Mr Kelly that it would appear that those involved in purchasing surf-related products are extremely image conscious.  However, that very awareness would appear to me to be a double edged sword in relation to the opponent's case.  I think that the cognoscenti of the surf lifestyle would not expect REEF BRAZIL surf-related goods to be sold in, for example, K-Mart stores on one hand, or in high fashion outlets on the other.  They would be fully aware that surf goods are most likely to be purchased in recognised surf outlets.  However, when notional use is considered, the applicant's goods could be marketed in a wide range of outlets - including surf shops, discount stores or fashion jewellers.  Therefore, the weight I should give to the stated beliefs of the opponent's expert declarants would appear to be diminished, as they would be limited to their area of knowledge.  It would also seem to me that, although these persons might be experts in relation to the surfing culture, lifestyle and associated goods, they would not necessarily be aware of the situation in relation to the public's attitude to the general merchandising of watches and clocks.  These surf professionals are entitled to their opinions - but only in relation to the surf scene.  They cannot be taken to speak for all consumers of the products of the Australian clock and watch industry.  This approach was confirmed by the decision of the Full Federal Court in C A Henschke & Co v Rosemount Estates Pty Ltd (2000) AIPC ¶91-640. The goods here are not "surf watches" - however that might be interpreted - but the much wider "Electronic watches and clocks...". There was nothing in evidence or in submissions put to me that would convince me that a person, about to purchase a clock or watch from, say, Prouds or Angus and Coote jewellers, or David Jones or Grace Brothers department stores, would be deceived or confused into believing that it was produced by the maker of surf style sandals, duffle bags or a body boards.

It is not good enough to claim that deception or confusion would ensue because of a reputation in a trade mark and then expect that contention to be accepted at face value.  Given the evidentiary onus on it referred to in the NETTLEFOLD case, supra, I believe that the opponent needs to have done more than it has here.  The evidence in support is not sufficient, in my opinion, to allow me to find that the opponent's reputation in its trade mark was of the kind, as at the date of filing here, which would lead to a real substantial risk of deception or confusion occurring amongst the market for the goods - as set out in the SOUTHERN CROSS case, and as reiterated more recently by Justice French in the WOOLWORTHS METRO case, both supra.

I am of the opinion that that there is no "real tangible danger" of deception or confusion occurring if the present trade mark is registered for the goods claimed.  Accordingly, I find that the opponent has been unsuccessful on this leg of its opposition.

Conclusion
I have found, as the Registrar's delegate, that the opponent has not been successful on any of the grounds on which it relied at the hearing.  Accordingly, as the delegate of the Registrar, I dismiss the opposition and direct that the application proceeds to registration, providing the appropriate fees have been paid.

Costs
Mr Stevens sought the applicant's costs in the event that it was the successful party.  Given that is the case here, I can see no reason why costs should not follow the cause.  I therefore order that the opponent pay the applicants' costs.  On application, those costs will be taxed and allowed by an officer of the Trade Marks Office, appointed for that purpose.

Ian Forno
Hearing Officer

14 September 2001