South Cone, Inc v Riffe International, Inc
[2017] ATMO 32
•21 April 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by South Cone, Inc to registration of trade mark application 1670046 (9, 28) - RIFFE - in the name of Riffe International, Inc.
| Delegate: | Iain Campbell Thompson |
| Representation: | Opponent: James Maxwell of Peter Maxwell & Associates Applicant: HWL Ebsworth Lawyers (did not appear) |
| Decision: | 2017 ATMO 32 Trade Marks Act 1995 Section 52 opposition to registration; section 44 – goods of the same description, trade marks not deceptively similar in relation to the goods of the same description; section 60 – Opponent’s reputation extends to footwear and clothing – no nexus with the impugned goods or Trade Mark. Opposition not established |
Background
In these proceedings under the Trade Marks Act 1995 (‘the Act’) Riffe International Inc (‘the Applicant’) has applied for the registration of the trade mark which appears below:
Application No: 1670046
Priority Date: 21 January 2015
(‘the Relevant Date’)
Goods:Class 9: Face masks and goggles for diving; scuba diving masks; diving suits; wet diving suits; wetsuits for diving; protective diving shoes, booties, socks, gloves, hoods and helmets; scuba snorkels; snorkels; free diving and scuba diving weights and weight belts to offset the buoyancy of a user’s diving wetsuit; buoyancy compensator jacket for use in diving; marking and signalling buoys
Class 28: Spearfishing guns and spear guns for diving, and parts therefor; diving fins and flippers; spear shafts and tips, pole spears, reels, lines, float lines, floats and buoys for use in fishing and diving; scuba and diving gear, namely, holsters for carrying diving and fishing …
… equipment; bags specially adapted for carrying sports, fishing and diving equipment[1]
(‘the Specification’)
Trade Mark: RIFFE
(‘the Trade Mark’)
[1] At filing the application included a claim for a range of goods in Class 25. After Evidence in Support was filed by the Opponent, the Applicant deleted the Class 25 claim from the application.
The Trade Mark was examined as is prescribed by section 31 of the Act and advertised as accepted for possible registration on 27 August 2015.
On 28 September 2015, South Cone Inc (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark.
On 28 October 2015, the Opponent filed its Statement of Grounds and Particulars, detailing grounds under section 44, 58, 60, and 42 of the Act.
On 25 November 2015, the Applicant filed a Notice of Intention to Defend.
Thereafter the Opponent filed Evidence in Support of its opposition. The Applicant has not filed Evidence in Answer. I will further discuss the Opponent’s evidence below.
The Opponent requested to be heard. As a delegate of the Registrar of Trade Mark I heard the submissions of the Opponent at a hearing on 5 April 2017. The Opponent was represented the hearing by Mr James Maxwell of Peter Maxwell & Associates. The Applicant did not appear at the hearing or file written submissions.
Onus
The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[2]
[2] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]-[133].
The Relevant Date at which the grounds under section 52 of the Act must be considered is the filing date of the opposed application[3].
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
Evidence
The Evidence in Support is comprised of the following declarations:
Mr Jeffrey Moore, President of Reef, a division of VF Outdoor, Inc, (‘Reef’) and the Opponent, made on 29 February2016 with exhibits A to G; and
Roderick Barr, Managing Director of Reef Brazil (Australia) Pty Ltd (‘Reef Australia’), made on 29 February 2016 with exhibits 1 to 22.
Regulation 21.19 information
I will mention now that the Opponent also sought to rely on a declaration by Roger Spatz, the President of Reef, made on 9 March 2017, with exhibits RS-1 to RS-3, under the provisions of regulation 21.19 of the Trade Marks Regulations 1995 (‘the Regulations’). This material is asserted to go to the nature of the marketplace(s) for the parties’ goods. The Opponent’s reasons for seeking the exercise of the Registrar’s discretion under regulation 21.19 are:
The Opponent filed Evidence in Support of the Opposition on 1 March 2016.
The Applicant did not file any Evidence in Answer in rebuttal of the Opponent’s grounds. The Applicant recently deleted class 25 from the Application.
As a consequence, the Opponent has been deprived of filing vital evidence as part of the Opponent’s anticipated Evidence in Reply in respect of this opposition that has recently come to light[4].
[4] This contention appears to be inconsistent with the Opponent’s submission that, ‘Further, class 25 was deleted from the application and this has only recently come to the Opponent’s attention. If the Opponent was aware of this earlier, the focus of the Opponent’s Evidence in Support would have been different.’
Regulation 21.19 provides:
21.19Registrar may use information available
(1)If:
(a)information that is available to the Registrar is relevant to proceedings before the Registrar; and
(b)the Registrar has reason to believe that the information is not known to a party to the proceedings; and
(c)the Registrar proposes to take the information into account in making a decision in the proceedings;
before making the decision the Registrar must:
(d)provide the information to the party; and
(e)give the party a reasonable opportunity to make representations about the information.
(2)For the purposes of paragraph (1)(e), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
I note, initially, that the provisions of regulation 21.19 are not a ‘backdoor’ for the filing of ‘further evidence’ and it is both puzzling and revealing that the Opponent repeatedly refers to the information which it seeks to bring to the Registrar’s attention as, in fact, being ‘further evidence’. The various references by the Opponent to the nature of this information include:
· Submissions to file Further Evidence on behalf of the Opponent made under Regulation 21.19 of the Australian Trade Marks Act and Regulations
· “FURTHER EVIDENCE” SUBMISSION ON BEHALF OF THE OPPONENT MADE UNDER REGULATION 21.19 OF THE AUSTRALIAN TRADE MARKS ACT [sic]
· The Opponent submits that the further evidence the Opponent is seeking to submit, as contained in the further Declaration of Mr Roger Spatz and Exhibits RS-1 to RS-3 thereto (“Spatz”) is relevant and crucial to the current oppositional proceedings …
· Where in allowing for the submission of further evidence after the due date Hearing Officer Murray in Seven Network (Operations) Limited v Giorgio Armani S.P.A., Milan, Swiss Branch Mendrisio[5] commented …
· Additionally, the Opponent submits, it is likely to significantly affect the outcome of the substantive opposition in contrast to an opposition run without consideration of the further evidence.
[5] [2013] ATMO 42: Ms Murray was not, of course, considering ‘further evidence,’ she was considering ‘information’.
In my view the Opponent has not been deprived of anything by the decision of the Applicant not to file Evidence in Answer. Evidence in Reply is an opportunity for an opponent to respond to material introduced in Evidence in Answer by an applicant: it is not, strictly speaking, an opportunity to introduce new material or to rectify defects or omissions in an opponent’s Evidence in Support. The ‘rebuttal’ nature of Evidence in Reply is reflected in the Scale of Costs at Schedule 8 to the Regulations: Whereas costs associated with both Evidence in Support and Evidence in Answer are awarded in the amount of $700, the amount in relation to Evidence in Reply is $350.
The goods within the Specification other than those in Class 25 (which has been deleted) have always been present; consequently, the material upon which the Opponent now seeks to rely should have formed a part of its Evidence in Support. And, if it were a relevant consideration, the Opponent has not shown that, but for the deletion of the Class 25 claim from the Specification by the Applicant, it would have otherwise sought to introduce this material. Indeed, it appears to be conceded by the Opponent that the deletion of the Class 25 claim by the Applicant was the impetus for it seeking to introduce what it refers to as ‘further evidence’.
The state of the marketplace is information known to both parties and about which the Registrar can independently inform herself without resort to information (which is possibly partial) provided by one of the parties. Accordingly, I do not consider it appropriate that the Registrar exercise her discretion to take what the Opponent calls ‘further evidence’ into account.
The Opponent
The genesis of the Opponent and its operations occurred in Brazil in 1984 with the manufacture of sandals (thongs) under the trade marks REEF and REEF BRAZIL by Fernando and Santiago Aguerre. As a result of this activity the Opponent was founded in 1985 and has subsequently shifted its base of operations to California. The first sandals were shipped to Australia in 1988 and sold under the trade marks REEF and REEF BRAZIL. Since then, states Mr Moore, the range of goods bearing the REEF and REEF BRAZIL trade marks has grown to include:
… footwear, head gear, socks, clothing, swimwear, bikinis, T-shirts, rash vests, caps, bags, surfwear, backpacks, key rings, stickers, magnets, posters and videos amongst many other items.
The nature of the “many other items”, above, is not specified by Mr Moore; however, Mr Barr states that the goods sold in Australia by Reef Australia are:
Footwear including, thongs (including striped and solid colours) and various designs for both males and females; sandals (including crossovers, convertibles, adjustable straps), which include various designs for males and females; moulded sole shoes athletic shoes; casual shoes (including lace-ups and boots); and casual sandals; and headgear including baseball type caps; and shirts and t-shirts as well as long sleeve shirts or jumpers in varying styles such as woven, natural, logo, fiesta, rasta and jackets, fleece tops, trousers and shorts in various styles and various fabrics; board shorts; backpacks; accessories - including towels, stickers (and sticker packs), key rings; calendars and playing cards.
In addition to the above, the Opponent (or Reef Australia) has provided items for promotional purposes in Australia. These, states Mr Barr, include:
… various types of footwear, caps, hats and headwear, key rings and a coat hanger support, socks, t-shirts, rash vest’s [sic] (swim shirts), backpacks, doormat [sic] (homewares accessory), marquee shelters (tents), refrigerator magnets and videos under the REEF trade marks
The above claims are corroborated by the exhibits annexed to the declarations of Messrs Barr and Moore.
Mr Barr provides details of both the numbers of the goods listed at [17], above, sold by the Opponent under the trade marks REEF and REEF BRAZIL in Australia since 1991 and the revenue generated by these sales. The amounts involved are considerable. Mr Barr also provides details of advertising and promotional expenditure under the trade marks REEF and REEF BRAZIL by the Opponent in Australia as well as examples of such advertising. The amounts involved and the scope of the advertising are again considerable.
Similarly, Mr Moore provides details of goods sold throughout the world by the Opponent, revenue therefrom, and examples of the international advertising and promotion by the Opponent of its goods sold under the trade marks REEF and REEF BRAZIL. Again, the amounts involved are considerable.
Other
At the hearing, the Opponent withdrew its reliance on sections 58 and 42 of the Act when I observed that a finding that the trade marks under consideration are substantially identical[6] was highly unlikely and I further queried the Opponent’s reliance on section 18 of the Australian Consumer Law 2010 (‘the ACL’) whilst section 60 of the Act was also being actively pursued. In the circumstances of this matter, if the ground under section 60 is well founded, consideration of the ground under the ground under section 18 of the ACL becomes otiose: if the finding under section 60 is that the use of the Trade Mark was not likely to deceive or confuse, then under the higher standard of the ACL[7] neither would it mislead nor deceive.
[6] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; [1994] AIPC 91-049; 31 IPR 375 at [62].
[7] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191; (1982) 42 ALR 1; (1982) 56 ALJR 715; (1982) 1a IPR 684; [1982] ATPR 40-307; 1 TPR 282 at [8].
Section 44
In its Statement of Grounds and Particulars the Opponent specifies those registrations listed at Annexure 1 to this decision as being relied upon in relation to this ground. The most relevant of these is reproduced below (albeit with the Class 16 claim omitted):
Registration No: 1403189
Priority Date: 10 January 2011
Goods:Class 9: Goggles for sport; helmets including helmets for surfing and water sports; life jackets and buoyancy vests; divers masks; protective clothing, footwear and headgear in this class; DVDS, CDS and CD-ROMS; sound and video recordings; downloadable publications including electronic books, electronic and multimedia publications, audio and audio visual media; mouse pads; mobile phone cases and covers; ear plugs; magnets including decorative fridge magnets
Class 25: Clothing, footwear, headgear; rash guards, rash shirts, rash vests, rash suits; wetsuits, wetsuit boots, wetsuit vests, wetsuit gloves, wetsuit hoods, wetsuit shorts, wetsuit tops and wetsuit accessories in this class; sandals, shoes, T-shirts, shirts, blouses, muscle tops, jackets, pants, jeans, shorts, swimwear, surfwear, beachwear, board shorts, bathing suits, bikinis, sarongs, skirts, socks, belts, caps, beanies, hats, underwear, sleepwear
Trade Mark: REEF
If the ground under section 44 is not established in relation to the above registration, it follows that (because Opponent’s other registrations on which it relies are substantially more different to the Trade Mark as regards both the trade marks and the goods) the ground would not be established in relation to the Opponent’s other registrations listed in the Statement of Grounds and Particulars.
In the absence of evidence of use of the Trade Mark by the Applicant (and hence invocation of the provisions of subsections 44(3) or 44(4)), section 44 relevantly provides:
44Identical 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.
Note 1:For deceptively similar see section 10.
Note 2:For similar goods see subsection 14(1).
Note 3:For priority date see section 12.
Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
Accordingly, (in the context of these proceedings) the Opponent carries the onus of establishing the trade mark (or trade marks) on which it relies:
1. has a priority date earlier than that of the Trade Mark (‘the first requirement’); and
2. is registered in respect of similar goods to those within the Specification (‘the second requirement’); and
3. is substantially identical or deceptively similar to the Trade Mark (‘the third requirement’).
The Opponent’s registration 1403189 REEF has an earlier priority date than does the Trade Mark – the first requirement is therefore established.
Concerning requirement two, subsection 14(1) of the Act defines the expression ‘similar goods’:
14Definition of similar goods and similar services
(1)For the purposes of this Act, goods are similar to other goods:
(a)if they are the same as the other goods; or
(b)if they are of the same description as that of the other goods.
The expression ‘goods of the same description’ was discussed in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd[8]:
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 In re The Australian Wine Importers Ltd. (1889) 41 Ch D 278, at p 291 and Reckitt & Colman(Australia) Ltd. v. Boden per Latham C.J. [1945] HCA 12; (1945) 70 CLR 84, at p 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 In re Jellinek’s Application (1946) 63 RPC 59. 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 (1946) 63 RPC 59 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 (1946) 63 RPC 59, 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 emphasized 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’”: In re an Application by John Crowther & Sons (Milnsbridge) Ltd. (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J. (as he then was) in Reckitt & Colman (Australia) Ltd. v. Boden [1945] HCA 12; (1945) 70 CLR 84 when he said: “What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments”.
[8] [1953] HCA 73; 1A IPR 465; (1954) 91 CLR 592 per Dixon C.J., McTiernan, Webb, Fullagar and Taylor JJ at [5].
Initially, I observe that the Applicant’s goods ‘face masks and goggles for diving’ and ‘scuba diving masks’ and the Opponent’s goods ‘googles for sport’ and ‘divers masks’ are ‘the same goods’ albeit differently described.
Additionally, in my view, the Applicant’s ‘diving suits; wet diving suits; wetsuits for diving; protective diving shoes, booties, socks, gloves, [and] hoods’ in Class 9 are ‘goods of the same description’ as the Opponent’s ‘wetsuits, wetsuit boots, wetsuit vests, wetsuit gloves, wetsuit hoods, wetsuit shorts, wetsuit tops and wetsuit accessories in this class’ in Class 25. (Wetsuits for divers occur in Class 9 of the International (Nice) Classification of Goods and Services and wetsuits for waterskiing and surfing (‘watersports’) occur in Class 25). The foregoing goods are generally made of neoprene and differ only in thickness, cut, flexibility and seals – it generally being the case that wetsuits adapted for diving are used in colder environments than wetsuits adapted for watersports and are generally (but not always) made of thicker material. In my observations of the world, wetsuits for divers and wetsuits for watersports are frequently regarded as being interchangeable, are made by the same manufacturers, and available from the same shops. ‘Wetsuits for Watersports’ and ‘wetsuits for diving’ are thus ‘goods of the same description’.
However, I do not consider that goods other than those discussed above which occur within the parties’ specifications constitute either ‘the same goods’ or ‘goods of the same description’. Mr Maxwell submitted that many of the goods involved are sold through the same retail outlets and I agree that frequently they are or may be. However, I do not consider that this alone dictates that, for example, ‘spear fishing guns’ are ‘goods of the same description’ as ‘wetsuits’ any more than the fact that ‘ice-cream’ and ‘fresh fruit’ are sold within the same supermarket (and may be consumed together) makes ice-cream and fresh fruit ‘goods of the same description’. I do not consider that the makers of wetsuits or googles for watersports generally make specialist diving equipment (or that the public would usually consider them to do so).
In summary, the parties’ goods which are ‘similar goods’ are ‘divers masks’ and ‘wetsuits’.
Now to requirement 3, that the Opponent establish to the Registrar’s satisfaction that the trade marks involved are either ‘substantially identical’ or ‘deceptively similar’. I note that the Opponent did not argue in its written or oral submissions that the trade marks under consideration are substantially identical. The expression ‘deceptively similar’ is defined by section 10 of the Act:
10Definition of deceptively similar
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.
On the question of deceptive similarity, in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J observed[9]:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. 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. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same”.
[9] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 per Windeyer J. at [13].
The comparison is to take place in the context of the marketplace for the parties’ particular goods which I have found to be similar: Parker J, stated in In the Matter of An Application by the Pianotist Company Ltd for the Registration of a Trade Mark[10]:
You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods ... you must refuse the registration, or rather you must refuse the registration in that case.
[10] (1906) 23 RPC 774 at 777.
Further, the words ‘deceive’ and ‘confuse’ refer to different types of misperception: in Pioneer Hi-Bred Corn Co v Highline Chicks Pty Ltd[11] Richardson J said in the New Zealand Court of Appeal:
‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.
[11] [1979] RPC 410 at 423.
And in Radio Corp Pty Ltd v Disney[12] Rich J said of the word ‘confusion’:
In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney”. The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney”. This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.
[12] [1937] HCA 38; (1937) 57 CLR 448 at 454
And the assessment of the likelihood of deception and confusion is informed by the factors discussed by French J in Registrar of Trade Marks v Woolworths[13]:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:
“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”
[13] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [50].
The marketplace for the parties’ goods is that for ‘divers masks’ and/or ‘wetsuits’ – the goods of the parties that I have found to be ‘similar goods’. As such, it is likely that the purchasers will take some time and care over their selection of these goods. The goods are relatively specialised and not of a price where they will be purchased casually, as might be the case with (for example) a packet of biscuits: compare Stuart Alexander & Co (Interstate) Pty Ltd v Blenders Pty Ltd[14] with LANCER Trade Mark Application[15].
[14] [1981] FCA 152; 37 ALR 161; (1981) 53 FLR 307; [1981] TPRS 314319.
[15] [1987] RPC 303 (LANCER versus LANCIA for cars).
There are three obvious ways in which the Trade Mark might be pronounced – either as ‘riff’, ‘rife’ or as ‘refe’ and, while Mr Maxwell argued for the latter pronunciation, I am not satisfied either that this is correct or that the goods involved are normally requested orally, over the counter from a shop assistant, rather than being inspected in display cases or on racks.
Mr Maxwell also argued that the range of goods involved (and the now deleted Class 25 claim) strongly suggests that the goods are part of a ‘lifestyle’ range similar to those of the Opponent and, because of this, there is a heightened likelihood of deception or confusion. I am, however, reluctant to accede to this view for a number of reasons:
· The Applicant may have decided not to sell its Class 25 goods in Australia (or to cease doing so);
· It is not appropriate to consider goods which have been deleted from the application; and
· There is a limited range of the parties’ goods which are, in fact, ‘similar goods’ and these extend only to ‘divers masks’ and ‘wetsuits’.
Further, and importantly, the fact that the parties’ goods might be perceived to be a part of a lifestyle range of goods could, arguably, actually moderate (rather than increase) whatever the likelihood of deception or confusion might be: the sale of lifestyle goods involve the marketing of an ‘image’ with which the purchasers identify with, and in turn project, the identities and the values associated with the brand. Accordingly, the purchasers who are, in effect, buying the ‘image’ associated with a particular brand are likely to be alert to the differences between ‘their brand’ and any other brand which might show superficial similarities.
Additionally, if the ‘lifestyle’ submissions of the Opponent are given weight, the above observations also, in my consideration, lessen the likelihood of the Opponent’s trade mark being imperfectly recollected[16] as being the Trade Mark.
[16] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641 at 658-659.
However, in reaching a decision, I am to consider the fair and normal use of the trade marks under consideration by both the Opponent and Applicant; in Woolworths[17] French J said:
The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration. See also Berlei v Hestia Industries Ltd [1973] HCA 43; (1973) 129 CLR 353 per Mason J at 362.
[17] Op cit at [88].
The goods of the parties (‘divers masks’ and ‘wetsuits’) might include those which are part of a ‘lifestyle’ range of goods but also, notionally, include those which are not.
The trade marks under consideration have both similarities and differences; in Clark v Sharp[18] the Court said that:
… one must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.
[18] (1898) 15 RPC 141 at 146.
The word ‘Reef’ is a known word of the English language which will be immediately recognised as such whereas the word ‘Riffe’ has no obvious meaning in English – the two trade marks, REEF and RIFFE, are (in my consideration) immediately distinguishable on this basis, no matter what superficial resemblance they might otherwise possess.
Taking all of the above factors into account, I am not satisfied that the trade marks of the parties are deceptively similar. They are visually distinct (although they might have aural similarities depending on the correct pronunciation of the Trade Mark) and the marketplace for the goods is one of some specialty where purchasers are likely to take some time and care in the purchase of their goods. The price, comfort, fit, and purpose of the goods, and possibly the safety of purchasers, is also likely to dictate some detailed attention to the purchase of these goods in which the differences in the trade marks will be more apparent than are the similarities.
Accordingly, the Opponent has not established its opposition to registration under section 44 of the Act.
Section 60
In its Statement of Grounds and Particulars the Opponent contends:
The Trade Mark is similar to the REEF Trade Marks which have acquired a significant reputation in Australia and around the world.
Since the Opponent’s founding in the 1980’s in Argentina and their subsequent relocation to San Diego, California, the Opponent has subsequently grown into one of the world’s leading lifestyle and surf footwear and clothing manufacturers and retailers. The Opponent’s headquarters are now based in Carlsbad California, USA. The REEF Trade Marks have been extensively marketed and promoted in Australia and around the world and are associated exclusively with the goods offered by the Opponent.
The Opponent has sold goods under the REEF Trade Marks worth over US$136,000,000.00 in 2014, in numerous countries around the world, including Australia. The Opponent ad its Australian distributor having also expended large sums on advertising, marketing and promoting the REEF Trade Marks in Australia.
Given the significant reputation of the Opponent in the REEF Trade Marks and the number of consumers who purchase the goods offered by the Opponent in Australia, it is likely that such consumers will recognise and associate the goods provided under the Trade Mark with the REEF Trade Marks owned by the Opponent. Accordingly, any use of the Trade Mark in respect of the goods covered by it is likely to deceive or cause confusion.
Section 60 of the Act provides:
60Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, 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.
Note:For priority date see section 12.
To establish its ground under section 60 the Opponent must firstly establish that the trade mark(s) upon which it relies have a reputation in Australia; and then, secondly, because of that reputation, the use of the Trade Mark would be likely to deceive or cause confusion.
Reputation was discussed in McCormick & Co Inc v McCormick[19] (‘McCormick’) by Kenny J who said:
What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.
[19] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].
Concerning the assessment of reputation, Kenny J went on in McCormick[20] to state:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.
[20] Ibid at [86].
The exact extent of the reputation of the Opponent’s REEF trade mark is, to a degree, uncertain because of the fact that the Opponent uses both its REEF and REEF BRAZIL trade marks in Australia and has not distinguished between the revenue and expenditure figures in relation to either but has instead given a lump sum in relation to both. However, I accept that the extent of the use of the trade mark REEF BRAZIL must contribute something to the reputation of the trade mark REEF, solus.
That said, the Opponent’s evidence is sufficient to satisfy the Registrar that the trade mark REEF, on which the Opponent primarily relies, has a reputation in Australia in relation to the goods which it has sold in Australia which are stated by Mr Barr, in his declaration to be:
Footwear including, thongs (including striped and solid colours) and various designs for both males and females; sandals (including crossovers, convertibles, adjustable straps), which include various designs for males and females; moulded sole shoes athletic shoes; casual shoes (including lace-ups and boots); and casual sandals; and headgear including baseball type caps; and shirts and t-shirts as well as long sleeve shirts or jumpers in varying styles such as woven, natural, logo, fiesta, rasta and jackets, fleece tops, trousers and shorts in various styles and various fabrics; board shorts; backpacks; accessories - including towels, stickers (and sticker packs), key rings; calendars and playing cards.
However, to found this ground the Opponent must satisfy the Registrar not only that it’s trade mark has a reputation but also that because of that reputation the use of the Trade Marks would be likely to deceive or cause confusion. The assessment of the likelihood of deception or confusion is moderated by the factors discussed by French J which I have quoted at [39], above, (noting that under section 60 there is no requirement that the trade marks be deceptively similar).
In Rogers Seller & Myhill Pty Ltd v. Reece Pty Ltd[21] the Registrar’s delegate observed:
Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.
[21] [2010] ATMO 5 at [39].
In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi[22] the Registrar’s delegate observed that:
The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.
[22] [2012] ATMO 124 at [40]
It is noteworthy that, although the ground under section 44 was discussed largely on the fact that the ‘diving masks’ and ‘wetsuits’ involved there are ‘similar goods’, the Opponent’s evidence does not establish that it uses its trade marks in relation to such goods – the reputation of the Opponent’s REEF and REEF BRAZIL trade marks does not, accordingly, extend to those goods.
I have found that the trade marks of the parties are not deceptively similar in the sense referred to within section 44. Neither do I consider that the Opponent’s trade mark is so well known that the slight similarity between the trade marks is sufficient to cause people to wonder if there is a connection in the course of trade between the goods or their purveyors. As I have observed, the Opponent’s trade mark is a known English word and the Trade Mark is not: it is apparently invented. As such, the parties’ trade marks are readily distinguishable and the Trade Mark is most unlikely, in my consideration, to call the Opponent’s trade mark(s) to mind when the reputation of it is taken into consideration.
Further, the goods within the Specification are all qualified as being for (underwater) diving. It is a specific and distinct marketplace which is in large part dissimilar from that of the lifestyle clothing market for the Opponent’s goods. While both parties’ trade marks are, or may be, used in relation to aquatic activities (surfing on the one hand and underwater diving on the other) and it may be true that some surfers might also go underwater diving (and vice versa), both of these activities are in general distinct. Further, while some traders do sell both goods for underwater diving and also clothing, the Opponent has not shown that this is both usual and that that such a brand extension on its own part is so likely that members of the public would expect it. (The Opponent has not evidenced any ventures by itself into any of the more usual ‘brand extensions’ undertaken by traders in the lifestyle clothing market into, for example, perfumes, aftershaves, sunglasses, luggage, etc).
Thus, when considering both the parties’ trade marks, and the marketplaces within which they are to be concurrently used, I do not consider that the Opponent’s trade mark has a reputation in Australia such that the use of the Trade Mark would be likely to deceive or cause confusion.
The Opponent has not established its ground under section 60.
Decision
Section 55 of the Act relevantly provides:
55Decision
(1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note:For limitations see section 6.
The grounds on which the application was opposed have not been established.
The trade mark application may then 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 and the disposition of the application should be in accordance with the Court’s order or direction
Costs
The Opponent sought its costs in the event that it established its Opposition to the registration of the Trade Mark. However, this is has not done. I accordingly award costs against the
Opponent at the Official Scale set out in Schedule 8 to the Regulations.
Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
21 April 2017
Annexure 1
Registration No: 651542
Priority Date: 30 January 1995
Goods: Class 25: Clothing excluding wetsuits; footwear and headgear
Trade Mark: REEF
Registration No: 663508
Priority Date: 9 June 1995
Goods:Class 28: Games and playthings; gymnastic and sporting articles including surfboards and body boards
Trade Mark: REEF
Registration No: 774420
Priority Date: 30 September 1998
Goods: Class 25: Clothing and footwear
Trade Mark:
Registration No: 1213034
Priority Date: 29 November 2007
Goods:Class 18: All-purpose athletic bags; all-purpose carrying bags; athletic bags; backpacks; beach bags; carry-all bags; duffel bags; gym bags; purses; tote bags; travel bags; wallets
Class 25: Bathing suits; swim trunks and swim wear (none being wetsuits); bikinis; boardshorts; boxer shorts; fleece shorts; footwear; headwear; jeans; pants; sandals; sarongs; shoes; shorts; skirts; walking shorts
Trade Mark:
Registration No: 1295711
Priority Date: 23 April 2009
Goods: Class 25: Muscle tops; shirts; t-shirts; swimwear
Trade Mark:
Registration No: 1305122
Priority Date: 29 June 2009
Goods:Class 16: Stationery; stickers; decals and transfers; bumper stickers; posters; calendars; postcards; printed paper signs; photographs; banners of cardboard; ads and catalogues featuring footwear and apparel; memo pads; notebooks; binders; pens and pencils; hanging tags; packaging; inserts for CDs and DVDs
Class 24: Towels; goods of textiles, fabric or plastic substitutes for fabrics, not included in other classes; textile labels and tags for clothing, footwear and headgear; manchester; bath linen and bed linen; bed and table covers; table linen including table cloths, place mats, serviettes and napkins; coasters in this class; banners; flags (not of paper); cloth labels; on-textile labels
Trade Mark:
Registration No: 1388913
Priority Date: 15 October 2010
Goods:Class 16: Paper, cardboard, fibreboard, and goods made from these materials, not included in other classes being surf memorabilia and merchandise only; posters for surfing; stickers; decalcomanias; transfers; ads and catalogues featuring footwear and apparel; printed matter, printed publications being surf memorabilia and merchandise only; advertising and promotional materials for surf memorabilia, clothing and merchandise only; covers and inserts for records, tapes, compact discs, DVDs, CD-ROMs, films, video tapes; signs and signboards in this class relating to surf memorabilia and merchandise only; non-educational books and booklets, brochures, catalogues, leaflets, magazines, periodicals, newsletters relating to surf memorabilia, merchandise and equipment only; packaging and packaging materials in this class; wrapping in this class; bags in this class including merchandise bags; paper towels; paper table linen and table covers; serviettes, napkins; placemats in this class; coasters in this class; office requisites in this class; stationery and stationery sets; stationery cases; memo pads; note pads; writing and drawing instruments; pencil cases and other cases for writing instruments; rulers; erasers; calendars; passport and travel document holders; cards including greeting cards, postcards, collector cards, and trading cards; gift boxes; diaries; autograph albums; photographs and prints; photograph albums; envelopes and folders for photographs and prints, stands for photographs and prints, pictures (framed or unframed); etchings, lithographs, engravings; stamps; banners, flags, ribbons made from paper; puzzles in this class; non-textile labels
Class 18: Goods made of leather, animal skins and hides, and imitations of the aforegoing materials; bags including backpacks, beach bags, sports bags, athletic bags, barrel bags, tote bags, carry bags, bags for merchandise packaging in this class, travel bags, garment bags for travel, trunks, luggage and luggage articles including luggage tags of leather and luggage straps, rucksacks, knapsacks, waist packs, school bags, satchels, shoulder bags, waist bags, hand bags, clutch bags, wallets, purses; cosmetic, toiletry and vanity cases, jewellery bags in this class, key cases, key holders, key fobs, and key tags, key rings in this class; umbrellas and umbrella covers
Class 25: Clothing, footwear, headgear; rash guards, rash shirts, rash vests, rash suits; wetsuits, wetsuit boots, wetsuit vests, wetsuit gloves, wetsuit hoods, wetsuit shorts, wetsuit tops and wetsuit accessories in this class; sandals, shoes, T-shirts, shirts, blouses, muscle tops, jackets, pants, jeans, shorts, swimwear, surfwear, beachwear, board shorts, bathing suits, bikinis, sarongs, skirts, socks, belts, caps, beanies, hats, underwear, sleepwear
Trade Mark:
Registration No: 1403189
Priority Date: 10 January 2011
Goods:Class 9: Goggles for sport; helmets including helmets for surfing and water sports; life jackets and buoyancy vests; divers masks; protective clothing, footwear and headgear in this class; DVDS, CDS and CD-ROMS; sound and video recordings; downloadable publications including electronic books, electronic and multimedia publications, audio and audio visual media; mouse pads; mobile phone cases and covers; ear plugs; magnets including decorative fridge magnets
Class 16: Paper, cardboard, fibreboard, and goods made from these materials, not included in other classes being surf memorabilia and merchandise only; posters for surfing; stickers; decalcomanias; transfers; ads and catalogues featuring footwear and apparel; printed matter, printed publications being surf memorabilia and merchandise only; advertising and promotional materials for surf memorabilia, clothing and merchandise only; covers and inserts for records, tapes, compact discs, DVDS, CD-ROMS, films, video tapes; signs and signboards in this class; non-educational books and booklets, brochures, catalogues, leaflets, magazines, periodicals, newsletters relating to surf memorabilia, merchandise and equipment only; packaging and packaging materials in this class; wrapping in this class; bags in this class including merchandise bags; paper towels; paper table linen and table covers; serviettes, napkins; placemats in this class; coasters in this class; office requisites in this class; stationery and stationery sets; stationery cases; memo pads; note pads; writing and drawing instruments; pencil cases and other cases for writing instruments; rulers; erasers; calendars; passport and travel document holders; cards including greeting cards, postcards, collector cards, and trading cards; gift boxes; diaries; autograph albums; photographs and prints; photograph albums; envelopes and folders for photographs and prints, stands for photographs and prints, pictures (framed or unframed); etchings, lithographs, engravings; stamps; banners, flags, ribbons made from paper; puzzles in this class; non-textile labels
Class 25: Clothing, footwear, headgear; rash guards, rash shirts, rash vests, rash suits; wetsuits, wetsuit boots, wetsuit vests, wetsuit gloves, wetsuit hoods, wetsuit shorts, wetsuit tops and wetsuit accessories in this class; sandals, shoes, T-shirts, shirts, blouses, muscle tops, jackets, pants, jeans, shorts, swimwear, surfwear, beachwear, board shorts, bathing suits, bikinis, sarongs, skirts, socks, belts, caps, beanies, hats, underwear, sleepwear
Trade Mark: REEF
Registration No: 1416835
Priority Date: 29 March 2011
Goods:Class 9: Sunglasses and glasses (spectacles); eyewear; frames, cases, chains, straps, cords and restraining straps for sunglasses and glasses
Trade Mark: REEF
Registration No: 1521350
Priority Date: 15 October 2010 (divisional of 1388913)
Goods:Class 25: Clothing, footwear, headgear; sandals, shoes, t-shirts, shirts, blouses, muscle tops, jackets, pants, jeans, shorts, swimwear, surfwear, beachwear, board shorts, bathing suits, bikinis, sarongs, skirts, socks, belts, caps, beanies, hats, underwear, sleepwear; all the aforementioned goods excluding rash guards, rash shirts, rash vests, rash suits, wetsuits, wetsuit boots, wetsuit vests, wetsuit gloves, wetsuit hoods, wetsuit shorts, wetsuit tops and wetsuit accessories in this class
Trade Mark:
0
19
0