Speedo Holdings B.V. v Beijing Hongguang Dongying Sports Training Co Ltd

[2022] ATMO 74

TRADE MARKS ACT 1995

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

Re:Opposition by Speedo Holdings B.V. to registration of trade mark application number 2084612 (Classes 3, 9, 16, 18, 25, 35, 41) – Sdeepo & Chinese characters in the name of Beijing Hongguang Dongying Sports Training Co Ltd.

Delegate:	Blake Knowles
Representation:	Opponent: Banki Haddock Fiora.   Applicant: Remarkable IP.
Decision:	2022 ATMO 74 Trade Marks Act 1995 (Cth) – opposition under s 52 – grounds of opposition pressed under ss 44 and 60 – no ground established – trade mark to proceed to registration.

Background

1. This is a decision on the opposition by Speedo Holdings B.V. (‘Opponent’) to the registration of trade mark application number 2084612 (‘Application’) filed by Beijing Hongguang Dongying Sports Training Co Ltd (‘Applicant’) on 29 April 2020 (‘Relevant Date’), for the trade mark and goods and services below:

   Trade Mark Number:    2084612

   Trade Mark:                           (‘Trade Mark’)

   Endorsement:             The applicant has advised that the CHINESE characters appearing in the trade mark may be transliterated as SI DI BO which may be translated into English as SEA DEEP POSITION.

   Goods & Services:       Class 3: Non-medicated soaps; Cleaning preparations; Shining preparations (polish); Ethereal oils; Lipsticks; Cosmetics; Scented water; Dentifrices; Incense; Cosmetics for animals

   Class 9: Computers; Diving suits; Cameras (photography); Divers' masks; Breathing apparatus for underwater swimming; Ear plugs for divers; Gloves for divers; Nose clips for divers and swimmers; Sunglasses; Spectacles

   Class 16: Advertisement boards of paper or cardboard; Bags (envelopes, pouches) of paper or plastics, for packaging; Paper; Printed matter; Albums; Posters; Printed publications; Magazines (periodicals); Periodicals; Newspapers

   Class 18: School bags; Backpacks; Shopping bags; Suitcases; Bags for sports; Walking sticks; Trunks (luggage); Business card cases; Pocket wallets; Handbags

   Class 25: Clothing; Clothing for gymnastics; Gloves (clothing); Waterproof clothing; Bathing suits; Shoes; Headwear; Hosiery; Girdles; Scarves

   Class 35: Advertising; Outdoor advertising; Television advertising; Publicity; Bill-posting; Commercial administration of the licensing of the goods and services of others; Sales promotion (for others); Procurement services for others (purchasing goods and services for other businesses); Provision of an online marketplace for buyers and sellers of goods and services; Business management of sports people

   Class 41: Teaching; Physical education; Instruction services; Coaching (training); Organisation of competitions (education or entertainment); Organisation of sports competitions; Educational services; Health club services (health and fitness training); Rental of skin diving equipment; Entertainer services

   (‘Goods & Services’)

2. The Application was examined and later accepted and advertised for opposition on 30 September 2020. The Opponent filed notice of its intention to oppose the Application on 6 November 2020 and a statement of grounds and particulars (‘SGP’) on 16 November 2020. The Applicant filed a notice of its intention to defend the Application from opposition on 22 February 2021.

3. The parties were given the opportunity to file evidence in accordance with the timetable set out in the Trade Marks Regulations 1995 (Cth).[1] The Opponent filed Evidence in Support (‘EIS’) on 21 May 2021. The Applicant filed Evidence in Answer (‘EIA’) on 16 August 2021. The Opponent filed Evidence in Reply (‘EIR’) on 11 October 2021.

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

4. The parties were both given the opportunity to be heard. The Opponent elected to be heard by written submissions only. The Applicant did not elect to be heard. As such, the matter has been allocated to me as a delegate of the Registrar to decide based on the particulars set out in the SGP, the evidence, and the Opponent’s submissions.  

   Grounds and onus

5. The SGP nominates grounds of opposition under ss 42(b), 44, 60, 62(b), and 62A. However, in submissions, the Opponent only presses grounds under ss 44 and 60.

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

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

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

   Evidence

7. The following evidence was filed:

   EIS

   Declaration of Andrew Long, Director of the Opponent, made on 20 May 2021, with Exhibits AL-1 to AL-16.

   EIA

   Declaration of Hongguang Zhang, General Manager of the Applicant, made on 16 August 2021, with Exhibits ZH-1 to ZH-3.

   EIR

   Declaration of Robin Webster, United Kingdom lawyer for the Opponent, made on 5 October 2021, with Exhibits RW-1 to RW-4.

   EIS

8. Mr Long declares that the Opponent has used the brand SPEEDO (‘Opponent’s Mark’) in relation to swimwear since 1929. Mr Long provides a detailed history of the extensive use and promotion of the Opponent’s Mark in relation to swimwear and other goods and services since that time, including the close relationship with competitive swimming and professional swimmers, and prominent use and promotion at major sporting events.  Mr Long declares that the Opponent has also operated retail outlets under the Opponent’s Mark in Australia since 2004, and that its range of goods sold under the Opponent’s Mark also includes leisurewear, headwear, sunglasses, sports goggles, swim accessories, snorkel equipment, bags, towels, sports and fitness articles and equipment, and toys.

9. Mr Long provides confidential revenue and promotional expenditure figures for the period between 2013-2021. The figures are significant but are not broken down by category.

10. Mr Long declares that the Opponent has an Australian website at Annexed to the declaration are sample pages of the Opponent’s website showing use of the Opponent’s Mark obtained from Internet Archive Wayback Machine that date from 2011.  

11. Mr Long also annexes various other exhibits which show use of the Opponent’s Mark in relation mainly to swimming related goods (swimwear, caps, goggles etc), including a list of sponsored athletes, third party website extracts, news articles, storefront photographs, brochures, and posters.

    EIA

12. Mr Zhang declares that the Trade Mark was created in 2019 and that the Applicant has obtained copyright registration in China for an image of a similar trade mark, a copy of which is annexed to the declaration.

13. Mr Zhang declares that “The trade [mark] which we created is made up of three elements. The first element, S, has the meaning of ‘Sea’, the second element is and has the meaning of ‘Deep’, and the third element ‘Po’ comes from ancient Greek mythology and has the meaning of the sea god Poseidon. The Chinese characters in the mark are transliterated as SI DI BO which translate to SEA DEEP POSEIDON”.

14. Mr Zhang opines that the Trade Mark and Opponent’s Mark are not alike as they have a different look, sound, and idea.

15. Mr Zhang annexes a copy of the home page of the Applicant’s website The heading consists of Chinese characters followed by the English tagline ‘Swimming Upstream’, and pictures of various sporting activities and participants, including swimming, running, badminton, and tennis.

    EIR

16. Mr Webster annexes to his declaration various decisions by overseas trade mark authorities refusing the Trade Mark on the basis of similarity to the Opponent’s Mark and other SPEEDO formative marks, including:

    (i)Various decisions by the China National Intellectual Property Administration refusing registration of the Trade Mark in China. For illustrative purposes, in a decision dated 16 May 2021, the decision maker states that the marks are similar ‘in terms of letter composition, sound, and overall appearance’ and that ‘co-existence of the two parties’ marks in respect of the above similar goods would cause confusion or misunderstanding among the consumers’.

    (ii)A decision by the United Kingdom Intellectual Property Office dated 12 August 2021 refusing registration of the Trade Mark in the United Kingdom. The decision-maker states: ‘… it makes little difference that the word in the application is Sdeepo as opposed to Speedo, because the familiarity with the earlier mark, which is already in embedded in the minds of the average consumer as a result of its enhanced distinctive character, will mean that this element in the later mark is likely to be misheard or misread for Speedo’ and ‘If I am wrong in this regard and the average consumer recognises that the marks are not the same, either by the exchange of the letters P and D in the first element and/or as a result of the devices, there is sufficient similarity in their construct and structure that they will, nevertheless, make the assumption that the application is connected to Speedo leading to indirect confusion’.

    (iii)A decision dated 13 April 2021 issued by the National Institute of Industrial Property rejecting the Trade Mark in France. The decision-maker found that SPEEDO and SDEEPO are both distinctive and dominant elements, and that, after considering their meanings and differences, the decision maker concluded that ‘taking the distinctive and dominant elements into account leads to attenuation of the resulting differences’. The decision maker concludes that similarity between the marks is ‘apparent from all the aforementioned resemblances and a consideration of the distinctive and dominant elements’.

    (iv)A Notice of Preliminary Rejection dated 22 March 2021 issued by the Korean Intellectual Property Office rejecting the Trade Mark in Korea. The basis for the rejection is similarity with the Opponent’s Mark, and as such, the examiner considered the Trade Mark to be filed in bad faith.

    Discussion

    Section 44

17. To establish grounds of opposition under ss 44(1) or (2), the Opponent must rely on at least one pending or registered trade mark with a priority date earlier than the priority date of the Application, and which is in the name of a person other than the Applicant. The earlier mark must be substantially identical or deceptively similar to the Trade Mark of the Application, and must be filed or registered in respect of one or more of the following: (i) goods that are similar to the goods of the Application, (ii) services that are similar to the services of the Application, (iii) goods that are closely related to the services of the Application, or (iv) services that are closely related to the goods of the Application.

18. The Opponent relies on various Australian trade mark registrations consisting of or containing SPEEDO, namely trade mark numbers 61406, 121122, 291236, 296393, 338721, 438922, 538190, 538195, 581349, 962228, 962229, 1763106, and 1919474 (‘Opponent’s Registrations’). Details of the Opponent’s Registrations are in Annexure A.

19. Of the Opponent’s Registrations, the Opponent’s case is strongest when relying on those which consist solely of the word SPEEDO. If I find that the Trade Mark is not substantially identical with or deceptively similar to the trade marks consisting of the plain word SPEEDO, I would also find that the Trade Mark is not substantially identical with or deceptively similar to the Opponent’s Registrations which contain additional device elements or stylisation.

20. The test for whether two marks are substantially identical requires that they 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.[4]

    [4] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).

21. I am satisfied that the Trade Mark is not substantially identical to SPEEDO. The different arrangement of letters, the presence of Chinese characters, and the stylisation in the Trade Mark mean that the impression that emerges from a side by side comparison between the two trade marks is one of dissimilarity.

22. The test for whether trade marks are deceptively similar is broader than the test for whether they are substantially identical and requires that one trade mark so nearly resemble another so that it is likely to deceive or cause confusion.[5] In determining deceptive similarity, I am guided by the following principles:

    -There must be a real, tangible danger of confusion, not just a mere possibility.[6] Likelihood of confusion can be established if a number of consumers would be caused to wonder whether the applicant’s goods or services come from some other source. It is enough if the ordinary person entertains a reasonable doubt.[7]

    -The impression of the respective marks as a whole must be considered, including the size and prominence of word and device elements and their relationship to each other.[8] However, deceptive similarity can also be found where one mark uses an essential feature of the other.[9]

    -Consumers may retain an imperfect recollection of a mark or its essential features.[10]

    -It may be relevant that an element of the trade marks under consideration is descriptive. However, descriptiveness does not preclude a finding of deceptive similarity.[11]

    -The impression of the mark on ordinary consumers is relevant, not the impression on those who are particularly perceptive or cautious, or those who are exceptionally careless or stupid.[12]

    -It must be considered how the goods or services are ordinarily sold or provided.[13]

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

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

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

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

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

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

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

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

    [13] Ibid.

23. In Pianotist Co.'s Application, Parker J said, in the context of comparing word trade marks:

    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 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 - then you may refuse the registration, or rather you must refuse the registration in that case.[14]

    [14] 23 RPC 774 at 777.

24. In deciding this matter, I give some weight to the various administrative decisions in overseas jurisdictions. The decision makers, for various reasons, concluded that some level of confusion was possible in the context of their national trade mark laws and market conditions. However, I am not bound to follow those decisions and it would be incorrect to do so if I consider that the application of the tests under Australian law would lead to a different conclusion.

25. I am satisfied that the word Sdeepo is the dominant essential feature of the Trade Mark. As such, if I consider that Sdeepo and SPEEDO are deceptively similar, I would also be satisfied that grounds for rejection are made out in relation to the Trade Mark as a whole. I do not consider that the presence in the Trade Mark of Chinese characters diminishes the importance and memorability of the Sdeepo element. At most it indicates that the goods may be of Chinese origin, or that Sdeepo has some meaning in Chinese. As such, I must consider whether Sdeepo and SPEEDO are deceptively similar.

26. Visually, I consider that Sdeepo has some structural similarities with SPEEDO, namely, that both marks consist of six letters, each begins with ‘s’ and ends with ‘o’, and each contains a double ‘ee’ in the middle. However, I also consider that the word ‘deep’ emerges as a noticeable element from ‘Sdeepo’, while the prefix SPEED- is obvious to consumers viewing SPEEDO.

27. Aurally, I consider that Sdeepo AND SPEEDO are appreciably different. Assuming they are pronounced as they are spelled, ‘Sdeepo’ would be spoken as ‘Suh-DEEP-oh’ or possibly ‘stEEP-oh’ whereas SPEEDO would be pronounced as ‘SPEED-OH’. The ‘SD-’ and ‘SP-’ prefixes of the respective words play a particularly important role in creating an appreciably different aural effect.  I cannot envisage any realistic circumstance where a consumer of ordinary intelligence would pronounce the two words the same or in a manner that results in a readily perceptible aural similarity.  

28. Conceptually, the respective words are both coined terms. Sdeepo is particularly unusual as very few English words start with the prefix ‘Sd’. The word ‘deep’ to some extent emerges from Sdeepo but the word as a whole has no meaning and makes no obvious allusion in English. In contrast, the word SPEEDO conveys the idea of ‘speed’. Overall, I consider that the marks present different ideas and are not conceptually similar other than being six letter words sharing the same letters in a different order.  

29. Having assessed the visual, aural, and conceptual similarities and differences between the respective words Sdeepo and SPEEDO, I must also give weight to the possibility of imperfect recollection. It is possible that consumers may not remember specific details of the respective marks, but instead may recall their general idea or appearance. I am also conscious that in certain contexts, readers can understand English texts even if the letters in individual words are transposed and in isolation each word would appear meaningless. Social media is replete with memes containing paragraphs consisting of words with transposed letters that are dubiously stated to only be understandable by readers of superior intelligence.

30. On balance, I am not satisfied that even taking into account imperfect recollection, consumers viewing Sdeepo and SPEEDO would be caused to wonder whether the relevant goods or services originate from the same trade source, or that the trade marks are otherwise connected in some way. While it is possible that a consumer may recognise that the letters in Sdeepo could be transposed to form SPEEDO, I think it more likely that they would consider this to be coincidental, or possibly a cheeky play on words. I do not think that a substantial number of consumers would experience a reasonable doubt regarding the origin of the goods or services, and as such I do not consider there is a real, tangible danger of confusion.  

1. For these reasons, I do not consider that the Trade Mark is deceptively similar to any of the trade marks of the Opponent’s Registrations. As such, the s 44 ground is not established. 

   Section 60

2. To establish this ground, the Opponent must establish a reputation in a trade mark existing in Australia at the Relevant Date. If reputation is established, the Opponent must then prove that because of the reputation in the mark relied on by the Opponent, use of the Trade Mark subject of the Application is likely to deceive or cause confusion.

3. It is not necessary for the Opponent to establish that the trade mark relied on by the Opponent as the basis for this ground and the opposed Trade Mark are deceptively similar, or that the relevant goods or services of the parties are similar or closely related. However, the greater the similarities in the respective trade marks and goods or services, the more likely the existence of a reputation in the trade mark relied on by the Opponent is to give rise to a likelihood of confusion. 

4. In McCormick & Co Inc v McCormick, Kenny J considered the requirements for establishing reputation. Her Honour said:

   It may be correct to say, as counsel for Mary McCormick did, that the volume of the company’s sales does not directly establish that a significant number of people held the McCormick & Co marks, as distinct from the company’s products, in favourable regard. It does not follow, however, that the volume of sales and promotional expenditures are irrelevant. As Hearing Officer Thompson observed in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 (“Hugo Boss”) at 436:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

   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.[15]

   [15] [2000] FCA 1335, [85]-[86].

5. In Rodney Jane Racing Pty Ltd v Monster Energy Company it was observed that:

   The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[16]

   [16] [2019] FCA 923, [83] (O’Bryan J).

6. The Opponent relies on reputation in the Opponent’s Mark as the basis for this ground. I am satisfied that the Opponent has a significant reputation in Australia for swimming apparel and articles and retail of swimming apparel and articles. The reputation arises not only due to significant sales and promotion over a long period of time, but also the consistent association between the Opponent’s Mark and competitive swimming and high profile Australian athletes.  

7. The existence of reputation does not necessarily mean that confusion resulting from use of the Trade Mark is likely to occur. There must be a nexus between the reputation in the Opponent’s Mark and the likelihood of confusion caused by use of the Trade Mark. In Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd, Hearing Officer Lyons said:

   Confusion can not 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.[17]

   [17] [2010] ATMO 5, [39].

8. The Opponent referred to the decision Arlec Australia Pty Ltd v Miller et Cie (‘Arlec’), where Hearing Officer Irgang, in assessing the potential for confusion arising from potential use of the trade mark  based on reputation in the trade mark ARLEC, said:

   Whilst there are differences between the Trade Mark and the ARLEC trade marks, it is the similarities, which are most significant, whether visual, audible, distinctive or conceptual12. I am satisfied that there are striking similarities between the trade marks which add to the potential for confusion. This is particularly so when the opponent has demonstrated extensive use on the same and similar goods and services over a long period of time. I am satisfied it is highly likely that a significant number of consumers would at the very least experience a reasonable doubt13 as to the existence of some sort of connection between the ARLEC trade marks and the Trade Mark, particularly when these trade marks are applied to the same or similar goods and services.[18]

   [18] [2021] ATMO 68, [25].

9. I have already held under s 44 that the Trade Mark is not deceptively similar to the Opponent’s Mark. A lack of deceptive similarity is not necessarily fatal to the Opponent’s case under s 60. However, I am not satisfied that the Opponent’s reputation creates an increased likelihood of confusion beyond the remote possibility that may exist based on the inherent visual, aural, and conceptual similarities and differences between the Trade Mark and Opponent’s Mark. I consider it unlikely that consumers who are aware of the Opponent’s Mark would believe that the Opponent would be using Sdeepo or that goods or services sold under Sdeepo are connected to or associated with the Opponent in some way. I also consider that the present assessment is distinguishable from Arlec, as the trade marks in that case had a greater degree of visual and aural similarity.

10. While some consumers may note the similarity in lettering between Sdeepo and SPEEDO, I am not satisfied that such consumers would assume that they were purchasing SPEEDO products, or that was some other relevant connection between the two brands. There is no evidence that the Opponent has ever deliberately misspelled or adapted its brand, or engaged in marketing activities that might lead consumers to believe that the Trade Mark is associated with the Opponent.  Further, Sdeepo is not an obvious misspelling of SPEEDO, given it results in a word that is highly unusual visually and aurally. While I acknowledge that my assessment is different to the conclusion reached by overseas decision makers, the matter is subjective and one on which reasonable minds may differ. 

11. As the Opponent has not established a likelihood of confusion, the ground under s 60 is not established.

    Decision and costs

12. The Opponent has not established either of the grounds of opposition pressed. As such, my decision is to register the Trade Mark. Noting the appeal period, it should proceed to registration one month from the date of this decision. If the Registrar of Trade Marks is served with a notice of appeal before that time, registration should not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of the opposition should be in accordance with the Court’s order or direction.

13. The Applicant in the notice of intention to defend requested an award of costs. Costs generally follow the event, and I see no reason to depart from the general rule. As such, I award costs against the Opponent.

    Blake Knowles

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    11 May 2022
    

    Opponent’s Registrations

No.	Trade Mark	Goods/Services	Priority Date
61406	SPEEDO	Class 25: Bathing costumes; sportswear; mens and boys undershirts, underpants, combinations, knickers, athletic singlets, pyjamas, shirts, pullovers, cardigans, womens and girls undervests, bloomers, combinations, night dresses, pyjamas, skirts, blouses, pullovers and cardigans,	22/02/1933
121122	Class 25: Swim suits, sports wear and knitted outer wear,	25/11/1954
291236	SPEEDO	Class 25: All goods included in this class	15/10/1975
296393	SPEEDO	Class 9: All goods included in Class 9, inclusive of divers' suits and gloves, divers' ear plugs, wet suits for diving, swimming jackets, bath floats, life buoys, life belts, life-saving apparatus and instruments, breathing apparatus for underwater swimming, goggles Class 18: All goods included in Class 18, inclusive of bags, suitcases, satchels, knapsacks, purses, pocket wallets and umbrellas Class 28: All goods included in Class 28, inclusive of transportable swimming pools, non-motorised surfboards, kickboards, games, toys and playthings, gymnastic and sporting articles, instruments and appliances (except clothing), cricket and golf bags, swimming paddles (hand), flippers	30/04/1976
338721	SPEEDO	Class 12: All goods included in this class including motorised floats and motorised surfboats and sailing craft and parts of the aforementioned goods included in this class	08/10/1979
438922	Class 25: Clothing, footwear and headgear	07/01/1986
538190	Class 9: Divers suits and gloves, swimmers and divers ear plugs, wet suits for diving, swimming jackets, bathing floats, life buoys, life-belts, life-saving apparatus and instruments, breathing apparatus for underwater swimming, goggles and all other goods in class 9 Class 12: All goods in this class Class 18: Bags, suitcases, satchels, knapsacks, purses, pocket wallets and umbrellas and all other goods in class 18 Class 25: Sportswear, swimwear, casual wear including swimsuits, bathing caps, shirts, blouses, singlets, vests, pants, pant suits, trousers, trouser suits, slacks, shorts, skirts, dresses, tracksuits, coats, blazers, jackets, jumpers, cardigans, pullovers, underwear, pyjamas, night dresses, wet suits for water-skiing, hosiery, footwear and all other goods in class 25 Class 28: Transportable swimming pools, non-motorised surfboards, kickboards, games, toys and playthings, gymnastic and sporting articles, instruments and appliances, cricket and golf bags, swimming paddles (hand), flippers and all other goods in class 28	16/07/1990
538195	Class 9: Divers suits and gloves, swimmers and divers ear plugs, wet suits for diving, swimming jackets, bathing floats, life buoys, life-belts, life-saving apparatus and instruments, breathing apparatus for underwater swimming, goggles and all other goods in class 9 Class 12: All goods in this class Class 18: Bags, suitcases, satchels, knapsacks, purses, pocket wallets and umbrellas and all other goods in class 18 Class 25: Sportswear, swimwear, casual wear including swimsuits, bathing caps, shirts, blouses, singlets, vests, pants, pant suits, trousers, trouser suits, slacks, shorts, skirts, dresses, tracksuits, coats, blazers, jackets, jumpers, cardigans, pullovers, underwear, pyjamas, night dresses, wet suits for water-skiing, hosiery, footwear and all other goods in class 25 Class 28: Transportable swimming pools, non-motorised surfboards, kickboards, games, toys and playthings, gymnastic and sporting articles, instruments and appliances, cricket and golf bags, swimming paddles (hand), flippers and all other goods in class 28	16/07/1990
581349	Class 14: Jewellery, precious stones; horological and chronometric instruments, watches and clocks and all other goods in this class	29/06/1992
962228	Class 3: Soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; shampoos, conditioners, products for styling of the hair, bath and shower gels, moisturisers, cosmetic hand and body lotions, creams and oils; suntanning preparations, suntanning lotions, creams and oils (not for medical use)	17/07/2003
962229	SPEEDO	Class 3: Soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; shampoos, conditioners, products for styling of the hair, bath and shower gels, moisturisers, cosmetic hand and body lotions, creams and oils; suntanning preparations, suntanning lotions, creams and oils (not for medical use) Class 14: Precious metals and their alloys and goods in precious metals or coated therewith; not included in any other classes; jewellery, precious stones; horological and chronometric instruments; clocks and watches; stopwatches; watch bands; watch cases; watch straps	17/07/2003
1763106	SPEEDO	Class 41: Education services; providing of training; entertainment services; sporting and cultural activities; sports and fitness services; organisation and hosting of competitions, contests and recreational events; swimming instruction; provision of education relating to swimming and survival in water; provision of gym facilities; provision of swimming facilities; gym club and gym activity services; health club services; provision of leisure services and leisure facilities	06/04/2016
1919474 (IR 1397122)	SPEEDO	Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images or other data; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; computer software; mobile application software; mobile apps; application software; application software for use with smartphones and mobile devices in the fields of sports and fitness; mobile application software for creating personalised fitness training programs; personal electronic devices used to track athletic performance, goals and statistics; wearable activity trackers; smart watches; watchbands for communication of data to mobile phones and other electronic devices; global positioning system (GPS) apparatus for tracking athletes during athletic activities; portable electronic devices for monitoring and analysing athletes' movement in sports; electronic apparatus for measuring, testing and enhancing athletic performance; electronic devices for sports coaching; electronic sports aids and electronic sports coaching aids; measuring apparatus with electric and electronic monitors used in sports activities; timing apparatus; apparatus for recording sounds and images used in sports activities; pedometers; electronic heart rate and electronic respiratory monitors (non-medical); swimming stroke counters; swimming goggles; sunglasses; spectacles; eyewear; cases for spectacles and sunglasses; ear plugs for divers and swimmers; nose clips for divers and swimmers; life buoys; life belts; diving suits and diving gloves; breathing apparatus for underwater swimming; swimming snorkels; divers' masks; cameras; digital music players; MP3 players; bags and cases adapted or shaped to contain digital music players; headphones; earphones; audio speakers; chargers for electric batteries; solid state memory apparatus; parts, fittings and accessories for the aforementioned goods	21/11/2017