Stella McCartney Limited v Wong Kwaid Hua

TRADE MARKS ACT 1995

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

Re:Opposition by Stella McCartney Limited to registration of trade mark application 1360250(3, 18, 44) - ST ELLA - NEW YORK - filed in the name of Wong Kwai Hua.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Sean McManis of Shelston IP Applicant: Andrew Fox of Counsel, instructed by James Maxwell & Associates
Decision:	2013 ATMO 96 s52 opposition – grounds under sections 42, 43, 44, 59 and 60. Section 44/reg4.15A - trade marks deceptively similar, similar goods and closely related services. Sections 42, 43, 59 and 60 not established. Registration refused.

Background

1. This matter concerns an opposition to the registration of the application filed by Mr Wong Kwai Hua (‘the Applicant’ or ‘Mr Wong’) under the Trade Marks Act 1995, (‘the Act’) details of which appear below:

Application No: 1360250

Filing Date: 7 May 2010
Goods/Services: Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentrifices

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks, whips, harness and saddlery

Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; horticulture and forestry services

Trade Mark:

2. I will subsequently refer to the above application as being ‘the Application’, the trade mark (which is comprised of the expression ‘St Ella New York’) as ‘the Trade Mark’ and the goods and services in respect of which registration is sought as ‘the Specification’.

3. The Application was accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 9 September 2010. On 9 December 2010 Stella McCartney Limited (‘the Opponent’) filed Notice of Opposition to the registration of the Trade Mark. The Notice is couched in broad terms and includes the grounds under sections 42(b),[1] 43, 44, 59 and 60 subsequently argued before me as a delegate of the Registrar of Trade Marks. The hearing was in Sydney on 14 October 2013 and the Opponent was represented by Mr Sean McManis of Shelston IP. Mr Andrew Fox of Counsel, instructed by James Maxwell & Associates, represented the Applicant.

[1] The section 42 ground invokes sections 52 and 53 of the Trade Practices Act 1974 (repealed as from 1 January 2011, but in force as at the 7 May 2010 priority date of the Application)

Onus & Relevant Date

4. 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]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12]; Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; ( 2012 ) 94 IPR 551 per Dodds-Streeton J at [13] . and, most recently, DC Comics v Cheqout Pty Limited [2013] FCA 478 (22 May 2013) ); (2013) 101 IPR 334 per Bennett J at [13].

5. The relevant date at which the grounds under section 52 of the Act must be considered is the filing date of the opposed application – 7 May 2010: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

Evidence

6. The parties have served and filed the following declarations as evidence in this matter:

Evidence in Support
(a) Sean Francis McManis dated 9 June 2011.
(b) Helen Newman dated 6 July 2011.
Evidence in Answer[3]
(a) Wong Kwai Hua dated 8 August 2012.
(b) James Vernon Maxwell dated 8 August 2012.
Evidence in reply
(a) Helen Newman dated 5 February 2013.
(b) Sean Francis McManis dated 6 February 2013.
(c) Sean Francis McManis dated 11 February 2013.
Further Evidence (Applicant)
James Vernon Maxwell dated 20 March 2013.

[3] The Applicant’s ‘evidence in answer’ was served out of time as ‘further evidence’. For the sake of convenience and clarity, I will refer to it as being ‘evidence in answer’ in these proceedings.

Background

7. Although this was not touched upon at the hearing, I note that ‘St Ella’ is the name given to Grand Duchess Elizabeth Feodorovna (1 November 1864 – 18 July 1918) of Russia (Elizabeth Feodorovna Romanova), informally called ‘Ella’. She was canonized as St. Elizabeth Romanova. Elizabeth or ‘Ella’ was a German princess of the House of Hesse, and the wife of Grand Duke Sergei Alexandrovich of Russia, fifth son of Emperor Alexander II of Russia and Princess Marie of Hesse and the Rhine. Granddaughter of Queen Victoria and an older sister of Alexandra, the last Russian Empress, Elizabeth became famous in Russian society for her beauty and charitable works among the poor. After the Socialist Revolutionary Party’s Combat Organization murdered her husband with a dynamite bomb in 1905, Elizabeth publicly forgave Sergei’s murderer and campaigned without success for him to be pardoned. She then departed the Imperial Court and became a nun, founding the Marfo-Mariinsky Convent dedicated to helping the downtrodden of Moscow. In 1918 she was arrested and ultimately buried alive by the Bolsheviks. In 1981 Elizabeth was canonized by the Russian Orthodox Church Outside of Russia, and in 1992 by the Moscow Patriarchate.[4]

[4] The Opponent’s position in this matter is, however, principally predicated upon its perceptions of the similarity of the dominant words ‘St Ella’ within the Trade Mark to the forename and eponymous trade mark of the fashion designer Stella McCartney. The Opponent otherwise objects to the words ‘New York’ within the Trade Mark as being deceptive or confusing.

Stella McCartney OBE (born 13 September 1971) is an English fashion designer. She is the daughter of former Beatles member Sir Paul McCartney and American photographer and animal rights activist Linda McCartney. She is named after her maternal great-grandmothers (both of Linda McCartney’s grandmothers were named Stella).
In 2001, Stella McCartney launched her own fashion house under her name in a joint venture with Gucci Group (now Kering) and showed her first collection in Paris. Stella McCartney now operates 17 freestanding stores in locations including Manhattan’s Soho, London’s Mayfair, LA’s West Hollywood, Paris’ Palais Royal, Barcelona’s Passeig de Gracia and Milan, and recently opened doors in Rome and Miami. Her collections are now distributed in over 50 countries through 600 wholesale accounts including specialty shops and department stores.
In 2003, Stella McCartney launched her first perfume, branded STELLA. In January 2007, McCartney launched a skincare line, branded CARE. The 100% organic line includes seven products, from a cleansing milk made with lemon balm and apricot to green tea and linden blossom floral water.
In 2008, she launched a new lingerie line. In November 2010, the Stella McCartney Kids collection was launched for newborns and children up to age 12. Stella McCartney personally invited the Soul Rebels Brass Band to perform at her 2013 spring fashion presentation hosted at the New York Marble Cemetery in New York City.[5]
[5] in Support
1. Mr McManis’ declaration brings into evidence the registrations which the Opponent both owns and relies upon to found its section 44 ground. These registrations are:
Registration No:         855971
Filing Date:                3 November 2000
Goods:Class 25: Clothing, headgear, footwear, articles of outerclothing, articles of underclothing, suits, stockings, shirts, blouses, trousers, skirts, articles of fancy dress, jackets, overalls, waistcoats, panti-hose, knitted articles of clothing and articles of clothing made from knitted materials, scarves, ties, dressing-gowns, bath robes, articles of sports clothing, sleeping garments, hats, socks, belts, caps, gloves, aprons, jeans, neckwear, swimwear
Trade Mark:               STELLA McCARTNEY
Endorsements:            Provisions of subsection 41(5) applied.
Registration No:         883163
Filing Date:                20 July 2001
Goods:Class 3: Skin, hair and nail care preparations; moisturisers, cosmetics; perfumery; soaps; essential oils; aromatherapy oils; deodorants, anti-perspirants; shaving creams, after shaving preparations; sunscreens, suntanning preparations
Trade Mark:               STELLA
Registration No:         945851 (International Registration 796258)
Filing Date:                30 December 2002 (Convention Claim: 2319792 United Kingdom)
Goods:Class 3: Perfumes, eau de toilette, eau de cologne, deodorants for personal use; essential oils for personal use; oils for cosmetic purposes; soaps; cleansing milk for toilet purposes; cosmetics; make-up preparations; make-up removing preparations; make-up powders; cosmetic creams; cosmetic preparations for skin care, for cellulite reduction, for the bath, for sun-tanning; cosmetic kits; beauty masks; pencils for cosmetic purposes; blush; nail polish; lipsticks; hair lotions and non-medicated preparations for hair care; shampoos; shaving preparations, shaving soaps;
Class 9: Spectacles (optics); sunglasses; goggles for sports; spectacle cases; spectacle glasses; spectacle frames; optical goods; anti-glare glasses; contact lenses; correcting lenses (optics); containers for contact lenses; binoculars; magnifying glasses (optics)
Trade Mark:               STELLA McCARTNEY
Registration No:         1017251 (International Registration 703699B)
Filing Date:                23 December 2003
Goods:Class 3: Soaps; perfumery, eau de cologne, essential oils, cosmetics, skin oils, creams and lotions; toiletries for skin care; toiletries for bathing and showering purposes; toiletries for hair care, including shampoos, conditioners, foam and gels; dentifrice preparations; non-medicinal products for dental hygiene; gels, oils and foam for the bath and shower; talcum powder for toilet use, toiletries; antiperspirants and deodorants for personal use; cosmetic products for body care in aerosol form
Trade Mark:               STELLA
Registration No:         1153556 (International Registration 906705)
Filing Date:                1 November 2006 (3July 2006: 2426142: United Kingdom)
Goods:Class 3: Perfumes, eau de toilette, deodorants for personal use and other perfumed products including essential oils for personal use, bath oil and body oil, soaps, preparations for skin and body care, for the bath, for sun-tanning namely day creams, night creams, moisturizing creams and milks, anti-wrinkle creams, toning emulsions, gels for the face, bath and shower gels, perfumed powders, perfumed shampoos
Trade Mark:               STELLA IN TWO
Registration No:         1228086 (International Registration 952222)
Filing Date:                8 May 2007 (23 March 2007: 005783691: OHIM)
Goods:Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; imitation jewellery, brooches, cuff-links, ornamental pins, tie pins; horological and chronometric instruments, watches, watch straps, clocks, key rings; coin holders; jewellery cases
Class 18: Imitations of leather and goods made of these materials and not included in other classes; trunks and travelling bags; luggage; handbags, school bags, rucksacks, backpacks, beach bags, garment bags, tote bags, vanity cases, briefcases, pocket wallets, purses, pouches, key cases; umbrellas, umbrella covers, parasols and walking sticks
Class 35: Retail services for clothing, footwear, headgear and accessories, perfumery, toiletries and cosmetics, jewellery, watches, glasses, sunglasses and accessories, textiles and textile goods, household articles, provided through wholesale outlets, through mail order catalogues or by means of electronic media, including through web sites
Trade Mark:               STELLA McCARTNEY
1. Helen Newman states that she is a director of, and attorney-in-fact for, the Opponent.
2. In her declaration Ms Newman explains:
  [The Opponent] designs and sells highly successful and internationally acclaimed luxury ready to wear fashion collections and accessories under the “Stella McCartney” trade mark and name.
  The Stella McCartney collections are sold in 61 countries worldwide both through wholesale distribution and a network of directly operated and franchise stores. These stores are located in [the] UK, Italy, France, [the] USA, South Korea, Kuwait, Lebanon, Hong Kong, Japan, Saudi Arabia, Qatar and Dubai.
  In addition to the mainline fashion collections and accessories [the Opponent] collaborates with third parties on lingerie, eyewear, fragrances and sportswear which bear the Stella McCartney trade mark. [The Opponent] launched a children’s wear collection in 2010 “Stella McCartney Kids” currently sold to 110 countries world-wide, including Australia. The collection is aimed at newborns and children up to the age of 12.
  The lingerie collection, launched in 2007, is a collaboration with New Zealand based lingerie company Bendon and is sold worldwide through department stores and boutiques. It is currently available in 14 countries world-wide and was sold in Australia from February 2008.
  The eyewear range is designed in conjunction with Italian eyewear specialist Luxottica. This is [the Opponent’s] second eyewear licence and was launched in 2009. It is currently distributed worldwide, including in Australia. The eyewear range has been sold in Australia since July 2010 through the retailers Nuance, David Jones and Shades, among others.
  The sportswear collection, a collaboration with adidas, was launched in September 2004 and is currently available in 57 countries world-wide, including Australia. The collection has been sold in Australia since 2010 through 4 adidas retail doors. Included in the sportswear collection are running, gym, yoga, tennis, swimming, golf, winter sports and triathlon. Stella McCartney has recently been appointed Team GB’s Creative Director for the 2012 Olympics by adidas. This is first time in the history of the games that a leading fashion designer has designed the apparel for a country’s team across all competitions for both the Olympic and the Paralympic Games.
  [The Opponent] and YSL Beaute entered into a licence agreement in 2001 for the creation of inter alia fragrances under the Stella McCartney brand. Four fragrances (namely, STELLA, STELLA SHEER, STELLA IN TWO and STELLA NUDE), and ancillary lines and a skincare range have been created and sold under the Stella McCartney mark as part of the licence arrangement and are sold in 26 countries worldwide namely, Asia Export, Australia, Austria, Belgium, Canada, Denmark, Dubai, Germany, Greece, Hong Kong, Italy, Japan, Lebanon, Netherlands, New Zealand, Norway, Portugal, South Africa, Spain, Sweden, Switzerland, TRAVEL RETAIL America, TRAVEL RETAIL Asia, TRAVEL RETAIL Europe, UK and USA. The brand Stella McCartney and the Stella Eau de Parfum Line are present in duty free shops under the name TRAVEL RETAIL, namely 3 different Travel Retail markets: Europe (TREMEA), Asia (SCENTAL) and America (PARBEL). In 2008 YSL Beaute was acquired by the L’Oreal Group.
  In addition to the long term collaborations and licences SML has undertaken a number of short term collaborations: in November 2005, with the well-known High Street fashion retailer, H&M in the UK; in 2006 with Target Australia; in 2009 with Gap Kids; in 2010, a second collaboration with Target Australia and in 2011 with C&A Brazil.
  The reputation and recognition of the Stella McCartney brand worldwide is apparent from the attached editorial shown to me now and marked Exhibit 1.[6]
  The following awards have recognized Stella McCartney’s achievement in fashion and social awareness:
  VH1/Vogue[7] Fashion and Music 2000 Designer of the Year Award (2000, NY), the Woman of Courage Award for work against cancer at the prestigious Unforgettable Evening event (2003, LA), the Glamour Award for Best Designer of the Year (2004, London), the star Honoree at the Fashion Group International Night of the Stars (2004, NY), the Organic Style Woman of the Year Award (2005, NY), the Elle Style Award for Best Designer of the Year Award (2007, London), Best Designer of The Year at the British Style Awards (2007, London), Best Designer of The Year at the Spanish Elle Awards (2008, Barcelona), the Green Designer of the Year at the ACE Awards (2008, NY) and in 2009 she was honoured by the NRDC[8], featured in the Time 100 and recognized as a Glamour magazine’s Woman of the Year.
  [6] Exhibit 1 is a collection of newspaper and magazine articles about Stella McCartney or the Opponent. Some of these are in, possibly, Japanese script, some are from British or American publications and it is not apparent how many of these might have circulated (and in the case of the Japanese publications, have been understood) in Australia.
  [7] VH1 appears to be a cable or satellite television channel devoted to music and celebrity gossip in the USA. It is probable that the words ‘Vogue’, ‘Elle’ ‘Time’ and ‘Glamour’ in this passage refer to the publications Vogue, Elle and Time and Glamour
  [8] Probably the Natural Resources Defense Council.
3. Concerning the reputation of the Opponent’s trade marks STELLA and STELLA McCARTNEY in Australia, Ms Newman says:
  Stella McCartney branded ready to wear has been sold in Australia since 2003 and handbags have been sold since 2004. The goods are sold in Sydney, Perth and Melbourne. Between September 2007 and March 2011 approximately €75,000[9] of bags alone were sold at wholesale to Australian customers for resale in Australia.
  […]
  In 2006 SML designed a “one-off’ collection under the name “Stella McCartney for Target” for Target Australia Pty Ltd. Target Australia has approximately 283 Stores located across metropolitan and regional areas of Australia the “Stella McCartney for Target” collection was sold in approximately 100 of such stores. Due to the success of the first collection and the results of a market survey by Target which reported Stella McCartney as the collection which Target’s shoppers would most like to see in the store, a second “Stella McCartney for Target” collection was launched in 2010 and again sold in up to 100 locations across Australia. The collection included ready-to-wear clothing and bags.
  [9] About AU$108,000 at current exchange rates which equates to an average of about AU$30,500 wholesale a year. If a usual retail store mark-up of around 140% is assumed, this equates to an average of around AU$73,800 retail per annum.
4. Ms Newman exhibits to her declaration examples of Australian articles from the following publications or websites referring to or featuring Stella McCartney and STELLA McCARTNEY branded products including the recent range for Target:
  • The Queensland Times
  • heraldsun.com.au
  • The West Australian
  • AFG-Australian Fashion Guide
  • The Australian
  • Harper’s BAZAAR Australia
  • Vogue Australia
  • The Australia Financial Review Magazine
  • theage.com.au
  • RUSSH Magazine Australia
  • lnStyle Australia
  • Style Counsel -featuring the Launch of Stella McCartney for Target
  • FAB SUGAR Australia
  • type="1">
5. Ms Newman refers to the perfumery sold in Australia since 2003 by the Opponent and the packaging in which it is sold. I reproduce an example of one of these below:
The element appearing on the left-hand side, above, is a perfume bottle bearing the trade mark STELLA. On the right-hand side, the word STELLA and the words STELLA McCARTNEY, are on a carton in which the bottle is sold.
1. The above depiction of the way in which the Opponent’s perfumery is sold is fairly typical of the range, which also includes STELLA IN TWO, STELLA SHEER and STELLA NUDE.
Evidence in Answer
1. In his statutory declaration in answer, Mr Wong states that he is the Applicant and owner of the Trade Mark.
2. Mr Wong states that the Trade Mark “is a subsidiary [sic] of the MELILEA International Group of Companies, [‘Melilea’] a corporation [sic] organized under the laws of the country of Malaysia.” Mr Wong states that he is Chairman of his company and licences and authorizes his company to use the Trade Mark.
3. Mr Wong states that he:
  […] founded My Company in 2002 with the goal of transforming health and beauty from the inside out. MELILEA is a company that focuses on and adheres to a comprehensive and purely organic philosophy. All procedures from farming, cultivation, research and development, production and quality control pertaining to My Company’s products meet the standards of a world class organic company. My Company’s green philosophy is echoed not only in the research and product aspect, but is also reflected in My Company’s efforts in organising health talks around the world encouraging people to learn and practice the organic (way of living).
  The products of MELILEA are organic food supplements, skincare products, cosmetics, personal products and slimming and household products all of which are organic in nature. Sometime in 2006, My Company decided to expand its business and started developing cosmetics and skincare products under the [Trade Mark].
4. Concerning the use of the Trade Mark, Mr Wong states:
  The [Trade Mark] was developed exclusive for MELILEA International Group of Companies and this trademark is being used worldwide including Australia. The concept is not copied or derived from the Opponent’s Mark’s STELLA or STELLA MCCARTNEY.[10]The Trade Mark is a new and original concept and is clearly used and pronounced as ST or SAINT ELLA not STELLA.
  Since 2006 the Trade Mark has been used honestly and continuously by My Company as its primary logo on a worldwide basis in connection with its own goods and services, its advertising, its sponsorship, marketing channels and events and its stationery. My Company first used the Trade Mark on the Goods in Australia in July 2011.
  [10] I note that both on the Australian Register of Trade Marks and in use the Opponent’s trade mark is rendered as STELLA McCARTNEY with the first alphabetical letter ‘c’ in the surname rendered in lower-case. I make nothing of the variation in the way it is rendered by either the Opponent or the Applicant.
5. Mr Wong continues:
  Today, a wide range of products are offered for sale under the Trade Mark including, but not limited to: cosmetics and skincare products (“the Goods”) and day-spa and wellness services.
  Now shown to me and marked as Exhibit WKH-2 are pages downloaded from My Company’s website which is operated by the MELILEA International Group of Companies. The official website for the Goods sold under the Trade Mark is pages downloaded from these websites[12] illustrate both the variety of goods offered by My Company under the Trade Mark, and how prominently the Trade Mark features on My Company’s goods and services.
  [11] Both this internet address (and do not appear to link to any website.
  [12] The exhibits referred to are downloaded only from the website >
  Mr Wong includes as Exhibit WKH-8 architectural plans, signage and shop-front design of the Applicant’s store at Shop 2, 524-525, Pacific Highway, Chatswood, New South Wales.
6. Mr Wong goes on to state:
  I have also reviewed the Statutory Declaration of Helen Newman filed by the Opponent in this Opposition. I note that the only use Stella McCartney Limited appear [sic] to make of STELLA on its own as set out in their [sic] evidence is in respect of a range of perfumes which are sold through the Australian large department stores, Myer and David Jones. I confirm that My Company has no intention of using the Trade Mark in respect of perfumes in Australia and only intends to use it in respect of skin care and cosmetic products. Additionally, My Company has no intentions of marketing the products it sells under the Trade Mark in Australia through department stores and specifically not David Jones or Myer. It only intends to sell the products it provides under the Trade Mark via its online presence and through its own branded retail outlets which My Company is in the process of establishing in Australia.
7. Mr Maxwell’s first declaration brings into evidence, inter alia, promotional videos in Mandarin (and their English translations). In the video, Dr Stella Chin and Dr Alan Wong are heard discussing the product sold under the Trade Mark and the words ‘Saint Ella’ are clearly distinguishable and their graphical representation appears in the videos as they do on the Application.
8. Mr Maxwell refers to the Macquarie Concise Dictionary and its definition of the abbreviation ‘St’ (for Saint).
9. Mr Maxwell also includes confidential sales figures under the Trade Mark from Malaysia, Singapore, Indonesia Taiwan and Australia. With the exception of Malaysia, the amounts claimed are comparatively modest.
Evidence in Reply
1. Ms Newman in her evidence in reply provides sales figures from 2009 to 2011[13] for the various fragrances and ‘body products’ sold under the Opponent’s trade marks which contain the element STELLA.
  [13] In the body of her declaration Ms Newman refers to these figures as being from the years 2008 to 2012 – why this is so is not clear.
2. In his first declaration in reply Mr McManis provides evidence of his searches of the Internet and the Applicant’s websites referred to in the evidence of Mr Wong. Mr McManis also critiques the Applicant’s evidence of its use of the Trade Mark and the range of the goods on which the Trade Mark has been used.
3. In his second declaration in reply Mr McManis addresses various administrative minutiae which, while necessary, do not bear on the outcome of these proceedings.
Further Evidence
1. In his further evidence Mr Maxwell addresses Mr McManis’ critique of the Applicant’s evidence of the use of its trade mark.
Section 43
1. Section 43 of the Act provides:
  43Trade mark likely to deceive or cause confusion
  An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
The Opponent’s Submissions
1. Mr McManis submitted that:
  The Second McManis declaration reports on an investigation of Melilea websites and general searches conducted in relation to that business. In particular, we refer to paragraph 6 which states:
  The Melilea.com website did not provide a link to any US business and online Google searches I conducted did not indicate the existence of any Melilea or ST ELLA US based or focussed business. I found references to a company Melilea US Inc, which has a New York address. This is not the applicant, it is not the company referred to in the declaration as My Company, and my online search did not find any evidence of trade in goods and services being conducted by Melilea US Inc. The online investigations I conducted have failed to disclose any connection between ST ELLA product and New York.
  Nothing in the Applicant’s Evidence in Answer or in the Applicant’s further evidence indicates any connection to New York.
  In the present case, there is a clear representation in the mark applied for that the Applicant is based in New York, or that the products are made in New York, or that there is some significant and identifiable association between the Applicant, or its products, and the city of New York. We note that in the Second Maxwell declaration, at paragraph 8, it states that the Applicant’s mark is known as “ST ELLA NEW YORK”.
  New York is probably the most famous city in the world. Consequently, any consumer seeing the Applicant’s mark will recognise the words NEW YORK and see them as indicating a connection with that city. If that connection does not exist then consumers will be deceived or confused.
  The source of the relevant confusion arises from a connotation that the mark has, namely its indication of a connection with the city of New York. If that connection does not exist, as in the present case, the application should be rejected under s43 of [the Act].
The Applicant’s submissions
1. Mr Fox submitted that:
  The Opponent’s complaint in the present case appears to be limited to the use of the words ‘New York’ as part of the Opposed Mark. It is suggested that this gives rise to a representation that the Applicant is based in New York, or that the products are made in New York, or that there is some association with New York.
  This complaint is met by the evidence that:
  Examples of the packaging used internationally by Mr Wong’s company, in relation to cosmetics and skincare products are provided at Exhibit WKH-5. Those examples show that products are made in Japan under licence by St Ella USA Corporation, New York.
2. Mr Fox also referred to depictions of the Applicant’s stores in Asia (which show usage of the Trade Mark) at Exhibit WKH-4. He submitted:
  The Applicant clearly conducts, internationally, a very high-end business operation in relation to which the Opposed Mark quite properly includes the words ‘New York’. Because of this evidence, there is no need for the kind of limitation to the trade mark specification alluded to at Opponent’s Submissions at p3: See also Shanahan’s Australian Law of Trade Marks and Passing Off (5th edn) at [45.1010].
Section 43 Discussion
1. In Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146, Giles J stated at [53] to[55]:
  ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of similarity with other marks (TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc [2000] FCA 720; (2000) 100 FCR 358 at [43]; McCorquodale v Masterson[14]at [25]–[26]). Section 43 might well prevent the registration of HERBAGRA for classes of goods with no connection with herbal ingredients.
  The argument for Pfizer is that the use of the suffix ‘-AGRA’ will cause the requisite confusion as to whether:
  (a)       the HERBAGRA product is out of the same stable as VIAGRA;
  (b)       the active ingredient in the HERBAGRA product is that in VIAGRA or is from the same family of ingredients;
  (c)       the HERBAGRA product is equivalent to VIAGRA in terms of its effects or achieves similar or related effects.
  In my opinion, there is no relevant secondary meaning connoted by the mark HERBAGRA. An implication of sponsorship or association might qualify as such a secondary meaning or connotation, but I am not persuaded that the mark itself has that secondary meaning here.
  [14] [2004] FCA 1247; (2004) 63 IPR 582; [2004] AIPC 92-033; [2005] ALMD 365 (‘McCorquodale’).
2. The connotation must be within the Trade Mark itself[15] and it is necessary for the Opponent to show both: (1) that there is a connotation in the Trade Mark, or a part of it; and (2) because of this connotation the use of the Trade Mark would be likely to deceive or cause confusion.[16]
  [15] Big Country Developments Pty Ltd v TGI Friday’s Inc [2000] FCA 720; (2000) 100 FCR 358; (2000) 48 IPR 513; (2000) 100 FCR 358 at p 365 per Wilcox, Kiefel and Emmett JJ.
  [16] McCorquodale per Kenny J at [25].
3. The two video clips in evidence feature Dr Stella Chin and Dr Alan Wong.[17] Drs Chin and Wong appear in the video clips which concern promotional functions in their capacity as directors of Melilea.
  [17] It is not clear whether Dr Wong and the Applicant are one and the same person.
4. Exhibit WKH-6 contains an article from a publication called Star Metro in which Dr Alan Wong explains that the Trade Mark is a sub-brand of Melilea and that the goods sold under the trade mark are made in United States, Italy, Japan and South Korea. Dr Stella Chin states in the article that the Trade Mark is derived from her forename (a matter I will return to below in my discussion of the Opponent’s section 44 ground).
5. I consider that if the Trade Mark contains a connotation that the goods are made in New York, the evidence shows that at least some of the goods are made in the USA – presumably New York. Further, as Mr Fox submitted, the examples of packaging at Exhibit WKH-5 show that some products are made in Japan under licence from St Ella USA Corporation, New York. I take it that St Ella USA Corporation, New York is one of the Melilea International Group of Companies referred to by Mr Wong in his declaration. While the use of the words ‘New York’ within the Trade Mark may not be by the Applicant, it is presumably by the authorised user. It is not obvious to me how this use is more likely than not to be a deceptive use of the words ‘New York’. The onus is on the Opponent to show that the use of the words is likely to be confusing or deceptive, rather than on the Applicant to demonstrate otherwise.
6. Further, there is a risk in relying on Mr McManis’ evidence at SFM-2 in his second declaration as to the results of his Internet searches on 18 January 2013 of the Applicant’s operations that these do not bear entirely accurately on what the Applicant’s operations actually were on the relevant date – 5 May 2010.[18] What is true at the relevant date might become untrue with the passage of time and while there is a temptation to assume that subsequent events inevitably cast a backwards shadow, this is not always necessarily so.
  [18] There is indirect support for this proposition in Suyen Corporation v Americana International Limited (2010) 87 IPR 262 per Dodds-Streeton J at [234].
7. It could be that the Opponent’s concerns might be met by imposing a ‘claim to vary’ in respect of the description ‘New York’ within the Trade Mark.[19] However, in practice, ‘claims to vary’ are rarely imposed by the Registrar as – absent affirmative evidence that a trade mark (or an element within it) is likely to be used in a deceptive or confusing manner by an applicant (as in McCorquodale) – the imposition of such endorsements falls under similar considerations as those I referred to in Mount Everest Mineral Water Pty Ltd v Himalayan Spring Mineral Water Pty Ltd [2011] ATMO 80.
  [19] See discussion of ‘claims to vary’ and their effect in PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602; (1999) 47 IPR 47; [1999] AIPC 40,117 and Carlton and United Breweries Ltd v Royal Crown Co, Inc [2001] ATMO 7.
8. However, there is nothing before me which suggests that the Trade Mark is inherently deceptive or confusing or that the Applicant (or an authorised user of the Trade Mark) will use it such that it is likely to be deceptive or confusing.
9. The Opponent has not established its Opposition under section 43 of the Act.
Section 44
1. Section 44[20] of the Act relevantly provides:
  [20] And see regulation 4.15A in respect of the Opponent’s registration 1017251
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.
(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a)it is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar services or closely related goods; or
(ii)a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1:For deceptively similar see section 10.
Note 2:For similar services see subsection 14(2).
1. In order to found this ground the Opponent must establish the existence of one or more registered or pending trade marks owned by a person other than the Applicant with:
  ·An earlier priority date than that of the Application; and,
  ·which is substantially identical or deceptively similar to the Trade Mark; and,
  ·which covers similar goods and/or services, or closely related goods and/or services to those within the Specification.
2. The registrations on which the Opponent relies have earlier priority dates than that of the Application and are for the trade mark STELLA. It is not argued that the Trade Mark is substantially identical to the trade mark STELLA and, accordingly, it remains to be decided whether the trade marks are deceptively similar and if the parties’ goods and services are similar or closely related.
The Opponent’s Submissions
1. Mr McManis stated that the Opponent relies on the following two trade mark registrations:
  ·Australian Trade Mark Registration No. 883163 STELLA in Class 3.
  ·Australian Trade Mark Registration No. 1017251 (IR 783699B) STELLA in Class 3.[21]
  [21] Fuller particulars of these registrations are given at [18], above.
2. Mr McManis said in relation to the Specification:
  1. “Soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices” are goods that are the same as goods covered by the Opponent’s STELLA registrations.
  2. To the extent that “cleaning preparations” in the description “cleaning, polishing, scouring and abrasive preparations”, describes personal cleaning preparations, that description also covers goods the same as goods covered by the Opponent’s STELLA registrations.
  3. “Hygienic and beauty care for human beings” are services closely related to the hygiene and beauty products covered by the Opponent’s STELLA registrations.
  The use of cosmetic products is at the core of the business of providing beauty services. Salons also prominently advertise and sell beauty and cosmetic products. Accordingly, there is a clear and close connection between those goods and services, such that they are closely related.
  Similarly, the use of skin care products is at the core of the business of providing hygienic services such as skin care services. Clinics also prominently advertise and sell skin care products. Accordingly, there is a clear and close connection between those goods and services, such that they are closely related.
  The words NEW YORK form part of the opposed trade mark; however, they are descriptive words, which will be seen simply as indicating some connection with New York (where we mention there is a Stella McCartney store). Accordingly, the relevant comparison for the purposes of Section 44 is a comparison between the ST ELLA (stylised) word mark and the Opponent’s STELLA trade mark. In relation to those marks we note:
  ·The goods concerned are likely to be purchased principally by visual selection and sometimes by verbal request.
  ·Visually the marks are highly similar being comprised of exactly the same letters in exactly the same order.
  ·The stylisation is not significant in distinguishing the trade marks. The Opponent’s marks are registered in ordinary script and might be used in any number of ways. The stylisation of letters is common in the representation of trade marks, and does not serve to distinguish marks that are otherwise substantially identical or deceptively similar.
  ·There are many varied ways in which trade marks can appear upon products. Perfumery, cosmetic and toiletry products are often presented in packaging that is eye catching and can incorporate floral and other similar designs, which may detract from clear visualisation of the brand (see for example depictions of STELLA product in paragraph 2.7 of the First Newman declaration).
  ·Phonetically the marks are also very similar bearing in mind the tendency for persons, particularly in Australia, to be lazy in their pronunciation. Consequently, even if the Applicant’s mark was referred to as “saint ella”, the word “saint” could easily be slurred to “snt” and “snt ella”, with the emphasis being on the word “ella” and the name being misheard as the more recognized word “stella”.
  ·An insignificant number of persons are likely to know of a person called “Saint Ella”. This is not a case involving two different well-known words with very different meanings. It is one where one is a well-known name and the other, which also clearly incorporates “ella”, is not likely to be known. This gives rise to a substantially higher risk of confusion than two marks with separately well-known meanings.
The Applicant’s submissions
1. In response, Mr Fox submitted that:
  The Maxwell evidence establishes (by reference to dictionary definitions: see Exhibit JVM-5, Maxwell No.1), the Opposed Mark will never be pronounced by consumers as ‘STELLA’. It will always be stated as two separate words ‘SAINT ELLA’. There is clearly a gap between ‘St’ and ‘Ella’. Further, a small ‘t’ is used in the ‘St’, and only the ‘E’ in ‘Ella’ is capitalised.
  The Applicant also relies upon numerous examples of businesses and organisations proceeded by ‘St’ that are clearly referred to as ‘Saint’ – such as ‘St Johns Ambulance’: Exhibit JVM-6, Maxwell No.1. The Opposed Mark is heavily stylised. That is a significant factor in respect of its visual character and appearance.
  There is, accordingly, no visual or auditory similarity between the marks which could be a potential basis for confusion amongst consumers: Beecham Group Plc v Colgate-Palmolive Pty Ltd (2006) 66 IPR 254 at 268 [58], [61]-[63]. The Opposed Mark is clearly not phonetically similar to the cited marks.
  Consistent with the conclusion of Emmett J in Beecham, the Opposed Mark is not deceptively similar to either of the cited marks.
  This conclusion is bolstered in the present case once regard is had for the words ‘New York’ in the Opposed Mark. The appearance of those words in the Opposed Mark provides an additional basis upon which the marks for comparison are not deceptively similar.
  Further, there is evidence that there has been no confusion amongst consumers. This further aids the conclusion that the marks for comparison are not deceptively similar.
  No question of deceptive similarity arises in the present case.
  The Applicant accepts that there is a degree of overlap between the goods described in class 3 for which registration of the Opposed Mark is sought and the descriptions for class 3 in respect of each of the cited marks: ie. soaps, perfumery, essential oils, cosmetics, hair lotions and dentrifices (as they appear in class 3 descriptions for the cited marks).
  It also accepts that services for ‘hygienic and beauty care for human beings’ in class 44 of the Opposed Mark are closely related to the hygienic and beauty products in the class 3 descriptions for the cited marks.
  However, the Applicant does not accept that ‘bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations’ are goods of the same description as the personal hygiene cleaning products in the class 3 descriptions for the cited marks. The ‘preparations’ goods described in class 3 for the Opposed Mark are of a domestic or household nature, which is of distinctly different kind to the personal hygiene cleaning products in the class 3 descriptions for the cited marks.
  There is no overlap with the goods of the application in class 18 or with the remainder of the goods in class 3 and the remainder of the services in class 44.
Section 44 Discussion
1. Since the comparison of the trade marks takes place in the marketplace context of the goods and services in respect of which the Application is made, it is logical to first consider whether the goods and services of the application are similar or closely related to the goods of the registrations upon which the Opponent relies: see also Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 (‘Woolworths’) per French J at [39]:
  The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods.
2. The Applicant does not dispute that soaps, perfumery, essential oils, cosmetics, hair lotions and dentrifices in the Opponent’s registrations are similar to the soaps; perfumery, essential oils, cosmetics, hair lotions; dentrifices within the Applicant’s goods. Further, the Applicant accepts that services for ‘hygienic and beauty care for human beings’ in class 44 of the Trade Mark are closely related to the hygienic and beauty products in the class 3 descriptions of the registered trade marks.
3. However, the Applicant contends that ‘bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations’ are not goods of the same description as the personal hygiene cleaning products in the class 3 description of the Opponent’s trade mark registrations. The Applicant further submits that the ‘cleaning … preparations’ described in class 3 for the Opposed Mark are of a domestic or household nature, which is of distinctly different kind to the personal hygiene cleaning products in the class 3 descriptions for the cited marks.
4. I consider that the expression ‘cleaning … preparations’ must be considered in the context of the words around it and is accordingly qualified by the words with which it appears, ‘polishing, scouring and abrasive preparations’. Thus ‘cleaning … preparations’ are not the same goods as those which are of a personal hygiene nature.
5. However, the question remains whether ‘cleaning … preparations’ and any goods within the Opponent’s specifications are goods of the same description.
6. Section 14(1) of the Act provides:
  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.
  (2)For the purposes of this Act, services are similar to other services:
  (a)if they are the same as the other services; or
  (b)if they are of the same description as that of the other services.
7. The expression ‘goods of the same description’ has been the focus of considerable judicial attention. In E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; (2009) 175 FCR 386; [2009] AIPC 92-337 (‘Gallo’) at [70] Moore, Edmonds And Gilmour JJ explained:
  The expression “goods of the same description” is a term of art which was found in the legislative predecessors to the TM Act. There is Full Court authority, MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236, that authorities predating the enactment of the TM Act in 1995 concerning the meaning and effect of the expression in a different context are apt to be applied in considering the meaning and effect of the expression in s 120(2). The fact that the Full Court was considering the expression “services of the same description” rather than “goods of the same description” does not appear to us to be a material difference. In this context, the Full Court referred to the judgment of the High Court in Southern Cross[22] at 606. Considerations referred to in the passage from the judgment of the High Court include 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 the manufacture or distribution, they are regarded as belonging to the same trade.
  It is true, as Lion Nathan submitted, that s 120(2) requires a number of discrete questions to be asked and answered. One which may emerge in a particular factual context is whether the alleged infringing trade mark is deceptively similar to the registered trade mark. Another is whether it is used by the alleged infringer on goods of the same description as that of the registered trade mark. However these discrete questions arise in the context of determining, as the ultimate question, whether there has been infringement of the registered trade mark and, to that end, the object or purpose of the statutory prohibition on infringement is relevant. It is to protect the statutory monopoly the registered owner has to use the registered trade mark as a badge of origin. In the context of goods sold in the course of trade to the public, the question of whether the alleged infringement has arisen by the affixing of a deceptively similar trade mark is not divorced from the question of whether the alleged infringement has arisen by doing so in relation to goods of the same description. One would have thought both questions necessarily require consideration of what members of the consuming public might perceive as a result of the use of the alleged infringing mark on the goods in question and whether they might be led to believe they were goods of the registered owner. In this way, the following observations of Burchett J, relied on by Gallo, in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203; (1993) 42 FCR 227 at 240 are relevant to the present enquiry, even though made by reference to provisions concerning the removal of a trade mark:
  In my opinion, the application of a principle so broadly stated requires some concentration upon the object which s 23(2) exists to serve. That object seems plainly to be the avoidance of confusion and deception in the market place, which would be likely to arise should a mark become available for use by two or more different companies, which are unrelated, upon goods of the same description. From that point of view, the expression “goods of the same description” is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception. That approach would seem to me to accord with the common sense business view recommended by Lord Evershed.
  [22] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
8. The question is, as the Courts have stated in Woolworths and Gallo, an evaluative one in which both the degree of similarity between the trade marks and the goods and services in question play a central role in assessing the likelihood of deception or confusion.
9. Here I consider that the Applicant’s ‘cleaning … preparations’ are goods of the same description as the ‘soaps’ within the Opponent’s Goods and services of the Opponent’s registrations 883163 and 1017251. These goods are commonly made by the same manufacturer, are distributed through the same trade channels, are used for sanitary purposes by the same class of customer and, although they may not be sold from the same shelves in supermarkets, would generally be viewed as having a common origin in trade.
10. I turn now to the question of whether the trade marks of the parties are deceptively similar.
11. The consideration of deceptive similarity is informed by the factors referred to in Woolworths by French J at [50]:
  (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.”
12. In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 Windeyer J said at [13]:
  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” (1937) 58 CLR, at p 658.
13. And Parker J, said in In the Matter of An Application by the Pianotist Company Ltd for the Registration of a Trade Mark (1906) 23 RPC 774 at 777:
  “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.”
14. The Opponent’s trade marks STELLA and the Trade Mark contain the same letters in the same order. However the Applicant submits that these trade marks present to the eye and mind quite differently.
15. In one sense the genesis of the parties’ trade marks is similar – the name ‘St Ella’ in the Trade Mark is derived from the forename of one of the founders and directors of the Applicant, Dr Stella Chin and the Opponent’s trade mark is the forename of Ms McCartney. Dr Chin has not put in evidence but it seems to me to be at least possible that Dr Chin has sought to distinguish her forename from that of Ms McCartney by splitting it and referring thus to a real historical person rather than the trade mark of the Opponent.
16. However, the obverse side of that argument is very obviously the fact that the Trade Mark is directly derived from Dr Chin’s forename ‘Stella’ and most people will not be aware that there actually is a saint with the name ‘Ella’ recognized by the Russian Orthodox Church.
17. I agree with Mr Fox that the abbreviation ‘St’ in the context of the Trade Mark will, if recognized, be pronounced and understood as the word ‘saint’ whether people are aware that there is actually a saint of that name or not and this might mitigate against confusion. And, if the letters ‘St’ are recognized, the normal focus within a trade mark is on the initial letters: the beginning of a trade mark is usually the most important for comparison: see London Lubricants (1920) Limited’s Application (1925) 42 RPC 264 at 279 where Sargent LJ observed that:
  The tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison and, in my judgment, the first syllable of a word is, as a rule, far more important for the purpose of distinction.
18. On the other hand, in the Trade Mark the ‘crossbar’ of the alphabetical letter ‘t’ does extend across the space between the abbreviation ‘St’ and the word ‘Ella’, giving the initial impression that the abbreviation ‘St’ and word ‘Ella’ are (and form) a unity. The fact that the initial letters of the Trade Mark are the abbreviation ‘St’ are, on first impression, not at all obvious. Thus there is, in my consideration, a strong argument that a person who is aware of the trade mark STELLA and is looking for goods sold under that trade mark is likely to mistakenly recognize the Trade Mark for the Opponent’s trade mark.
19. Additionally, the Opponent’s trade mark is registered in normal uppercase typed font. I am to consider the likelihood of deception and confusion if either of the parties use their trade marks to the extent of their respective claims. In Woolworths French J said at [88]:
  It is not in dispute on this appeal that in applying the test provided for by s 44(2) of the Act, consideration is not to be given to the actual use made by the owners of the trade mark cited against the applicant for registration. 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.
20. Further, subsection 7(1) provides:
  7Use of trade mark
  (1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
  Note:For prescribed court see section 190.
1. It follows that one of the ways in which the Opponent’s trade mark STELLA may be normally and fairly rendered and used within the scope of its registrations is as Stella[23]. This is a normal font within the suite of fonts in Microsoft Word^®. The putative trade mark Stella is thus not rendered in any special or particular manner and it is accordingly a use of the plainly typed trade mark STELLA without alterations or additions which affect its identity and is consequently taken to be substantially identical to the typed word STELLA rendered in, say, the common Times New Roman font I am using for this decision.
  [23] This is the font Kunstler Script.
2. The trade mark STELLA, rendered in the depicted italic script, strongly resembles the Trade Mark.
3. The parties’ trade marks are, in my consideration, for the above reasons, likely to be confused for one another and are deceptively similar.
4. The Opponent has established both that some of the goods and services within the Specification and those of its registrations are the same or similar goods and closely related services and that the trade marks are deceptively similar and according has established its ground under section 44.
Section 59
1. Section 59 of the Act provides:
  59Applicant not intending to use trade mark
  The registration of a trade mark may be opposed on the ground that the applicant does not intend:
  (a)to use, or authorise the use of, the trade mark in Australia; or
  (b)to assign the trade mark to a body corporate for use by the body corporate in Australia;
  in relation to the goods and/or services specified in the application.
  Note:For applicant see section 6.
2. The Applicant here is Mr Wong Kwai Hua (I re-iterate that it is not clear whether this is the same person as Dr Alan Wong who is also mentioned in the evidence). The Applicant stated in his declaration made on 6 August 2012 that:
  The [Trade Mark] is a subsidiary [sic] of the MELILEA International Group of Companies, a corporation [sic] organised under the laws of the country of Malaysia having its principal place of business at C-8 Jalan PPP1, Plaza Pandan Perdana, off Jalan Pokok Mangga 75250, Melaka, Malaysia. (Hereinafter referred to as “My Company”). I am the Chairman of My Company and licence and authorise My Company to use the Trade Mark.
3. The Applicant, in the same declaration, stated:
  I confirm that My Company has no intention of using the Trade Mark in respect of perfumes in Australia and only intends to use it in respect of skin care and cosmetic products.
The Opponent’s submissions
1. Mr McManis submitted for the Opponent:
  We submit that the evidence establishes a lack of intention on the part of the Applicant to use its trade mark in relation to the range of goods and services for which registration has been sought. In relation to this ground of opposition there are two bases relating to (i) the Applicant’s interest in the trade mark and (ii) the evidence, irrespective of any determination concerning the Applicant’s interest.
2. Concerning the Applicant’s interest in the Trade Mark, Mr McManis stated:
  The Applicant is an individual, Wong Kwai Hua.
  The evidence of Mr Hua refers to Melilea International Group of Companies (“Melilea”).
  In the commencement of his declaration he refers to himself as a Company Director and in paragraph 2, he refers to himself as “the Chairman of My Company”. It states that he licenses and authorises My Company to use the trade mark.
  While Mr Hua may be a Company Director, and may identify himself as a Chairman of Melilea International Group of companies, it does not follow that he is a sole director and that he has full financial control over the activities of “My Company” (as may make use by the company an authorised use see s8 Trade Marks Act 1995). We also note that no details of any license agreement or contract concerning use of the mark on his behalf by Melilea has been presented.
  We submit that informality in arrangements is insufficient to justify a finding of relevant intended use by the Applicant and refer to Health World Limited v Shin-Sun Australia Pty Ltd [2008] FCA 100 (21 February 2008)[24] and Anakin Pty Ltd v Chatswood BBQ King Pty Ltd (Corrigendum dated 10 October 2008)[25].
  In Health World Limited v Shin-Sun Australia Pty Ltd[26] Jacobson J concluded:
  However, the overall effect of her evidence was that she failed to distinguish between the two separate corporate entities, Shin-Sun and Nature’s Hive. I cannot be satisfied, and I find that she did not pay attention to which corporation she was representing when she took the steps that she relies upon to support the assertion that Shin-Sun intended to use the mark.
  In Anakin Pty Ltd v Chatswood BBQ King Pty Ltd[27] in non-use proceedings involving loose arrangements Branson J concluded:
  After giving the matter anxious consideration I have concluded that, having regard to the totality of the evidence before me, it is not appropriate to refrain from ordering that the Register be rectified by cancelling the registration of the Trade Mark. To do otherwise would, as it seems to me, be to allow the applicants to benefit from the “informal” way in which their affairs have been handled.
  In the circumstances, we submit that this does not establish the requisite intention to use the trade mark.
  [24] (2008) 75 IPR 478
  [25] [2008] FCA 1467; (2008) 250 ALR 620; (2008) 79 IPR 44; [2008] AIPC 92-311
  [26] At [171]
  [27] At [52]
3. Concerning the Applicant’s evidence about its intended use of the Trade Mark Mr McManis submitted:
  The intention to use the mark applied for must be real and definite, it must be a resolved or settled purpose which has been reached at the time when the mark is to be registered.
  If there is no such intention as at the date of filing, the trade mark ought not to be registered. If that intention is not maintained, it is lost.
  Relevant intention to use must be to use the mark applied for and it must be intended use in relation to all the goods and services applied for.
  The filing of an application to register a trade mark may be prima facie evidence of the requisite intention. However, once an opponent has made out a prima facie case of lack of intention to use a mark, the onus shifts to the applicant to establish that intention.
  Later actual use may be consistent with inferring intention as at the Application Date. So too, use in other jurisdictions may illuminate the intention in this jurisdiction.
  An opponent cannot know the applicant’s mind, so where an applicant for registration is put on notice that its intention to use the mark is in issue, slight evidence of lack of intention to use or evidence consistent with lack of intention to use shifts the evidentiary onus to the applicant for registration.
  In the present case, even aside from issues relating to the Applicant and Melilea, the Applicant’s evidence directly establishes a lack of intention in respect of certain goods. Further, other evidence presented also raises a presumption of a lack of intention to use the mark in relation to the range of goods and services covered by the application, which has not been effectively answered by the Applicant. In those circumstances, the application should be refused or restricted under s59 Trade Marks Act 1995.
  In relation to the Applicant’s intended use, we note:
  ·Paragraph 7 of the Hua Declaration, which describes the products of Melilea and indicates that in 2006 My Company started developing “cosmetics and skin care products” for sale under the proposed trade mark.
  ·While paragraph 10 refers to “cosmetics and skin care products (“the Goods”) and day-spa and wellness services” it does not specifically reference intended Australian use and should be read in conjunction with paragraph 26.
  ·Pages from international websites are provided.
  ·Paragraph 26 includes specific reference to the intended use, which we maintain properly identifies the Applicant’s actual intention.
  ·The Second McManis Declaration at paragraphs 4 and 5 refers to investigations that indicate an absence of any trade in Class 18 goods, and describes the product range found to be advertised on Melilea’s websites.
  ·The Second Maxwell declaration recognises the issue and responds. However, with regard to comments made in that declaration, we submit that the Applicant’s attorney is not in a position to make a broad and generalised declaration concerning the Applicant’s intentions, which appears to contradict the Hua declaration. We also note that it only refers to goods.
Applicant’s submissions
1. Mr Fox submitted that the cases quoted by Mr Mr McManis in support of the Opponent’s argument, if considered in their entirety, do not, in fact, lend such support. Mr Fox also submitted that:
  The McManis declarations do not establish any lack of intention to use on the part of the Opponent. That evidence does not operate to shift the onus of proof to the Applicant. It falls well short of that mark.
  If there were any doubt about the question of intention, the Wong declaration establishes that Mr Wong’s company, MELILEA, has used the Opposed Mark internationally since 2006. There is accordingly no doubt that Mr Wong’s company has traded using the Opposed Mark with his licence and authority: Wong at [2]. That corporate intention disclosed internationally is clear evidence in support of an equal intention to use the Opposed Mark in Australia.
  Given that Mr Wong is the Applicant, it is apparent that his intention, at the Application Date, was to authorise his company MELILEA to use the Opposed Mark once the mark is registered – this is consistent with his practice to date: see Wong at [2]. There is no ‘informality’ in the arrangements of the Applicant which warrants a finding of absence of intention to use: Opponent’s Submissions at p8.
  To the extent that the Opposed Mark is sought to be registered in relation to goods and services in Classes 3, 18 and 44 outside the commercial intent disclosed in the Wong declaration, then that is no impediment to registration: Virgin Enterprises Limited v Agripower Australia Limited [2013] ATMO 79 at [55]-[60]..
Section 59 Discussion
1. As Mr Fox observed at the hearing, the Applicant is entitled to the presumption of registrability. The fact of filing is prima facie evidence of intention to use. The time at which the intention must exist is the filing date: Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 86 IPR 437; Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391. Further, a mere allegation of non use is not enough by itself to shift the onus of proof to the Applicant, however where a prima facie case for the lack of intention has been made then it is for the Applicant to rebut the allegation: Suyen Corporation v Americana International Limited (2010) 87 IPR 262, (‘Suyen’) following the Full Fed Court (Keane CJ, Stone and Jagot JJ) in Food Channel Network Pty Ltd v Television Food Network GP (2010) 86 IPR 437 and (‘Food Channel’).[28]
  [28] For a discussion of the nature of the onus and the shift in onus to an applicant, see Foxtel Management Pty Ltd v 111Pix.com Limited [2012] ATMO 29 where the Registrar’s delegate Mr Kirov summarized the approach of the Court in Suyen and Food Channel.
2. I do not consider that either Anakin Pty Ltd v Chatswood BBQ King Pty Ltd or Health World Limited v Shin-Sun Australia Pty Ltd assists the Opponent. In Anakin Bennett J had found that Anakin did not own and operate the BBQ King business or the trade mark and went on to state immediately after the passage quoted above:
  Whether or not the applicants so intended, this informality has resulted, as the evidence suggests, in failures to comply with requirements of the Corporations Act and earlier legislation concerning the proper operation of companies (see Ch 2G of the Corporations Act). It has also resulted in failures, as the evidence suggests, to comply with the requirements of the 1920 Act with, as I infer, appreciable loss of revenue to the State of New South Wales (see Part 3 of the 1920 Act). The applicants did not offer any acceptable explanation of these failures.
3. There is no evidence before me that the situation here is in any way similar.
4. And, in HealthWorld, there was evidence that Ms Shin had failed to distinguish between two separate corporate entities: Shin-Sun and Nature’s Hive. There is no evidence before me that Mr Wong has similarly failed to distinguish between corporate entities. Moreover, in Food Channel the Full Federal Court said at [61]:
  The courts should be cautious to allow the legal fiction of the corporate veil to defeat registration in a case where one of a group of companies, all controlled by the same directing mind and will, used the mark prior to the other.
5. Further, the statement by Mr Wong that “My Company has no intention of using the Trade Mark in respect of perfumes in Australia and only intends to use it in respect of skin care and cosmetic products”, made on 6 August 2012, casts no light on what the Applicant’s intention was over two years earlier on 7 May 2010, the priority date of the Application.
6. I do not consider that the evidence filed by the Opponent (or its allegations about the Applicant’s evidence) otherwise has the weight to shift the onus onto the Applicant to substantiate its intention to use the Trade Mark. The evidence is supposition and inference based on the Applicant’s (or his authorised user’s) use of the Trade Mark in relation to certain goods and non-use of the Trade Mark in relation to others well after the relevant date – this evidence, per se, shines no light on the Applicant’s intention at the filing dates.
7. The Opponent has not established its opposition under section 59 of the Act.
Section 60
1. 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.
Opponent’s submissions
1. For the Opponent Mr McManis submitted:
  The Opponent’s reputation in STELLA is established by:
  ·The fame of its founder Stella McCartney, STELLA MCCARTNEY collections, and derivation of the STELLA trade mark from that name (see the First Newman Declaration, including awards at 1.11, exhibits etc).
  ·Use of STELLA in relation to a range of fragrances since 2003 internationally and 2004 in Australia (see the First Newman declaration) and for body products (see the Second Newman declaration).
  ·Paragraphs 2.4 - 2.8 First Newman declaration refers to STELLA product being sold in Australia and the ranking of STELLA fragrance in 2010.
  ·The First Newman declaration refers to growth in Australian sales between 2008 and 2009.
  ·The Second Newman declaration provides timeline for release of STELLA products (paragraph 5).
  ·The Second Newman declaration describes the line of body products (paragraphs 6 - 8).
  ·The Second Newman declaration provides sales figures for Australia and internationally (paragraphs 10 - 12).
  ·Regarding ready-to-wear sales and sales of bags in Australia (see 2.1 & 2.3 First Newman declaration)
  With respect to the Applicant’s evidence:
  ·Paragraph 6 of the Hua Declaration emphasises Melilea’s “purely organic philosophy”. Correspondingly, the Opponent’s evidence highlights the fact that Stella McCartney is internationally recognised for her environmental views and natural products.
  ·In paragraph 8 of the Hua Declaration, it is claimed that the Applicant’s mark is not derived from the Opponent’s STELLA mark, but he does not say how he chose the name ST ELLA. ST ELLA is far from not an obvious choice for use as a trade mark for cosmetic products, and we note that the applicant is based in Malaysia where Islam is the state religion. According to Wikipedia its followers make up 61 per cent of the population.
  ·There is reference to an absence of confusion. The Opponent’s evidence indicates that Australia is a more significant market than most Asian countries, which due to size are not categorised separately in rankings (see 2.9 First Newman declaration). It is the Australian market that needs to be considered. Any use of the Applicant’s mark in Australia appears to have been minimal. Further, there has been no use anywhere in relation to perfumery, which are goods for which the Opponent’s STELLA trade mark has been most used, and which are goods covered by the application. Neither has there been any use in relation to other goods referenced under the Section 59 heading.
  In a market familiar with the celebrity Stella McCartney, and well aware of her company’s trade in cosmetic products, and its sale of a wider range of products (including handbags and clothing) under the name STELLA MCCARTNEY, there is a likelihood of the Opponent’s trade mark being seen as a stylization of STELLA. There is a likelihood of consumers being deceived or at least caused to wonder whether those products and services are part of the STELLA MCCARTNEY portfolio, or an extension of, Stella McCartney’s STELLA product range. This likelihood is heightened by the “organic philosophy” described in the Applicant’s evidence.
  As stated above (see Woolworths and Southern Cross cases) it is sufficient to establish a likelihood of confusion if 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 and surrounding circumstances should be considered. In the present case there is:
  ·Substantial reputation in and recognition of Stella McCartney as the source of a significant range of products
  ·Substantial reputation in and recognition of Stella McCartney’s STELLA MCCARTNEY and STELLA trade marks
  ·Recognition of Stella McCartney’s environmental and organic philosophies and evidence of Melilea’s focus
  ·A high degree of similarity between STELLA and ST ELLA
  ·Application for a wide range of goods and services, including Class 18 goods.
Applicant’s submissions
1. Mr Fox, for the Applicant, submitted:
  With respect to ‘likelihood of deception or confusion’, it is necessary to compare the reputation of the opponent with the possible use by the Applicant of its mark within the scope of its proposed registration: Registrar of Trade Marks v Woolworths (1999) 93 FCR 365 at 382; Southern Cross Refrigerating Company v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 608; Renaud Cointreau and Cie v Cordon Bleu [2000] FCA 720 at [84].
  The relevant test is whether, as a result of the use by the Applicant, a number of persons will be caused to wonder whether it might not be the case that the products or services come from the same source, namely the Opponent – see also Southern Cross at 595. In making this comparison using the ‘wonderment test’, regard may be had for the habits of consumers and the trade channels through which the goods or services may be supplied.
  A preliminary question is: what is the relevant ‘Other Mark’? The Applicant proceeds on the basis that the ‘other marks’ are all those for which the Opponent has obtained registration in Australia at the Application Date – these are set out at McManis No.1 at Exhibit SFM-1.
  As to the first element for s 60, the Applicant submits that the evidence does not establish the requisite reputation required for s 60. That is, the evidence, being limited essentially to magazines advertorials (which do not include any examples of use of the STELLA Mark) and some generalised sales figures does not assist in defining or proscribing the alleged reputation of the Opponent’s Marks (at Exhibit SFM-1) as at the Application Date. The best that the Opponent’s evidence does is to provide support for the assertion that some reputation exists in Australia for the STELLA McCARTNEY Mark. See also: Campomar Sociedad, Limitada v Nike International Ltd (2000) 46 IPR 481 at 503 [83].
  Further, there has been no attempt by the Opponent to define or proscribe, through its evidence, the relevant class of consumers and their characteristics. These matters are all left at large by the evidence, which the Applicant submits is an unsatisfactory and insufficient basis upon which to assert the s 60 opposition ground. There is also no evidence of advertising programmes or expenditure in Australia in respect of any marketing conducted for the STELLA Mark. An evidentiary hiatus exists in the present case with respect to the issue of reputation.
  As to the second element for s 60, even if it is assumed that the Opponent has established the requisite reputation for s 60 purposes (which is denied), the use of the Opposed Mark will not cause deception or confusion in respect of the goods and services for which registration is sought. Critically, as the Maxwell evidence establishes (by reference to dictionary definitions), the Opposed Mark will never be pronounced by consumers as ‘STELLA’. It will always be stated as two separate words ‘Saint Ella’. There is, accordingly, no visual or auditory similarity between the marks which could be a potential basis for confusion amongst consumers: Beecham Group Plc v Colgate-Palmolive Pty Ltd (2006) 66 IPR 254 at 268 [58], [61]-[63].
  Further, as [previously] noted, with respect to ‘fragrances’, there is no evidence that the STELLA Mark has been used without reference to the STELLA McCARTNEY Mark. Since the name ‘STELLA McCARTNEY’ always accompanies the STELLA Mark on fragrance products, there is no prospect of confusion with the Opposed Mark (if it were used in relation to similar products). The name ‘STELLA McCARTNEY’ operates to negative any prospect of confusion or deception (which the Applicant says, in any event, would not arise).
  The Opponent’s evidence asserts that the STELLA Mark has been used in relation to ‘body products’, as [previously] noted. However, the evidence establishes that, similarly with fragrances, the STELLA McCARTNEY Mark is also used in conjunction with the STELLA Mark. The Applicant therefore submits that its analysis with respect to the Opponent’s fragrances has equal application to ‘body products’.
Section 60 Discussion
1. On the subject of reputation, Kenny J said in McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 (‘McCormick’) at [81]:
  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”.
2. In Le Cordon Bleu B.V. v Cordon Bleu International Ltee [2000] FCA 1587; (2000) 50 IPR 1 Heerey J said that the reputation required to be demonstrated (for section 28(a) of the Trade Marks Act 1955)[29] was to be:
  … one of which a significant number of persons were aware…What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.
(Implicitly approved by the Full Federal Court (Moore, Tamberlin and Goldberg JJ) on appeal in Renaud Cointreau & Cie v Cordon Bleu International Ltee (2001) 52 IPR 382 at [71] to [76].)
[29] The word “reputation” was not used in subparagraph 28(a) of the old Act. All that was required for subparagraph 28(a) was that use of the mark “be likely to deceive or cause confusion” and Heerey J imported the word “reputation” into his quoted remarks because he was following Gummow J judgment in Johnson & Johnson v Kalnin (1993) 26 IPR 435 at 438.
1. In McCormick Kenny J at [85] said, concerning the assessment of reputation:
  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.
2. Here (apart from in relation to handbags and perfumes) there are no details of retail revenue under Opponent’s trade mark STELLA McCARTNEY and no details of any advertising or promotional expenditure. In my observations of the world, the sales figures given for product sold under the STELLA trade mark in Australia are comparatively low and only predate the priority date of the Application by one year. However, Mr McManis in effect argues that because of the fame of Stella McCartney (and the trade mark STELLA McCARTNEY), the trade mark STELLA used in relation to perfumes and body products also has a reputation. However, the evidence is that the reputation of the trade mark STELLA McCARTNEY is what I would consider to be ‘moderate’, and the evidence of the mode of use of the trade mark STELLA reveals that, on the packaging of perfumes at least, the link between the trade marks STELLA and the trade mark (and person) STELLA McCARTNEY is stressed. At one level this linkage gives rise to an apprehension that purchasers of the perfumes may do so as much or more by reference to the trade mark (or person) STELLA McCARTNEY as they do to the trade mark STELLA. On another level, this linkage (coupled with low relevant sales figures from one year only in relation to the STELLA trade mark and the absence of any details of Australian sales revenue and advertising figures in relation to the trade mark STELLA McCARTNEY) makes the assessment of the reputation of the trade mark STELLA, solus, difficult.
3. I am accordingly not satisfied that the Opponent’s evidence in relation to either its trade marks STELLA or STELLA McCARTNEY meets the criteria mentioned in either McCormick or in Hugo Boss and establishes the reputation of the trade mark STELLA.
4. The Opponent has not established its opposition under section 60 of the Act.
5. It necessarily follows that the Opponent could not establish its opposition under subsection 42(b) via the Australian Consumer Law as the relevant standard ‘mislead or deceive’ is a higher one than is that of ‘confuse or deceive’ under section 60 of the Act.[30]
  [30] In 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] ATPR 40-307; (1982) 1a IPR 684; 1 TPR 282 Gibbs CJ said at [8]:
  In McWilliam's Wines Pty. Ltd. v. McDonalds System of Australia Pty. Ltd [1980] FCA 159; (1980) 49 FLR 455; 33 ALR 394 it was rightly held by Smithers J. and by Fisher J. that to prove a breach of s. 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty. Ltd. [1953] HCA 73; (1954) 91 CLR 592 , a decision on the Trade Marks Act 1905 (Cth), as amended, is distinguishable.
Decison
1. Subsection 55(1) of the Act provides:
  55Decision
  (1)Unless the proceedings are discontinued or dismissed, 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.
2. The Opponent has established its ground of opposition under section 44. I see no purpose in offering the Applicant the opportunity to excise particular goods and services from the Specification as those goods and services to be excised constitute those which the evidence shows to be of particular and immediate interest to him and I have not had the benefit of argument from the parties about the excision of particular goods or services.
3. I refuse to register application 1360250.
Costs
1. Having been successful the Opponent is entitled to its costs which I order against the Applicant.
Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
19 November 2013

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[2013] ATMO 96

19 November 2013