Stingray Surf Co Pty Ltd v Lister
[1997] ATMO 3
•16 January 1997
TRADE MARKS ACT 1955
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS, WITH REASONS
Re: Opposition by STINGRAY SURF COMPANY PTY. LTD. to the registration of trade mark application number 567048 in the name of WENDY LISTER
As set down by the transitional provisions of Part 22 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to govern this opposition. Accordingly, unless otherwise specified, the authority I refer to is the Trade Marks Act 1955.
This matter concerns application number 567048 which was lodged on 11th November 1991 in the name of Wendy Lister (the applicant). The applicant sought to register the mark shown here:
in respect of “clothing and headgear” in class 25. The mark was accepted under the provisions of sub-section 34(1) of the Act and the following conditions applied:
Registration gives no right to the exclusive use of the phrase TAKE THE STING OUT OF THE SUNS RAYS; and
It is a condition of registration that the mark will only be used in relation to goods manufactured from sun protective fabrics.
Acceptance of the mark was advertised in the Official Journal of Trade Marks of 25th August 1994.
On 25th November 1994, Stringray Surf Company Pty Ltd (the opponent), lodged a notice of opposition to registration of the applicant’s mark. The opposition was based on various grounds, but the opponent’s evidence in support primarily focuses on the following grounds: based on section 28, namely, on para (a), that use of the applicant’s mark would be likely to cause confusion, on para (b), that its use would be contrary to law and/or public interest, and on para (d), that it was not entitled to protection in a court of justice; on section 33, that the applicant’s mark is substantially identical with or deceptively similar to the marks which are the subject of trade mark applications numbers 563790 and 563791 to which the opponent is entitled by assignment; and on section 34, that the applicant’s mark is not entitled to be registered under those provisions.
The evidence
The evidence in support was lodged on 25th May 1995 and comprises a statutory declaration by Michael John Beatty with exhibits MJB1-MJB15. A statutory declaration by Wendy Lister and exhibits WL1-WL34, lodged on 27th November 1995, form the evidence in answer.
Mr Beatty, who is the director of the opponent company, states in his declaration that his company is the assignee of all rights in the mark, the subject of trade mark applications numbers 563790 and 563791. He had first become aware of the mark STINGRAY in 1987 through Kim Patricia Butler who was selling a range of women’s clothing under the mark in her retail outlet at Palm Beach, Queensland. Under exhibit MJB2, Mr Beatty has annexed a copy of a statutory declaration by Ms Butler. In 1988, a number of T-shirts, purchased by Mr Beatty, were sold in Ms Butler’s shop, as well as other markets, under the mark STINGRAY by arrangement with Ms Butler. On deciding to enter the surf industry, he established a business partnership with Mr Bela Pusztai and reached an agreement with Pacific Dunlop Limited to manufacture boogie boards and surf boards which were sold by the partners under the mark STINGRAY. In early 1990, he and Mr Pusztai reached an agreement with Ms Butler to the effect that she would manufacture and design women’s clothing under the mark STINGRAY, that he would manufacture, or have manufactured, men’s clothing under the same mark, and that he would arrange for the marketing of the articles of clothing. Subsequently, the two partners jointly applied for registration of series of marks comprising the word STINGRAY, being applications numbers 563790 and 563791.
In November 1991, Messrs Beatty and Pusztai registered a company, the present opponent company, for the purposes of marketing clothing and surf equipment, including surf boards and boogie boards under the mark STINGRAY and continuing the reputation established in the mark by Ms Butler. Subsequently, articles of clothing were ordered from two different companies for screen printing with the trade mark STINGRAY and associated artwork which was carried out by another company. These goods, according to Mr Beatty, were placed on the market from the beginning of 1992. Women’s swimwear carrying the STINGRAY artwork and logo reached the market in January 1992. More articles of clothing were designed by Ms Butler and supplied to the opponent for selling under the mark STINGRAY. The opponent’s articles of clothing, Mr Beatty states, have been sold throughout Australia through various retail outlets and its mark has been publicised through advertisements in various magazines, on invoices, letterheads, business cards and in posters. He annexes samples of such advertising material under exhibits marked MJB14 and MJB15.
The applicant, Ms Lister, explains the background of how she became interested in the protective clothing in 1990, and the steps she took to have tests conducted on fabrics to ascertain the sun protection factor rating and the reason for her choice of the word STINGRAY in the mark. The total cost for testing at the time of her declaration was about $8,500.00. She has supplied clothing bearing the mark to Anti-Cancer Councils of Victoria and South Australia from 1992. The former has featured the clothing in its mail order catalogue and, as evidence, she affixes a copy of a 1992 catalogue to her declaration. The first sale of the clothing under the mark occurred on 3rd March 1991 to Myer Grace Bros. Since that time Ms Lister has continued to supply the clothing to that company for further distribution throughout Australia. The clothing bearing the mark is also sold by a company licensed by Ms Lister. She has provided the wholesale value of the clothing in Australia from March 1991 to November 1995 (the date of the evidence in answer). In 1993 and 1994, Ms Lister caused to be opened retail shops operating under the name “Australian Skin Cancer Shop”, all of which sold STINGRAY clothing.
Ms Lister started the campaign for promotion of the clothing in November 1990, and since then she has expended considerable sums of money on advertising and promoting the clothing. Many samples and copies of the type of advertising and promotional material are annexed to Ms Lister’s declaration.
The matter was heard in Sydney on 16th October 1996. No representation was made, nor any written submissions were received on behalf of the opponent. Ms Annette Freeman, solicitor of Spruson & Ferguson, patent and trade mark attorneys of Sydney, appeared for the applicant.
Submissions and Decision
Ms Freeman first directed my attention to an earlier application, number 545593, by Ms Lister for the same mark as the one under consideration, which had been opposed by the present opponent on the basis of a third party’s use of the mark since 1986 In deciding the opposition, the hearing officer had held that a critical factor in that case - Stingray Surf Co Pty Ltd v Lister and Brown 28 IPR 581 - was the extent of use in duration, area and volume. As Ms Lister could not establish any use of the mark before the lodgment date, the date at which the rights of the applicant are to be judged, the hearing officer had suggested she re-apply for registration of the mark.
Sections 33 and 34
The relevant provisions of section 33 state as follows:
33(1) Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered or is the subject of an application for registration, by another person in respect of the same goods, or goods of the same description as those goods or of services that are closely related to those goods, unless the date of registration of the first-mentioned mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.
For the purposes of this section, the opponent has relied on the marks of application number 563790 and registration number 563791 for the series of marks STINGRAY STING-RAY, lodged on 17th September 1991 These applications, respectively, are seeking registration of the marks for the following goods:
“Clothing including shorts, shirts, surf gear, swimwear, bathing suits and trunks; headgear including beach hats; and all other goods in this class excluding footwear”; and
“Games and playthings, gymnastic and sporting articles not included in other classes, surfing and swimming equipment in this class including surfboards, boogie boards, surf skis and other water-borne craft for individual use as included in this class; and all other goods in this class excluding apparatus sold as a unit for playing card games”.
While the applicant’s goods “clothing and headgear” are the same goods as those claimed in the opponent’s application number 563790, according to the tests enunciated in John Crowther & Sons (Milnsbridge) Ltd’s Appn (1948) 65 RPC 428, the goods of application number 563791 are not.
Judged in light of the criteria on substantially identical or deceptively similar marks set out in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, whereby the marks in question are to be compared side by side, it is apparent that the marks are not substantially identical. In determining whether the marks bear such close resemblance that they could be confused in the minds of the interested persons, I believe that it is likely that the word STINGRAY, which is displayed prominently in the applicant’s mark, and which also comprises first of the opponent’s series of marks, could be carried away in the memories of the potential purchasers of the respective goods. My conclusion is reinforced by the fact that the second mark in the opponent’s series of marks is the mere phonetic equivalent of the word STINGRAY and the remaining elements in the applicant’s mark consist of an unmistakable device of a stingray and a phrase, TAKE THE STING OUT OF THE SUNS RAYS, in rather minute letters.
Consequently, in terms of section 33, the subject mark offends only against the marks of application number 563790.
Sub-section 34(1) of the Act reads:
34.(1) In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do, the Registrar may permit the registration of trade marks which are substantially identical or deceptively similar, or, but for the honest concurrent use or other special circumstance would be deceptively similar, for the same goods or services or other goods or services, by more than 1 proprietor subject to such conditions and limitations (if any) as the Registrar imposes.
As acknowledged by Ms Freeman, the criteria in relation to justifying honest concurrent use of a mark, which are not necessarily exhaustive, are set out in Alex Pirie & Sons Ltd’s Appn (1932) 49 RPC 195; (1933) 50 RPC 147, John Fitton & Co Ltd’s Appn (1949) 66RPC 110 and K Mart Corporation v Artline Furnishers 23 IPR 149. Those factors are:
the honesty of the concurrent use,
extent of the use in duration, area and volume,
the degree of confusion likely to ensue,
whether any instances of confusion have in fact occurred,
the relative inconvenience which would be caused to the respective parties,
any conditions or limitations.
The honesty of the use
The applicant denies the view expressed by Mr Beatty in his declaration that the applicant had been aware of the mark STINGRAY used by Ms Butler and subsequently, by the opponent, at the time of commencing use of the subject mark.
Ms Lister declares that she had no knowledge of Ms Butler’s use of the mark STINGRAY on clothing until she received a copy of Ms Butler’s declaration in late 1992 in the course of opposition proceedings in relation to trade mark application number 545593 which I have mentioned earlier. A trade mark search in May 1991 conducted on her behalf had revealed a registration for the mark STINGRAY in respect of footwear, but a co-existence agreement had been reached with the proprietor of that mark to enable use of her mark to commence and allow acceptance of application 545593 for “T-shirts”. Following a telephone call in November 1991 from Mr Beatty concerning his alleged ownership of the mark STINGRAY, Ms Lister had been informed by her attorneys that investigations had not revealed any evidence of use of the mark by Mr Beatty prior to the date when she first applied for registration of the mark [13th November 1990].
In fact, Ms Lister states, she chose the word STINGRAY for its play on the words TAKE THE STING OUT OF THE SUN’S RAYS, which phrase she also incorporated in the mark. I agree with Ms Freeman’s submission that the opponent’s allegation concerning Ms Lister’s lack of honesty in this matter has not been in any way substantiated. In the absence of such evidence and, given Ms Lister’s concern for the harm caused by ultraviolet radiation of the sun on humans, her efforts in developing the special clothing for protection of the human body, as well as the inclusion of the aptly descriptive phrase in the mark, I am not prepared to find any dishonesty on the part of Ms Lister in the mark’s adoption.
The extent of use
As established in Simac S.p.A. Macchine Alimentari’s Appn (1987) 10 IPR 91, use of the applicant’s mark must have commenced before lodgment of the present application. Ms Freeman submitted that, not only had actual sales of the goods bearing the mark been made to a national retailer eight months before the present application was lodged, but there had also been extensive preparation for use of the mark before the application. Moreover, she pointed to the rapid build up of the mark’s use and cited “Granada” Trade Mark [1979] RPC 303 in support. However, as no separate sales and advertising figures have been made available for the period before the lodgment date, 11th November 1991, and the fact that first use of the mark occurred only a short time before the application date, I do not consider the evidence to be sufficient for the evaluation of concurrent use of the marks under the provisions of section 34 of the Act.
The degree of confusion likely to ensue
I have found the opponent’s and the applicant’s marks to be deceptively similar, but not substantially identical. I agree, however, with Ms Freeman’s proposition that, even though the marks share a common word STINGRAY, the degree of their confusion is relatively low. My conclusion is further enhanced by the specialized nature of the applicant’s goods which is borne out by the condition of registration of the mark, i.e. that the mark will only be used in relation to goods manufactured from sun protective fabrics.
Whether instances of confusion have occurred
No instances of deception caused by use of the applicant’s mark have been raised in the evidence either by the opponent or the applicant.
The relative inconvenience which would be caused to the respective parties
Ms Freeman said that the inconvenience suffered by the applicant of being denied registration of her mark would be substantial. She referred to the time and effort, as well as financial outlay invested by the applicant in the process of testing the protective clothing and promoting the mark before marketing the product. She also reminded me that the clothing had been approved by the Anti-Cancer Councils of Victoria and South Australia.
The opponent has not presented any evidence of hardship imposed on it in the event of the applicant’s mark being registered. Taking into account the applicant’s argument in relation to the matter and the fact that continued use of the applicant’s unregistered mark is liable to infringe the opponent’s marks, as well as the associated expense that would be incurred in having to develop a different mark, I think the balance of convenience weighs in favour of the applicant.
Any conditions or limitations
Under this factor, the Registrar may impose an appropriate condition or limitation regarding use of the mark in order to minimize the likelihood of deception. I have previously referred to the restriction which is to apply to use of the subject mark, if the mark is eventually to be registered. This condition, I believe, satisfies the relevant criterion.
Other special circumstances
The applicant sought to rely on “other special circumstances” in the provisions of section 34, should her case be considered borderline on one or more of the above discussed criteria. In this regard, Ms Freeman directed my attention to the following aspects: the extensive use of the applicant’s mark to the present date; the public interest; the specialized nature of the applicant’s clothing; and the derivation of the word STINGRAY, which is supported by the slogan included in the mark.
The total wholesale value of the goods bearing the mark for the period from 3rd March 1991 to approximately 24th November 1995 (the date of Ms Lister’s declaration) amounts to in excess of $2 million dollars. Ms Lister’s declaration and exhibits demonstrate that, from the outset of the promotion campaign in November 1990, at various periods the applicant’s agents as well as the applicant herself have distributed brochures to retailers in every State of Australia. Likewise, point-of-sale boards have been forwarded to retail stores carrying the mark in relation to the applicant’s clothing. Further promotion of the goods bearing the mark has been generated by mail order catalogues, the newsletter of Myer Grace Bros, a number of publications and newspapers in different States, and by publicity through radio and television promotion. The expenditure for advertising has been estimated to be $100,000. In 1994, additional Australian Skin Cancer shops were opened and operated under the applicant’s authority: three in New South Wales and one each in Tasmania and Australian Capital Territory.
Given the specialized nature of the goods in question therefore, the applicant’s evidence establishes considerable value of sales of the protective clothing and relatively wide exposure of the subject mark throughout Australia subsequent to lodgment of the application. Such use may be considered for the purposes of determining “special circumstances”, as expressed by the hearing officer Mr Homann in Dinning v New Balance Athletic Shoe Inc (1992) AIPC 90-931, at p 38,726:
“Although I have said that the honest concurrent use provisions of s 34 apply as at the date of the lodgment of the application I think I am entitled to take into account that the inconvenience to the applicant of refusing the application now would appear to outweigh by far the inconvenience to the opponent of allowing registration. Further, as Mr Doyle pointed out, if I were to refuse the application the applicant could simply reapply and almost certainly obtain registration on the basis of extensive and concurrent use over the last eight years.”
A similar view has been stated in “Granada” Appn, supra, at p 317.
Apart from a reference to two outlets in Queensland and one in South Australia supplying the opponent’s goods, Mr Beatty’s statements that the articles of clothing carrying the opponent’s trade marks have been sold by various retailers throughout Australia have not been supported by evidence, nor any details furnished as to the turnover of the goods and the related advertising expenditure. The applicant’s evidence, on the other hand, has provided sufficient information from which I am able to conclude that the subject mark has achieved reasonable reputation and has become identified in the minds of the relevant members of the Australian community. This factor, together with the slogan TAKES THE STING OUT OF THE SUN’S RAYS in the applicant’s mark, which emphasizes the connection between the mark and the particular nature of the goods of this application and, at the same time, tends to minimize the risk of deception or confusion, as reiterated by Ms Freeman, is a further matter which enhances the applicant’s case.
Being mindful of the directives of Fox J in Bali Trade Mark (No. 2) 1978 FSR 193, at p 221, that “special circumstances” in sub-section 12(2) of the U. K. Act, (sub-section 34 of the Australian Act), “justify taking the case out of the ordinary rules so that justice may be done to the applicant”, and in light of the factors discussed above, I find that the applicant has succeeded in establishing a case for special circumstances envisaged under the provisions of sub-section 34.
Section 28
Pursuant to para 28(a), a mark “the use of which would be likely to deceive or cause confusion” shall not be registered. Paraphrasing the test of Evershed J in Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97, where he was referring to s 22 of the U.K. Act, which corresponds to s 28 of the Trade Marks Act 1955: “having regard to the reputation acquired by the name STINGRAY, is the court satisfied that the mark applied for, if used in a normal and fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons”, and applying it to the present situation, I do not see how the applicant’s mark offends against those provisions of the Act.
There is only little evidence of use of the opponent’s mark - the sale of one hundred T-shirts by Ms Butler - before the lodgment of the present application, the date at which the opponent’s reputation is to be determined (see Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953-1954] 91 CLR 592). Given that the applicant’s mark has been used only eight months during the relevant period, the likelihood of deception or confusion between the marks would have been minute.
Concerning para 28(d), there is no evidence before me of blameworthy conduct on the part of the applicant which would disentitle the applicant’s trade mark to the protection of a court of law.
Consequently, I dismiss the grounds of opposition in relation to s 28 of the Act.
Conclusion
For the reasons outlined above, I am satisfied that the applicant’s mark qualifies for registration under the “special circumstances” provisions contemplated under sub-section 34(1) of the Act, subject to the condition of registration entered on the application. The opponent has also failed to make out a case based on the other grounds which were supported by its evidence. I therefore dismiss the opposition.
As the applicant has sought costs in the matter, should she succeed in the present proceedings, I award costs in her favour.
Vija Zars
Hearing Officer
16th January 1997