Suzanne Grae Corporation Pty Ltd v Design West Mode Pty Ltd - [2019] ATMO 92

TRADE MARKS ACT 1995

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

Re:Opposition by Suzanne Grae Corporation Pty Ltd to registration of trade mark application 1832728 (25, 35) - SUZANNE BETRO - filed in the name of Design West Mode Pty Ltd and Suzanne Betro.

Delegate:	M. Cooper
Representation:	Opponent: Ian Horak of counsel instructed by Dentons Applicant: Julian Zmood of counsel instructed by Eakin McCaffrey Cox
Decision:	2019 ATMO 92 *Trade Marks Act 1995* Opposition to registration under s 52: ss 42(b), 44 and 60 considered – no opposition grounds established – trade mark to proceed to registration.

Background

This matter concerns an opposition by Suzanne Grae Corporation Pty. Ltd. (“the Opponent”), under s.52 of the Trade Marks Act 1995 (“the Act”), to registration of the trade mark detailed below in the name of Design West Mode Pty. Ltd. and Suzanne Betro (“the Applicants”):
Application Number: 1832728
Trade Mark: SUZANNE BETRO
(“the Trade Mark”)
Filing Date: 20 March 2017
Goods and Services
Class 25:
Apparel (clothing, footwear, headgear); Beach clothing; Belts (clothing); Casual clothing; Denims (clothing); Jackets (clothing); Knitwear (clothing); Ladies clothing; Pants (clothing); Playsuits (clothing); Slips (clothing); Women's clothing; Woven articles of clothing
Class 35:
Retail clothing shop services
(“the Goods and Services”)

2. The Trade Mark was examined and advertised as accepted for possible registration on 10 August 2017 in the Australian Official Journal of Trade Marks.

On 9 October 2017, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 1 November 2017, a Statement of Grounds and Particulars (“SGP”) was filed which cited opposition grounds under sections 42, 44 and 60 of the Act.
The Applicants filed a Notice of Intention to Defend on 4 December 2017.
On 29 August 2018 the Opponent requested a hearing. I heard the matter in Canberra on 7 March 2019 as a delegate of the Registrar of Trade Marks. Mr. Ian Horak of Counsel, instructed by Watermark Intellectual Property Pty. Ltd., appeared for the Opponent. The Applicant was represented by Mr. Julian Zmood of Counsel, instructed by Eakin McCaffrey Cox Lawyers.

Evidence

Evidence in Support was filed by the Opponent on 8 March 2018. It comprised the statutory declaration of Suzanne Scozzi, the Opponent’s CEO, made on 7 March 2018, with Exhibits SS-1 to SS-11 (“the first Scozzi declaration”).
The Applicant’s Evidence in Answer was filed on 31 May 2018. It comprised the statutory declaration of Suzanne Betro, Design Director of the joint Applicant, Design West Mode Pty Ltd (“DWM”), dated 29 May 2018, with Annexures SB-1 to SB-6 (“the Betro declaration”).
The Opponent’s Evidence in Reply, filed on 7 August 2018 comprises

a further declaration by Suzanne Scozzi dated 6 August 2018 (“the second Scozzi declaration”) with Exhibit SS-12 to SS-19; and
a declaration by Vince Mammone, General Manager of Leasing for Vicinity Centres, WA and SA dated 6 August 2018 (“the Mammone declaration”).

In accordance with directions, the Opponent and Applicant filed written submissions on 21 February and 28 February 2019 respectively. These are discussed further below.

The Opponent’s evidence

In her first declaration, Ms. Scozzi said she had worked in the fashion/retail industry for the last 35 years. She outlined the Opponent’s creation in 1968 and described it as a leading Australian fashion retail chain trading under the mark SUZANNE GRAE and operating over 200 physical retail stores in Australia and online at She annexed selected screenshots of the Opponent’s website and Facebook pages and photographs of store signage. She attached materials relating to the Opponent’s sales figures and claimed it had received several awards.
She provided examples of advertising that she said demonstrated that the Applicants used the Trade Mark for the same style of clothing and accessories as the Opponent. She maintained that the use of the Trade Mark would be “likely to result in confusion amongst consumers, to the detriment of my Company’s brand and business.” She said she is unaware of any other fashion retail chain in Australia incorporating the name SUZANNE. After searching the website she claimed “Suzanne Grae” is the only brand that contains the term SUZANNE in the results.
In her second declaration, in response to claims and observations in the Betro declaration as to Australian trade mark registrations that contain the name SUSSAN, she noted that they do not contain SUZANNE. She asserted that no other traders sell clothing under or by reference to SUZANNE.
Ms. Scozzi claimed in her experience, Australian consumers would remember the first and distinctive element SUZANNE in the mark SUZANNE GRAE. She maintained that SUZANNE is strongly associated with her company and use of the Trade Mark would mislead consumers to believe there is an association between it and the Applicants. She further asserted that many listed brands sold products by reference to a first name and it is common for fashion brands to promote and sell products under sub-brands which still feature an element of the original brand. She gave the examples of the use of “Carla” by Carla Zampatti. “marc” by Marc Jacobs, and others. She also said it was common for Australians to abbreviate or shorten words.
In his declaration, Mr. Mammone said he was unaware of other stores in any shopping centre in Australia, other than the Opponent’s, “that contain the word SUZANNE”. He claimed SUZANNE is a memorable and prominent element of the Trade Mark and the Suzanne Grae stores. He claimed in the course of his duties he would “refer to Suzanne Grae as SUZANNE”

The Applicant’s evidence

In her declaration, Ms. Betro said she has been designing clothes by reference to the Trade Mark, which bears her name, since 2003. She outlined its history, noting that the Trade Mark had been registered since 29 December 2003 and that she assigned it to DWM on 23 March 2010. She claimed an administrative oversight led to it lapsing on 17 July 2014. She listed other countries in which the Trade Mark had been registered and various e-commerce channels through which the Goods and Services are delivered/sold. She also claimed to have branded retail stores in China and concession arrangements in Singapore. She asserted that Google search results for the Trade Mark did not refer to or reveal any “hits” for “Suzanne Grae”, and vice versa.
In response to the Opponent’s evidence, she disputed the Opponent’s claim that its use of the name SUZANNE is unique to retailing, wholesaling or mail order services. She noted the aural and phonetic similarities between SUZANNE and another woman’s clothing retail chain SUSSAN, observing that the Opponent is part of this same corporate chain and it would be well aware of its use. She also rejected the Opponent’s assertion that the word SUZANNE is emphasised in its branding, noting that only one photograph in its evidence indicates this is the case. In addition, she noted that nothing in the Opponent’s evidence demonstrated any independent use of SUZANNE simpliciter, rather the evidence showed the Opponent had consistently used both words, “SUZANNE GRAE”.
Ms. Betro further noted that the clothing style comparisons made by the Opponent with the Applicants’ goods were of common styles “marketed by numerous other clothing manufacturers”. She disputed that the Opponent’s trade marks are synonymous with any particular style of clothing. She maintained that consumers of fashion are aware that there are many similarities in this segment of the market in which the Applicants and Opponent operate, and, as a consequence, consumers “more intently scrutinise labels and brands to make sure they are buying a product from a brand they are comfortable with...” She said a consumer would quickly be aware that SUZANNE GRAE and SUZANNE BETRO are different suppliers, that there are numerous other outlets which contain derivations of SUZANNE and there is nothing memorable that “sets it apart from numerous spelling variations of this common first female name.”
While conceding that the Opponent had a reputation in its “SUZANNE GRAE” trade mark as a whole, Ms. Betro said the evidence failed to show “any clear use of SUZANNE by itself or the generation of the reputation it claims for SUZANNE”. She also denied any deceptive similarity between the Trade Mark and the the Opponent’s SUZANNE GRAE mark, asserting that in her experience in the fashion industry it is more common to identify a person by their surname than their first name. She gave several examples including Chanel, Armani, Morrissey, Versace, maintaining that a distinctive surname is more likely to be remembered. Furthermore, the Applicants’ and Opponent’s goods do not appear in the same stores so she claimed there is no chance a consumer will inadvertently pick up the wrong brand. She observed that their respective websites look and feel different. She said there was no evidence to support the Opponent’s s 42(b) grounds.

Onus and standard of proof

In respect of proceedings under section 52, an opponent bears the onus of establishing one or more of the grounds of opposition in relation to the goods and services of an opposed trade mark. The standard of proof required is on the balance of probabilities.[1]
[1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599 [6-26].
As noted above, the Opposition grounds particularised in the SGP are those under sections 44, 60 and 42 of the Act. At the hearing the opponent relied primarily on its s.60 ground of opposition, but also pressed s.42 and s.44.
The time at which a ground of opposition must be established is the date of filing of the application for registration.[2] In this case that date is 20 March 2017 (“the relevant date”), also referred to as the “priority date” in ss 44 and 60.
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 [595].

Consideration and reasons

The Opponent’s grounds of opposition are discussed below.

Section 44

Section 44 of the Act provides:
44. Identical 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).
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.

(3) If the Registrar in either case is satisfied:

(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note: For limitations see section 6.

(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and

(b) ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.

Note 1:       An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2:       For predecessor in title see section 6.
Note 3:       For priority date see section 12.

Therefore, in order to establish the section 44 ground of opposition under subsections 44(1) and 44(2), the Opponent must demonstrate, subject to subsections (3) and (4), that the Trade Mark:

issubstantially identicalwith or deceptively similar to at least one of the Opponent’s nominated trade marks, and
is in respect of similar goods or closely related services (s.44(1)(a)(i)) and/or similar services or closely related goods (s.44(2)(a)(i)), and
has a priority date not earlier than that of the other trade marks (s.44(1)(b) and s.44(2)(b)).

In the SGP, the Opponent stated:
The opposed Application is substantially identical with or deceptively similar to one or more trade marks which are registered in respect of identical, similar or closely related goods and/or services and the priority date of the opposed Application is not earlier than the priority date of those other trade marks.
The Opponent is the owner of one or more Australia trade mark registrations containing “Suzanne” as outline below:
Registration No. 702701 SUZANNE GRAE;
Registration No. 1729916 SUZANNE GRAE.
In its written submissions and at the hearing the Opponent confirmed that it wished to rely on the above two trade marks (“the Opponent’s marks”). It did not claim the Trade Mark was substantially identical to them but contended they were deceptively similar. Essentially it was submitted that because the services are the same and they share the same distinctive first name element “Suzanne”, “consumers would be caused to wonder, or entertain a reasonable doubt, as to whether the products and services of the applicant come from the same trade source by reason of the common first name element.” The Opponent relied in particular on the delegate’s decision in Mo Industries, LLC v Holly Tan, LLC (“Mo Industries”)[3] in which two trade marks, “Ella Moon” and “Ella Moss” were held to be deceptively similar. The Opponent contended that the delegate found the strong first name element would heighten the chance of an imperfect recollection denoting a common trade source.
[3] [2018] ATMO 162
In its written submissions and at the hearing the Applicant contended that the Trade Mark and the Opponent’s marks were dissimilar and there was no “real” evidence to suggest the relevant consumers would “simply discard or ignore the second words of the Trade Mark and the Opponent’s marks”. The Applicant addressed the Opponent’s claims regarding the tendency of Australians to contract words, observing that the claim was not supported by any evidence of the oral use of Opponent’s marks. In addition, as the evidence was said to establish, “Suzanne” is a commonplace woman’s name, and consumers “would attach no special weight” to it when purchasing. Furthermore, referring to the Betro declaration, the Applicant contended that apparel designers generally choose to differentiate their brands through a distinctive surname, such as such as Chanel, Armani, Versace, rather than a first name. It was further submitted that there is no real tangible danger of confusion because, in the relevant market for online and instore retailing of clothing, consumers “tend to take time to review and assess garments and a brand before they purchase whether online or instore” and would discount the common “SUZANNE” element, focussing instead on the distinctive last name/second element. There was nothing in the evidence which supported the Opponent’s contention that the Applicant would use SUZANNE simpliciter as a trade mark.
In considering imperfect recollection, the Applicant contended that the essential feature of the Opponent’s marks is GRAE, whereas BETRO is the distinctive part of the Trade Mark, and this is what would remain with a consumer and is sufficient to avoid confusion.

Consideration

The Opponent’s marks have an earlier priority date than the Trade Mark. Therefore ss 44(1)(b) and 44(2)(b) are satisfied.
As noted above, the Opponent in its submissions relied only on deceptive similarity of the marks. For the sake of completeness however I have considered whether they are substantially identical by reference to the table below.

TRADE MARK	OPPONENT’S MARK	Number	Classes
SUZANNE BETRO	SUZANNE GRAE	702701	24,42
SUZANNE GRAE	1729916	14

While the Trade Mark and the Opponent’s marks share a common first word, the second word is dissimilar in all respects. On this basis I am not satisfied that on a side by side comparison, a total impression of resemblance emerges between the Trade Mark and any of the Opponent’s marks such that they might be regarded as being substantially identical.[4]
[4] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66 [13].
In submissions, the Applicants conceded that, in respect of 702701, the Services are the same or similar however they noted that the Opponent’s mark 1729916 is registered in respect of class 14 only. The Opponent has only submitted that “there is complete symmetry in the services provided.” There was no claim or any evidence that suggested the goods in class 14 of trade mark 1729916 were relevantly similar or closely related to the Goods and Services. Therefore, having considered the Opponent’s marks, I am satisfied that in respect of 702701, (“the Opponent’s mark”) s 44(1)(a)(i) and 44(2)(a)(i) are satisfied. It is not necessary to consider 1729916 as it is identical to 702701 and the evidence does not establish a relevant relationship between its goods and the Goods and Services.

Deceptive similarity

Section 10 of the Act defines deceptive similarity as follows:
Section 10 - Definition of deceptively similar
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

A determination of ‘deceptive similarity’requires an assessment of the likelihood of deception or confusion arising from a recollection or impression of the respective marks by potential consumers of the goods and/or services[5]. This is to be assessed by reference to the standards of ordinary people “who should not be credited with high perception or habitual caution” and in the context of the business and the way in which the particular class/es of goods are sold or services provided.[6] A possibility of confusion is not sufficient; there must be a real tangible danger of confusion.[7] A likelihood of confusion will exist if there “is a real likelihood that some people will wonder or be left in doubt about whether the two sets [of goods] come from the same source.”[8] The use to be considered is notional use[9].
[5] Ibid.
[6] Australian Woollen Mills v F S Walton and Co Ltd (1937) 58 CLR 641 at 658.
[7] Australian Woollen Mills v F S Walton and Co Ltd (1937) 58 CLR 641; Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; [1999] FCA 1020.
[8] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 at [50(ii)].
[9] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 ; [1973] HCA 43; 1 ALR 443 at 450.
The Goods and Services indicate that the notional use of the Trade Mark is quite broad. Notionally, assuming its use in a normal and fair manner across all of the Goods and Services, the Applicants will be selling products/delivering services bearing the Trade Mark, in part at least, to the same types of Australian consumers and in the same markets as the Opponent.
In estimating the effect or impression produced on the mind of these potential consumers, I note the comments of the court in Starr Partners P/L v Dev Prem P/L:
The first step in the analysis is to identify the impression produced by the registered mark considered in its entirety. Similarity is not based on only part of the registered mark. On the other hand, when one decides upon the impression produced by that mark it is not improper to give more or less weight to particular features of it, provided the ultimate conclusion is based on a consideration of the mark in its entirety. This approach does no more than recognise that one word or feature of a mark can be more striking and memorable than another.
And at 26
Because the likelihood of deception or confusion must be assessed in the light of the imperfection of human recollection, where a trade mark includes both common and uncommon words, the uncommon words…will be the more memorable…than the common words.[10]
[10] [2007] FCAFC 42 [22].
Similarly, in Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd (“Melbourne Chinese Press”) the court said
In considering marks as a whole, where they contain common words, one should look primarily to those aspects of the marks that are not common (Cooper Engineering at 538-9). Where distinctive aspects of the marks are the aspects that would remain with a consumer, that is sufficient to avoid confusion (Coca-Cola Co at 134). Elements of the mark were not discounted in these cases because they were descriptive but because they were common to the two marks.[11]
[11] [2004] FCAFC 201 [40].
The Trade Mark and the Opponent’s mark share a common first word, the name “SUZANNE”. While the Opponent submitted that “the commonality in the first element, “SUZANNE” would cause consumers to wonder about a connection between the Opponent and Applicant”, the evidence did not support this contention. As the Applicant observed, it is a common female name. As the above authorities determined, it is the uncommon words which will be more memorable. On this basis I am not satisfied that “SUZANNE”, as a common feature of the Opponent’s mark and the Trade Mark, would be likely to cause consumers to make a connection between the Trade Mark and the Opponent.
Rather, it is the surnames, or second elements of the trade marks which are more striking and distinctive and most likely to be remembered by consumers. The marked aural and visual dissimilarity between them militates against any likelihood of deception or confusion arising in the minds of the relevant consumers. This is not diminished by the presence of the same first word in each mark which, given its commonality, is discounted. This factor also distinguishes this opposition from the circumstances before the delegate in Mo Industries[12].
[12] [2018] ATMO 162 [36]
The Opponent also contended that the first word of a trade mark is more readily remembered and this is reinforced “during aural use” when persons tend to truncate or slur their speech. Specifically, the same first element “SUZANNE”, on identical goods and services, combined with the tendency for consumers to omit or slur the subsequent elements, meant it was likely that consumers would apprehend an association between the Opponent and Applicants.
In this context I note the comments of by Dodds-Streeton J in Tivo Inc v Vivo Corporation Pty Ltd (‘Tivo), as also referred to by the Applicant, as follows:
The cases are not entirely consistent in relation to whether, and if so, which parts of words are more likely to be slurred, emphasised or misheard, and much appears to depend on the particular circumstances of, and the evidence led in, individual cases.[13]
[13] [2012] FCA 252, [163] upheld on appeal.
Aside from the assertions of Ms. Scozzi, there is little evidence substantiating the Opponent’s claims in this regard. As the Applicant observed, the evidence did not demonstrate any “aberrant” uses of the Opponent’s mark or the Trade Mark and I consider that even careless pronunciation is unlikely to cause any confusion, given the significant aural and semantic differences between the second elements of these marks.
In addition, the Opponent stated in submissions that the Opponent “has, since 1968, been the only such retail store in this space which utilises that word” (Suzanne). This seems to be contradicted by the presence of the well-known SUSSAN chain of women’s retail clothing stores. Notwithstanding the different spelling, SUSSAN is pronounced the same as SUZANNE. Given this, the Opponent’s claims as to the distinctiveness of SUZANNE and the likelihood of consumers dropping the second element of GRAE, are unpersuasive. This is particularly so when considering the circumstances in which the particular class/es of goods are sold or services provided. A number of prior cases have stated that in relation to the purchase of clothing, consumers tend to take time to assess it and the brand before they purchase.[14]. Such consumer awareness of the relevant brands and scrutiny of labels would diminish any potential for consumers to be caused to wonder or infer that the Goods or Services came from the same source.
[14] For example, Autumnpaper Ltd v Maya McQueen Pty Ltd [2016] ATMO 53; Hugo Boss AG v Tagmill Pty Ltd [2000] ATMO 23, Taiwan Yamani v Giorgio Armani 17 IPR 92 and cases at footnote 55 to Opponent’s submissions.
In comparing the impression a person of ordinary memory and intelligence would have based on a general recollection of the Opponent’s mark, with the impression that person would get from the Trade Mark[15], aside from the common element SUZANNE, they are completely different visually, semantically and aurally. Given this, even allowing for imperfect recollection, I do not consider that the Trade Mark “so nearly” resembles the Opponent’s mark in any material way such that it would be “likely to deceive or cause confusion” among “persons of ordinary intelligence and memory”.
[15] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196 [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 [415].
In the circumstances there is no need to consider s44 (3) or (4).
It follows that I am not satisfied the section 44 ground is established.

Section 60

Section 60 provides as follows:
Trade 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.

Therefore, the Opponent must first establish that the trade marks on which it relies had a reputation in Australia at the Trade Mark’s priority date and, secondly, that because of that reputation, the Applicants’ use of the Trade Mark would be likely to deceive or cause confusion. That is, the Opponent’s evidence must establish a causal link between its reputation in its trade mark/s and the likelihood that use of the Trade Mark will cause deception or confusion.
The Opponent claimed in the SGP as follows:
Before the priority date of the opposed Application, there existed a reputation and recognition by the public generally in one or more of the Opponent’s trade marks containing or consisting of ‘Suzanne’ (Suzanne Marks) in relation to retail of women’s clothing such that use of the opposed Application in respect of the applied for goods and services would be likely to cause confusion.
(a) The Opponent has used and promoted the Suzanne Marks for many years in relation to:
• Retail of women’s clothing, retail of women’s apparel, and retail of women’s
Accessories; and
• women’s clothing.
(b) The Suzanne Grae business has used one or more Suzanne Marks for the above services and goods since before the 1980s. The Suzanne Grae business was a national women’s fashion business with almost 200 stores in the 1980s.
(c) The Opponent currently operates 198 stores nationwide.
(d) The Opponent has developed a substantial reputation in its Suzanne Marks in Australia in relation to retail of women’s clothing, retail of women’s apparel, and retail of women’s accessories and women’s clothing, given its significant promotion and use of the Suzanne Marks throughout Australia for these services and goods for decades.
(e) The Opponent has registered trade marks containing Suzanne in various countries, including in Australia, since at least February 1996.
The Opponent submitted that it “is a leading Australian fashion retailer over a lengthy period of time and has become an iconic brand amongst Australian consumers”. In relation to the likelihood of confusion, it contended that “the Opponent has a reputation in respect of identical services” to those of the Trade Mark; both parties deal in similar styles of clothing; the word SUZANNE is emphasised in promotions and it is common for trade marks in the fashion space to be truncated and for people to abbreviate or shorten words. Mr. Mammone’s evidence was said to confirm that the Opponent is known and referred to as SUZANNE and there “are no other retailers in Australia having a reputation in a trade mark comprising the word SUZANNE as so represented”. Regarding the other fashion outlet SUSSAN, with which the Opponent acknowledged it is associated, it was said to be depicted differently to the Trade Mark and the Opponent’s mark. In any event, it was contended it is not necessary that the reputation claimed be exclusive.
In submissions the Applicants acknowledged the Opponent’s strong revenue figures and that it “enjoys a strong reputation from trading under and by reference to the Suzanne Grae trade mark in each of classes 14, 25 and 42.” Noting that section 60 “requires a consideration of the actual manner … in which the earlier mark has been used”, it was observed that each of the Opponent’s website and Facebook examples shows the SUZANNE GRAE trade mark “in a unitary, conjoined form; SUZANNE simpliciter does not appear nor is the word SUZANNE emphasised”. There was no evidence of "a single use of the word SUZANNE alone” and it was contended that it was unlikely SUSSAN, the Opponent’s holding company, would promote an aurally indistinct trade mark. Nor was there any evidence to support the contention that the word “GRAE” was omitted by the relevant consumer base. On the contrary, the Applicants noted the substantial use of the word GRAE alone, in particular that it was the subject of a separate trade mark owned by the Opponent (no.825261).
It was also submitted that little weight should be given to the Mammone declaration because he had failed to disclose that the Opponent is a tenant at his employer’s properties, his role is limited to leasing strategy coordinator and parts of his statement are irrelevant. The results of the searches undertaken by Ms. Scozzi as to the incidence of the name “SUZANNE” in ladies retail clothing brands in Australia were also rejected as inadequate and incomplete.
The Applicants also reiterated its s 44 submissions and noted that, given the significant amount of time the Applicants and Opponent been operating in the Australian fashion retail industry, it is remarkable that there is no evidence of any consumer confusion.

Reputation

As referred to by the Applicants and the Opponent, the comments of Kenny J in McCormick & Co Inc v McCormick in relation to s.60 and the measurement of reputation are relevant:
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.[16]
[16] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 [86].
The Opponent has demonstrated strong sales revenue and promotion of its brand and there is no dispute between the parties as to its reputation in its SUZANNE GRAE trade mark in Australia for women’s clothing and fashion. The Applicant conceded this. The Opponent’s s 60 submission however is that the SUZANNE element is “the direct and distinctive element” which “a substantial number of consumers would remember .. and make a connection with the Opposed Mark.” This is not supported by the Opponent’s evidence which demonstrated use of “SUZANNE GRAE” either as two words or, more frequently, as conjoined. Of several pages of exhibits, only the Opponent’s exhibit SS-8[17], appears to demonstrate any emphasis on the word “Suzanne”, appearing above “Grae”. For reasons identified by the Applicant, I attach little weight to the Mammone declaration.
[17] The same photograph also appears in exhibit SS-7
Therefore, while I am satisfied that, at the relevant date, the Opponent had established, among a significant number of Australian consumers, the relevant reputation in “SUZANNE GRAE” for the purposes of s.60(a)[18], I am not satisfied, in the absence of persuasive evidence otherwise, it has done so in respect of SUZANNE simpliciter.
[18] The Opponent failed to specify which of its marks it relied on in relation to s 60. Instead it claimed reputation in respect of its trade mark SUZANNE GRAE (not specified). Its SGP referred only to its reputation in one or more of the Opponent’s trade marks containing or consisting of ‘Suzanne’ (the Suzanne marks).

Likelihood of deception or confusion

It is also necessary for an opponent to establish a causal link between its reputation in its trade mark/s and the likelihood that use of the Trade Mark will cause deception or confusion. Therefore, the Opponent is required to establish that, because of its reputation in its identified marks, notional use of the Trade Mark on the Goods and Services would be likely to deceive or cause confusion among relevant Australian consumers.
In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the Registrar’s delegate observed:
The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[19]
[19] [2012] ATMO 124 [40]
For the reasons discussed above, I do not consider that the evidence supports the Opponent’s claims that SUZANNE is the “distinctive element” in the Opponent’s marks that will be referred to or recollected, instead, the strength of its reputation resides in the whole of its mark “SUZANNE GRAE”. As the Registrar’s delegate said in Carlton and United Breweries Limited v Melbourne Bros [1999] ATMO 111 (29 October 1999):
It is, of course, well-established in case law that, generally, in considering the possibility of confusion between trade marks, where a non-distinctive element or one which occurs in other marks in the same market is reproduced in marks owned by different proprietors, then purchasers tend to pay more attention to the other features contained in the marks so as to ensure they select the product of their choice - Harrods Ltd's Appn (1935) 52 RPC 65 and Coopers Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; (1952) 86 CLR 536.
This supports a view that, notwithstanding the acknowledged nexus between the Goods and Services and those of the Opponent’s marks, the use of the relatively common name SUZANNE in both marks will lead consumers to pay more attention to the other features of the marks, that is, the second element or surname. Consequently, any risk of deception or confusion is diminished.
In addition, as Ms. Betro stated in her declaration, in her experience, consumers are aware of the similarity in the types of clothing offered in the segment in which both the Opponent and the Applicants operate. Consequently they “more intently scrutinise labels and brands to make sure they are buying a product from a brand they are comfortable with and getting the brand they desire.” This was not disputed by the Opponent. Such awareness and attention by consumers further reduces any likelihood that they will be deceived or confused by use of the Trade Mark.
Furthermore, while Yates J noted in Qantas v Edwards (Qantas), that “unlike the s 44(1) objection, the objection under s 60 of the Act is not based on the requirement that the allegedly conflicting marks are substantially identical or deceptively similar” he also stated that “the standard of “confusion or deception under s 60 of the Act is the same as under s 44(1) of the Act”. In this context he said that “the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.” [20] Although the respective trade marks have a common first word, SUZANNE, their second elements are significantly dissimilar. GRAE and BETRO, look different and sound different.
[20] Qantas Airways Limited v Edwards [2016] FCA 729 [142 and 143].
Consequently, for all the above reasons, I consider there is little, if any, likelihood that, because of the reputation acquired by “SUZANNE GRAE”, use of the Trade Mark would be likely to deceive or cause confusion among relevant Australian consumers.

Therefore, the s 60 ground has not been established.

Section 42

Section 42 of the Act provides:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.
In relation to s 42(b) the Opponent asserted in submissions that “because of its reputation, any use of [the Trade Mark] would be contrary to law in the sense that each would contravene section 18 of the Australian Consumer Law and result in passing off.” In the SGP it relied on its s 60 particulars and asserted, in summary, that “use of the Trade Mark in respect of the applied for goods and/or services would be misleading or deceptive or likely to mislead or deceive”. In respect of s 29 of the Australian Consumer Law (“ACL”) it asserted that such use would “falsely or misleadingly represent that the Applicant’s goods and/or services have the same standard or quality as the Opponent’s goods and/or services or that they have the sponsorship or approval of the Opponent or are otherwise affiliated with the Opponent”. In addition, the Opponent asserted that such use would cause harm and damage to the Opponent’s business, goodwill and/or reputation.
The Applicants submitted that no contravention arose on the facts nor had the Opponent provided any evidence to support this ground.

Consideration

The onus is on the Opponent to establish that use of the Trade Mark would be, rather than could be, contrary to law, on the balance of probabilities.[21]
[21] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 [411].
Section 18 (formerly s 52 of the Trade Practices Act 1974 (Cth)) concerns consideration as to whether the relevant consumers would be misled or deceived as to the true origin of the Applicants’ Goods and Services or that they had some connection with the Opponent. The Court noted in Puxu that “conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s 52.”[22]
[22] Custom Built Furniture Pty Ltd vPuxu Pty Ltd (1982) 149 CLR 191 [198].
I note my findings above that use of the Trade Mark would not cause a person to be confused or deceived as to the source of the goods or services. It follows that I am not satisfied, in the absence of any further persuasive evidence in this regard, that the Opponent has discharged the onus on it to establish that use of the Trade Mark would be likely to mislead or deceive within the meaning of s 18 of the ACL.
In relation to s 29, I note that there is no evidence before me that the Applicant has directly represented that its goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have.
It follows that I am not satisfied that the Opponent has established that use of the Trade Mark would be contrary to law in the sense that the Applicant would be regarded as having engaged in misleading or deceptive conduct, or as having falsely represented its goods or services, as required by ss 18 or 29 of the ACL.
Regarding the claims of passing off, the Opponent has made no specific claims other than to rely on its s 60 submissions and assert that use of the Trade Mark would cause it damage. The relationship between passing off and (then) s.52 of the TPA was addressed by Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation where he said:
The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[23]
[23] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 [39]; (1989) 16 IPR 431.
That is, where use of a trade mark does not contravene s 18 of the ACL, neither will it amount topassing off. While I accept that the Opponent has a significant reputation, there is no persuasive evidence before me that indicates or even suggests a relevant misrepresentation by the Applicants. Therefore, the Opponent has not established that use of the Trade Mark would be likely to be contrary to law in the sense that it constituted passing off.
For these reasons I am not satisfied that the s 42(b) ground has been established.

Decision

Section 55 of the Act relevantly provides:
Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
The Opponent has failed to establish any of the grounds of opposition it nominated.
This Application may accordingly proceed to registration after one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.

Costs

Both parties sought costs. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent as per Schedule 8 of the Regulations.

Mary-Ann Cooper
Hearing Officer
Trade Marks Hearings
17 June 2019