Swoss Pty Ltd v the Shoe Corporation Pty Ltd

[2002] ATMO 40

TRADE MARKS ACT 1995

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

Re:Opposition by SWOSS PTY LTD to registration of trade mark application 777373(25) - PUCCI - filed in the name of THE SHOE CORPORATION PTY LTD.

Background

Trade mark application 777373 was filed by The Shoe Corporation Pty Ltd ("the applicant") on 5 November 1998.  It is for a device as shown below: 

and the goods specified in the application are "ladies imported footwear".

The application was examined by the Trade Marks Office and advertised as having been accepted for registration.  In view of what follows, I will note that the application was accepted under the provisions of subsections 44(3)(a) and 44(4) of the Trade Marks Act 1995 ("the Act").  These allow the acceptance of an application, despite the existence of a conflicting, deceptively similar, registered trade mark, if it is established that, respectively:

• there has been honest concurrent use of the two trade marks, or

• the applied-for mark was used before the priority date of the deceptively similar registration.

Registration of the applied-for mark is now opposed by two separate objectors, of whom only one is a party to the current decision.  That one is Swoss Pty Ltd. ("Swoss").  Swoss is the registered owner of one of the trade marks that led to the application of the provisions to which I have just referred.  Swoss's registration is for the trade mark GINO PUCCI (number 755437) registered for "Footwear".

Swoss, when its opposition came on for hearing, was represented by telephone by its solicitor, Craig Ray. Mr Ray argued only a single ground of opposition, under section 60. This provides as a ground of opposition that, in simple terms, the use of the trade mark by the applicant would lead to deception or confusion because of a conflicting reputation resident in someone else's deceptively similar trade mark.

The applicant did not take part in the hearing but relied on written submissions, to which I will refer briefly below.

Evidence

Swoss relies on four declarations, two by Wayne Juppenlatz, the managing director of Swoss, and two from Craig Ray, the solicitor representing that company.  One declaration by each was served in the ordinary course of the opposition process, the remaining pair were served as further evidence at the time of the hearing.

In answer, the applicant intends to rely on the evidence filed by it to gain acceptance of the application.  This consists of a declaration by John Perpignani, a senior officer in the applicant company, together with five supporting letters that show that there are a number of stores that sell goods bearing the trade marks at issue, without apparent conflict. 

Where section 44 is in question, evidence that goes to the use of one trade mark in the face of another can become crucial.  The applicant has at no stage served a copy of its evidence on Swoss.  In normal circumstances, I would therefore exclude its evidence entirely and immediately, as I would give particular weight to that decision and would not be over-keen to have regard to evidence that the applicant itself has not brought in.

The applicant's failure to serve a copy of the evidence on which it relied to gain acceptance appears to be simply ill-advised and is not apparently due to reluctance to hold the evidence up to scrutiny.  The applicant was, however, notified of the need to serve a copy of its evidence, and initially sought an extension of time for this.  Even so, by letter dated 16 May 2001, Mr Perpignani stated his opinion that Swoss had not "provided any additional information which will require rebuttal".

At the hearing, Swoss sought the indulgence of permission to serve additional evidence.  That evidence could clearly have come in much sooner.  In view of the underlying circumstances, I put to Mr Ray the proposition that it would be fair to allow it in only if the applicant's evidence, to which his client would have access and a right of reply, was also admitted.  I have since established that those conditions are acceptable to the trade mark applicant.  Mr Ray undertook to seek instructions on that question and has now objected to the inclusion of the applicant's material.

This decision by Swoss capitalises on the applicant's decision to hold back its evidence.  If that results in the applicant being unable to rely on evidence to support the application of section 44(3)(a) or (4), now that it finds itself in the opposition forum, so be it.  I will decide this application without any regard to the substance of its evidence.

Decision

At the hearing, Mr Ray did not challenge the application of the provisions of s 44(3)(a) and 44(4). Swoss has based its opposition entirely on section 60 of the Trade Marks Act.  This provides:

Trade mark similar to trade mark that has acquired a reputation in Australia

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

Note 1 to this provision directs attention to the terms of section 10, which provides:

... 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.

It might be expected from the structure of section 60 that the first question to be considered would be the presence or absence of deceptive similarity between the allegedly competing marks. I am reluctant to do this in the present case because any comments I make about the extent of similarity between the applicant's mark and that of Swoss, GINO PUCCI, may be taken as having considerable bearing on the other and co-pending opposition. The opponent in that matter is the registered owner of the trade mark EMILIO PUCCI and, while its interests could be affected by my comments in the current opposition, I have not had the benefit of its submissions on this ordinarily most pivotal issue.

As matters pan out, it will be sufficient to decide the current opposition under the terms of paragraph (b).  I will therefore not deal, for reasons that I have set out, with Mr Ray's arguments that there is potential for deception or confusion between marks. 

In establishing a reputation for the purposes of paragraph (b) of section 60, the onus is on an opponent to bring in material on which an assessment can be based. The critical thing affecting the opposition is that Swoss bears the onus of showing that deception or confusion was reasonably likely because of a reputation extant at the priority date of the current application, 5 November 1998.

As to the assessment of reputation itself, Hearing Officer Thompson formulated the matter as follows:

[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.

This formulation was adopted by Kenny J in McCormick & Co Inc v McCormick[1].  It seems clear that the establishing of a reputation goes far beyond a matter of assertion.

[1] 2000 FCA 1335, (2000) 51 IPR 102

However, the Juppenlatz declarations do not necessarily establish the critical factual elements.  The earliest of Mr Juppenlatz's declarations is dated 11 December 2000.  If exhibit A to that declaration is taken at face value, it establishes that Swoss first used the trade mark GINO PUCCI on 21st April 1998.  The exhibit consists of letter of the same date.  It is aimed, apparently, at the owners or managers of shoe stores.  The key portion is this:

Your sales person should have made you aware, during the sell (sic), that we will be delivering the summer Mezzy May range under two different brands.

The reason for this is that the range is now getting too big to market under one brand and there is now two distinct looks to the range that need their own individual identity.

To help with the transition, we will be tagging the shoe labels of the new brand with "by Mezzy May" for the first couple of seasons which will give an association to the original brand for your loyal Mezzy May customers

The new brand will be "Gino Pucci" and the sock label in the shoes will be as shown below.

Even if I infer that this letter was sent to all existing outlets for what were then Mezzy May products, there are no specifics.  There is no way of knowing how many stores were involved.  The most that can be said is that an unquantified number of sales staff "should" have made their managers aware that a new brand was in the offing, and that an equally unquantified number of such managers might have read a letter to the same effect.

It is said in the declaration that Swoss has a chain of retail outlets but there is very little detail of this. Exhibit D of the first Juppenlatz declaration shows that, at some unstated date, there were eight branches of Walkover shoes and that this firm has been supplied with an unstated number of brochures promoting GINO PUCCI footwear. I am not prepared to infer that all eight branches stock the GINO PUCCI products of Swoss, or publicize the relevant material. Even if I did make either inference, there is simply no way of knowing if this was the case at the time of the declaration, or at the priority date of the opposed application, itself less than seven months after Swoss produced exhibit A, or at some date in between. Only the factual situation at the priority date is directly relevant to the case to be made under section 60.

Similarly, I can give no significant weight to Mr Juppenlatz's declared assertion that "Swoss Pty Ltd has gained a substantial reputation within Australia and has a significant representation within the jurisdiction of its range of 'Gino Pucci' products". It is merely opinion and, as it is expressed in the present tense, does not bear directly on matters under section 60.

The second Juppenlatz declaration, dated 20 July 2001 and tendered at the hearing, is somewhat more specific.  Arguably, since there is very little reason for its late advent, I should exclude it.  However, lest it be suggested that this exclusion had affected the outcome, I have decided to include it in any case.

The later Juppenlatz declaration gives information as to current selling price and current annual sales. There is no doubt that a level of sales of 100,000 pairs per year is at least respectable, if not impressive, but that figure was arrived at between two and three years after the critical date stipulated in section 60. Moreover, sales alone do not make for reputation, though they are obviously a yardstick. There is no other information from which a direct measure of market presence or standing can be taken.

Also, at the time of first use, the Gino Pucci range was apparently firmly tied to the "by Mezzy May" apron strings.  It is quite likely that this qualifier, clearly in use at the priority date, acted to prevent or at least reduce confusion between Swoss's Gino Pucci range and the applicant's products.  The extent of the linkage, particularly in the brief time before the relevant date, leaves one aspect of the "particular popular images, or sets of values, that attach to the trade mark" in doubt.  As Kenny J agreed in McCormick, supra, these are "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".

Mr Ray's declarations give a history of the apparent bona fides of the opponent in adopting its trade mark.  Mr Ray asserts that Swoss is the owner of the trade mark Gino Pucci in Australia but this, like the bona fides of its adoption, is not in question.

Some of Mr Ray's submissions at the hearing, and reiterated since then, show that (my emphasis added) the Swoss product "is available extensively throughout Australia, both in major retailers such as Myer and David Jones as well as smaller outlets, in both major metropolitan and country areas of all states".  Such facts are not germane to the situation that existed at the priority date.  Moreover, Mr Ray's unsworn submissions are not a proper vehicle for the introduction of evidence so late in the day.

Much of the focus of the remaining submission is on alleged overlaps between the applicant's and Swoss's target market. However, this is not particularly relevant, since the test under section 60 is "what can the applicant do if he obtains registration"[2].  Therefore, it will not assist the applicant to say either that its goods are, for the moment, in a different price bracket to those of Swoss or that they have been up until now.  Nor is it necessary for Swoss to try and dispute such claims.

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

It is fairly clear, from the legislative principles involved, that an application accepted under the provisions of s 44(4) can be successfully opposed under section 60. See McCormick supra.  However, it is incumbent on any such opponent to establish enough about the extent and character of its reputation, at the priority date, to allow the ground of opposition to be established.  Swoss has failed to do this.  Accordingly, it has failed to establish the ground of opposition on which it has relied.

Conclusion

I do not yet decide to register the trade mark application.  That will depend on the registrar's decision of the remaining opposition. 

I decline to make an order as to costs.  The applicant has had the opportunity to seek such an award but has not done so.  It has had little formal involvement in this opposition process.  While it made submissions, these tended to raise extraneous issues and have, if anything, diverted Swoss from more relevant problems.  The applicant has not apparently engaged any professional legal assistance and has not served the evidence on which, through circumstances in its favor, it did not ultimately need to rely.  It will have to be content with that measure of success.

Terry Williams

Hearing Officer

Trade Marks Hearings

17 May 2002