The Design Hunter Pty Ltd v Indesign Publishing Pty Ltd
[2014] ATMO 93
•26 September 2014
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by The Design Hunter Pty Ltd to registration of trade mark application 1505993 (35) - Design Hunter - in the name of Indesign Publishing Pty Ltd
| Delegate: | Michael Kirov |
| Representation: | Opponent: Sue Chrysanthou of Counsel, instructed by Chris Lee of Hodgkinson McInnes Patents Applicant: Not represented, but relied on written submissions prepared in-house |
| Decision: | 2014 ATMO 93 Section 52 opposition: ss 41 and 58 considered – trade mark capable of distinguishing the Applicant’s services – Applicant not the owner of the trade mark for relevant services – registration refused. |
Background
This is an opposition brought by The Design Hunter Pty Ltd (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Indesign Publishing Pty Ltd (“the Applicant”):
Application No: 1505993
Priority Date: 1 August 2012
Trade Mark: Design Hunter (“the Opposed Mark”)
Services:Class 35: Organising an experiential consumer event that brings together commercial and residential design retailers.
(“the Applicant’s Services”)
The Opponent filed a Notice of Intention to Oppose on 2 July 2013, followed by a Statement of Grounds and Particulars (“the Statement”) on 16 July 2013.
For their evidence the parties rely on the following declarations:
Evidence in Support
▪ Melissa Joye Bonney made on 11 September 2013 with Exhibit MB-1 (“Bonney 2”), Exhibit MB-1 being a copy of a declaration made by Ms Bonney on 8 February 2013 with Exhibits MJB-1 to MJB-6, referred to hereafter as “Bonney 1”.[1]
▪ Melissa Joye Bonney made on 19 November 2013, with Exhibits MJB-1 to MJB-9 (“Bonney 3”)
[1] The original of Bonney 1 was filed with IP Australia in support of acceptance of the Opponent’s then application (now registration) 1526158 the design hunter & Device in Classes 35 and 42 pursuant to s 44(4) of the Act.
Evidence in Answer
▪ Kavita Nandan made on 25 February 2014, with Annexure KN-1 (“Nandan”)
I will refer to the parties’ evidence further, as necessary, in the “Discussion” section below. For the present I note that according to Kavita Nandan, its Financial Director for some 12 years, the Applicant:
…is a publishing company which specialises in high quality magazines, websites and events related to architecture and design, in Australia and South-East Asia. [The Applicant] publishes a portfolio of well-known print and online publications such as INDESIGN MAGAZINE, DESIGN QUARTERLY, HABITUS, LOOKBOX and CUBES. [The Applicant] has been producing specialised print and online media, and events for design and architecture audiences, for over 13 years.
[The Applicant] is the owner of the following trade mark registrations for the DESIGN HUNTER mark in Classes 16 and 41:
Regn No.
Priority Date
Goods/Services
1233686
4.04.2008
Class 16: Magazine and publication
1350753
15.03.2010
Class 41: Online publication
The Applicant is also the owner of the domain name … [which] was registered by [the Applicant] in 2008 and the website is under development to be launched later this year [2014].
The DESIGN HUNTER mark was first used by [the Applicant] in Australia on or around 2008 in the context of [the Applicant’s] HABITUS magazine. The HABITUS magazine and associated online publications cater to a rapidly growing audience of high end, design savvy consumers. The HABITUS magazine is promoted by [the Applicant] as “the first magazine for the Design Hunter”, in the HABITUS magazine and in promotional material for the HABITUS magazine.
[The Applicant] has also used the DESIGN HUNTER mark in its online publications. The [< URL] currently diverts to the Habitus Living website at Habitus Living is referred to as “The first online community for the Design Hunter” and has a strong social media presence on Facebook, Twitter and Pinterest platforms, as well as iPad and iPhone applications. All of these online platforms feature the DESIGN HUNTER mark and refer to HABITUS and Habitus Living readers as “Design Hunters”.
[The Applicant] also hosts a variety of design and architectural events in Australia and South East Asia, including an event called “Saturday in Design” which commenced around 10 years ago and, more recently, Sydney Indesign. HABITUS pavilions at these events target the Design Hunter community and feature use of the DESIGN HUNTER mark by [the Applicant].
Turning to the Opponent, an ASIC extract included with Exhibit MJB-2 to Bonney 1 indicates it was incorporated on 21 May 2012. That said, Ms Bonney says she has been a director of the Opponent “since February 2012” and that the trade mark shown below “was adopted and first used by the [Opponent] in Australia in February 2012”:[2]
“the Opponent’s Mark”
[2] I note that Exhibits MJB-2 and MJB-3 to Bonney 1 also include copies of registration certificates for a NSW Business Name Registration for “THE DESIGN HUNTER” and for the domain name “thedesignhunter.com.au”, owned by Ms Bonney herself, which date from 6 and 13 February 2012 respectively.
That discrepancy aside, Ms Bonney says the Opponent’s Mark:
…was adopted and used in respect of “Retailing services, including the operation of an online retail store specializing in furniture, home furnishings, interior decorations, lighting, mirrors, jewellery, cushions, ceramic ware, cosmetics, soaps, artworks, and personal care products; interior design services; design services relating to interior decoration styling; design consultancy and design project management” [“the Opponent’s Services”].
In particular, Ms Bonney exhibits a copy of a three year retail lease which commenced on 5 March 2012, the lessee being “MELISSA BONNEY, TRADING AS THE DESIGN HUNTER”, for shop front premises in Sydney’s eastern suburbs, and says:
The [Opponent][3] commenced trading from these premises providing its services by reference to the [Opponent’s Mark] on 12 April 2012.
[3] Given the Opponent was not incorporated until 21 May 2012 my understanding is that Ms Bonney herself, and not the Opponent, commenced trading at this time under the name “THE DESIGN HUNTER” which Ms Bonney registered as a Business Name in NSW on 6 February 2012.
The Opponent is the owner of registration 1526158 for the Opponent’s Mark, although I note this has a later priority date than that of the opposed application and that during examination the Opponent successfully relied on s 44(4) of the Act based on the information contained in Bonney 1 to overcome the citation of the opposed application. The Opponent’s registration 1526158 covers the following services:
Class 35: Retailing services, namely the operation of a retail store specializing in furniture, home furnishings, interior decorations, lighting, mirrors, jewellery, cushions, ceramic ware, cosmetics, soaps, artworks and personal care products including the retail of these goods online
Class 42: Interior design services; design services relating to interior decoration styling; design consultancy and design project management
At the heart of the present opposition is the Opponent’s claim to ownership of the Opposed Mark for relevant services and its belief that consumers of those services are likely to be misled, deceived or confused if the Opposed Mark is registered and used for the Applicant’s Services. In the alternative, as it were, the Opponent also submits that the Opposed Mark is not capable of distinguishing the Applicant’s Services and this is the issue which I will address first.
I heard the matter as a delegate of the Registrar of Trade Marks in Sydney on 14 August 2014. Sue Chrysanthou of Counsel, instructed by Chris Lee of Hodgkinson McInnes Patents, appeared for the Opponent. Her oral submissions were supplemented by written submissions emailed to the Applicant and me on 31 July. The Applicant opted to rely on written submissions it prepared itself, copies of which were provided to the Opponent’s representatives and me on 7 August 2014.
Grounds of Opposition
The Statement lists six grounds corresponding to specific provisions of the Act, being ss 41, 42(b), 43, 58, 60 and 62A. However the Opponent’s written submissions of 31 July confirmed that only those grounds based on sections 41, 42(b), 58 and 60 of the Act were pressed. I treat the remaining grounds listed in the Statement as abandoned. As will become apparent, I have only found it necessary to address the Opponent’s s 41 and s 58 grounds in this decision and these are discussed below. Of course should the decision be appealed, it would always remain open to the Opponent to plead any ground under the Act it thought relevant in proceedings before the Court.
The Relevant Date
As indicated by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd[4] the relevant date at which the rights of the parties are to be determined is the date of the opposed application, in this case 1 August 2012 (“the Priority Date”).
[4] (1954) 91 CLR 592 at 595.
Onus and Standard of Proof
To succeed in its opposition the Opponent bears the onus of establishing at least one of the four grounds pressed. I confirm I am proceeding on the basis that the relevant standard of proof required is the ordinary civil standard based on the balance of probabilities.[5]
Discussion
[5] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26].
Section 41
The ground based on s 41 of the Act is particularised in the Statement as follows:
The Opposed Trade Mark claims meaningless, contradictory and non-existent services such that there are no services, within the scope of the definition in s 17 of the Act, for which the sign comprising the Opposed Mark can distinguish.
I firstly note that as from 15 April 2013 the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 repealed s 41 of the Act as it then stood and substituted new wording. The Registrar’s position is nevertheless that the now repealed section continues to apply to trade mark applications filed before that date.[6] Accordingly the repealed section remains relevant here and all references to s 41 in this decision are to the section as it stood prior to its amendment, as set out below:
[6] See Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy (2013) ATMO 50.
Trade mark not distinguishing applicant's goods or services
41.(1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
(4) Then, if the Registrar is still unable to decide the question, the following provisions apply.
(5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:
(a) the Registrar is to consider whether, because of the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances;
the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
(b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and
(c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.
Note 1: For goods of a person and services of a person see section 6.
Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
(6) If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:
(a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
Ms Chrysanthou’s written submissions in relation to s 41 were that:
[23] The scheme and operation of section 41 were discussed by Branson J in Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50. It was also recently considered by Murphy J in Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373 at [30] – [37].
24 The [Opposed] Mark is descriptive and not inherently adapted to distinguish the applicant’s services.
25 Alternatively, it is only to some extent inherently adapted to distinguish the applicant’s services.
26 The [Opposed] Mark, and its prior use by the applicant, has been descriptive in nature in that the applicant has used the words DESIGN HUNTER to describe a person that would benefit from consideration of its magazine Habitas – a person looking for designs: Annexure KN-1 [to] Nandan. The applicant’s prior use of the [Opposed] Mark thus does not assist it.
27 In relation to its intended use of the [Opposed] Mark: the applicant intends to use it in connection with retail trade events for designers and persons interested in design – “design savvy consumers”. This use of the [Opposed] Mark will not likely distinguish the services of the applicant from those of other persons.
The Applicant’s submissions in response were that:
Contrary to the Opponent’s Submissions at paragraph 26, the Applicant has not used the mark descriptively. As noted above, the registration is being sought in relation to an event for designers and architects (see also, Nandan declaration, [12]). The words “design” and “hunter” taken either separately or together are not indicative of an event or exhibition. They are not words that naturally relate to an event or exhibition and in this way cannot be said to be descriptive. The mark DESIGN HUNTER used in relation to an event is inherently adapted to distinguish.
Further, the DESIGN HUNTER mark was first used by the Applicant on or around 2008 in the context of the Applicant's HABITUS magazine. DESIGN HUNTER is an Australian registered trade mark, registration number 1233686 in class 16: magazine and publication; and registration number 1350753 in class 41: online publication (Nandan declaration, [5], [7]).
Indeed, the Applicant would not have succeeded in registering DESIGN HUNTER in classes 16 and 41 if the mark was considered to be descriptive. The mark is no more descriptively [sic] in relation to the events described above than it is in relation to magazines and publications.
The Applicant is now seeking to register DESIGN HUNTER in respect of a narrow description of service[s]. If DESIGN HUNTER was not considered descriptive of a broad category of publications, it is difficult to see how it would be considered descriptive in a narrower, more specific category of services.
There thus appear to be two quite independent (indeed arguably contradictory) bases to the Opponent’s s 41 ground. One, raised unheralded as it were by Ms Chrysanthou in her above-quoted submissions just prior to the hearing, concerns the “conventional” argument that the words “design hunter” are, in essence, apt for normal description of, and therefore not capable on a prima facie basis of distinguishing, the Applicant’s Services. The other is, as put in the Statement, that “there are no services, within the scope of the definition in s 17 of the Act, for which the sign comprising the Opposed Mark can distinguish,” which matter I address first.
I note that s 17 of the Act is in the following terms and does not appear to be directly relevant to the issue raised in the Statement:
What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Note: For sign see section 6.
That said, the Applicant’s Services are specified as “Organising an experiential consumer event that brings together commercial and residential design retailers.” On the face of it I think that this description, while inelegant, is reasonably clear. I would certainly not characterize it, as is done in the Statement, as a claim to “meaningless, contradictory and non-existent services”. In this regard I note the Nice International Classification of Goods and Services used by IP Australia indicates that the services there described as “Organization of exhibitions for commercial or advertising purposes” and “Organization of trade fairs for commercial or advertising purposes” fall in Class 35 and, as I see it, the Applicant’s Services are a subset of the former of these broad descriptions. I am accordingly satisfied that the opposed application does not offend against s 41 for the reason indicated in the Statement.
Turning to the more conventional reason for invoking s 41 raised at the hearing, the application of s 41 was, as Ms Chrysanthou noted, analysed by Branson J in the leading case of Blount Inc v Registrar of Trade Marks. As her Honour explained: [7]
Subsections (3)–(6) of s 41 of the Act are designed to control the process by which the registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services). If the trade mark is not so capable, the application for its registration must be rejected: s 41(2). Subsection (3) requires the registrar first to “take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons”. Having taken such matter into account, it is theoretically open to the registrar to conclude:
(a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or
(b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or
(c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.
[7] (1998) 40 IPR 498 at 504.
The first issue to be considered under s 41 indicated by Branson J is the extent to which the trade mark in question is “inherently adapted to distinguish the designated goods or services from the goods or services of other persons”, as specified in s 41(3). If it is considered the trade mark is sufficiently so adapted then s 41 is satisfied and the trade mark is prima facie registrable.
Guidance in interpreting the term “adapted to distinguish” is generally found in the well known words of Kitto J in Clark Equipment Company v Registrar of Trade Marks (“Clark”) in connection with the (word) mark MICHIGAN:[8]
[T]he question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.
[8] (1964) 111 CLR 511 at 514. Kitto J was in effect paraphrasing the words of Lord Parker of Waddington in Re W & G du Cros Ltd’s Application (1913) 30 RPC 660 which Kitto J had earlier (at 514) quoted with approval.
As indicated above, Ms Chrysanthou submitted that the Opposed Mark was descriptive of the Applicant’s Services and thus would fall within paragraph (b) or (c) as set out by Branson J in paragraph 21 above. As evidence of the mark’s descriptive nature Ms Chrysanthou pointed to the apparently descriptive use of the words “design hunter” by the Applicant itself. In this regard she noted that extracts from the Applicant’s website at < and from its printed Habitus magazine included as exhibits to both Bonney 3 and Nandan showed, as it is put in Bonney 3, that:
The Applicant appears to have used the words Design Hunter at most in an alleged trade mark context in relation to the title of its Q&A column within its magazine HABITUS LIVING [sic][9] rather than the magazine or an online publication per se and does not retail any goods at all or otherwise provide services by reference to the words Design Hunter.
[9] I understand that, whereas the Applicant’s website is at < the printed magazine itself is simply entitled Habitus.
There is, on the face of it, some validity to the Opponent’s claim that the Opponent’s demonstrated past use of the words “design hunter” in connection with its Habitus magazine might reasonably be considered descriptive. In this regard I note that in the quotes from Nandan reproduced in paragraph 4 above Ms Nandan appears to use the words to refer to a certain type of potential reader, rather than as a trade mark distinguishing any particular goods or services provided by the Applicant from those of others. In similar vein, what I understand to be an advertisement for the Applicant’s website exhibited with Nandan is headed “habitusliving.com THE DESIGN HUNT CONTINUES” and publicity material for the magazine exhibited with Nandan features the prominent banner slogans “FOR THE DESIGN HUNTER” or “THE FIRST MAGAZINE FOR DESIGN HUNTERS” (sometimes with, sometimes without, the symbol ®) as shown below:
Nevertheless, how the Applicant may have used the words “design hunter” in the past in connection with its Habitus magazine and associated website should not in principle be directly relevant to the questions of whether, and to what extent, the words are, on the face of it, inherently adapted to distinguish the Applicant’s Services in Class 35. Certainly there is no question here, nor did Ms Chrysanthou argue, that the Applicant’s own apparently descriptive use to date of the words “design hunter” (in any context) has been so pervasive that such usage has itself effectively caused the words to become recognized as apt for normal description of the Applicant’s Services.
It is thus necessary to go back to first principles and, as indicated by Kitto J in Clark, to consider the likelihood that other persons organizing events for consumers similar to those of interest to the Applicant and:
being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word[s] and want to use [them] in connexion with similar [services] in any manner which would infringe a registered trade mark granted in respect of it.
I note there is no evidence before me of, nor did Ms Chrysanthou draw my attention to, any use of the words “design hunter” by any party other than the Applicant or Opponent themselves, with even the parties’ use to date being in somewhat different fields from that of the organizing of events.
I do think it is fair to say that the collocation “design hunter” alludes to the nature of the Applicant’s Services, but I am not satisfied it is apt for their normal description. In terms of its primary meaning one generally hunts for prey, not “design”, and use of the word “hunter” in the context of the Applicant’s Services is obviously fanciful in that sense. In my view the word “hunter” is not so directly descriptive of the claimed services that the inherent adaptation of the Opposed Mark as a whole to distinguish them is called into question. Indeed, as is pointed out in the Applicant’s submissions quoted in paragraph 17 above, it is difficult to see why the words “design hunter” should be considered to lack sufficient inherent adaptation to distinguish the Applicant’s Services when they have in the recent past been considered prima facie capable of distinguishing the goods “Magazine and publication” and “Online publication” in Classes 16 and 41 covered by the Applicant’s existing registrations.
In the present case I confirm I am accordingly satisfied that the Opposed Mark as a whole contains sufficient inherent adaptation to distinguish the Applicant’s Services from those of others as to qualify for registration on that basis alone. The opposition ground based on s 41 of the Act is therefore not established.
Section 58
Section 58 is reproduced below:
Applicant not owner of trade mark
58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note: For applicant see section 6.
The ground based on s 58 of the Act is particularised in the Statement as follows:
1.The priority date of the Opposed Mark is 1 August 2012.
2.The Opponent was the first to adopt and use [the Opponent’s Mark] in Australia.
3.The Opponent commenced use of [the Opponent’s Mark] on 6 February 2012.
4.The Opponent was the first to obtain registration of [the Opponent’s Mark] as a trade mark in Australia.
5.The Opposed Mark is substantially identical to the Opponent’s Mark.
6.The [Applicant’s Services] are of the same kind or same description of services as services covered by the Opponent’s Mark.
7.The intended users/customers for the Applicant’s services and the Opponent’s services are the same.
Ms Chrysanthou’s written submissions in relation to the s 58 ground were that:
The principles governing a claim to ownership of a trade mark were set out by Dixon J in Shell Co of Australia Ltd v Rohm & Haas Co (1949) 78 CLR 601, at 627:
The basis of a claim to proprietorship in a trade mark so far unused has been found in the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and the applying for registration.
Authorship in that context means the origination or first adoption of the sign as and for a trade mark: Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 399.
A person might also be the proprietor of a mark if, at the priority date of another application, they were entitled to the exclusive use of the trade mark under the common law. At common law that is the person who first used the mark in Australia: Malibu Boats West, Inc v Catanese (2000) 180 ALR 119.
This requires public use of the mark in Australia as a trade mark in relation to goods: Moorgate Tobacco Ltd v Phillip Morris Ltd (No. 2) (1984) 156 CLR 414 at 432-433.
The Opponent owns the name [sic] DESIGN HUNTER in relation to retail services and design services in that it [sic] has continuously used the mark in Australia for those purposes since February 2012 and its use predates that of any other person: [3] – [4] Bonney 1.
The Applicant has never used the words DESIGN HUNTER other than in a descriptive way and not as a trade mark.
In those circumstances the Applicant is not the owner of the [Opposed] Mark in relation to the services in which it seeks registration in Class 35 – which are retail services.
In response, the Applicant submitted:
The Applicant has been using DESIGN HUNTER since at least 2008 in the context of publications and various events (Nandan declaration, [9], [10]).
Contrary to the Opponent's Submissions [above], the Applicant has used, and is using, the DESIGN HUNTER as a trade mark and not in a descriptive sense.
Further, …the Applicant's priority date pre-dates the Opponent's first use or registration of the Opponent's Mark in Australia.
On this basis, the Applicant has clearly established that it is the owner of the mark in relation to the services for which it is seeking registration, being in respect of events, not retail services.
The above submissions notwithstanding, to establish its section 58 ground the Opponent needs to show that a party other than the Applicant has used the Opposed Mark, or a mark substantially identical to the Opposed Mark, in Australia, for services adjudged to be “the same kind of thing” as the Applicant’s Services. [10] The use must have taken place before the Priority Date, or before the Applicant’s first use of the Opposed Mark in Australia for relevant services, whichever is the earlier. Despite the claim in the Applicant’s submission quoted above that the Applicant has used the Opposed Mark “since at least 2008 in the context of publications and various events” there is no actual evidence before me that the Applicant used the mark in relation to organizing an event “bring[ing] together commercial and residential design retailers”, or for services of this kind, before filing the opposed application. Accordingly, the (1 August 2012) Priority Date is the relevant date here.
[10] Re Hicks’ Trade Mark (1897) 22 VLR 636; Carnival Cruise Lines v Sitmar Cruises Ltd (1994) 31 IPR 375.
The Opponent, for its part, claims that the Opponent itself used the Opposed Mark, or one substantially identical thereto, for relevant services before the Priority Date. In particular, as Ms Chrysanthou put it, the Opponent claims it
…owns the name DESIGN HUNTER in relation to retail services and design services in that it has continuously used the mark in Australia for those purposes since February 2012 and its use predates that of any other person.
whereas the Applicant:
…is not the owner of the [Opposed] Mark in relation to the services in which it seeks registration in Class 35 – which are retail services.
As a preliminary matter I accept that the Opponent’s Mark and the Opposed Mark are substantially identical. The starting point for such an assessment is generally found in the words of Windeyer J at first instance in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd, where his Honour said:[11]
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.
[11] (1961) 109 CLR 407 at 414; (1963) 1B IPR 523 at 528.
When the and Design Hunter marks are considered side by side I am satisfied that “the total impression of resemblance or dissimilarity that emerges” is rather one of similarity. The inclusion of the word “the” is not a significant difference. [12] Nor in my view is the presence of the relatively small device element in the Opponent’s Mark.[13] To the extent that I am wrong to discount the significance of the device element in assessing the marks as substantially identical, I in any event accept that the Opponent’s evidence also shows use of the unadorned words “the design hunter” before the Priority Date in relation to retail services and interior design services.
[12] See Carnival Cruise Lines v Sitmar Cruises Ltd (1994) 31 IPR 375.
[13] See the discussion on this issue by the full High Court (French CJ, Gummow, Heydon, Crennan and Bell JJ) in E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 86 IPR 224.
In summary, I accept that the Opponent used a mark substantially identical to the Opposed Mark for retailing services and for interior design services before the Priority Date. The essential question as far as the Opponent’s s 58 ground is concerned is accordingly whether the Applicant’s Services are “the same kind of thing” as any of these services.
Ms Chrysanthou did not address this issue in her written submissions which, as indicated above, simply assert that the Applicant’s Services “are retail services”, (which services, I note in passing, are described in the Nice International Classification of Goods and Services (“Nice Classification”) as “the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods”). She did however respond to my raising the issue at the hearing by submitting that “an experiential consumer event that brings together commercial and residential design retailers” was either a cumbersome way of describing, or at the very least included, the bringing together of such retailers so that the retailers might exhibit or promote their goods (and possibly their related services in the areas of commercial and residential design) to potential consumers. Accordingly, she submitted, the “event[s]” the Applicant proposed organizing were in essence a vehicle for “commercial and residential design retailers” to showcase and presumably retail to “consumers” the very kind of goods (and possibly services) which the Applicant had offered to the public for several months before the Priority Date.
I agree with Ms Chrysanthou that it is difficult to see how else the specification of the opposed application ought to be understood. As mentioned in paragraph 20 above in connection with the Opponent’s s 41 ground, I interpret the claimed services as being a subset of the Class 35 item described in the Nice Classification as the “Organization of exhibitions for commercial or advertising purposes”. Notwithstanding the Applicant’s above-quoted submission that “it is the owner of the mark in relation to the services for which it is seeking registration, being in respect of events, not retail services,” I consider that in this case the particular “experiential consumer event[s]” described in the specification of the opposed application are, on balance, effectively the “same kind of thing” as the retail services in the field of interior design provided by the Opponent.
The Opponent’s s 58 ground is accordingly established.
Decision
Section 55(1) of the Act relevantly provides that, 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.
I have found the opposition to be successful on the ground raised pursuant to s 58 of the Act. I accordingly refuse to register trade mark application number 1505993.
Costs
Both parties requested an award of costs in their favour. As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Applicant as per Schedule 8 of the Trade Marks Regulations 1995.
Michael Kirov
Hearing Officer
Trade Marks Hearings
26 September 2014
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