The H.D. Lee Company, Inc. v Tracey Taylor

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by The H.D. Lee Company, Inc. to registration of trade mark applications Nos. 1322652 and 1330541 (9, 25) - "LADY RIDER" and DEVICE - filed in the name of Tracey Taylor.

Delegate: John Spence

Representation: Opponent:Margaret Ryan, Solicitor, of Phillips Ormonde Fitzpatrick, Patent and Trade Mark Attorneys
Applicant:Adam Law, Patent Attorney, of Adam Law, Patent and Trade Mark Attorneys assisted by Rohan Wallace, Patent Attorney, of Rohan Wallace Patent and Trade Mark Attorneys and accompanied by Tracey Taylor

Decision: 2013 ATMO 49
Section 52 opposition – grounds under Sections 44, 60 and 42(b) pursued – applications not substantially identical with or deceptively similar to Opponent’s registrations – grounds of opposition not made out – applications allowed to proceed to registration. Costs awarded against the Opponent.
Background

On 6 October 2009 Ms Tracey Taylor of Clarkson, Western Australia (“the Applicant”) filed an application for registration of a trade mark the short particulars of which are as follows:
Trade Mark No. :              1322652
Priority Date:  6.10.09
Classes:  9, 25
Goods:Class 9: Articles of leather clothing for protection against accident or injury; articles of protective clothing for wear by motorcyclists for protection against accident or injury; clothing for protection against accident or injury; motorcyclists' clothing for protection against accident or injury; protective clothing (body armour); protective clothing for participants in motor sports (for the prevention of accidents); protective clothing for participants in motor sports (for the prevention of injuries); ready made articles of clothing (protective against injury); reflective clothing for the prevention of accidents.
Class 25: Apparel (clothing, footwear, headgear); aprons (clothing); arm warmers (clothing); armbands (clothing); articles of clothing made from wool; articles of clothing made of hides; articles of clothing made of imitation leather; articles of clothing made of leather; articles of clothing made of plush; articles of waterproof clothing; articles of water-resistant clothing; articles of weatherproof clothing; articles of windproof clothing; athletic clothing; beach clothing; belts (clothing); boys' clothing; braces for clothing (suspenders); cashmere clothing; casual clothing; children's clothing; clothing; clothing for babies; clothing for sports; clothing for surfing; clothing for swimming; clothing of fur; clothing of imitations of leather; clothing of leather; clothing, not being protective clothing, incorporating reflective or fluorescent elements or material; clothing, not being protective clothing, treated with fire and heat retardants; collars (clothing); combinations (clothing); cowls (clothing); denims (clothing); drawers (clothing); ear muffs (clothing); furs (clothing); gabardines (clothing); girl's clothing; gloves (clothing); halters (clothing); headbands (clothing); infants' clothing; jackets (clothing); jerseys (clothing); jump suits (clothing); kerchiefs (clothing); knitted clothing; knitwear (clothing); ladies clothing; leather belts (clothing); linen articles of clothing; maternity clothing; men's clothing; mitts (clothing); money belts (clothing); motorcyclists' clothing (other than for protection against accident or injury); motorists' clothing; muffs (clothing); occupational clothing; oilskins (clothing); playsuits (clothing); plush clothing; rainproof clothing; ready made linings for clothing; ready-made clothing; ready-to-wear clothing; silk clothing; sports clothing (other than golf gloves); stockinets (clothing); stuff jackets (clothing); thermal clothing; thermal clothing (other than for protection against accident or injury); thermally insulated clothing; thongs (clothing); waterproof clothing; waterproof clothing; water-resistant clothing; weather resistant outer clothing; weatherproof clothing; windbreakers (clothing); women's clothing; woollen clothing; woven articles of clothing; wraps (clothing); wristbands (clothing).
Trade Mark:
(“the First Trade Mark”).
2.    Several weeks later, on 13 November 2009 the applicant filed a further application for registration of a trade mark. The short particulars of this application are as follows:
Trade Mark No. :              1330541
Priority Date:  13.11.09
Classes:  9, 25
GoodsClass 9: Articles of protective clothing (against accident or injury); articles of protective clothing for wear by motorcyclists for protection against accident or injury; clothing for protection against accident or injury; motorcyclists' clothing for protection against accident or injury.
Class 25: Apparel (clothing, footwear, headgear); aprons (clothing); armbands (clothing); articles of clothing made from wool; articles of clothing made of hides; articles of clothing made of imitation leather; articles of clothing made of leather; articles of clothing made of plush; articles of waterproof clothing; articles of water-resistant clothing; articles of weatherproof clothing; articles of windproof clothing; belts (clothing); casual clothing; children's clothing; clothing; clothing for babies; clothing of imitations of leather; clothing of leather; clothing, not being protective clothing, incorporating reflective or fluorescent elements or material; combinations (clothing); cyclists' clothing; denims (clothing); gloves (clothing); headbands (clothing); hoods (clothing); infants' clothing; jackets (clothing); jerseys (clothing); jump suits (clothing); ladies clothing; leather belts (clothing); linen articles of clothing; men's clothing; motorcyclists' clothing (other than for protection against accident or injury); oilskins (clothing); ready-made clothing; ready-to-wear clothing; silk clothing; thermal clothing; thongs (clothing); weather resistant outer clothing; women's clothing; wraps (clothing); wristbands (clothing) wraps (clothing); wristbands (clothing).
Trade Mark:
(“the Second Trade Mark”);
Following examination the applications were accepted for possible registration and they were advertised as such in the Australian Official Journal of Trade Marks dated 4 February and 18 March 2010 respectively.
Pursuant to the provisions of Section 52 of the Trade Marks Act 1995 (“the Act”), on 30 July 2010 the U.S. company The H.D. Lee Company Inc. (“the Opponent”) filed a Notice of Opposition to the registration of the First Trade Mark. Subsequently, on 17 September 2010 the Opponent commenced corresponding Opposition proceedings in relation to the Second Trade Mark.
After being granted several extensions of time within which to do so, the Opponent duly provided evidence in support of its Opposition.
By covering letter dated 24 February 2012 from Adam Law, Patent and Trade Mark Attorney (and received on 29 February 2012), the evidence in answer was filed on behalf of the Applicant with a copy being served on the Opponent.
In due course the Opponent filed and served evidence in reply by correspondence dated 24 September 2012. After the evidence had been finalised, the Applicant’s attorney made formal request for the matter to be set down for hearing.
These matters were duly allocated to me as a delegate of the Registrar of Trade Marks for determination and they were set down for hearing in Canberra on Wednesday 27 March 2013
Pursuant to a formal request made by Mr Law by covering letter dated 25 March 2013 (that is, before the hearing) seeking leave to file and serve further evidence in these proceedings (and the subject of consideration in paragraphs 12-18 below), additional material has been provided. That material, which is intended to complement Exhibit A28 of the evidence in answer, consisted of an Application Form together with the supporting Statutory Declaration of Adam Law made on 25 March 2013 and accompanied by the Exhibit AJL-A. That Exhibit in turn attaches the further Exhibits AJL-1 to AJL-5 inclusive.
At the hearing, the Opponent was represented by Ms. Margaret Ryan of Phillips Ormonde Fitzpatrick, Patent and Trade Mark Attorneys, who appeared in person. For its part, the Applicant was represented by Mr Adam Law of Adam Law, Patent and Trade Mark Attorneys, assisted by Mr Rohan Wallace of Rohan Wallace Patent and Trade Mark Services. Ms Tracey Taylor was also present at the hearing. The Applicant and her representatives appeared by way of telephone link-up from Perth, Western Australia.
Preliminary
At the hearing, and as a preliminary matter, there arose for consideration two issues which needed to be clarified. The first issue related to an unsigned copy of the Statutory Declaration which had earlier been provided by the Applicant presumably because in that form the Declaration afforded a clearer representation of the images appearing in the Exhibits than was provided in the original and signed version of this document (that version having been filed and served as evidence in answer). The Opponent has raised its objection to “any reliance” being placed on the unsigned copy. At the hearing, the parties seemed able to reach consensus and at that point the matter became otiose. In particular, in its written Submissions (and reiterated at the hearing) the Applicant confirmed that it did not wish to rely on the unsigned copy of the Taylor Declaration which had been “provided only for reference”. Accordingly, in reaching my determination of this matter, I have proceeded on this basis.
Of a more serious nature, the second preliminary point which arose for consideration involved a request by the Applicant seeking leave to file and serve further evidence in these proceedings. However the admissibility of that evidence was challenged by the Opponent and this issue has been the subject of extensive submissions both in writing and orally at the hearing. In addition, the Applicant’s request for further evidence to be admitted (which is a separate issue) has been objected to by the Opponent.
At the hearing, Ms Ryan made oral submissions in responding to the issue of the Applicant’s request for further evidence to be allowed. In so doing Ms Ryan inter alia made the following points:
·   The Opponent objects most strongly to the further evidence being allowed as requested.
·   Regulation 5.15(c) of the Trade Mark Regulations 1995 provides that the Registrar must not grant an application for further evidence unless the Registrar is reasonably satisfied that permission to serve the further evidence is appropriate.
·   In this regard, the onus is on the Applicant to establish that the further evidence should be admitted rather than on the opponent to demonstrate why the further evidence should not be allowed.
·   The traditional starting-point in relation to applications of this nature is set out in the decision of Lord Denning in Ladd v. Marshall [1954] EWCA Civ 1; [1954] 1 WLR 1489 and the three-stage test, namely:
(i)whether the evidence, with reasonable diligence, could have been obtained earlier;
(ii)whether the evidence is likely to have an important effect on the outcome; and
(iii)whether the evidence is credible.
·Ms Ryan placed reliance on the decisions of Morarp Pty. Limited v. Transference trading Pty. Limited [2012] ATMO 27 and Golden Crumpet Company Australia (Extended) Pty. Limited v. David Innes Pty. Limited [2012] ATMO 38 as instances where those principles have been applied.
·Ms Ryan contended that the further evidence could have been obtained and provided earlier, that it would have no impact on the outcome of the matter because the material which it discloses relates to activity that took place well after the priority date of the two LADY RIDER applications, and that the credibility of the fresh evidence is in doubt if that evidence relates to materials which have been placed on the Internet after the priority date.
For his part, Mr Law argued on behalf of the Applicant that the further evidence which is sought to be admitted is in response to the Opponent’s submissions relating to the evidence in answer and as such it was not able to be provided earlier since the issue of the admissibility of the Exhibit A28 had not previously arisen. He contended that the further evidence picks up a number of those trade marks which are identified in Exhibit A28 and it demonstrates those marks as being in actual use. There is a public interest in allowing the further evidence to be considered, and the Applicant would be subject to serious prejudice if the further evidence is not permitted. In relation to the issue as to whether or not the entries in question were in effect as at the respective priority dates, at least three of the registrations which are referred to in paragraph 2.4 of the further evidence (namely, Nos. 1079033 GIRLRIDER, 1016269 STORMRIDERS and 876118 FREE RIDER) take priority as from a date which precedes the priority dates of the applications.
At the hearing, and in order to enable the substantive issues to be dealt with, I adopted the approach of accepting the further evidence. At the same time, I made the directions that the Opponent should be allowed a further period of thirty days within which to provide such additional written submissions or evidence as it may choose setting out reasons and arguments as to why the Applicant’s request for further evidence should not be allowed or responding to that evidence, and that the Applicant should have a right of reply in relation to such materials or submissions as the Opponent might put forward.
Subsequent to the hearing, I received additional written submissions from the Opponent by covering e-mail dated 26 April 2013. In turn, by covering e-mail dated 14 May 2013, the responding written submissions of the Applicant were filed.
Having regard to the arguments which have been put on behalf of both parties, my decision on this preliminary aspect is to grant the Applicant’s request and to allow the further evidence to be admitted. In so doing, I refer to the reasoning in Morarp Pty. Limited v. Transference Trading Pty. Limited [2012] ATMO 27. On that basis, a consideration of the issue of fairness would seem to favour the Applicant.
As observed in the Morarp decision, proceedings which are conducted before the Registrar of Trade Marks are informal in nature and the paramount concern is that all parties involved should have adequate opportunity to present their case. Accordingly, pursuant to the requirements which are laid down in Regulation 5.15, I am reasonably satisfied that in this instance it is appropriate to allow the Applicant permission to serve the further evidence on which it seeks to rely. However, having dealt with the procedural issue of the request for further evidence, the above direction does not dispose of the separate and substantive issue as to whether the evidence which comprises Exhibit A28 is in any event admissible, an issue which remains for later determination.
Grounds of Opposition
The Notices of Opposition dated respectively 30 July and 17 September 2010 are expressed in like terms and they are global and compendious in nature in claiming sixteen separate grounds covering eleven distinct Sections of the Act. However, both in the course of written submissions and orally at the hearing, the Opponent’s attorney indicated that it would be relying only on five of the grounds as set out in each of the Notices of Opposition and relating to three Sections of the Act, namely 44, 60 and 42(b). The remaining grounds as raised in the Notices of Opposition (that is, pertaining to Sections 39, 41, 43, 58, 58A, 59, 62 and 62A) were not pressed and no submissions were put forward in respect of same. For the sake of completeness, I find that none of these grounds has been established and I now dismiss the Opposition so far as they are concerned. However, in so doing, I recognise that, in the event that this decision were to be appealed, it would always remain open to an appellant to rely on any potentially available ground which it might choose in proceedings before the Courts. For present purposes, the only issues which remain for determination relate to Sections 44, 60 and 42(b) on which the Opponent continues to rely and which I propose to consider separately in due course.
The Opponent bears the onus of establishing that the Applicant should be refused registration and in order to do so it must satisfy at least one of the grounds of opposition (Sections 55 and 57 of the Act). Following the reasoning of Justice Gyles in Pfizer Products Inc. v. Karam (2006) 70 IPR 599; (2007) AIPC 92-232[1], I take the view that in discharging that onus it is the ordinary or civil standard of the balance of probabilities which applies.
[1] See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40], Allergan, Inc v Di Giacomo [2011] FCA 1540 (30 November 2011) per Stone J at [11] to [12]; Fry Consulting Pty. Limited v. Sports Warehouse Inc. (2012) AIPC 92-436 per Justice Dodds-Streeton at [13]; Nexans S.A. v. Nex 1 Technologies Company Limited [2012] FCA 180 per Justice Murphy at [9]; and Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per Justice McKerracher at [9] to [10].
The Evidence
The evidence in this matter can be summarised as follows:
Evidence in Support
·Statutory Declaration of Gregory Morris Chambers made on 17 June 2011 together with the accompanying Exhibits numbered GMC-1 to GMC-8 inclusive (“the Chambers Declaration”);
and
·Statutory Declaration of Christopher Turk made on 28 June 2011 together with the accompanying Exhibits numbered CT-1 to CT-11 inclusive (“the Turk Declaration”).
Evidence in Answer
·Statutory Declaration of Tracey Taylor made on 24 February 2012 together with the accompanying Exhibits A1 to A28 (“the Taylor Declaration”).
Evidence In Reply
·Statutory Declaration of Simon Bookallil made on 24 September 2012 together with the Exhibits SB-1 to SB-3 inclusive (“the Bookallil Declaration”).
Further Evidence
·Statutory Declaration of Adam Law made on 25 March 2013 together with the Exhibit AJL-A (being the further Statutory Declaration of Adam Law also made on 25 March 2013 together with the accompanying Exhibits AJL-1 to AJL-5 inclusive) (“the Law Declaration”).

22. The primary evidence of the Opponent is provided by the Turk Declaration. Mr Christopher Turk has been employed by the Opponent since 2004 and he holds the position of Assistant General Counsel and Assistant Secretary with that company. The Opponent is the owner in Australia of the trade mark RIDERS and dating from 11 October 1989 being the priority date of the word mark registration No. 520914 together with four other registrations which incorporate the expressions RIDER or RIDERS the particulars of which are as set out at paragraph 42 below Throughout the period from 1973 to date, the Opponent’s products (including apparel sold by reference to the RIDERS and LEE RIDERS trade marks) have been distributed and sold in Australia continuously and in significant volumes. The Confidential Exhibit CT-4 sets out sales of garments under the RIDERS and LEE RIDERS trade marks for the three-year period from 2009 to 2011 inclusive as well as the sales figures for garments under all trade marks owned by the Opponent annually from 1995 to 2009. The sales figures which are provided are of a substantial order indeed, and they run into many millions of dollars. A large proportion of those sales are said to be in respect of women’s apparel. Representative samples of labelling used by the Opponent are provided in Exhibit CT-5.

Mr Turk gives evidence of the extensive advertising and promotional activities which are conducted by the Opponent in Australia. Advertisements promoting the RIDERS and LEE RIDERS trade marks have appeared in fashion magazines, newspapers, television advertisements, billboards, Internet web-sites, and on trams and buses (Exhibit CT-6). No figures in respect of actual amounts expended on advertising and promotional activities are given in the evidence, but it is reasonable to assume that such amounts have been of a substantial order.

Shortly after the Second World War, the Opponent adopted the expression LADY LEE RIDERS as a trade mark in relation to women’s jeans and it obtained registration of that expression as a trade mark under the now-expired U.S. registration No. 711910 which was filed on 16 May 1960 but which claims first use from 28 February 1947. This trade mark is currently used in the U.S.A., China and Japan, and the LADY LEE RIDERS product range is also available in other Asian countries including Singapore, Malaysia, Philippines, Thailand, Indonesia and Taiwan. Sample labels bearing this trade mark are shown in the Exhibits CT-10 and CT-11. However there is no evidence before me that establishes any use of the LADY LEE RIDERS trade mark in Australia.
The Taylor Declaration sets out the relevant history and background of the Applicant’s LADY RIDER trade mark applications. The founder and original proprietor of the LADY RIDER business was Ms. Martine Cay Stewart-Wayland of Coolum Beach, Queensland who first devised, adopted and used the LADY RIDER name in 2006 in connection with her business and who held the business name registration LADY RIDER in Queensland under No. BN 20688258 as well as the trade mark registration No. 1140139 comprising the words LADY RIDER rendered in a particular form of stylised lettering together with the device or logo of a female riding a motorcycle and as follows:
That prior entry has previously attained registration without being the subject of objection or opposition either by the Opponent or by any other party. The evidence of Ms Taylor is that, after purchasing the business, in September 2009 she decided to alter “the stylisation of the mark”. That business (including stock in trade, intellectual property and goodwill) was purchased by Tracey Taylor on 31 August 2009 and it has since been continuously conducted by her throughout Australia. Ms Taylor remains the current owner of the business including the business name registration No. BN 11377604 in Western Australia, the trade mark registration No. 1140139, and the Internet web-site Ms Taylor is actively involved in the motorcycle community and her business is directed at motorcycle enthusiasts. The LADY RIDER business sells a range of products including casual and protective motorcycle clothing and accessories to motorcycle enthusiasts both online and at events held across all states of Australia
The evidence indicates that the advertising and promotional activities which are engaged in and conducted by the Applicant are of a particular type and nature. While some print and media advertising does occur, the majority of promotional activities relate to the design, promotion and operation of her websites, online advertising, and attendance at events (where goods are sold by her by means of the holding of stalls). The Applicant also relies upon word of mouth and personal recommendations. As such, amounts spent on advertising are relatively slight. The Applicant currently holds and operates three domain names and related internet sites, namely:

In addition the Applicant has registered a further six domain names which are intended for future use as the business expands its range of products. In paragraph 20 of the Taylor Declaration, the Applicant states her promotion strategy as being to develop new forms of branding, to expand the range of goods which are made available by her, and to increase both her online marketing presence and the number of motorcycle events at which she attends and operates a stall.
As part of her evidence (at paragraph 23.6 and Exhibit A28), Ms Taylor has identified and provided a listing of entries obtained from the Official Trade Mark Records which feature the words RIDER or RIDERS as a component in trade marks held in the names of third parties. That listing reveals the existence of some seventy-two separate entries in Class 25 including Nos. 744533 LONGRIDERS, 948585 LOCO LOWRIDERS, 1016269 STORMRIDERS and 1035755 BONDS LO RIDER. Those entries are intended to demonstrate that the expressions RIDER and RIDERS are adopted and used by a multiplicity of parties (so that such use is not unique to the Opponent) and that each of those entries is typically able to co-exist with the other entries (including those registrations which are held by the Opponent).
By way of evidence in reply, the Opponent relies on the Bookallil Declaration. Strictly speaking, this Declaration and the matters declared therein constitute fresh evidence and are not materials which seek to rebut or respond to the evidence in answer. Nonetheless this evidence does serve to shed further light on the business affairs and the extent of reputation of the Opponent and in particular on the advertising and promotional activities which the Opponent typically conducts in Australia in relation to the RIDERS trade mark. Mr Bookallil is an experienced advertising executive with over twenty years of background in the field of visual marketing in Australia. He has had a long commercial association with the Opponent since, from his early days at Spin Communications in 1992 until the present day, he has directed the visual marketing of LEE branded jeans and related products so that he is fully aware of the use of the Opponent’s Australian trade marks.
Mr. Bookallil has assisted the Opponent, through its Australian subsidiary or successive licensees, to enhance consumer recognition of the trade marks RIDERS and RIDERS by LEE. He declares that the target demographic for advertising the goods of the Opponent has been males and females aged 18 to 35. Examples of advertising and promotional activities of the RIDERS and RIDERS by LEE trade marks include billboards, bus shelters and buses; wide-circulation magazines (including Cosmopolitan, Famous and Who); in-house store promotions (including Just Jeans and Myer); and association with high profile and popular Australian stars (such as Holly Valance in 2007). Representative samples of artwork for advertising are provided in the Exhibits SB-1 to SB-3 which accompany the Bookallil Declaration. Mr. Bookallil estimates that expenditure on the RIDERS and RIDERS by LEE trade marks through his agency has been in the order of $500,000.00 per annum “at various times”. He considers that these marks are “iconic brands” which are well-recognised in Australia as indicating goods with which the Opponent is connected.
Submissions
Prior to the hearing, and pursuant to the directions which had earlier been made, detailed written submissions were provided by the Opponent’s attorneys by covering letter dated 12 March 2013 and forwarded by e-mail. In turn, on behalf of the Applicant Mr Law duly forwarded his written submissions. Subsequent to the hearing, and again consistent with the directions which were made by me at that time, Ms Ryan forwarded the document entitled “Additional Submissions of the Opponent”. Mr Law then exercised his right of reply by forwarding his further written submissions by e-mail dated 14 May 2013. In arriving at my decision, I have given careful consideration to the submissions of each party (both written and orally at the hearing) which have been provided and which have been of considerable assistance to me.
Discussion and Reasons
Admissibility of Evidence
In the course of its submissions, the Opponent has raised an objection in relation to Exhibit A28 of the Taylor Declaration (being the Applicant’s evidence in answer) and the admissibility of same. That objection now extends to include Exhibit AJL-A of the further evidence (being the Statutory Declaration of Adam Law made on 25 March 2013). The material which is contained in Exhibit A28 gives evidence as to the state of the Register in that it comprises a collection extracted from the Official Trade Mark Records of some seventy-two existing trade mark registrations each in Class 25 which feature either of the expressions RIDER or RIDERS. The objection to this material which is expressed by Ms Ryan is to the effect that it has long been held that reliance on trade marks which are on the Register is irrelevant and that such evidence should be disregarded. In support of this submission, Ms Ryan referred to the decision of Justice Jacob in British Sugar Plc v. James Robertson & Sons Limited [1996] RPC 281 305 (the TREAT case) where his Honour remarked:
Both sides invited me to have regard to the state of the register. Some traders have registered marks consisting of or incorporating the word ‘Treat’. I do not think this assists the factual inquiry one way or the other, save perhaps to confirm that this is the sort of word in which traders would like a monopoly. In particular the state of the register does not tell you what is actually happening out in the market and in any event one has no idea what the circumstances were which led the registrar to put the marks concerned on the register. It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration, see e.g. MADAME Trade Mark [1966] R.P.C. 541 and the same must be true under the 1994 Act. I disregard the state of the register evidence.
As Ms Ryan has pointed out, this statement was quoted with approval by Justice Wilcox in Ocean Spray Cranberries Inc. v. Registrar of Trade Marks (2000) 47 IPR 479 who made the following observation:
I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.
Further, Ms Ryan has drawn the distinction that those trade marks which are listed in Exhibit A28 do not include the word RIDER in as prominent a manner as it appears in the two opposed marks.
In responding to that submission, the Applicant has made reference to the leading textbook Shanahan’s Australian Law of Trade Marks and Passing Off (Mark Davison and Ian Horak, 5^th edition, 2012, Lawbook Company) at paragraph 15.1135 where it is stated:
Notwithstanding this later statement [namely, the words of Justice Wilcox in the Ocean Spray Cranberries case as quoted above], in some cases, the Register may provide an indication of the trade marks used in the market place and the state of the Register has assisted the Registrar in deciding matters at the opposition level.
In the accompanying footnote 116, Shanahan gives examples of decisions in which the Registrar has placed reliance on the state of the Register. In Dib v. Monton (2003) 59 IPR 625 at 629 (line 23), for instance, the Delegate observed:
Additionally, the state of the Register shows that Nos. 493997 and 718677, for example, both contain the words COFFEE BEAN and are registered for similar services as those of the parties, reinforcing my view.
I consider it to be well-established that in arriving at a determination of trade mark matters the Registrar can take notice of evidence as to the state of the Register and give appropriate weight to that evidence. In this regard, paragraph 28.6 and Exhibit A28 make reference to a list of existing registrations in Classes 18 and 25 which include the components RIDER or RIDERS. I do not consider myself to be precluded or constrained from having regard to that material, and I regard it as a relevant factor to be taken into account that a number of RIDER and RIDERS marks held by different parties are apparently able to co-exist.
In relation to the further evidence, that material seeks to rebut the challenge to Exhibit A28 (as referred to in paragraph 23.6 of the Taylor Declaration) which has been mounted by the Opponent in its written submissions and the objections which have been raised to that Exhibit and the admissibility of same. It does so by providing a compilation of print-outs taken from a number of representative Internet sites which feature the trade marks of third parties that include the expressions RIDER or RIDERS as a component and which demonstrate the actual use of at least some of the RIDER marks which are identified in Exhibit A28. By this means, the Applicant seeks to corroborate the contents of paragraph 23.6 of the Taylor Declaration and to respond to the Opponent’s submission that evidence as to the state of the Register should be disregarded. In this regard, the Applicant submits that the further evidence on which it seeks to rely “provides probative market evidence”. For its part, in respect of that contention, the Opponent takes the view that the relevant Internet searches conducted by the Applicant were either made later than the respective priority dates or relate to activities and use which took place after the priority dates. In either event, that information is said to be not relevant to these proceedings.
I do not accept the Opponent’s proposition that evidence of use after the priority date is not admissible. There are, indeed, examples of instances where such evidence has been taken into account. In Conde Nast Publications Pty. Limited v. Taylor (1998) 41 IPR 505 at 509 Justice Burchett observed:
But it is a commonplace of the law of evidence that later events may cast light upon the true position at an earlier date. The question whether the opposed mark was, at 27 February 1991, a mark “the use of which would be likely to deceive or cause confusion” may be answered, in part, by reference to evidence about what actually happened when the mark was used over a subsequent period of years. Although it may be a mystical idea that, as the poet Thomas Campbell wrote, “coming events cast their shadows before”, it is cold common sense to see actual events as capable of illuminating the probabilities already inherent in the situation from which they arose. That evidence of events since the application date is material and admissible was accepted by Gummow J in Johnson & Johnson v. Kalnin (1993) 26 IPR 435 at 439.
In Home Box Office v. Florenca (2010) 90 IPR 164 at 169 paragraphs 17-19, in addressing the proposition that use or non-use after the date of application may be relevant in drawing inferences as to the issue of intention as at the date of application, the Delegate noted:
In relation to an intention existing at the filing date, this is an example of a later event which casts light on the true position at an earlier date.
In Tivo Inc. v. Vivo International Corporation Pty. Limited [2012] FCA 252, Justice Dodds-Streeton noted (at paragraph 245) :
As recognised in Conde Nast Publications Pty. Limited v. Taylor (1998) 41 IPR 505 at 509, Johnson & Johnson at 439, McCormick, Guylian and like authority, evidence after the priority date may be admitted to illuminate the likelihood of confusion as at the priority date. In the present case, both TiVo and Vivo sought to rely on evidence of confusion or an absence thereof after the priority date for that purpose.
More expansively, in in Sports Warehouse Inc. v. Fry Consulting Pty. Limited (2010) 87 IPR 300 at 323-4 paragraphs 101-102, her Honour stated:
In the present context, I accept that the evidence [after the date of lodgement] is admissible and, as explained by Fry Consulting, relevant to show the degree to which the mark was inherently adapted to distinguish the designated services from those of other traders. In Chocolaterie Guylian, Sundberg J adopted the same approach. Sundberg J accepted (at [54]) that, evidence of events after the lodgement date (whether evidence as to the applicant’s use of the mark or as to the use of similar marks by other traders) might be relevant to determining whether, as at the lodgement date, the applicant’s mark was capable of distinguishing the applicant’s designated services, because such evidence had “the ability to rationally affect, albeit with varying degrees of weight, the conclusion one might reach about the extent to which a mark is inherently adapted to distinguish under s 41(3) of the Act”. Sundberg J continued (at [54]) that, in assessing the likelihood, as at the lodgement date, that:
[54] … other traders will behave in a certain way in the future, evidence of how they have in fact come to behave will be relevant, although close attention should be paid to whether such rival behaviour has been “actuated only by proper motives”. In the absence of evidence of improper motive, however, it seems to me logical and appropriate that post priority date events should, where appropriate, be taken into account by decision-makers in exercise of the “evaluative judgment” (see French J in Kenman Kandy (2002) 122 FCR 494 ; 56 IPR 30 ; [2002] FCAFC 273 at [47]) required under s 41(3).
[102] Under s 41(3), the court is required to assess, as at the lodgement date, the likelihood that other traders would want, in the ordinary course of their businesses and without improper motive, to use the same mark, or some mark closely resembling it, upon or in connection with their own services. If there were no evidence to show that traders had used the word “warehouse” in combination with other words to indicate the goods they are selling, the case for Sports Warehouse would have been improved. The fact that there was some (later) usage is relevant to assessing the probability that, as at the lodgement date, other traders would want to use the mark, or something like it. I accept, however, that this evidence can be given only limited weight and can be in no sense decisive of the principal issue. In so far as it can “rationally affect” one’s conclusion about the extent to which a mark is inherently adapted to distinguish under s 41(3), it tends to indicate that there was, at the lodgement date, some likelihood that other traders would want to use the mark in the ordinary course of their businesses and with no improper motive and, therefore, to diminish one’s estimation of the extent to which the applicant’s mark was inherently adapted to distinguish the designated services.
At a more general level, in Kenman Kandy Australia Pty. Limited v. Registrar of Trade Marks (2002) 56 IPR 30 at 44, paragraph 47 it was stated (per Justice French):
The ultimate question in applying this test is whether the mark, considered apart from the effects of registration, is such that by its use the applicant is likely to attain its object of thereby distinguishing its goods from the goods of others: Clark Equipment Co v Registrar of Trade Marks at CLR 513; ALR 345. This does not involve adventures in the Aristotelian taxonomy of form and substance. It requires a practical evaluative judgment about the effects of the relevant mark in the real world. [2]
[2] By way of other examples, attention is drawn to the remarks of Justice Carr in PB Foods Limited v. Malanda Dairy Foods Limited (1999) 47 IPR 47 at 59; Justice Hammond (in the High Court of New Zealand) in VB Distributors Limited v. Matsushita Electric Industrial Company Limited (1999) 53 IPR 466 at 478, paragraphs 81 and 82; Justice Finn in Austereo Pty. Limited v. DMG Radio (Australia) Pty. Limited (2004) 61 IPR 257 at paragraph 32; the joint decision of the Full Court (Justices Keane, Stone and Jagot) in Food Channel Network Pty. Limited v. Television Food Network GP (2010) 86 IPR 437 at paragraph 74; and Justice Dodds-Streeton in Suyen Corporation v. Americana International Limited (2010) 87 IPR 262 at 283, paragraph 147).
Accordingly, in relation to Exhibit A28 I find that the material which it contains is relevant and, giving such due weight to it as I may consider to be appropriate, I propose to have regard to that material. I do not consider myself to be constrained in this regard either because reliance on the state of the Register should be considered irrelevant or because, having been obtained after the priority date, that evidence should be inadmissible. Likewise, in relation to the further evidence, I accept the material which is contained in Exhibit AJL-A as providing corroborative evidence in indicating the state of the market-place (as distinct from the state of the Register) in relation to the actual manner of use of the RIDER and RIDERS trade marks of third parties. As such, I find the Exhibits A28 and AJL-A to be admissible.
Grounds

38. By virtue of Section 55 of the Act, I am required to decide whether to register either or both of the two LADY RIDER applications or whether to refuse to do so having regard to the extent (if any) to which any ground of opposition has been established. In so doing, I propose to consider separately each of the grounds of opposition which are maintained by the Opponent and to do so in the numerical order which it has adopted in the course of making its submissions.
Section 44
39. This Section relevantly provides as follows:
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. . . .
(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.
40. By way of clarification and understanding in relation to the application of Section 44, that provision requires cross-reference to be made to Sections 10 and 14 of the Act. The expression “deceptively similar” appearing in Section 44 is defined in Section 10 of the Act as follows:
10Definition 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.

The expression “similar goods” appearing in Section 44 is defined in Section 14 of the Act as follows:
14Definition of similar goods and similar services
(1)       For the purposes of this Act, goods are similar to other goods:
(a)       if they are the same as the other goods; or
(b)       if they are of the same description as that of the other goods.

There is no definition in the Act of the expression “substantially identical”.
41. The separate elements of Section 44, all of which must be satisfied and met by the Opponent if it is to succeed in establishing this ground of opposition, are as follows:
·     there must be a trade mark which is substantially identical with or deceptively similar to the applicant’s trade mark;
·     that trade mark must be a registration or an application for registration;
·     that trade mark must be in the name of a person other than the Applicant;
·     the relevant goods or services of the respective marks must be similar;
·     the exceptions as provided by virtue of sub-sections (3) and (4) must not be applicable;

and
· the relevant dates at which these circumstances must be established are the priority dates of the respective applications (that is, 6 October 2009 and 13 November 2009).

In the Notice of Opposition, this ground is stated in terms which correspond to the wording of Section 44 but which are expressed as follows:
Each of the relevant trade mark registrations on which the Opponent relies has a priority date which precedes the filing dates of the First Trade Mark and the Second Trade Mark. The respective goods of each party are either the same, similar or closely related in nature. On that basis, and leaving aside the possible exceptions which are available under sub-sections (3) and (4), the requisite elements of this ground, when considered on a prima facie basis, are satisfied. The issue which remains for me to determine is whether the First Trade Mark or the Second Trade Mark are either substantially identical with or deceptively similar to the Opponent’s trade mark registrations.
“Substantially Identical”
Both in its written submissions and at the hearing, the Opponent made clear that it does not rely on the two opposed marks being substantially identical either with the RIDERS word mark registrations Nos. 520914 and 1218808 or with any other of those prior entries (being in the form of device marks) on which it relies. Rather, the Opponent is content to claim that the two opposed marks are deceptively similar to those registrations. That being so, for present purposes I do not need to consider whether the issue of “substantially identical” is applicable.
“Deceptively Similar”
While the appropriate test which is to be applied in determining whether two or more marks are substantially identical (being that of the “side by side” comparison) is not applicable in the present instance (because it is not argued or relied upon by the Opponent), that test is not appropriate when considering deceptive similarity which, rather, places reliance on the “impression based on recollection” of the respective marks that is carried away by members of the public. Further, it is necessary to give regard to the definition of the expression “deceptively similar” which appears in Section 10 of the Act (and as referred to in paragraph 40 above) and which does not require that there be an intention to deceive or cause confusion. So, it is said that the distinction between “likely to deceive” and “likely to cause confusion” resides not in some element of culpability in the user to be inferred from the word “deceive”, but rather in the effect of the trade mark on potential purchasers. As Justice Richardson explained in the New Zealand case of Pioneer Hi-Bred Corn Company v. Hyline Chicks Pty. Limited [1979] RPC410 at 423:
“Deceived” implies the creation of an incorrect belief or mental impression and “causing confusion” may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods [or services] bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.
The test of whether trade marks are “deceptively similar” within the meaning of Sections 10 and 44(l) of the Act concerns the inherent qualities of the marks seen in the light of the proper uses that may be made of them. It is well-established that in applying that test consideration is not to be given to the actual use which the parties may have made of their respective marks. In this regard, and as distinct from the Section 60 ground, the issue of the Opponent’s reputation does not arise. Rather, the test to be applied is that proposed by Justice Evershed in Re An Application by Smith Hayden and Company Limited (1946) 63 RPC 97 at 101. As Justice Branson put it (in her dissenting judgment) in Registrar of Trade Marks v. Woolworths Limited (1999) AIPC 91-499; (1999) 45 IPR 411 (“Woolworths”) at [88]:
Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of [goods and] services covered by the proposed registration.
A useful outline of the relevant general principles which are to be applied in assessing deceptive similarity and a restatement of the classical propositions is to be found in the decision of Justice French (also in Woolworths) at paragraph 50, namely:
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:
"...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."[3]
[3] Other useful statements of those general principles which are relevant when considering the issue of deceptive or confusing similarity are to be found in the decisions of Justice Dodds-Streeton in Tivo Inc. v, Vivo International Corporation Pty. Limited [2012]FCA 252 at paragraphs 94-109 inclusive and of Justice Bennett in Torpedoes Sportswear Pty. Limited v. Thorpedo Enterprises Pty. Limited (2003) AIPC 91-919; (2003) 59 IPR 318.
For her part, the Applicant relies upon the decision of Justice Marshall in Australian Postal Corporation v. Digital Post Australia Pty. Limited (No. 2) (2012) 96 IPR 532 at 538-540 (paragraphs 40-48). In the course of that judgment, Justice Marshall accepted favourably the decision of Justice Dodds-Streeton in the Tivo case in the course of which her Honour observed that it is necessary to compare both trade marks visually and aurally, that it is necessary to have regard to the relevance of the surrounding circumstances to the issue of deceptive similarity, and that the test is whether there is a real risk that the use of the impugned mark:
. . . will cause a significant number of ordinary persons to wonder or to entertain a reasonable doubt . . . as to whether the respondents’ products came from the same source as those of the applicants. It is sufficient to “cause confusion” if the minds of the purchasing public are merely “perplexed” or “mixed up” (at paragraph 102).
There are other factors which are salient. In particular, due weight must be given to the operation of the so-called doctrine of imperfect recollection. In assessing the respective marks, I must allow for the ordinary possibilities of imperfect recollection of one trade mark when, hypothetically, it is encountered in the absence of the other mark. The relevant test which is to be applied is well-established and it has been usefully stated by Justice Sargant in the decision of In re Sandow Limited’s Application (1914) 31 RPC 205 as being:
The question is not whether if a person is looking at two Trade Marks side by side there would be a possibility of confusion; the question is whether the person who sees the proposed Trade Mark in the absence of the other Trade Mark, and in view only of his general recollection of what the nature of the other Trade Mark was, would be liable to be deceived and to think that the Trade Mark before him is the same as the other, of which he has a general recollection. . . . The true test is whether the totality of the proposed Trade Mark is such that it is likely to cause mistake or deception, or confusion, in the minds of persons accustomed to the existing Trade Mark.
In this regard, it is the impression which is likely to be carried away and retained in the mind of the ordinary consumer which is important. As stated by Lord Justice Luxmoore in Rysta Limited’s Application (1943) 60 RPC 87 at 108 (and later approved by the House of Lords in Aristoc Limited v. Rysta Limited (1945) 62 RPC 65):
The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of section 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.
The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person’s wants.
To similar effect, in de Cordova v. Vick Chemical Company (1951) 68 RPC 103 at 106 Lord Radcliffe stated:
The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods [or services] with both the marks clearly before him, for orders are not placed, or are often not placed, under such conditions. It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.
As well, it is accepted that due regard must be given to the element of notional similarity as a relevant factor. In this regard, it is said that the presence of some common “idea” may tip the scales against registration because the “idea” is more likely to be recalled than the precise details of the mark (per Justice Gummow in Johnson & Johnson v. Kalnin (1993) 26 IPR 435).
In applying collectively each of these factors or criteria, it is necessary to consider “all the surrounding circumstances”. Reduced to simple terms, the two-fold test is whether the respective trade marks really look alike or sound alike and then, if so, whether the resemblance is likely to deceive or confuse (per Justice Branson in Woolworths, op. cit., at paragraph 84, and citing the decision of the High Court in Cooper Engineering Company Limited v. Sigmund Pumps Limited (1952) 86 CLR 536 at 539). As the Delegate stated in Bodegas Rioja Santiago SA v. Barossa Co-Operative Winery Limited (1983) 5 IPR 1 at 7:
In considering the surrounding circumstances I think particular attention should be given to the impact, impression or idea of each of the respective marks and to the function and significance of their common features in a business context.
Comparison of the Marks
There exists a multitude of decided cases and authorities in which the issue of deceptive similarity is considered and which provide illustrative examples of actual instances where potentially conflicting trade marks have been ruled to be either too similar or sufficiently different. Those cases line up some on one side of the question and some on the other side. Generally, their findings are limited to the particular facts and circumstances in each instance and they are often not of universal application or value as statements of relevant or binding principle. The drawing of distinctions between those cases and the relevant trade marks can be confusing and difficult. Nonetheless a reference to the decided cases is often useful. In relation to the relevance of such cases and the value of a comparison between them, Lord Justice Luxmoore made observations in Rysta Limited’s Application (1943) 60 RPC 87 at 108 where he said:
It is not possible to discover from the decided cases any standard as to the amount of resemblance which will suffice to cause the rejection of a mark; as Lord Cranworth said in Seixo v. Provezende (1866) 1 Ch. App. 192 ‘What degree of resemblance is necessary . . . is from the nature of things incapable of definition a priori’, but it is instructive to consider the list of contrasted words set out on pages 300 to 304 of Kerly on Trade Marks (6^th edition), and the extra list in Bray and Underhay’s Trade Marks Act, 1938, page 61.
In terms of modern equivalents, I make reference to the comparison of marks as set out in Shanahan’s Australian Law of Trade Marks and Passing Off (2012) 5^th edition, at page 279, footnote 124, page 282, footnote 139, and pages 1031-1083, Appendix; Australian Industrial and Intellectual Property, CCH (loose-leaf service), Volume 1, at pages 28,235 to 28,254; and Kerly’s Law of Trade Marks (2005) 14^th edition, Appendix 31 at pages 1268-1287. Of the extensive range and dichotomy of decided case which are available, I find it particularly apposite and helpful in this instance to draw on the decisions of Harrods Limited’s Application (1935) 52 RPC 65 (“HYDE PARK” and “PARK DRIVE”), Enoch’s Application (1947) 64 RPC 119 (“VIVICILLIN” and “CYLLIN”), C.A. Henschke & Company v. Rosemount Estates Pty. Limited (2000) IPR 42 (“HILL OF GRACE” and “HILL OF GOLD”) and Conde Nast Publications Pty. Limited v. Taylor (1998) 41 IPR 505 (“EUROVOGUE” and “VOGUE”) as being analogous and relevant to the matter which is presently before me.

Having regard to the present matter, it seems to me that the mere possession of the commonly-shared element RIDER in the LADY RIDER applications is not in itself enough and that there must be made out something more before the ground under Section 44 is satisfied. In particular, it is by no means established that the mere appearance of a shared or common element (in this instance, the expression RIDER) located within the respective trade marks is sufficient to render those marks deceptively similar to each other. In this regard, in the decision of Capitol Clothing Pty. Limited v. Hush Fashions Pty. Limited [2006] ATMO 79 at paragraphs 29-30 the Delegate aptly observed:
For a trade mark to “so nearly resemble that other trade mark that it is likely to deceive or cause confusion” there would need to be some perceived connection between the two trade marks in the mind of the purchaser. The mere presence in two trade marks of the same word is not sufficient for this to happen. The perception of a connection is more likely to occur when the target word is accompanied by words or images that allude to the trade marks being a family of trade marks owned by the same organization. A simplistic example here would be “ENVY Women” and “ENVY Men”, both in use on a range of clothing.
However, where the additional words are not relevant to the trade, or where well known phrases are used, this perception is less likely to be the case. I consider this is the situation here.
In that instance, the finding was that the resemblance between the respective trade marks “GREEN WITH ENVY” and “ENVY AVENUE” of the Applicant and the Opponent’s “ENVY” registration was not such that there would be a real tangible danger of deception or confusion occurring in the minds of the buying public. By way of illustration, other examples abound.[4]
[4] In this regard, without in any sense seeking to be exhaustive, reference is made to the Australian decisions of Application by Thomas A. Smith to Register a Trade Mark (1913) 30 RPC 363 at 366 (SUMMIT and LIMIT); Gardenia Overseas Pte. Limited v. The Garden Company Limited (1994) AIPC 91-096 (“garden” and “gardenia”); Rivers (Australia) Pty. Limited v. Ezibuy Limited (2000) 49 IPR 186 at 191 (“Rivers” and “Stoneriver”), Prefel SA v. Merchant Corporation Pty. Limited (2001) 52 IPR 227 at 235-6 (STRADA and PRADA); Southcorp Wines Pty. Limited v. Kemeny’s Food and Liquor Pty. Limited (20010 52 IPR 619 at 623 (DEVIL’S RIDGE and DEVIL’S LAIR); Bose Corporation v. Audio Products Inc. (2002) 57 IPR 577 (WAVE/ACOUSTIC WAVE and POWER WAVE); The Timberland Company v. Woolworths Limited [2005] ATMO 12 (TIMBERLAND and TIMBERLINE); Health World limited v. Shin-Sun Australia Pty. Limited (2008) 75 IPR 478 (HEALTHPLUS and INNER HEALTH PLUS); Chris Kingsley v. David Scott (2011) 91 IPR 592 (REBELLION and SOUL REBELLION); and Australian Postal Corporation v. Digital Post Australia Pty. Limited (2012) 96 IPR 532 (AUSTRALIA POST and DIGITAL POST AUSTRALIA). Examples of corresponding decisions in the United Kingdom include Darwin Limited’s Application (1946) 63 RPC 1 (REX and MOREX), Enoch’s Application (1947) 64 RPC 119 (VIVICILLIN and CYLLIN), and “Frigiking” Trade Mark [1973] RPC 739 (“Frigiking” and “Thermo-king”).
In comparing the respective trade marks, it is apparent that there exist notable differences and points of distinction between them. Indeed, the only element of commonality which can be said to exist arises from the appearance of the word RIDER in each of the several RIDERS registrations on which the Opponent places reliance. Otherwise, it should be noted that in the Opponent’s mark the expression RIDERS either appears on its own (that is, as a word mark), or rendered in a particular and distinctive manner (as a device mark or logo), or in combination with other elements (notably the qualifying word LEE). On the other hand, the Applicant’s trade marks appear in combination form and they consist of the individual words LADY and RIDER (with each word being rendered in a particular and stylised manner and form) conjoined to form the composite expression LADY RIDER together with the adoption of accompanying artwork and a particular manner of representation which is arguably distinctive when considered in its total effect.
The overall appearance of the two LADY RIDER applications and the impression which is conveyed by them are markedly different from the appearance and impression which are conveyed by each of the prior existing registrations on which the Opponent relies. The essential element in both of the Applicant’s trade marks is not the individual word RIDERS (as it is in the Opponent’s registrations) but arguably the composite expression LADY RIDER. In each instance, that expression is rendered in a particular and distinct manner. Each of the applications includes the expression RIDER in singular (rather than plural) form so that the final letter “-S” which consistently appears in the Opponent’s prior registrations is notably absent from the Applicant’s marks. In the Applicant’s marks the second word RIDER is accompanied by the qualifying word LADY, with the form of stylisation being different in relation to each word. As well, there is the added element in each of the Applicant’s marks in that separate artwork is included, in one instance being the representation of a woman riding a motorcycle and in the other instance being the image of stylised roses. So, having regard to their respective composite forms, each of the Applicant’s marks is dissimilar in appearance and impression from the RIDERS registrations on which the Opponent relies. The result is that, when considered both visually and aurally, the applications which are presently under consideration evince considerable points of differentiation from the RIDERS marks of the Opponent.
In making the necessary comparison, and in addition to the submissions which have been put by the respective parties, there are several special factors which I have taken into account, namely:
·     None of those prior entries on which the Opponent seeks to rely features the word LADY, the word RIDER in singular form, or the composite expression LADY RIDER. Rather, the Opponent’s RIDERS marks invariably feature that word on its own (that is, as a word mark appearing in plural rather than singular form) or in conjunction with the qualifying word LEE (which further serves to distinguish it from the Applicant’s trade marks by reinforcing the connection between the RIDERS marks and the Opponent rather than the Applicant), or rendered in a particular and stylised manner as a device mark.
·     There are no equivalent or corresponding elements in the Opponent’s RIDERS registrations to the word LADY, the stylised form of lettering in which that word is rendered, or the elements of a female motorcycle rider or a “roses” device respectively.
·     In terms of impression, the RIDERS mark as used by the Opponent is intended to convey a very different sense and understanding than that of the Applicant’s LADY RIDER trade marks. The imagery which is adopted and used by the Opponent in conjunction with its RIDERS marks evokes a “western” theme that is associated with horseriding, cowboys and cowgirls, ranchhands, and the rugged, outdoor life. In this regard, reference is made to Exhibits GMC-6 and GMC-8 and the forms of advertisement which are therein depicted. By contrast, the Applicant’s use of the expression LADY RIDER is intended to denote a strong association with the riding of motorcycles (as distinct from horses) and it is adopted to indicate a female person who rides the road utilising such means of conveyance (and in the sense of the title of the well-known “road” movie Easy Rider).
·     The evidence points out that the Opponent does have an established interest overseas in the trade mark LADY LEE RIDERS. However the Opponent’s reputation in respect of that mark does not extend to include Australia, and there is no evidence before me of any use of that mark in this country. Indeed, when the issue was expressly put to her at the hearing, Ms Ryan confirmed that an argument based on “spillover” reputation in respect of the LADY LEE RIDERS mark was not being advanced or relied upon in this instance.
·     As indicated in the evidence, the Applicant holds a prior existing registration in Australia in respect of the LADY RIDER trade mark under No. 1140139 and having the priority date of 11 October 2006. While that mark is rendered in a different form of artwork to the two applications which are presently before me, the acceptance of same was not opposed at the relevant time by the Opponent and that mark did not then appear to give cause for concern.
·     As part of the Applicant’s evidence in answer, and as earlier referred to, Exhibit A28 indicates the existence of some seventy-two registrations of trade marks which include the words RIDER or RIDERS as a component thereby seeking to establish the existence of a multiplicity of third parties with an interest in those words and in the relevant Class 25. The presence of those entries arguably serves to indicate that the registrations of the RIDERS trade mark which are relied upon by the Opponent do not serve to confer an exclusive right or to constitute a monopoly in its favour in respect of use of the expressions RIDER or RIDERS, at least in Class 25, and to the exclusion of all other parties (including the Applicant).
In short, after comparing the respective trade marks, I reach the conclusion that the Applicant’s LADY RIDER trade marks in normal use would be unlikely to be mistaken for the expression RIDERS as adopted by the Opponent (and vice versa). In my view, the LADY RIDER marks give rise to an entirely different construction and interpretation than the word RIDERS: see the Conde Nast decision. I do not consider that any reasonable person on seeing the respective trade marks LADY RIDER and RIDERS even in relation to identical or corresponding goods would assume those marks to identify the same proprietor or a common trade source or origin. As in the Conde Nast case, I arrive at the conclusion that there is no “real, tangible danger” of deception or confusion occurring, taking account of all the surrounding circumstances including the reputation acquired by the Opponent in respect of the RIDERS name and the nature of the relevant trade.
After considering those factors and circumstances which are indicated above, I find that the Applicant’s two LADY RIDER applications are not deceptively similar to the RIDERS trade marks of the Opponent. On that basis, the requirements which need to be met pursuant to Section 44 of the Act have not been satisfied and the ground of opposition pursuant to that Section is not made out.
Section 60

60. Section 60 of the Act is worded 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.

In order to establish the ground of opposition pursuant to Section 60, the Opponent must satisfy the following elements, namely:
·      there must be another trade mark which was in existence prior to 6 October 2009 and 13 November 2009 (being the priority dates of the two LADY RIDER applications);
·      that other trade mark must have acquired a reputation in Australia before the priority dates;
·      the Opponent need not be the owner of the conflicting trade mark;
·      the requisite reputation must be amongst a significant section of the public or a substantial number of persons;
and
·      that reputation must be such that use of the opposed trade marks would be likely to cause instances of deception or confusion to occur.
In relation to the present proceedings, the evidence shows clearly and beyond dispute that the Opponent has a substantial and established reputation in Australia in respect of its RIDERS trade marks sufficient to satisfy this requirement of Section 60. I accept that the RIDERS trade marks are well-known among members of the Australian public. However, that being said, in this instance that reputation is not of itself sufficient, in my opinion, as to result in the likelihood that instances of deception or confusion in the relevant sense as set out in the tests that have been laid down will be caused to occur. The test for deception or confusion has been dealt with, for example, in Registrar of Trade Marks v. Woolworths Limited (1999) 45 IPR 411; (1999) AIPC 91-499 where, in considering the phrase “likely to deceive or cause confusion”, Justice French stated (at 45 IPR 426, AIPC 39,695):
The use of the word “likely” in this context does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a “real tangible danger of its occurring”: Southern Cross Refrigerating Company v. Toowoomba Foundry Pty. Limited (1954) 91 CLR 592 at 594-5 per Kitto J.
In the present matter, the Opponent’s reputation in its trade marks is not sufficient to overcome the obvious points of difference and dissimilarity which exist between the respective LADY RIDER marks on the one hand and on the other hand the RIDERS trade marks of the Opponent. Those points of distinction as identified above have the effect of rendering it less than probable that instances of deception or confusion would be likely to occur. On that basis, I find that the ground of opposition pursuant to Section 60 of the Act has not been established by the Opponent.
Section 42(b)
This Section of the Act provides that an application for registration must be rejected if its use would be contrary to law. The Opponent’s attorney submitted that use of the Applicant’s trade mark for the relevant goods would breach Sections 52 and 53 of the Trade Practices Act 1974 or the corresponding Sections 18 and 29 of the Australian Consumer Law (being Schedule 2 to the Competition and Consumer Act 2010) which proscribe misleading or deceptive conduct or the making of false or misleading representations. At the hearing, I pointed out to Ms Ryan that the Australian Consumer Law took effect as from 1 January 2011 and as such that it had no application as at the priority dates of 6 October 2009 and 13 November 2009. I indicated that I would consider this ground on the basis of the corresponding Sections 52 and 53 of its predecessor (the Trade Practices Act 1974).
I have already found that use of the First Trade Mark and the Second Trade Mark for the goods in question is unlikely to deceive or cause confusion in terms of Sections 44 or 60 of the Act. There are several decided cases confirming that more is required to establish a likelihood of misleading or deceptive conduct (or, by extension, conduct amounting to the making of false or misleading representations ) than is the position with trade marks which are likely to deceive or cause confusion under Section 60. In Parkdale Custom Built Furniture Pty. Limited v. Puxu Pty. Limited (1982) 149 CLR 191; 1A IPR 684, by way of example, Chief Justice Gibbs observed in relation to Section 52 of the Trade Practices Act (at 688):
In McWilliams Wines Pty. Limited v. McDonald’s System of Australia Pty. Ltd. (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v. Toowoomba Foundry Pty. Ltd. (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.
It is clear that in establishing a likelihood of misleading or deceptive conduct something more is required than the possibility that instances of deception or confusion might be said to occur. It is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products or services may have come from the same source (see Justices Smithers and Fisher in McWilliams Wines Pty. Limited v. McDonald’s System of Australia Pty. Limited (1980) 33 ALR 394 and referred to with approval by Chief Justice Gibbs in Parkdale Custom Built Furniture Pty. Limited v. Puxu Pty. Limited (1982) 149 CLR 191). Similar reasoning has been expressed by Justice French in Registrar of Trade Marks v. Woolworths Limited (1999) 45 IPR 411 at 427 (paragraph 47) where he stated:
The trade mark law concept of confusion in the sense of mere wonderment as to common origin or connection has little part to play in the consumer protection statutes.
In Red Hat Inc. v. Mary-Ann Martinek (2002) 56 IPR 292 Hearing Officer Purvis-Smith observed:
Mere wonderment does not necessarily rise to the level required to satisfy S 42(b).

67. The focus of Sections 52 and 53 is on the misleading of others, rather than upon an injury to a competitor. In Hansen Beverage Company v. Bickfords (Australia) Pty. Limited (2008) 79 IPR 174 Justice Tamberlin observed (at paragraph 46):
There is no foundation in the language of s 52 of the TPA to require that a reputation exist among any particular class or group of persons (particularly as defined by advertising objectives) before a breach of that provision can be made out. The provision is designed to regulate conduct which can be characterised as misleading and to protect consumers. . . . The question which must be answered can properly be framed as being whether a not insignificant number of persons in the Australian community, in fact or by inference, have been misled or are likely to be misled.

I consider that the reasoning set out earlier in rejecting the Opponent’s argument in relation to Section 60 of the Act is no less applicable to its claim that the Applicant’s use of the First Trade Mark and the Second Trade Mark would breach Sections 52 or 53 of the Trade Practices Act. That is to say, given the differences between the respective marks when each mark is compared as a whole and in the absence of any evidence before me of actual deception, I am not satisfied that the reputation of the Opponent’s relevant trade marks, whether considered individually or in terms of their collective reputation, is such that use of the Applicant’s trade marks for the goods in question would be likely to mislead or deceive or would amount to the misrepresentations as alleged. Thus, I find that the Opponent has not established its ground under Section 42(b) of the Act.
Decision
In deciding this matter, I am required to determine whether or not to allow the two applications Nos. 1322652 and 1330541 to proceed to registration pursuant to the provisions of Section 55 of the Act which relevantly provides:
55 Decision
(1)Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
I find that the Opponent has not established its opposition. None of the three grounds of opposition which have been relied upon at the hearing has been made out. Accordingly, each of the two trade mark applications may proceed to registration 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 such time as the appeal has been decided or discontinued.
Costs

Each of the parties has requested an award of costs in its favour. However, the Opponent having been unsuccessful on all grounds, I consider that the general rule should apply and that costs should follow the cause. Accordingly, I award costs against the Opponent and in favour of the Applicant with such costs to be assessed and determined in accordance with the provisions of Schedule 8 of the Trade Mark Regulations 1995.
John Spence
Hearing Officer
Trade Marks Hearings
13 June 2013
:

[2013] ATMO 49

13 June 2013

Key Legal Topics

Areas of Law

Intellectual Property

Commercial Law

Legal Concepts

Appeal

Costs

Delegate:	John Spence
Representation:	Opponent:Margaret Ryan, Solicitor, of Phillips Ormonde Fitzpatrick, Patent and Trade Mark Attorneys Applicant:Adam Law, Patent Attorney, of Adam Law, Patent and Trade Mark Attorneys assisted by Rohan Wallace, Patent Attorney, of Rohan Wallace Patent and Trade Mark Attorneys and accompanied by Tracey Taylor
Decision:	2013 ATMO 49 Section 52 opposition – grounds under Sections 44, 60 and 42(b) pursued – applications not substantially identical with or deceptively similar to Opponent’s registrations – grounds of opposition not made out – applications allowed to proceed to registration. Costs awarded against the Opponent.