The Kindred Co Pty Ltd v ZW Family Pty Ltd as Trustee for ZW Family Trust

[2018] ATMO 113

TRADE MARKS ACT 1995

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

Re:Opposition by The Kindred Co Pty Ltd to registration of trade mark application 1748290 (25) – EBBY AND I (Device) - in the name of ZW Family Pty Ltd as Trustee for ZW Family Trust

Delegate:

Nicholas Smith

Decision on the Written Record

Decision:

2018 ATMO 113

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42, 44, 58, 60 and 62A considered – none established – trade mark to proceed to registration

Background

1.  This is an opposition brought by The Kindred Co Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of ZW Family Pty Ltd as Trustee for ZW Family Trust (‘Applicant’): 

Application Number:

1748290

Filing Date:

25 January 2016

Goods:

Class 25: Women's clothing

(‘Applicant’s Goods’)

Trade Mark:

(‘Trade Mark’)

2.  Following the advertisement on 16 June 2016 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 29 June 2016.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 27 July 2016. The SGP raised grounds of opposition under ss 42(b), 44, 58, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 1 September 2016.

Evidence

3.  The Opponent filed Evidence in Support of its opposition (‘EIS’) on 7 December 2016.  This evidence consists of a declaration made on 7 December 2016 by Geoffrey David Morgan, Director of the Opponent, with Annexures GM00 to GM17 (‘Morgan Declaration’).

4.  The Applicant filed Evidence in Answer (‘EIA’) on 15 March 2017.  This evidence consists of a declaration made on 15 March 2017 by Na (Anna) Zuo, Director of the Applicant, with Annexures AZ-1 to AZ-10 (‘Zuo Declaration’).  The Opponent chose not to file any evidence in reply.

5.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  Neither party chose to avail themselves of these opportunities at that time.  By letter issuing from IP Australia on 3 August 2017 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon.  On 4 September 2017 the Applicant filed its submissions (‘Applicant’s Submissions’).  On 4 September 2017 the Opponent filed its submissions (‘Opponent’s Submissions’). 

6. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide on the basis of the written record, comprised of the materials mentioned in the preceding paragraphs:

(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.

The Opponent

7.  The Opponent is a company based in Australia, formerly known as EB & Ive Pty Ltd.  The Opponent changed its name to its present name on 15 February 2013.

8.  The Opponent is the owner of the two registered Australian trade marks set out in the table at Annex 1 and is the applicant to register the third trade mark in that table (‘Opponent’s Trade Marks’).  In particular I note the Opponent is the registered owner of Trade Mark 1391429, being the (‘EB Mark’).

9.  The Morgan Declaration contains the following claims/statements:

·     The Opponent first used the EB Mark in February 2010 for goods including women’s clothing.  The EB Mark has been used on catalogues, invoices and receipts and has been used continuously since February 2010.

·     The Opponent’s sales under the EB Mark have grown significantly since the 2010-11 financial year.  The Opponent has sold its products through a very significant number of stores throughout Australia.   

·     The Opponent has engaged the services of a professional public relations company to advertise its goods and has promoted its goods under the EB Mark through social media including Facebook and Instagram, and through the Opponent’s website itself. 

The Applicant

1. The Applicant is an Australian company, based in Sydney, New South Wales, that designs, manufactures and wholesales women’s apparel products under various brands, including under the Trade Mark.

2. The Zuo Declaration contains the following claims/statements:

   ·     The Applicant selected the Trade Mark in 2015 by reference to the daughter of the Applicant’s in-house designer, who is named Ebby.  The Applicant conducted a search of the Australian Trade Mark Register and did not identify any similar trade marks.

   ·     The Applicant first used the Trade Mark on 25 September 2015.  As of the date of the declaration the Applicant has distributed goods bearing the Trade Mark to retailers and fashion agents throughout Australia.

   ·     The Deponent is unaware of any instances of actual consumer confusion between the Trade Mark and the Opponent’s Trade Marks.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58, 60 and 62A of the Act. To successfully oppose the application the Opponent needs to establish at least one of those grounds.

2. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 25 January 2016, (‘relevant date’) being the filing date of the application in Australia (except in circumstances not present here, in which a different priority date is provided for in the Act).[3]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

Discussion

Section 44

1. The relevant provisions of the Act with respect to the ground pursuant to s 44 are reproduced below:

Section 44 - Identical etc. trade marks

1. Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a)it 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.

Section 10 - Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

1. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

2. In the event that each of these requirements are satisfied by the Opponent it may be possible for the Registrar to accept the application pursuant to ss 44(3) and 44(4) if the Registrar is satisfied that there has been honest concurrent use of the Trade Mark, other circumstances exist which would make its registration proper or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.

3. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks, however for the purposes of this ground I need only consider the EB Mark. The remaining Opponent’s Trade Marks either contain additional elements resulting in them being less similar to the Trade Mark than the EB Mark or are registered for goods and services that less closely correspond to the Trade Mark. If I find that the EB Mark does not satisfy the requirements of s44, I would necessarily reach the same conclusion when considering each of the remaining Opponent’s Trade Marks.

4. The EB Mark has a priority date that is earlier than the priority date of the Trade Mark.  The EB Mark is registered for goods including ‘Apparel (clothing, footwear, headgear)’, which wholly incorporates the Applicant’s Goods.  I consider the first and third requirements are satisfied. 

Substantially identical or deceptively similar

1. I will now consider whether the Trade Mark is substantially identical to the EB Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   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 features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[4]

   [4] (1963) 109 CLR 407, [12].

2. The Trade Mark and the EB Mark are set out below:

   EB & IVE

3. On a side by side comparison there is a clear difference between the respective trade marks, being the removal of ‘by’ from the first word, the replacement of ‘and’ with an ampersand, the addition of ‘ve’ to the third word and the removal of the square device.  Indeed, none of the elements of the respective marks are identical.  The differences between the respective trade marks are sufficient for me to conclude that the respective trade marks are not substantially identical.  For the reasons set out in paragraph 17 above, I reach the same conclusion with respect to the remaining Opponent’s Trade Marks.  I move then to consider whether the Trade Mark and EB Mark are deceptively similar.

4. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

   Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[5]

   [5] Ibid [13].

5. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[6] at [49]; Australian Woollen Mills[7] at 658.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[8] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[9] at 594 – 595.

   Sixth, 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 the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[10]

   [6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [7] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   [8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

   [9] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

   [10] [2012] FCA 1022, [38]-[46].

6. On balance, while there are similarities between the marks, I do not consider the marks to be deceptively similar.  Aurally, the marks are similar but not identical: While it is likely that some, but not all, consumers will pronounce ‘EB &’ and ‘EBBY and’ in the same manner, there is a clear distinction in the pronunciation of ‘I’ and ‘IVE’.[11]  Conceptually the marks are similar but not identical, in that they both evoke two individuals, however the EB Mark refers to two individuals separate to the viewer, being EB and IVE, while the Trade Mark refers to an individual, being EBBY and the viewer (‘I’).  Finally, as outlined in paragraph 21 above, there are considerable visual differences between the marks, a relevant factor when considering that clothing is often sold or examined through the use of swing tags and other labels.  None of the elements that comprise the Trade Mark, being EBBY, AND, I and the square device, are replicated visually in the EB Mark. 

   [11] I accept the Opponent’s submissions that slurring is a possibility with respect to ‘EBBY’, but consider it less likely in the case of ‘IVE’.

7. I find that as a result of the significant visual and limited aural and conceptual differences between the marks when considered as a whole, even allowing for imperfect recollection, it is unlikely that the use of the Trade Mark will deceive or cause confusion because of any similarity it has to the EB Mark.  For the reasons set out in paragraph 17 above, I reach the same conclusion with respect to the remaining Opponent’s Trade Marks.

8. I find that the Opponent has failed to establish the ground of opposition under s 44.

Section 58 – Applicant not owner of trade mark

1. Section 58 of the Act is reproduced below:[12]

   [12] In summarising the principles that apply with respect to s 58 of the Act I have paraphrased from Richard Khouzame v Melambada Pty Ltd (Unreported, Australian Trade Marks Office, 6 January 2017), [12].

   Section 58. Applicant not owner of trade mark

   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.

2. The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

   · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[13]

   · that the Applicant’s Goods are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[14] and

   ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[15]

   [13] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.

   [14] Re Hicks’ Trade Mark (1897) 22 VLR 636.

   [15] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.

3. The ground based on s 58 of the Act was particularised in the SGP as follows:

   The opponent is the owner of the mark EB & IVE, which is the subject of trade mark no. 1391429, filed on 29 October 2010, and trade mark no. 1530353, filed on 7 December 2012. The trade mark EB & IVE has been continuously used by the opponent or the opponent’s predecessor in title since February 2010, in relation to goods which are similar to the goods to which the opposed mark relates.

   Because of the similarity/substantial identicalness between the opposed mark and the above mark of the opponent, the opponent has an earlier claim to ownership whereby the applicant of the opposed trade mark application is not the owner of that mark.

1. The threshold question for s 58 is whether the Opponent can point to a trade mark which is identical or at least substantially identical to the Trade Mark. If the Opponent cannot identify such a trade mark, the ground fails at the outset. The Opponent nominates the two registered marks that are part of the Opponent’s Trade Marks. As noted above I have found that none of the Opponent’s Trade Marks are substantially identical to the Trade Mark.

2. As the Opponent has failed to established the first factor (and must establish all three factors to succeed in the s 58 ground of opposition), I find that the Opponent has failed to establish the ground of opposition pursuant to s 58 of the Act.

Section 60

1. Section 60 of the Act is reproduced below:

   Section 60 - 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.

2. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.[16]

   [16] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

3. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[17]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[18]

   [17] [2000] FCA 1335, [81].

   [18] (1992) 33 FCR 302, 343.

4. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[19]

   [19] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

5. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[20] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

   What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[21]

   [20] (2000) 50 IPR 1.

   [21] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

6. Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[22]

   [22] Mark Davison, Shanahan’s Australian Law of Trade Marks and Passing Off Online Westlaw AU, [50.2415] <

7. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

   The opponent’s trade mark EB & IVE (the subject of trade mark no. 1391429, filed on 29 October 2010 and trade mark no. 1530353, filed on 7 December 2012) has been in continuous use since February 2010, in relation to goods to which those two trade mark registrations relate, and began before the priority date of the opposed mark. As a result of this use, that mark of the opponent has acquired a reputation in Australia; and because of that reputation, the use of the opposed trade mark would be likely to deceive or cause confusion.

8. The evidence in the Morgan Declaration is that the Opponent has traded and hence used the EB Mark in Australia since 2010.  While sales for the Opponent have grown between 2010 and the relevant date, this is off a negligible base.  I find overall level of sales between 2010 and the relevant date to be unimpressive, particularly given the size of the women’s clothing market in Australia.  The Opponent’s products have been sold through a wide variety of stores across Australia but in such small numbers that it appears unlikely that any reputation has arisen in the EB Mark as a result of in-store presence. 

9. While the Opponent has engaged in efforts to promote its brand since 2010, and produces products that are held in some esteem, ultimately given the small size of the Opponent, limited marketing expenditure incurred and breadth of the women’s clothing market I am not persuaded that the EB Mark had any significant reputation at the relevant date.

10. Given the limited evidence of advertising, the low level of sales and the differences between the EB Mark and Trade Mark (outlined above in discussing the ground of opposition under s 44), I am not persuaded that at the relevant date the EB Mark (nor trade mark no. 1530353 which is identical to the EB Mark) had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act.

Section 42

1. Section 42 of the Act is reproduced below:

   42 Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   (a) the trade mark contains or consists of scandalous matter; or

   (b) its use would be contrary to law.

2. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[23]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[24]

   [23] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

   [24] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004]  59 IPR 343, 353.

3. The Opponent has particularised the ground of opposition in the SGP as follows: 

   Use of the mark by the Applicant would constitute misleading and deceptive conduct in breach of sections 18 and 29 of the Australian Consumer Law

   The opponent’s trade mark, EB & IVE, is the subject of trade mark no. 1391429, which was filed on 29 October 2010, and trade mark no. 1530353, which was filed on 7 December 2012, and has been in continuous use since February 2010 by the opponent or the opponent’s predecessor in title, while the opponent’s mark trade mark EB & IVE HOME is the subject of trade mark no. 1699378 which was filed on 4 June 2015. In view of the similarity or substantial identicalness, as the case may be, between the opposed trade mark and the above three earlier marks; the fact that the first two of the earlier marks are subject of trade mark registrations; the goods to which those registrations relate; and the goods in relation to which at least the first two of the above marks are being and have been used, the use of the opposed trade mark in relation to the goods to which it relates is or will be contrary to law due to amounting to:

   1. Infringement of registered trade marks in contravention of Section 120 of the Trade Marks Act 1995;

   2. Conduct that is misleading or deceptive or that is likely to mislead or deceive, in contravention of Section 18, Schedule 2, Chapter 2 of the Competition and Consumer Act 2010;

   3. The making of a false or misleading representation that those goods have sponsorship or approval of the opponent which is the owner of the Earlier Marks, or a false or misleading representation that the owner or user of the opposed trade mark has the sponsorship or approval of, or an affiliation with, the opponent, in contravention of Section 29, Schedule 2, Chapter 2 of the Competition and Consumer Act 2010;

   4. The tort of passing off.

4. As previously stated the Opponent has failed to establish a ground of opposition under s 60 of the Act. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[25] and I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

   [25] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198.

5. Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[26], where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[27] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

   The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[28]

   [26] [2014] ATMO 65, [50].

   [27] [2003] FCA 104, [107].

   [28] [1989] FCA 506, [40] (citations omitted).

6. Finally I have already concluded that none of the Opponent’s Trade Marks are substantially identical to or deceptively similar to the Trade Mark, hence the use of the Trade Mark would not amount to infringement under s120 of the Act.

7. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

Section 62A

1. Section 62A of the Act is reproduced below:

   62A Application made in bad faith

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

2. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

• persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

• persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

• persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

1. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on this section.  In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[29]:

   Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

   … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[30]

   [29] [2004] EWCA Civ 1028; [2005] FSR 10.

   [30] [2012] FCA 81, [147].

2. Her Honour continued later in the same decision:

   The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

   Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[31]

   [31] Ibid [165]-[166].

3. The Opponent has particularised the ground of opposition in the SGP as follows: 

   The filing date of the opposed application is 14 October 2015. On 2 October 2015, we are instructed that the Opponent telephoned the applicant of the Opposed trade mark then wrote to the applicant of the Opposed mark on 7 October 2015 and on each occasion, made the applicant aware of the Opponent’s business and its rights and reputation in the Earlier Trade Mark. Despite being made specifically aware of the Opponent’s “real estate agency services” business and long-standing reputation and rights in the Earlier Trade Mark, the applicant then proceeded to apply for the Opposed trade mark. Accordingly, the application was clearly made in bad faith and the applicant continues to use and trade on the Opponent’s use and reputation in its Earlier Trade Mark.

   The opponent’s earlier marks were filed on dates as follows: EB & IVE (trade mark no. 1391429, filed on 29 October 2010); EB & IVE (trade mark no. 1530353, filed on 7 December 2012); and EB & IVE HOME (trade mark no. 1699378, filed on 4 June 2015).

   Therefore, details of these earlier marks will have been visible on ATMOSS on or shortly after the respective filing dates, and well before the filing date of the application for the opposed mark. Accordingly, the applicant of the application for registration of the opposed mark will or ought reasonably to have been aware of the opponent’s earlier marks prior to the filing of the opposed trade mark application and that the earlier marks relate to goods that are similar to those to which the opposed mark relates. For at least this reason and the similarity/substantial identicalness between the earlier marks and the opposed trade mark, the opposed trade mark application was filed in bad faith.

4. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[32] In the present case the Applicant has sought to register a trade mark that is not substantially identical or deceptively similar to any of the Opponent’s Trade Marks, nor sought to take advantage of any reputation the Opponent has in its marks (which is minimal). In circumstances where the evidence in support of the s 62A ground of opposition is very limited and the Opponent bears the onus, I am not satisfied the Applicant’s conduct in filing the application was unscrupulous, underhanded or unconscientious in character. Consequently I find that the Opponent has failed to establish the ground of opposition under s 62A.

   [32] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12].

Decision

1. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade Mark application no. 1748290 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. The Applicant has sought an award of costs in its favour.  I see no reason to depart from the general rule that costs follow the event.  I accordingly award costs against the Opponent as per Schedule 8 of the Trade Mark Regulations 1995 (Cth).

Nicholas Smith

Hearing Officer

Oppositions and Hearings

17 July 2018

Annex 1 – List of selected trademarks owned by the Applicant

Number	Trade Mark	Priority Date	Goods and Services
1391429	EB & IVE (‘EB Mark’)	29 Oct 2010	Class 25: Apparel (clothing, footwear, headgear); casual clothing; clothing; silk clothing
1530353	EB & IVE	07 Dec 2012	Class 14: Arm bands (jewellery); Articles of imitation jewellery; Articles of jewellery; Artificial jewellery; Beads for making jewellery; Brooches (jewellery); Chains (jewellery); Charms (jewellery); Cloisonne jewellery; Costume jewellery; Custom jewellery; Decorative brooches (jewellery); Decorative pins (jewellery); Dress ornaments in the nature of jewellery; Ear ornaments in the nature of jewellery; Fake jewellery; Fashion jewellery; Gold jewellery; Hair ornaments of precious metal (jewellery); Imitation jewellery; Imitation jewellery ornaments; Items of jewellery; Jewellery; Jewellery articles; Jewellery chain; Jewellery chain of precious metal for bracelets; Jewellery chain of precious metal for necklaces; Jewellery coated with precious metal alloys; Jewellery coated with precious metals; Jewellery containing gold; Jewellery fashioned from non-precious metals; Jewellery for personal adornment; Jewellery for personal wear; Jewellery items; Jewellery made of non-precious metal; Jewellery made of plastics; Jewellery made of plated precious metals; Jewellery ornaments; Jewellery products; Neck chains (jewellery); Necklaces (jewellery); Ornaments (jewellery); Pendants (jewellery); Personal jewellery; Pins (jewellery); Pins being jewellery; Plastic jewellery; Rings (jewellery); Rubber jewellery; Wrist bands (charity, jewellery); Wristlets (jewellery) Class 24: Bed quilts; Continental quilts; Quilt bags; Quilt bedding mats; Quilt covers; Quilted blankets (bedding); Quilts; Quilts filled with stuffing materials Class 25: Apparel (clothing, footwear, headgear); Articles of clothing made from wool; Articles of clothing made of imitation leather; Articles of clothing made of leather; Articles of clothing made of plush; Athletic clothing; Beach clothing; Belts (clothing); Cashmere clothing; Casual clothing; Children's clothing; Clothing; Clothing for gymnastics; Clothing for sports; Clothing for surfing; Clothing of imitations of leather; Clothing of leather; Denims (clothing); Girl's clothing; Halters (clothing); Jackets (clothing); Jerseys (clothing); Knitted clothing; Knitwear (clothing); Ladies clothing; Leather belts (clothing); Linen articles of clothing; Plush clothing; Ready-to-wear clothing; Silk clothing; Slips (clothing); Sports clothing (other than golf gloves); Stuff jackets (clothing); Thongs (clothing); Women's clothing; Woollen clothing; Woven articles of clothing; Wraps (clothing)
1699378	EB & IVE HOME	04 Jun 2015	Class 20: Basketware; cane furniture; cushions; soft furnishings (cushions); domestic furniture; domestic furniture made of wood; display frames; embroidery frames; exhibition frames stands (non-metallic); frames for photographs; frames for pictures; holders for photographs (frames); photograph frames; outdoor furniture; rattan; reeds (plaiting material); wooden furniture; chairs; chairs being furniture; chairs being furniture; furniture; furniture for the home; household furniture; ottomans; coffee tables; tables; footstools Class 24: Bed coverings; bed covers; bed linen; bed quilts; throws; dinner napkins; table napkins of textile; textile napkins; textile napkins (table linen); fabric place mats; handcrafted textile wall hangings; textile materials (hangings) for covering walls; textile wall hangings; wall hangings of textile; textile fabrics for making up into household textile articles; textile goods; textile goods for use as bedding; textiles and textile goods; place mats (not of paper); textile place mats; jute fabric; kitchen linen; kitchen towels (textile); pillow cases; pillow covers; continental quilts; quilts; quilts filled with feathers; quilts filled with stuffing materials; serviettes of textile; soft furnishings; table cloths; textile smallwares (table linen); tea towels; blanket throws; towel blankets; materials for soft furnishings; textile articles for soft furnishings Class 27: Handcrafted non-textile wall hangings; non-textile wall hangings; wall coverings (hangings) of non-textile materials; wall hangings (non-textile); wall hangings; not of textile; door mats; door rugs; floor mats; floor rugs; rugs