The One Australia and New Zealand Pty Ltd

[2024] ATMO 248

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2339223 (class 25) – UGG AUSTRALIAN SHEPHERD - in the name of The One Australia and New Zealand Pty Ltd

Delegate:

Tracey Berger

Representation:

Applicant: Sean McManis of Davies Collison Cave Pty Ltd

Decision:

2024 ATMO 248

Trade Marks Act 1995 (Cth) – request to be heard under section 33 of the in relation to ground for rejection under section 44 of the Act – trade marks not deceptively similar – application to proceed to registration

Background

1. On 14 March 2023, The One Australia and New Zealand Pty Ltd (‘Applicant’) applied to register the trade mark shown below pursuant to the provisions of the Trade Marks Act 1995 (Cth)[1]:

Trade Mark:                   UGG AUSTRALIAN SHEPHERD (‘Trade Mark’)

Number:   2339223

Goods:  Class 25: Clothing; Footwear; Headwear

[1]  Any references to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) or a regulation of the Trade Marks Regulations 1995 (Cth) respectively, unless otherwise indicated.

1. The application was examined as required by s 33 and on 28 March 2023, an adverse examination report issued raising grounds for rejection under s 44[2] on the basis that the Trade Mark is substantially identical with or deceptively similar to the earlier trade marks set out below covering the same or similar goods and closely related services (collectively ‘Cited Marks’):

   [2]One of the cited marks is a protected International Trade Mark designating Australia (‘IRDA’) and therefore, the technical ground of objection in relation to this mark is under reg 4.15A.  However, as the terms of s 44 and reg 4.15A are substantively identical for all relevant purposes, I have referred only to s 44 in this decision. References to s 44 as considered in the present decision should be taken to read to s 44 and reg 4.15A.

Trade Mark Number	Trade Mark	Registered Owner	Goods	Endorsements
1362324 (IR 1037027)	Deckers Outdoor Corporation	Class 25:  Clothing, namely sweaters, shirts, pants, shorts, skirts, coats, jackets, vests, ponchos, snow suits, scarves, muffs, mittens and gloves; headwear; children’s buntings	Provisions of ss 44(4) and/or Reg 4.14A(5) applied Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied Trade Mark Description: The letters UGG in stylized form, the middle G larger than the flanking U and G.
1742568	Deckers Outdoor Corporation	Class 35:  Retail store services and on-line retail store services being for clothing, headwear, pet products, handbags and home accessories	N/A

1. The Examiner indicated in the examination report that the objection related to the goods ‘Clothing; Headgear’ (‘Conflicting Goods’) but did not apply to ‘footwear.’

2. The Applicant filed submissions principally arguing that the Trade Mark is not deceptively similar to the Cited Marks because there is ‘significant’ co-existence of UGG composite marks on the Register of Trade Marks (‘Register’) and in use for clothing and retail of clothing, the monopoly conferred by registration of the Cited Marks is limited to the stylised form in which the marks are registered and the predominant distinctive feature of the Trade Mark is AUSTRALIAN SHEPHERD.  Further, the Applicant submitted that the objections are inconsistent with prior decisions of this office. 

3. The Examiner was not persuaded by the Applicant’s submissions and maintained the objections in a second examination report.  Accordingly, the Applicant asked to be heard.

4. I heard this matter via videoconference as a delegate of the Registrar of Trade Marks on 2 December 2024.  Sean McManis of Davies Collison Cave Pty Ltd appeared on behalf of the Applicant (observed by Huey Liu and Zhu Sha of the Applicant) and his oral submissions were supplemented prior to the hearing with written submissions with Annexures A-H including a Declaration of Louis Wang  (‘Wang Declaration’).  Further written submissions were filed on 11 December 2024 referring to the decision of the Full Federal Court in Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd (‘Mercato’).[3]   

   [3] [2024] FCAFC 156 (Katzmann, Wheelahan and Hespe JJ).

5. As a preliminary matter, I note that the Application is subject to a presumption of registrability under s 33.  As such, if I am not satisfied on the balance of probabilities that a ground for rejection exists, I must accept the Application.  I must also consider afresh the grounds for rejection under s 44 maintained by the Examiner and I am not bound by the Examiner’s findings. While I may consider reasoning provided by the Examiner in support of the objections, ultimately I must make a decision based on my interpretation of the facts and law.

Discussion

1. Section 44 relevantly provides:

44  Identical etc. trade marks

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

(a)  the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i)  a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)  a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

1. Each of the Cited Marks is registered in the name of another person and has a priority date earlier than the Relevant Date of the Application.  Hence, I turn to the question of whether the Trade Mark is substantially identical with or deceptively similar to the Cited Marks.

2. The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):

   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] HCA 66, [12] (Windeyer J) (‘Shell’).

3. It is readily apparent on a side by side comparison of the Trade Mark and Cited Marks that there are clear differences.  The stylisation of the Cited Marks and additional words AUSTRALIAN SHEPHERD in the Trade Mark render the Trade Mark visually and aurally distinct from the Cited Marks.  There is not a total impression of resemblance and hence the Trade Mark is not substantially identical to the Cited Marks.

4. Turning to the question of deceptive similarity, s 10 provides that ‘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 determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have, in recalling the Cited Marks, to the impression they would get from the Trade Mark.[5] The probability of deception must be finite and non-trivial.[6]

   [5] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, 415 (Windeyer J).

   [6] Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020, [43] (French J).

5. The presence of a common element is not conclusive to a finding of deceptive similarity[7] and moreover, the determination of the question ‘must necessarily involve some inquiry as to the inherent distinctiveness of the part which is common to both marks under consideration’.[8]  In this regard, the Applicant argues that the term ‘UGG’ is descriptive of woollen fleece products and that composite marks containing UGG are both common on the Register and in use in relation to fashion items including clothing and the retailing of clothing.  In support of this contention, the Applicant provided details of other ‘UGG’ composite marks on the Register, screenshots of ‘UGG’ composite marks in use in Australia and the Wang Declaration. 

   [7] See by way of example Podravka Prehrambena Industrija d.d v Droga Kolinska Zivilska Industrija d.d [2008] ATMO 74, [44] (Hearing Officer I. Thompson); Conde Nast Publications Pty Ltd v Virginia Taylor [1998] FCA 864 (Burchett J); PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128 (Jagot, Nicholas and Burley JJ).

   [8] Re Frigiking Trade Mark [1973] RPC 739, 752 (Ch D).

State of the Register

1. Whilst the Applicant acknowledges that I am not bound by the state of the Register, the Applicant submits that the Register provides insight into the scope of the rights to be afforded to the Cited Marks and that it is inconsistent to maintain the objections to the Application given the co-existence of various ‘UGG’ marks with the Cited Marks.

2. In its submissions, the Applicant notes thirteen registrations and a recently accepted application for marks containing UGG and covering clothing and/or retailing of clothing in the name of a third person, although there are many more such marks on the Register.  Most of the marks relied upon are composite marks including for example:

1. Although the majority of ‘UGG’ marks on the Register are composite marks, the additional words and elements in those marks are generally non-distinctive.  Further, as the Applicant notes, there are registrations in class 25 covering clothing for MERINO CRAFT UGG and UGG EMPIRE AU and in class 35 covering retailing of clothing for JUMBO UGG and UGG STOP[9] and not specifically noted by the Applicant, UGG HUT.

   [9] Presently expired with late renewal possible until 18 December 2024.

Use of ‘UGG’ marks for clothing and retailing of clothing

1. The Applicant argues that numerous traders are using marks containing UGG in the Australian market for clothing and retailing of clothing.  The uses relied upon by the Applicant includes:

1. UGG AUSRALIA CLASSIC at which uses the mark Original UGG Australia Classic for apparel and UGG for gloves, mittens, headwear, scarves and bags;

2. UGG AUSTRALIA at for gloves, mittens, hats, bags, purses, eye masks, scarves, vests and other woollen and sheepskin products such as rugs, toys, quilts and keyrings

3. OZWEAR CONNECTION PTY LTD at which demonstrates use of UGG for bags, backpacks, gloves, mittens, headwear, scarves, cushion covers and rugs;

4. UGG ORIGINALS at illustrating use of UGG for gloves, mittens and scarves;

5. UGG BOOT FACTORY at showing use of Ugg Hoodies for ponchos;

6. UGG SINCE 1974 at for mittens, bags, purses, rugs, scarves, blankets, shoe innersoles and dog jackets;

7. UGG BOOTS AUSTRALIA at for headwear, jackets, vests, bags and belts;

8. UGG Direct at for retailing of headwear, gloves, scarves, t-shirts and hoodie blankets;

9. AUSSIE UGGWEAR at for retailing of jackets and vests; and

10. UGG OUTLET STORE at for scarves, headwear, jackets, jumpers and socks.

Wang Declaration

1. Mr Wang is the general manager of Source Co International Pty Ltd which company trades as ugg footwear.  Mr Wang has been involved in the Australian and New Zealand footwear and garment industries for over 20 years.

2. Mr Wang declares that he is aware of a ‘large number’ of Australian businesses using trade marks containing UGG or using UGG as a description in relation to footwear and other items of clothing particularly fleece lined clothing.  According to Mr Wang as a result of the common use of UGG, consumers understand the term to indicate fleece lined products and look to other words to differentiate the source of the products.

3. Whilst Mr Wang declares that he is aware of the Cited Marks and acknowledges that some consumers may recognise that stylised mark as indicated the goods of ‘a US company called Deckers’, he is of the opinion that most consumers do not recognise UGG as identifying the goods of any one trader.

Is the Trade Mark deceptively similar to the Cited Marks?

1. Against the aforementioned backdrop of the state of the Register, use of UGG in the Australian marketplace and Mr Wang’s sworn testimony that UGG is commonly used for footwear and clothing, the Applicant contends that the scope of the monopoly afforded to the Cited Marks must be narrowly construed and is limited to the stylised form in which the Cited Marks are registered. 

2. In support of these contentions, the Applicant refers to the Full Federal Court’s decision in The Agency Group Australia Ltd v H.A.S Real Estate Pty Ltd[10] which affirmed the primary judge’s finding that the marks  and THE NORTH AGENCY are not deceptively similar.  The Full Federal Court noted:

   …the primary judge reasoned that the insertion of the word “NORTH” in THE NORTH AGENCY was a substantial feature which differentiated THE NORTH AGENCY from the AGENCY Mark. He found that this word would remain in the minds of ordinary consumers with imperfect recollection. Indeed, his Honour regarded use of the word “NORTH” as “a striking aspect of the mark which points strongly against any real likelihood of confusion”, and considered that the inclusion of this word in the respondent’s brand name was alone sufficient to undermine the appellants’ argument for infringement.

   The primary judge took into account the aural impression of THE NORTH AGENCY and was satisfied that aural use of the word “NORTH” in this combination was just as striking when spoken as it was in its written form. Even so, his Honour did not regard aural resemblance as being particularly significant in the present case given the evidence before him as to the manner in which real estate services are typically acquired.

   In undertaking his analysis, the primary judge stressed the importance of considering “the whole of the marks and all of their elements”…

   In applying this principle in the present case, the primary judge stressed that the AGENCY Mark is not a word mark but a composite mark in which the stylised “A” cannot be ignored. It is an element of the composite mark which the ordinary consumer would not fail to recall. His Honour noted that this presentation of the letter “A” represents a stylised roof or house device.

   His Honour also said that it was relevant to take into account that the words “THE AGENCY” on their own have a strongly descriptive element in referring to the nature of the real estate business. His Honour said that the ordinary consumer would expect the word “AGENCY” to be commonly used in the names of real estate businesses in Australia.[11]  

   [10] [2023] FCAFC 203 (Yates, Markovic and Kennett JJ).

   [11] Ibid, [16]-[20].

3. The Full Court further commented:

   First, understanding the scope of the registered mark, as a sign, is fundamental to the infringement question. Here, the AGENCY Mark is not simply the words “THE AGENCY”. Rather, it is those words represented in a particular stylised form.

   Therefore, the exclusive right to use the AGENCY Mark in respect of the designated services that is conferred on the second appellant, as owner of the mark, by s 20 of the Act, is not the right to use the words “THE AGENCY”; it is the exclusive right to use those words represented in the particular stylised form of the mark as registered. To ignore the significance of the particular stylised form of the AGENCY Mark would be to extend its scope well beyond the monopoly that has been granted to the second appellant by registration of the mark under the Act: Australian Meat Group at [78]. This is an important matter to bear in mind, which was recognised by the primary judge.[12]

   [12] Ibid, [55]-[56].

4. The above comments regarding the scope of the monopoly of the registered mark being limited to the stylised form of THE AGENCY are supported by the recent Mercato decision where the Full Federal Court opined in relation to the mark that:

   An essential feature of the Fancy Word Mark is that it is in a fancy script. The monopoly it secures is not a monopoly over the plain word mercato. Rather, it secures a monopoly over that word as rendered in the fancy script depicted on the Register. To adapt the analysis of the Full Court (Allsop CJ, Besanko and Yates JJ) in Australian Meat Group Pty Ltd v JBS Australia Pty Ltd [2018] FCAFC 207; 268 FCR 623 at [78], to consider the Fancy Word Mark otherwise would be to extend the scope of the Fancy Word Mark well beyond the monopoly that was granted upon registration.

   The notional consumer’s imperfect recollection of the Fancy Word Mark as used across the entire range of goods and services in respect of which it is registered would, as part of that imperfect recollection, include that the word is rendered in a curly typeface. That consumer would thus understand that the word mercato only denotes the trade source of the goods to which the Fancy Word Mark is applied when that word is rendered in the distinct curly typeface that is comprised in the registered mark. There is no suggestion that the word mark MERCATO CENTRALE has been rendered in a curly typeface; indeed, as pleaded, it is neutral as to typeface. Consumers would not be caused to wonder, from this use of the mark MERCATO CENTRALE, whether the commercial origin of the MERCATO CENTRALE goods and services is the same traders as stand behind the Fancy Word Mark…[13] 

   [13]Mercato 9n3) [166]-[167].

5. Hence, the Applicant argues that the monopoly afforded by the Cited Marks is limited to the stylised form with ‘the middle G larger than the flanking U and G’.  Further, given that ‘ugg’ is descriptive of fleece lined products and ‘UGG’ marks are commonly used in relation to clothing and clothing retail, and noting the close relationship between clothing and clothing retail,[14] the Trade Mark is significantly different to the Cited Marks.  The element AUSTRALIAN SHEPHERD comprises the majority of the Trade Mark rendering it visually and aurally distinct from the Cited Marks and AUSTRALIAN SHEPHERD being two words with well-known meanings will ‘fix themselves’ in the minds of consumers giving the Trade Mark a different meaning and impression to the Cited Marks.

   [14] FanFirm Pty Limited v Fanatics, LLC [2024] FCA 764 (Rofe J).

6. I am satisfied that the Trade Mark is not deceptively similar to the Cited Marks.  I agree with the Applicant that the scope of the monopoly in the Cited Marks is limited to the particular stylised form of the word UGG and does not extend to the plain word mark.  This stylisation is an essential feature of the Cited Marks.  In circumstances, where a number of traders are using marks containing UGG or the word UGG as a descriptor for clothing and retailing of clothing, I do not believe that there is a real tangible danger that consumers will be caused to wonder whether UGG AUSTRALIAN SHEPHERD products emanate from the same source as goods bearing the mark   .  Consumers are likely to recall the element AUSTRALIAN SHEPHERD in the Trade Mark and this element distinguishes the trade mark both visually and verbally from the Cited Marks.  The Trade Mark is more different from the Cited Marks than many of the other ‘UGG’ marks in use in the Australian marketplace for clothing and retailing of clothing.  The fact that a number of these marks are not registered is immaterial to the impression that consumers have of the different ‘UGG’ marks used in Australia.  The use of various ‘UGG’ marks by different traders suggests that consumers are accustomed to distinguishing between different ‘UGG’ brands based on the stylisation or different words and elements in those marks and indicates that, on the balance of probabilities, there is not a likelihood of confusion between the Trade Mark and Cited Marks.

7. I am satisfied that the Trade Mark is not deceptively similar to either of the Cited Marks. I withdraw the grounds for rejection of the Trade Mark based on the Cited Marks.

Decision

1. I am not satisfied that there are grounds for rejecting the Trade Mark.  Trade Mark application number 2096214 should be accepted for registration.

Tracey Berger

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

18 December 2024