The Polo Lauren Company LP v Colin David Hill

[2003] ATMO 8

TRADE MARKS ACT 1995

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

Re:Opposition by The Polo Lauren Company LP to registration of trade mark application 781111(25) - POLO SPORT CLOTHING AMERICA and device - accepted for registration in the name of Colin David Hill.

Date of Decision:

30 January 2003

Delegate:

Hearing Officer Geoff Purvis-Smith

Representation:

Opponent - Mr Ben Fitzpatrick of counsel instructed by Davies Collision Cave

Applicant - Mr Michael Green of counsel instructed by Wallington-Dummer

Decision:

All grounds of opposition dismissed

Costs awarded to the applicant

Background

The official Trade Marks Office file shows that on 15 December 1998, Colin David Hill and John White lodged an application for registration of both the word trade mark POLO-SPORT AMERICA and a device mark for clothing in Class 25.  Following an amendment a few days after the original application, the word mark was abandoned, and the device amended so that it took the following form:

On 6 April 1999, Mr White withdrew as an applicant, and the application was assigned to Mr Hill. 

Following examination, the mark was accepted for registration and advertised in the Australian Official Journal of Trade Marks dated 20 May 1999.

On 19 November 1999, after the granting of extensions of time in which to do so, The Polo Lauren Company LP (Polo Lauren) lodged a Notice of Opposition to registration. The original Notice set out eight grounds of opposition, but these were supplemented by two further grounds on 16 October 2001 and 21 February 2002 respectively. The original grounds respectively relied on ss.58, 59, 43, 60, 44, and 61 of the Trade Marks Act 1995 (the Act). The additional grounds relied on ss.62(a) and 42(b). All but the s.58 ground were ultimately pursued.

Following the filing of evidence, the matter came before me as delegate of the Registrar of Trade Marks.  The hearing was conducted in Sydney on 24 October 2002. Mr Hill was represented by Mr Michael Green of counsel, instructed by Wallington-Dummer.  Polo Lauren was represented by Mr Ben Fitzpatrick of counsel, instructed by Davies Collison Cave.

Evidence

A plethora of evidence was lodged during the course of the proceedings, and I do not propose to set out the precise details of each declaration.  However, I will summarise the nature of the evidence provided, and address it, where needed, in the substantive parts of my decision.

Evidence in Support

The Evidence in Support comprises 2 declarations, by Mr Peter Stearn dated 24 May 2000 and Mr Lee S Sporn dated 3 August 2000.  Mr Stearn is company secretary of Polo Ralph Australia Pty Ltd.  His company is the Australian manufacturer, marketer and distributor of Polo Lauren goods.  Mr Stearn sets out:

• the history of Polo Lauren's trade marks in Australia - the trade marks relevantly include the words "Polo" and "Polo Sport" and, in some cases, a crest or coat of arms device or an American flag device;

• the history of Polo Lauren's international trading activities and the use of the expression "Polo Sport";

• Australian retail sales figures for clothing bearing Polo Lauren's registered trade marks; and

• details of Polo Lauren's merchandising and advertising initiatives.

Mr Sporn is Vice President of a partner of Polo Lauren.  Mr Sporn provides similar information to Mr Stearn, but on a worldwide basis.

Evidence in Answer

The Evidence in Answer comprises declarations by Mr Hill (dated 13 November 2000), Mr Richard Caliskan (dated 13 November 2000), Mr Peter Dummer (dated 13 November 2000), and a second declaration by Mr Dummer (dated 11 December 2000).

Mr Hill declares that he is a director of Polo Sportsense Pty Limited.  This company sub-contracts the manufacture of clothing in Australia and overseas for the subsequent supply to retailers in Australia.  Mr Hill states that he has been involved in this trade for the last 10 years, and that as a result, he has experience and knowledge in relation to sports and retail clothing manufacture and sale in Australia.  Mr Hill annexes a significant number of articles of clothing to his declaration, to support his assertions that:

• many clothing manufacturers, irrespective of where the clothes are manufactured, sourced or sold, use words, images or devices on their clothing which allude to the United States of America - the words, images and devices include the words "America", and "USA" and devices such as the American flag and the colours red, white and blue;

• colloquially, sports shirts of a particular style are referred to as "polos" or "polo shirts"; and

• "sports clothing" is a well-accepted, generic Australian expression which covers a wide range of casual wear.

Mr Caliskan is also a director of Polo Sportsense Pty Limited.  He has been involved in the importing and selling of clothing into the Australian market for four years.  Mr Caliskan comments on Mr Stern's evidence regarding Polo Lauren's use of heraldic crest devices, as well as Polo Lauren's use of the expression "polo" in the generic sense to describe a style of shirt.  Mr Caliskan also provides evidence of use by other manufacturers of American imagery and the word "sport".

Mr Dummer is Mr Hill's legal representative in these proceedings.  He provides:

• copies of Australian Trade Marks Office printouts for searches conducted for trade marks in Class 25, both pending and registered, which utilise various elements including lion devices, shield devices, the words "Sport", "USA", "America" and "Polo" and devices coded by the words "coat" and "arms";

• provides photographic evidence of Ralph Lauren's use of the generic expression "polo" in relation to a specific style of shirt;

• examples of generic use of the expression by other manufacturers and its application to the sport of Polo; and

• examples of the use of American imagery on clothing available in Australia.

Evidence in Reply

The Evidence in Reply consists of declarations by Mr Kenneth Taylor (dated 11 April 2001), Mr Sporn (dated 1 June 2001 and 28 September 2001), Ms Katherine Kemp (dated 7 June 2001 and 10 August 201), and 12 "trade" declarants (various dates).

Mr Taylor is a private investigator with over 25 years experience in police and investigative work.  Mr Taylor states that during the course of his investigations he spoke with Mr White - the original co-applicant.  Mr Taylor says that Mr White informed him, inter alia, that the applied-for trade mark was "designed for the purpose of capitalising on the reputation" of Polo Lauren.

Mr Sporn's evidence dated 1 June 2001 comprises criticisms and comments on the evidence in answer.  His declaration of 28 September 2001 exhibits copies of two letters received by his company which appear to have been sent by Mr White to Polo Lauren.  In the letters, the writer offers to provide evidence which would be critical of the applicant's motives in seeking registration of the applied-for trade mark, in exchange for a financial payment.

Ms Kemp is employed by Polo Lauren's representatives, Davies Collison Cave.  Her evidence comprises trade mark search results, examples of clothing, and photographs of Polo Lauren's Sydney shopfront, goods and products advertisements all of which show use of the words "Polo" and "Sport" and the American flag.

Each of the "trade" declarations takes essentially the same form.  Each declarant states that they:

• are, in some way, involved in the clothing and/or retailing trade;

• would recognise certain devices and expressions as trade marks of Polo Ralph Lauren;

• would, if they saw the words "Polo" and "Sport" being used together, associate these with the opponent or a company related to the opponent; and

• would associate the applied-for trade mark with the opponent or a company related to the opponent.

Evidence in Answer for first additional ground of opposition

The first additional ground of opposition is based on s.62(a) of the Act. Section 62(a) provides that an application may be opposed on the basis that it was improperly amended. To answer this allegation, the applicant lodged declarations by Mr Danny Goldrick (dated 19 April 2001) and Mr Hill (dated 13 November 2001) which purport to explain the process by which the trade mark was devised, and, subsequent to filing in Trade Marks Office, amended. The amendment took the form of deletion of the words "Polo Sport" from the middle of the shield portion of the device.

Evidence in Reply for first additional ground of opposition

Ms Marion Heathcote, an employee of Polo Lauren's legal representatives, provided a declaration setting out her assessment of the Trade Marks Office file record of the amendment referred to by Mr Hill in his Evidence in Answer to the first additional ground. 

Evidence in relation to second additional ground of opposition

The second additional ground of opposition is based on s.42(b) of the Act. Shortly stated, Polo Lauren alleges that Mr Hill's use of the applied-for device constitutes an infringement of copyright in the hands of "Corel Corporation" and "one mile up Inc.". The allegation is based on the fact that the device, on the applicant's own evidence, is taken from a book supplied with Corel clipart software. Ms Howe, as Evidence in Support of the second additional ground, exhibits a copy of the terms of use for both Corel and one mile up Inc. clipart.

By way of reply, the applicant relies on declarations by Mr Goldrick and Mr Dummer.  Mr Goldrick explains that the device was scanned, rather than sourced from software.  Mr Dummer's evidence comprises a response to his email enquiry of one mile up Inc. Mr Dummer also provided further evidence of his searches of the IP Australia trade marks database for pending and registered trade marks in class 25 which use the word "Polo" as an element of the mark.  Further searches were undertaken by a colleague of Mr Dummer, Ms Alexandra Heffernan.  The results of these searches and inquiries are annexed to her declaration dated 3 July 2002.

Finally, in reply, Ms Howe provided evidence which sought to establish that the coat of arms which was incorporated into the applied-for device was in fact the unofficial coat of arms of a District in the Dalac Province of Vietnam.

Grounds of Opposition and Findings

At the hearing, Polo Lauren pursued the grounds of opposition based on ss.44, 60, 43, 61, 42, 59 and 62. Polo Lauren also questioned whether the amendments to the application had been carried out in accordance with s.65.

Section 44

Section 44 provides that a trade mark application must be rejected if the applied-for trade mark is substantially identical with or deceptively similar to a trade mark which has an earlier priority date, and which is in respect of similar goods.

Here, the opponent states that the applied-for trade mark is deceptively similar to registered trade mark number 753108:

753108 is registered in the name of Polo Lauren.  It has a priority date of 20 January 1998.  This is earlier than the applied-for trade mark.  The registration covers clothing, headgear, footwear, excluding clothing, headgear and footwear specifically designed for use in the playing of the game of polo in class 25.  I am satisfied that the goods in question are similar goods.

Accordingly, two of the three elements are immediately satisfied.  This leaves only the last question - whether the applied-for trade mark is deceptively similar to Polo Lauren's trade mark number 753108 - to be determined.

The tests for deceptive similarity are the familiar ones, laid down in Shell Co. v. Esso Standard Oil[1], Australian Woollen Mills Ltd v FS Walton & Co Ltd[2], and Re Application by the Pianotist Co Ltd[3].In Shell, Windeyer J said at 415:

[1] (1963) 109 CLR 407 at 415 per Windeyer J

[2] (1937) 58 CLR 641 at 658 per Dixon and McTiernan JJ

[3] (1906) 1A IPR 379 at 380; 23 RPC 774 at 777 per Parker J

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is the 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 impression that such persons would get from the defendant's television exhibitions.

In Australian Woollen Mills, their Honours Dixon and McTiernan JJ said at 658:

An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.

The application of the tests to the 1995 Act has been confirmed French J in Registrar of Trade Marks v Woolworths[4] (the Woolworths Metro case) at paragraph 50 where he stated:

[4] [1999] FCA 1020

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.

Similar tests were confirmed in MID Sydney Pty Ltd v Australian Tourism Co Ltd[5].

[5] (1998) 90 FCR 236, 245-6

Case law also establishes that, in applying the traditional tests, one may also take into account the incorporation of prominent, distinctive or essential features of one mark into another (see for instance De Cordova v Vick Chemical Co[6]; Polo Textile Industries Pty Ltd  v Domestic Textile Corporation Pty Ltd[7]; and Companhia Souza Cruz Industria E Comercia v Rothmans of Pall Mall (Australia) Ltd[8]) or common ideas (see Jafferjee v Scarlett (1937) 57 CLR 115 and Sports Cafe Ltd v Registrar of Trade Marks[9]).

[6] (1951) RPC 271

[7] (1993) 42 FCR 227, 231-2

[8] (1988) 41 IPR 497, 503

[9] 42 IPR 552

Here, Polo Lauren asserts that the trade marks share the words "Polo Sport" and an reference to the United States of America.  I do not believe that the opponent disagrees with this.  For my part, I am satisfied that the marks in question do share these common elements.  However, for the reasons that follow, I am not satisfied that, when the marks are considered in their proper context, the commonality is sufficient to lead consumers into deception or confusion.

Polo Lauren asserts that as it is the only Australian registered owner of trade marks which include the ungrammatical and unusual words "Polo Sport", use of those words on clothing will lead consumers to believe that goods carrying those words are in some way connected to the opponent.  The applicant, on the other hand, submits that it is inappropriate to focus one's assessment entirely on "Polo Sport".  Mr Green, on behalf of Mr Hill, submits that, having regard to the tests to which I have already referred, I must instead take into account the complete marks, the way in which the common features are used within the mark, and the manner in which the applied-for trade mark will be used.  Only then will I be able to objectively and fairly assess the impression that will be left in the minds of consumers, and the extent to which they may be deceived or confused.

On a close reading of the authorities, I am satisfied that the second approach is the correct one.  Therefore, I cannot concentrate only on the common aspects of the trade marks and ignore the balance.   

What then is the impression likely to be taken away from Polo Lauren's registered mark?  Consumers will have different reactions and different recollections of certain marks.  To an extent, this will be influenced by their life experience and purchasing patterns.  I must also take into account the goods for which registration has been allowed.  Here, the goods covered by the registration are clothing, headgear, footwear, excluding clothing, headgear and footwear specifically designed for use in the playing of the game of polo.  Therefore, the words "Polo Sport" are largely non-descriptive. Had the goods in question not specifically excluded clothing designed for use in playing polo, they could have been almost entirely descriptive and not unexpected.  However, as polo clothing is expressly excluded, I agree with the opponent that the phrase is an unusual, ungrammatical combination.  The phrase is also prominent in the mark.  As such, it is capable of being the most memorable aspect of the mark.  However, the analysis cannot stop there.  I must take into account the balance of the trade mark.  To my mind, both the phrase "Ralph Lauren" and the American flag are prominent.  In the circumstances, I believe that the words "Ralph Lauren" play a significant role in the trade mark.  They define the exact source of the products to which the trade mark is applied.  As such, they are a memorable element of the mark.  The American flag on the other hand, given the propensity for clothing manufacturers to use images of America, is much less memorable.  It is unlikely to be used by consumers to recall or identify goods.

Similarly, the applied-for trade mark contains two memorable elements - the words "Polo Sport" and the crest device. For the reasons set out in the last paragraph, the word "America" is unlikely to be remembered.  The word "Clothing" as a descriptive element, is unlikely to be memorable. 

The question therefore is whether the applicant's "Polo Sport" and crest device are sufficiently dissimilar in the imperfect recollection of consumers from the opponent's "Polo Sport" and "Ralph Lauren". 

I believe they are.  I  believe that the real, tangible risk of deception or confusion does not arise.  I believe that consumers will place significant emphasis on the "Ralph Lauren" element in trade mark 753108.

I come to the same conclusion in relation to potential aural use of the marks. I believe that consumers and members of the trade are likely to use the words "Ralph Lauren", either alone or in connection with the words "Polo Sport " when verbally requesting or referring to the goods. I see no reason to expect why, in s.44 terms, consumers would drop a particular aspect of the trade mark in question in preference to another.

Finally, Polo Lauren alleges that the trade marks share a common idea - that of clothing for use in the sport of Polo, together with a reference to the United States of America.  While this may be true, I am not satisfied that it will be sufficient to lead consumers into deception or confusion.  This is in line with the decision in Sports Cafe Ltd v Registrar of Trade Marks[10], where the Full Federal Court stated:

[10] 42 IPR 552 at 557

The fact that two marks convey a common idea becomes relevant only if the marks themselves look and sound alike. Commonality of idea might then tip the balance in favour of a finding that the likeness is deceptive.

For these reasons, I am not satisfied that the applied-for trade mark is deceptively similar to 753108.  The ground is therefore dismissed.

Section 60

Section 60 provides:

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

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

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

The opponent relies on a range of trade marks including those which utilise the expression "Polo Sport".  Only some of these trade marks also include a reference to America.  The opponent submits that these various trade marks enjoy a substantial reputation, built up since 1967, both in Australia and overseas.

For the purposes of s.60, Polo Lauren has the burden of establishing that:

• its trade marks enjoyed a reputation in Australia as at the priority date;

• that the applied-for trade mark is substantially identical with, or deceptively similar to these trade marks; and

• that, as the result of the reputation of the opponent's trade marks, use of the applied-for trade mark would cause deception or confusion.

To support its case, Polo Lauren relies on its history and commercial activities in both Australia and overseas.  Specifically, Polo Lauren's evidence indicates that, since the first use of the "Polo" trade mark in 1967, various Polo marks (including Polo by Ralph Lauren, Polo and coat of arms device, Polo Sport Ralph Lauren and device and RLX Polo Sport) have been used throughout the world.  The trade marks have been used on clothing and accessories, and as the names of stores.  The breadth of exposure, the value of sales, and the extent of advertising throughout the world for the trade marks is impressive.  However, the usefulness of these facts in determining the reputation in the specific Polo Sport trade marks on which Polo Lauren relies, as at the date of application and in Australia, is limited.  The reputation in Australia cannot be assumed - it must still be established as a question of fact - per Lockhart J in Conagra Inc v McCain Foods (Aust) Pty Ltd[11].

[11] (1992) 33 FCR 302

Here, the evidence is presented in such a way that I cannot ascertain the value of sales of "Polo Sport" products in Australia.  Rather, the figures that have been provided by Mr Stearn are for sales of all clothing items bearing the "POLO marks".  By Mr Stearn's own definition, "POLO marks" includes more than the POLO SPORT marks.  Similarly, the evidence of sales given by Mr Sporn relates to trade marks comprising a multitude of POLO marks and devices, only two of which incorporate POLO SPORT.  Therefore, I have no way of knowing how much product has been sold under the relevant POLO SPORT trade mark.

Further, while Mr Stearn states that the first POLO SPORT flagship store opened in America in 1993, I was not taken to any evidence that any Australian knew of this store or that the trade mark had gained a reputation in Australia.  The first Australian use of the POLO SPORT trade mark appeared to be related to the opening of a POLO SPORT store in Sydney in June 1998.  The first advertisements in relation to the opening of this store were placed in Vogue Men and the Australian Financial Review Magazine in March and April 1998 (Exhibit PS9).  The advertisements included dates for the proposed opening, a representation of trade mark 753108 and the address of the new store.  The Vogue Men advertisements also included a picture of a man wearing a t-shirt which carried the letters "USA" above the words "Polo Sport".  In the period prior to the application date (December 1998), Exhibit PS8(I) indicates that Polo Lauren ran the following advertisements which used the expression "Polo Sport":

• Mens Health September issue;

• Inside Sport October issue;

• Billboard in Sydney Metro for the months of September and October;

• Mode/Harpers August issue;

• Marie Claire August issue; and

• Marie Claire September issue.

These are insufficient, of themselves to show that a reputation had been garnered by December 1998.  When invited to do so, counsel for Polo Lauren was unable to take me to any other evidence which showed Australian marketing or advertising in the period prior to December 1998.  Nor were the trade declarations of great assistance in determining what reputation had been garnered by the relevant time - each declarant expresses his or her opinion in the present tense, and makes no reference to a reputation in the expression POLO SPORT prior to December 1998.

Accordingly, I have only a limited number of advertisements and the opening of a single store to support an assertion that the required reputation existed. I have no sales figures for the relevant period, nor do I have any relevant market or trade opinion. It is one thing to advertise and sell goods, it is quite another to show that they have garnered a reputation which is sufficient to lead consumers into deception or confusion and to satisfy the requirements of s.60. On this basis, I am not satisfied that the requisite reputation existed, and the must be rejected.

Section 43

Section 43 provides that registration may be refused if, because of some connotation that the trade mark (or a constituent part of the trade mark) has, the use of the trade mark is likely to deceive or cause confusion.

T.G.I. Friday's Australia Pty Limited v TGI Friday's Inc. [2000] FCA 720, confirms that the connotation must be in the mark itself, and cannot be determined as the result of external considerations, such as reputation. Rather, the applied-for trade mark must be deceptive on its face in the sense that it connotes that the goods or services to which the trade mark is to be applied have a quality or attribute which they do not actually possess. Such a false connotation may arise in cases where the trade mark falsely claims an actual attribute or property, or where consumers will be deceived or confused into thinking that the product is sponsored, endorsed or somehow connected with another individual. The latter will arise only where the expression or name in question has achieved a currency in general language or amongst the specialist audience to whom the goods or services will be made available - see for instance Twentieth Century Fox Film Corporation v Durkan[12] and George Schmidt v Down to Earth (Victoria) Co-Operative Society Limited[13].

[12] 47 IPR 651

[13] 41 IPR 632

Polo Lauren submits that the applied-for trade mark conveys two erroneous connotations.  The first is based upon its general reputation, and the likelihood that consumers will incorrectly infer that goods carrying the applied-for trade mark are in some way connected with the opponent.  The second rests on the argument that consumers, when presented with goods carrying a geographic indication, will assume that the goods have some factual connection with that location.

I will deal with the second argument first.  While noting the decision in the Yanx case[14], I believe that Australian culture and retailing has changed to the extent that consumers do not always assume that a product which carries the name of a country is actually sourced from that country.  The most obvious examples are those of national and club sporting jerseys.  I do not believe that the situation is substantially different when one takes into account trade mark use.  I was not taken to any evidence by the opponent to suggest that, when consumers are presented with the applied-for trade mark, or indeed the trade marks of the applicant which refer to the United States, they assume the products are made in or made by a company located in the United States.  As such, the submission remains conjecture and is insufficient to satisfy the onus that the opponent bears.

[14] The Registered trade mark "YANX"; Ex parte Amalgamated Tobacco Corporation Ltd (1951) 82 CLR 199

Similarly, the opponent bears the burden of establishing that the applied-for trade mark connotes some connection or association with the opponent.  This is essentially a two-step process.  Firstly, the opponent should show that the expression in question enjoys a currency in language in Australia.  In other words, were consumers to be confronted with a particular image or expression, it would mean something specific to them.  Secondly, as a result of that recognition, they would be caused to wonder as to whether the goods or services to which the image or expression had been applied were connected to another entity. 

Here, the relevant image is:

Polo Lauren says that, as the result of their use of the expression "Polo Sport" in conjunction with crests, consumers or relevant parts of the community (in this sense, members of the clothing trade), would assume that the applicant's mark is in some way connected with the Polo Lauren.  The evidence to support this can be found in the trade declarations, where the declarants state not only their impression of the applied-for trade mark, but what they believe consumers would think as well.

However, as I indicated in relation to s.60, none of the declarants address the position as at the priority date. Therefore, I cannot be satisfied that the connotation, if it exists at all, existed at or before the priority date. The decision in Southern Cross (supra) confirms that the rights of the parties are to be determined as at the date of application.[15]  As such, the opponent has failed to meet its onus in this respect as well.

[15] op cit at 595

The ground must therefore be dismissed.

Section 62(a), 64 and 65

The original application for registration was amended within several days of being lodged with the Trade Marks Office. As such, and for the reasons set out below, the specific details of original application were not entered onto the Trade Marks Office database. However, the opponent alleges, and the applicant concedes, that the trade mark, as originally filed, included the words "Polo Sport" in the middle third of the shield, and the shading of the bottom two thirds of the shield was darker than the top third.

Section 64 allows amendments, prior to the entry of the trade mark application details on the electronic Trade Marks database.  Section 65 allows amendment of a non-substantial nature after the details have been entered on the database.  In the present case, the database shows that the trade mark details were entered on 21 December 1998.  It appears from the file that the details that were entered were different from those that had originally been applied for.  It appears from all the material before me, that the Trade Marks Office determined that the original application contained an obvious error, in that the applicants had inserted the words "Polo-Sport America" on the front page of the application, but attached a different device mark to the sheet used for scanning device marks into the electronic database.  It is the Registrar's practice, where such a discrepancy exists, to ask the applicant which of the representations is actually being sought.   As a response to this inquiry it appears that the applicants, on 15 December 1998, indicated that they wished to apply for device mark, a copy of which was provided to the Trade Marks Office .  This device mark was then attached to the application form by the Trade Marks Office and scanned into the database.  The database record does not show the words "Polo Sport" in the shield, or the different shading in the bottom two-thirds of the shield.  Accordingly, I do not believe that any substantial amendment was made subsequent to publication on the database and s.65 is of no relevance.  In terms of s.64, I believe that the amendment was made to correct an obvious error.  This was done prior to the entry of the application details on the electronic database.  Therefore, I am not satisfied that the amendment was improperly allowed or performed.  This ground therefore fails.

Section 61

Section 61 provides:

Trade mark containing or consisting of a false  geographical indication

61.(1) The registration of a trade mark in respect of particular goods (relevant goods) may be opposed on the ground that the trade mark contains or consists of a sign that is a geographical indication for goods (designated goods) originating in:

(a) a country, or in a region or locality in a country, other than the country in which the relevant goods originated; or
(b) a region or locality in the country in which the relevant goods originated other than the region or locality in which the relevant goods originated.

(2) An opposition on a ground referred to in subsection (1) fails if the applicant establishes that:

(a) the relevant goods originated in the country, region or locality identified by the geographical indication; or
(b) the sign has ceased to be used as a geographical indication for the designated goods in the country in which the designated goods originated; or
(c) the applicant, or a predecessor in title of the applicant, used the sign in good faith in respect of the relevant goods, or applied in good faith for the registration of the trade mark in respect of the relevant goods, before:

(i) 1 January 1996; or
(ii) the day on which the sign was recognised as a geographical indication for the designated goods in their country of origin;

whichever is the later; or

(d) if the registration of the trade mark is being sought in respect of wine or spirits (relevant wine or spirits)—the sign is identical with the name that, on 1 January 1995, was, in the country in which the relevant wine or spirits originated, the customary name of a variety of grapes used in the production of the relevant wine or spirits.

(3) An opposition on a ground referred to in subsection (1) also fails if the applicant establishes that:

(a) although the sign is a geographical indication for the designated goods, it is also a geographical indication for the relevant goods; and
(b) the applicant has not used, and does not intend to use, the trade mark in relation to the relevant goods in a way that is likely to deceive or confuse members of the public as to the origin of the relevant goods.

Note 1:  For applicant, predecessor in title and geographical indication see section 6.

Note 2:  For originate (in relation to wine only) see section 15.

Polo Lauren submits that the use of the expression “America” in the applied-for trade mark constitutes a geographical indication for the goods.  On the other hand, the applicant submits that, inter alia, the expression does not fall within the definition of geographical indication contained in s.6 of the Act. 

Section 6 provides:

geographical indication, in relation to goods originating in a particular country or in a region or locality of that country, means a sign recognised in that country as a sign indicating that the goods:

(a) originated in that country, region or locality; and

(b) have a quality, reputation or other characteristic attributable to their geographical origin.

Applying this definition, I do not believe that the applied-for trade mark includes a geographical indication.  While it does allude to America, this does not, of itself, give rise to an indication that the goods have a quality, reputation or other characteristic attributable to America.  Something more is needed. For instance, evidence may be brought which establishes that the United States is known for the quality of its garments.  However, here there was no such evidence.  This means that the opponent has failed to meet its onus and the ground must fail.

Section 42

Following the decision of Madgwick J in Advantage Rent-A-Car[16], the Registrar is obliged, when assessing whether use would be contrary to law under s.42(b), to take into account the operation of laws and legislation other than the Trade Marks Act 1995. Here, Polo Lauren alleges that use of the trade mark would contravene ss.52 and 53(c) and (d) of the Trade Practices Act 1975 (TPA) on the basis that use would lead consumers into thinking that the applicant’s goods were in some way connected with the opponent. Polo Lauren also alleges that the use of “America” in the trade mark would contravene s53(eb) in that it would amount to a false representation that the origin of the goods is the United States. There was also some debate as to whether use of the trade mark would amount to a breach of copyright as a significant portion of the device appears to be a regional crest extracted from a copyright protected book.

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

In the Advantage Rent-A-Car case, Justice Madgwick confirmed that the test to be satisfied was that use would, rather than could, be contrary to law.  Therefore, I am to determine, on the balance of probabilities, and on the basis of a hypothetical case which takes into account all the evidence and submissions before me, whether use of the applied-for trade mark on clothing would cause, or be likely to cause consumers to be misled or deceived.  The relevant standard to be applied is that there must be a "real or not remote chance or possibility" of a reasonably significant number of people being misled or deceived.[17]

[17] See for instance Equity Access Pty Limited v Westpac Banking Corporation (1989) 16 IPR 431

In relation to ss.52 and 53(c) and (d), for the reasons I have already provided, I am not satisfied that consumers would be deceived or confused pursuant to ss.44 or 60. For present purposes, the deceive or confuse test is sufficiently similar to the mislead or deceive test laid down in the TPA. On this basis, I am not satisfied that use of the applied-for trade mark would contravene ss.52 or 53 of the TPA.

In relation to s.53(eb), I am not satisfied that consumers will be misled into thinking that the applicant’s goods are manufactured in or sourced from the United States. The opponent has not satisfied me that when consumers see the word "America" on clothing, they will be led to believe that the article is in fact sourced from or in some way associated with America. On the contrary, I prefer the applicant's submission that a reference to America is merely a reference to the culture of America, rather than as a false indicator of source or attribute.

This argument must also fail.

In relation to the copyright and licence arguments, there is nothing before me which establishes that copyright subsists in the shield device. I have not been shown how the publisher or creator of the clip-art book has gained its own proprietorial interest in the shield device.  It may be that they have a protectable interest in the clip-art collection and the use of the digitised image in their software, but this does not necessarily mean that they have any legitimate copyright interest in the device itself.  The crest may in fact be the property of the province from which it originated, and the clip-art publishers have used it without permission.  There may be defences available to the applicant under the law, including the Copyright Act.   Further, the questions regarding ownership of the device has the capacity to call the enforceability of the licence into question.  Finally, even if it is an enforceable licence, I am not satisfied that the requisite licensor/licensee relationship exists between the relevant entities.  For all these reasons, I am not persuaded that the opponent has satisfied its onus of proving that use would, rather than could be contrary to law.

There being no reason to believe that use of the applied for trade mark would amount to a contravention of the law, I dismiss this ground.

Section 59

Section 59 provides:

Applicant not intending to use trade mark

59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Polo Lauren alleges that the applicant has no bona fide intention to use the applied-for trade mark.  It states that the lack of bona fide intention is demonstrated by the lack of consistency in the evidence as to how and why the trade mark was created and applied for.  In essence, Polo Lauren alleges that Mr Hill’s intention to use the trade mark is irredeemably flawed on two bases.  Firstly, because the trade mark has not been used to this point, and secondly, because the trade mark was authored in bad faith. 

In relation to the first point, I am not satisfied that the opponent has established that Mr Hill lacks the relevant intention.  It is entirely reasonable for an applicant to withhold production using the applied-for trade mark until such time as the opposition process has been concluded.  This is not sufficient, of itself, to mean that the applicant never had or has now lost the intention to use.

In relation to the second point, the opponent relies on the evidence of Mr Taylor and Mr Sporn.  Put simply, the evidence of Mr Taylor is that Mr White told him that he and Mr Hill had filed the application to profit from the reputation of the opponent.  The letters annexed to Mr Sporn’s declaration were purportedly written by Mr White and they amount, if believed, to an offer to give paid evidence.

I have two difficulties with this evidence.  Firstly, the evidence of Mr Taylor is simply hearsay.  While I am not bound by the formal rules of evidence, I do not propose to disregard them altogether.  I am not satisfied that it is safe to rely on Mr Taylor’s evidence.  This is not a criticism of Mr Taylor, but rather, recognition that he can only report what he is told.  He, and I, have no way of knowing whether Mr White was being truthful to him or not, or whether his statement, if it was made at all, was motivated or affected by a breakdown in the business relationship of Mr Hill and Mr Taylor.  The same difficulty arises with the letters attributed to Mr White.  I have no way of knowing whether the letters were in fact written by Mr White, were a serious (if misguided) offer, or a forgery.  Again, this is not to criticise Mr Sporn or the opponent – they did the appropriate thing by raising the matter with the Trade Marks Office.  However, I am not satisfied that it is safe to rely on this evidence to find that the relevant intention was never present, or, if it were relevant, was motivated by malice.

Therefore, I am not satisfied that this evidence establishes a lack of relevant intent at the relevant time.

I have already dealt with the copyright issue under s.42(b). Polo Lauren however alleges that the use of the device affects the applicant’s ability to have a bona fide intention. For the reasons I have already mentioned, I am not satisfied that the allegation of a breach of copyright, or for that matter, a breach of license, is made out. I will not therefore take it into account in determining this ground.

This ground is dismissed.

Section 62

Section 62 provides:

Application etc. defective etc.

62. The registration of a trade mark may be opposed on any of the following grounds:

(a) that the application, or a document filed in support of the application, was amended contrary to this Act;
(b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.

Note:  For file see section 6.

Polo Lauren alleges that the applicants were not free at law to apply for the trade mark, as they neither had a licence or permission to use the relevant crest device.  For the reasons I have already provided, I am not satisfied that the applicants were, or that Mr Hill is, in breach of any law relating to the use of the device.  As such, I see no reason to find that the application was accepted on the basis of evidence or representations that were false.

This ground is dismissed.

Summary and Costs

I have found that none of the grounds of opposition have been made out.  Subject to the expiry of one month from the date of this decision, and the payment of any outstanding fees, the application may proceed to registration.

In terms of costs, I direct that the opponent pay the applicant's costs in accordance with Schedule 8 of the Trade Marks Regulations 1995.

Geoffrey Purvis-Smith

Hearing Officer

Trade Marks Hearings

31 January 2003