The Polo/Lauren Company LP v Horse Australia Pty Ltd
[2018] ATMO 150
•19 September 2018
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReOpposition by The Polo/Lauren Company LP to registration of trade mark application 1469962 (35) – JUST POLO X (logo) - in the name of Horse Australia Pty Ltd
Delegate: Robert Wilson
Representation: Opponent: Davies Collison Cave Pty Ltd
Applicant: Self-represented
Decision: 2018 ATMO 150
Trade Marks Act 1995 (Cth) - Section 52 opposition – pre Raising the Bar amendments - ss 42(b), 44, 58, 59, 60 and 62A considered – no ground established – trade mark may proceed to registration
Background
1. This decision concerns an opposition brought by The Polo/Lauren Company LP (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’)[1] to registration of the trade mark the subject of the application detailed below in the name of Horse Australia Pty Ltd (‘the Applicant’):
[1] The filing date of the application precedes the amendments made to the Act and the Trade Mark Regulations 1995 (Cth) (‘the Regulations’) which occurred as a result of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 and the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No.1). Consequently, much of the opposition has been conducted in accordance with the Act and the Regulations as they were at the filing date.
Application Number:
1469962
Filing Date:
17 January 2012
Services:
Class 35: Promotional marketing
(‘the Applicant’s Services’)
Trade Mark:
(‘the Applicant’s Trade Mark’)
2. On 3 May 2012 the application’s acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks. Following the grant of an extension of time to do so, the Opponent filed a Notice of Opposition on 2 November 2012 (‘the NOO’). As was typical for Notices of Opposition at the time, the Notice took what I describe as a scattergun approach and nominated eleven grounds of opposition under ss 41, 42(b), 43, 44, 58, 58A, 59, 60, 62(a), 62(b) and 62A of the Act.
Evidence
3. The Opponent filed Evidence in Support of its opposition (‘EIS’) consisting of:
Declaration made on 4 August 2014 by Marion Heathcote, a registered trade mark attorney and solicitor at the Opponent’s representative, with Exhibits MH-1 and MH-2 (‘the Heathcote declaration’); and
Declaration made on 31 October 2014 by Anna Dalla Val, the Vice President and Secretary of International Trade Marks for PRL International Inc (a Delaware Corporation) (‘PRL’), with Exhibts PRL-1 to PRL-10 (‘the Val declaration’). Ms Val indicated that PRL is the General Partner of the Opponent.
4. The Applicant did not file any evidence in answer.
Negotiations and suspension
On 2 April 2015 the Opponent requested an oral hearing. The hearing was set down for 17 August 2015. A delegate of the Registrar of Trade Marks was allocated to the matter and directions for the filing of written submissions were sent to the parties on 13 July 2015. On 3 August 2015 the Opponent indicated that the parties were in settlement negotiations and requested that the hearing date be vacated. The hearing date was vacated and the parties were advised that the matter would be suspended for six months to facilitate the negotiations. The advice requested that IP Australia be kept informed of the progress of the negotiations.
6. Nothing further was heard from the parties and on 3 April 2018 correspondence was sent to the parties requesting an update on the settlement negotiations. Only the Opponent responded to the request, indicating that negotiations had been unsuccessful and that the Applicant had been unresponsive. The Opponent noted that the Applicant had been deregistered since 5 June 2016. The Opponent provided a printout from ASIC which confirmed this. The Act does not provide for refusal of the application in the circumstances described, and the Registrar is obliged to make a decision on the opposition. That being the case, the Opponent requested to be heard.
7. The matter was set down to be heard on 6 July 2018. I was allocated as a delegate of the Registrar to hear the matter. I accordingly, sent directions for written submissions to the parties: including to the last available contact for the Applicant. The Opponent provided written submissions as required by the directions (‘the Opponent’s submissions’). The Opponent also indicated that in the absence of any submissions or response by the Applicant it would rely on its written submissions.
8. No response was received from the Applicant and I note that apart from the apparent agreement to suspend the matter for the purposes of negotiation, the Applicant has taken no part in the opposition process. I have therefore decided the matter on the written record which comprises the NOO, the EIS and the Opponent’s submissions.
The Opponent
9. In her declaration Ms Val refered to PRL and the Opponent collectively as ‘Polo’ and declared:
Since 1967, Polo has carried on the business of designing, manufacturing and marketing articles of contemporary high quality men's clothing. Since at least as early as the mid 1970's Polo has carried on the business of designing and authorising the manufacture of, and promoting the sale of, articles of contemporary high quality women's and children's clothing and accessories. In recent years, Polo has also carried on the business of designing, authorising the manufacture of, and promoting the sale of contemporary high quality home furnishings. …
Polo is the proprietor worldwide of a number of trade marks, including without limitation trade marks containing or comprising of the mark POLO and/or containing or comprising of the following device of a polo player on horseback (collectively referred to as the ‘Polo Trade Marks’):
In 1971, Polo’s first free standing POLO store marketing Polo’s clothing, footwear and headgear and other goods labelled with the Polo Trade Marks was opened in Beverly Hills, United States of America. The first international POLO store opened in 1981 in London … In 1986, a POLO store was opened on Place de la Madelaine, Paris. …
Since the development of the Polo Trade Marks, global flagship stores have opened in the following locations in the following years:
LOCATION
YEAR
London, United Kingdom
1981
Paris, France
1986
New York, USA
1986
Chicago, USA
1997
Sydney, Australia
1998
Milan, Italy
2004
Tokyo, Japan
2006
Moscow, Russia
2007
Connecticut, USA
2009
New York (second store), USA
2010
Paris (second store), France
2010
Nagoya, Japan
2013
Hong Kong
2013
New York (third store), USA
2014
In addition to selling its products bearing the Polo Trade Marks in the various free standing stores, products bearing the Polo Trade Marks are sold in department stores and speciality stores throughout the world. Upscale department stores also include the ‘shops within shop boutiques’ dedicated exclusively to products of Polo. The first such boutique store opened in Bloomingdales in New York in 1971.
In 1998 there were in existence 4,500 Polo Ralph Lauren ‘shops-within-shop boutiques’ around the world, 43 free-standing stores in the United States and 76 international stores (collectively referred to as ‘Doors’). As of 28 March 2009, Polo had more than 6,097 Doors throughout the world, including 326 free-standing stores, but excluding outlets in the Asia/Pacific region where Polo’s products are distributed by licensees, including Australia. …
Polo adopted the trade mark POLO for use in relation to clothing in 1967.
The Polo Player Device was adopted in 1971.
The Polo Player Device was first used by Polo in the United States of America in relation to clothing articles on 12 December 1972 and subsequently in relation to small leather goods such as bags, satchels, clutches, cosmetic bags, grooming kits, coin purses, wallets and key cases on 30 December 1975. Subsequently, use of the Polo Player Device extended to watches, clocks, watch bands and jewellery on 1 January 1976, to rugs and wallpaper on 6 December 1993, to towels, sheets, pillowcases and other home goods on 1 October 1983, and to rattan and wicker furniture on 31 May 1985.
Much reputation and goodwill has accrued in and to the Polo Trade Marks, and in particular the trade mark POLO and the Polo Player Device, through extensive use and advertising throughout the world. …
I am aware that Polo’s products bearing the trade mark POLO and/or the Polo Player Device were sold in Australia by Polo from 1987 to May 1989. From May 1989 Polo has continuously marketed and distributed its products bearing [the] trade mark POLO and/or the Polo Player Device throughout Australia through its authorised licensee, Polo Ralph Lauren Australia Pty Ltd …
The Opponent is the owner of the Australian trade marks listed below (collectively ‘the Opponent’s Trade Marks’):
| Trade Mark number | Trade Mark | Priority Date | Goods |
| 382189 | 7 Oct 1982 | Class 25: All goods in this class excluding clothing and footwear designed specifically for polo players | |
| 464821[2] | 8 May 1987 | Class 35: Advertising and business services, relating to the manufacture and/or marketing of clothing and fashion accessories | |
| 583023 | POLO | 21 July 1992 | Class 14: All goods in this class excluding smoker's requisites made of precious metals |
| 583024 | 21 July 1992 | Class 14: All goods in this class | |
| 943887[3] | POLO | 14 Feb 2003 | Class 25: Clothing, footwear and headgear excluding clothing for the sport of polo, polo shirts and polo neck garments |
| 1325156 | 12 Oct 2009 | Class 25: Clothing, footwear and headgear Class 35: Retailing services, including retail store services and retailing over the internet |
[2] This trade mark has the endorsement: ‘Registration of this trade mark shall give no right to the exclusive use of the device of a POLO PLAYER. The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.
[3] This trade mark has the endorsement: ‘Provisions of paragraph 44(3)(b) applied.’
The Applicant
As indicated above, the Applicant has filed no evidence, nor has it taken any significant part in the proceedings. Consequently, I am unable to provide any background information about the Applicant.
Grounds of Opposition, Onus and Standard of Proof
In its submissions the Opponent indicated that of the grounds initially indicated in the NOO, it is pressing only the grounds of opposition under to ss 42(b), 44, 58, 59, 60, 62A.
The onus of proof in an opposition rests upon the Opponent.[4] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[5] The date at which the rights of the parties are to be determined is 17 January 2012, being the filing date of the application (‘the Relevant Date’).[6]
Discussion
[4] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[5] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].
[6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].
Section 60
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.
To establish the ground of opposition under s 60 the Opponent must demonstrate that at the Relevant Date there was another trade mark which had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Applicant’s Trade Mark would be likely to deceive or cause confusion. The Opponent has submitted that:
[T]hrough extensive use and advertising throughout the world … that the use made of [the Opponent’s Trade Marks] for its particular goods and services has been more than sufficient to establish the requisite degree of reputation.
In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in s 60, reputation is ‘the recognition of the [trade mark] by the public generally’.[7] Her Honour quoted with approval the following words of Lockhart J from 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 …[8]
[7] [2000] FCA 1335, [81].
[8] [1992] FCA 159, [118].
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.[9]
[9] Jackson International Trading Co Kurt D Bruhl GMbH & Co KGv Hugo Boss AG [1999] ATMO 23 (Thompson).
A brief history of the Opponent’s business was provided at para 9, above. The EIS supports a view that the POLO trade mark and the Polo Player Device have acquired a significant reputation in Australia in respect of a wide variety of goods including clothing, and also in respect of the retailing of those goods (‘the Opponent’s Goods and Services’). There is no evidence nor are there submissions from the Applicant which might cast a doubt on the veracity of the EIS and I am satisfied that the plain word POLO and the Polo Player device have acquired significant reputations. It is not sufficient, however, that the Opponent merely establish that its trade marks have acquired significant reputations, I must also be satisfied that because of that reputation use of the Applicant’s Trade Mark would be likely to deceive or cause confusion.
Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:
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 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 observations of men considered in the mass affords the standard.[10]
[10] (1937) 58 CLR 641, 658.
The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:
‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case. [11]
[11] [1979] RPC 410, 423 (citations omitted).
It is well established that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J put it in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:
A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.[12]
[12] (1997) 38 IPR 495, 501(citations omitted). His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are no less applicable to s 60 of the current Act.
In Registrar of Trade Marks vWoolworths Ltd French J highlighted the following further matters concerning confusion:
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.
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.[13]
[13] [1999] FCA 1020, [50]. These considerations by French J are a restatement of the principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.
The Applicant’s Trade Mark contains a number of elements, notably a device of a person on horseback. This device is very similar to the Polo Player device: both are a person on horseback, in both the rider is leaning to the side, and in both the rider appears to be grasping a mallet or racquet. There are some differences between the devices, however, the rider is leaning in the opposite direction and the racquet or mallet is held at a different angle.
A somewhat similar comparison to the present one was made by a delegate of the Registrar in The Polo/Lauren Company LP v Phillip.[14] That case included a comparison between what was essentially the Polo Player device and the trade mark shown below:
[14] [2012] ATMO 45.
| (‘the CP Trade Mark’) |
The delegate in that matter noted, and I agree:
It is, in my consideration, highly improbable that potential purchasers of the parties’ goods would remember and recall the precise orientation of the horses, the placement of their legs, the angle formed by the uplifted mallets or the particular poises of the riders and use those recollections as a basis for differentiation between the trade marks. Indeed, as I have indicated, such an analysis necessitates having the trade marks before the purchaser for a detailed side by side comparison of the type which would almost never occur when contemplating a purchase.[15]
[15] Ibid [43].
The horse and rider devices in the present comparison are, in my view, more similar than those compared by the delegate in The Polo/Lauren Company LP v Phillip. In the present matter the horse and rider both have a more front on aspect. However, in the Applicant’s Trade Mark there is significantly more material than in the CP Trade Mark. The Applicant’s Trade Mark includes the words ‘Just Polo X’ with the ‘X’ being stylised. The racquet which is held by the rider in the Applicant’s Trade Mark is reminiscent of that used in the sport of polocrosse. It seems likely therefore that the author of the Applicant’s Trade Mark intended it to be read as ‘Just Polocrosse’. If not read in that manner the trade mark is likely to be read as either ‘Just Polo Ten’ or ‘Just Polo Ex’. The ‘Polo’ element of the trade mark is unlikely to be seen as a stand alone element and for this reason is likely to be seen as a reference to the sport of polo or polocrosse.
The assessment of whether the use of the Applicant’s Trade Mark would be likely to deceive or cause confusion must be considered in the context of the relevant goods and services: the POLO and the Polo Player Device trade marks have acquired their reputations in connection with a variety of goods including clothing and retailing; the Applicant’s Services are solely promotional marketing. It is apparent from the EIS that the Opponent is involved in extensive promotional marketing of its own goods and services—such promotional marketing is typical of retailers and manufacturers of goods. I am not satisfied, however, that the Opponent is involved in the provision of promotional marketing services for others. Nor am I satisfied that the reputations acquired by the POLO and the POLO Player Device trade marks extend to those services. The natures of the respective goods and services are quite different. In particular, the Opponent provides retail services. Such services typically offer a place for potential purchasers to view, select and purchase goods—whether this be a bricks and mortar store or some virtual space. On the other hand promotional marketing is a service which is typically offered to a person who has something to sell, be it goods or services.
Because of the differences between the respective trade marks and the relevant goods and services I am not satisfied that because of the reputations acquired by the POLO trade mark and the Polo Player Device that the use of the Applicant’s Trade Mark would be likely to deceive or cause confusion. Consequently the Opponent has failed to establish this ground of opposition.
Section 42(b)
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) …
(b) its use would be contrary to law.
The onus is on the Opponent to establish that use of the Applicant’s trade mark would be, rather than could be, contrary to law on the balance of probabilities.[16] The Opponent submitted that any use of the Applicant’s Trade Mark in connection with the Applicant’s Services[17] would constitute a breach of ss 18(1), 29(1)(g) and 29(1)(h) of Schedule 2 of the Australian Consumer Law (‘the ACL’).
[16] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.
[17] I note that the Opponent’s submissions refer variously to ‘the goods and/or services specified in the application’, ‘the Goods provided under the Opposed Mark’, ‘the goods claimed in the Application’ and in the this submission simply ‘the Goods’. I assume that these were all intended to be references to the Applicant’s Services.
In the present matter the Opponent has failed to establish a ground of opposition under s 60 of the Act. As the test for misleading or deceptive conduct under s 18 of the ACL is a more stringent test than that for deception or confusion under s 60,[18] I am satisfied that the Opponent has also failed to establish that the use of the Applicant’s Trade Mark would be contrary to s 18 of the ACL. 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. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘the TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[19] Sections 53(c) and 53(d) of the TPA are the equivalent provisions to ss 29(1)(g) and 29(1)(h) of the ACL. For these reasons I am not satisfied that use of the Applicant’s Trade Mark would be contrary to law. Therefore, the Opponent has failed to establish this ground of opposition.
[18] See, eg: Ownit Homes Pty Ltd v Ownit Conveyyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).
[19] [2003] FCA 104, [107].
Section 44
Relevant provisions of the Act with respect to the s 44 ground are reproduced below:
Section 44 - Identical etc. trade marks
…
Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) 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 services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
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.
If the Registrar in either case is satisfied:
(a)that there has been honest concurrent use of the 2 trade marks; or
(b)that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a)beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b)ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.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.
To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(2), ie that at least one of the trade marks upon which it relies:
· has a priority date which is earlier than the Relevant Date (‘the first requirement’); and
· is in respect of at least some services which are similar to the Applicant’s Services or some goods which are closely related to the Applicant’s Services (‘the second requirement’); and
· is substantially identical with or deceptively similar to the Applicant’s Trade Mark (‘the third requirement’).
The Opponent has submitted that the Opponent’s Trade Marks ‘individually and collectively obstruct registration’ of the Applicant’s Trade Mark.
All of the Opponent’s Trade Marks have priority dates which are earlier than the Relevant Date. The first requirement is therefore satisfied for all of the Opponent’s Trade Marks. The wording of s 44 suggests that the second and third requirements are discrete questions to be answered. French J, however, noted:
In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services.[20]
[20] Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411, [40].
Notwithstanding the words of French J quoted above, there will be situations where the relationship between the relevant goods and services is so disparate that even where the trade marks under consideration are identical deception or confusion are unlikely. The Opponent has made no submissions as to why any of the goods for which the various Opponent’s Trade Marks are registered (‘the Opponent’s Goods’) are closely related to the Applicant’s Services. In the absence of anything which persuades me otherwise, it is my view that none of the Opponent’s Goods are at all closely related to the Applicant’s Services.
A number of the Opponent’s Trade Marks are registered solely in respect of goods: those being trade mark numbers 382189, 583023, 583024 and 943887 (‘the Goods Trade Marks’). The disparate relationship between the respective goods and the Applicant’s Services means than in each case deception or confusion are unlikely. Consequently, none of the Goods Trade Marks support this ground of opposition.
As well as being registered for goods in Class 25, trade mark number 1325156 is registered in respect of the following services in Class 35: Retailing services, including retail store services and retailing over the Internet (‘the 156 Services’). The trade mark is shown below:
| (‘the 156 Trade Mark’) |
For the reasons discussed in connection with the ground of opposition under s 60, the retailing services which comprise the 156 Services are not similar to the Applicant’s Services. There are also significant differences between the 156 Trade Mark and the Applicant’s Trade Mark. These trade marks are not deceptively similar.
Trade mark number 464821 is registered for the following services in Class 35: Advertising and business services, relating to the manufacture and/or marketing of clothing and fashion accessories (‘the 821 Services’). The trade mark is show below:
| (‘the 821 Trade Mark’) |
The service ‘advertising’ which appears in the 821 services is a service which is similar to the Applicant’s Services. I note that the 821 Services have the qualification relating to the manufacture and/or marketing of clothing and fashion accessories. The Applicant’s services are not qualified and therefore extend to promotional marketing in respect of the manufacture and/or marketing of clothing and fashion accessories.
Notwithstanding the similarity between the 821 Services and the Applicant’s Services there are significant differences between the trade marks. They both contain the person on horseback devices discussed earlier in this decision, however the additional very distinctive and very different elements present in each of the marks (being RALPH LAUREN for the 821 Trade Mark and JUST POLO X for the Applicant’s Trade Mark) means that deception or confusion are unlikely. I am not satisfied that the 821 Trade Mark and the Applicant’s Trade Mark are deceptively similar.
The Opponent has failed to establish that any of the Opponent’s Trade Marks are deceptively similar to the Applicant’s Trade Mark. Consequently, the ground of opposition under s 44 has not been made out.
Section 59
Section 59 of the Act is reproduced below:
Applicant not intending to use trade mark
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.
The intention to use a trade mark must exist at the date of application,[21] consequently, it is incumbent upon the Opponent to establish that the Applicant did not intend to use the trade mark at the time of filing. As observed by Jacobson J, s 59 is a ‘difficult’ ground for an Opponent to establish because of ‘the subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent’.[22] The onus of establishing the ground remains with the Opponent until it has established a prima facie case of the Applicant’s lack of intention, at which stage the onus moves to the Applicant for rebuttal.[23]
[21] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [74] (Keane CJ, Stone and Jagot JJ).
[22] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100, [161].
[23] Ibid [163].
The Opponent has made a number of submissions in respect of this ground of opposition including, most relevantly, the following:
It is the Opponent’s contention that the ground of opposition under section 59 of the Act was before the Applicant in the notice of opposition and that the Applicant has failed to file evidence demonstrating use (either actual or intended) of the Opposed Mark. As such, the Opponent submits that the onus has shifted such that the Applicant can no longer rely on the prima facie intention arising from filing.
The Applicant has been provided with an opportunity to respond to the Opponent’s allegations as to no intention to use the mark as set out in the notice of opposition. They have not done so.
An inference can be drawn to indicate a lack of intention to use. The Opponent submits that the Applicant’s lack of commitment to the trade mark as well as the lack of intention to use the mark should be inferred from the Applicant’s failure to respond to the notice of opposition, the further failure to tender any evidence in answer to the Opponent’s evidence, and the failure to participate in these opposition proceedings in any way, including during an extended deferral where no action was taken by him to progress the Application.
These opposition proceedings were commenced prior to the current requirement for an Applicant to file a Notice of Intention to Defend. Although it was once possible for an Applicant to take no action in an opposition, where section 59 of the Act has been raised as a ground of opposition failure to respond to this ground will lead to an inference adverse to the Applicant and this ground upheld.
In Americana International Ltd v Suyen Corporation (2008) 75 IPR 596, Delegate Lyons stated at paragraph 62:
Weighting against the applicant is its decision not to respond to the Opponent’s evidence and consequently the complete absence of any positive statement about its intention to use the trade mark in Australia.
The NOO in this matter nominated some eleven grounds of opposition. The NOO contained no particulars in respect of the s 59 ground; the relevant part of the NOO being a mere restatement of the ground as it appears in the Act. This alone is insufficient to shift the onus to the Applicant.
The Opponent’s evidence contains nothing about the Applicant’s intention or otherwise to use its trade mark. As a consequence there was nothing for the Applicant to respond to with regard to its intention. There is nothing before me which satisfies me that the Opponent has made a prima face case in respect of this ground which would shift the onus to the applicant.
That the Applicant is no longer a registered corporation and took, essentially, no part in the opposition process might suggest that from early in the opposition process the Applicant may have decided not to pursue its trade mark. Alternatively, the Applicant may simply have considered early in the piece that the Opponent’s opposition was so unlikely to succeed that it required no response. Trade mark applicants have varying levels of sophistication and resources available to them. Without making any assessment of those particular attributes of the Applicant in this matter, I make the following observation. An unsophisticated applicant with limited resources, faced with eleven grounds of opposition from a sophisticated, well-funded opponent may well decide to proceed no further with its application. This does not mean that at the time of filing its application that applicant had no intention to use its trade mark.
The Opponent has failed to satisfy me that at the date the Applicant filed its application it had no intention to use its trade mark. Consequently, this ground of opposition is not established.
Section 62A
The Opponent has submitted:
[T]he Applicant applied to register the Application knowing full well about the potential of conflict with one or more of the Opponent's marks and with the intention of using the mark in a manner that was likely to give rise to confusion in the marketplace. As a result, the Applicant's deliberate decision to apply for registration of the Opposed Mark in respect of the nominated services should be regarded as being in bad faith. The ground of opposition under Section 62A is therefore made out.
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.
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.
The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on this section of the Act. In that case, Dodds-Streeton J made the following comments:
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.[24]
[24] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [24]-[26].
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.[25]
[25] Ibid [165]-[166].
To found this ground of opposition the Opponent is relying on the Applicant being aware of the Opponent’s Trade Marks and that, potentially, the use of the Applicant’s Trade Mark might ‘conflict’ with those trade marks. I have found in respect of the grounds of opposition under both ss 44 and 60 that the use of the Applicant’s Trade Mark in connection with the Applicant’s Services is unlikely to give rise to deception or confusion. I am not satisfied that in these circumstances the application was made in bad faith. Consequently, the Opponent has failed to establish this ground of opposition.
Section 58
Section 58 of the Act is reproduced below:
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.
The owner of a trade mark for particular good/services 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 that in order to succeed under this ground of opposition the Opponent must establish three factors. These are:
· that the Applicant’s Trade Mark is identical, or substantially identical, to the trade mark relied upon by the Opponent;[26]
· that the Applicant’s Services are the ‘same kind of thing’ as the goods and services for which the trade mark relied upon by the Opponent was used;[27] and
· that a person other than the Applicant has the earlier claim to ownership of the Applicant’s Trade Mark based on use prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the trade mark by the Applicant.[28]
[26] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.
[27] Re Hicks’ Trade Mark (1897) 22 VLR 636.
[28] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.
It is not entirely clear from the Opponent’s submissions which trade mark or trade marks it is relying on to support this ground of opposition. The Opponent has submitted:
The words POLO and JUST POLO X are substantially identical: The Opposed mark contains POLO in un-stylised text in the middle of the mark commanding attention. POLO appears alongside the polo player device, which has a raised mallet and a figure leaning to one side in both the Polo Marks and the Opposed Marks [sic]. The only other difference is that the Opposed Mark has "Just" and "X". This difference is obscured in the middle of each mark and might be easily overlooked by consumers.
There are significant differences between the Applicant’s Trade Mark and all of the Opponent’s Trade Marks. The Opponent has not persuaded me that these differences are inconsequential. The Opponent has failed to satisfy me that any of the Opponent’s Trade Marks are substantially identical to the Applicant’s Trade Mark. Consequently, it has failed to establish this ground of opposition.
Decision
The Opponent has failed to establish any of the grounds of opposition it nominated in the NOO. Accordingly, application 1469962 may proceed to registration after 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 a court so orders.
Robert Wilson
Hearing Officer
Hearings and Oppositions
19 September 2018
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