The Timberland Company v Alison Waite
[2012] ATMO 66
•2 August 2012
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by The Timberland Company to registration of trade mark applications Nos.1321816 and 1321821 (in Classes 35 and 25 respectively) - "TIMBERTOWN" (word mark) - filed in the name of Alison Waite
Delegate: John Spence Representation: Opponent: Mr. Ross McLean, Solicitor, of Baker & McKenzie, Lawyers, assisted by Ms. Erin Brown, Solicitor
Applicant: Not representedDecision: 2012 ATMO 66
Section 52 opposition – grounds pressed under Sections 44, 60 and 62A. Grounds not established – applications allowed to proceed to registration. Costs awarded against the Opponent.Background
In this matter, Alison Waite (“the Applicant”) has made application for registration of the trade marks Nos. 1321816 and 1321821 each being in respect of the expression “TIMBERTOWN” as a word mark and rendered in ordinary upper-case lettering of uniform size and characters. Both of these applications were filed on 22 September 2009 and they take priority as from that date.
The first-numbered application No. 1321816 “TIMBERTOWN” specifies services located in Class 35 of the International Classification of Goods and Services (“the Nice Classification”) and in respect of:
Retailing of goods (by any means); wholesaling of goods (by any means); discount services (retail, wholesale, or sales promotion services); promotional services; advertising; distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); the bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods.
The second application No. 1321821 “TIMBERTOWN” specifies goods located in Class 25 of the Nice Classification and in respect of:
Clothing; footwear; headwear; scarves; wraps (clothing); jumpers (sweaters); jackets (clothing); skirts; pants.
The applications have been the subject of examination and they were advertised in the Australian Official Journal of Trade Marks dated 4 March 2010 as having been accepted for possible registration.
On 3 September 2010 the company The Timberland Company (“the Opponent”) of New Hampshire, U.S.A. filed and served a Notice of Opposition in respect of both the applications. Subsequently, by covering letter dated 29 April 2011, and after the obtaining of appropriate extensions of time within which to do so, the Opponent served the evidence in support on which it seeks to rely.
The Applicant elected not to file and serve any evidence in answer. In turn, the Opponent did not seek to put on evidence in reply or any further evidence. By correspondence dated 7 September 2011, the Opponent requested that this matter be set down for a hearing. In due course, the matter came before me as the delegate of the Registrar of Trade Marks. The hearing took place in Sydney on Monday, 16 April 2012. On that occasion, the Opponent was represented by Mr. Ross McLean, Solicitor, of the firm of Baker & McKenzie, Lawyers, assisted by Ms. Erin Brown, Solicitor, also of that firm. The Applicant was not represented at the hearing, and she did not appear on her own behalf. In effect, the Applicant has chosen to take no part in these proceedings.
The Opponent’s legal representatives provided an outline of the submissions on which they intended to rely, accompanied by a copy of the relevant decisions to which the submissions referred. The Applicant did not provide submissions of any kind. No additional materials, other than as identified above, have been made available by either party.
Grounds of Opposition
The Notice of Opposition refers to most of the allowable grounds for opposing the granting of registration. There are fourteen separate grounds and fourteen distinct sections of the Trade Marks Act 1995 (“the Act”) which have been raised by the Opponent. However the written submissions which have been provided by the Opponent make it clear that only four of those grounds are being maintained, corresponding to Sections 43, 44, 60 and 62A of the Act. Of those four grounds, only three were pressed at the hearing and the Section 43 ground was not pursued. Accordingly, these proceedings are confined to a consideration of the grounds of opposition which are raised by Sections 44, 60 and 62A. For the sake of completeness, I find that the remaining grounds as set out in the Notice of Opposition are not made out and I dismiss those grounds.
The Evidence
In determining this matter, the only evidence which is before me is the Statutory Declaration of Michelle B. Hanson made on 21 April 2011 and constituting the evidence in support on which the Opponent relies. Ms. Hanson declares that she holds the position of Assistant General Counsel and of Assistant Secretary with The Timberland Company, that she has worked as an attorney for the Opponent since 2002, and that she has held her present position since May 2008. Ms. Hanson represents that she is fully aware of the trade mark matters of her company.
The evidence goes to indicate that the Opponent’s “TIMBERLAND” trade mark has been used in Australia in relation to footwear since at least as early as 1981 and that such use has subsequently been expanded into a broad range of clothing products other than footwear including shirts, trousers, coats, jumpers, denim jeans, chinos, sweatshirts, t-shirts, sweaters, shorts, parkas, gloves, and more. Ms. Hanson’s evidence provides relevant particulars of eight trade mark registrations held by the Opponent in Australia which feature the “TIMBERLAND” mark and which precede the priority date of the Applicant’s “TIMBERTOWN” trade mark. On a world-wide basis, the Opponent is said to own some 406 registrations in respect of the expression “TIMBERLAND”.
Sales of goods bearing the expression “TIMBERLAND” as a trade mark are said to be made throughout Australia through established retail outlets (such as David Jones, Rebel Sports, Gowings, and the like) as well as through the conduct and operation of five “TIMBERLAND” retail stores. Since 2006, the exclusive Australian distributor of the Opponent has been Rugged Terrain Pty. Limited and there have been other distributors prior to that time. Ms. Hanson provides confidential particulars of the annual revenue which has been generated from sales of apparel and footwear in Australia under the “TIMBERLAND” mark for the period from 1995 to January 2012. Those figures indicate sales of more than a million dollars per annum. Annual sales revenue internationally is claimed to be in excess of $1 billion (in U.S. dollars).
Examples of advertising and promotion (in the form of magazines and publications, catalogues, promotional literature, and billboards) are provided, and annual expenditure of a significant order is indicated as being incurred in relation to the conduct of such activities in Australia. The Opponent’s “TIMBERLAND” trade mark also appears on stationery (including letterhead, envelopes, with compliments slips, order forms and invoices) and on labels and packaging (see Exhibits MH-5 and MH-6). As well, the “TIMBERLAND” trade mark is featured prominently on printed excerpts from the company’s web-site located at the Internet address of (Exhibit MH-7) while Exhibit MH-8 to the declaration gives a table of figures measuring “hits” to that web-site, including those by Australians.
Ms. Hanson makes the following claim at paragraph 17 of her Declaration, namely:
As a result of extensive use of the TIMBERLAND trade mark by my Company, including the outstanding and continuing success of its TIMBERLAND branded range of products since their launch in 1981, by 22 September 2009 the TIMBERLAND trade mark had acquired a significant reputation in Australia in respect of apparel and footwear products and extending to other goods and services, including those for which the Opposed Trade Marks are sought to be registered. By that time, and as evidenced herein, significant numbers of Australian consumers had been exposed to the marketing of TIMBERLAND branded products or had purchased or used them, and had learned to associate them with Timberland.
In the following paragraph 18, Ms. Hanson expresses what is in effect a submission or an inference in declaring:
Because of the reputation of the TIMBERLAND trade mark, and the similarity of the Opposed Trade Marks, it is likely that use of the Opposed Trade Marks in relation to some or all of the goods and services for which the Opposed Trade Marks are sought to be registered will deceive or cause confusion amongst significant numbers of Australian consumers. In particular, there is a likelihood that many consumers will wrongly assume that such goods or services are those of Timberland or are in some way associated with Timberland or its goods.
At paragraph 16, reliance is sought to be placed on the Internet use of the “TIMBERLAND” trade mark. In this regard, the relevant domain name identifies an international address and not a web-site that is located in Australia. In addition, it is well-established that Internet use of a trade mark carries limited weight as evidence of reputation (see the decisions of Ward Group Pty. Limited v. Brodie & Stone Plc and Others (2005) 64 IPR 1 at paragraph 43, Nordstrom Inc. v. Starite Distributors Inc. (2008) 75 IPR 418 at paragraphs 24-26, Deutsche Telekom AG v. E! Television Inc. (2006) AIPC 92-204 and The Shoe Studio Group Limited v. Wittner’s (Australia) Pty. Limited (2007) 74 IPR 578). I do not accept the Opponent’s evidence in respect of Internet sales from Australia delivered into the U.S.A. via a web-site as establishing the existence of a reputation in respect of the “TIMBERLAND” trade mark in Australia or the scope of that reputation.
There are real issues which arise in relation to the evidence which has been provided by the Opponent. In particular, Ms. Hanson (being located in New Hampshire, U.S.A.) does not explain how she is in a position to give evidence in relation to the state of the Australian market or the perceptions of Australian consumers. At the same time, there is no supporting local evidence (for example, on the part of the nominated distributor Rugged Terrain Pty. Limited) which would serve to corroborate and reinforce the evidence of Ms. Hanson. As such, the statements which are made at paragraphs 16, 17 and 18 of the Hanson Declaration are regarded by me as having uncertain probative or persuasive value and limited weight attaches to the contents of same.
Submissions
The Opponent’s submissions address two issues, namely the extent of the Opponent’s reputation in Australia in respect of the “TIMBERLAND” trade mark on the one hand and on the other hand the similarity which exists between the respective trade marks “TIMBERLAND” and “TIMBERTOWN” and the extent to which those marks can be said to be deceptively similar. In so doing, the several grounds pursuant to Sections 60, 44 and 62A are considered separately by the Opponent and in that order.
The underlying point to which the Opponent returns is that in this instance the relevant comparison requires regard to be given to the overall impression based on recollection of the Opponent’s “TIMBERLAND” trade mark as well as the “TIMBERTOWN” mark which is applied for by the applicant. That impression must both take account of the general idea of the marks and make allowance for the imperfect recollection of the prior registered mark by those persons who might see it. When this test is applied, and without the benefit of a side by side comparison, the Opponent submits that the respective trade marks “TIMBERLAND” and “TIMBERTOWN” are seen to convey a similar impression and one which is likely to cause ordinary consumers to entertain real doubts as to whether the goods or services which are offered bearing the “TIMBERTOWN” trade mark of the Applicant are the same as the goods or services that he or she remembers being offered under the “TIMBERLAND” trade mark of the Opponent.
Discussion
Deceptive Similarity
The essential issue and the nub of this matter is the determination as to the extent to which the respective trade marks “TIMBERLAND” and “TIMBERTOWN” can be said to be deceptively similar to each other. As a suitable starting-point it is appropriate to address the issue of deceptive similarity and to express some observations in relation to that issue.
In this regard, and giving consideration to the Section 60 ground, it should be noted that since the amendments to the Act which were effected by virtue of the Trade Marks Amendment Act 2006 and which took effect as from 23 October 2006 (that is, before the priority date of the “TIMBERTOWN” application), it is no longer a necessary requirement for purposes of the Section 60 ground to establish that the respective trade marks are substantially identical with or deceptively similar to each other (as was formerly the position prior to the amendments). However Section 60 still requires the Opponent to establish that use of the opposed application would be likely to deceive or cause confusion. The differences in relation to the Section 60 ground are that there is no provision made in respect of the need for the relevant marks to be substantially identical, and that the element of deception or confusion in the context of Section 60 must result from the extent of reputation of the Opponent’s mark rather than merely from a similarity of appearance between the respective marks.
By way of further clarification, and having regard now to the Section 44 ground, it is apparent that in this instance the respective trade marks are not substantially identical and that this issue does not need to be addressed. In this instance, and despite the inclusion in each mark of the component “TIMBER-” which is shared in common as a prefix, the respective trade marks possess significant differences both in pronunciation and appearance and those differences are considered by me to be sufficient as to overcome the objection that these marks are substantially identical.
It was conceded and allowed by the Opponent that the respective trade marks are not substantially identical and that this basis for objection does not apply in relation to the present matter Indeed, in the making of his oral submissions, Mr. McLean specifically and deliberately sought to distance the Opponent from any application of the “side by side comparison” test (as set out in the oft-quoted passage from the decision of Justice Windeyer in Shell Company (Australia) Limited v. Esso Standard Oil (Australia) Limited (1961) 109 CLR 407 at 414-415) which is usually applied in determining whether two marks are substantially identical. Rather, the test which should more suitably be applied in determining this matter, and on which the Opponent placed reliance as being appropriate, was said to be that of the “impression based on recollection” of the respective marks which is carried away by members of the public. That test is well-established as the test which is to be applied in considering the issue of deceptive or confusing similarity.
I agree with the Opponent’s representative and I am satisfied that the Applicant’s trade mark “TIMBERTOWN” is not substantially identical with the “TIMBERLAND” trade marks of the Opponent. Despite the significant differences between them, however, the respective marks share in common the element “TIMBER-” which appears as a prefix in each mark. That shared element gives rise to the potential for there to exist the possibility of instances of deception or confusion being likely to occur. So, these proceedings fall to be decided on the basis of deceptive similarity, and the determination of that issue is germane to the outcome of this matter.
A useful outline of the relevant general principles which are to be applied when considering deceptive or confusing similarity, and a restatement of the classical propositions in this regard, is to be found in the decision of Justice French in the decision of Registrar of Trade Marks v. Woolworths Limited (1999) 45 IPR 411; (1999) AIPC 91-499 at paragraph 50, namely:
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:
"...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."
Those principles were applied with approval, and they were usefully refined and restated, by Justice Dodds-Streeton in Tivo Inc. v. Vivo International Corporation Pty. Limited [2012] FCA 252 (19 March 2012) at paragraphs 94-109 inclusive. Attention is also drawn to the useful summary of the relevant considerations which are to be applied when considering deceptive or confusing similarity as set out by Justice Bennett in Torpedoes Sportswear Pty. Limited v. Thorpedo Enterprises Pty. Limited (2003) AIPC 91-919 at paragraph 78.
In the course of his submissions, Mr. McLean argued on behalf of the Opponent that the respective trade marks “TIMBERLAND” and “TIMBERTOWN” convey a similar impression and that the similarity in ideas reinforces the similar look of the marks: both begin with the same word “TIMBER” and take their character from that word, and both have the same length. This point is an important one (since it is fundamental to the position which is taken by the Opponent), and it is essential to a consideration of the issue of deceptive similarity.
It is by no means established that the appearance of a shared or common element (in this instance, the word “TIMBER-”) located within two trade marks is sufficient to render those marks deceptively or confusingly similar to each other. In this regard, in the decision of Capitol Clothing Pty. Limited v. Hush Fashions Pty. Limited [2006] ATMO 79 at paragraphs 29-30 the delegate observed:
For a trade mark to “so nearly resemble that other trade mark that it is likely to deceive or cause confusion” there would need to be some perceived connection between the two trade marks in the mind of the purchaser. The mere presence in two trade marks of the same word is not sufficient for this to happen. The perception of a connection is more likely to occur when the target word is accompanied by words or images that allude to the trade marks being a family of trade marks owned by the same organization. A simplistic example here would be “ENVY Women” and “ENVY Men”, both in use on a range of clothing.
However, where the additional words are not relevant to the trade, or where well known phrases are used, this perception is less likely to be the case. I consider this is the situation here.
In that instance the finding was that, despite the presence of the common element “ENVY”, the resemblance between the respective trade marks “GREEN WITH ENVY” and “ENVY AVENUE” of the Applicant and the Opponent’s “ENVY” registration was not such that there would be a real tangible danger of deception or confusion occurring in the minds of the buying public.
By way of illustration, other examples abound. In Application by Thomas A. Smith to Register a Trade Mark (1913) 30 RPC 363 and in relation to the respective trade marks “SUMMIT” and “LIMIT” Justice Neville said at 366:
I do not think that so far as the meaning of the words is concerned, a reference to the one would in the least leave such an impression in the mind of the reader as to make him mistake the other for it. Looking at the marks I do not think that there is any possibility of anybody being deceived. That nobody will ever make a mistake is more than I am prepared to say, but, if there is a mistake, I think it will be made by some person so foolish, or so unobservant, as in that respect to be without the pale of the protection of the law.
In the decision of Cooper Engineering Company Pty. Limited v. Sigmund Pumps Limited (1952) 86 CLR 536 the sole question for determination was whether the word “Rainmaster” so resembled the words “Rain King” as to be likely to deceive. The High Court, in applying the approach taken by Justice Parker in the Pianotist case (1906) 23 RPC 774, stated (at 538):
In the present case, the prefix of the two words is the same word “Rain”, but the suffix “master” differs from the suffix “King” in appearance and sound. This makes the two marks as a whole quite distinct and the marks must be judged as a whole. “Rainmaster” does not look like “Rain King” and it does not sound like it. . . . But it is obvious that trademarks, especially word marks, could be quite unlike and yet convey the same idea of the superiority or some particular suitability of an article for the work it was intended to do. To refuse an application for registration on this ground would be to give the proprietor of a registered trademark a complete monopoly of all words conveying the same idea as his trademark. The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive. . . . The learned registrar was right in holding that the only similarity between the two marks is the common prefix “Rain” and that this similarity is not sufficient to create a reasonable likelihood of deception when the remaining portions of the marks are so different.
In Rivers (Australia) Pty. Limited v. Ezibuy Limited (2000) 49 IPR 186, in finding that the respective expressions “Rivers” and “Stoneriver” were not deceptively similar, Hearing Officer Thompson observed:
The first problem with the approach suggested by Rivers is that it anticipates, before the analysis begins, that the element “river” in the opposed trade mark is identified only with the opponent. To my mind, the approach suggested by the opponent also requires me to dissect the trade mark; to not view the trade mark as being a whole with its own identity; to adopt meanings or denotations of the dissected elements which are by no means the most obvious; and, then to presuppose a number of very limited circumstances in which the trade marks might be argued to be deceptively similar in use. These circumstances might pragmatically be viewed as only arising by coincidence and rely on the presumption that the element “river” is only identified with the opponent. This chain of dissection, speculative analysis and presupposition does not seem to sit well with the approach adopted by French J in Woolworths, above, or his adaptation of the test in Smith Hayden. If there is to be a reasonable likelihood of confusion or deception, it should be such that it arises under reasonable, likely and normal situations in trade. I am not satisfied in this issue that this is so.
In Southcorp Wines Pty. Limited v. Kemeny’s Food and Liquor Pty. Limited (2001) 52 IPR 619; (2001) AIPC 91-743, Hearing Officer Forno found that the respective trade marks “DEVIL’S RIDGE” and “DEVIL’S LAIR” were not deceptively similar. He stated (at (2001) AIPC 91-743, 39,889):
In considering this matter, I have taken into account the word common to both trade marks. However, as Mr. Elkington submitted, the marks also contain a host of other material which cannot be ignored, including the words RIDGE and LAIR, and the distinctively different devices. I am of the opinion that the word portions of the marks would be remembered as wholes – DEVIL’S RIDGE possibly indicating a place of origin of the wine, while DEVIL’S LAIR perhaps refers to a place where a mythical creature has its hideaway or den. I do not believe that the average wine buyer would think that one proprietor would have a monopoly on the word DEVIL’S. . . .On top of this, the other word in each mark – in the applicant’s case, RIDGE, and in the opponent’s LAIR – are totally different. . . . The appearance and meaning of the two words are both quite different.
In Chris Kingsley v. David Scott [2011] ATMO 20, Hearing Officer Wilson stated (at paragraph 13):
13. The general precedent indicates that if one trade mark is contained within another trade mark that fact may not necessarily lead to a finding of deceptive similarity. This is especially so if the presence of that common word (or device) is diminished by other elements in the trade mark or if the common element is descriptive of the claimed goods/services. If the idea or meaning of the trade mark as a whole has been sufficiently altered by the differing trade mark elements, the likelihood of confusion between the two trade marks is thereby reduced. Whether the respective goods and services of the parties are specialized or commonplace is also relevant in determining if confusion is likely to result. In the end, each trade mark must be considered on its own factual circumstances.
Other analogous examples include Gardenia Overseas Pte. Limited v. The Garden Company Limited (1994) AIPC 91-096 (“garden” and “gardenia” sufficiently different), Prefel SA v. Merchant Corporation Pty. Limited (2001) 52 IPR 227 (“STRADA” and “PRADA” not deceptively or confusingly similar) and Bose Corporation v. QSC Audio Products Inc. [2002] ATMO 118 (“WAVE” and “ACOUSTIC WAVE” not deceptively or confusingly similar to “POWER WAVE”).
For its part, the Opponent in seeking to emphasise the degree of similarity between the respective trade marks “TIMBERLAND” and “TIMBERTOWN”, has relied on Pfizer Products Inc. v. Karam (20060 70 IPR 599 where the expression “HERBAGRA” was found to be deceptively similar to the trade mark “VIAGRA”. However in that case Justice Gyles was careful to make the point (at paragraph 51) that:
If the comparison is to be made without taking into account the existing reputation of VIAGRA, the similarity between the marks consists in a common suffix with no relevant meaning or connotation. . . . If reputation were not taken into account, I would not be satisfied that Pfizer’s (sic) mark would be deceptively similar to VIAGRA. I would certainly not be clearly satisfied that that was so.
There is one prior decision which is particularly apposite and which has direct relevance to the present matter, namely The Timberland Company v. Woolworths Limited [2005] ATMO 12. In that matter, the relevant trade marks which were involved were “TIMBERLAND” and “TIMBERLINE” respectively. The finding in that instance was that these expressions were not deceptively similar, and that the grounds of opposition pursuant to Sections 44 and 60 were not made out. In the course of his decision, Hearing Officer Thompson observed:
18. I consider the idea of these trade marks to be different. If a person is aware of the significance of the trade marks as denoting ecological, geographical or environmental regions, that person will remember and recall the trade marks in different ways – if a person is unaware of the ecological, geographical or environmental significance of the trade marks, the fact that they have this significance is of low importance as a distinguishing factor. In other words, the fact that the trade marks might both be viewed as being words with a meaning of geographical, environmental or ecological significance does not significantly, in itself, contribute to the similarity of the trade marks and there is a cogent argument why this should be otherwise.
19. It is possible, as the cases cited by Mr Skelly demonstrate, to overemphasise the importance of the initial syllables or word of a trade mark in the assessment of deceptive similarity: London Lubricants (1920) Ltd’s Application, (1925) 42 RPC 264 (CASTROL/TRIPCASTROID). The elements or words LINE and LAND do have quite different meanings and I do not think that they would so lack stress in ordinary pronunciation that the trade marks would deceive or confuse. Further, the elements or words LINE and LAND both act to qualify the word TIMBER, rather than the goods to which they are applied, thus contextual confusion of the type referred to in John Fitton & Co Ltd’s Application (1949) 66 RPC 110 do not apply. The words form “corporate identities’, each with its own dictionary definition.
20. The words appear to be quite different when rendered in writing (bearing in mind, of course, that the comparison is not one that occurs side-by-side).
21. While the word TIMBER does not directly describe a character or quality of the goods in question, it is somewhat allusive as to their character. In my experience and observations of the world, the word fills a somewhat similar niche in the idiom or parlance of the United States as does the word BUSH in Australia. In the context of the goods, it is quite likely, in my consideration, that if the dictionary definitions of the trade marks do not come to the purchasers’ minds, that the allusive nature of the word TIMBER in recalling the ‘outdoors’ will.
22. Thus, I am not satisfied that it has been established that the trade marks are deceptively similar.
In fairness to Mr. McLean, he did not shirk the issue. He raised this decision of his own accord both in his written submissions and orally at the hearing and he attempted to rebut the relevance of that finding. In endeavouring to distinguish the present matter from the earlier “TIMBERLAND” decision, Mr. McLean submitted that the “TIMBERTOWN” trade mark (as a word without an established dictionary meaning) is different from “TIMBERLINE” because it is an invented word and because it does not have “a known and distinguishing meaning” so that it cannot be said to generate a different impression from the expression “TIMBERLAND”. Moreover, he contended, in the instance of the “TIMBERLINE” mark, that application had already co-existed with the “TIMBERLAND” trade mark both in the market-place and on the Register. Mr. McLean further maintained that the invented word “TIMBERTOWN” which is created in this instance does not convey a sufficiently distinct or different impression so as to avoid the risk of confusion.
I reject each of these contentions. In particular, applying the “TIMBERLINE” decision to the matter which is presently before me, I consider that the word “TIMBERLINE” is more likely to be regarded as being deceptively similar to the “TIMBERLAND” trade mark of the Opponent than are the Applicant’s “TIMBERTOWN” applications. In the present instance, and as was pointed out in the earlier decision, I note that the “TIMBERLAND” and “TIMBERLINE” trade marks comprise a single composite word which is made up of two parts. The first part is the shared word “TIMBER”, while the second part in each mark comprises four letters. In each instance, those four letters commence with the letter “L” and they also share the letter “N” as the third letter. That analysis does not apply in relation to the “TIMBERTOWN” trade mark where the second part “TOWN” is an ordinary English expression which has an entirely different meaning and which conveys an entirely different impression to either of the components “-LAND” or “-LINE”. Accordingly, having considered this aspect of the matter, I can see no reason as to why I should depart from the reasoning which was expressed by Hearing Officer Thompson in the “TIMBERLINE” decision or from the finding which he made in that instance.
Continuing to consider a comparison of the respective marks, I note that Mr. Mclean has contended that because the word “TIMBERLAND” has a dictionary meaning (that is, “land covered with timber producing forests”) whereas the Applicant’s trade mark “TIMBERTOWN” is an invented word with no meaning of its own, the way is left open for an impression to be conveyed and that impression is of “a place with a connection with timber producing forests”. In this way, and allowing for an imperfect recollection (rather than a side by side comparison), Mr. McLean argued that the idea conveyed by each mark is likely to be “very similar” in suggesting an area or place which is characterized by its links to forests, timber and the production of same. Further, it was put that “there is no strong point of difference created by their different endings” and that each mark has a common first element (being the word “TIMBER”).
I disagree with these points. To my mind, the trade mark “TIMBERTOWN” suggests something entirely different to the expression “TIMBERLAND” and it conveys an impression which is both distinct and distinguishable. The respective trade marks are different both visually and phonetically, that is, they look and sound a good deal different. In relation to the expression “TIMBERTOWN”, the component “TIMBER” is used in an adjectival sense and in order to qualify the principal (or “subject”) word “TOWN”. As such the “TIMBERTOWN” mark is divisible in its effect. By contrast, the expression “TIMBERLAND” is a word which is homogeneous in nature and it is intended to be regarded as a whole or as an entirety: it is a single word with an established meaning in its own right.
Again, in terms of meaning, I presume that the intended effect of the expression “TIMBERTOWN” is to indicate a town having a connection with the timber industry. That understanding and interpretation of this expression is the one which I would reach. By contrast, I find the word “TIMBERLAND” to be entirely different in its meaning and in the significance which it conveys in that it indicates a tract of land which is covered by timber. That expression suggests a location without a town, a remote, isolated and even rugged area of wilderness which is essentially unpopulated and a landscape occupied by forests, wildlife and the elements. As such the “TIMBERLAND” trade mark aims to attract or evoke an affinity or association with “the great outdoors” which the expression “TIMBERTOWN” does not and cannot achieve. For its part, the expression “TIMBERTOWN” indicates a settlement or centre of human habitation and civilization. In this sense, the respective expressions can be seen as opposites or at least to be in contradiction or contradistinction with each other.
In any event, ultimately my finding is that the two marks “TIMBERTOWN” and “TIMBERLAND” are different both in appearance and pronunciation and also in meaning. As a result I am not persuaded on the balance of probabilities, and it has not been established to my satisfaction, that the respective trade marks “TIMBERTOWN” and “TIMBERLAND” are deceptively similar.
Grounds
Turning now to a consideration of the three grounds of opposition on which the Opponent relies, and following seriatim the order as proposed by the Opponent, I make the following findings.
General
Section 55(1) of the Act states:
(1) Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
That Section, by virtue of the reference to “any ground’ in sub-paragraph 55(1), makes it clear that the Opponent need only establish one of its grounds of opposition in order to be successful. In the event that the Opponent should succeed in making out a ground of opposition, there is no requirement that I should consider any of the other grounds. The Opponent bears the onus in this regard, and the relevant standard of proof is that of the ordinary civil standard of the balance of probabilities[1]. The relevant date for determining the rights of the respective parties is 22 September 2009 being the priority date of the opposed application[2].
[1] In support of this view, there is now a considerable body of authority which commences with Justice Gyles in Pfizer Products Inc. v. Karam (2006) 70 IPR 599 at [6] to [26], supported by Justice Sundberg in Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 at [22] to [27], and extending to include Nexans S.A. v. Nex 1 Technologies Company Limited [2012] FCA 180 per Justice Murphy at [9]; and Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per Justice McKerracher at [9] to [10]. At the same time, it is recognized that there is a contrary view which is also supported by a line of decided authority.
[2] See Southern Cross Refrigerating Company v. Toowoomba Foundry Pty. Limited (1954) 91 CLR 592 per Justice Kitto at 594.
Section 60
The Opponent places primary reliance on this ground which accordingly I propose to consider first. Section 60 of the Act is worded as follows:
Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.
Note: For priority date see section 12.
In order to establish the ground of opposition pursuant to Section 60, the Opponent must satisfy the following elements, namely:
- there must be another trade mark which was in existence prior to 22 September 2009 (being the priority date of the two “TIMBERTOWN” applications);
- that other trade mark must have acquired a reputation in Australia before the priority date;
- the opponent need not be the owner of the conflicting trade mark;
- the requisite reputation must be amongst a significant section of the public or a substantial number of persons;
and
- that reputation must be such that use of the opposed trade marks would be likely to cause instances of deception or confusion to occur.
In relation to the present matter, the evidence is sufficient in my view to show that the Opponent has an established reputation in Australia in respect of its “TIMBERLAND” trade marks (which have been in use since 1981) and sufficient to satisfy this requirement of Section 60. I accept that the “TIMBERLAND” trade marks are reasonably well-known among members of the Australian public. However, that being said, in this instance that reputation is not of the kind which, when compared with the use by the Applicant of its mark, would in my opinion lead to deception or confusion in the relevant sense as set out in the tests that have been laid down. The test for deception or confusion has been dealt with, for example, in Registrar of Trade Marks v. Woolworths Limited (1999) 45 IPR 411; (1999) AIPC 91-499 where, in considering the phrase “likely to deceive or cause confusion”, Justice French stated (at 45 IPR 426, AIPC 39,695):
The use of the word “likely” in this context does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a “real tangible danger of its occurring”: Southern Cross Refrigerating Company v. Toowoomba Foundry Pty. Limited (1954) 91 CLR 592 at 594-5 per Kitto J.
In the present matter, even if the Opponent’s evidence is accepted as establishing a relevant reputation, given the differences between the opposed trade mark applications and the Opponent’s marks, on balance it cannot be maintained that there exists any real likelihood of instances of deception or confusion occurring. The Opponent’s reputation in its trade marks is not sufficient to overcome the obvious points of difference and dissimilarity which exist between the respective “TIMBERTOWN” and “TIMBERLAND” marks and which have the effect of rendering it less likely that instances of deception or confusion would occur.
I find that the Opponent has not established the ground of opposition pursuant to Section 60 of the Act.
Section 44
The wording of this Section relevantly provides:
Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark ( applicant's trade mark ) in respect of goods ( applicant's goods ) must be rejected if:
(a) the applicant's trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(2) 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.
It is well-established that in applying the test provided for by Section 44 of the Act, consideration is not to be given to the actual use made by the Opponent as against use by the Applicant. Rather, the test to be applied is that proposed by Justice Evershed in Re An Application by Smith Hayden and Company Limited (1946) 63 RPC 97 at 101. That test may be paraphrased as follows:
Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of [goods and] services covered by the proposed registration (per Justice Branson in Registrar of Trade marks v. Woolworths Limited (1999) AIPC 91-499 at paragraph 88).
In this instance, the Opponent holds registrations of the trade mark “TIMBERLAND” in Australia inter alia in Class 25 (under Nos. 336895, 405482, 1201674 and 1201675) and in Class 35 (under No. 806252). Those registrations precede the priority date of the Applicant’s pending applications Nos. 1231816 and 1231821. There is no dispute that the relevant goods (in Class 25) and services (in Class35) of the opposed trade mark application No. 1321816 are similar or closely related. So, these requirements of Section 44 are met and satisfied. However I have earlier determined that the Applicant’s trade mark applications are not substantially identical with or deceptively similar to the prior existing registrations of the Opponent. That finding is specifically applicable to the Section 44 ground.
For that reason, the ground of opposition raised pursuant to Section 44 is not able to be established and this ground fails.
Section 62A
This Section provides that the registration of a trade mark may be opposed on the ground that the application was made in bad faith. As was correctly pointed out by Mr. McLean in his written submissions (at paragraph 4.23), the relevant legal principles which are applicable when considering “bad faith” are set out by Justice Dodds-Streeton in Fry Consulting Pty. Limited v. Sports Warehouse Inc. (No. 2) [2012] FCA 81; (2012) AIPC 92-436. In particular, I accept that “bad faith” in this context does not require, but does include, dishonesty or fraud, and that an “apt touchstone” is whether the Applicant’s conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area.
The essential point which Mr. McLean contended in relation to this ground is that the Applicant must have been well aware in advance of the Opponent’s reputation in relation to the expression “TIMBERLAND”, and her attempt to secure exclusive rights in respect of the “TIMBERTOWN” trade mark must be seen in the light of her knowledge that that mark was close to the Opponent’s well-known mark. As such, the Applicant’s conduct in filing her applications fell short of the standards of acceptable commercial behaviour because a reasonable person in her shoes would have known not to have combined the words “TIMBER” and “TOWN” and not to proceed with the filing of applications in respect of same. However no materials of a factual or evidentiary nature have been put before me in this regard, so that what I am left to consider amounts to an assertion, inference or unsubstantiated allegation.
Indeed, to contrary effect, I am aware that the Applicant is recorded as the registered owner of the existing “TIMBERTOWN” trade mark registrations Nos. 1321812 (in lass 41), 1321814 (in Class 39) and 1321828 (in Class 16). Arguably, the Applicant (or her predecessor in title) has established an existing reputation in respect of the “TIMBERTOWN” trade mark. Paraphrasing the wording of the Opponent’s attorney (see the written submissions at paragraph 4.21), but applying that wording to converse effect, the “TIMBERTOWN” trade mark of the Applicant “already co-existed with TIMBERLAND on the Register in a number of classes, and had co-existed in the market without complaint”. That being so, I find it difficult to accept that that there can be said to have occurred dishonesty, fraud or ulterior motive on the part of the Applicant.
The provisions of Section 62A are not to be lightly applied. In this instance, no sufficient argument has been put forward as would warrant the application by me of Section 62A. In the circumstances, I am not prepared to infer the existence of improper conduct or unacceptable commercial behaviour on the part of the Applicant. Accordingly, I find that the ground of opposition which has been raised pursuant to Section 62A has not been established by the Opponent and that this ground also fails.
Decision
I find that the Opponent has not established its opposition in respect of the two pending applications Nos. 1321816 and 1321821. The trade mark applications may, then, proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until such time as the appeal has been decided or discontinued.
Costs
As part of its submissions, the Opponent has requested an award of costs. However, the Opponent having been unsuccessful on all grounds, I decline to award costs in its favour. I see no reason as to why the general rule should not apply and why costs should not follow the cause. I award costs against the Opponent in accordance with the provisions of Schedule 8 of the Trade Mark Regulations, 1995. Such costs should in any event take into account the fact that the Applicant did not file and serve any evidence in answer, that the Applicant did not appear at the hearing, and that the Applicant took no real or active part in the conduct of the proceedings.
John Spence
Hearing Officer
Trade Marks Hearings
2 August 2012
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