The White Company (UK) Limited v White Homewares Pty Ltd

[2012] ATMO 12

TRADE MARKS ACT 1995

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

Re:Opposition by THE WHITE COMPANY (UK) LIMITED to registration of trade mark applications 1236071(4,21,24,25) & 1236072(4,21) - THE WHITE LINEN COMPANY + DEVICE & THE WHITE LINEN COMPANY - filed in the name of White Homewares Pty Ltd.

Delegate:	Nicole Worth
Representation:	Opponent: Philip Kerr and Deborah Jackson of Allens Arthur Robinson. Applicant: Scott La Rocca of Anisimoff Legal.
Decision:	2012 ATMO 12 S52 opposition – leave to serve further evidence refused – s58, s60, s62A not established – trade marks not substantially identical – reputation not established – applications not made in bad faith.

Background

1. On 21 April 2008 (‘the priority date’) White Homewares Pty Ltd (‘the Applicant’) filed applications under the Trade Marks Act 1995 (‘the Act’) to register two trade marks, one in the form of a logo and the other in plain text, as detailed below:

Application Number 1236071

(‘the logo mark’)

Class 4: Candles, including but not limited to fragranced and scented candles; illuminants; tapers; nightlights; wicks and lamp oil

Class 21: Soap holders; dispensers for liquid soap; toilet paper holders; candlesticks; toilet brush holders; toothbrush holders

Class 24: Textiles and textile goods; bed and table covers; household linen; linen cloth; bed linen; table linen; curtains; pillow shams; pillow cases; sheets; towels; quilts; quilted blankets (bedding); covers for quilted blankets (bedding); napkins; serviettes; face towels; flannels

Class 25: Bath robes; dressing gowns

Application Number 1236072

The White Linen Company

(‘the word mark’)

Class: 4 Candles, including but not limited to fragranced and scented candles; illuminants; tapers; nightlights; wicks and lamp oil

Class: 21 Soap holders; dispensers for liquid soap; toilet paper holders; candlesticks; toilet brush holders; toothbrush holders

1. The applications were examined and grounds for rejection under section 44 of the Act were raised against both applications. The word mark also faced grounds for rejection under section 41 of the Act, in respect of goods originally claimed in classes 24 and 25, on the basis it did not distinguish the Applicant’s goods from those of other traders.

2. The grounds for rejection under section 44 were subsequently withdrawn due to the lapsing of prior conflicting applications (one of which was owned by the Opponent). In addition the Applicant deleted all goods in classes 24 and 25 from the application for the word mark, resulting in the withdrawal of the grounds for rejection under section 41. Both applications were accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks: the logo mark on 9 July 2009 and the word mark on 24 September 2009.

3. On 8 and 9 October 2009, The White Company (UK) Limited (‘the Opponent’), filed Notices of Opposition to the registration of the logo mark and the word mark respectively, nominating most of the grounds available to oppose an application.

4. The parties served and filed evidence in support of their cases in due course.

5. As a delegate of the Registrar of Trade Marks I heard this matter in Sydney on 21 October 2011. Just prior to the hearing, on 17 October 2011, the Opponent made an application to file and serve further evidence. I indicated that I would consider the application at the hearing and that the Applicant would be given the opportunity to make submissions regarding the admissibility of the further evidence.

6. The parties appeared before me at the appointed time. Philip Kerr and Deborah Jackson of Allens Arthur Robinson appeared for the Opponent and made written submissions on its behalf. Scott La Rocca of Anisimoff Legal appeared for the Applicant and made written submissions on its behalf.

   Application to serve further evidence

7. As this matter must be decided prior to the substantive opposition, I shall deal with it first.

8. The application to serve further evidence is accompanied by two declarations. The first of these is a covering declaration by Philip Kerr, partner of Allens Arthur Robinson law firm. The other is a draft statutory declaration of George Allen, Chief Executive Officer of Pacific Direct Limited of the UK, with Exhibits XX-1 to XX-7 dated 14 October 2011. (The executed declaration of George Allen was subsequently served and filed on 4 November 2011). Pacific Direct Limited is a distributor and licensee of the Opponent.

9. Mr. Kerr’s declaration sets out the circumstances under which the further evidence, described in Mr. Allen’s declaration, came to his attention and contends that it is directly relevant to the question of likelihood of deception or confusion arising under section 60.

10. Mr. Allen provides information that on 28 March 2011 the Hotel Windsor, in Melbourne, made a press release that it was now providing the products of the Opponent. A copy of the press release is exhibited (dated ‘April 2011’). The press release includes comments from the CEO of the hotel to the effect that the Hotel Windsor is providing The White Company shampoo, conditioner and body lotion in an effort to address customers’ expectations of sub-standard toiletries in hotel rooms. The press release goes on to describe the Opponent’s goods as “luxury bath and body ranges” and The White Company as a “luxury brand”. It also states that the Hotel Windsor is the first hotel in Australia to provide The White Company products, and that the products are the “preferred amenities of some of the world’s most prestigious hotels, airlines and cruise lines”. Photographs of the products made available in the hotel rooms are included (each showing trade marks of the Opponent) however no information regarding to whom the press release was sent, or in what forum the information was released, has been provided.

11. Mr. Allen also attests that International Interior Images Pty Ltd, the Australian distributor of Pacific Direct Pty Ltd, now advertises the Opponent’s goods for sale on its website Copies of the relevant web pages are exhibited (all dated 10 October 2011). It is through International Interior Images Pty Ltd that the Hotel Windsor is supplied with the Opponent’s goods.

12. Lastly Mr. Allen’s declaration includes a closing paragraph that since before the priority date the Opponent’s goods have been made available in a number of hotels in countries other than Australia. A list of those hotels is exhibited, divided into groups of ‘EMEA’ and ‘USA’ (‘EMEA’ presumably being an acronym for ‘Europe, Middle East and Asia’ or ‘Europe, Middle East and Africa’). I note that the majority of listings occur in the ‘EMEA’ group, and the majority of those appear to be English names of hotels suggesting they are located in the United Kingdom.

13. The principles for deciding whether it is appropriate to allow an application for further evidence were set out in Oxon Italia SpA’s Application[1] as:

    ·It must be shown that the evidence could not have been obtained with reasonable diligence at an earlier stage,

    ·The evidence must be such that it would probably have an important influence on the result of the case,

    ·The evidence must be such as is presumably to be believed, that is, it must be apparently credible, though not necessarily incontrovertible.

    A further observation was made in Studio SrL v Buying Systems (Aust) Pty Ltd[2] that where credible further evidence could be adduced which would enable the Registrar to finally determine the matter, rather than the parties relying on an appeal to the courts, that further evidence should be admitted into proceedings.

    [1] Oxon Italia SpA’s Trade Mark Application [1981] FSR 408 at 409 (Ch D).

    [2] Studio SrL v Buying Systems (Aust) Pty Ltd [1992] AIPC 90-858.

14. In the circumstances particular to this case, I am not satisfied that the Opponent’s proposed further evidence will have an important influence on the outcome. Mr. Allen’s information regarding the Opponent’s (unspecified) goods being available in a number of hotels in various countries around the world is not sufficiently detailed for me to draw any real conclusions (for example, regarding ‘spill over’ reputation) from it. It is also information that could easily have been included in the earlier evidence stages.

15. The information regarding the Hotel Windsor post-dates the relevant date by approximately three years. I accept that subsequent events may cast light on the Opponent’s position as at the priority date[3], however it is difficult to see how this particular information does so. The Hotel Windsor has some renown, particularly amongst Victorians where the hotel is a popular wedding venue and host to regular events including open days, high teas, feasts and festivals. The fact that from April 2011 it chose to stock the Opponent’s products in its rooms indicates that the hotel holds those products in high regard, and by association with the hotel its guests may also hold the products in high esteem. However it says little of the regard, or even awareness, the hotel or its guests may have had as at the priority date three years earlier. Without more information, I do not consider the fact that a single, albeit high calibre, hotel chose to stock the Opponent’s products in 2011 is capable of illuminating their reputation in Australia as at 2008.

    [3] See for example the comments of Burchett J in Conde Nast Publications Pty Ltd v Taylor (1998) IPR 505, at [509].

16. In summary, I consider that the opponent’s proposed further evidence is not of sufficient influence that it is appropriate to allow the application. I refuse the opponent’s application for permission to serve further evidence.

    Evidence

17. The following declarations were served and filed as evidence in these opposition proceedings:

Evidence in Support

·     Statutory declaration of Hamish Alaric Campbell Mansbridge, Finance Director of the Opponent, with Exhibits HM-1 to HM-15, dated 5 May 2010.

·     Statutory declaration of Deborah Renate Charlotte Jackson, Senior Associate of Allens Arthur Robinson law firm, with Exhibits DRCJ-1 to DRCJ-4, dated 20 May 2010.

Evidence in Answer

·     Statutory declaration of Scott La Rocca, legal practitioner with Anisimoff Legal, with Exhibit SLR-1, dated 3 September 2010.

·     Statutory declaration of Vicki Marguerite Mapplebeck, owner and director of the Applicant, with Exhibits VMM-9 to VMM-20.

·     Further statutory declaration of Scott La Rocca, with Exhibits SLR-2 to SLR-10, dated 1 December 2010.

·     Additional further statutory declaration of Scott La Rocca, with Exhibits SLR-11 to SLR-12, dated 1 December 2010.

Evidence in Reply

·     Statutory declaration of Hamish Alaric Campbell Mansbridge, with Exhibits HACM No. 1. to HACM No. 2.

1. A brief history of the parties is as follows. In 1993, the Opponent’s founder identified a gap in the retail market for high quality white home accessories and in December of that year began a business in the design, distribution and retailing of white linen products which were made available by mail order. Over time the Opponent’s product range grew to include products suitable for a linen cupboard (bed linen, rugs, towels and table linen), products suitable for the laundry room (including linen sprays, laundry baskets, ironing board covers, hangers, lavender balls, candles, perfumes and room fresheners), as well as candles, bathroom accessories, clothing and jewellery. The business has enjoyed substantial growth, with turnover now in the tens of millions of pounds, 20 stores in the UK and substantial internet and mail order sales.

2. Until 2000 the Opponent used the trade marks

   and

3. From 2000 the Opponent has used the following trade marks to identify its goods:

   and  THE WHITE COMPANY.

4. The first sale of the Opponent’s products in Australia is declared to have occurred on 30 March 1995, with sales occurring in each year to the date of Mr. Mansbridge’s first declaration, 5 May 2010. The number of Australian customers has remained modest, their number growing to a few hundred in 2007 (the figures for 2008 are slightly higher, however they are not separated into pre and post priority date). The dollar value of those sales is also modest, reaching tens of thousands of pounds by 2008. There is no information regarding how those early sales were made, and there is no indication that mail order catalogues were made available to Australians. Nowadays orders may be placed via the Opponent’s website at but it is not stated when the website was created.

5. The Opponent provides an approximate figure for global promotional expenditure for the last several years, which is substantial, however no other information regarding promotion in Australia is provided. It merely states that a major focus is upon driving traffic to the website, including using Google AdWords, and that as an English language website it is inevitably focused upon Australia.

6. In June 2007 the Opponent filed an International Registration Designating Australia (IRDA) for the words THE WHITE COMPANY. The IRDA was provisionally refused under sections 41 and 44 of the Act. Although the objection under section 44 was subsequently withdrawn, the Opponent “inadvertently” allowed its application to lapse without resolving the grounds for rejection under section 41. The Opponent’s IRDA was initially cited as a prior conflicting mark against the subject applications, however once the IRDA lapsed the associated grounds for rejection were withdrawn.

7. In 2007 the founder of the Applicant purchased goods from the Opponent, apparently first while she was residing in the UK and then later once she had moved to Australia (a total of three purchases). In January 2007 she also contacted the Opponent expressing her interest in being an agent for the Opponent in Australia. The Opponent declined, stating that its international strategy was on hold until its new Managing Director had settled in. Later that month the Applicant company was founded.

8. The Applicant primarily conducts its business online, selling high quality linen and home wares that are typically white in colour. The trade marks used in relation to the Applicant’s goods are those applied for, although I note that the Applicant has now altered its logo on its web pages so that it is rendered in white against a turquoise background.

9. Sales in the 07/08 year are modest, in the tens of thousands of dollars, with continued modest growth to the 09/10 financial year. Promotional expenditure is similarly modest, although representing a significant proportion of turnover in the latter two years. The Applicant provides examples of its promotional activities, including editorial articles in a number of major Australian publications, advertisements in smaller publications and branded stationery. The Applicant also uses Google AdWords to promote itself, nominating words such as ‘bedding’ and ‘pillows’ to bring up its website adjacent to search results.

10. The Applicant attests to one instance of confusion having occurred, in which an email was sent to the Applicant enquiring about a conditioner that the writer’s friend had encountered on a cruise. The Applicant responded that the goods encountered were those of the Opponent, with which the Applicant shared no relationship.

11. The Opponent has corresponded with the Applicant, via their respective legal representatives, on several occasions objecting to the Applicant’s use of its trade marks, domain names and business names. The Applicant’s response was to the effect that it questioned the strength of the Opponent’s reputation in Australia, noting it had no stores or trade mark registrations here and that reputation elsewhere was irrelevant.

    Grounds pursued and Onus

12. At the hearing the Opponent pursued grounds of opposition based upon sections 58, 60 and 62A. As a formality, and for completeness of my decision, I decide that none of the other grounds in the Notice of Opposition have been established.

13. The onus is upon the opponent to establish one or more of its grounds of opposition on the balance of probabilities[4]. The time at which the ground of opposition must be established is the priority date of the applications[5], being 21 April 2008.

    [4] Pfizer Products Inc v Karam (2006) 70 IPR 599 per Gyles J at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32].

    [5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592; Winton Shire Council v Lomas (2002) 56 IPR 243; Lomas v Winton Shire Council [2003] AIPC 91-839.

    Section 58

14. Section 58 of the Act provides

    Applicant not owner of trade mark

    58. 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.

15. To establish its ground under section 58, the Opponent must establish that it used an identical or substantially identical trade mark[6] to that of the Applicant in relation to goods which are the ‘same kind of thing’[7] before the application date of the opposed application or the first use of the opposed trade mark, whichever is the earlier[8].

    [6] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) 20 ALR 495.

    [7] Re Hicks’ Trade Mark (1897) 22 VLR 636; 3 ALR 75.

    [8] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402.

16. The determination of substantial identity involves a side by side comparison, as set out by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd[9]:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

    [9] Shell  Co of Australia Ltd v  Esso  Standard Oil (Australia) Ltd (1963) 109 CLR 407.

17. I cannot agree with the Opponent’s submission that the trade marks under consideration are substantially identical. In a side by side comparison the most obvious difference is that the Applicant’s marks contain the word LINEN, whereas the Opponent’s do not. The principle expounded in PB Foods Ltd v Malanda Dairy Foods Ltd[10], in which an utterly descriptive word present in a trade mark will not detract from its substantial identity to another, does not apply here. In finding that the trade marks CHILL and CHOC CHILL were substantially identical, Carr J commented:

    In the end, I find myself in agreement with the [Registrar’s] delegate’s reasoning and conclusion…as follows:

    "When the side by side comparison is made between the mark CHILL, used by Malanda, and the application trade mark it is not a simple one to one comparison. PB Foods' mark is not simply CHOC CHILL. PB Foods has chosen to file its mark as one which will be varied in use and in doing so has made it clear that the essential feature of its trade mark is the word CHILL which is used with a purely descriptive variable feature. In selecting the goods, a prospective purchaser will therefore recognise the word CHILL as the badge of origin and will see the word CHOC or COFFEE or STRAWBERRY or VANILLA as nominating nothing more than the flavour of the product. When considered in this light, it seems to me that the comparison between CHILL and CHOC CHILL does lead to a "total impression of similarity" and the proprietorship claim is supported."

    [10] PB Foods Ltd v Malanda Dairyfoods Ltd (1999) 47 IPR 47, 54-55.

18. The word LINEN does not expressly refer to the nature of the goods specified in the application for the word mark. Moreover, it is not interchangeable with other descriptive words such that the phrase THE WHITE COMPANY is the essential feature of the marks for which registration is sought.

1. In addition, whilst I appreciate the Opponent’s submission that in the context of the goods the word ‘Linen’ is non-distinctive, that does not mean that the word is to be ignored in assessing the substantial identity of the marks. THE WHITE COMPANY conveys a different message to THE WHITE LINEN COMPANY – the latter clearly describes a company relating to specific goods whilst the former conveys a more nebulous notion of either a company relating perhaps to white products generally or (without previous knowledge of the company’s goods or services) a company named after the surname ‘White’.

2. In my assessment they are not substantially identical. Accordingly, the ground of opposition under section 58 must fail.

   Section 60

3. Section 60 provides:

   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.

4. In McCormick & Co Inc v McCormick[11] Kenny J discussed the meaning of “reputation” in section 60 in the following way:

   What is intended by the word “reputation” in section 60? The word is defined in The Macquarie Dictionary as follows:

   reputation…1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute…2. favourable repute; good name…3. A favourable and publicly recognised name or standing for merit, achievement, etc…4. The estimation or name of being, having done, etc, something specified.

   Compare The Oxford English Dictionary. In s60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

   It is the above question which is to be adapted to the circumstances at hand.

   [11] McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102, at [81] – [82].

5. Further, in Renaud Cointreau v Cordon Bleu International Ltee[12] the Full Court said that the reputation required to be demonstrated was:

   one of which a significant number of persons were aware…What is “significant” or “substantial” will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

   [12] Renaud Cointreau v Cordon Bleu International Ltee (2001) ALR 657 at [74].

6. The goods of the Opponent are general in nature. Linen, clothing and various home accessories are the sorts of goods purchased by most of the population in Australia. Accordingly, the reputation required to be shown would need to be commensurate with the size of the relevant market.

7. The Opponent’s submissions drew my attention to the following information as support for the Opponent’s trade marks having established a reputation in Australia before the priority date:

   ·     the Opponent’s reputation is based on over a hundred million (Australian) dollars of annual sales turnover,

   ·     this reputation developed in the United Kingdom, a country with which Australia has extensive ties. Exposure to the goods of the overseas owner is a factor going towards establishing the requisite reputation of the Opponent,

   ·     this reputation extended to Australia with sales of the Opponent’s goods since 1995 against a broad range of consumers who either access the Internet or order by catalogue,

   · it is not necessary to make out that the requisite reputation under section 60 be extensive in Australia,

   ·     the opponent’s goods are licensed and strict standards of quality control are exercised in respect of those goods distributed through licensees.

8. I note also the following information from the Opponent’s evidence:

   ·     In 2007, the Opponent’s website received 18,210 visits from Australians generating a modest amount of revenue,

   ·     In the period 1 January 2008 to 20 April 2008, the Opponent’s website received 7,137 visits from Australians generating also a modest amount of revenue,

   ·     The Opponent’s customer database contained the names of approximately 3,600 Australian who had made purchases or enquiries[13] between 1995 and 2010. There is no indication as to how many of these were customers before the priority date.

   [13] I acknowledge the Applicant’s concern that this figure is overstated because some of the database entries relate to ‘Austria’ rather than ‘Australia’, however I am satisfied that the figure is reasonably correct. On my own brief perusal of the list I counted 28 entries which could not clearly be attributed to Australian customers, which does not significantly affect the final figure.

9. The assessment of a trade mark’s reputation in Australia is frequently gauged from details of annual turnover and promotional expenditure. See for example McCormick[14] in which it is stated, at [86]:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

   [14] supra.

10. From the information provided I have little doubt that the Opponent enjoys a sizeable reputation in the UK. The question to be answered however is how much of that reputation has transferred into the Australian consciousness. Other than the existence of a website which Australians may access, there is no information before me to suggest that the Opponent has undertaken any promotional activities either in Australia or aimed at the Australian market.

11. The information regarding the Opponent’s website traffic and resultant sales is not sufficient, in itself, to satisfy me that the requisite reputation exists. As I have already mentioned, I consider the numbers involved to be modest, and given the nature of the goods and the size of the relevant market I am not satisfied that this information establishes the reputation contemplated by section 60.

12. I have assumed the extensive ties Australia shares with the United Kingdom, as referred to in the Opponent’s submissions, to be a reference to the number of travelers between the two countries. Whilst there is no doubt that a significant number of Australians travel to the United Kingdom there is no indication available to explain how much, if any, exposure travelers had to the Opponent’s marks. Spillover reputation, by means of international travel, is extremely difficult to quantify, as in the words of Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd[15]:

    Evidence of this kind has considerable difficulty, it seems to us, as proof of reputation. It is not possible to assess how many travellers on short visits to the United States would have watched television either at all or at the times of the appellant’s advertising, or would have visited the shops or supermarkets.

    [15] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) FCR 302; 106 ALR 465; 23 IPR 193.

13. On the question of the likelihood of confusion resulting from the use of the Applicant’s mark, I consider the comments by Stephen J in Hornsby Building Information Centre Pty Limited v Sydney Building Information centre Limited[16] pertinent:

    There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public...

    The risk of confusion must b accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.

    [16] Hornsby Building Information Centre Pty Limited v Sydney Building Information centre Limited [1978] HCA 11; (1978) 140 CLR 216 at 229-230.

14. I consider the descriptiveness of the trade marks THE WHITE COMPANY and THE WHITE LINEN COMPANY mitigates the risk of their confusion. Similarly, although the simplistic logos which the parties have adopted are to some degree similar I am not satisfied that they are likely to be confused because of the reputation of the Opponent’s logo. Rather, if confusion were to occur it is more likely to be on the basis of both parties adopting elements common to trade marks in general in a similar manner.

15. In summary I find I am not satisfied that the marks relied upon by the Opponent in fact enjoyed the kind of reputation amongst the relevant public contemplated by section 60 as at the priority date. The figures regarding web site traffic and resultant sales are modest, and without further information demonstrating the regard or esteem in which the Opponent’s marks are held I cannot speculate or draw inferences in the Opponent’s favour. As noted by the Registrar’s delegate in Sara Lee Corporation v Bali Blue Pty Ltd:

    The reputation in Australia cannot be assumed – it must still be established as a question of fact – per Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) FCR 302; 106 ALR 465; 23 IPR 193.

    Other than information regarding the Opponent’s web site traffic and resultant sales, there is little evidence going to the reputation of the Opponent’s marks in Australia as at the priority date.

16. When the foregoing matters are weighed up I find I am not satisfied deception or confusion amongst a significant number of people was likely as at the priority date. I thus find that the Opponent has not established its section 60 ground.

    Section 62A

17. Section 62A of the Act provides:

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

18. There are a limited number of decisions from the Registrar making positive determinations of bad faith, and each has been decided on the facts peculiar to each case. A general approach to applications made in bad faith is described in the UK case of Harrison’s Trade Mark[17]:

    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 bad faith by persons adopting proper standards.

    [17] Harrison’s Trade Mark Application [2004] EWCA Civ 1028; [2005] FSR 10, at [26].

19. Further, the Hearing Officer in Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited[18] found that in most circumstances an element of intentional dishonesty was necessary to establish section 62A, but failing that the ‘reasonable man’ test may apply:

    In circumstances where an applicant claims that the application was not made in bad faith but, rather, as a result of its own ignorance or naivety, then the evidence would need to show that the circumstances were such that the ‘reasonable man’ standing in the shoes of the applicant, should be aware that he ought not to apply for trade mark registration.

    [18] Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited [2009] ATMO 26.

20. The factors the Opponent submits suggests bad faith on the Applicant’s part in applying for its trade marks are:

    ·     the Applicant’s director was a customer of the Opponent before the priority date and continued to be so after the relevant date,

    ·     the Applicant’s director approached the Opponent shortly before the priority date to explore commercial opportunities with the Opponent,

    ·     the goods of the Applicant do not differ substantially in character from those of the Opponent, and

    ·     the ‘white linen’ marketing concept, which is directly reflected in the Applicant’s trade marks, is key to the marketing philosophy developed by the Opponent in 1993.

    · (I note the Opponent’s submissions that the party’s marks are substantially identical, however I have already dealt with that consideration under section 58).

21. The Applicant responds that it adopted the word mark to clearly represent the nature of its goods, and chose ‘The’ and ‘Company’ to represent its objective in being the particular company consumers would choose for linen and homewares. The Applicant also commissioned a design agency to create a logo that would be “clean, crisp, [and] professional” and differentiate the Applicant “in a stylish classic way”. It declares that although it was aware of the Opponent’s business at the time it developed its trade marks, it had no intention of imitating the Opponent’s marks and believed they were sufficiently different.

22. The Applicant obtained legal advice in 2008 to the effect that its trade marks were sufficiently distinguishable from the Opponent’s trade marks, and conducted research into the market to reveal similar online businesses with names such as ‘WHITE HOME’ ( ‘THE WHITE SHOP AUSTRALIA’ ( and ‘WHITEPORT’ (>

    Among the cases cited by the Opponent in support of its case, the UK decision of William Leith New Century Marquees[19] is most analogous. The facts leading to the delegate’s finding of bad faith included that the applicant was a customer of the overseas opponent and had proposed a license arrangement, which was declined. Additionally in Leith the applicant, before adopting NEW CENTURY as a trade mark, had previously recognised the words as a trade mark of the opponent – in a letter the applicant confirmed payment to the opponent for a ‘New Century’ marquee and in the delegate’s opinion he clearly used the term as a trade mark. I note that there is no evidence of the Applicant acknowledging the marks it uses as the property of the Opponent.

    [19] William  Leith  New Century Marquees (SRISO/018/00, UK Registry) p.9.

23. Although I consider the Applicant’s belief in the marks being sufficiently different plausible, I find its claim of no intention to imitate the Opponent’s marks somewhat improbable. Given the style of presentation of the logo marks of the parties’ I consider that some level of imitation, even if not to the extent propounded by the Opponent, is likely.

24. However whilst I acknowledge that in one view the Applicant is perhaps ‘sailing close to the wind’ with the similarity between its logo mark and the logo of the Opponent, the adoption of descriptive words and a simplistic logo incorporating those words, even though similar to the Opponent’s logo, does not necessarily infer bad faith. I consider that, absent registration or a significant reputation in Australia of the Opponent’s marks, the Applicant is equally entitled to use such elements in its own trade marks without an inference of bad faith.

25. As such, I am not satisfied that the ground of opposition under section 62A has been established.

    Decision

26. Section 55 of the Act provides:

    (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.

27. The Opponent has not established its opposition to the registration of trade mark applications 1236071 and 1236072. Accordingly, the applications may 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 the appeal has been decided or discontinued and that the disposition of the applications be in accordance with the Court’s order or direction.

    Costs

28. The Applicant is entitled to its costs which I award against the Opponent as per Schedule 8 of the Trade Mark Regulations 1995.

    Nicole Worth
    Hearing Officer
    Trade Marks Hearings
    6 February 2012