Think Schuhwerk GmbH v Thinx Inc

[2023] ATMO 193

TRADE MARKS ACT 1995

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

Re:Opposition by Think Schuhwerk GmbH to registration of trade mark application 2151557 (5) – THINX (Figurative) – in the name of Thinx Inc.

Delegate:	Nicholas Smith
Representation:	Opponent: Pipers Applicant: Griffith Hack
Decision:	2023 ATMO 193 Trade Marks Act 1995 (Cth) - section 52 opposition: ss 44, 58A and 60 considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Think Schuhwerk GmbH (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Thinx Inc. (‘Applicant’): 

Application Number:

2151557

Filing Date:[1]

27 January 2021

Goods:

Class 5: Sanitary wear; sanitary pads, sanitary napkins, sanitary panties, sanitary tampons, sanitary towels

(‘Applicant’s Goods’)

Trade Mark:

(‘Trade Mark’)

[1] Also known in this decision as the ‘relevant date’.

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars on 23 September 2021 (‘SGP’). The SGP raised grounds of opposition under ss 44, 58A and 60. The Applicant filed a Notice of Intention to Defend on 26 November 2021.

3. A relevant factor that has had significant input in my decision is that the Trade Mark was originally sought to be registered for a variety of goods and services in classes 25 and 35, including for clothing.  It is apparent that the grounds particularised by the Opponent relate to trade marks owned by the Opponent and registered and used for clothing products.  On 19 September 2023 the Applicant requested that the specification for the Trade Mark be amended to remove the goods and services in classes 25 and 35.

   Evidence

4. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 9 February 2022 by Alexander Schreiner, Business Manager at the Opponent, with Annex eV-1 (‘Schreiner declaration’); and

   ·Declaration made on 10 February 2022 by Alexander Sturmer, Director Sturmer Agencies Pty Ltd, the distributor of the Opponent’s footwear and accessories in Australia, with Annexures AS-1 to AS-10 (‘Sturmer declaration’).

5. The Applicant filed the following evidence in answer:

   ·Declaration made on 19 May 2022 by Nathan Fox, Senior Vice-President/Treasurer of the Applicant, with Annexures A to E (‘Fox declaration’).

6. The Opponent did not file evidence in reply.

7. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  The Opponent requested that the matter proceed to a decision without hearing and paid the appropriate fee.  As a result the matter has been allocated to a delegate of the Registrar for a decision based on the written record.

8. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

9. The Opponent is an Austrian company that is involved in the production and distribution of footwear, which it does so using various trade marks containing the element ‘Think’.  

10. The Opponent is the owner of the Australian trade mark registrations listed below (‘Opponent’s Trade Marks’)[2].  The goods and services for which the Opponent’s Trade Marks are registered are collectively referred to as the ‘Opponent’s Goods and Services’. 

    [2] The Opponent also particularized trade mark number 999477 for THINK in classes 18 and 25 however as of 2 November 2023 this mark’s status changed to ceased.

Number	Trade Mark	Priority Date	Goods or Services
1091414	19 Dec 2005	Class 25: Clothing including outerclothing; headgear; footwear, particularly men's footwear
1201128	Think	18 Apr 2007	Class 35: Retail sales for goods including in classes 18 and 25
1631970	THINK OUTDOORS	22 Apr 2014	Class 25: Clothing, footwear, headgear
1633440	22 Jul 2013	Class 10:  Orthopedic articles, in particular orthopaedic shoes, insoles and soles Class 18:  Leather and imitations of leather, and goods made of these materials, included in this class, animal skins, hides; trunks and travelling bags, handbags and waist packs, umbrellas and parasols Class 25: Footwear, in particular soles, clothing and headwear

1. The relevant claims/statements in the Schreiner and Sturmer Declarations can be summarised as follows:

   ·     The Opponent has produced and sold its ‘Think’ branded footwear globally since the early 1990s and has sold its footwear in Australia since 2010-11 though its distributor Sturmer Agencies Pty Ltd.  Sales of the footwear in Australia are significant.

   ·     The Opponent sells its high-end footwear products from at least 6 stores in Australia and also online. The Opponent’s Trade Marks are featured on the footwear packaging, merchandising, brochures and retailer catalogues. 

2. The annexures to the Schreiner and Sturmer Declarations display various marketing material that use the Opponent’s Trade Marks including third party brochures and photos of packaging.   I note that the sales of the Opponent’s footwear products in Australia are, especially in recent years, minimal in the context of the large market in Australia for footwear, with the products apparently only being sold in 6 stores.

   The Applicant

3. The Applicant is a United States company involved in the making and retailing of feminine hygiene clothing that can be worn by women during menstruation as a substitute or supplement to traditional feminine hygiene products.

4. The relevant claims/statements in the Fox Declaration can be summarised as follows:

   ·     The Applicant’s feminine hygiene products have been available in Australia since 2021 and are retailed online both directly by the Applicant and through third party retailers.  

   ·     The Applicant’s products are advertised by the Applicant’s social media sites and have been promoted by articles in third party media sites. 

   Grounds of Opposition, Onus and Standard of Proof

5. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 44, 58A and 60. To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

6. The onus of proof in an opposition rests upon the Opponent.[3]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4] The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of ss 44 and 60.[5]

   [3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [4] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also Trade Marks Act 1995 (Cth) s 29(1).

   Discussion

   Section 44

7. The relevant provisions of s 44 are reproduced below:

   Section 44 - Identical etc. trade marks

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

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

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

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

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

   Note 1: For deceptively similar see section 10.
   Note 2: For similar goods see subsection 14(1).

   (2)…

   (3)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.

   (4)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.

8. To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered or sought to be registered by a person other than the Applicant:

   ·     has a priority date which is earlier than the Trade Mark’s priority date (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

9. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and/or 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances exist which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.

10. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks.  Each of the Opponent’s Trade Marks has a priority date that is earlier than the priority date of the Trade Mark. 

    Similar goods

11. Section 14 relevantly provides:

    14Definition of similar goods and similar services

    (1)For the purposes of this Act, goods are similar to other goods:

    (a)if they are the same as the other goods; or

    (b)if they are of the same description as that of the other goods.

12. McCormick & Company Inc v McCormick summarises the legal principles applicable when determining if the goods for which the Opponent’s Trade Marks are registered are goods of the same description as the Applicant’s Goods as follows:

    Whether the relevant goods are of the same description is essentially a question of fact.

    The authorities establish that there are three principal factors to be considered in this regard.  They are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold.  As to the last-mentioned matter, it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade:  see In Re Jellinek’s Application (1946) 63 RPC 59 at 70-72; In Re John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 (“Crowther’s Application”) at 372; In Re Frank George Whiting’s Application (1952) 69 RPC 219 at 221; and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 94. As the High Court stated in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 606-607:

    The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive.  Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods:  see In re The Australian Wine Importers Ltd (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84, at p 90 per Latham CJ. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In re Jellinek’s Application (1946) 63 RPC 59. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case … the Assistant-Comptroller elaborated on the observations of Romer J in the following manner:  ‘In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade.  In the case of Jellinek’s Application …, Romer J classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold.  No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description”’:  Inre an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 when he said: ‘What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments’ (1945) 70 CLR, at p 94.

    On the one hand, goods are not necessarily of the same description simply because they are sold for human consumption and in common trade channels: see, for example, In Re J & J Colman Ltd’s Application (1929) 46 RPC 126, where mustard and semolina were held not to be goods of the same description. See also G Wood, Son & Co Ltd v McVitty & Co Pty Ltd (1964) 34 AOJP 2601 and In Re Chan Li Chai Medical Factory (HK) Ltd’s Application (1990) 19 IPR 140 at 144. On the other hand, the expression “goods of the same description” is not construed restrictively and regard is paid to the commercial context in which the goods in question are bought and sold: see Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 546 and Dinning v New Balance Athletic Shoe Inc (1992) AIPC 38,719 at 38,725.[6] 

    [6] [2000] FCA 1335, [17]–[20] (Kenny J) (emphasis altered).

13. The case of Paypal, Inc v Braintree Communications Pty Ltd[7] summarises the legal principles applicable when determining if the services for which the Opponent’s Trade Marks are registered are closely related to the Applicant’s Goods as follows:

    [7] [2017] ATMO 90.

    In Qantas Airways Ltd v Edwards[8] Yates J quoted from the judgment of French J in Registrar of Trade Marks v Woolworths Ltd[9]:

    [8] [2016] FCA 729, [111] (Yates J).

    [9] (1999) 93 FCR 365; [1999] FCA 1020, [37] (French J).

    ... The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”. ...

    Yates J continued:

    His Honour also said in this connection that “closely related” was of wider import than “similar”.

    Woolworths was a case arising under s 44(2) of the Act. Thus, the question was whether, in the case of a mark for services, there was conflict with a previously registered mark for “closely related goods”. His Honour gave (at [38]) the following illustrations where goods and services might be “closely related”:

    Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets. ...

    His Honour also made reference to Caterpillar Loader Hire (Holdings)Pty Ltd v Caterpillar Tractor Co (1983) 77 FLR 139; [1983] FCA 143 (Caterpillar) in which Lockhart J said (at 150):

    ... It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related. Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programs) on the other.

    Significantly, in Woolworths, French J (at [38]) also said that the range of relationships between goods and services which may support the designation “closely related” will be “limited by the requirement in s 44(2) that there be a substantial identity or deceptive similarity between the potentially conflicting marks which attach to them”. This observation might suggest that his Honour had in mind that, in a case arising under s 44 of the Act, the determination of whether the goods and services are “closely related” will be informed by the determination of whether the competing marks are, in fact, deceptively similar.

    However, at [38] his Honour continued by stating that “[t]he relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods” (emphasis added). It was in this context that his Honour gave the examples quoted at [113] above and referred to the examples given by Lockhart J in Caterpillar. This part of his Honour’s reasoning suggests that the question of whether goods and services are “closely related” is a discrete question within the injunction against registration provided by s 44 of the Act.

    This understanding is supported by the following passage in [39] of his Honour’s reasons:

    ... Apposite to the present case is the question whether a retailer of various classes of goods provides a service to customers which warrants the description of the goods for sale as “closely related goods” in respect of that service. The characterisation of the relationship between services and goods in this way is evaluative. The logic of s 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as “conceptually distinct” but accepted that one could not be addressed in isolation from the second: “The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive.” This approach is not greatly assisted by the language of s 10 which, like s 6(3) of the 1955 Act, defines deceptive similarity solely in terms of the degree of resemblance of the trade marks in question and whether that degree of resemblance is “likely” to deceive or cause confusion. But that definition must, in the context of s 44, be applied to the case of “closely related” goods and services.

    His Honour concluded at [40]:

    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. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant’s marks would be likely to deceive or to cause confusion.

    The practical judgment to which his Honour referred in the last passage is, quite clearly, the judgment involved in determining whether the two marks are deceptively [similar]. The passage marks his Honour’s acceptance that the question of deceptive similarity between allegedly conflicting marks will be informed, in part, by the closeness of the relationship between the goods and services in respect of which the marks severally are, or are sought to be, registered. I do not accept that his Honour was there directing attention to the judgment involved in determining whether given goods and services are “closely related” as such. [10] 

    [10] [2017] ATMO 90, [28]-[29] (Hearing Officer Thompson).

1. I fail to identify any goods or services for which the Opponent’s Trade Marks are registered as similar or closely related to the Applicant’s Goods.  The Applicant’s Goods are sanitary products in class 5.  The Opponent’s Trade Marks are registered for, broadly, clothing, footwear and retail services.  The Applicant’s Goods are goods of a different nature for a different purpose and sold in different channels from the Opponent’s Goods and Services.  In particular, the mere fact that the Applicant’s Goods may include sanitary underwear worn by women during menstruation does not render those goods similar to the Opponent’s class 25 clothing.  The former is a health product that is a substitute for a tampon or sanitary pad, produced by specialist companies for a specialist use, while the latter is a general product has an entirely different purpose and is produced by a different types of supplier[11].  Equally the mere fact that the Applicant’s Goods are sold through similar retailers (often in different sections) does not make the Opponent’s Services closely related to the Applicant’s Goods.

   [11] While there are some examples of underwear companies starting to offer the Applicant’s Goods this is not the norm and the fact remains that the Applicant’s Goods are of a different nature and of a different purpose to the Opponent’s Goods and Services.

2. As the third requirement is not satisfied, I find that the Opponent has failed to establish the ground of opposition under s 44.

   Section 58A

3. Section 58A is reproduced below:

   Section 58A – Opponent’s earlier use of similar trade mark

   (1)This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

   (a)subsection 44(4); or

   (b)a similar provision of the regulations made for the purposes of Part 17A.

   Note: Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first-mentioned trade mark has been continuously used since before the priority date of the other trade mark.

   (2)The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

   (a)first used the similar trade mark in respect of:

   (i)    similar goods or closely related services; or

   (ii)   similar services or closely related goods;

   before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

   (b)has continuously used the similar trade mark in respect of those goods or services since that first use.

   Note:  For predecessor in title see section 6.

4. For s 58A to apply, the trade mark must have been accepted by the examiner under the provisions of s 44(4), or a hearing officer finds during an opposition that it is appropriate to apply the provisions of s 44(4). In this matter the Trade Mark was not accepted by the examiner under the provisions of s 44(4). Furthermore, given my finding that the Trade Mark is not sought to be registered for goods that are similar or closely related to the goods and services for which the Opponent’s Trade Marks are registered, the provisions of s 44(4) are not available to be applied in this opposition proceeding. As such this ground of opposition is not available to the Opponent.

   Section 60

5. Section 60 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.

6. To establish a ground of opposition under s 60, an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.

7. Some of the relevant principles of s 60 are summarised in the recent case of Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods as follows:

   The first of these elements calls for a factual inquiry into the extent and nature of the reputation that had been acquired by the existing trade mark – here, the Aachi mark – in Australia. The second element calls for an assessment of the likelihood of deception or confusion arising from use of the new trade mark as a consequence of that reputation.

   The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81; 201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 (Rodney Jane Racing) at [87] (O’Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is “likely” to be deceptive or cause confusion.[12]

   [12] [2023] FCA 487 [20]-[21], (Kennett J)

8. In McCormick & Co Inc v McCormick,[13] Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[14]  Her Honour quoted with approval the following words of Lockhart J in 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 …[15]

   [13] [2000] FCA 1335.

   [14] Ibid [81].

   [15] (1992) 33 FCR 302, 343.

9. On the subject of reputation, Kenny J also referred to Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG, 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 the 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.[16]

   [16] (1999) 47 IPR 423, 436.

10. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[17] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955 (Cth). That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless the words of Heerey J provide some guidance:

    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 … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[18]

    [17] [2000] FCA 1587.

    [18] Ibid [91] (emphasis in original). Justice Heerey’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

11. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

    The Opposed trade mark is similar to the Opponents Think, Think!, THINK OUTDOORS, and THINK! WELLFORMED SHOES FOR NATURAL WALKING Logo trade marks (registered trade marks #999477, #1201128, #1631970, #1633440 and #1091414) that have since at least 2003 acquired goodwill and reputation in Australia in respect of the goods and services specified in the respective registered trade marks. The Opponents first use was prior to the priority date of the Opposed trade mark.

12. The evidence provided by the Opponent of reputation in the Opponent’s Trade Marks in Australia is minimal, with very limited sales in Australia from a mere handful of stores.  In any event, were I to find that the Opponent had a reputation in Australia it would be limited to footwear.  The Applicant’s Goods are sanitary products in class 5.  By reason of the significant difference in the Applicant’s Goods and the goods that the Opponent may have reputation in, there is no prospect that the use of the Trade Mark for the Applicant’s Goods would deceive or cause confusion by reason of the reputation in any of the Opponent’s Trade Marks.  To put it another way, there is no realistic prospect that consumers aware of the Opponent’s Trade Marks and their use for footwear would view sanitary underwear bearing the Trade Mark and be caused to wonder whether the Opponent, a high-end leather footwear manufacturer from Austria, has expanded its product line into women’s sanitary products.

13. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

    Decision and Costs

14. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application number 2151557 may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

15. The Applicant has sought an award of costs in its favour.  While there is a general rule that costs follow the event, it is appropriate to depart from it in this case.  The Applicant, more than two years after the commencement of the opposition, substantially narrowed the specification to remove the goods and services in classes 25 and 35 that the opposition was primarily in relation to.  As such I consider that both parties have had a measure of success and I decline to make any order of costs.

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    28 November 2023