THOIP v Stephen Akrap

[2017] ATMO 94

TRADE MARKS ACT 1995

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

Re:Opposition by THOIP to registration of trade mark application 1668176(16) - MR HEMPY MISS HEMPY(and logos) -  in the name of Stephen Akrap.

Delegate:	Jock McDonagh
Representation:	Opponent: Written submissions prepared by Hudson Gavin Martin Technology and Intellectual Property Lawyers Applicant: Written submissions prepared by the Applicant
Decision:	2017 ATMO 94 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44, 60 and 62A considered – after amendment to specification of goods no grounds established – trade mark to proceed to registration – no award of costs

Background

1. This matter relates to an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of a trade mark filed by Stephen Akrap (‘the Applicant’). Relevant details of the opposed application are set out below.

Application No	1668176
Trade Mark	(‘the Trade Mark’)
Filing Date:	15.01.2015 (‘the Priority Date’)
Goods:	Class 16: Artwork; Printed artwork; Printed material; Printed matter

1. The Trade Mark was examined in compliance with section 31 of the Act and was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 4 June 2015. THOIP (‘the Opponent’) filed Notice of Intention to Oppose the registration of the Trade Mark on 4 August 2015 and a Statement of Grounds and Particulars (‘the Statement’) on 3 September 2015.  Thereafter the Applicant filed Notice of Intention to Defend on 6 October 2015. The parties then filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

2. I heard the matter by way of written submissions in Canberra on 6 April 2017 as a delegate of the Registrar of Trade Marks. The Opponent relied upon written submissions prepared by Hudson Gavin Martin Technology and Intellectual Property Lawyers. The Applicant relied upon written submissions he prepared himself.

   Grounds of Opposition

   4. The Opponent nominated the following grounds of opposition under the Act, all of which were pressed at the hearing:

   ·Section 44: The Trade Mark is substantially identical with or deceptively similar to a prior application or registration;

   ·Section 60: The Trade Mark is similar to a mark that has acquired a reputation in Australia;

   ·Section 42(b): Use of the Trade Mark would be contrary to law; and

   ·Section 62A: The application was made in bad faith.

3. To succeed in its opposition the Opponent bears the onus of establishing at least one of these four grounds on the ‘balance of probabilities’.[1]

   [1] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26], affirmed by the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

4. The time at which the grounds of opposition must be established is the date of filing of the application for registration.[2]

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595

   Evidence

   7.     The evidence consists of the following declarations:

Declarant	Position	Date Made	Annexures
Evidence in Support
Ronald Denecke (‘Denecke’)	Company Director and CFO of Opponent	18.12.2015	A to N
Evidence in Answer
Stephen Akrap (‘Akrap’)	Applicant	4.04.2016	A to G

1. Denecke provides a history and background to the use of various ‘Mr. Men’ characters since the early 1970s:

   The Opponent's now-iconic "Mr. Men" and "Little Miss" brands stem from the "Mr. Men" and "Little Miss" series of children's books and characters, which were created by the well-known children's author Roger Hargreaves in the 1970s. The first book in the "Mr. Men" series was published in the United Kingdom in August 1971, and sold over one million copies in the first three years of sale. The books quickly made their way to Australia, where they have continued to be sold on a large scale for the last 40 years. The "Little Miss" series was created a decade later in 1981. Today, there are over 50 books and characters in the "Mr. Men" series and over 30 books and characters in the "Little Miss" series, and new books and characters are still being created and added to both series.[3]

   [3] Denecke at [5]

2. Dencke states that the Opponent has a number of registered trade marks around the world, including in Australia, for the ‘Mr. Men’ and ‘Little Miss’ character names and illustrations. In Australia the Opponent has the following trade mark registrations:

Trade Mark No.	Trade Mark	Classes of Goods/services	Priority Date
710732	Class 3, 5, 9, 14, 16, 18, 20, 21, 24, 28, 29, 30, 32, 35, 42	13.12.1995 (Convention)
710733	Class 25	13.12.1995 (Convention)
1388065	Class 16, 25, 35	12.10.2010
1627961	Class  9, 16, 20, 21, 25, 28, 30, 41	18.08.2013 (Convention)
1252019	MR. BUMP	Class  9, 16, 25, 28, 41	17.07.2008
1252026	MR. HAPPY	Class  9, 16, 25, 28, 41	17.07.2008
1252030	MR STRONG	Class  9, 16, 25, 28, 41	17.07.2008
1252033	MR. RUDE	Class  9, 16, 25, 28, 41	17.07.2008
1252039	MR. TICKLE	Class  9, 16, 25, 28, 41	17.07.2008
1252057	MR. GRUMPY	Class  9, 16, 25, 28, 41	17.07.2008
1252065	MR. PERNICKETY	Class  9, 16, 25, 28, 41	17.07.2008
1252066	MR. SCATTERBRAIN	Class  9, 16, 25, 28, 41	17.07.2008
1228302	LITTLE MISS	Class  9, 16, 25, 28, 41	6.09.2007 (Convention)
1252022	LITTLE MISS NAUGHTY	Class  9, 16, 28, 41	17.07.2008
1252027	LITTLE MISS SUNSHINE	Class  9, 16, 28	17.07.2008
1252035	LITTLE MISS GIGGLES	Class  9, 16, 28, 41	17.07.2008
1252063	LITTLE MISS CALAMITY	Class  9, 16, 25, 28, 41	17.07.2008

1. I shall refer to the four device marks shown above as ‘MR MEN/LITTLE MISS logos’ and the remaining word marks as ‘MR MEN/LITTLE MISS word marks’.

2. As well as the various trade marks owned by the Opponent, there are  many other characters in the ‘Mr Men’ and ‘Little Miss’ inventory that have been featured in the books by Roger Hargraves (‘MR MEN/LITTLE MISS characters’), and Denecke provided examples of some of them:[4]

   [4] Denecke Exhibit B

3. Denecke states that MR MEN/LITTLE MISS characters feature in a series of children’s books and merchandise. The MR MEN characters were launched in the United Kingdom in 1971 and the LITTLE MISS characters in 1981 and in Australia soon thereafter.

4. Denecke also provides details of sales, turnover figures internationally and within Australia, along with discussion about the popularity of the MR MEN/LITTLE MISS characters and their use in collaboration with other international brands and charities. Details will be discussed later in the decision where appropriate.

5. Akrap appears not to have been prepared by legal or IP professional advisors. It combines some facts and much by way of submissions. However, it does provide useful background about the Applicant’s business in the manufacture and sale of hemp based products including (but not limited to) soap, lip balm, hemp plastics, printed materials, labels, catalogues, stationery, product information sheets, oils, powders, and other hemp products.

6. Akrap states that the Applicant chose the Trade Mark to provide an approachable and soft representation of the hemp product and chose colours representative of hemp or cannabis leaves. The choice of male and female honorifics was to differentiate the male and female plants within the hemp species, and the colours represent the species and strains of the plant.

7. Akrap also states that the Applicant did seek IP professional advice regarding appropriate specifications for its goods and registrability issues. The declaration strenuously denies any bad faith or intent to deceive or confuse.

   Discussion

8. The Opponent’ submissions acknowledge that not all of the MR MEN/ LITTLE MISS characters are protected in full as registered trade marks in Australia. However, it submits that the relevant question in each case is not only whether consumers will be confused, misled or deceived as between the Trade Mark and the MR MEN/ LITTLE MISS logos. The Opponent submits that is also relevant whether use of the Trade Mark will cause confusion or deception with respect to the Opponent's goods generally. Given that, the Opponent contends the full range of the MR MEN / LITTLE MISS characters are relevant to determining whether the Trade Mark is likely to confuse or deceive consumers, and whether the application is contrary to law and/or was made in bad faith.

9. I now turn to the grounds of opposition.

   Section 44 – Identical etc. trade marks

10. Section 44 of the Act relevantly states:

(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 similarsee section 10.

Note 2:       For similar goodssee subsection 14(1).

Note 3:       For priority datesee 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)  …

             (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 limitationssee 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 titlesee section 6.

Note 3:       For priority datesee section 12.

1. Thus to found its ground of opposition under subsection 44(1) the Opponent has to establish to my satisfaction the existence of at least one trade mark registration or application for registration of a trade mark that is owned by a person other than the Applicant and which:

   ·        has a priority date earlier than that of the opposed trade mark; and

   ·is registered or made in respect of the same or similar goods or closely related services; and

   ·is substantially identical or deceptively similar to the opposed trade mark.

2. The marks relied upon by the Opponent are those shown above in [9], and with the exception of registration 710733, each of the marks relied upon by the Opponent have a priority date earlier than that of the Trade Mark and are registered in class 16.

3. The Opponent did not press substantial identity, only deceptive similarity. I shall only address the deceptive similarity issue.

4. Deceptive similarity is defined in section 10 of the Trade Marks Act as follows:

   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.

5. The test to determine whether trade marks are ‘deceptively similar’ is set out in Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited[5]:

   The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the defendant’s [trade mark]

   [5] (1961) 109 CLR 407 at 415

6. The Court added at 416, that:

   [The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.

7. The principles applicable in determining the standard of “confusion or deception” under s 44(1) of the Act were discussed by French J in Registrar of Trade Marks v Woolworths Ltd (‘Woolworths’):[6]

   [6] [1999] FCA 1020 at [50]

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd at 594-595, 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 Bali Co 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.”

8. The Opponent submitted that the Trade Mark bears a great similarity to the Opponent’s marks when assessed in terms of the marks’ component parts and in a holistic assessment in the idea of the marks.

9. In particular, the Opponent points to the following primary key characteristics of the MR MEN/LITTLE MISS logos:

   ·     Characters are predominantly simple shapes;

   ·     Characters are anthropomorphic, particularly in the use of a smiley face;

   ·     Characters are drawn with a simple, black ‘marker-pen’ style outline;

   ·     Characters are filled with a few bright characters, rarely more than two or three per character;

   ·     Characters are accompanied by their name (eg ‘MR [NAME]’), generally in a bold black, sans-serif fully uppercase text; and

   ·     The characters’ names are simple, usually disyllabic, and sometimes end with the letter ’Y’.

10. The Opponent submitted that these attributes are copied to a greater or lesser extent by the Trade Mark.

11. The Applicant’s submissions spent a great deal of time itemizing the various differences between the Opponent’s characters and trade marks and the Trade Mark.

12. I note that the comparison of trade marks under this ground of opposition is limited to the MR MEN/LITTLE MISS logo registrations 710732 (MR MEN/LITTLE MISS), 1388065 (MR MO) and 1627961 (LITTLE MISS HUG) (the ‘cited marks’). Much of the Opponent’s submissions regarding the characteristics of marks and characters are only of relevance to the other grounds of opposition.

13. Upon consideration of the trade marks it is clear to me that there are sufficient visual, aural and conceptual differences to prevent a person of imperfect recollection considering the marks to be such that some people will wonder or be left in doubt about whether the two sets of products in question come from the same source.

14. The Trade Mark consists of four representations of a cannabis leaf in four different colours and includes the words MR HEMPY at the top left of the mark and MISS HEMPY in smaller writing at the bottom right. One of the leaves is much larger than the other three and is positioned centrally above the other three. Each leaf has two dots for eyes and a cartoon smile. Two of the smaller leaves are positioned under the words MISS HEMPY and also feature a small flower at the top left of their respective leaves.

15. Each of the cited marks comprises a circular shaped body with at least eyes and a smiling mouth, and legs and feet, along with their title in bold print. Registration 710732 (MR MEN/LITTLE MISS) features two characters with what appear to be arms held behind their backs, with the female character also featuring pigtails, a nose and freckles on her cheeks. 1388065 (MR MO) features a character with a tiny red bowler hat on the top of his head, a black dot for a nose under which appears a dark brown ‘handlebar’ moustache. MR MO also seems to have arms held behind his back. 1627961 (LITTLE MISS HUG) features a character with parted hair with a bow and two flowers as decoration, short arms and hands, and red shoes. As such there are significant differences between the marks.

16. As quoted in Denecke at [14],  Exhibit C1, in an article entitled ‘The Enduring Appeal of Mr Men & Little Miss’ on page 2/6 says:

    The characters’ appeal lies in their simplicity. Straightforward, thick-outlined, colourful illustrations, their personalities and attributes based on their names. Mr Grumpy, Little Miss Sunshine, Mr Greedy, Little Miss Chatterbox. Clever, as one can think of a person who is like each one of them.

1. Conceptually there are significant differences between the marks. Notwithstanding the Trade Mark’s anthropomorphic eyes and mouth, it is still clearly a leaf. On the other hand, the characters in the cited marks are clearly cartoon representations of male and female human-like characters. The names shown after the honorific ‘MR’ or ‘MISS’ in the cited marks emphasise their humanity, while ‘HEMPY’ in the Trade Mark empahasises its ‘plantness’ [sic]. The conceptual similarities between the respective trade marks are limited to the common use of the honorific ‘Mr’ and the cartoon nature of the characters referred to in each of the marks.

2. Even allowing for imperfect recollection, it is in my view unlikely that the use of the Trade Mark will deceive or cause confusion because of any similarity it has to the cited marks. I am not satisfied that this ground of opposition has been established.

   Section 60: Trade mark similar to trade mark that has acquired a reputation in Australia

3. Section 60 of the Act is reproduced below:

   Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

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

   (a)       another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)       because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

4. To establish its ground of opposition under section 60 the Opponent must demonstrate that as at the Priority Date there was another trade mark that had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.

5. It is necessary to bear in mind that each of the Opponent’s trade marks listed at [9] above is a separate mark for the purpose of considering the operation of s 60 of the Act in the present case.[7] I also consider that each of the MR MEN/LITTLE MISS characters used in books published in Australia operates as an unregistered trade mark in respect of the Opponent’s goods.

   [7] Qantas Airways Limited v Edwards [2016] FCA 729 (‘Qantas’) at [160]

6. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[8] by Kenny J at [81] – [82]:

   What is intended by the word “reputation” in s 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.

   Cf. The Oxford English Dictionary. In s 60, 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?

   [8] (2000) 51 IPR 102

7. Further, at [86], Kenny J said:

   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.

8. Denecke states that the Opponent’s share of revenues from sales of ‘Mr. Men’ and ‘Little Miss’ books in Australia for 2013 and 2014 amounted to approximately A$835,000 each year. The global revenues for the same years were approximately A$8,350,000 and A$10,440,000 respectively.

9. Denecke does not specify which particular trade mark(s) or character(s) are the subject of the revenue. Notwithstanding the requirement to consider trade marks separately as I noted above at [40], I think it is appropriate to conclude that the MR MEN/LITTLE MISS ‘universe’ of marks and characters is very well known in Australia. The Opponent’s books have been sold in Australia for over 35 years, along with a great deal of related merchandise.  There is a distinct formula in how each of the MR MEN/LITTLE MISS ‘universe’ of marks and characters are presented, such that they are recognised universally in Australia.

10. Putting to one side the question of whether or not the requisite reputation in particular marks has been made out, the Registrar must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion.

11. It is to be noted that, unlike a section 44(1) ground of opposition, the ground under section 60 of the Act is not based on the requirement that the allegedly conflicting marks are substantially identical or deceptively similar. However, for the purposes of section 60 of the Act, the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.[9]

    [9] Qantas at[142]

12. His Honour Yates J observed “the standard of ‘confusion or deception’ under section 60 of the Act is the same as under s 44(1) of the Act. Therefore, the principles [cited in Woolworths at [50]], apply here.”[10]

    [10] Qantas at [145]

13. The Opponent’s submissions were that the effect of the Opponent’s sales and the characteristics of the MR MEN/LITTLE MISS characters is that the Opponent has created a collective substantial reputation as a suite of characters. As a result, submits the Opponent, consumers are likely to be deceived or confused into thinking that MR HEMPY is another one of the Opponent’s MR MEN/LITTLE MISS characters.

14. While there is no evidence that the goods for which the Opponent’s MR MEN/LITTLE MISS characters and MR MEN/LITTLE MISS logos and word marks have a reputation are sold through the same channels and directed at the same target market as the Applicant’s hemp business I must consider not only actual use but also the extent of the statutory monopoly by reference to the full extent of the goods in respect of which the mark is registered.[11] 

    [11] DC Comics v Cheqout Pty Ltd [2013] FCA 478 at [20] – [22] and [40]

15. The registration is sought for “printed matter” not “printed matter relating to hemp products” and hence the Applicant’s Goods are exactly the same goods as those in in which the Opponent has a reputation.  While in considering this ground I can consider 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, I must assume a notional use of the mark.[12]

    [12] Ibid

16. Such reputation that the Opponent’s MR MEN/LITTLE MISS characters have established are primarily in the children’s book and entertainment market, with a certain amount of ‘brand extension’ to souvenir items such as cups and mugs and so forth. I note that such mugs and souvenirs are usually limited to characters suggestive of mood and emotion, for example ‘MR. GRUMPY’.

17. In the event that the Applicant extended its market to that including children’s books and printed matter, there is a real possibility that potential consumers in that market would deceived or confused.

18. However, in the sort of marketplace envisaged in Akrap, I do not consider that relevant potential consumers are likely to consider that the Trade Mark might be an evolution of the MR MEN/LITTLE MISS characters, logos or word marks. This because of the conceptual differences I have discussed in [35] to [37], and possibly because it would be considered as a parody, in the sense that refers to the leaf of the cannabis plant, an illicit substance which is unlikely to be the subject of a children’s book.

19. While I am not satisfied that this ground of opposition has been established in relation to the Applicant’s declared market, if the Applicant were to extend its market to children’s books and printed matter there is a real chance of potential deception of confusion. This ground of opposition has been established with respect to the Goods for which the Trade Mark is sought to be registered.

    Section 42(b): Trade mark’s use contrary to law

    55. Section 42 of the Act relevantly provides:

    42 Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:

    (b)       its use would be contrary to law.

    56. The Opponent nominated section 18 of the Australian Consumer Law (‘ACL’), which is contravened when a party engages in conduct in trade or commerce that is misleading or deceptive, or is likely to mislead or deceive customers. There must be a ‘real but not remote chance or possibility’ of misleading or deceiving regardless of whether it is less or more than 50 percent.[13]

    [13] Global Sportsman Pty Ltd v Mirror Newspapers Ltd (1984) 55 ALR 25 at 34, per Bowen CJ, Lockhart and Fitzgerald JJ.

    57. In the circumstances of this matter, where the Opponent has established that the use of the trade mark would be likely to deceive or cause confusion in terms of section 60, it does not necessarily follow that it has established that the use of the trade mark would ‘mislead or deceive’ under the ACL (or its common law equivalent), which is a higher standard. In Parkdale Custom Built Furniture Pty. Limited v Puxu Pty Limited[14], Gibbs C.J. said at [8]:

    [14] [1982] HCA 44; (1982) 149 CLR 191.

    The words of s. 52 require the court to consider the nature of the conduct of the corporation against which proceedings are brought and to decide whether that conduct was, within the meaning of that section, misleading or deceptive or likely to mislead or deceive . . . . . The words “likely to mislead or deceive”, which were inserted by amendment in 1977, add little to the section; at most they make it clear that it is unnecessary to prove that the conduct in question actually deceived or misled anyone. In McWilliams v. McDonalds [1980] FCA 159; (1980) 33 A.L.R. 394 it was rightly held by Smithers J. and by Fisher J. that to prove a breach of s. 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty Ltd (1954) 91 C.L.R. 592, a decision on the Trade Marks  Act 1905 (Cth) as amended, is distinguishable: I need not add to what their Honours said on this subject (33 A.L.R.) at 397-8 and 412-3. I agree too with those learned judges that the court must decide objectively whether the conduct is misleading or deceptive or likely to mislead or deceive, and that evidence that members of the public have actually been misled is not conclusive: see at 399-400 and 413-4. I would add that evidence that members of the public were misled, not by any conduct of the defendant, but by other circumstances for which the defendant was not responsible, would be quite irrelevant.”

    58.     In the same case Mason J. said at [30]:

    “. . . the onus is on the plaintiff to show that the conduct is likely to mislead or deceive. Therefore conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s. 52.”

    59. While in this case, I do not need to limit my consideration to the Opponent’s trade marks and can also take into account the MR MEN/LITTLE MISS characters that were not trade marks that had acquired a reputation in Australia, I do not consider that the situation is substantially different to that considered under section 60.

    60.     The conceptual differences between the Trade Mark and the MR MEN/LITTLE MISS logos, word marks and characters, are such that there is not a likelihood of deception or misleading so long as the Applicant is not involved in the market involving children’s books or printed material.

    61.     Again, while I am not satisfied that this ground of opposition has been established in relation to the Applicant’s declared market, if the Applicant were to extend its market to children’s books and printed matter there is a real chance of potential deception of confusion. This ground of opposition has been established.

    Section 62A: Trade mark application made in bad faith

20. Section 62A provides:

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

21. In DC Comics v Cheqout Pty Ltd[15] (DC Comics) at [62], Bennett J summarised the relevant principles established in UK authorities and set out in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)[16] (Fry (No 2)), that would be relevant in considering whether an application has been made in breach of s 62A, including:

    [15] (2013) 101 IPR 334

    [16] (2012) 94 IPR 551.

    Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant time of making the application. The objective element requires the decision-maker to decide whether, the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.

    The question is whether conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.

22. The Opponent submitted that the Trade Mark so clearly evokes the MR MEN/LITTLE MISS logos, word marks and characters that a reasonable person would not seek registration. The Opponent alleges that the Applicant has copied exactly, or attempted to copy exactly, the Opponent’s typeface and the MR/MISS [NAME] ‘trope’, along with the visual characteristics discussed earlier.

23. The Opponent submits that a reasonable person would view the application as an attempt to hijack goodwill in the Opponent’s marks and characters.

24. The Opponent’s submissions criticised a comment made in Akrap about seeking advice from an IP professional on adoption of the Trade Mark. The Opponent submitted that any evidence that the application is supported by competent advice be ignored on the basis that it is hearsay and therefore inadmissible. The Opponent submitted that if the Applicant intended to rely on such advice to establish good faith, the Applicant should have provided that advice in evidence.

25. It should be noted that reg 21.15(4) of the Regulations states that ‘[t]he Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate.’ In Sullivan v Civil Aviation Safety Authority[17] the Full Court of the Federal Court found that common law rules of evidence (such as the principle in Briginshaw v Briginshaw[18]) do not necessarily bind administrative  decision makers.

    [17] [2014] FCAFC 93

    [18] (1938) 60 CLR 336

26. Akrap explains in some detail the reasoning behind adopting the Trade Mark. The hemp leaf image is a simplified representation of a traditional cannabis or hemp leaf and does not represent a man or a woman. Its use of dots for eyes and a smile do not really amount to anthropomorphic representation. The use of the honorific MR was used as a recognition of the expertise or knowledge of the Applicant in the field of hemp products.

27. Akrap specifically denies seeking to springboard from the Opponent’s product reputation or characters and that there was no intent copy or mimic any brand or logo.

28. Bad faith will not be found easily given the serious nature of the allegation. Because of the significant visual and conceptual differences I have already discussed, I do not consider that is the case here. I found the statements contained in Akrap regarding the adoption of the Trade Mark to be acceptable.

29. I am not satisfied that this ground of opposition has been established.

    Decision

30. Section 55(1) of the Act provides:

    Unless subsection (3) applies to the proceedings, 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.

31. Subsection (3) does not apply to these proceedings.

32. I am satisfied that the opposition has been established, under sections 60 and 42(b), in respect of the goods in class 16. That being the case, my decision would have been to refuse to register the Trade Mark in respect of the specification of goods as it currently stands.

33. However, I came to the conclusion that if the specification was amended to exclude children’s books or printed matter for children, the grounds of opposition would not be established. Therefore, on 15 August 2017 I advised both parties that I would allow the Applicant 14 days from that date to request that its application be amended by amending class 16 by adding ‘none of the aforementioned including children’s books or printed matter for children’.

34. On 22 August 2017 the Applicant requested the amendment to the specification of goods as mentioned above. That amendment has been approved and the Trade Mark’s specification now reads:

    Class 16: Artwork; Printed artwork; Printed material; Printed matter; none of the aforementioned including children’s books or printed matter for children

35. As such, none of the grounds of opposition have been established with respect to the revised specification of goods.

36. The trade mark application 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 the appeal has been decided or discontinued.

    Costs

37. The parties sought their costs.  Costs generally follow the event.

38. The Opponent did establish two grounds of opposition with respect to the Application as it was originally made.  The fact that I offered, and the Applicant accepted, a revised specification does not change this. 

39. On the other hand, the Applicant has obtained registration for the Trade Mark with amendment to the specification of goods that does not diminish his stated intended use of the Trade mark.

40. Both parties may be regarded as having succeeded in equal measures and it is appropriate in these circumstances that each party meet its own costs in relation to both matters and I accordingly make no award.

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    28 August 2017