Tiffany and Company v Tiffany C Koury

[2009] ATMO 68

TRADE MARKS ACT 1995

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

Re:Opposition by Tiffany and Company to protection of International Registration Designating Australia 1160185(25) – International Registration No 903734 - TIFFANY KOURY - filed in the name of Tiffany Koury.

Delegate:	Frances Aarnio
Representation:	Opponent: Tiffany and Company, represented by Miriam Stiel of Allens Arthur Robinson Holder:  Tiffany C Koury, not represented, did not appear at the hearing or provide written submissions.
Decision:	2009 ATMO 68 Regulation 17A.29 opposition:  Grounds under ss 42(b), 43, 44, 59, 60 and 62A pursued – no ground established - opposition unsuccessful – protection extended to Australia.

Background

1. On 27 December 2006 Tiffany C Koury (‘the holder’) requested protection in Australia for the following International Registration Designating Australia (‘IRDA’):

   Application No:           1160185

   International
   Registration No:          903734

   Priority date:                27 December 2006

   Trade mark:                 TIFFANY KOURY

   Goods:  Clothing, namely, dresses, skirts, T-shirts, sweatshirts, tank
     tops, sweaters, turtlenecks, shorts, sweatpants, warm-up suits,
     blazers, pants, jeans, capris, overalls, vests, jackets, coats,
     parkas, ponchos, swimwear, bikinis, windbreakers,
     sleepwear, pajamas, robes, underwear, lingerie, intimates,
     socks, hosiery, shoes, boots, sneakers, beach shoes, flip-flops,
     sandals, slippers, gloves, suspenders and belts

2. The IRDA was examined and, on 3 May 3007 in the Official Journal of Trade Marks, IP Australia advertised its intention to extend protection to Australia.

3. After being granted an extension of time in which to do so, Tiffany and Company ('the opponent') filed a notice of opposition to extension of protection of the IRDA to Australia, listing grounds under ss 41, 42(b), 43, 44, 59, 60 and 62A of the TradeMarks Act 1995 ('the Act').

4. By notice dated 22 November 2007, IP Australia advised the International Bureau of the World Intellectual Property Organization of its intention to refuse protection based on the opposition.  In the notice, the holder was reminded that, if it wished to make written representations or to be heard in relation to the opposition, it would need to file an address for service in Australia within three months, as per reg 17A.33(3) of the Trade Mark Regulations ('the Regulations').

5. The opponent filed evidence in support of its opposition.  The holder did not provide an address for service in Australia within the time allowed and the opponent was not required to serve a copy of the evidence on the holder.

6. IP Australia wrote to the holder on a number of occasions relating to service of evidence in answer.  No reply was received and the holder did not file or serve evidence.

7. The opponent requested to be heard, and the matter came before me as a delegate of the Registrar of Trade Marks in Sydney on 4 May 2009.  Miriam Stiel of Allens Arthur Robinson represented the opponent, who essentially relied on written submissions in relation to the substantive grounds of opposition.  The holder was not represented, did not appear at the hearing, or provide written submissions.

   Evidence

   Evidence in support

8. The opponent's evidence in support comprised:

   ·Statutory Declaration of Ewa M Zalewska dated 31 July 2008, with Exhibits EMZ-1 to EMZ-12.  Ms Zalewska is a Director and Assistant Secretary of Tiffany and Company, a position she has held since 2005.  She attests to the opponent's international reputation for excellence in design, quality and workmanship of luxury goods, particularly jewellery.  The opponent's trade marks, TIFFANY and TIFFANY & CO, Ms Kalewska declares, are among the world's most famous trade marks and have become hallmarks of quality.  She provides worldwide sales and advertising figures for the years 1986 to 2006, as well as examples of use and promotion of the trade marks.

   ·Statutory Declaration of Glen Franklin Schlehuber dated 5 August 2008, with Exhibit GFS-1.  Mr Schlehuber is the Managing Director of Tiffany & Co (Australia) Pty Ltd, a company affiliated with the opponent.  He attests to the opponent's international renown as a designer, manufacturer and distributor of jewellery, gift items and fashion accessories and the use of the Tiffany name in conjunction with designer labels in the high fashion market.  He also provides information relating to the extent, volume and manner of use and promotion of the opponent's trade marks in Australia.

   • Statutory declaration of Jasmine Emily Burns dated 5 August 2008, with Exhibit JEB-1 (Burns 1).  Ms Burns is a lawyer at Allens Arthur Robinson, solicitors for the opponent.  Her declaration provides the results of internet research she conducted that showed the holder's use of the term TIFFANY KOURY in relation to fashion garments inspired by famous Hollywood stars, such as Audrey Hepburn, Marlene Dietrich and Grace Kelly.  Her research also revealed references to Audrey Hepburn and the movie “Breakfast at Tiffany's” in lists of heroes and favourite movies appearing on the holder's MySpace page.

   Further evidence

9. On 1 May 2009, the opponent filed documents with IP Australia seeking permission under reg 5.15(1)(b) to file and serve further evidence. The opponent’s application was supported by the Statutory Declaration of James William Dwyer, partner of Allens Arthur Robinson, dated 1 May 2009. Mr Dwyer declares that the evidence, being the results of searches relating to the holder’s business activities, would bear directly on the s 59 ground of opposition and, as such, is likely to have an important effect on the outcome of the opposition proceedings. He states that the evidence could not have been provided earlier as the searches needed to reflect the holder’s most up-to-date business activities. Mr Dwyer also explains that the opponent was not able to serve its application on the holder as she has not provided an address for service in Australia.

10. Because of the short time that elapsed between the opponent’s filing of its application to serve further evidence and the hearing on the substantive issues, I was not made aware of the opponent’s application until the time of the hearing. In the circumstances, and being mindful that the application had not been served on the holder, I considered it appropriate to allow the opponent to make submissions on its application at the hearing, but to reserve my decision. 

11. I have now reviewed the application and consider that there would be no breach of procedural fairness or disadvantage to the holder if I issue my ruling on the further evidence with my decision on the substantive matters. 

12. Regulation 5.15 reads:

    Reg 5.15 Extension of period to serve evidence and service of further evidence

    (1) A party to the opposition proceedings may apply to the Register:

    (a) for an extension of the period for serving a copy of the evidence under regulation 5.7, 5.10 or 5.12; or

    (b) for permission to serve a copy of further evidence on the other party.

    (2) The Registrar may grant an application on reasonable terms specified by the Registrar.

    (3) The Registrar must not grant an application unless the Registrar:

    (a) is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and

    (b) has given the parties a reasonable opportunity to make representations concerning the application; and

    (c) is reasonably satisfied that:

    (i)  in the case of an application to which paragraph (1)(a) applies - the extension of the period for serving a copy of the evidence; and

    (ii) in the case of an application to which paragraph (1)(b) applies - permission to serve a copy of further evidence;

    is appropriate.

    (4) For the purposes of paragraph (3)(b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

    (5) If the Registrar grants an application under paragraph (1)(b) on terms that include service of a copy of the further evidence within a specified period, a party to the opposition proceedings may apply to the Registrar for an extension of that period.

    (6) Subregulations (2), (3) and (4) apply to an application under subregulation (5).

13. In deciding if it is reasonable to grant the opponent’s application, I have taken into account whether the evidence could have been obtained at an earlier stage, whether it would be likely to have an influence on the outcome of the opposition, and whether the evidence is credible (see Ladd v Marshall[1]). 

    [1](1954) 1 WLR 1489.

14. The evidence that the opponent seeks to adduce is the Statutory Declaration of Jasmine Emily Burns dated 1 May 2009.  Ms Burns declares that on 28 and 30 April 2009 she conducted searches of Australian telephone directories, as well as national company and business name databases. Those searches did not reveal any listing of the name Tiffany Koury.  Ms Burns also searched the holder’s website and found the “Store” page displayed the message “Coming Soon”.

15. I accept that the evidence shows something about the holder’s lack of business activity in Australia and I do not doubt its credibility. But I fail to see how it supplements the opponent’s case under s 59. In Danjaq, LLC v Resource Capital Australia Pty Ltd[2], the Registrar’s delegate took into account evidence of the applicant’s trading activities when drawing an adverse inference about the applicant’s intention and capacity to use the trade mark.  That evidence, however, was considered in conjunction with the applicant’s history of lapsed applications and the services specified in the application.

    [2][2004] ATMO 18.

16. Here, aside from the holder’s failure to participate in the opposition proceedings, the opponent has not pointed to any evidence that its further evidence would supplement. Evidence of the holder’s lack of business activity may be helpful in establishing that the holder has not used the trade mark in Australia.  However, that is not the issue at hand.  There is no requirement for the holder to establish use of its IRDA for protection to be extended to Australia and non-use by itself does not infer a lack of intention use (see Aston v Harlee Manufacturing Company[3]). Without more, I do not find the evidence would assist in establishing the s 59 ground or have an important influence on the result of the opposition.

    [3] 103 CLR 391 (‘Aston v Harlee’).

17. In the circumstances, I do not consider it is reasonable to grant the application or allow the evidence into proceedings.

    Submissions and reasons

18. The opponent relied on written submissions addressing the opposition grounds under ss 42, 43, 44, 59, 60 and 62A of the Act. It did not provide any submissions in relation to s 41. For completeness, I record that the opponent has not established the
    s 41 ground of opposition.

    The opponent’s trade marks and reputation

19. The opponent’s written submissions included general submissions on the issues of deception and confusion, its Australian trade marks and its reputation. Those submissions relate primarily to the opposition grounds under ss 43, 44 and 60. For convenience, I will summarise them before dealing with those grounds individually.

    ·    In Australia, the opponent is the owner of the following registered trade marks (‘the Tiffany marks’):

Trade mark	Priority date	Goods
215402 TIFFANY	4 December 1967	Class 3 Soaps, perfumery, essential oils, cosmetics and hair lotions
225917 TIFFANY	3 February 1969	Class 26 Wigs
Trade mark	Priority date	Goods
231477 TIFFANY	8 August 1969	Class 14 Horological and other chronometric instruments
250844 TIFFANY	11 August 1971	Class 26 Cuff links
258887 TIFFANY	16 May 1972	Class 14 Pearls, natural, imitation and cultured
258888 TIFFANY MESH	26 May 1972	Class 18 Leather and imitations of leather, and articles made from these materials and not included in other classes; skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; purses and handbags not made of previous metal
265507 TIFFANY	2 February 1973	Class 8 Cutlery, forks and spoons
379555	11 August 1982	Class 14 Articles of jewellery, earrings of precious metal, bracelets, chains and pendants, excluding those items which include a Tiffany gem setting; all the foregoing being mass-produced costume jewellery
463991 TIFFANY	24 April 1987	Class 3 All goods in this class, excluding nail polish, nail care products and dentifrices
475125 TIFFANY	21 October 1987	Class 26 Clasps for belts and clothing, hair ornaments, hat ornaments and shoe ornaments all being goods included in class 26
565004 TIFFANY & CO	9 October 1991	Class 8 Manicure tools, razors and grooming aids in this class and all other goods in this class Class 20 Picture frames and all other goods in this class excluding packaging containers of plastic Class 24 Table linen and all other goods in this class Class 25 Ties and scarves and all other goods in this class Class 28 Games, toys, playthings and all other goods in this class

Trade mark	Priority date	Goods
565007 TIFFANY & CO	9 October 1991	Class 21 Vases, ornaments for household display, tableware, drinkware, combs and brushes excluding nail brushes and toothbrushes
565011 TIFFANY & CO	9 October 1991	Class 34 Smokers’ articles including cigarette lighters, cigarette cases, cigarette holders and ashtrays; none of the aforesaid goods being made from plastic
567726 TIFFANY & CO	20 November 1991	Class 14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; articles of jewellery, precious stones; horological and other chronometric instruments; none of the above being mass-produced costume jewellery
640838 TIFFANY & CO	19 September 1994	Class 42 Retail services for the sale of jewellery, watches and clocks, stationery, chinaware, crystal and glassware, decorative accessories made of or in part of precious metals or porcelain or enamel or lacquered wood for the home, silver hollowware, coffee services, bowls, trays, boxes, buckets and baskets, picture frames, mirrors, fragrances and toiletries; silver flatware, lamps, candle holders; playing cards, games, golfing accessories, bar accessories, desk accessories, leather goods, perfumery and cosmetics, clothing accessories, scarves and men’s ties, all included in class 42
718720	1 October 1996	Class 8 Hand tools and implements; cutlery Class 14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; articles of jewellery, precious stones; horological and other chronometric instruments; none of the above being mass-produced costume jewellery Class 21 Household or kitchen utensils and containers including tableware and dinnerware; combs and sponges, brushes; glassware, porcelain and earthenware
1110521 TIFFANY & CO	26 April 2006	Class 9 Eyeglasses, eyeglass frames, eyeglass cases, sunglasses, chains and cords for eyeglasses, parts and fittings therefor

·    The opponent is engaged in the design, manufacture and sale of collections of high quality luxury consumer items for personal and household use and adornment, as well as the provision of related services.  It currently has 246 stores worldwide, including stores in Sydney, Melbourne, Brisbane and Perth.  It has used Tiffany trade marks globally on luxury goods since 1837. 

·    The opponent has garnered a significant reputation in use of its Tiffany trade marks, both internationally and in Australia.  Its worldwide net sales and advertising expenditure over the past 20 years have been very high.  Net sales worldwide were approximately $2.5 billion in 2006.  Advertising expenditure was approximately $119 million the same year.  The opponent has extended its reputation beyond normal marketing channels via awards and commissions it has won.  The opponent has designed numerous medals and trophies for international sporting events which receive worldwide attention.  It has been featured in classic motion pictures such as “Breakfast at Tiffany’s”.

Section 43 

Trade mark likely to deceive or cause confusion

43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

1. The opponent submits that the TIFFANY KOURY mark contains a connotation which is likely to deceive or confuse.  Because the opponent has such a substantial reputation in the word TIFFANY trade marks, a consumer would be likely to suspect that goods sold under the trade mark TIFFANY KOURY were in some way associated with, or endorsed by, the opponent.  The TIFFANY KOURY marks are substantially identical and deceptively similar to the opponent’s TIFFANY trade marks and deception and confusion is likely because of the connotation the holder’s mark contains.

2. Cases such as TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc[4], Pfizer Products Inc v Karam[5] and more recently Bavaria NV v Bayerischer Brauerbund eV[6]  are authority for the proposition that the “connotation” must arise from something inherent in the trade mark itself and not from extraneous considerations. 

   [4](2000) 48 IPR 513.

   [5] [2006] FCA 1663.

   [6] [2009] FCA 428.

3. For the opponent to be successful it must establish an obvious and direct connotation within the trade mark.  That connotation must give rise to deception and/or confusion.  A mere possibility of confusion is not enough.  There must be a real, tangible danger of deception and/or confusion.[7]

   [7] Registrar of Trade Marks v Woolworths 45 IPR 411.

4. TIFFANY is defined in A Dictionary of First Names[8]:

   Tiffany [Venus symbol]      Usual medieval English form of the Greek name Theophania ‘Epiphany’, from theos ‘god’ + phainein ‘to appear’.  This was once a relatively common name, given particularly to girls born on the feast of the Epiphany (6 January) and it gave rise to an English surname.  As a given name, it fell into disuse until revived in the 20^th century under the influence of the famous New York jewellers, Tiffany’s, and the film, starring Audrey Hepburn, Breakfast at Tiffany’s (1961).  This is a very popular African-American name.

   [8] A Dictionary of First Names. Patrick Hanks, Kate Hardcastle, and Flavia Hodges. Oxford University Press, 2006. Oxford Reference Online. Oxford University Press.  IP Australia.  11 August 2009  

5. I am unaware how frequently TIFFANY occurs as a female name in the general Australian population but the name was listed in the 100 most popular female baby names in New South Wales in 1996, and in Victoria in 1995, 1996 and 1997.  A current television sports presenter and a popular contestant in a 2009 series of a television weight loss competition both have the name.  TIFFANY has also appeared as the first name of female characters in the television shows “Underbelly”,“United States of Tara” and “Neighbours”. 

6. KOURY is a surname of Middle Eastern origin.  As far as I am aware, KOURY has no direct meaning in relation to the goods for which the holder seeks registration and it operates as a distinctive element within the mark.  

7. Given the dictionary definition above and the opponent’s evidence of its fame, I accept that the word TIFFANY alone may connote the opponent.  However, in the context of its use in the opposed IRDA, where it appears with the surname KOURY, I consider consumers are likely to see TIFFANY as a female name and any connotation of the opponent would be neutralized (see Bavaria at [70] and [89]).

8. Consumers of clothing items, particularly luxury clothing items, would be likely to inspect the goods before purchase and in doing so would be unlikely to ignore the presence of the word KOURY in the mark.

1. In summary, I am not satisfied that there is a connotation or secondary meaning in the IRDA which suggests that its use would be likely to deceive or cause confusion in relation to the specified goods.

2. The s 43 ground of opposition is not established.

   Section 44

3. So far as it is relevant, s 44 reads:

   Identical etc. trade marks

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

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

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

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

   Note 1:  For deceptively similar see section 10.

   Note 2:  For similar goods see subsection 14(1).
   Note 3:  For priority date see section 12.

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

   (a) it is substantially identical with, or deceptively similar to:

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

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

   Note 1: For deceptively similar see section 10.

   Note 2:  For similar services see subsection 14(2).
   Note 3:  For priority date see section 12.

4. On this ground, the opponent relies on its registered trade marks, 250844 TIFFANY, 258887 TIFFANY, 565009 TIFFANY & CO, 567726 TIFFANY & CO, and 640838 TIFFANY & CO (set out at paragraph 20).

5. I note that each of these trade marks has an earlier priority date than that of the IRDA.

   Substantial identity

6. The opponent argues that the abovementioned trade marks are substantially identical with the opposed IRDA as there is very little difference when the marks are compared visually and aurally.  TIFFANY KOURY is the opponent’s mark with the addition of only one word, KOURY.   The marks would sound the same if the goods were purchased verbally.

7. On the question of substantial identity Windeyer J said in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[9] at 414-415:

   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 features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison . . .

   [9](1963)109 CLR 407.

8. When I compare the opponent’s trade marks and the IRDA side by side, I find their differences are obvious. The IRDA contains the word KOURY. As I have said in relation to the s 43 ground, the word KOURY, as far as I am aware, has no direct meaning in relation to the items for which the holder seeks registration and operates as a distinctive element within the mark.

9. The designated goods, being clothing, are likely to be inspected on purchase and more emphasis given to visual differences between the marks.  If the goods were ordered verbally, there are syllabic differences between KOURY and the words & CO that would dispel a likelihood of confusion.  For aural confusion to arise between KOURY and & CO, an exceptional degree of slurring or carelessness of pronunciation would need to be exercised.  

10. I am not satisfied the trade marks are substantially identical.

    Deceptive similarity

    Deceptive similarity is defined by s 10 of the Act

    Definition of deceptively similar

    10. 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.

11. The rules of comparison of trade marks are the familiar ones often quoted from Dixon and McTiernan JJ in Australian Woollen Mills Limited v F S Walton and Company Limited[10]:

    In deciding this question, the marks ought not, of course, to be compared side by side.  An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought.  The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.  The effect of spoken description must be considered.  If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part.  The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.  Evidence of actual cases of deception, if forthcoming, is of great weight.

    [10][1937] HCA 51; (1937) 58 CLR 641.

12. The context of the marketplace in which the goods are traded must also be considered.  In Re Application by the Pianotist Co Ltd[11] at 777 Parker J said:

    You must take the two words.  You must judge of them, both by their look and by their sound.  You must consider the goods to which they are to be applied.  You must consider the nature and kind of customer who would be likely to buy those goods.  In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

    [11](1906) 1A IPR 379 at 380; 23 RPC 774.

13. Taking into account the change in onus under the 1995 Act, French J in Registrar of Trade Marksv Woolworths[12] recast the established criteria.  At 428 he said:

    [12] [1999] FCA 1020.

    In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

    (i)  To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring.  A mere possibility is not sufficient.

    (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source.  It is enough if the ordinary person entertains a reasonable doubt.

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration.  These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    (iv)  The rights of the parties are to be determined as at the date of the application.

    (v)  The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark.  The question is not limited to whether a particular use will give rise to deception or confusion.  It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd vThe Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

    “…the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark.  The issue is whether that use would give rise to a real danger of confusion.”

14. The opponent contended that confusion would be likely because the competing trade marks create similar impressions.  The common word TIFFANY, being the first word appearing in the holder’s mark, is the element people are most likely to remember.  As the word TIFFANY is also the memorable and distinctive feature of the opponent’s marks, it is likely that the buying public will consider the marks are related.  Even if consumers recalled the holder’s mark as being the two words, TIFFANY KOURY, confusion was still likely, the opponent said.  The opponent has established a family of TIFFANY marks, such as TIFFANY MESH, TIFFANY ROSE, TIFFANY NOTES and TIFFANY KEYS, and the buying public may see TIFFANY KOURY as an additional mark in that family.  In the context of the ordinary manner of purchase of the goods, which are luxury items, there is a real, tangible danger and a reasonable likelihood of confusion.

15. Having applied the relevant tests, I am not satisfied any of the opponent’s trade marks is deceptively similar to the opposed IRDA.  Although the word TIFFANY is a common element in the competing trade marks, the trade marks when viewed as a whole[13] create very different impressions.

    Trade marks 250844 & 258887 TIFFANY

    [13] Clark v Sharp (1898) 15 RPC 141 at 146 (Ch D).

16. The impression created by the opponent’s trade marks, TIFFANY, is that of a surname or a female first name.  Although TIFFANY is an identifiable word in the IRDA, TIFFANY KOURY, it is not highlighted or presented in such a way that it would be seen as the dominant or memorable element of the mark, and does not retain a trade mark identity within that mark.  Rather, it presents as a female first name.  The word KOURY, being an uncommon surname in Australia[14], is likely to be the more memorable element.  When the IRDA is considered as a whole and each of the elements given its fair weight, the net impression it creates is that of the full name of a female person.  Because they create very different impressions they are unlikely to be confused for each other or viewed as belonging to a family of “Tiffany” trade marks.

    Trade marks 565009, 567726, 640838 TIFFANY & CO

    [14] Koury occurs 10 times in the IP Australia Search for Australian Surnames which is based on the

17. The opponent’s marks, TIFFANY & CO, create the impression of a company or commercial entity.  The IRDA, TIFFANY KOURY, creates the impression of the name of a female person.

18. As the goods concerned are clothing and accessories, there is likely to be closer scrutiny of the goods and the trade marks than would take place with other goods.  This would particularly so if the goods were luxury items at the high end of the market.  Even if the goods were inexpensive, purchasers are unlikely to ignore the presence in the mark of the word KOURY, or be confused into thinking that the trade marks indicate products from the same trade source.

19. In summary, I am not satisfied the opponent has established that its trade marks are either substantially identical or deceptively similar to the opposed IRDA. Therefore, the s 44 opposition ground cannot succeed.

    Section 60

20. Section 60 reads:

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

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

    (a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
    (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

    Note :  For priority date see section 12.

21. To be successful the opponent must point to:

    ·    a trade mark that had acquired a reputation in Australia before the priority date of the IRDA; and

    ·    a likelihood that, because of that reputation, use of the IRDA would be likely to deceive or cause confusion.

22. In McCormick & Company Inc v McCormick[15] Kenny J at [81] set out criteria for assessing reputation.  Applied to this opposition, those criteria may be restated as:

    Does the evidence establish that in Australia before 27 December 2006 the Tiffany & Co marks were recognized by the public generally and, because of that, the use by Tiffany Koury of her mark 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?

    [15][2000] FCA 1335.

23. The opponent relies on the trade marks set out at paragraph 20, each of which has a priority date before that of the IRDA.

24. The opponent’s evidence by way of the Zalewska and Schlehuber                  declarations establishes the reputation of the opponent’s trade marks in Australia before 27 December 2006, particularly in relation to jewellery and luxury goods. 

25. The opponent contends that even if the word KOURY is added to the IRDA, deception and confusion will arise as the mark TIFFANY KOURY still brings the opponent to mind.

26. However, a reminder of the opponent does not equate to a perceived trade connection. I have already found in relation to the s 43 and s44 grounds of opposition that I am not satisfied that a significant number of the buying public would mistakenly attribute a commercial connection between the opponent and the opposed IRDA. Even taking into account the opponent’s substantial reputation in relation to jewellery and luxury items, I am not satisfied that deception and confusion would occur.  While consumers may make a connection between the word TIFFANY and the opponent, the significance of TIFFANY in the IRDA is dispelled by the presence of the word KOURY.   Members of the buying public are likely to view the mark as the full name of a female person. 

27. The s 60 ground is not established.

    Section 42(b)

28. Section 42(b) of the Act provides:

    Trade mark scandalous or its use contrary to law

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

    […]

    (b) its use would be contrary to law.

29. The opponent submitted that use of the opposed trade mark would be contrary to law because it would offend against s 42 of the Fair Trading Act 1987 (NSW) ("the FTA").

30. The relevant provision of the FTA provides:

    FAIR TRADING ACT 1987 - SECT 42

    42 Misleading or deceptive conduct

    (1) A person shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
    (2) Nothing in this Part shall be taken as limiting by implication the generality of subsection (1).

31. As this section of the FTA deals respectively with misleading or deceptive conduct and is essentially identical to s 52 of the Trade Practices Act 1974 (C’wealth) (‘the TPA’), it is reasonable to consider it in the light of judicial precedent on the latter.

32. There are several decided cases confirming that more is required to establish a likelihood of misleading or deceptive conduct under s 52 of the TPA than is the case with trade marks likely to deceive or cause confusion under ss 44 or 60 of the TradeMarks Act 1995.  In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd[16] Gibbs CJ noted with respect to s.52 of the TPA (at 688):

    In McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd (1980) 33 ALR 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 CrossRefrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.

    [16](1982) 1A IPR 684.

33. As I have already found that the opponent’s evidence is insufficient to establish that the opposed IRDA would be likely to deceive or confuse in terms of ss 44 and 60, it follows that I cannot be satisfied that it would mislead or deceive.

34. The opponent has not established its opposition under s 42(b).

    Section 59

35. Section 59 provides:

    Applicant not intending to use trade mark

    59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

    (a) to use, or authorise the use of, the trade mark in Australia; or
    (b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

    in relation to the goods and/or services specified in the application.

    Note:  For applicant see section 6.

36. In Americana International Limited v Suyen Corporation[17] the Registrar's delegate summarised a number of principles from case law under s 59. Those principles which are relevant in the circumstances of this case are:

    ·The act of filing of a trade mark application is prima facie evidence of an intention to use the mark.[18]

    ·Section 59 refers to a continuing or current intention to use the trade mark.[19]

    ·The onus is on the opponent to establish a prima facie case of lack of intention to use.  If such a case is established, the onus reverts to the applicant or holder to refute the opponent's claims.[20]

    ·An inference can be drawn to indicate a lack of intention to use.[21]

    [17] (2008) 75 IPR 596.

    [18] Aston v Harlee.

    [19] Sapient Australia Pty Ltd and Sapient Corporation v SAP AG [2002] 55 IPR 68.

    [20] (Health World v Shin-Sun[20])

    [21] (Sapient).

37. The opponent drew to my attention the fact that the holder has taken no part in the opposition proceedings and has shown no interest in the prosecution of the IRDA beyond its filing.  It has not provided an Australian address for service and has not filed any evidence.  It has shown a complete disregard for whether or not the TIFFANY KOURY mark will be registered in Australia.  From such conduct, the opponent contended, it is possible to infer that:

    • if the IRDA had not been opposed, it would have lapsed;
    • the holder does not intend to use the TIFFANY KOURY mark in Australia;  and
    • that the making of the holder’s application was, and remains, ill-founded.

38. While it is clear that the holder has failed to respond to the allegation under s 59, I am not satisfied that this is sufficient to establish a prima facie case.  As the Registrar’s delegate found in Television Food Network GP v Food Channel Network Pty Ltd[22], the failure may point to a lack of intention to use the trade mark but it could also point to misunderstandings or disorganization within the holder’s company. 

    [22] [2006] ATMO 88.

39. The opponent sought permission to file and serve further evidence which it argued would assist in establishing this ground.  I have refused to allow that evidence into proceedings. Even if I were to have allowed the further evidence in, I do not consider it would not have been sufficient to shift the onus to the holder.

1. The s 59 ground of opposition is not established.

   Section 62A

2. Section 62A reads:

   Section 62A Application made in bad faith

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

3. This ground of opposition was considered by a delegate of the Registrar in Bombala Council v Peter Wilkshire[23] where at [24-26] he observed:

   This ground of opposition came into force on 23 October 2006 following amendments to the Act. At the time of this hearing, there had been no published decision from this office based on the ground. However, the opponent directed my attention to the Explanatory memorandum to the Trade Marks Amendment Bill 2006 and to UK case law relating to similar provisions and discussed by Paul Sumpter in his article Section 62A: Pandora's box for trade mark practitioners? (2007) 18 AIPJ 110.

   Counsel for the opponent submitted that in the UK the similar "bad faith" provision does not require the application to have been made dishonestly because that word is not used: Harrison v Teton Valley Trading Co [2004] EWCA Civ 1028; [2005] FSR 10 at [20]. Sir William Aldous held "No doubt an application made dishonestly will be made in bad faith, but it does not follow that if dishonesty is not established, bad faith cannot have existed." His Lordship reasoned that bad faith required knowledge by the defendant that what he was doing would be regarded as bad faith by persons adopting proper standards.

   Counsel also pointed to UK cases that indicate that bad faith will be established where someone has applied to register a mark which he has previously recognized as the property of another with whom that person has a course of dealing or some other relationship: William Leith New Century Marquees (SRISO/018/00, UK Registry) p.9.

   [23] [2009] ATMO 33.

4. The opponent relied on its arguments in relation to other grounds of opposition.

5. I find nothing in those submissions or the evidence provided by the opponent that establishes that the holder has had any dealings or relationship with the opponent.  I find nothing in that material that establishes the holder applied to register the IRDA having previously recognised it as the property of another person.  There is nothing in the evidence to establish that the circumstances were such that a reasonable person standing in the shoes of the holder would have been aware that she ought not to apply for protection in Australia of the IRDA. 

6. This ground of opposition is not established.

   Decision

7. Subregulation 17A.34(1) provides:

   17A.34(1)  Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a) to refuse protection in respect of all of the goods or services listed in the IRDA; or

   (b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

8. The opponent has not established any of its grounds of opposition.

9. Accordingly, I decide to extend protection in Australia in respect of all of the goods listed in this IRDA, Australian application number 1160185, for the trade mark TIFFANY KOURY, one month from the date of this decision.

10. If the Registrar has been served with a notice of appeal before that time, I direct that protection shall not occur until the appeal has been decided or discontinued or, if this decision be successfully appealed, that the application be dealt with as the Court sees fit.  If the Registrar has not been served with a notice of appeal before that time, the International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accord with reg 17A.34(2).

    Costs

11. The opponent requested its costs.  As the opponent is unsuccessful, and the holder has not participated in this opposition, I make no award as to costs.

    Frances Aarnio
    Hearing Officer
    Trade Marks Hearings
    31 August 2009

    
    

   Australian Electoral Roll.