Tod'S S.p.A. v Jiang & Hou Pty Ltd

[2015] ATMO 5

TRADE MARKS ACT 1995

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

Re:Opposition by Tod’s S.p.A. to registration of trade mark application numbers 1511698 – VANESSA HOGAN - and 1512445 – VANESSA HOGAN AND DEVICE - filed in the name of Jiang & Hou Pty Ltd.

Delegate:	Bianca Irgang
Representation:	Opponents: Ms Natalia Blecher of Corrs Chambers Westgarth Applicant: Not present at the hearing
Decision:	2015 ATMO 5 Section 52 opposition: sections 44, 60 and 62A pressed – section 60 ground of opposition established.

Background

1. Jiang & Hou Pty Ltd (‘the applicant’), filed trade mark application numbers 1511698 and 1512445 on 5 September 2012 and the 13 September 2012 respectively. The applications were made in classes 18 and 25 of the International Classification of Goods and Services. Current details of the applications are set out below.

Trade mark:  VANESSA HOGAN[1]

[1] Hereafter referred to as the ‘VANESSA HOGAN trade mark’.

Trade mark application:      1511698

Filing Date:  5 September 2012

Specification:  Class 18: Baggage; bags (envelopes, pouches) of leather, for packaging; bags for toiletry kits; bags for transport of clothes; bags made of imitation leather; bags made of leather; book bags; camping bags; carrying bags (other than disposable carrier bags); casual bags; changing bags; clutch bags; cosmetics bags (not fitted); evening bags; gym bags; hat bags; jewellery bags (empty); leather bags; luggage bags; make-up bags; portable bags (luggage); pouches (bags); school bags; shoe bags; shopping bag handles; shopping bags; shopping carts (wheeled shopping bags); shoulder bags; shoulder bags for use by children; toiletry bags; tool bags of leather (empty); travel baggage; travel bags; travel bags made of plastic materials; travelling bags; two-wheeled shopping bags; umbrella bags; weekend bags; wheeled shopping bags; wristlets (bags)

Class 25:Beach hats; hats; sun hats; apparel (clothing, footwear, headgear); aprons (clothing); belts (clothing); boys' clothing; casual clothing; children's clothing; clothes; clothing; clothing for babies; clothing for swimming; clothing of imitations of leather; clothing of leather; clothing of paper; denims (clothing); drawers (clothing); girl's clothing; gloves (clothing); jackets (clothing); jerseys (clothing); ladies clothing; leather belts (clothing); men's clothing; thongs (clothing); women's clothing; wristlets (clothing); athletics shoes; basketball shoes; bath shoes; bathing shoes; beach shoes; canvas shoes; leather shoes; men's shoes; running shoes; shoes; shoes for casual wear; shoes for infants; shoes for leisurewear; shoes for sports wear; walking shoes

Trade mark:   [2]

Trade mark application:      1512445

Filing Date:  13 September 2012

Specification:  Class 18: Airline travel bags; articles of luggage being bags; athletics bags; bag covers; baggage; bags (envelopes, pouches) of leather, for packaging; bags for campers; bags for climbers; bags for shaving kits; bags for toiletry kits; bags for transport of clothes; bags for use in sports for carrying sports clothing; bags made of imitation leather; bags made of leather; beach bags; belt bags; book bags; boston bags; camera bags (other than adapted or shaped to contain a camera); camping bags; carrying bags (other than disposable carrier bags); casual bags; changing bags; clutch bags; cosmetic bags (not fitted); cosmetics bags (not fitted); courier bags; cricket bags (other than adapted); diaper bags; diplomatic bags; duffel bags; duffle bags; evening bags; faeces collection bags for dogs and horses (animal clothing); flight bags; game bags (hunting accessory); garment bags for travel; gym bags; hat bags; jewellery bags (empty); knitting bags; leaflet bags for use by the person delivering; leather bags; luggage bags; make-up bags; medical bags for apparatus and instruments (not adapted or fitted); messenger bags; money bags; nappy bags (other than bags for the disposal of nappies); net bags for shopping; nose bags (feed bags); nurses bags; overnight bags; peg bags; pilots' bags; portable bags (luggage); pouches (bags); saddle bags (not shaped or fitted) (for cycles); saddle bags for horse riding; school bags; shaver bags (not shaped); shoe bags; shopping bag handles; shopping bags; shopping carts (wheeled shopping bags); shoulder bags; shoulder bags for use by children; ski boot bags (not fitted or shaped); sling bags; sling bags for carrying animals; sling bags for carrying children; sponge bags (empty); sport bags, other than adapted (shaped) to contain specific sports apparatus; suit carriers being travelling bags; tennis bags, other than adapted (shaped) to contain a racket; tennis racket bags (other than adapted or shaped to contain a racket); toilet bags; toiletry bags ; tool bags (empty); tool bags of leather (empty); tool carriers (bags, empty); tote bags; towelling bags; travel baggage; travel bags; travel bags made of plastic materials; travelling bags; two-wheeled shopping bags; umbrella bags; waist bags; weekend bags; wheeled shopping bags; work bags; wristlets (bags)

[2] ‘the VANESSA HOGAN device trade mark’

1. The applications were accepted for possible registration and the official notice of their acceptance was published in the Official Journal of Trade Marks dated 10 January 2013. Subsequently Tod’s S.p.A. (‘the opponent’) filed Notices of Opposition (‘the Notices’). Thereafter the opponent and applicant filed evidence in accord with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

2. I heard the matter in Melbourne as a delegate of the Registrar of Trade Marks on 10 November 2014. The opponent was represented by Ms Natalia Blecher of Corrs Chambers Westgarth. The applicant was not present at the hearing.

Grounds of Opposition

1. The Notices nominated most grounds of opposition under the Trade Marks Act 1995 (‘the Act’). However, only those grounds under sections 44, 60 and 62A were pursued at the hearing. The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[3] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[4]. Should the opponent establish one ground of opposition in relation to all of the applicant’s goods, there is no requirement for me to consider the other grounds of opposition.

   [3] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

   [4] [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

Evidence

1. The evidence consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Stefano Sincini	Co-Chief Executive Officer, Executive Director and General Manager of Tod’s S.p.A.	8.10.13	SS-1 to SS-21
Evidence in Answer
Xinyu Hou	Director of Jiang & Hou Pty Ltd	14.02.14	A to C
Evidence in Reply
Natalia Blecher	Associate at Corrs Chambers Westgarth	4.06.14	NJB-1 to NJB-11
Craig Douglas	Private Inquiry Agent	6.06.14	CD-1

Opponent’s Evidence in Support

1. The declaration of Mr Stefano Sincini (‘the Sincini declaration’) states that the opponent is the Italian based parent company of the Tod’s Group of companies (‘Tod’s Group’). Companies within the Tod’s Group manufacture, distribute and sell a range of shoes, luxury leather goods and casual wear. The Sincini declaration states that the brands operated by the Tod’s Group include TOD’S, HOGAN, FAY and ROGER VIVIER. The Tod’s Group also operates a number of retail stores in various countries around the world.

2. Mr Sincini states that the opponent is an Italian company that was founded in or around 1978. He states that the HOGAN brand was founded in1986 as was invented as the name for a new brand of the opponent’s products intended to represent a contemporary style that is also refined and chic, with a focus on “business casual” products. The Sincini declaration states that the opponent has a long history of using and promoting its HOGAN trade marks throughout the world since the 1980s, and specifically in Australia since at least as early as 2004 and leading up to and beyond the priority dates of the opposed applications. He states that the HOGAN trade mark has been used in relation to footwear and more recently to bags, eyewear, wallets, jackets, gloves, scarves, belts, luggage tags, purses, boots, headgear and related accessories.

3. The opponent cited eight trade mark registrations in support of its opposition. The details of those trade mark registrations are as follows:

Number(s)	Class	Trade Mark
736693	3, 8 , 9, 14, 16, 19, 20, 21, 24, 25
791429	18, 25
904623	3, 9, 18, 25
1267348	9, 18, 25
1327159	9, 18, 25
1327160	9, 18, 25
1432204	9, 18, 25
1518171	3, 9, 18, 25

1. The opponent is the registered owner of the above trade marks which all have earlier priority dates to that of the applicant’s trade marks. The trade mark registrations cover the same goods and similar goods in classes 18 and 25 to those goods that relate to the opposed trade mark applications. In addition to the opponent’s registered HOGAN trade marks the evidence demonstrates use of other HOGAN trade marks by the opponent including:

1. The Sincini declaration contains a detailed outline of the product history for the HOGAN trade mark and I note that the first product sold under the HOGAN trade mark was a sneaker. The HOGAN trade mark continued to be used on footwear until 2000 when the opponent released the first handbag under the HOGAN trade mark. Since that time the products bearing the HOGAN trade marks have extended to include jackets, sunglasses and other accessories. In 2000 the opponent also opened up the first HOGAN boutique in Milan. Subsequently, a number of HOGAN boutiques were opened around the world although there is no HOGAN boutique currently in Australia. However, since 2004 the opponent and authorized third parties have imported HOGAN products bearing the HOGAN trade mark for sale in Australia by third party retailers. Products bearing the HOGAN trade marks have been sold through specialist retailers and online shopping portals (including online shopping portals shipping to Australia) which include: David Jones (Sydney), Siricco House of Leather, Net-a-Porter and DesignerOnline.

2. Mr Sincini states that the HOGAN goods are all sold under or by reference to the HOGAN trade marks and, in many instances, other “famous” indicia such as the HOGAN “H” Logo. The HOGAN trade marks are used on or in relation to the HOGAN goods in a number of way including being woven or embedded into products, on the flaps of shoes, on sewn-in labels, being displayed prominently on the front of items, used in point-of-purchase advertising, swing tags, website splash pages and print advertising. The evidence in exhibits SS-7-9, 12-14, 16, 19 and 21 support this statement. Below I have reproduced examples from the evidence of how the opponent uses its HOGAN trade marks on some its various goods:

1. The Sincini declaration outlines the sales figures for its HOGAN branded goods from 2008 until 2012. The figures provided are very substantial internationally, but much more modest when broken down to show Australian sales figures. I also note that the opponent’s advertising figures are provided for all advertising and not just advertising done in Australia. However, I do note that the majority of the (considerable) magazines and publications the opponent has advertised its HOGAN goods in are publications which are circulated and read in Australia (Exhibit SS-7).

2. The opponent has also demonstrated in its evidence that is has a considerable online reputation which utalises Facebook®, Youtube®, Twitter® and other social media (Exhibits SS-8 to SS-13). This is in addition to celebrity endorsements and collaborations which include Stephen Dorff, Crystal Renn, Bambi Northwood-Blyth and Katie Grand. I note that some of these celebrity names have been closely used in conjunction with the opponent’s HOGAN trade mark (Exhibit SS-16).

Applicant’s Evidence in Answer

1. The declaration of Xinyu Hou (‘the Hou declaration’) states that Mr Hou is the sole director of the applicant from 11 August 2011. Mr Hou states that the applicant has been using and promoting itself as a supplier of women’s wallets, wristlets, handbags and satchels throughout Australia and China since June 2012. According to Mr Hou, the applicant advertises and sells it VANESSA HOGAN branded goods through various online shopping portals including Tmall.com and JD.com. The applicant provided screenshots of the applicant’s advertisements on these websites in its annexure A.

2. Mr Hou states that the applicant came up with the VANESSA HOGAN trade mark after a list of proposals was provided by the board of directors and the shareholders. By a vote dated 31 March 2012 the board of directors and shareholders proposed to manufacture goods under the VANESSA HOGAN trade mark. Mr Hou states that he was required by the board of directors and shareholders to investigate whether VANESSA HOGAN was an established brand. Mr Hou concluded that it was not an established brand after he completed a general online search of the name VANESSA HOGAN and made careful inspections of retailers in Sydney including Westfield, Myers and David Jones. He states that he did not find any products which carried the name VANESSA HOGAN or a similar name to VANESSA HOGAN and that based on these findings VANESSA HOGAN was approved for use of the applicant’s new product line. There is no documentation in the evidence to support these statements by Mr Hou.

3. The Hou declaration asserts that since the applicant has been using and advertising the VANESSA HOGAN trade mark, the opponent has only had an online presence and does not have a physical store in Australia. The Hou declaration states that as the opponent had no existing product line in any retail store in Australia that the applicant and the applicant’s consumers were not aware of the opponent’s HOGAN trade mark at the time the applications for the VANESSA HOGAN trade marks were made. Mr Hou states that the applicant had no intention to ever suggest to consumers an association with the opponent.

Opponent’s Evidence in Reply

1. The declaration of Natalia Blecher (‘the Blecher declaration’) contains a number of exhibits which cast doubt on Mr Hou’s statements regarding the applicant’s adoption of the VANESSA HOGAN trade marks. Notably, exhibit NJB-3 is a company extract for the applicant from ASIC which states that the sole director and shareholder of the applicant is and always has been Mr Hou. As such, the method in which Mr Hou describes the applicant as having adopted the VANESSA HOGAN trade marks through voting rings hollow. Exhibit NJB-8 which contains a copy of an advertisement to purchase one of the applicant’s VANESSA HOGAN handbags from Dinobuy.com. and I note that part of the advertisement says:

   “VANESSA HOGAN VH2013 Hit new canvas leather Todd Bag Handbag…”

2. The mention of “Todd” (even with two letter ‘d’) within the applicant’s advertisement is curious given that the Hou declaration indicates that the applicant was completely unaware of the opponent and the opponent’s HOGAN branded goods.

3. The declaration of Craig Douglas (‘the Douglas declaration’) is a report on whether or not the applicant has operated any VANESSA HOGAN branded stores in Australia or sold any VANESSA HOGAN goods to Australian customers. Accompanying the Douglas declaration is exhibit CD-1 which is a report of the applicant’s commercial activities based upon the claims made on its website. This report outlines how the applicant has a number of photographs on its “TMALL” website contained in the “Our Story” section which purport to show the locations of the applicant’s Australian retail outlets in 2004, 2007 and 2013. Mr Douglas’ investigations of the applicant’s apparent store locations in Sydney (as detailed on the applicant’s website) have determined that it is likely no such retail outlets existed during the dates listed on the applicant’s website as a number of other stores existed at those locations at the time.

Section 60 - Reputation in Australia

1. Section 60 of the Act provides:

2. 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.

1. To establish the ground of opposition under section 60, the opponent must demonstrate:

• That, at the priority date of the opposed application, another trade mark had acquired a reputation in Australia; and

• That because of the reputation of the second trade mark, use of the applicant’s trade mark would be likely to deceive or cause confusion.

1. Unlike sections 44 or 58 of the Act, section 60 does not require that the goods upon which the opponent uses its trade mark be of a specified standard of similarity to the goods of the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. It is now for me to determine if the opponent has acquired a reputation in Australia for its HOGAN trade marks which is sufficient to establish that the applicant’s use of the opposed VANESSA HOGAN and VANESSA HOGAN device trade mark would be likely to deceive or cause confusion

2. The principles relevant to the assessment of the likelihood of confusion, were set out by French J in Registrar of Trade Marks v Woolworths[5] (with reference to “deceptive similarity” redacted):  

   [5] [1999] FCA 1020 at paragraph 50

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

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc[6]:

   [6] [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.”

1. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[7] by Kenny J at paragraph 81:

   [7] [2000] FCA 1335

   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?

2. Considering the evidence, there is little doubt that the opponent enjoys a very extensive and long standing reputation in its HOGAN trade marks internationally. However, the onus is on the opponent to demonstrate that a reputation in its HOGAN trade marks existed in Australia before the priority date of the opposed trade marks such that use of the opposed trade marks would be likely to deceive or cause confusion. This is more than merely indicating prior use, the opponent’s trade mark needs to be “associated in the minds of the Australian public”[8].

   [8] Seven Up Co v OT Ltd (1947) 75 CLR 203 at 211

3. The opponent has extensively promoted its HOGAN branded goods through print media such as fashion magazines, online publications, billboards and television advertisements (Exhibits SS-7 to 9, 12 to 14, 16 to 19). These advertising efforts combined with its HOGAN branded goods being promoted through celebrity endorsements and sponsorship deals during the prominent Fashion Week in Milan each year makes it likely that a considerable number of Australian customers are aware of the opponent’s relevantly branded goods (exhibit SS-15).

4. The evidence also shows that while the revenue generated by sales of its HOGAN goods to Australian customers is modest, it is a reasonable amount given the more limited number of retailers which stock the opponent’s goods. To generate these confidential Australian sales figures in the evidence the opponent would have needed to sell a reasonable number of items of the relevant goods. These sales occurred between the years 2008 and 2012 and are all before the priority date of the opposed applications. I am satisfied that the opponent has established the existence of a significant reputation in Australia for its HOGAN trade marks before the priority date of the opposed trade marks.

5. I now need to determine if, given this reputation in Australia, use of the applicant’s trade mark would be likely to deceive or cause confusion. In my consideration of the likelihood of confusion or deception, I am not to be influenced by the evidence that the applicant uses its trade mark on goods which may be different from the opponent’s goods. I am to consider any of the uses of the opposed trade mark that would be within the scope of the registration sought. In essence, the question comes down to my being satisfied that there is a “finite and non-trivial” risk of deception or confusion[9]. 

   [9] Registrar of Trade Marks v Woolworths Limited (1999) AIPC 91-499 at 36, 697-8 (per Justice French) and 39, 703-4 (per Justice Branson)

6. A consideration of the opponent’s HOGAN trade marks reveals that the most striking and prominent feature of the marks is the word HOGAN and in some cases, the letter ‘H’. The applicant’s trade marks are a the plain text words VANESSA HOGAN and the VANESSA HOGAN device which is a circle with intersecting lines which could potentially be a stylized version of the letters ‘V’ and ‘H’.

7. The opponent has also put forward examples of various ways in which its trade marks have been used over the years in its evidence. It is clear from that evidence that over the years the opponent has used its HOGAN trade marks in a number of differing formats and scripts including fancy scripts with the addition of female names with or without the letter H being present. Therefore, even though the respective trade marks contain additional features such as differing devices and the word ‘VANESSA’ I consider that the common word HOGAN is the most distinctive and striking part of the trade marks. In particular, I believe that the use of the female name and the possible stylized letter ‘H’ in the applicant’s respective trade marks alludes to an association with the opponent. I believe that this, along with the opponent’s well established propensity to use its HOGAN trade marks in so many different formats and in conjunction with female celebrity names, is likely to further emphasise a possible connection between the opponent’s goods and those of the applicant.

8. I consider that, given the reputation evidenced by the opponent in its HOGAN trade marks, a significant number of Australian consumers would, at the very least, subscribe to a reasonable doubt[10] as to some sort of connection between those well-known trade marks and the applicant’s VANESSA HOGAN trade marks. Since all of the trade marks share the striking common element HOGAN, the degree of speculation would, in my assessment, rise to, at the very least, the reasonable doubt required to trigger section 60.

   [10] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

9. The ordinary consumer would, in my view, be justified in holding the view that the applicant’s VANESSA HOGAN trade marks had been adopted for no reason other than to denote a connection with the commercial success of the opponent’s HOGAN trade marks. Therefore, the opponent has established a ground of opposition under the provisions of section 60.

10. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds set out in the notice although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

Decision

1. Section 55 of the Act provides:

   55 Decision

   (1) 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.

2. I find that the opponent has met the onus upon it, in terms of the grounds of opposition under section 60 argued at the hearing. I refuse to register trade mark applications 1511698 and 1512445.

Costs

1. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful applicant Jiang & Hou Pty Ltd.

Bianca Irgang

Hearing Officer

Trade Marks Hearings

21 January 2015