Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited

[2002] ATMO 108

TRADE MARKS ACT 1995

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

Re:Opposition by TORPEDOES SPORTSWEAR PTY LIMITED to registration of trade mark application 788509(3,5,9,12,16,18,25,28,29,30,32,35,41) - THORPEDO - filed in the name of THORPEDO ENTERPRISES PTY LIMITED.

DATE OF DECISION:

21 November 2002

DELEGATE:

Hearing Officer Claudia Murray

REPRESENTATION:

Opponent

Ken McInnes, of Hodgkinson Old McInnes, Patent and Trade Mark Attorneys

Applicant

Fleur Hinton, Counsel, of PricewaterhouseCoopers Legal, Lawyers

DECISION:

1. Section 52 Opposition: registration allowed - s 55(b)

2. Costs awarded against opponent

Background

Thorpedo Enterprises Pty Limited (the applicant) filed trade mark application no. 788509 on 17 March 1999. The subject of the application is the trade mark:

THORPEDO

The application is in respect of thirteen classes from the International (Nice) Classification of Goods and Services. The relevant classes and goods and services included in each are detailed in the table below:

CLASS

GOODS / SERVICES

3

Soaps and perfumes

5

Deodorants, vitamin preparations, hair lotions

9

9 (contd)

Cinematographic, life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; audio visual teaching apparatus, breathing apparatus for underwater swimming, cameras, animated cartoons, eyeglass cases, clocks and time recording devices, compact disk players, compact disks, computer programs, computer software, computers, life-saving apparatus and equipment, sound recording apparatus, sound recording disks, sun glasses, swimming belts, swimming jackets, tapes, television apparatus, telecommunication transmitters, video cassettes, video game cartridges, video recorders, video tapes, telephone apparatus, mobile telephones, telephone receivers, telephone transmitters, telephone wires

12

Vehicles, apparatus for locomotion by land, air or water, automobiles, boats, ships, sports cars

16

Paper, stationery (excluding writing instruments) books, calendars, notebooks, paper sheets, postcards, stickers

18

Trunks and travelling bags, beach bags, garment bags for travel umbrellas

25

Clothing, footwear, headgear, bathing suits, bathing trunks, beach clothes, beach shoes, belts, headbands, headgear for wear, hosiery, jackets, jumpers, knitwear, leggings, overcoats, pyjamas, pants, parkas, sandals, scarfs, shawls, shirts, shoes, singlets, socks, sports jerseys, sports shoes, stockings, swim suits, T-shirts, underclothing

28

Games and playthings; gymnastic and sporting articles, balls for games, board games, body building apparatus, body training apparatus, dolls, dolls clothes, exercise bicycles, flippers for swimming, automatic games, golf bags, golf clubs, novelties for parties, dances, machines for physical exercises, plush toys, surf boards, teddy bears, toys

29

Jams, yoghurt

30

Coffee, tea, cocoa, sugar, rice, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, salt, mustard, vinegar, sauces, spices, ice, ice cream, edible ices, custard, biscuits, chewing gum, frozen yogurt, pastries, sorbets, sugar confectionery, sweets, tea

32

Mineral and aerated waters and other non-alcoholic drinks, fruit juices and fruit drinks, syrups and other preparations for making beverages, waters

35

Advertising, business management, business administration, consultancy, public relations, publicity, radio advertising, radio commercials, television advertising, television commercials

41

Education and providing of training in relation to sport, human development and charitable organisations; entertainment services in relation to sport; sporting and cultural activities, arranging and conducting conferences, organisation of competitions, providing sports facilities, television entertainment

Many citations, including those belonging to Torpedoes Sportswear Pty Limited (the opponent), were initially raised against the application. However, after two reports and some amendments to the applicant's goods and services, the trade mark application was accepted for registration. Its acceptance was advertised in the Official Journal of Trade Marks on 29 June 2000.

On 21 September 2000 the opponent filed notice of opposition to registration of the trade mark. Ten grounds of opposition were listed in the notice.

The opponent's evidence in support was duly served and filed. The service and filing of the applicant's evidence in answer was a little more fraught and less routine. The applicant's original agents filed the evidence, which their successor later requested be withdrawn in its entirety. The opponent's agent vigorously and successfully objected to this unusual request and, ultimately, the applicant chose to rely on its evidence at the hearing. No evidence in reply was forthcoming from the opponent, and the matter then came before me, as a delegate of the Registrar, in Sydney on 24 July 2002. Mr Ken McInnes, of Hodgkinson Old McInnes, Patent and Trade Mark Attorneys, Sydney, represented the opponent. Ms Fleur Hinton, Counsel, and Ms Olivia Kwok, both of PricewaterhouseCoopers Legal, Sydney, represented the applicant at the hearing.

Evidence

Evidence in Support

The opponent's evidence in support comprises a statutory declaration, dated 12 December 2000, by Mr John Quin. Mr Quin is the Director of the opponent, Torpedoes Sportswear Pty Limited. He explains that his company has become, via assignment, the owner of the following trade mark registrations:

TM No	Class	Trade Mark	Filing Date	Statement of Goods
585117	28	PARADISE LEGENDS TORPEDOES	24 Aug 1992	All goods in this class inclusive of protective paddings, protective paddings for sporting shorts, therapeutic protective padding
772346	25	7 Sep 1998	Clothing including headgear and footwear

Mr Quin provides a brief history of his company, and its predecessors in business. He explains that trade mark no. 585117 was registered by Paradise Legends Pty Ltd (Paradise) in 1992. On 24 February 1998, that company assigned the registration, together with the goodwill of the business, to Torpedoes International Pty Limited (TI). TI filed trade mark application no. 772346 in September of that year. Then, on 9 December 1999, the opponent acquired the business and associated goodwill of TI, including all intellectual property rights, in particular the two trade mark registrations in question.

Mr Quin declares that Paradise adopted the trade mark TORPEDOES for use in relation to both sports clothing and protective sporting apparel no later than August 1992. It then began using the TORPEDO and T DEVICE (subject of trade mark no. 772346) from late 1995, or very early 1996. Mr Quin refers to agreements made by his company and its predecessors to supply, under the TORPEDOES and T DEVICE trade mark, custom designed sweaters, shorts, and protective wear to various sporting teams. These goods were supplied for use in Australian Rules Football, cricket, Rugby League, Rugby Union, touch football, tennis, athletics, baseball, golf, basketball, soccer, watersports and etc. He also describes some sponsorship arrangements entered into by the companies, for such events as the Australian Under 19 Cricket Championships, which were known as the 1998 Torpedoes Cup.

Exhibits JQ-1 to JQ-17, being examples of advertising material, correspondence, newspaper articles and etc, support Mr Quin's declaration.

Evidence in answer

The applicant's evidence in answer comprises two declarations. The first declaration, dated 7 October 1999, is by Mr David Flaskas, Managing Director of Grand Slam International Pty Ltd (GSI). Mr Flaskas explains that GSI is a sports management company engaged to manage and promote identities such as world leading athletes. He declares that, in his position as Managing Director of GSI, it is his responsibility to manage the multiple world champion Australian swimmer Ian Thorpe whom, he explains, since at least March 1997 has been known by and commonly referred to by the name "Thorpedo". Mr Flaskas declares:

In this role, I manage Thorpedo's endorsements, media and promotional affairs. I liaise with legal and financial advisers, and take an extreme interest in the personal well-being of Thorpedo. ... Thorpedo Enterprises Pty Limited [the applicant] was established by Thorpedo's parents to enable the management of Thorpedo's commercial and financial interests dealing with non-personal exertion income. Thorpedo's parents are the Directors of Thorpedo Enterprises. The sole shareholder of Thorpedo Enterprises is Thorpe Pty Limited as trustee for the Thorpedo Trust. Thorpedo is a discretionary beneficiary of the Thorpedo Trust.

Mr Flaskas goes on to describe the use of Ian Thorpe's name and the name THORPEDO on a range of products marketed by the Australian food company Uncle Tobys. He also refers to use of THORPEDO on Ian Thorpe's Internet website, and as part of his involvement in a number of fundraising events. Mr Flaskas also declares that, when the declaration was made, eight major Australian and international companies sponsored Ian Thorpe.

Mr Flaskas' declaration is accompanied voluminously by Exhibits DF1 to DF117, being mainly examples of media reporting of Ian Thorpe's swimming successes.

The second declaration in support of the applicant, dated 19 October 2001, is by Yves Raphael Hazan. Mr Hazan was the applicant's solicitor at that time. His declaration relates to and is accompanied by Annexure A, comprising many pages of information. He declares that this is a complete copy of Ian Thorpe's Internet website, located at of Opposition

At the hearing, Mr McInnes argued grounds of opposition under sections 43, 44 and 60. For convenience, I will deal with these in numerical order.

Section 43 - Trade mark likely to deceive or cause confusion

Section 43 of the Trade Marks Act 1995 (the Act) provides:

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.

Submissions

Mr McInnes began his arguments in support of a ground of opposition under section 43 by observing that Ian Thorpe is "something of a household name" both under his own name, and also his sporting persona of THORPEDO. He said that it was "abundantly clear" that the Australian public recognised THORPEDO as indicating the Olympic swimmer Ian Thorpe, and the opponent did not take issue with this. In these circumstances, said Mr McInnes, it was "surprising, and in clear disregard of requirements set out in the Trade Marks Examiners Manual", that no consent to the use of THORPEDO as a trade mark had been sought from Ian Thorpe himself. The opponent has ascertained this situation by making a Freedom of Information request for the application file, which information it had put into its evidence in support. Mr McInnes surmised that the requirement must have been overlooked during the "Sydney Olympics explosion" that was occurring at the time.

Turning then to the applicant's evidence, Mr McInnes made the observation that no declaration had been forthcoming from Ian Thorpe himself. As to the statutory declaration by David Flaskas, Mr McInnes argued that there was no substantiation of the claims made in it. He said:

There is nothing available in the matter to substantiate the ability of David Flaskas to either make statements on behalf of the Applicant and/or Ian Thorpe or to be in a position to credibly declare to the outlined relationships [between Ian Thorpe, the Thorpedo Trust and the applicant]. Thus, any connection between Thorpedo Enterprises Pty Limited and Ian Thorpe is tenuous and unsubstantiated. There is certainly no indication that Ian Thorpe has provided consent to anyone to use of THORPEDO as a Trade Mark in connection with any goods, let alone the broad range of goods covered by this Application. The Registrar in neglecting to seek that consent appears to have overlooked a crucial requirement for acceptance in the prosecution of the Application.

Ms Hinton responded to these arguments by protesting her certain knowledge that the requisite connections between the parties and authorisation of use by Ian Thorpe did indeed exist. She requested that, if the success of the opposition proved likely to turn on this issue, her client be given the opportunity to provide additional documentary evidence to support its case.

Mr McInnes then cited D'Urban Inc v Campio Pty Ltd, 17 IPR 486, to argue for the proposition that it is "inappropriate, or, at least not appropriate with a due consideration to the balance of convenience for actions to be taken or materials submitted at the hearing or subsequently."

Discussion

The information in the Trade Marks Office Manual of Practice and Procedure to which Mr McInnes referred is contained in Part 29, Section 4, which says:

4. Trade marks which include names or representations of well known persons

Where a trade mark contains or consists of the name of a well known person or organisation or a representation of a famous person, a ground for rejection of the application may exist under the provisions of section 43 of the Act. If the inclusion of the name or representation is likely to lead the ordinary buying public to the conclusion that the person whose name or representation appears in the trade mark has endorsed the product or services in some way, then a ground for rejection exists unless the applicant has permission to use the name or representation in the trade mark upon the product or in relation to the services specified in the application.

...

4.2 In the case where a ground for rejection of a trade mark application exists under section 43 because the use of a name or representation of a person is likely to be deceptive or confusing, the applicant should be requested to supply a letter of consent from that person or that person's legal representative. Without such consent the application cannot be accepted.

The above passages refer to names of well known persons. It is important to remember here that THORPEDO is not the real name of any person, being merely the nickname of Ian Thorpe, apparently adopted and promoted initially not by him, but by a notoriously whimsical and fickle sporting media. It is possible that at the time the application was being examined, the media nickname status of the word THORPEDO was not considered by the examiner to have equivalent standing to a person's real name, such that a ground of rejection under section 43 would apply.

Whether or not this was the case, it is not necessary for me to find now upon whether the examiner's initial approach was mistaken. I am required here to address the question afresh. I must determine whether I believe there is a connotation present in the word THORPEDO, such that its use by the applicant on the goods and services specified in the application, if not endorsed by Ian Thorpe himself, would be likely to deceive or cause confusion. This situation is different from those which were the subject of earlier trade mark cases dealing with section 43, such as Down To Earth (Victoria) Co-Operative Society Ltd v Schmidt (1998) 41 IPR 632 and Durkan v 20th Century Fox Film Corporation (2000) 47 IPR 651. Here, both parties are in agreement that the trade mark in question has a connotation, and that the identity it connotes is related to the applicant, not the opponent. I am in agreement with them on this point. However, as Hearing Officer Williams observed in The Executors of the Estate Of Diana, Princess Of Wales v Bonnie Masterson [2001] ATMO 46 (31 May 2001), without more, merely invoking a reference to a celebrity (admittedly deceased in that case) cannot deceive or confuse. In pointing out that Diana Princess of Wales had, in her lifetime, carefully avoided the commercialisation of her name, and was therefore unlike those people who might be expected, in principle, to be likely to trade on a reputation, Mr Williams went on to say:

This is not a case where, in life, the person created a connotation linked directly to the goods. The Princess of Wales never was to roses what Stradivarius was to violins, for instance. Neither was she to roses what an actor and businessman such as Paul Hogan is to shoes (Hogan v Pacific Dunlop Ltd 12 IPR 225) or souvenir shops (Hogan v Koala Dundee Pty Ltd 12 IPR 508), nor what a prominent sportsperson may be to sporting equipment. (Emphasis added.)

Ian Thorpe is a prominent sportsperson, and prominent sportspersons are widely recognised in today's Australia as having connections with commercial entities. The relationships are symbiotic, as a company which sponsors a promising sports star can often provide crucial support enabling the star to excel, and in return enjoy the very best of publicity when they do so, in the glare of the world's media, wearing or using that company's products.

In all the circumstances, I find that a ground of opposition to the subject application under section 43 would exist, if there were no connection between Ian Thorpe and use of the trade mark THORPEDO on the goods and services in question. However, I am satisfied, on the evidence provided by the applicant, that the necessary connection is present. Despite the aspersions cast by Mr McInnes upon the veracity of Mr Flaskas' declaration, the opponent has not provided any evidence to disprove its content. Obviously, there must have been some necessary legal adjustments since the date of the declaration in 1999, as then Ian Thorpe was a minor, not yet seventeen. However, Mr Flaskas has declared Ian Thorpe was, at that time, an ultimate beneficiary of the commercial dealings conducted by the applicant. I believe that this is sufficient for me to safely assume his endorsement of its use of the trade mark THORPEDO, as Ms Hinton has emphatically confirmed. Accordingly, the section 43 ground of opposition has not been established.

Section 44 - substantially identical or deceptively similar trade marks

The relevant subsections (and notes) of section 44 provide:

(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.

The definition of "deceptively similar" in section 10 is that "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". Subsection 14(1) provides that goods are similar to other goods if they are the same as, or of the same description as, those other goods. Subsection 14(2) provides that services are similar to other services if they are the same as, or of the same description as, those other services.

Submissions

Mr McInnes submitted that the opponent had a strong case in terms of section 44. He said that the applicant's trade mark THORPEDO and the opponent's prior registered trade marks PARADISE LEGENDS TORPEDOES and  were substantially identical and at the very least deceptively similar. In support of his arguments he cited the tests laid out in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, and Australian Woollen Mills Ltd v F.S.Walton & Co Ltd (1937) 58 CLR 641.

Mr McInnes argued that the opponent's device trade mark 772346 in particular would be known by the word TORPEDOES alone, and that a side by side comparison of THORPEDO and TORPEDOES could only lead to the conclusion that the marks were substantially identical. The words were both visually and aurally virtually the same. Further, said Mr McInnes, because THORPEDO evoked the idea of a "torpedo", a fast and aggressive instrument for pushing through water, the trade marks conveyed the same idea. THORPEDO, he said, "connotes" TORPEDO.

In support of his arguments, Mr McInnes cited several cases (mostly decided under the Trade Marks Act 1955) where deceptive similarity was found between trade marks that he said were less similar than those at issue here. One such was Kabushiki Kaisha Chandeal v Chantelle [1996] ATMO 61 (3 December 1996); 36.563; AIPC 91-299. He said he could not imagine any circumstances in which THORPEDO used on sports clothing or sporting equipment and accessories would not lead to deception and confusion with the opponent's trade marks used on the same or similar goods.

Ms Hinton responded by citing the circumstances where reputation and notoriety of trade marks have been taken into account, in Hugo Boss AG v Tagmill Pty Ltd [2000] ATMO 23, and Registrar of Trade marks v Woolworths Limited 45 IPR 411 (the Metro case). She said:

Whether or not the trade mark THORPEDO had a reputation in relation to sportswear and clothing at the time of lodgement of the application (January 1999) (sic), the enormous amount of publicity which Ian Thorpe has received in relation to his nickname THORPEDO would cause people to assume now and would have caused them to assume at that time, that the trade mark THORPEDO was being used in connection with him.

Discussion

The question of whether the opponent's trade mark registrations have an earlier priority to the subject application is not in dispute between the parties. It is also common ground between the parties that a significant overlap exists between the goods covered by the respective trade marks. The issue to be decided is whether the trade marks in question are either substantially identical or deceptively similar.

The test for substantial identity referred to above is set out by Windeyer J in The Shell Co. of Australia Ltd. v. Esso Standard Oil (Australia) Ltd, supra, at page 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. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106.

Setting the applicant's and the opponent's trade marks side by side, the differences between THORPEDO and PARADISE LEGENDS TORPEDOES could not be clearer. Aside from the critical matter of the differences between THORPEDO and TORPEDOES, (to which I will return later) the distinctive words PARADISE LEGENDS in the opponent's trade marks are nothing if not essential features of that trade mark. Regarding the trade mark , I cannot allow Mr McInnes' submission that it has just one essential feature, being the word TORPEDOES. This is a composite trade mark, in which the "T" device takes considerable prominence. There is a total impression of dissimilarity between the applicant's and the opponent's trade marks that leads inescapably to a finding that they are not substantially identical.

The tests for deceptive similarity are less straightforward than those for substantial identity. Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd, supra, at page 658 say:

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, their 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.

Once again, in applying the relevant test to the trade marks in question, I find myself disagreeing with the opponent as to whether deceptive similarity between them has been demonstrated. Specifically, I am not persuaded that the words THORPEDO and TORPEDOES are so close to one another that, in the context of the goods and services to which they were applied, "ordinary people" could not help but confuse a trade mark comprising one with a second mark containing the other.

The subject trade mark application covers a total of thirteen classes, many of which have no common ground with the goods for which the opponent's trade marks are registered. Therefore, for the purposes of determining deceptive similarity between the trade marks, the focus must necessarily be on the context of their use upon the goods such as clothing and sporting goods in classes 25 and 28 where an overlap does occur. Mr McInnes has particularly referred me to Kabushiki Kaisha Chandeal v Chantelle, supra, where the trade marks CHANDEAL and CHANTELLE were found by Deputy Registrar Hardie to be deceptively similar. The goods of interest in that case were clothing. Mr McInnes pointed to Ms Hardie's finding that consumers purchase clothing items casually, without any degree of care and attention. He argued if, in the context of use on such goods, CHANDEAL and CHANTELLE, which had "greater dissimilarities" than the trade marks presently in question, were deceptively similar, then I should find this fact persuasive in comparing the applicant's and the opponent's trade marks.

Kabushiki Kaisha Chandeal v Chantelle was decided under the Trade Marks Act 1955. Deputy Registrar Hardie found there was little in the meanings of each trade mark to assist in their differentiation, and she took "some slight account" of the opinion that the marks would be confused expressed by eight retailers whom she took to have some standing as expert witnesses. Under the Trade Marks Act 1955, as under its predecessor, the applicant for registration bore the onus, both in examination and in opposition proceedings, of demonstrating that its trade mark qualified for registration. That onus has shifted under the Trade Marks Act 1995. Lahore, Patents, Trade Marks and Related Rights (2001), says at paragraph 66,320:

Under the 1955 Act it was well established that in opposition proceedings the onus of proof lay with the applicant. The opponent needed only to establish that there were matters for the applicant to answer. (Re Appn by Karachi Aerosol Co Ltd(1985) 6 IPR 33 at 34; Camelot Design Industries Group Pty Ltd v Bernard Leser Publications Pty Ltd(1987) 9 IPR 596 at 598.) A “reversed” onus of proof operates under the 1995 Act. The applicant is entitled to acceptance unless grounds for opposition are established — “[t]he onus is on the opponent to convince the registrar of the validity of the grounds of opposition that they have cited." (Trade Marks Office Draft Manual of Practice and Procedure, Part 46.)

French J discussed this reversal of onus in the Metro case, albeit in relation to a dispute initially between the Registrar and the trade mark owner over acceptance of its trade mark, rather than an ownership dispute between two opposing parties. At paragraph 45, he considered the following test for likely deception or confusion under the old law:

Assuming a use by the proprietor of each of the cited trade marks in a normal and fair manner in respect of any of the goods and services covered by those registrations, is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration (the respondent to this application) also uses its mark normally and fairly in respect of services covered by the proposed registration. (Re Smith Hayden and Co's Application (1946) 63 RPC 97 at page 101.8.)

He then observed:

So far as this passage ... suggests that an applicant must satisfy the Registrar or the Court that there will be no reasonable likelihood of deception and confusion it does not represent the law as it stands under the 1995 Act. The position now is that the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

In the Metro case, the Full Federal Court affirmed the earlier decision of Wilcox J, (Woolworths Ltd v Registrar of Trade Marks [1998] 1268 FCA (9 October 1998)), that the trade mark WOOLWORTHS METRO (rendered in a stylised manner) was not deceptively similar to trade marks featuring the single word METRO. Mr McInnes observed at the hearing that, in his opinion, this case has been frequently misapplied by the Trade Marks Office, because insufficient attention has been paid to the surrounding circumstances in which the trade marks at issue there were being compared. That is, all but one of the METRO trade marks cited against the WOOLWORTHS METRO trade mark were in respect of goods, and the latter mark sought registration in respect what were merely "closely related" services of retailing and wholesaling. Therefore, the findings in the Metro case should not be applied broadly to other situations involving use of trade marks in relation to similar goods or similar services.

I take Mr McInnes' point that the comparisons made between goods and goods, or services and services are not exactly the same as those made between goods and services. However, I do not concede that, by virtue of this point alone, the fundamental issues being addressed in the Metro case can be conveniently compartmentalised. In the first place, it must be remembered that the fourteenth cited METRO trade mark was in respect of services considered by the court to be similar to those covered by the WOOLWORTHS METRO trade mark application. It, too, was found by Wilcox J not to be deceptively similar to the WOOLWORTHS METRO trade mark, and this was endorsed by the majority decision of the Full Federal Court.

The principle espoused in Metro that "the probability of deception and confusion must be finite and non-trivial" (French J, paragraph 43) is in the spirit of the new legislation, and has general application under it. It also seems to me that Dixon and McTiernan JJ's very practical conclusion to their test for deceptive similarity; "evidence of actual cases of deception, if forthcoming, is of great weight" has possibly even more relevance today than it had when it was written, in 1937.

As far as the present case is concerned, the opponent had led no such evidence. In this, the circumstances can be distinguished even from Kabushiki Kaisha Chandeal v Chantelle, supra, upon which (although it was decided under the Trade Marks Act 1955) Mr McInnes sought to rely. I have only Mr McInnes' submissions upon deceptive similarity to consider. He argued that both THORPEDO and TORPEDO evoke the same idea, that of a fast and aggressive instrument for pushing through water. He said this meant that the mark THORPEDO connotes TORPEDO, which is interesting since he previously argued very differently, in terms of section 43, that it connoted the "household name" Ian Thorpe. I found Mr McInnes' arguments more convincing in the first instance. Popular recognition of THORPEDO as famous swimmer Ian Thorpe's nickname negates, in my opinion, any likelihood of deception or confusion of the purchasing public resulting from use of THORPEDO on goods, and use on similar goods of TORPEDOES (with or without a "T" device or the addition of PARADISE LEGENDS). French J said, in the Metro case, supra, at paragraph 61:

Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, as is the present case, it would be artificial to separate out the physical features of the mark from the viewer's perception of them. For in the end the question of resemblance is about how the mark is perceived. In the instant case the visual impact of the name "Woolworths" cannot be assessed without a recognition of its notorious familiarity to consumers.

It is true that, in contrast to WOOLWORTHS, the "notoriety" or "familiarity" of the word THORPEDO does not come from trade mark use. In C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539 (31 October 2000), the Full Federal Court said of the findings of notoriety and deceptive similarity in the Metro case (paragraph 52):

[The Metro case suggests a proposition] that, in assessing the nature of a consumer's imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration.

These words suggest that the Full Federal Court had a connection between notoriety and use as a trade mark firmly in mind. However, the present case differs in its additional aspect of the connotation within the trade mark THORPEDO, in terms of identity with a famous person, which I have already found to exist in terms of section 43. Under these circumstances, I believe that the different origin of the notoriety of THORPEDO would be unlikely to diminish its effect on the perception of prospective consumers.

In all, I find that the applicant's trade mark is neither substantially identical, nor deceptively similar to the opponent's registered trade marks. The ground of opposition under section 44 has therefore not been established.

Section 60 - trade mark with a reputation in Australia

Section 60 provides:

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

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, had 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 1:        For deceptively similar see section 10.

Note 2:        For priority date see section 12.

Submissions

Mr McInnes argued under section 60 that the opponent's evidence of use of the unregistered trade mark TORPEDOES, prior to the filing date of the subject application, demonstrated it had an extensive reputation in that mark at that time, in respect of clothing and sporting articles. Ms Hinton disputed that the evidence supported any such claim.

Discussion

It is not necessary for me to explore the question of the extent of opponent's reputation in the trade mark TORPEDOES. The first hurdle under section 60 is that the trade mark in which a reputation is claimed must be substantially identical or deceptively similar to the trade mark being opposed. I have already explained above that I do not believe THORPEDO is either substantially identical or deceptively similar to TORPEDOES, with or without additional material. Accordingly, the opponent has also failed to establish its final ground of opposition under section 60.

Decision

I have found that the opponent has not succeeded under any of the three grounds pursued at the hearing. For completeness, and as I have no basis to be satisfied that any of the other grounds raised in the notice of opposition have been made out, I find each of those grounds also to be unsuccessful. I direct that the application may proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

Both sides have claimed costs in this opposition. I award costs, according to the official scale, against the unsuccessful opponent, Torpedoes Sportswear Pty Limited.

Claudia Murray

Hearing Officer

Trade Marks Hearings

21 November 2002