Tosca TravelGoods (Aust) Pty Ltd v Samsonite IP Holdings S.a.r.l

[2015] ATMO 39

TRADE MARKS ACT 1995

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

Re:Opposition by Tosca Travelgoods (Aust) Pty Ltd to registration of trade mark application 1442121(18) - COSMOLITE - filed in the name of Samsonite IP Holdings S.a.r.l.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Did not attend or file written submissions Applicant: Siobhan Ryan of Counsel instructed by Griffith Hack
Decision:	2015 ATMO 39 s52 proceedings: s44 – goods of same description, whether trade marks are deceptively similar; honest concurrent use – paragraph 44(3)(a) applies -: s58 - Opponent owner of the Trade Mark via earlier registration: opposition established.

Background

1. In this matter Samsonite IP Holdings S.a.r.l. (‘the Applicant’) has filed application under the Trade Marks Act 1995 (‘the Act’) to register the trade mark appearing below

Application No:         1442121
Filing Date:                11 August 2011
Goods:  Class 18: Luggage
Trade Mark:               COSMOLITE
  (‘the Trade Mark’)

Endorsements:           Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.[1]

[1] The endorsement reflects the acceptance of the Trade Mark for possible registration on evidence of honest concurrent use with registration 768132(18) COSMO which is owned by the Opponent.

1. The Trade Mark was accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 2 May 2013.

2. On 1 July 2013, Tosca Travelgoods (Aust) Pty Ltd (‘the Opponent’) filed Notice of Intention to Oppose.  On 29 July 2013 the Opponent filed a Statement of Grounds and Particulars which, inter alia, includes the following contentions:

   The Applicant's Mark is substantially identical with or deceptively similar to the following Australian registered trade marks which have earlier priority dates:

   a.    Australian Trade Mark Registration Number 768132 for "COSMO" in class 18 claiming "leather and imitation leather bags, handbags, purses, wallets, cases, attaché cases, haversacks; rucksacks, suitcases, travelling bags, luggage trunks, and cosmetic, beauty and vanity cases" in the name of the Opponent, registered from 21 July 1998 ("COSMO Mark"); and

   b.   Australian Trade Mark Registration Number 388650 for “COSMOPOLITAN” in class 18 claiming “all goods in this class including leather and imitation leather bags, purses, cases, wallets and attaché cases in the name of the Opponent registered from 16 March 1983.

   The overall impression or recollection which is produced upon the minds of consumers by the Mark and the Prior Registration is of the essential element ‘COSMO’.

   The goods specified in class 18 of the Applicant’s Mark are goods that are of the same description or closely related to the goods covered by the Prior Registrations.

   Ground Two: Applicant not the owner of the trade mark – Section 58

   The Applicant’s Mark is substantially identical to the Opponent’s COSMO Mark in Class 18 which covers leather and imitation leather bags, handbags, purses, wallets, cases, attaché cases, haversacks, rucksacks, suitcases, travelling bags, luggage trunks, and cosmetic, beauty and vanity cases.

   The COSMO Mark has been registered in Australia since 21 July 1998 and has been continuously used by the Opponent since approximately July 2001.

   The goods claimed under the COSMO Mark are the same kind of goods as those claimed under the Applicant’s Mark, being baggage.

   The Opponent’s claim of prior ownership is based upon the Opponent’s prior use of the COSMO Mark which dates back to approximately July 2001 and on making an application to register the COSMO Mark, dating back to 21 July 1998, which both pre-date the Applicant’s application to register the [Trade Mark] being 11 August 2011.

   The Applicant has no reputation [sic][2] in the Mark in Australia that pre-dates the use of the COSMO Mark by the Opponent.

   [2] It is use before the filing date of registration 768132(18) COSMO, rather than reputation, that the Applicant would need to rely on.

3. On 3 October 2013 the Applicant filed Notice of Intention to Defend.

4. Thereafter, the parties filed evidence as is discussed under the heading ‘Evidence’ below.

5. Subsequently, the Applicant requested to be heard.  The hearing was in Melbourne on 4 September 2014 before me as a delegate of the Registrar of Trade Marks.  Siobhan Ryan of Counsel instructed by Griffith Hack appeared for the Applicant.  The Opponent did not appear or put in written submissions although the Evidence in Reply may be characterized as such.

Onus & Relevant Date

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[3]

   [3] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12]; Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10]; Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; ( 2012 ) 94 IPR 551 per Dodds-Streeton J at [13]; DC Comics v Cheqout Pty Limited [2013] FCA 478 per Bennett J at [13]; and, most recently, Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373 per Murphy J at [30] to [37].

2. The relevant date at which the grounds must be considered is the filing date of the opposed application.[4]

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; The Seven Up Company v O.T. Limited [1947] 75 CLR 203 at 211; Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 at 266.

Evidence

1. The Evidence comprises the following statutory declarations:

   In Support

   Marion Licen, General Manager of the Opponent, made on 18 December 2013;

   In Answer

   Richard Andrew Lamb, a Director of the Applicant, made on 19 March 2014;

   In Reply

   Marion Licen, General Manager of the Opponent, made on 14 May 2014 (‘second Licen declaration’)

2. The Opponent trades in luggage, leather-craft and leather accessories and was incorporated on 17 June 1985.  Ms Licen explains in her first declaration:

   The Opponent is a manufacturer and wholesaler of leather-goods and travel-goods which include:

   (i) luggage, bags, overnight bags, travel bags, garment bags, cases, suitcases;

   (ii) ladies and men's handbags, purses, wallets, key cases, shoulder bags;

   (iii) attache cases, brief cases;

   (iv) backpacks, haversacks, rucksacks;

   (v) cosmetic bags and beauty cases;

   (vi) folios, port manteaux, ring binders, folders, CD cases, pencil cases; and

   (vii) sport bags.

3. Ms Licen draws attention to the following two registrations owned by the Opponent:

Registration No:         768132
Priority Date:             21 July 1998

Goods:Class 18: Leather and imitation leather bags, handbags, purses, wallets, cases, attaché cases, haversacks; rucksacks, suitcases, travelling bags, luggage trunks, and cosmetic, beauty and vanity cases

Trade Mark:               COSMO

Registration No:         388650

Priority Date:             16 March 1983

Goods:Class 18: All goods in this class including leather and imitation leather bags, purses, cases, wallets and attaché cases

Trade Mark:               COSMOPOLITAN

1. Concerning the use of the above trade marks, Ms Licen states:

   The COSMO Mark has been used by the Opponent in Australia since approximately July 2001 predominately in relation to handbags and shopping trolleys (‘the COSMO goods’).

   The COSMOPOLITAN Mark has been used by the Opponent in Australia since approximately 1988 predominately in relation to luggage, cosmetic bags, business products, handbags and purses (‘the COSMOPOLITAN goods’).

2. I consider it reasonable to observe that if the grounds under section 44 and 58 are not established in relation to registration 768132(18) COSMO, it follows that those grounds could not be established in relation to 388650(18) COSMOPOLITAN and that it is thus expedient to discuss the grounds solely in relation to registration 768132(18) COSMO.

3. The shopping trolleys to which Ms Licen refers are the two-wheeled personal variety which are shown in the exhibits to be of the type depicted below:

4. The Opponent has provided confidential sales and advertising figures in relation to both the COSMO goods and COSMOPOLITAN goods.  I assess these as being comparatively low in relation to its COSMO trade mark and moderate under its COSMOPOLITAN trade mark.

5. In his declaration in answer Mr Lamb states:

   [The Applicant] is the owner of Australian Trade Mark Application No. 1442121, for the trade mark COSMOLITE and uses the trade mark in relation to "luggage" (the "Goods"). In addition to Australian Application No. 1442121, [the Applicant] has filed numerous other applications for the COSMOLITE mark in connection with the Goods, almost all of which are now issued. For exam pie, [the Applicant] owns registrations for the COSMOLITE trade mark in the European Union, the United States, China, Hong Kong, Japan, South Korea, Canada, Argentina, Mexico, and Chile, all in connection with the Goods. Annexed hereto and marked Annexure A are copies of the registration certificates.

6. Concerning the origins of the Trade Mark, Mr Lamb states:

   The trade mark COSMOLITE was adopted by [the Applicant] in or around November 2008 as one trade mark in a range of proposed space-themed trade marks that were submitted for clearance searching in connection with a new luggage line. The proposed trade marks also included the trade mark ASTROLITE, which is currently registered as a trade mark in Australia in connection with luggage (Reg. No. 1435436), as well as the names "NOVALITE, "SATELITE," "STRATOLITE," and "SUPERNOVA," among others. The trade mark COSMOLITE was chosen after clearance searches were requested in September 2007, in connection with luggage products. Annexed hereto and marked Annexure B are details of the ASTROLITE trade mark as obtained from the Australian Trade Marks Office database.

7. Further, concerning sale of luggage under the COSMOLITE trade mark Mr Lamb states:

   In Australia, the trade mark COSMOLITE was first used in connection with the Goods in August 2009. By early to mid-August 2009, [the Applicant] was in discussions with Myer Stores to sell COSMOLITE brand Goods, and the first sales sheets for COSMOLITE brand Goods were sent to luggage retailers in Australia on 3 September 2009. The first sales of COSMOLITE branded Goods in Australia were in November 2009.

   The trade mark COSMOLITE is used on packaging for the Goods, marketing, advertising, sales literature and invoices, under the SAMSONITE brand.

   In 2009, the Goods under the trade mark COSMOLITE were initially sold in Australia through Myer Stores, David Jones, and independent luggage stores. I estimate that in 2009, there were approximately 35 stores selling the Goods under the trade mark COSMOLITE. By 2011, there were approximately 377 distributors/stores carrying the Goods under the trade mark COSMOLITE. In 2012, there were approximately 397 distributors/stores carrying the Goods under the trade mark COSMOLITE. Annexed hereto and marked Annexure C is a list of representative stores with sales of COSMOLITE products.

8. The Opponent’s goods bearing the COSMOLITE trade mark are, or include, that shown below:

9. Mr Lamb supplies confidential revenue figures for sales of luggage under the COSMOLITE trade mark by the Applicant in Australia and New Zealand.  He also provides figures for advertising expenditure and also provides examples of advertising occurring in:

   Television, large format outdoor billboards, inflight television, inflight magazines, frequent flyer airline lounges, large format advertising within airports, magazines, major office towers, public relations, social media, catalogues, Internet sites.

10. The second Licen declaration is in the nature of a critique of Mr Lamb’s declaration and also makes submissions and I take these into account while making my decision.

Section 44

1. Section 44 of the Act relevantly provides:

   44Identical etc. trade marks

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

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

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

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

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

   Note 1:For deceptively similar see section 10.

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

   Note 3:For priority date see section 12.

   Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

   […]

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

   Note:For limitations see section 6.

2. Thus the Opponent must establish the existence of an Australian registered or pending trade mark which satisfies all of the following:

   1.It has as an earlier priority date than that of the Trade Mark;

   2.it is owned by a person other than the Applicant;

   3.the goods in question are similar goods to those of the later application; and,

   4.the trade marks in question are either substantially identical or deceptively similar.

3. The trade mark registration 768132(18) COSMO on which the Opponent relies is owned by a person other than the Applicant, it has an earlier priority date than that of the Trade Mark and the goods in question are similar.[5]

   [5] That is, in terms of section 14 of the Act, the description ‘luggage’ in the opposed application is matched by goods in the Opponent’s registration which are either the same, or of the same description.

4. The remaining questions are whether the trade marks COSMO and COSMOLITE are either substantially identical or deceptively similar.

5. In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 Windeyer J discussed ‘substantial identity’ at [12]:

   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. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.

6. In E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381 French CJ, Gummow, Heydon, Crennan and Bell JJ said (of alterations or additions not substantially affecting a trade mark’s identity) at [68] (original footnotes retained):

   In support of this contention Lion Nathan relied on Colorado Group Ltd v Strandbags Group Pty Ltd.[6] The registered trade mark in that case was for the word "Colorado", which, by reason of its geographical significance, was not inherently adapted to distinguish the owner's goods from the goods of other persons as required by s 41(3) of the Trade Marks Act.[7] As noted by Gyles J, it was difficult to obtain registration of a geographical name as a trade mark under the Trade Marks Act 1955 (Cth) by reason of s 24(1)(d) of that Act.[8] The trade mark for the word "Colorado" had been used in conjunction with a mountain peak device, which reinforced the geographical connotation of the word. Allsop J found that the mark used was a composite mark and that the mountain peak device was not a mere descriptor but a distinguishing feature.[9]

   This is to be contrasted with the position in this case. The addition of the device to the registered trade mark is not a feature which separately distinguishes the goods or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade mark with the device by reference to the word  BAREFOOT . The device is an illustration of the word. The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity of the trade mark in the word alone. So much is recognised by the terms of s 7(1), which speak of additions or alterations which "do not substantially affect the identity of the trade mark". Except for a situation of honest concurrent use, another trader is likely to be precluded from registering the device alone while the registered trade mark remains on the Register. The device is an addition to the registered trade mark that does not substantially affect its identity. Accordingly, the use of the registered trade mark with the device constitutes use of the registered trade mark in accordance with s 7(1).

   [6] [2007] FCAFC 184; (2007) 164 FCR 506.

   [7] Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; (2007) 164 FCR 506 at 516 [29] per Kenny J, 519 [41] per Gyles J.

   [8] Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; (2007) 164 FCR 506 at 517 [36].

   [9] Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; (2007) 164 FCR 506 at 536 [110].

7. And in PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602; [1999] AIPC 40-117; (1999) 47 IPR 47, (‘Malanda’) Carr J said at [30]:

   In my view, the comparison side by side should be with CHOC CHILL on the one hand (or COFFEE CHILL, VANILLA CHILL, STRAWBERRY CHILL) and CHILL on the other. My reason for that is that CHOC CHILL is the name for which the applicant seeks registration.

   Having said that, I consider that the essential feature of the trade mark is the word CHILL. When one considers the basic policy of the 1955 Act, it is the word CHILL which serves to denote the trade origin of the goods.

   The word CHOC has, almost exclusively, different work to do. It describes the flavour of the goods. Registration is sought on the basis that that description will change with the flavour to COFFEE, VANILLA, STRAWBERRY and the like. Those words are (to borrow from a decision cited below) utterly descriptive.

   I have had regard to the cases cited on behalf of the applicant where a mark consisting of two words has been compared with a mark consisting of one word. They included Carnival Cruiselines where one of the comparisons was between SITMAR'S FUNSHIP and FUN SHIP. In that case (at 513) Gummow J expressed the view that there would be no material distinction to be drawn between FUN SHIP and FUNSHIP or between the addition of the definite article or the use of the plural. However, FUN SHIP was a substantially different trade mark to SITMAR'S FUNSHIP and FAIRSTAR THE FUNSHIP. Mr Martin referred me to other decisions where marks consisting of two words were compared with a mark consisting of one word, many of which were not curial decisions. I will not refer to them all (they are collected at paragraph 8 of the applicant's outline of submissions). However, Mr Martin singled out a comparison between PLANET 2000 and PLANET in Somers v Greenbelt Pacific Pty Ltd (1998) 42 IPR 587 at 589 (a decision of a senior examiner of trade marks). In that case the senior examiner held that despite the fact that the numeral "2000" added little inherent adaptation to distinguish the goods of the applicant from those of other traders, the marks PLANET and PLANET 2000 when placed side by side, had a clearly identifiable difference.

   On the other hand, in Microcom Pty Ltd v Microcom Systems Inc [1998] ATMO 2; (1998) 41 IPR 163 at 168 Hearing Officer Forno compared MICROCOM with MICROCOM NETWORKING PROTOCOL and said this:

   "... I do not think that the additional words "Networking Protocol" are sufficient to differentiate the applicant's and opponent's marks. Those two words are utterly descriptive for some of the goods covered and add nothing to the mark. This is, I think, analogous to the situation where, say, the trade mark Rinso was being compared with another mark Rinso Washing Powder. Clearly, these marks are substantially the same. I think that any comparison between the present opponent's mark and that covered by No. 523656, [Microcom Networking Procol] would lead to a conclusion that those marks are also substantially the same."

1. The element –LITE is, in my observations of the trade marks register, frequently used in Class 18 to indicate that the goods, luggage, is lightweight.  The element –LITE occurs 58 times within both registrations of trade marks and applications for registration as trade marks.

2. A search for the term ‘lightweight luggage’ with the Google® search engine has approximately 4.48 million hits.[10]

   [10] Regulation 21.15(4)

3. I consider that here, as with the Malanda trade marks CHILL and CHOC CHILL, there is little material distinction between COSMO LITE and COSMOLITE.  The Trade Mark is very obviously formed by the conjunction of the words ‘cosmo’ and ‘lite’ and is not readily susceptible to an alternative interpretation.

4. Adopting the ‘essential element’ or ‘distinguishing feature’ analysis, the Trade Mark is comprised of the distinctive element ‘cosmo’ and the prima facie inherently unadapted to distinguish element ‘lite’ which is phonetically identical to the word ‘light’ and (to borrow from Malanda) ‘utterly descriptive’ of a desirable characteristic of the goods.  The Applicant’s advertising under the Trade Mark stresses this quality of the goods in question by the use of the words ‘Lift Me Up’ and ‘New Cosmolite Now Even Lighter’:

5. Additionally, the element ‘cosmo’ has no immediate facility in relation to the goods and is thus inherently adapted, whereas the element ‘chill’ did have some facility in relation to the goods (ice creams) in Malanda.  Therefore, in my consideration, the arguments here for substantial identity are stronger than those in Malanda.

6. Accordingly, in my consideration, the trade marks COSMO and COSMOLITE are substantially identical and consequently the ground under section 44(1) is established.

7. However, the Applicant submits that its use of the Trade Mark before the filing date entitles it to the beneficial exercise of paragraph 44(3)(a) in that it has had honest and concurrent use of the Trade Mark.

8. The criteria to be considered when assessing honest concurrent use were discussed by Kenny J in McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 (‘McCormick’) at [30]:

   Section 44(3) gives the Registrar a discretion to accept an application that would otherwise be rejected under s 44(1) in the case of honest concurrent use or other circumstances making it proper to do so. The authorities establish that the principal criteria for determining whether registration should be permitted pursuant to s 44(3) include:

   (1)       the honesty of the concurrent use;

   (2)       the extent of the use in terms of time, geographic area and volume of sales;

   (3)       the degree of confusion likely to ensue between the marks in question;

   (4)       whether any instances of confusion have been proved; and

   (5)       the relevant inconvenience that would ensue to the parties if registration were to be permitted.

   See In Re Alex Pirie & Sons Ltd's Application (1932) 49 RPC 195; (1933) 50 RPC 147 at 159-160; In Re John Fitton & Co Ltd's Application (1949) 66 RPC 110 at 112; and Stingray Surf Co Pty Ltd v Lister [1997] ATMO 3; (1997) 37 IPR 306 at 310-311. These factors are not necessarily exhaustive of the matters to be considered, but they are a useful guide: see In Re Electrix Ltd's Application [1957] RPC 369 at 379.

9. Addressing the factors set out by Kenny J in McCormick:

   Mr Lamb states concerning the Applicant’s adoption of the Trade Mark that the genesis of the Trade Mark lies in a space-themed connotation: I observe that this would be more obviously so if the Trade Mark were COSMOSLITE.

   The duration of use of the Trade Mark by the Opponent before the relevant date was not long.  However, the geographical area was broad and the sales and advertising relatively extensive.

   The degree of confusion likely to ensue if both trade marks were used to the extent of their specifications of goods is very high.

   There are no reports of confusion by consumers; however, the trade marks are not currently used to the extent of their specifications by the parties.

   It is my assessment that, as relates to the balance of convenience between the parties, it tilts more in the direction of the Applicant than the Opponent.

10. In my consideration, the weighing of these factors favours the affirmative exercise of paragraph 44(3)(a) and thus this provision of the Act applies.

Section 58

1. Section 58 of the Act provides:

   58Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

   Note:For applicant see section 6.

2. The owner of a trade mark is the person who has first authored[11] and used[12] the trade mark (or one at least substantially identical[13] to it) in relation to goods and/or services which are the same kind of thing[14] as the goods and/or services of the impugned trade mark or has first applied to register it in relation to those goods and/or services (whichever is the earlier).[15]

   [11] Shell Co of Australia Ltd v Rohm & Haas [1948] HCA 27; (1949) 78 CLR 601; [1949] ALR 661; 1A IPR 438 at [7].

   [12] Buying Systems (Australia) Pty Ltd v Studio Srl[1995] FCA 1063; (1995) 30 IPR 517; [1995] AIPC 91-119.

   [13] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049.

   [14] Re Hicks’ Trade Mark[1897] VicLawRp 118; (1897) 22 VLR 636, 3 ALR 75.

   [15] Ashton v Harlee Manufacturing (1960) 103 CLR 319,

3. Here the Opponent has first authored and applied to register the trade mark COSMO (which I have found to be substantially identical to the trade mark COSMOLITE).  Moreover, the Opponent has done so in relation to goods which are ‘the same kind of thing’ as luggage.  It is not argued nor does the evidence suggest that the Opponent has abandoned its COSMO trade mark.

4. The Opponent is therefore the owner of the Trade Mark.

5. In McCormick Kenny J observed at [93]:

   As counsel for McCormick & Co observes, the structure of the Act and the provisions with which this appeal is concerned differ markedly from the 1955 Act. Parts 4 and 5 of the Act relate to separate stages in the registration process. The reasoning that led Mason CJ, Dawson, Toohey and Gaudron JJ[16] to hold that s 28 was subject to s 34 of the 1955 Act does not apply under the new Act. Within Division 2 of Part 4, s 44(1) provides for a ground for rejecting an application before acceptance by the Registrar. Subsection 44(1) expressly states that it is subject to s 44(3), the honest concurrent user provision. The whole of s 44 is expressed as an interlocking series of subsections. Section 60, which is part of a Division specifically setting out the grounds for opposing registration, is directed to the position after acceptance. Section 60 is not expressed to be subject to s 44(3), any analogous limitation, or even the Act generally: contrast s 89(1). On its face, it is a stand-alone provision. Furthermore, s 60 is apparently intended to afford a ground of opposition that is additional to the grounds set out in Part 4. Section 57 expressly states that the grounds of opposition may be "any of the grounds on which an application for the registration of a trade mark may be rejected under Division 2 of Part 4" (which includes s 44). Sections 58 to 62 add further grounds for opposition. On its face, there is no honest concurrent user exception to s 60.

   [16] In New South Wales Dairy Corporation v Murray Goulburn Co-Operative Company Ltd [1990] HCA 60; (1990) 171 CLR 363 ("NSW Dairy") at 384 per Mason CJ, 390 per Brennan J, 405-406 per Dawson and Toohey JJ with whom Gaudron J agreed at 414.

6. Section 58 is similarly not expressed to be subject to the concurrent user provisions within section 44.

7. As I have observed, the opposition to registration of the Trade Mark under section 58 is established.

Decision

1. Subsection 55(1) of the Act provides:

   55Decision

   (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 refuse to register application 1442121.

Costs

1. Having been successful, the Opponent is entitled to its costs which I order at the Official Scale against the Applicant.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
8 May 2015