Trade mark application number 1985076 (14, 18 and 25) - LOCALE - in the name of Internet Services Australia 1 Pty Limited

[2020] ATMO 193

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1985076 (14, 18 and 25) - LOCALE - in the name of Internet Services Australia 1 Pty Limited

Delegate:

Louise Tuohy

Representation:

Applicant: Bird & Bird

Decision:

2020 ATMO 193

Trade Marks Act 1995 (Cth) – Ex-parte s 33(4) – s 44 considered – trade mark to proceed to acceptance.

Background

1. This matter is an ex parte proceeding involving the application for registration of the following trade mark under the Trade Marks Act 1995 (‘the Act’):

   Application Number:  1985076

   Trade Mark:   (‘the Trade Mark’)

   Priority Date:  24 January 2019

   Owner:Internet Services Australia 1 Pty Limited (‘the Applicant’)

   Specification:  Class 14:  Imitation jewellery; Jewellery; Jewellery incorporating precious stones; Jewellery made of non-precious metal; Jewellery made of precious metals; Jewellery made of semi-precious materials; Cuff links made of precious metals with precious stones; Imitation precious stones; Precious stones; Semi-precious stones; Earrings; Finger rings

   Class 18:  Bags made of imitation leather; Bags made of leather; Briefcases made of leather; Cases, of leather or leatherboard; Casings, of leather, for plate springs; Casings, of leather, for springs; Furniture coverings of leather; Handbags made of imitation leather; Handbags made of leather; Imitation leather; Leather; Leather bags; Leather briefcases; Leather cases; Leather portfolios (covers); Leather purses; Leather thongs; Leather wallets; Travelling sets (leatherware); Travelling bags; Purses; Umbrellas; Parasols; Walking sticks

   Class 25:  Apparel (clothing, footwear, headgear); Belts (clothing); Clothing; Jackets (clothing); Ladies clothing; Men's clothing; Sports clothing (other than golf gloves); Men's shoes; Shoes; Footwear; Scarves; Swimwear; Sportswear

2. The application was examined as required by s 31 of the Act and grounds for rejection were raised under s 44 of the Act citing trade mark numbers 1831559 and 1953183.

3. Trade mark number 1953183 is no longer a barrier to the Trade Mark’s registration lapsing on 29 August 2020. The details of the remaining cited trade mark are as follows:

   Registration number:     1831559

   Trade Mark:  LOCAL LUXE (‘the Cited trade mark’)

   Priority Date:  14 March 2017

   Owner:  Teddy Louise Bendeich

   Specification:  Class 25: Athletic clothing; Athletics shorts; Athletics wear; Bath suits; Bath wraps; Bathing costumes; Bathing drawers; Bathing suit cover-ups; Bathing suits; Bathing trunks; Bathing wraps; Beach clothes; Beach clothing; Beach dresses; Beach robes; Beach wraps; Beachwear; Bikinis; Apparel (clothing, footwear, headgear); Clothes; Clothing; Clothing for gymnastics; Clothing for sports; Clothing for surfing; Clothing for swimming; Combinations (clothing); Ladies clothing; Pants (clothing); Slips (clothing); Sports clothing (other than golf gloves); Women's clothing; Wraps (clothing); Cover-ups; Exercise wear; Footless tights; Half length tights; Tights; Gym shorts; Gym suits; Gymnastic suits; Gymwear; Headbands (clothing); Headgear for wear; Headwear; Ladies wear; Leggings (trousers); Leisure wear; Neckwear; One-piece suits; Swimming suits; Shorts; Surf shorts; Surfing shorts; Swimming shorts; Sports garments (other than golf gloves); Sportswear; Swimming costumes; Swimming trunks; Swimwear; Casual clothing; Casualwear; Girl's clothing; Swim briefs; Swimsuits

4. In respect of the Cited trade mark the first examination report stated:

   Your trade mark closely resembles the earlier trade mark because it contains a variant of the word LOCALE namely LOCAL which operates as a distinguishing feature of both trade marks. The additional letter 'e' in your mark does not sufficiently change the identity of your mark to distinguish it from the earlier trade mark containing the word LOCAL. I note that the earlier trade mark also contains the additional word LUXE. However this is insufficient to prevent confusion in the marketplace. The word LUXE does not detract from the distinctiveness of the word LOCAL. Consumers seeing similar goods being offered under your trade mark and the earlier trade marks will likely believe that they originate from the same trade source.

   AND

   The goods are the same because your claim for Apparel (clothing, footwear, headgear); Belts (clothing); Clothing; Jackets (clothing); Ladies clothing; Men's clothing; Sports clothing (other than golf gloves); Men's shoes; Shoes; Footwear; Scarves; Swimwear; Sportswear in Class 25 is the same as the earlier trade mark's claim for a range of clothing goods in Class 25 including Athletic clothing; Athletics shorts; Athletics wear; Bath suits; Bath wraps; Bathing costumes; Bathing drawers; Bathing suit cover-ups; Bathing suits; Bathing trunks

5. The Applicant did not respond to the first examination report. On 21 August 2020 it applied for an extension of time because the application was due to lapse. On 9 September 2020 a second examination report was issued which maintained the ground for rejection under s 44 of the Act in relation to the Cited trade mark and advised that cited trade mark 1953183 had lapsed.

6. The Applicant did not respond to the second examination report, instead it exercised its right to be heard in relation to the s 44 ground for rejection.

7. The matter came before me, a delegate of the Registrar of Trade Marks, on 19 October 2020. Lynne Lewis the Applicant’s legal representative, assisted by Katrina Dang, made oral submissions on behalf of the Applicant at the hearing. Lynne Lewis also filed written submissions on the Applicant’s behalf (‘Applicant’s Submissions’).

Legislative Background and Reasoning

1. Section 44 of the Act relatively provides:

44  Identical 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.

[…]

1. In order for s 44 of the Act to apply the requirements of s 44(1) must be satisfied, that is, the LOCAL LUXE trade mark being the trade mark identified by the Examiner:

• is registered by another person and has a priority date which is earlier than that of the Trade Mark;

• is in respect of similar goods, or services which are closely related to, the Applicant’s goods; and

• is substantially identical with or deceptively similar to the Trade Mark.

1. The Cited trade mark is registered by another person and has a priority date of 14 March 2017 which is earlier than the priority date of the Trade Mark being the 24 January 2019.

2. Section 14 of the Act relatively provides:

3. Definition of similar goods […]

   (1)  For the purposes of this Act, goods are similar to other goods:

   (a)  if they are the same as the other goods; or

   (b)  if they are of the same description as that of the other goods.

   […]

4. Section 14(1) of the Act defines ‘similar goods’ as goods that are the same or of the same description. In Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd,[1] the High Court cited with approval the Assistant Comptroller for the United Kingdom Trade Marks Office from Re John Crowther & Sons (Milnsbridge) Ltd’s Application:

   In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Re Jellinek’s Application Romer J classified these various factors under three heads, viz the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasised that the classifications contained in the schedules to the Trade Mark Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description.”[2]

   [1] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, [606-607].

   [2] Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, [372].

5. In this case, the Cited trade mark is registered for clothing goods in class 25 and the Trade Mark claims clothing goods in class 25. These goods are of the same description within the meaning of the Act.

6. However, I find that the goods claimed by the application in classes 14 and 18 are not of the same description to the goods covered by the Cited trade mark in class 25. There are notable differences in the nature and purpose of these goods.

7. I now turn to the last consideration pursuant to s 44(1), being whether the Trade Mark is substantially identical with or deceptively similar to the Cited trade mark.

8. In assessing whether trade marks are substantially identical the ‘side by side’ test is applied. In Shell Company of Australia v Esso Standard Oil (Australia) Ltd (‘Shell’), Windeyer J explains the test:  

   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 feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[3]

   [3] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, [12].

9. For the purposes of this comparison I have reproduced the trade marks side by side:

The Trade Mark	The Cited trade mark
LOCAL LUXE

1. During a side by side comparison, I note there are clear differences between the trade marks. The Trade Mark is for the word LOCALE which ends with the letter E and the Cited trade mark consists of two words LOCAL and LUXE. The differences in the essential features mean that on a side by side comparison there is not a total impression of resemblance between the trade marks. I find that the trade marks are not substantially identical.

2. I will now consider whether the Trade Mark and the Cited trade mark are deceptively similar. The expression ‘deceptively similar’ is defined by s 10 of the Act:

3. Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

4. In determining whether trade marks are deceptively similar guidance also comes from the judgement of Windeyer J in Shell:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

   Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[4]

   [4] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, [13].

5. Further, my assessment is to take place in the context of the marketplace for the goods. This contextual comparison was discussed in Re Application by the Pianotist Company Ltd for the Registration of a Trade Mark, where Parker J said:

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. ^[5]

   [5] In the Matter of An Application by the Pianotist Company Ltd for the Registration of a Trade Mark (1906) 23 RPC 774, [777].

6. The Applicant argues that the trade marks are not deceptively similar because the visual and aural differences between the trade marks, combined with the different meaning of the words, are such that a consumer of ordinary intelligence and memory would not be left with the impression that the goods originate from the same source.[6]

   [6] Applicant’s Submissions, 29.

7. I observe visual and aural differences when the trade marks are considered in their entirety.[7] The Trade Mark is the word LOCALE in a fancy font and would likely be pronounced ‘ləʊˈkɑːl’[8] which sounds like ‘low-kal’, whereas the Cited trade mark is LOCAL LUXE in plain words and would be pronounced ‘ˈləʊkl’ ‘lyks’[9] which sounds like ‘low-kl’ ‘luhks’.

   [7] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [92].

   [8] Oxford English Dictionary Online < dated 19 November 2020.

   [9] Oxford English Dictionary Online < dated 19 November 2020.

8. The trade marks are known English words. The Macquarie Dictionary defines the word LOCALE to mean a place or locality, especially with reference to events or circumstances connected with it.[10] In contrast the word LOCAL means relating to or characterised by a place, or position in space. The word LUXE means sumptuous; luxurious.[11]

   [10] Macquarie Dictionary Online < dated 19 November 2020.

   [11] Macquarie Dictionary Online < dated 19 November 2020.

9. I am satisfied that the word combination LOCAL LUXE would be understood by consumers as indicating luxurious clothing from nearby and is unlikely to be confused or associated with the word LOCALE by itself.

10. In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, Kitto J set out the following proposition:

    [To] show that a trade make is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.[12]

    [12] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592, [594-5].

11. I find that the Trade Mark is not deceptively similar to the Cited trade mark. Deception or confusion between the trade marks is no more than a mere possibility. Accordingly, s 44 of the Act has not been established.

Decision

1. Section 33 of the Act provides:

Section 33. Application accepted or rejected

(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a) the application has not been made in accordance with this Act; or

(b) there are grounds under this Act for rejecting it.

(2) The Registrar may accept the application subject to conditions or limitations.
(3) If the Registrar is satisfied that:

(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it;
the Registrar must reject the application.

(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.

1. For the reasons stated above, I am satisfied that there are no grounds for rejecting the application. Trade mark application number 1985076 should be accepted for registration.

Louise Tuohy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

15 December 2020