uFaktory Oy v The Black Fives Foundation

[2023] ATMO 99

TRADE MARKS ACT 1995

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

Re:Opposition by uFaktory Oy to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark number 2116962 (International Registration number 1548801) (class 25) - RENS - in the name of The Black Fives Foundation

Delegate:

Tracey Berger

Representation:

Opponent: Maygust Trademark Attorneys

Holder: Elena Szentiványi of Henry Hughes IP Ltd

Decision:

2023 ATMO 99

Trade Marks Act 1995 (Cth) – opposition to extension of protection under regulation 17A.33– ss 58 and 60 considered – s 58 established for some goods – extension of protection allowed for restricted goods

Background

1. This decision relates to an opposition by uFaktory Oy (‘Opponent’) to the extension of protection of International Registration 1548801 designating Australia under trade mark number 2116962 (‘IRDA’) in the name of The Black Fives Foundation (‘Holder’) filed on 16 July 2020 for RENS (‘Trade Mark’) covering:

   Clothing, namely, shirts, jerseys, uniforms, hats, caps, jackets, coats, tops, pants, shoes, footwear, sneakers, athletic footwear, bottoms, sweat shirts, sweat pants, t-shirts, play suits, warm-up suits  (‘Goods’)

2. As required by the Trade Marks Act 1995 (Cth)[1], the IRDA was examined, accepted for possible extension of protection and advertised for opposition purposes on 7 December 2020.

   [1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

3. The Opponent filed a Notice of its Intention to Oppose the IRDA on 17 February 2021 followed by a Statement of Grounds and Particulars (‘SGP’) on 17 March 2021. The Holder filed Notice of its Intention to Defend the IRDA from opposition on 17 June 2021.

4. Thereafter, the Opponent filed Evidence in Support (‘EIS’) of the opposition on 1 October 2021 in accordance with the provisions of the Regulations. This was followed by the Holder’s Evidence in Answer filed on 10 January 2022 (‘EIA’) and the Opponent’s Evidence in Reply (‘EIR) filed on 9 March 2022.

5. Following the conclusion of the evidence stage, the parties were given the opportunity to request a hearing.  The Holder elected to be heard by way of written submissions which were lodged with this office on 13 March 2023 (‘Holder’s Written Submissions’).  The Opponent did not exercise its right to be heard.  This matter was allocated to me to determine in my capacity as a delegate of the Registrar of Trade Marks based on the materials outlined above.

Grounds and Onus

1. The SGP nominated grounds of opposition under ss 58 and 60.

2. The Opponent bears the onus of establishing one or more of the grounds of opposition on the balance of probabilities.  The rights of the parties are assessed as at the filing date of 16 July 2020 (‘Relevant Date’).

Evidence

1. The following evidence was filed:

EIS

• Declaration of Thi Thanh Ngan Tran, Trade Mark Attorney at Maygust Trademark Attorneys for the Opponent, made on 28 September 2021 with Annexures NG-1 to NG-19;

EIA

• Declaration of Claude Johnson, Founder and Executive Director of the Holder, made on 7 January 2022 with Exhibits 1 to 12;

EIR

• Declaration of Bao Khanh Tran, cofounder and CEO of the Opponent, made on 4 March 2022 with Exhibits 1 to 6.

The Opponent

1. The Opponent was founded in Finland in 2015 and was the first company in the world to make footwear from recycled coffee and recycled plastic.

2. In 2019, the Opponent started selling footwear under the mark RENS on its website at (‘Opponent’s Website’).  An extract from the Opponent’s Website is provided illustrating use of the mark RENS for footwear.  Since August 2020, the Opponent has also sold its RENS footwear in Australia through The Iconic website.  Details of total sales to Australian customers since January 2020 have been provided together with a selection of invoices for such sales before the Relevant Date.

3. The Opponent claims that before the Relevant Date, the cofounders of the Opponent received extensive publicity in the media.  In 2018, the cofounders participated in the EIT Climate-KIC’s Climate Launchpad, a green business ideas competition, placing second in the national final for its RENS footwear and received publicity featuring in the World Economic Forum in July 2019, Forbes Europe’s 30 under 30 Social Entrepreneurs list in 2020, Forbes Vietnam 30 under 30 list in 2020 and the European Institute of Innovation and Technology.  Copies of articles about the cofounders’ reputation are annexed in the EIS.

4. The Opponent raised money for its RENS footwear through a Kickstarter funding campaign in June 2019, which was fully funded within 24 hours, raising over $550,000 from over 5000 backers in 63 countries.  Over 200 Australians contributed financially to the campaign, the 5^th largest number of backers from any country.  The EIS annexes various documents about the success of the Opponent’s Kickstarter campaign and magazine coverage about its RENS footwear.

5. In addition to the Opponent’s Website, the Opponent also promotes footwear under the Trade Mark on its social media accounts.  Extracts from the Opponent’s Facebook, LinkedIn and Instagram accounts are included in the EIS.

6. The EIS includes details of the Opponent’s registrations for RENS in the EU, China and UK as well as applications in the US, Australia, Canada, Vietnam and Japan.

The Holder

1. The Holder is a charitable organisation engaged in researching, preserving, showcasing, teaching and honouring the pre-NBA history of African Americans in basketball and the New York Renaissance team, known as the ‘Rens’, which was the first all-black fully professional African-American owned basketball team, formed in Harlem in 1923.

2. The Holder declares that it first filed an application to register the Trade Mark in the USA on 12 November 2002.  It has used the mark since September 2003, initially in the USA and now in numerous countries including Australia.

3. The Trade Mark is licensed to third parties for use in relation to various goods.  In 2006, Nike was licensed to use the Trade Mark and sold goods bearing the Trade Mark throughout the world including Australia.  The Opponent claims that Nike and Converse licensed goods bearing the Trade Mark were sold until July 2017 through its Amazon store.

4. In addition, the Holder claims it sold goods bearing the Trade Mark through its licensee 47 Brand in Australia and New Zealand between 2014-2017.  An extract dated 3 February 2017 from the website at showing a ‘BLACK FIVES RENS TWO TONE SURE SHOT’ hat for sale is provided in the EIA.

5. The Holder then entered into negotiations with several potential licensees and ultimately entered into a license with Puma in 2020.  Puma has been selling product including footwear bearing the RENS mark on the packaging since at least as early as February 2021. 

6. The Trade Mark is used on the clothing and footwear products, swing tags and packaging.  Examples are provided including an example of clothing bearing the Trade Mark available for sale in Australia in 2017-2018.

7. The Holder established a Twitter account in June 2009, has had an Instagram account since at least January 2012 and a Facebook account since July 2008.  Extracts of these accounts before the Relevant Date are provided.  In addition, the Holder has a website which it uses to engage directly with fans by sending emails to subscribers and examples of such emails are annexed to the EIA.

Discussion

Section 58

1. Section 58 provides that the registration of a trade mark may be opposed on the ground that the Holder is not the owner of the trade mark.

2. The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is well established that to succeed in this ground of opposition, the Opponent must establish the following:

• The Trade Mark is identical, or substantially identical, to an earlier trade mark (‘First Requirement’);[2]

• The earlier trade mark has been used in respect of goods or services that are ‘the same kind of thing’ as the Goods (‘Second Requirement’);[3]  and

• Another person has an earlier claim of ownership based on use of the earlier trade mark before the Relevant Date or before the first use of the Trade Mark, whichever is earlier (‘Third Requirement’).[4]

  [2] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).

  [3] Re Hicks’s Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, 640 (Holroyd J).

  [4] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50] (Greenwood, Jagot and Beach JJ).

1. In its SGP, the Opponent claims that it is the true owner of the Trade Mark having used the mark RENS since at least June 2019 for footwear.  The Opponent’s mark is identical to the Trade Mark and therefore, the first requirement is satisfied.

2. Further, footwear is identical to the Holder’s goods ‘shoes, footwear, sneakers, athletic footwear’ and therefore, the Second Requirement is met for these goods.  I turn to a consideration of whether ‘footwear’ is the same kind of thing as the Holder’s other goods which are essentially clothing and headwear. 

3. Establishing if goods are the ‘same kind of thing’ can be resolved by ‘asking whether the relevant goods or services are “true equivalents”[5]  or “essentially the same, though they may differ in size, shape and name”.[6]

   [5] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [176] (Greenwood, Besanko and Katzmann JJ)

   [6] Colorado Group Limited v Strandbags Group Pty Limited [2007] FCAFC 184, [14] (Kenny J).

4. Although clothing, footwear and headgear can all be worn by a consumer, the items cannot be substituted for each other.  Footwear is for the feet whereas clothing and headgear are to be worn on other parts of the body.  I am not satisfied that footwear is the same kind of thing as clothing or headwear.  Accordingly, the next question is which of the parties is the first to use or file an application for footwear.   

1. The Opponent claims to have sold 207 pairs of RENS footwear to Australians in its 2019 Kickstarter campaign and has provided a report evidencing sale of its RENS footwear to Australian consumers via its website since 13 January 2020 and sales after the priority date through The Iconic website.  This sales report is supported by copies of commercial invoices showing that the goods were shipped to Australian consumers before the priority date.  This documentation establishes that the Holder has used the Trade Mark in Australia since at least 13 January 2020.

2. Whilst the Holder claims that the Trade Mark was used by its authorised licensee Nike from 2006 to July 2017 for the sale of goods including footwear in Australia on Amazon, there is no evidence of such sales. 

3. In addition, the Holder alleges that its licensee 47 Brands sold goods bearing the Trade Mark in Australia and elsewhere from 2014 to 2017.  The EIA refers to extracts from this website being provided but the evidence consists of a single extract from 2017 showing a RENS cap for sale.[7]  I have already found that headwear is not the same kind of thing as footwear and therefore, this evidence does not assist the Holder in disputing the Opponent’s claim to be the owner of the Trade Mark for footwear.  Similarly, Exhibit 9 of the EIA includes a “Black Fives X 47 Brand Men’s Scrimmage Rens Hoodie – Grey’ for sale on but this is not a dated historical extract from the site and in any event, I have noted that clothing and footwear are not the same kind of thing.

   [7] Declaration of Claude Johnson (7 January 2022) [16] and Exhibit 6.

4. Similarly, the Holder’s other evidence is not of assistance.  The agreement with Puma postdates the IRDA and the example of RENS branded clothing purported to be sold in Australia in 2017 and 2018 is undated.  Further, as noted above, I do not regard clothing and headwear to be the same kind of thing as the goods for which use has otherwise been shown.

5. On my assessment of the evidence, the Opponent is the owner of the Trade Mark in Australia for footwear and the s 58 ground of opposition is successful with respect to these goods.  Therefore, I now turn to whether the s 60 ground has been made out in relation to clothing and headwear.

Section 60

1. Section 60 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.

3. To establish this ground of opposition, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.

4. The reputation must be established as a matter of fact by the Opponent[8] and must be amongst a ‘significant’ or ‘substantial’ number of Australian consumers[9] although this is tempered by the nature of the relevant market.  In the present case, the relevant market is large as a significant proportion of the Australian population are potential consumers of the Goods.

   [8] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

   [9] See Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

5. The reputation of a trade mark may be demonstrated in a variety of ways. For example, it may be established by demonstrating a significant number of people are exposed to a trade mark,[10] or inferred from a high volume of sales,[11]  advertising expenditure or other promotion.[12]

   [10] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

   [11] McCormick & Co Inc v McCormick [2000] FCA 1335, [86] (Kenny J).

   [12] Ibid.

6. In its SGP, the Opponent particularised this ground as follows:

   a) The Opponent is the owner of the mark RENS.

   b) The Opponent first used the mark RENS in the EU in or around May 2019. The mark has been used continuously since that time in relation to shoes. In Australia, such first use started at least as early as 25th June 2019, the date when the Kickstarter campaign started to attract Australia customers.

   c) The Opponent has promoted its trade mark in Australia and overseas primarily through online methods including the Opponent’s website, through Kickstarter campaign and Iconic website (Australian online fashion and sports retailers which is one of Australia’s largest fashion, sportwear and kids wear destination). 

   d) As a result of its longstanding use and promotion the Opponent enjoys a substantial reputation in Australia in the mark RENS for shoes.

   e) Because of:
   (i) the reputation of the mark,
   (ii) the identical of both marks, 
   (iii) the strong association between the Opponent’s goods for shoes and the clothing namely shoes, footwear, sneakers, athletic footwear claimed by the Holder. 
   
   consumers are likely to presume that, or be given cause to wonder if, that Holder’s goods are the goods of the Opponent or are licensed, sponsored or endorsed by the Holder.

7. The Opponent’s evidence demonstrates a minimal amount of use of RENS in Australia before the priority date for footwear.  Before the Relevant Date, the Opponent had sold only a few hundred pairs of RENS sneakers in Australia and the revenue generated was not substantial.  Whilst the co-founders and Opponent received various publicity for its RENS footwear and Kickstarter campaign, much of this was in foreign media and is unlikely to have reached the attention of a significant proportion of Australian consumers.  Further, the Guardian, BBC and Bloomberg articles were published after the Relevant Date.  The Opponent also promotes its products on its social media sites.  Whilst the Opponent has not specified the number of posts it has made or followers for each of these sites, from Attachments NG-103 and NG-10.4, it does not appear that these numbers are impressive.

8. In my view, the Opponent’s evidence does not establish that the Opponent had acquired a reputation in the mark RENS in Australia at the Relevant Date such that use of the Trade Mark by the Holder for clothing and headwear would be likely to deceive or cause confusion.  Accordingly, the s 60 ground of opposition is not successful.

Decision

1. Regulation 17A.34N of the Regulations provides:

17A.34N  Decision on opposition

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

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

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

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

(2)  The Registrar must notify the International Bureau of the Registrar’s decision.

1. The Opponent has established a ground of opposition under s 58 in respect of some of the Holder’s Goods being footwear.  None of the other grounds of opposition have been established.  Accordingly, I direct that protection be extended to International Registration 1548801 designating Australia under number 2116962 for:

   Clothing, namely, shirts, jerseys, uniforms, hats, caps, jackets, coats, tops, pants, shoes, footwear, sneakers, athletic footwear, bottoms, sweat shirts, sweat pants, t-shirts, play suits, warm-up suits.

2. Protection may be extended to the Trade Mark one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that the Trade Mark shall not be protected until the appeal has been decided or discontinued.  The disposition of the IRDA shall otherwise be in accordance with the Court’s order or direction.  

Costs

1. The Holder sought an award of costs.  As both parties have had a measure of success, I decline to award costs.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

18 July 2023