Under Armour, Inc v Anthony James Adaimy

[2015] ATMO 98

TRADE MARKS ACT 1995

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

Re:Opposition by Under Armour, Inc to registration of trade mark application 1566831(9) - ARMOUR MOUTHGUARDS - filed in the name of Anthony James Adaimy.

Delegate:	Nicole Worth
Representation:	Opponent: Tim Allen and Natalia Blecher, Corrs Chambers Westgarth Applicant: Andrew Petale, Actuate IP
Decision:	2015 ATMO 98 Section 52 opposition – sections 60 and 44 pursued –neither ground established – reputation established in one of the Opponent’s trade marks but confusion unlikely – trade marks not deceptively similar. Opposition unsuccessful.

Background

1. This decision is in respect of an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) by Under Armour, Inc (‘the Opponent’) to the registration of the following trade mark in the name of Anthony James Adaimy (‘the Applicant’).

TM Number:              1566831

Trade Mark:               ARMOUR MOUTHGUARDS (‘the Opposed Trade Mark’)

Filing Date:                4 July 2013

Goods:  Class 9: Mouthguards (teeth protectors)

1. The trade mark application was examined as required by section 31 of the Act and in due course was accepted for possible registration. The acceptance was advertised in the Australian Official Journal of Trade Marks on 28 November 2013.

2. The Opponent filed a Notice of Intention to Oppose on 28 January 2014 followed by a Statement of Grounds and Particulars (‘SGP’) on 28 February 2014. The SGP nominated grounds of opposition under sections 44, 60, 42(b) and 62A of the Act.

3. For their evidence, the parties rely on the following Statutory Declarations:

Evidence in Support

• Declaration of William Phillips (Managing Director at Under Armour Inc, Australia and New Zealand) made 20 June 2014 with annexures WP-01 to WP-62 and exhibits WP1 to WP4 (‘Phillips Declaration’).

Evidence in Answer

• Declaration of Anthony James Adaimy made 16 September 2014 with exhibits AA-1 to AA-20 (‘Adaimy Declaration’).

Evidence in Reply

• The Opponent did not rely upon Evidence in Reply.

1. Thereafter the Opponent requested to be heard and the matter came before me, as a delegate of the Registrar of Trade Marks, in Melbourne on 21 July 2015. The Opponent was represented at the hearing by Tim Allen and Natalia Blecher of Corrs Chambers Westgarth. The Applicant did not attend the hearing however written submissions were filed by their representative, Andrew Petale of Actuate IP.

Grounds and Onus

1. At the hearing, the opponent pressed grounds of opposition under sections 44 and 60 of the Act. For completeness I find that none of the remaining grounds listed in the SGP are established, although the Opponent may rely upon them (or any other ground) in the event of an appeal.

2. The Opponent bears the onus of establishing at least one of the grounds of opposition. The relevant standard of proof in these proceedings is the ordinary civil standard of the balance of probabilities.[1]  I also confirm that the relevant date at which the rights of the parties are to be determined is 4 July 2013, the filing date of the application.[2]

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 at [6] to [26].

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592.

Section 44

1. Section 44 of the Act provides:

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 to establish the ground of opposition under section 44 of the Act, the Opponent relied on their earlier filed trade mark registration:

TM Number:  1293609

Trade Mark:  UNDER ARMOUR (‘the Opponent’s Registration’)
Convention Priority Date:     9 October 2008

Goods:Class 9: Mouth guards for athletic use; cases for holding mouth guards; athletic equipment, namely guards for the lips

Class 25: Clothing for athletic use, clothing including, padded shirts, padded pants, padded shorts, padded elbow compression sleeves, belts, hand-warmers, gloves; footwear; headgear; jock straps
Class 28: Golf bags; bags specially adapted for sports equipment; golf gloves; batting gloves; football gloves; lacrosse gloves; athletic equipment in this class; chin pads for athletic use; knee pads for athletic use; elbow pads for athletic use; forearm pads for athletic use; shin guards for athletic use; football girdles; protective athletic cups; gymnastic and sporting articles; games.

1. The SGP also nominated the Opponent’s earlier registration 1083078 UNDER ARMOUR, registered in respect of goods in classes 9 and 18 including eyewear and bags. This registration was not pressed at the hearing. However, the same principles and outcome in respect of deceptive similarity apply to registration number 1083078 as those discussed below in relation to the Opponent’s Registration.

2. The Opponent’s Registration has an earlier priority date than the Opposed Trade Mark and this matter was not contested. Likewise, the similarity of the goods claimed in class 9 was not contested nor was it asserted that the Opposed Trade Mark was substantially identical to the Opponent’s Registration. The contested issue is whether the Opposed Trade Mark is deceptively similar to the Opponent’s Registration.

3. ‘Deceptively similar’ is defined in section 10 of the Act as:

   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. The assessment of deceptive similarity does not rely upon a side-by-side comparison. It relies upon an estimation of the trade marks’ impressions, specifically ‘between, on the one hand, the impression based on the recollection of the [Opponent’s Registration], that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the [Opposed Trade Mark]’.[3] If those impressions are likely to cause the public to wonder whether the goods come from the same source, then the trade marks are deceptively similar.

   [3] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 107 at 415.

5. The Opponent points to a number of factors which it submits support the finding that the parties’ trade marks are deceptively similar including:

• It is well established that greater weight should be given to the distinctive elements of the mark. MOUTHGUARDS is entirely non-distinctive in relation to the goods and as such the comparison is effectively between UNDER AMOUR and ARMOUR.
• The common element ARMOUR has retained its identity as an essential feature of each of the trade marks.
• Addition of the word UNDER to the Opponent’s Registration does not give rise to a different conceptual connotation to that imparted by the Opposed Trade Mark.

1. I agree that it is well established that greater weight should be given to the distinctive elements of the trade mark.[4] In this instance, less weight should be given to MOUTHGUARDS because this element is entirely descriptive of the goods claimed by the Opposed Trade Mark. However, MOUTHGUARDS cannot be discounted entirely and the comparison is still between the trade marks as wholes, that is UNDER ARMOUR and ARMOUR MOUTHGUARDS rather than UNDER ARMOUR and ARMOUR.

   [4] Cooper Engineering Pty Limited v Sigmund Pumps Limited [1952] HCA 15; (1952) 86 CLR 536.

2. Both trade marks contain the common word element ARMOUR.  However I am not convinced that ARMOUR is the dominant part of the Opponent’s Registration. The expression UNDER ARMOUR conveys the impression of a protective layer that is worn beneath something. The public would be likely to use this impression to recollect the Opponent’s Registration especially given that UNDER has no particular meaning in and of itself in relation to the class 9 goods. ARMOUR does not retain its identity as an essential feature of the trade mark. The identity of the Opponent’s Registration lies in the expression UNDER ARMOUR.

3. Finally the class 9 goods are protective in nature and will generally require a degree of consideration as to size, purpose and fit. Therefore they are likely to be purchased more carefully and the prospective consumer is unlikely to be confused as to the trade origin of the goods. If there were any danger of deception or confusion between the respective trade marks, it is not real or tangible.

4. Considering all of the surrounding circumstances, I am not persuaded that UNDER ARMOUR is deceptively similar to ARMOUR MOUTHGUARDS. Therefore the ground of opposition under section 44 of the Act has not been established.

Section 60

1. Section 60 provides:

Trade mark similar to trade mark that has acquired a reputation in Australia

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

(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

1. To establish the ground of opposition under section 60, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia as at 4 July 2013. The Opponent must then establish that because of that reputation use of the Opposed Trade Mark would be likely to deceive or cause confusion.

2. The relevant test to determine whether reputation is established was set out in McCormick & Co Inc v McCormick[5]:

   Does the evidence establish that in Australia before [the priority date] the [Opponent’s] marks were recognised by the public generally and because of that, the use by [the Applicant] of its marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two.

   [5] [2000] FCA 1335; (2000) 51 IPR 102 at [82].

3. To establish its case, the Opponent relies upon a number of trade marks containing the word ARMOUR specifically UNDER ARMOUR, ARMOUR solus and the ARMOUR formative marks such as ARMOURBITE, ARMOURBOUND, ARMOURGUARD. Collectively these are referred to as the ARMOUR Marks.

4. I consider that the evidence establishes that the Opponent had a reputation in the trade mark UNDER ARMOUR by the priority date (4 July 2013) in respect of sporting apparel and equipment.

5. The Phillips Declaration sets out the background of the Opponent and the use of the ARMOUR marks both overseas and in Australia. The trade mark UNDER ARMOUR was first used in Australia in about 2006[6] and has been used in relation to sportswear and accessories, footwear and sports equipment. The net sales figures of products sold in Australia from 2006 to 2013 are considerable (although it is noted that the figures are for the ARMOUR marks collectively)[7]. Annexures WP-30, 31 and 32 to the Phillips Declaration show use of UNDER ARMOUR in the Australian media before the priority date. The Australian public has also had exposure to the UNDER ARMOUR trade mark before the priority date through use in movies, television and video games.[8] Considering all of the above, I am satisfied that there is sufficient material to conclude that the trade mark UNDER ARMOUR had a reputation at the priority date.

   [6] Phillips Declaration at paragraph 42.

   [7] Phillips Declaration at paragraph 50 - 51.

   [8] Phillips Declaration at paragraph 80 – 82. 

6. However, I am not so satisfied in respect of ARMOUR solus and the ARMOUR formative marks. The photographs of instore signage dated 2012 are pointed to as examples of use of ARMOUR as a standalone trade mark.[9] These examples are unconvincing as they show use of ARMOUR as part of the slogan, ‘this is your armour’ as opposed to use of ARMOUR solus.

   [9] As shown in annexure WP-17 to the Phillips Declaration.

7. The Opponent has provided other examples, dated before the priority date, that demonstrate use of ARMOUR solus and the ARMOUR formative marks. However they are limited in number. ARMOUR solus, for example, is shown in the description of a number of items for sale on the Opponent’s website.[10] However where they are dated before the priority date (such as pages extracted from the Internet Archive’s Wayback Machine[11]) they are not clearly use in Australia. Additionally, the address line shown at the bottom of those pages indicates that they are directed towards the USA market: “ The same applies to the ARMOUR formative marks, including on web pages relating to mouthguards and accessories, wherein those web pages dated before the priority date do not clearly relate to use in Australia but rather show use on websites: and For example annexures WP-06, WP-9 and WP-15 to the Phillips Declaration.

[11] The Wayback Machine being a digital archive of web pages and other electronic media, maintained by the organisation, the Internet Archive.

[12] For example annexure WP-07 to WP12 to Phillips Declaration.

In relation to mouthguards the evidence shows that the Opponent has to a degree marketed these goods in Australia before the priority date. Exhibit WP-1 to the Phillips Declaration shows the Opponent’s mouthguards being used and promoted at the AFL Draft Combine in 2011. However, the goods were promoted at this event under the UNDER ARMOUR trade mark, the UA logo or PERFORMANCE MOUTHWEAR.[13] There is some use of the formative mark ARMOURBITE.[14] However, any reputation gained in the ARMOUR marks due to this event is somewhat limited as it appears that the Draft Combine is not open or promoted to the public.

[13] As shown in exhibit WP-1 to the Phillips Declaration at 1:32 and 2:13.

[14] As shown in exhibit WP-1 to the Phillips Declaration at 1:32.

Similarly, mention is made of UNDER ARMOUR mouthguards in a Sunday Telegraph article[15] published in Australia. Although the Sunday Telegraph is widely read in NSW, a single reference to an UNDER ARMOUR mouthguard gives limited weight to the establishment of a reputation specifically in relation to mouthguards.

[15] Annexure WP-13 to Phillips Declaration.

I note the mention of mouthguards under the UNDER ARMOUR trade mark and the UA logo in the New York Times and Times Magazine (as well as on a video on the Times Magazine website).[16] Although asserted to be widely read in Australia, no actual readership or circulation figures have been provided.

[16] Annexure WP-14 to Phillips Declaration.

The material provided is not sufficient to demonstrate that as at 4 July 2013 the ARMOUR solus and ARMOUR formative trade marks were recognised by a significant or substantial portion of the Australian public at the priority date. 

The reputation that is established is in the trade mark UNDER ARMOUR. The next inquiry is whether use of the Opposed Trade Mark would deceive or cause confusion in the face of that reputation.

Section 60 of the Act casts a wider net than section 44. In assessing the likelihood of deception or confusion there is no requirement that the trade marks be deceptively similar. However there must always remain some nexus of similarity between the trade marks under consideration.[17] In addition, the goods do not need to be the same or similar, but if they are, there may be a greater likelihood of deception or confusion.[18]

[17] Reece Pty Ltd v Rogers Seller & Myhill Pty Ltd [2010] ATMO 5 at [39]; (2010) 85 IPR 647.

[18] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124 at [40].

For the reasons already discussed under section 44 I am not satisfied that use of the Opposed Trade Mark would deceive or cause confusion. UNDER ARMOUR and ARMOUR MOUTHGUARDS have different connotations. Additionally, in respect of protective items, the use of the word ARMOUR is not so unusual that its use by different persons would necessarily deceive or confuse.

I am not satisfied that the reputation in UNDER ARMOUR eclipses the differences between the trade marks and the goods in question.

Accordingly, the ground of opposition under section 60 of the Act has not been established.

Decision

1. Section 55 relevantly provides that:

   ...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.

1. The Opponent has not established any of the grounds of opposition and the opposition fails. Accordingly, I direct that trade mark application 1566831 may proceed to registration after one month from the date of this decision.

2. If the Registrar is served with a notice of appeal on or before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the Court, that the application be subject to the Court’s orders.

Costs

1. The parties sought costs. As the successful party, the Applicant is so entitled and I accordingly award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.

Nicole Worth
Hearings Officer
Trade Marks Hearings
13 October 2015