United States Polo Association v Polo Enterprises Holdings Pty Ltd

[2019] ATMO 15

TRADE MARKS ACT 1995

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

Re:Opposition by United States Polo Association to registration of trade mark application 1796229 (25, 35, 41) - UPA and Polo Horse (device) - in the name of Polo Enterprises Holdings Pty Ltd.

Delegate:	Iain Campbell Thompson
Representation:	Opponent:  Thomson Geer. Applicant:  Herbert Smith Freehills.
Decision:	2019 ATMO 15 Trade Marks Act 1995 Section 52 opposition to registration - grounds under sections 44, 60 and 42 not established

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Polo Enterprises Holdings Pty Ltd (‘the Applicant’) has sought registration of the trade mark which appears below:

Application No:         1796229

Priority Date:             13 September 2016

Goods/Services:         Class 25: Sports caps; sports clothing (other than golf gloves); sports garments (other than golf gloves); sports jackets; sports jerseys; sports jumpers; sports shirts; sports sweaters; sports uniforms (other than golf gloves or helmets); sportswear (other than golf gloves or helmets); limited to goods for the sport of polo or for polo fans

(‘the Goods’)

Class 35: Marketing; Provision of retail services, including online

Class 41: Advisory services relating to the organisation of sporting events; arranging of sporting events; arranging of sports competitions; booking of sports facilities; coaching services for sporting activities; country clubs (providing entertainment and sporting facilities); event management services (organization of educational, entertainment, sporting or cultural events); hire of equipment for sports; hire of sports facilities; information services relating to sport; management of sporting events; officiating at sports contests; organisation of sporting activities; organisation of sporting competitions; organisation of sporting events; organisation of sports competitions; production of sporting events; providing facilities for sports events; providing information, including online, about education, training, entertainment, sporting and cultural activities; providing sports facilities; providing sports training facilities; provision of apparatus for sports; provision of facilities for sports; provision of information about sports; provision of sport facilities; provision of sporting competitions; provision of sporting events; provision of sporting facilities; provision of sports facilities; rental of equipment for use at sporting events; rental of sporting apparatus; rental of sporting apparatus and equipment (except vehicles); rental of sports apparatus; rental of sports equipment; rental of sports equipment (except vehicles); rental of sports facilities; sport camp services; sporting activities; sporting information; sports coaching; sports consultancy; sports information services; sports instruction services; sports officiating; sports refereeing; sports training; sports tuition; film production; production of audio and/or video recordings; production of live entertainment; production of live performances; production of magazines; production of music shows; production of videos; production of webcasts; management of entertainment events; providing advice, information and consultancy, including online, for the aforesaid services

(‘the Services’)

Trade Mark:               

(‘the Trade Mark’)

1. The Trade Mark was examined as required by section 31 of the Act and advertised as accepted for possible registration on 2 February 2017 in the Australian Official Journal of Trade Marks.

2. On 31 March 2017, United States Polo Association (‘the Opponent’) filed a Notice of Intention to Oppose followed, on 1 May 2017, by a Statement of Grounds and Particulars.  On 30 May 2017, the Applicant filed a Notice of Intention to Defend.

3. Thereafter the Opponent filed its Evidence in Support which consists of declarations by:

   Eliza Foley, solicitor, made on 6 September 2017, with exhibits EF-1 to EF-6; and,

   David Cummings, Executive Director of the Opponent, made on 4 October 2017 with exhibits 1 and 2.

4. The Applicant did not file Evidence in Answer.

5. Both parties have been advised of their right to be heard or to make written submissions and, while neither party elected to be heard, the Applicant made written submissions. Now, in order that the Registrar may discharge her obligation under section 55 of the Act to decide the matter, it has been passed to me, one of her delegates, for my decision on the written record which is comprised of those materials mentioned in the foregoing paragraphs.

Onus and Relevant Date

1. The Opponent bears the onus of establishing a ground of opposition which is detailed in the Statement of Grounds and Particulars on the balance of probabilities.[1]

   [1] 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]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132] to [133].

2. The relevant date (‘the Relevant Date’) at which the grounds must be considered is the filing date[2] of the opposed application and I note that where sections 44 and 60 specify the ‘priority date’ that date is here the same as the filing date.

Evidence

[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.

The Opponent

1. The declaration by Mr Cummings adopts and asserts the verity of the declaration by Ms Foley and adds two invoices to those which are exhibited to Ms Foley’s declaration.

2. Ms Foley, who is the Opponent’s solicitor, states:

   [The Opponent] is the governing body of the sport of polo in the United States. Founded in 1890, it is the country’s second oldest sports governing body and a globally recognised institution.

   [The Opponent] provides a range of polo related promotional, merchandising and educational services to fans and members of the sport of polo. In particular, [the Opponent] promotes the game of polo and coordinates the activities of its Member Clubs and Registered Players in the United States.

   [The Opponent] also has a significant retail business which sells clothing, footwear, bags, home products and accessories [the Opponent’s Goods] under the USPA brand to customers in all major global markets including the Americas, Europe, Asia, the Middle East and Australia.

3. Ms Foley further explains:

   The USPA trade mark is an acronym of ‘United States Polo Association’. The word ‘USPA’ was invented by [the Opponent] and otherwise has no meaning in English.

   The plain word mark USPA is used in Australia and globally on its own and in various fonts, stylisations and with logos on and in connection with [the Opponent’s Goods] including in the forms:

1. Ms Foley also appends to her declaration details of the Australian trade mark registrations owned by the Opponent – these are:

Registration No:         813146

Priority Date:             9 November 1999

Goods:Class 18: Bags including hand bags, travelling bags and backpacks, tote bags, gym bags and all purpose athletic bags, briefcases and attache cases, animal feed bags, calling card holders and key cases, all the aforesaid made of leather, imitations of leather and synthetic; whips harness and saddlery; umbrellas, parasols and walking sticks

Class 25: Clothing, footwear and headgear

Trade Mark:               

__________________________________________________________________________

Registration No:         813147

Priority Date:             9 November 1999

Goods:Class 18: Bags including hand bags, travelling bags and backpacks, tote bags, gym bags and all purpose athletic bags, briefcases and attache cases, animal feed bags, calling card holders and key cases, all the aforesaid made of leather, imitations of leather and synthetic; whips harness and saddlery; umbrellas, parasols and walking sticks

Class 25: Clothing, footwear and headgear

Trade Mark:               USPA

___________________________________________________________________

Registration No:         813148

Priority Date:             9 Nov 1999

Goods/Services:         Class 18: Bags including hand bags, travelling bags and backpacks, tote bags, gym bags and all purpose athletic bags, briefcases and attache cases, animal feed bags, calling card holders and key cases, all the aforesaid made of leather, imitations of leather and synthetic; whips harness and saddlery; umbrellas, parasols and walking sticks

Class 25: Clothing, footwear and headgear

Trade Mark:               

___________________________________________________________________________

Registration No:         914216

Priority Date:             27 May 2002

Goods:Class 18: Bags including handbags, jock bags, travelling bags and backpacks, tote bags, gym bags and all purpose athletic bags, briefcases and attache cases, animal feed bags; calling card holders and key cases, all the aforesaid being made of leather, imitations of leather and synthetics; whips, harnesses and saddlery; umbrellas, parasols and walking sticks; leather shoulder belts

Class 25: Clothing including shirts, pants, shorts, socks, jackets, sweaters, coats, ties, belts, swimwear and underwear; footwear including shoes and boots; headgear including hats and caps

Trade Mark:               

Registration No:         1129792
Priority Date:             15 August 2006

Goods:Class 18: Totebags, backpacks, briefcases, handbags, umbrellas, travel bags, luggage, wallets, and purses

Class 25: Clothing; footwear; headgear; boy’s/men’s suits and jackets, shirts, pants, leatherwear, jeans, knitwear, underwear, socks, ties, footwear, sleepwear, sportswear (T-shirts, polo shirts, swimwear, sweatshirts, jackets), cold weather goods (hats, gloves, scarves, caps), outerwear (leather, fabric, and rainwear), and belts (leather and woven); girl’s/women’s coats, jackets, pants, shirts, jeans, leatherwear, knitwear, underwear, socks, footwear, sleepwear, sportswear (T-shirts,

polo shirts, swimwear, sweatshirts, jackets), cold weather goods (hats, gloves, scarves, caps), outerwear (leather, fabric, and rainwear), and belts (leather and woven)

Trade Mark:               U.S. POLO ASSOCIATION

___________________________________________________________________________

Registration No:         1129794

Priority Date:             15 Aug 2006

Goods/Services:         Class 18: Totebags, backpacks, briefcases, handbags, umbrellas, travel bags, luggage, wallets, and purses

Class 25: Clothing; footwear; headgear; boy’s/men’s suits and jackets, shirts, pants, leatherwear, jeans, knitwear, underwear, socks, ties, footwear, sleepwear, sportswear (T-shirts, polo shirts, swimwear, sweatshirts, jackets), cold weather goods (hats, gloves, scarves, caps), outerwear (leather, fabric, and rainwear), and belts (leather and woven); girl’s/women’s coats, jackets, pants, shirts, jeans, leatherwear, knitwear, underwear, socks, footwear, sleepwear, sportswear (T-shirts, polo shirts, swimwear, sweatshirts, jackets), cold weather goods (hats, gloves, scarves, caps), outerwear (leather, fabric, and rainwear), and belts (leather and woven)

Trade Mark:               

___________________________________________________________________________

Registration No:         1164850

Priority Date:             7 March 2007

Goods:Class 18: Totebags, backpacks, briefcases, handbags, umbrellas, travel bags, luggage, wallets, and purses

Class 25: Boy’s/men’s suits and jackets, shirts, pants, leatherwear, jeans, knitwear, underwear, socks, ties, footwear, sleepwear, sportswear (T-shirts, polo shirts, swimwear, sweatshirts, jackets), cold weather goods (hats, gloves, scarves, caps), outerwear (leather, fabric, and rainwear), and belts (leather and woven); girl’s/women’s coats, jackets, pants, shirts, jeans, leatherwear, knitwear, underwear, socks, footwear, sleepwear, sportswear (T-shirts, polo shirts, swimwear, sweatshirts, jackets), cold weather goods (hats, gloves, scarves, caps),

outerwear (leather, fabric, and rainwear), and belts (leather and woven)

Trade Mark:               

___________________________________________________________________________

Registration No:         1169584

Priority Date:             3 Apr 2007

Goods:Class 24: Textiles, in particular bed sheets, pillowcases, pillow shams, flat sheets, bed skirts, terry towels, beach towels, blankets, bedspreads, cushion covers, quilts, table cloths, table mats, table runners, curtains, wallpaper, furniture coverings, household linen, mattress covers, cloth napkins, wall hangings and wall coverings of textiles

Class 27: Floor and wall coverings, in particular rugs, bath mats, carpet, wallpaper

Trade Mark:               U.S. POLO ASSOCIATION

___________________________________________________________________________

Registration No:         1169586

Priority Date:             03 April 2007

Goods:Class 24: Textiles, in particular bed sheets, pillowcases, pillow shams, flat sheets, bed skirts, terry towels, beach towels, blankets, bedspreads, cushion covers, quilts, table cloths, table mats, table runners, curtains, wallpaper, furniture coverings, household linen, mattress covers, cloth napkins, wall hangings and wall coverings of textiles

Class 27: Floor and wall coverings, in particular rugs, bath mats, carpet, wallpaper

Trade Mark:               

1. Ms Foley continues:

   The USPA trade mark and brand is used by [the Opponent’s] extensive network of authorised licensees globally. The trade mark and brand has been used in Australia since at least 2012 and possibly earlier.

   Reference in this declaration to the use of the USPA trade mark and brand in Australia is to use which has occurred since at least 2012.

   [The Opponent’s] licensees provide USPA branded [Opponent’s Goods] on a retail basis to customers Australia wide.

2. Ms Foley goes on to detail orders by a major Australian retailer for goods supplied by the Opponent.  Ms Foley also states:

   All such use has always been authorised and controlled by [the Opponent] and inures to its benefit.

   Annexed and marked Exhibit EF-2 is an example of an online retailer, YOOX, offering for sale USPA branded clothing to customers in Australia.

   Annexed and marked Exhibit EF-3 are examples of purchase orders for [the Opponent’s] goods issued by TKMaxx to ESMO International. These purchase orders are for [the Opponent’s Goods] branded with the USPA word mark and logo for sale to Australian customers.

   Annexed and marked Exhibit EF-4 are examples of shipping invoices issued by [the Opponent] to TKMaxx (then Trade Secret). The invoices evidence shipments of Goods branded with the USPA word mark and logo to Trade Secret in Australia for sale to Australian customers.

   The invoices at Exhibit EF-3 and Exhibit EF-4 do not specifically refer to the USPA mark or logo but have been confirmed to relate to [the Opponent’s Goods] bearing the USPA mark or logo. The invoices were issued during the period 2012 - 2016.

   […]

   Revenue has been generated from the sale of the [the Opponent’s Goods] in Australia.

   Sales figures for the period 2015 to 2017 are listed in Confidential Annexure A.

3. I note that none of the Opponent’s trade marks are apparent on the purchase orders and invoices to which Ms Foley refers.

4. Finally, Ms Foley refers to the Opponent’s advertising and social media presence – however, she does not provide a breakdown of how many ‘followers’ of these social media channels are within Australia or details of any expenditure on advertising in Australia by the Opponent.

The Applicant

1. As the Applicant has not filed Evidence in Answer all that is known about the Applicant is that it is an Australian association of polo players.

Section 44

Statement of Grounds and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

   The opposed trade mark has a later priority date, is substantially identical or deceptively similar to, and covers identical or similar goods as Australian trade mark registration no.813147 for [the Opponent] which covers classes 18 and 25 in the name of United States Polo Association (‘USPA’).

2. Details of 813147 are:

Registration No:         813147

Priority Date:             9 November 1999

Goods/Services:         Class 18: Bags including hand bags, travelling bags and backpacks, tote bags, gym bags and all purpose athletic bags, briefcases and attache cases, animal feed bags, calling card holders and key cases, all the aforesaid made of leather, imitations of leather and synthetics; whips harness and saddlery; umbrellas, parasols and walking sticks

Class 25: Clothing, footwear and headgear

Trade Mark:               USPA

(‘the Opponent’s Registration’ or ‘the Opponent’s Trade Mark’ as contextually appropriate)

The Act

1. Noting that the Opponent’s assertion in the Statement of Grounds and Particulars, above, refers only to ‘goods’, 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.

2. It is therefore incumbent upon the Opponent to establish that that the Opponent’s Registration has:

   A priority date earlier than that of the Trade Mark; and

   Is registered in respect of similar goods; and

   Is registered in respect of a trade mark which is substantially identical, or deceptively similar, to the Trade Mark.

Priority Date

1. The Opponent’s Registration has a priority date earlier than that of the Trade Mark.

Similarity of Goods

1. The goods of the parties are similar goods – at least as far as the Goods are limited to goods for the sport of polo or for polo fans.  Whilst this limitation is explicit in the Goods, such goods are included within the breadth of the goods of the Opponent’s Registration.

Similarity of Trade Marks

1. In assessing whether trade marks are substantially identical the test stated by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd is applied:[3]

   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.

   [3] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12].

2. The trade marks under consideration appear side by side below:

   USPA            vs       

1. The trade marks of the parties are obviously not substantially identical.  The Trade Mark is dominated by the prominent graphical device of a horse and its rider wielding a mallet which is superimposed on a shield.  There are no graphics in the Opponent’s Trade Mark and the total impression of resemblance or dissimilarity that emerges from the comparison is that they are quite different.

2. As to deceptive similarity, in Shell Windeyer J continued at [13]:

   13. 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 television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “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” (1937) 58 CLR, at p 658.

3. This question is to be assessed within the context of the limitation within the Goods to “goods for the sport of polo or for polo fans” such goods being included within the breadth of the Opponent’s specification “Clothing, footwear and headgear”.

4. I consider that the obvious answer to this question is that a person who is a polo player or a polo fan who knows of the Opponent’s Trade Mark will immediately apprehend the Trade Mark as being something entirely different to it.  Whilst the Opponent’s claims are apparently based on its perceptions of the similarity of the acronyms USPA and UPA, these are, in my view, quite different and provide differing cues to potential purchasers.  The letters US within the Opponent’s trade mark signal that the goods are likely to be something to do with the United States – this signal is absent from the acronym UPA.  On the other hand, the Trade Mark contains the explanation ‘Urban Polo Association’ immediately below the acronym UPA which is apparent on a most casual inspection of the Trade Mark.  The devices of a polo player and a shield further distinguish the Trade Mark from the Opponent’s Trade Mark.

5. The trade marks of the parties are not deceptively similar.

6. The Opponent has not established its opposition under section 44 of the Act.

Section 60

Statement of Ground and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

   The Opponent has used its USPA trade mark in connection with apparel and related accessories in Australia.

   The brand is used on its own, with other elements and in stylised fonts, including:

[‘the USPA Logo’]

[The Opponent’s] reputation in [the trade mark] USPA has been developed as a result of long standing use in Australia, such as through advertising, promotion, publicity and sales of goods, including on apparel and related accessories. Such reputation was established as at the priority date of the application under opposition.

As a result of [the Opponent’s] reputation in [the trade mark] USPA, use of the opposed trade mark by the Applicant on the goods claimed in the application is likely to deceive or cause confusion.

The Act

1. Section 60 of the Act provides:

   60Trade 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.

   Note:For priority date see section 12.

2. To found this ground an opponent must establish the existence of a trade mark (or trade marks) which at the Relevant Date:

   ·    Had a reputation in Australia such that

   ·    The use of the impugned trade mark would be confusing or deceptive.

3. In McCormick & Co Inc v McCormick (‘McCormick’) Kenny J stated of the reputation of a trade mark:[4]

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   [4] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].

4. Kenny J said of the assessment of the reputation of a trade mark:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

5. Whilst the Opponent provides sales figures, it is not possible to ascertain which trade mark, or trade marks, these figures concern – or to which goods amongst the Opponent’s Goods these may relate.

6. In her declaration Ms Foley refers to the Opponent’s Goods as being “clothing, footwear, bags, home products and accessories”.  Ms Foley also refers to the Opponent’s USPA trade mark as “being used on its own and in various fonts, stylisations and with logos”.  Elsewhere in Ms Foley’s declaration she also refers to “The USPA trade mark and brand”, “Goods branded with the USPA word mark and logo” and to invoices that she confirms “relate to [the Opponent’s Goods] bearing the USPA mark or logo”.

7. However, there are no definitions of the terms ‘USPA mark”, “USPA trade mark”, “brand” and “logo” within Ms Foley’s declaration whereas the term “USPA word mark” appears to refer to the acronym “USPA” when used as a trade mark.  It is accordingly uncertain whether the terms are used interchangeably or whether they refer to different trade marks and, if so, what these trade marks might be.

8. If the sales figures provided by Ms Foley are to be distributed amongst trade marks, it is not at all clear how this distribution should take place neither is it explicit which trade marks are involved since Ms Foley refers to the Opponent’s USPA trade mark as “being used on its own and in various fonts, stylisations and with logos”.

9. In the confidential sales figures supplied by the Opponent, Ms Foley states the amount of sales in units and that the figure applies to “Men’s, Women’s and Children’s SPORSTWEAR, [sic] SHOES and HOME PRODUCTS, as well as ACCESSORIES for the period 2015, 2016 and 2017 to customers in Australia”.  It is not clear whether the figure provided applies to each year, or the whole period – however, a figure for wholesale and retail turnover figures is also supplied by Ms Foley and is stated to apply identically to each year.  It is further unclear what is meant by the terms “home products” and “accessories” and whether the latter are accessories for the “home products” or for the “sportswear” or are something different.

10. I would characterise the sales figures supplied by the Opponent as being modest although, as I have said, there is doubt about the trade marks and the goods to which they relate.

11. The invoices and order forms attached to Ms Foley’s declaration do not show the use of any of the Opponent’s trade marks and are in respect of men’s underwear, shorts, pants, shirts, tee-shirts, swimming trunks, belts, and caps; some other photocopied invoices also refer to women’s dresses and shirts but many more of these photocopied invoices are illegible.  These goods are sold through an Australian discount fashion and home wares retailer that has 35 stores throughout Australia.

12. Whilst the Opponent supplies details of its social media advertising, it does not establish how many of its ‘followers’ are resident in Australia.

13. Accordingly, while noting that the onus is on the Opponent to establish the reputation of a trade mark, the Opponent’s evidence in this regard is inexplicit and not amenable to immediate explication. That evidence does not satisfy me that any of the Opponent’s trade marks had a reputation in Australia at the Relevant Date upon which to found this ground.

14. That said, if the Opponent’s items of men’s and women’s clothing sold in Australia did in fact carry the USPA Logo or the trade mark USPA, and those trade marks had the modest reputation to which I have referred, I consider that there is no real likelihood of deception or confusion because of the slightness of that reputation and the differences in both the trade marks involved and the respective markets for the goods.  The Goods are (or will be) sold by the Applicant to polo players and polo aficionados.  The Opponent’s Goods are sold to the public at large through a discount store.  If the Opponent’s Goods were to be sold to polo players and polo aficionados, this segment of the market is likely to be alert to what the acronyms USPA and UPA signify.

15. Additionally, as I have observed in my discussion of deceptive similarity, the acronyms USPA and UPA are different and their sources are apparent to potential purchasers.  The images of polo players appearing in the parties’ trade marks are markedly different and, in any event, might be subject to some discount in any comparison as they originate from traders who are concerned with the game of polo.

16. Finally, if what the Opponent seeks to establish is the reputation of the trade mark USPA, in whatever form it appears, and as compounded in the USPA Logo, many of the same ambiguities in the evidence that I have referred to apply to this proposition as well.  In addition, the obvious differences in the derivations of the acronyms USPA and UPA and the plain explanation on the Trade Mark that the acronym UPA is the initialization of the words ‘Urban Polo Association’, as well as the strong device elements in the Trade Mark, weigh heavily against any likelihood of deception or confusion.

17. The Opponent has not established its opposition under section 60 of the Act.

Subparagraph 42(b)

Statement of Grounds and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

   Registration of the opposed trade mark is contrary to law because [the Opponent] is the owner of a prior reputation in the trade mark USPA in connection with apparel and related accessories. [The Opponent’s] reputation in USPA has accrued through longstanding use of the mark on these goods in Australia continuing to the present date. Use of the opposed trade mark by the Applicant would be in breach of sections 18 and 29 of the Australian Consumer Law because it is likely to cause consumers to be misled or deceived or would falsely represent that the Applicant’s goods or business originate from, are affiliated with or are in some way connected to [the Opponent’s] goods or business, which they are not. Use of the opposed trade mark by the Applicant would also constitute passing off and trade mark infringement.

The Act

1. Section 42 of the Act relevantly provides:

   42Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   […]

   (b)its use would be contrary to law.

2. The onus is on the Opponent to establish that use of the Applicant’s Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.[5]

   [5] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

3. As the Registrar’s delegate observed in Ingeus Australia Pty Ltd and Ingeus Pty Ltd v Qantas Airways Ltd:[6]

   29. In the present matter the Opponent failed to establish a ground of opposition under s 60 of the Act. As the test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘the ACL’) is a more stringent test than that for deception or confusion under s 60,[7] I am satisfied that the Opponents have also failed to establish that the use of the Applicant’s Trade Mark would be contrary to s 18 of the ACL.

   30. Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act 1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[8] Section 53(d) of the TPA is the equivalent provision to s 29(1)(h) of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:[9]

   The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.

   [6] [2018] ATMO 23 at [29].

   [7] See, eg: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ).

   [8] [2003] FCA 104, [107].

   [9] [1989] FCA 506, [40] (citations omitted).

4. It follows that the Opponent has not established its opposition under section 42 of the Act.

Decision

1. Section 55 of the Act relevantly 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. The Opponent has not established a ground of opposition.

3. The trade mark application may then 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 and that the disposition of the application should be in accordance with the court’s order or direction.

Costs

1. The Applicant has sought its costs in this matter and, as it was the successful party, it is appropriate that I award costs against the Opponent at the official scale set out in Schedule 8 to the Trade Marks Regulations 1995.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
5 February 2019