Universal Protein Supplements Corporation v Universal Gym Australia Pty Ltd

[2016] ATMO 24

TRADE MARKS ACT 1995

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

Re:Opposition by Universal Protein Supplements Corporation to registration of trade mark application 1578981 – UNIVERSAL GYM - in the name of Universal Gym Australia Pty Ltd.

Delegate:	Bianca Irgang
Representation:	Opponent: Sean McManis of Counsel instructed by Shelston IP Applicant: Written submissions filed by Erci Lawyers
Decision:	2016 ATMO 24 Section 52 opposition: sections 44, 42(b) and 60 pressed – s 44 established- no other circumstances made out and applicant’s evidence insufficient to accept under s44(3).

Background

1. Universal Gym Australia Pty Ltd (‘the applicant’), filed trade mark application number 1578981 on 18 September 2013 in class 25 of the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:  UNIVERSAL GYM   (the ‘Trade Mark’)

   Trade mark application no: 1578981

   Filing Date:  18 September 2013

   Specification:  Class 25: Clothing for gymnastics; Gym shorts; Gym suits; Gymnastic shoes; Gymnastic suits; Gymwear

2. Acceptance of the application for possible registration was published in the Australian  Official Journal of Trade Marks dated 13 February 2014. Subsequently Universal Protein Supplements Corporation (‘the opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars.

3. The applicant then filed its Notice of Intention to Defend. Thereafter the opponent and applicant respectively filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

4. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 31 March 2016. The opponent was represented by Mr Sean McManis of Counsel instructed by Shelston IP. The applicant was not present at the hearing but did provide written submissions by its legal representative, Erci Lawyers,  for consideration.

   Grounds of Opposition

5. The Notice nominated four grounds of opposition under the Trade Marks Act 1995 (‘the Act’). Only those grounds being under ss 42, 44, and 60 were pursued at the hearing. The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks.[2] Should the opponent establish one ground of opposition in relation to all of the applicant’s goods, there is no requirement for me to consider the other grounds of opposition.

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

   [2] [2009] FCA 891, [22]-[27] (2009) 82 IPR 13. See also; Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300, [36] - [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011), [16] to [32])

   Evidence

6. The evidence in this matter consists of the following declarations being:

   Evidence in Support

   ·Statutory declaration of Michael Rockoff  made on 22 September 2014 with Annexures MR-1 to MR-17

   Evidence in Answer

   ·Statutory declaration of Maytham Sheriffi made on 25 February 2015 with exhibits MS-1 to MS-13 (the “Sheriffi declaration”)

   Discussion

   Section 44 – Deceptive similarity

7. Only s 44(1) of the Act is relevant in this case and it is reproduced below:

   (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.

8. To establish s 44(1) of the Act the opponent must show all of the following:

   ØThat a trade mark, either registered or pending registration, in the name of a person other than the applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;

   ØThat the trade mark in the name of the other person must be in respect of similar goods or closely related services; and

   ØThat the priority date of the trade mark of the other person is earlier than the priority date of the applicant’s trade mark.

9. The opponent has specified one trade mark registration which is owned by a third party in support of the s 44 ground of opposition. The details of this registration are as follows:

   Trade Mark:   (the ‘UNIVERSAL registration’)

   Trade Mark Registration:    722879

   Filing Date:  27 November 1996

   Specification:  Class 25: Pyjamas, nightgowns, robes, coats, jackets, shirts, blouses, T-shirts, sweatshirts, sweatpants, shorts, caps, hats, gloves, mittens, suspenders, skirts, pants, ties, stockings, undershirts, underwear briefs, dresses, rompers, overalls, shoes, boots, slippers, cloth bibs, aprons, sweaters, Halloween costumes

10. I note that the above UNIVERSAL registration has an earlier priority date than the Trade Mark and its broad claim for clothing goods such as T-shirts, jackets, shirts, sweatshirts, sweatpants, shorts, caps, hats, pants and shoes in class 25 are the same or at least of the same description as those goods claimed in class 25 by the Trade Mark.

11. The opponent has stated that they do not believe that the UNIVERSAL registration is substantially identical to the opposed Trade mark. I agree. Therefore, the key issue for me to decide is if the Trade Mark is deceptively similar to the UNIVERSAL registration.

12. Deceptive similarity is defined by s 10 of the Act. The determination of deceptive similarity requires a comparison of the impression which persons of ordinary intelligence and memory would have upon recalling the UNIVERSAL registration, to the impression that they would form from the Trade Mark[3].

    [3] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, [415] (Windeyer J)

13. According to the authorities[4] any consideration of whether trade marks are deceptively similar must take into account that consumers may have an imperfect recollection of a trade mark. As a general principle one needs to estimate the impression consumers are likely to form of each trade mark as a whole. Confusion may result if a trade mark incorporates the distinguishing features of another’s trade mark. Justice French in Registrar of Trade Marks v Woolworths Ltd[5] observed in relation to the expression “likely to deceive or cause confusion”:

    … The use of the word “likely” in this context does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a “real tangible danger of its occurring” …

    [4] Clark v Sharp (1898) 15 RPC 141, [146]; Re Application by the Pianotist Co Ltd (1906) 23 RPC 774; Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641; Aristoc Ltd v Rysta Ltd (1943) 60 RPC 87; Cordova v Vick Chemical Co (1951) 68 RPC 103; Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536; Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411

    [5] Woolworths (1999) 45 IPR 411

14. The concepts ‘deceive’ and ‘cause confusion’ were considered in Pioneer Hi-Bred  Corn  Co v Hy-Line Chicks Pty Ltd[6]:

    ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.

    [6] (1979) RPC 410 at 423

15. Thus I need to decide whether the concurrent use of the respective trade marks in relation to the relevant goods in class 25 is likely to result in a tangible danger of confusion or deception.

16. The thrust of the applicant’s arguments against the respective trade marks being deceptively similar may be summarized as:

    ·To consider the trade marks as a whole and assess the Applicant’s mark as a complex, composite mark where the word “GYM” is given equal prominence to the word “UNIVERSAL” and is separated via the image of a muscular person holding a globe with uplifted arms;

    ·The applicant’s goods are aimed at a market segment interested in fitness, exercise, training and weight lifting and who wish to publically reveal the identity of the gym at which they train or exercise;

    ·The applicant’s goods would be selected by customers from the applicant’s place of business or via its website and not via multiple avenues otherwise related to the business operations of the gym; and

    ·The word “UNIVERSAL” is a familiar and common English word with known meanings and there are over 160 trade mark registration across all classes which contain or consist of this exact word which decreases the likelihood of deception or confusion.

17. On the first point, there appears to be some confusion on the applicant’s part about the trade mark which it has applied for. The Trade Mark applied for does not contain a device although I note from the evidence that the applicant uses the below trade mark on its goods:

18. I have reproduced this trade mark from exhibit MS-4 accompanying the Sheriffi declaration. I believe that the applicant is discussing the above trade mark in its evidence and submissions rather than the plain text trade mark UNIVERSAL GYM which is the subject of trade mark application 1578981. Paragraph 9 of the Sheriffi declaration states:

    Use of the Trade mark has always been by way of the words ‘Universal Gym’ accompanied by an image of a person with uplifted arm holding a world globe. The words and image have also included the numbers ‘24/7’ underneath. My Company proposes to always use the words and image together, and accordingly proposes to amend its trade mark application to reflect the word and image as a constituent trade mark. This is currently underway.

19. It is clear that the applicant was unable to amend its trade mark application. Despite these submissions, the Trade Mark under consideration is the plain text words UNIVERSAL GYM. I also note the applicant’s submissions regarding the limited ways in which a consumer may purchase the applicant’s clothing goods. However, the trade mark application is for national registration of the Trade Mark in relation to gym clothing goods and not in relation to the sale/retail of those goods. Regardless, I note that there is no limitation on how or where the gym clothes of interest to the applicant could be sold.

    Comparison of the trade marks

20. The Trade Mark is for the plain words UNIVERSAL GYM.

21. The UNIVERSAL registration contains the single word element UNIVERSAL with a globe device. The UNIVERSAL registration is structured with the word UNIVERSAL prominently positioned in the middle of the trade mark and across the globe device in a large, bolded font.

22. With this observation in mind, I note the applicant’s submission that the Trade Mark consists of two words, UNIVERSAL and GYM and that the word GYM should not to be discounted or minimized when comparing the respective trade marks for the purpose of section 44. I agree that in coming to a decision regarding deceptive similarity it is important that the trade marks are considered in their entirety – ‘it is the whole of the mark as used or intended to be used which is the subject of the comparison with the registered mark.’[7]

    [7] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).

23. In comparing the trade marks in terms of section 44, the term UNIVERSAL is the common element in both of the trade mark representations and is the only word in the UNIVERSAL registration. It is likely that the UNIVERSAL registration will be referred to by the prominent aural and visual element UNIVERSAL by consumers without reference to the globe device. The Trade Mark is the expression UNIVERSAL GYM for gym wear. In this case the word GYM is descriptive of the goods and the word UNIVERSAL is not descriptive of the clothing goods. This means that the word UNIVERSAL is the most unusual, striking and memorable word in the Trade Mark.  

24. The respective trade marks both share the striking term UNIVERSAL which is the first element in the Trade Mark and the only word element in the UNIVERSAL registration. Taking into account imperfect recollection, the fact that trade marks have a common first element may be of significance.[8] Although the UNIVERSAL registration contains the globe device, consumers are more likely to refer to the trade mark by the word element, which in this case is UNIVERSAL.  It is common practice among traders to adopt a trade mark and then modify it in some way when offering new, related products.  The public is familiar with this practice and knows that, while the marks are not identical, they do denote related products offered by the same trader. I consider this situation to be applicable in the present instance. Consumers are likely to think that the conflicting trade marks denote related products from the same provider.  It is also likely that consumers will believe UNIVERSAL GYM to be referring to a specific range of gym clothing being provided by the same trade source as the clothing provided under the UNIVERSAL registration. I am satisfied that the Trade Mark is deceptively similar to the UNIVERSAL registration.

Possible acceptance under section 44(3) of the Act

[8] In the Matter of London Lubricants (1920) Limited's Application to Register a Trade Mark (1925) 42 RPC 264, [279].

1. I note the applicant’s submissions regarding acceptance of its trade mark under ss 44(3) of the Act due to its use of the trade mark and other circumstances being:

   ·The applicant’s use of the trade mark on its goods since at least September 2013; and

   ·The number of trade marks incorporating the word UNIVERSAL which are currently on the Register.

2. In regards to the first point, the Sheriffi declaration states that the applicant has been selling towels, bags, t-shirts, singlets, jumpers and hoodies since the applicant commenced business in September 2013 which may or may not be before the priority date of the Trade Mark. Exhibits MS-6 through to MS-10 accompanying the declaration contain undated photographs of the applicant’s clothing and other goods sold from the business premises. These photographs show racks and shelves of clothing, and photographs unfolded clothing items bearing the device trade mark:

3. Mr Sheriffi states that the sale of gym wear bearing the words UNIVERSAL GYM has been on a steady increase.

4. Regardless of whether or not I consider that the use of the above trade mark actually amounts to use of the Trade Mark applied for under s 7(1) of the Act, the fact is that the applicant’s evidence falls far short of demonstrating use sufficient to accept the trade mark under the provisions of section 44(3)(a). The undated photographs provided by the applicant along with an unsupported statement that the goods have been sold since September 2013 is not enough.

5. While the statements in the Sheriffi declaration may well be true and the applicant has sold numerous articles of clothing bearing its Trade Mark, there is a distinct lack of evidence put forward by the applicant to support these assertions. There are no invoices and the applicant is silent on how many of these clothing goods have been sold or the amount of revenue generated from those sales. The applicant has simply not provided sufficient evidence of use before the filing date so the provisions of subsection 44(3)(a) are not applicable.

6. In regards to the applicant’s submissions about the state of the Register, I say that each case must be assessed on its merits - with regard to the relevant judicial tests and not with regard to the state of the Register.  In this regard, I refer to the comments of Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks[9] at paragraph 35 where, after approving the reasoning of Jacob J. in British Sugar plc v. James Robertson & Sons Limited[10] to the effect that a comparison with other marks on the Register is in principle irrelevant when considering a particular mark tendered for registration, his Honour observed:

   ‘I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered.’

   [9] (2000) 47 IPR 579; (2000) AIPC 91-539

   [10] [1996] RPC 281 at 305

7. I also note that a number of the UNIVERSAL trade marks on the register are in relation to goods and services which are not similar or related to the goods of the Trade Mark and the UNIVERSAL registration, so are not analogous to the situation before me.

8. In conclusion I arrive at the finding that the respective trade marks are deceptively similar for the purposes of s 44. The applicant has not been able to provide any evidence of use before the filing date so that the provisions of s 44(3)(a) are not applicable. Nor am I satisfied that there are other circumstances which might be said to apply make it proper to accept this trade mark for registration. The applicant has simply not provided sufficient reasons for the present application to be accepted under the provisions of s 44(3)(b). Accordingly, I do not find it proper in the circumstances to apply the provisions of s 44(3)(b) to the applicant’s trade mark in this matter.

   Decision

9. Section 55 of the Act provides:

   55  Decision

   (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:          Forlimitationssee section 6.

10. I find that the opponent has met the onus upon it, in terms of the ground of opposition under s 44. Accordingly I refuse to register trade mark application no. 1578981.

    Costs

11. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant in terms of Schedule 8 of the Regulations.

    Bianca Irgang

    Hearing Officer

    Trade Marks Hearings

    26 April 2016