Urban Shoemakers Pty Ltd v All Podiatry Pty Ltd

[2017] ATMO 135

TRADE MARKS ACT 1995

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

Re:Opposition by All Podiatry Pty Ltd to registration of trade mark application 1691414 (25) - FRANKIE (Word/Device) - filed in the name of Urban Shoemakers Pty Ltd

Delegate:

Nicholas Smith

Decision on the Written Record

Decision:

2017 ATMO 135

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 60 considered – ground established – registration refused

Background

1.  This is an opposition brought by All Podiatry Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark subject of the application detailed below in the name of Urban Shoemakers Pty Ltd (‘Applicant’): 

Application Number:	1691414
Filing Date:	4 May 2015
Goods:	Class 25: Athletics shoes; Ballet shoes; Basketball shoes; Bath shoes; Bathing shoes; Beach shoes; Canvas shoes; Dance shoes; Deck shoes; Dress shoes; Esparto shoes or sandals; Flat shoes; Football shoes; Formed shoe parts; Golf shoes; Gymnastic shoes; Heel protectors for boots and shoes; Heels for shoes; Hiking shoes; Hockey shoes; Leather shoes; Men's shoes; Midsoles for boots and shoes; Pads for shoes (other than orthopaedic); Reinforcements of metal for shoes; Reinforcements of non-metallic materials for shoes; Rubber shoes (other than for protection against accident or injury); Rugby shoes; Running shoes; Shoe insoles, other than for orthopaedic use; Shoe pads, other than for orthopaedic use; Shoe sole repair blanks; Shoe soles; Shoes; Shoes for casual wear; Shoes for infants; Shoes for leisurewear; Shoes for sports wear; Shower shoes; Slip-on shoes; Snowboard shoes; Soccer shoes; Sporting shoes; Sports shoes; Squash shoes; Tennis shoes; Toe shoes; Training shoes; Walking shoes; Wooden shoes; Working shoes (other than for the prevention of accident or injury) (‘Applicant’s Goods’)
Trade Mark:	(‘Trade Mark’)

2.  Following the advertisement on 24 September 2015 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 26 October 2015 and a Statement of Grounds and Particulars (‘SGP’) on 26 November 2015. The SGP was assessed by this office as adequate. The Applicant filed a Notice of Intention to Defend on 24 December 2015. The SGP raised grounds of opposition under ss 42(b), 44, 58, 60 and 62A of the Act.

Evidence

3.  The Opponent filed Evidence in Support of its opposition (‘EIS’) on 18 April 2016.  This evidence consists of a declaration made on 18 April 2016 by Alan David McCulloch, the Director of the Opponent, with Exhibits ADM-1 to ADM-60 (‘McCulloch Declaration’).

4.  The entirety of the McCulloch Declaration, including publically available information such as the existence of registered trade marks, is claimed to be confidential to the Opponent and commercially sensitive.  I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim stated:

The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[1]

[1] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6].

5.  The Opponent specifically nominated paragraphs 41 and 42 and particular exhibits has being confidential and I will treat them as commercially sensitive but will set out in my decision relevant matters raised in the EIS as I otherwise see fit.

6.  The deadline for the Applicant to file its Evidence in Answer (‘EIA’) was 5 August 2016.  On 5 August 2016 the Applicant filed a declaration made on 5 August 2016 by Lachlan Cloak, a solicitor employed by the Applicant’s representative, with Exhibits LC-1 to LC-26 (‘Cloak Declaration’).

7.  On 8 August 2016 the Applicant filed a declaration made on 8 August 2016 by Helen Kosmarkias, an assistant accountant of the Applicant, with Exhibits HK-1 to HK-17 (‘Kosmarkias Declaration’).  On 9 August 2016 the Applicant filed a declaration made in August 2016 by David Noel Midgley, the director of the Applicant, with Exhibits DNM-1 to DNM-29 (‘Midgley Declaration’). These declarations were filed out of time and on 3 October 2016 the Opponent filed submissions seeking that the Examiner (sic) exercise its discretion under reg 21.15(4) of the Trade Marks Regulations 1995 (‘Regulations’) to consider these declarations.  The admissibility of these declarations will be considered below.

8.  The Opponent filed Evidence in Reply (‘EIR’) on 5 December 2016.  This evidence consists of a declaration made on 5 December 2016 by Angeline Peta Behan, trade mark attorney and solicitor employed by the Opponent’s representative with Exhibits APB-1 and ABP-2 (‘Behan Declaration’). Paragraphs 6-30 of the Behan Declaration consist of a mixture of evidence and submissions in respect of the question whether the discretion under reg 21.15(4) of the Regulations should be exercised to permit the consideration of the Kosmarkias and Midgley Declarations and thus will be considered in respect of that question.

9.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  Neither party chose to avail themselves of these opportunities at that time.  By letter issuing from IP Australia on 6 February 2017 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon.  Neither party chose to file any submissions.

1. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.

Admission of Late Filed Evidence

1. The Kosmarkias and Midgley Declarations were filed after the deadline for the filing of the EIA and the Applicant has sought that this evidence be considered by the Delegate under the provisions of reg 21.15(4) of the Regulations.

2. Regulation 21.15(4) provides that ‘the Registrar is not bound by the rules of evidence but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate’.

3. The Applicant submitted, in support of the Delegate exercising its discretion under Reg 21.15(4), that:

   ·     The Kosmarkias and Midgley Declarations were filed 1 and 2 business days after the closure of evidence;

   ·     There were a number of factors that caused the delay in filing the Kosmarkias and Midgley Declarations, including David Midgley travelling in June 2016 and being unavailable to give instructions, which delayed the preparation of the Kosmarkias and Midgley Declarations.

   ·     The Kosmarkias and Midgley Declarations were ready for execution by 5 August 2016 however Ms Kosmarkias had to leave the office early in the afternoon of 5 August and Mr Midgley was out of the office on 5 August and travelling to attend external meetings on 8 August.

   ·     The Kosmarkias and Midgley Declarations are significant and are of high probative value to the delegate’s decision.  It is in the public interest to have this information considered and the consideration of the information contains no prejudice to the Opponent.

4. The Opponent submitted, in opposition to the Delegate exercising its discretion under Reg 21.15(4) that:

   ·     The Applicant’s representatives had ample time to prepare their evidence in answer, and the fact that Mr Midgley was travelling should not impact on the ability of the Applicant’s representatives to get instructions from their client.

   ·     A close examination of the Cloak, Midgley and Kosmarkias Declarations makes it clear that the Applicant had not acted diligently in preparation of their evidence but started preparing evidence very late in the period set down for preparing evidence in answer, indeed it appears that much of the evidence was prepared on 5 August 2016, the day the evidence in answer was due.  As a result of the Applicant not acting promptly and diligently in the preparation of its evidence, the Kosmarkias and Midgley Declarations should not be considered by the delegate.

5. I note that despite the Applicant being purportedly aware of the likelihood of delay in filing its EIA, no application was made under reg 5.15 for an extension of time for the filing of evidence in this matter, nor does the Applicant, in its submissions, explain why no such application was made.  The proper course of action to be taken when a party is to file its evidence late is to file an application under reg 5.15, thus allowing the extension application to be considered against the criteria in that regulation. 

6. Nevertheless, since the Applicant has sought that the Registrar exercise its discretion under reg 21.15(4) I shall consider this application. In considering whether to exercise the discretion in reg 21.15(4) I note the views of the Delegate of the Registrar in TWG Tea Company Pte Ltd v Tsit Wing International Company Limited who stated that:

   [A] serious opposition should be able to be decided on the merits of the case, with all relevant information available to the delegate of the Registrar for the making of that decision. This principle remains undiminished and is a potent factor to be weighed into the balance whenever a Registrar’s delegate exercises discretion under legislation that has the potential to exclude evidence crucial to an opposition outcome.[2]

   [2] [2015] ATMO 64, [45].

7. In addition, the Delegate of the Registrar in Federation Square Pty Ltd v Federation IP Pty Ltd[3] when considering the impact of the amendments to the Regulations arising from the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No.1) stated (in respect of the application of Reg 21.19 but equally apt in respect of the application of Reg 21.15(4)):

   The clear intention is that Regulation 21.19 should not been interpreted as a substitute for the repealed further evidence provisions. The fact that prior to the ‘Raising the Bar’ amendments Regulation 21.19 existed concurrently with the further evidence provisions affirms that the original intent of the regulation was to stand apart from the regular evidence stages of the opposition. Parties should not assume an entitlement to the application of Regulation 21.19 and the presence of an evidence stage appropriate for that material will not assist the party applying.[4]

   However:

   [T]he intent of the ‘Raising the Bar’ amendments cannot be to entirely shut out [of] oppositions where there is a serious issue to be heard, the evidence is of high probative value, submitted shortly after the due date and is immediately available to the Registrar and the other side.[5]

   [3] [2015] ATMO 42.

   [4] Ibid, [40].

   [5] Ibid, [52].

8. I note the arguments made by the Opponent to the effect that the Applicant had not acted diligently in preparation of their evidence, which tells against a finding that this material should be allowed under 21.15(4).  On the other hand, if I were to disallow the Kosmarkias and Midgley Declarations, the likely eventuality would be that this decision (in the event that the Opponent is successful) would be appealed to the courts, where the Applicant would be able to file evidence similar to that of the Kosmarkias and Midgley Declarations.  On these facts not allowing the Kosmarkias and Midgley Declarations to be considered seems to be at odds with the broader purpose of the relevant ‘Raising the Bar’ amendments, which were to ‘reduce delays in the resolution of patent and trade marks applications’ and to ‘streamline the opposition process’[6].

   [6] See the Explanatory Statement to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No.1).

9. Although each case is decided on its own circumstances, in the present case the evidence in the Kosmarkias and Midgley Declarations (particularly the Midgley Declaration) is of such high probative value (and was filed 1 and 2 business days after the close of evidence) that the public interest in hearing the opposition on its merits outweighs the inconvenience to the Opponent and the danger of circumventing the requirements under reg 5.15.  I note the cautionary comments made in paragraphs [54]-[57] of Federation Square Pty Ltd v Federation IP Pty Ltd by the Delegate of the Registrar that reg 21.19 (and reg 21.15(4)) is discretionary and there are considerable risks of a party relying on it in lieu of the evidence process. In the particular circumstances I exercise my discretion to consider the material in the Kosmarkias and Midgley Declarations.

The Opponent

1. The Opponent is a company that administers and holds all intellectual property used by two associated companies, Frankie4 Pty Ltd and FrankieB Pty Ltd.  The Opponent authorises the use of its intellectual property by Frankie4 Pty Ltd and FrankieB Pty Ltd.  For the purposes of this decision, when I refer to use of a particular trade mark by the Opponent I am referring to use by the Opponent and use by Frankie4 Pty Ltd and FrankieB Pty Ltd authorised by the Opponent.   

2. The Opponent is the owner of the registered trade mark listed below (‘Opponent’s Trade Mark’).  The goods for which the Opponent’s Trade Mark is registered are collectively referred to as the ‘Opponent’s Goods’.  

Number	Trade Mark	Priority Date	Goods
1370063	FRANKIE4	2 July 2010	Class 25: Clothing, headwear, footwear.

1. The Opponent has also applied to register trade mark listed below (‘FRANKIEB Mark’).    

Number	Trade Mark	Priority Date	Goods
1730069	FRANKIEB	23 October 2015	Class 25: Footwear including dress shoes, casual shoes, boots, sandals, beach shoes, slides, slippers, sports shoes, flat shoes, shower shoes, walking shoes, canvas shoes, leather shoes, thongs; parts and accessories for shoes

1. The McCulloch Declaration contains the following claims/statements:

   ·     Both the Opponent’s Trade Mark and the FRANKIEB Mark have been used extensively in Australia.  In particular the Opponent’s Trade Mark has been used extensively since 2010 with footwear bearing the Opponent’s Trade Mark being sold online and through various bricks and mortar stores.

   ·     The Opponent promotes and advertises the Opponent’s Trade Mark and FRANKIEB Mark by way of various online sites (Facebook, Instagram, YouTube, Twitter, Pintrest) as well as through advertising brochures and advertising in traditional media such as newspapers and magazines.  The Opponent also advertises the Opponent’s Trade Mark and FRANKIEB Mark by displaying them on shoeboxes, shoe tags, shopping bags, signage, point of sale displays and other products.  Advertisements featuring the Opponent’s Trade Mark and/or the FRANKIEB Mark have been placed in Better Homes and Gardens, Women’s Day, the Daily Telegraph, the Courier Mail, Brisbane Business News and various other magazines, including specialist footwear magazines.  The Opponent has also been featured on various fashion and styling blogs.

   ·     The Opponent, between 2012 and 2015 has spent a not insignificant amount in advertising and promoting the Opponent’s Goods featuring the Opponent’s Trade Mark and FRANKIEB Mark.   As a result of its sales and extensive promotion the Opponent’s Trade Mark and FRANKIEB Mark have acquired an extensive reputation in Australia.

   ·     The Opponent is aware of a number of instances of confusion between the Applicant and the Opponent arising as a result of the similarity between the Opponent’s Trade Mark and the Trade Mark (which is likely to be pronounced ‘Frankie’).  This confusion has involved specialist members of the footwear industry (footwear retailers) and the Declarant considers that if specialist members of the industry are confused by the similarity between the Trade Mark and Opponent’s Trade Mark, non-specialist members could very easily be confused and mislead by the nature of the footwear purchased.

2. The Behan Declaration contains the following claims/statements in reply to the Applicant’s evidence:

   ·     The statements in the Midgley Declaration that the Applicant has been trading for 30 years does not mean that it has used the Trade Mark for that period.  In addition the Midgley Declaration does not clearly distinguish between shoes sold by the Applicant that bear the Trade Mark and those that do not, which makes it difficult to determine how extensive the Applicant’s sales of shoes bearing the Trade Mark are.  In particular it is clear from the Midgley Declaration that the Applicant sells goods under 13 different trade marks but no effort is made to precisely identify which sales are made for goods under the Trade Mark, as opposed to the other 12 trade marks used by the Applicant.

   ·     There are a number of retailers that purchase shoes from both the Applicant and the Opponent, meaning that consumers could easily be confused as to the source of goods sold under the Trade Mark/Opponent’s Trade Mark.

   ·     The Midgley Declaraion refers to the Trade Mark as ‘Frankie’ and the Applicant uses the website This strongly suggests that the Trade Mark would be pronounced as ‘frankie’, with the ‘i’ replacing the ‘/’.

The Applicant

1. The Applicant is a footwear company that designs and imports footwear for the Australian and New Zealand market.

2. The Midgley Declaration contains the following claims/statements:

   ·     The Applicant operates throughout Australia and sells its footwear to independent retail stores (being stores that sell footwear by reference to the trade mark displayed on the footwear rather than the trade mark of the store).  The Applicant sells its footwear to 680 stores in Australia.  It sells its products under a number of different trade marks.

   ·     By and large the Applicant sells its footwear to completely different customers to the Opponent’s customers and neither the Declarant, nor anyone employed by the Applicant, nor any of its sales agents, had heard of the Opponent and its footwear until the receipt of the first letter of demand.  The Opponent’s products are somewhat specialised due to the designers’ knowledge of physiotherapy and podiatry.

   ·     The Declarant created the Trade Mark in 2014 and from that date began discussing the range with retailers.  Initially the brand was to be ‘FRANKIE’ but the Applicant decided to replace ‘I’ with ‘/’ to make the label younger and more interesting.  At this time the Applicant was unaware of the Opponent.  The range of footwear branded with the Trade Mark was launched in late March/early April 2015.

   ·     Since the launch of the range of footwear branded with the Trade Mark, the Applicant has engaged in extensive advertising featuring the Trade Mark and sold its footwear through a large number of stores.

   ·     The Applicant is only aware of a single instance of confusion between the Trade Mark and the Opponent’s Trade Mark and FRANKIEB Mark which involved a retailer accidently purchasing footwear from the Opponent.

1. The Kosmarkias Declaration contains the following claims/statements:

   ·     There are a number of businesses that use the name ‘frank’ or ‘frankie’ in connection with clothing and footwear.  In particular there is a footwear business in Sydney known as FRANKIES Shoes which commenced trading in Sydney in 2012, a clothing store in Bendigo that sells branded women’s footwear known as ‘Frankie and Co Clothing’ and a company that produces, amongst other things, children’s footwear known as ‘Frankie’s Story’.

2. The Cloak Declaration contains the following claims/statements:

   ·     The Declarant has conducted a search on IP Australia’s Australian Trade Mark Online Search System using the word ‘frank’ and class 25 for the purposes of identifying marks containing ‘frank’ and used in respect of footwear.  There are a number of businesses that use the name ‘frank’ or ‘frankie’ in connection with clothing and footwear. 

   ·     Footwear is currently being sold in Australia under trade marks that include FRANKIE & JOHNNY, PAUL FRANK and FRANKIE MORELLO.  The following trade marks are also registered in Australia for goods including Footwear; FRANKIE B (by an entity not associated with the Opponent), FRANKEE (composite mark), FRANKIE B HOLLYWOOD.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above the SGP nominates grounds of opposition under ss 42(b), 44, 58, 60 and 62A of the Act. To successfully oppose the application the Opponent needs to establish at least one of those grounds. As will become apparent, the Opponent has successfully established a ground of opposition pursuant to s 60. Consequently, it is unnecessary that I consider the remaining grounds. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

2. The onus of proof in an opposition rests upon the Opponent.[7]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[8]  The date at which the rights of the parties are to be determined is 4 May 2015, being the filing date of the application in Australia (‘relevant date’) (except in circumstances, not present here, in which a different priority date is provided for in the Act).[9]

Discussion

[7] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[8] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

[9] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

Section 60

1. Section 60 of the Act is reproduced below:

   Section 60 - 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.

2. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.

3. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’.  Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in s 60, reputation is ‘the recognition of the [trade mark] by the public generally’.[10]  Her Honour quoted with approval the following words of Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[11]

   [10] [2000] FCA 1335, [81].

   [11] (1992) 33 FCR 302, 343.

4. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[12]

   [12] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

5. As stated above, as well as the consideration regarding reputation, another factor relevant to an opposition under the provisions of s 60 is the consideration of what constitutes a significant number of persons in the relevant market. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[13] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

   What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[14]

   [13] (2000) 50 IPR 1.

   [14] Ibid 20. It is to be noted that Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted, indeed the court specifically noted that Heerey J’s approach contained no error, see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

6. Furthermore, in practice the degree of reputation required must also depend on how closely the trade marks resemble one another.[15]

   [15] Mark Davison, Shanahan’s Australian Law of Trade Marks and Passing Off Online Westlaw AU, [50.2415] <

7. The ground of opposition pursuant to s 60 of the Act was particularised in the SGP as follows:

   The Opponent has an extensive history of using “FRANKIE” trade marks in respect of footwear.

   The Opponent first used the trade mark FRANKIE4 (now the subject of trade mark Registration No. 1370063) in respect of footwear in approximately June 2010.

   The Opponent first used the trade mark FRANKIEB (now the subject of trade mark Application No. 1730069) in respect of footwear in approximately January 2012.

   The Opponent has a national and international clientele and, as a result of its extensive client base and the length of time the Opponent has used each of the “FRANKIE” trade marks, has developed a significant reputation in respect of both of the aforementioned FRANKIE trade marks.

   As a result, the use of the Opposed Trade Mark for the goods specified in the Application would be likely to deceive or cause confusion

8. As at the relevant date, the Opponent had been using the Opponent’s Trade Mark for approximately 5 years in Australia.  Footwear bearing the Opponent’s Trade Mark was sold from a reasonable number of stores in Australia.  The raw figures provided by the Opponent of its revenue, advertising spending and number of shoes sold are not substantial given the breadth of the footwear market in Australia.  However, it is apparent that since 2010 the Opponent has engaged in a sustained and varied marketing strategy to promote the Opponent’s Trade Mark.  This included promoting the Opponent’s Trade Mark through online media (Facebook, Instagram, Twitter and Pinterest) and through considerable free media coverage including being the subject of discussion in various blogs.  The tone of the discussion of the Opponent’s Trade Mark in free media and blogs reflects the esteem that the Opponent’s Trade Mark is held in, being an Australian footwear brand that provides comfort footwear designed by a podiatrist.  The Opponent has also advertised its footwear (featuring the Opponent’s Trade Mark) through a variety of specialist and generalist publications with considerable circulation figures and thus has reached a significant number of persons in the footwear market.  The Opponent has also advertised its footwear by placing the Opponent’s Trade Mark on shoeboxes, shoe tags, shopping bags, point of sale displays, indoor and outdoor signage, flyers, and pot-plants. 

9. While the Opponent’s sales figures are modest, given the size of the market, I am persuaded that those sales figures, combined with the breadth and variety of the Opponent’s marketing, both free and paid, are sufficient to support a view that the Opponent’s Trade Mark had acquired a reputation in Australia in respect of footwear at the relevant date amongst a significant number of persons in the relevant market.  I do not reach a similar conclusion with respect to the FRANKIEB Mark, which has been used for a shorter period of time and has been the subject of considerably less extensive advertising and marketing. 

10. It is not sufficient that the Opponent merely establishes that the Opponent’s Trade Mark has acquired a significant reputation; the Registrar must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

    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 usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[16]

    [16] (1937) 58 CLR 641, 658.

11. The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:

    ‘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. ^[17]

    [17] [1979] RPC 410, 423 (citation omitted).

12. It is well established that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J put it in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:

    A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.[18]

    [18] (1997) 38 IPR 495, 501(citations omitted). His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are no less applicable to s 60 of the current Act. The decision itself was overturned on appeal to the Full Federal Court (Wilcox, Tamberlin and Merkel JJ) (1998) 45 IPR 393, but not on this point.

13. In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:

    A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[19]

    [19] (1999) 45 IPR 411, 428. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

14. The goods for which Opponent’s Trade Mark has a reputation, being footwear, are either the same as or similar to the Applicant’s Goods, which are either footwear or footwear accessories. The Midgely Declaration states that the Applicant and Opponent sell their footwear to different customers but does not explain why this is the case. While the Opponent appears to specialise in footwear with an emphasis on comfort and posture, it is not clear why the parties’ respective customer base would differ in any way, since the Applicant’s Goods essentially encompass all types of footwear and footwear accessories and for the purposes of s 60 I am to consider the notional use of the Trade Mark for the Applicant’s Goods, not the use for which it has been put prior to the relevant date. Furthermore it is apparent that both companies distribute their footwear to independent footwear outlets (rather than footwear outlets branded with the marks the footwear is sold under) and the Opponent has identified a number of retail outlets that appear to sell both the Applicant’s and Opponent’s footwear products.

15. While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, “the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.” [20] 

    [20] [2016] FCA 729 at [142].

16. The dominant element of the Opponent’s Trade Mark is the word ‘frankie’ while the Trade Mark itself consists (in the evidence of the Applicant) of the word ‘frankie’ with the ‘I’ being replaced by a ‘/’.  I accept the Opponent’s evidence that that the Trade Mark would be pronounced as ‘frankie’ and I consider it easily possible for a consumer to view the Trade Mark and read it as ‘frankie’.  The parties’ marks are of the same nature and are likely to leave similar impressions on the minds of relevant consumers.  Given the nature of the products sold under both marks, being footwear products (not being a market where consumers have specialist expertise), it would easily be possible for a consumer to see a ‘Frank/e’ shoe and be caused to left in doubt as to whether that product was a variant of a ‘Frankie4’ shoe.  Alternatively, it is conceivable that a consumer would ask a sales assistant for a ‘Frank/e’ (pronounced ‘frankie’) shoe, have him or her visit the store room, see a ‘Frankie4’ product and be confused into thinking that the Frankie4 shoe was produced by the Applicant.  

17. I also note the evidence in the McCulloch Declaration of three instances of actual confusion between the Applicant and the Opponent arising from the similarity between the Trade Mark and the Opponent’s Trade Mark and that each of these instances involved shoe retailers.  I accept the argument in the McCulloch Declaration that if shoe retailers, being specialists in footwear, could be confused between ‘Frank/e’ and ‘Frankie4’, then it is likely that non-specialist consumers aware of the reputation of the Opponent’s Trade Mark would also be confused by the use of the Trade Mark.  

18. Although the reputation acquired by the Opponent’s Trade Mark at the relevant date was by no means overwhelming, I consider that the similarities in the marks and the nature of the market results in a high likelihood of confusion. I am satisfied that that because of the reputation of the Opponent’s Trade Mark at the relevant date the use of the Trade Mark in connection with the Applicant’s Goods would be likely to deceive or cause confusion. Consequently, the Opponent has established the ground of opposition pursuant to s 60.

Decision

1. I have found the Opponent has established the ground of opposition it raised pursuant to s 60 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark.

Nicholas Smith

Hearing Officer

Oppositions and Hearings

7 November 2017