Warnaco Inc

[1999] ATMO 38

TRADE MARKS ACT 1995

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

Re:Trade mark application number 674095 in the name of Warnaco Inc.

Background:

Warnaco Inc has applied to register the trade mark NOT SO INNOCENT NUDES in respect of "intimate apparel, namely bras, panties, bodysuits and slips". 

An examiner of trade marks has concluded that a ground for rejection of the application exists and that the application should not be accepted for registration.  The ground of rejection is said to exist under s 44.  The relevant part of this, with appropriate notes added, is subsection one.  This reads:

Identical etc. trade marks

44.(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: a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

Note 2:  For similar goods see subsection 14(1): goods are similar to other goods if they are the same as the other goods; or if they are of the same description as that of the other goods.

The registration said to give rise to that problem is number 654564, registered to Pacific Dunlop Limited.  That registration is for the trade mark NUDES, in respect of footwear and clothing, including outerwear, underwear, lingerie, ladies' intimate apparel and socks.  The examiner has argued that, despite the quite evident visual differences between the marks, deception or confusion will still arise because of what Shanahan, in Australian Law of Trade Marks and Passing Off, calls "contextual confusion".  The examiner quoted the following, from p 181 of that text:

As was observed in John Fitton & Co. Ltd's Appn [(1949) 66 RPC 110 at 113 (U.K. Reg.)], the words "likely to deceive or cause confusion" place no limitation "upon the nature of the confusion or deception so envisaged, whether it be visual or phonetic confusion of the marks themselves, or what is termed contextual confusion, or confusion or deception as to the trade provenance of the goods." Thus, in that case, "Easyjest" was refused in the face of "Jest", not because the two were likely to be mistaken for one another, but because it might be thought that the marks denoted related products from the same source."

The examiner has argued that, in a similar way, the marks NUDES and NOT SO INNOCENT NUDES will be taken to indicate, on the one hand, the ordinary NUDES range and, on the other, a more risque line from the same trader.

The applicant has asked to be heard on that issue.

Applicant's submissions and decision
At the hearing, the applicant was represented by Ms V J Webster of counsel, instructed by the solicitor firm of Solomon Garland Partners.

Ms Webster began by noting that there were two factors that would allow these marks to coexist.  Firstly, she argued that the word "nude" is a fairly ordinary word in ordinary life.  She noted that "nude" is defined in the obvious ways in the Macquarie Dictionary.  These she listed as follows:

1 .naked or unclothed, as a person, the body;

2 .without the usual coverings, furnishings, etc, bare,

3 .law. unsupported- made without a consideration: a nude pact.

4.a nude figure as represented in art,

5.the nude (a) the condition of being undraped (b) the undraped human figure;

6.nudity, (adv) - nudeness (n)."

"Nudes", the word in common with the cited mark, was thus an ordinary word, she argued.  For all that another person may have separately registered it as a trade mark, it was a mark of a general, rather than a special, character[1].  Accordingly, it was less likely to give rise to conceptual confusion.  As Ms Webster put it, NOT SO INNOCENT NUDES could incite a response that the applicant's line of intimate apparel was a little bit provocative, daring, spicy or revealing.  This, she stressed, would be seen to be in simple contrast to the ordinary or conventional nudes of artistic work, the subject of paintings, drawings and sculpture, entirely without indication of any connection with goods bearing the trade mark NUDES.

[1] Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty. Ltd., (1954) 91 CLR 592 at 608.

Secondly, this was reinforced by a factor common to the clothing trade.  She noted, and I will accept, that various manufacturers of lingerie use the word "nude" as another term for skin-toned.  Here she relied on the declaration of Lee-Ann Green, an employee of the applicant's solicitors who has purchased, to illustrate the argument, a variety of items of women's underwear in the shade in question.  She has included these as exhibits to her declaration.  Ms Webster noted, too, that such skin-toned underwear was very common, so the term "nude" would be widely known in relation to colour.

Ms Webster also argued that I was entitled to accept that the word nude was also widely used in descriptions of colours for nail polishes, lipsticks and foundations.  However, she conceded that there was no evidence of this.  For the purposes of my decision I do not accept her proposition in relation to those goods, though for reasons that I will set out below this will not affect the outcome.

Finally, Ms Webster noted that, as part of her declaration, Ms Green had said that she was unaware of any use of the cited mark.  While I accept this, it is of no relevance.  Even if I were to be convinced that the cited trade mark was unused - and I am not - I would still give it full force for the purpose of s 44.  Here I rely on a paraphrase of the relevant test, much as was adopted by Gummow J in Johnson and Johnson v Kalnin, (1993) 26 IPR 435 at 441:

Assuming use by the cited proprietor of its mark NUDES in a normal and fair manner on any of the goods covered by the registration of its mark, is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration also uses his mark, NOT SO INNOCENT NUDES, normally and fairly in respect of goods covered by his proposed registration.

Accordingly, the matter is to be approached as though the trade mark cited by the examiner is in use, and in use as a trade mark, for these goods.

I admit that there is some force to Ms Webster's arguments, but not sufficient of it.  In my opinion she has quite correctly summed up the likely reaction of many consumers.  None the less, I believe that there will still be a significant number of people who will make the sort of assumption at issue in the examiner's report.  For all that some, perhaps all of those people will be aware that the word "nude" can be used to denote skin-toned items, I do not think that this will wipe out the significant risk of confusion.  It would still be reasonable for people who were aware, in this hypothetical comparison, of the trade mark NUDES to assume some connection with the owner of that trade mark if they subsequently encounter goods bearing the NOT SO INNOCENT NUDES trade mark. 

Accordingly, I find the trade marks to be deceptively similar.  That in turn establishes that a ground of rejection exists and I am therefore required by s 33(3)b to reject the application.  I now do so.

T. E. Williams

Hearing Officer
20 April 1999