Warrior Australia Pty Ltd v Warrior Sports Inc
[2017] ATMO 120
•19 October 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Warrior Australia Pty Ltd to extension of protection to International Registration Designating Australia 1083741 (Australian trade mark application 1439156 (25)) WARRIOR W (Logo) in the name of Warrior Sports Inc, and opposition by Warrior Australia Pty Ltd to registration of Australian trade mark application 1616241 (28) - WARRIOR W (Logo) - in the name of Warrior Sports Inc.
Delegate: | Decision on the Written Record Iain Thompson |
| Representation: | Opponent: Roger Syn & Co – written submissions Applicant: Davies Collison Cave – written submissions |
| Decision: | 2017 ATMO 120 Trade Marks Act 1995 Section 52/regulation 17A.33 oppositions to registration/extension of protection: s44 trade marks deceptively similar and the goods the same or similar; concurrent use - honesty of use - honest concurrent use not established – registration refused |
Background
In these proceedings under the Trade Marks Act 1995 (‘the Act’) Warrior Sports Inc (‘Warrior’) has sought extension of protection to and/or applied to register the trade marks appearing below:
Application No: 1439156
IRDA No: 1083741
Priority Date: 2 June 2011
Goods:Class 25: Clothing, namely, tee shirts, sweatshirts, shorts, collared shirts, jerseys, hats and footwear; moisture management garments, namely, tee shirts, sweatshirts, shorts, collared shirts, jerseys, hats and footwear; all of the foregoing relating to lacrosse and ice hockey
Trade Mark:
Endorsement: Provisions of paragraph s44(3)(a) and/or Reg 4.15A(3)(a) applied.
Application No: 1616241
Priority Date: 8 April 2014
Goods:Class 28: Games and playthings; balls for games, namely, soccer balls; lacrosse and ice hockey sticks; lacrosse stick heads; ice hockey stick blades; lacrosse and ice hockey stick handles; protective padding for playing lacrosse, ice hockey and soccer, including elbow pads, shoulder pads and shin guards; lacrosse and ice hockey gloves, and soccer goalkeeping gloves; bags for carrying sports equipment and sports balls; bags specifically adapted for lacrosse and hockey equipment; parts, fittings and accessories for the aforementioned goods
Trade Mark:
Endorsement: Provisions of paragraph s44(3)(a) and/or Reg 4.15A(3)(a) applied.
While acknowledging the earlier application to be an International Registration Designating Australia (‘IRDA’), for convenience I will refer to the above as ‘the Applications’ and ‘the Opposed Trade Mark’; also, I will refer to the goods in respect of which registration is sought by Warrior as ‘the Specified Goods’.
Warrior Australia Pty Ltd (‘the Opponent’) has opposed the registration of the Applications. The opposition process has followed the timetable set out below.
| 1439156 | 1616241 | ||
| Date | Event | Date | Event |
| 29/10/15 22/12/15 22/01/16 9/03/16 17/06/16 10/10/16 12/12/16 | Advertised accepted for possible protection in the Australian Official Journal of Trade Marks. Notice of Intention to Oppose Statement of Grounds and Particulars Grounds under sections 44, 58, 60, 42, 62(A), and 62 of the Act. Notice of Intention to Defend Evidence in Support Roger J Syn, trade mark attorney, made on 17 June 2016 with exhibits RJS-1 to RJS-14; and Philip K Pen, a director of the Opponent, made on 17 June 2016, with exhibits PP-1 to PP-11. Evidence in Answer Daniel J McKinnon, Senior Counsel of New Balance Athletic Shoe Inc, made on 6 October 2016. Evidence in Reply Roger J Syn, trade marks attorney, made on 12 December 2016, with exhibits RJS-15 to RJS-16. | 29/10/15 22/12/15 22/01/16 9/03/16 17/06/16 10/10/16 12/12/16 | Advertised accepted for possible protection in the Australian Official Journal of Trade Marks. Notice of Intention to Oppose Statement of Grounds and Particulars Grounds under sections 44, 58, 60, 42, 62(A), and 62 of the Act. Notice of Intention to Defend Evidence in Support Roger J Syn, trade mark attorney, made on 17 June 2016 with exhibits RJS-1 to RJS-14; and Philip K Pen, a director of the Opponent, made on 17 June 2016, with exhibits PP-1 to PP-11. Evidence in Answer Daniel J McKinnon, Senior Counsel of New Balance Athletic Shoe Inc, made on 6 October 2016. Evidence in Reply Roger J Syn, trade marks attorney, made on 12 December 2016, with exhibits RJS-15 to RJS-16. |
Thereafter both parties were informed of their right to be heard or to make written submissions; both have chosen to rely on written submissions.
Now, in order that the Registrar may discharge her obligation under section 55 of the Act to decide the matters, they have been passed to me, one of her delegates, for my decisions which are to be based on the written record. The written record is comprised of the documents mentioned in the foregoing paragraphs.
Onus
The Opponent bears the onus of establishing one or more grounds of opposition 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]-[133].
The relevant dates at which the grounds under section 52 of the Act must be considered are the filing dates of the opposed applications[2] which here are the priority dates.
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
Evidence
As the matters are ones which will be decided in terms of section 44 of the Act, I will restrict my discussion of the parties’ evidence to that which I consider to be relevant to that ground.
The Opponent
The Opponent is the owner of the two trade mark registrations which appear below:
Registration No: 398525
Priority Date: 17 October 1983
Goods:Class 28: Gymnastic and sporting articles (other than clothing), body-building apparatus, body-training apparatus, boxing gloves, boxing bags, protective devices and articles in this class including head-guards and arm-guards
Trade Mark: WARRIOR
Registration No: 398526
Priority Date: 17 October 1983
Goods:Class 25: Clothing including headgear for wear and sportswear but excluding footwear.
Trade Mark: WARRIOR
The above registrations (‘the Opponent’s Trade Marks’) were assigned to the Opponent in 2009 by the previous owner Zen Imports Pty Ltd which had used the Opponent’s Trade Marks in relation to a range of martial arts goods which are listed in Classes 25 and 28 of the International (Nice) Classification of Goods and Services.
The Opponent has continued use of the Opponent’s Trade Marks in relation to the same or very similar goods as well as a more broad range of sports clothes and equipment.
Warrior
Warrior has previously applied to register trade marks very similar to the Opposed Trade Marks – these include the following application:
Application No: 1173314
Status: Lapsed
Priority Date: 27 April 2007
Goods:Class 9: Helmets; none of the aforementioned goods to be used for playing rugby league football or in association with and promotion of rugby league football
Class 25: Clothing, including, tee shirts, sweatshirts, collared shirts, shorts, jackets, jerseys, hats, short sleeve shirts , long sleeve shirts, mock turtlenecks, sleeveless shirts, and footwear; none of the aforementioned goods to be used for playing rugby league football or in association with and promotion of rugby league football
Class 28: Lacrosse sticks, handles, heads, balls, goals, nets, and training aids; hockey sticks, handles, blades, pucks, and training aids; protective sports equipment including gloves, shoulder pads, elbow pads; none of the aforementioned goods to be used for playing rugby league football or in association with and promotion of rugby league football
Trade Mark: WARRIOR
After three adverse examiner’s reports, Warrior wrote to the Opponent on 19 June 2012 seeking a co-existence agreement. The Opponent refused the request and the above application lapsed.
Mr McKinnon states that the ‘WARRIOR trade marks were traditionally used [by Warrior] as a lacrosse and ice hockey brand’ but that ‘In 2012, the decision was made to extend the WARRIOR brand into the popular football (soccer) market.’ Thereafter, states Mr McKinnon, ‘As of the 2015-2016 European Football season, NEW BALANCE replaced WARRIOR as [Warrior’s] soccer brand with the WARRIOR brand once again reverting to use in the more specialised ice hockey and lacrosse markets.’
I infer from this that, at the relevant dates, it was Warrior’s intention to use the Opposed Trade Marks in relation to some goods within the ‘football (soccer) market’ but the exact nature of these goods is not clear from Mr McKinnon’s declaration.
Mr Lolis, for his part, dwells on his enjoyment of all football codes, soccer in particular. He states:
I am also an avid supporter of the Liverpool Football Club (LFC), being a prominent team that plays in the English Premier League (EPL). I routinely watch LFC games on television or online and have also travelled to the United Kingdom to watch LFC play in various competitions. As a supporter I have also, over the years, purchased a wide range of LFC merchandise including playing shirts, shorts and socks. I have also purchased more casual or fashion wear such as hoodies, t-shirts, polo shirts and bags as well as soccer balls.
It is not clear whether the purchases that Mr Lolis refers to were made by him in the United Kingdom or in Australia.
Mr Lolis refers to the dictionary definitions of the word ‘warrior’ as being ‘a person experienced in warfare’[3] and states:
Given the meaning of the word WARRIOR, it is not surprising that the word is used by a number of different teams and traders in a sporting context. Some of the more prominent teams in the Australian sporting landscape include the GOLDEN STATE WARRIORS that play in the National Basketball Association (“NBA”), the NEW ZEALAND WARRIORS that play in the National Rugby League (“NRL”), the WESTERN WARRIORS which are the Western Australian based state cricket team, the HEIDELBERG UNITED WARRIORS which have previously played in the National Soccer League (“NSL”) and today play in the Victorian Premier League and the WARATAH WARRIORS which participate in the Northern Territory Football League. There are also a number of other teams which paly in less prominent competitions such as the MONASH WARRIORS GRIDIRON CLUB, the MACQUARIE UNIVERSITY WARRIORS (AFL), the NORTH GEELONG WARRIORS FOOTBALL CLUB (soccer), and the WOODVILLE LACROSSE CLUB but to name a few. Attached hereto and marked Exhibit TVL-3 are examples of coexisting WARRIOR branded teams and associated merchandise.
Like all sporting teams, the WARRIORS teams noted above offer their supporters a range of related merchandise including clothing, headgear, bags and sporting equipment.
[3] Oxford English Dictionary, Merrian-Webster Dictionary.
Mr Lolis’s declaration does not exhibit any evidence to support those assertions and I am not sure about the point I am asked to take from Mr Lolis’s remarks. If it is that the Opponent’s Trade Marks lack inherent adaptation to distinguish the goods in respect of which they are registered, this forum is not the appropriate one in which to seek redress. Further, it is not possible to discount the word ‘warrior’ within the Opponent’s Trade Marks as it forms the entirety of those trade marks: if the word ‘warrior’ was to be discounted, the Opponent would be left with nothing.
Additionally, Mr Lolis’s client is not a sports team but is a trader in sportswear and equipment, as is the Opponent.
Mr Lolis also refers to a game played between the Liverpool Football Club and Melbourne Victory on 24 July 2013. He states:
The Game was played at the Melbourne Cricket Ground before over 95,000 people. When attending the Game I observed that the vast majority of the spectators were LFC supporters. I engaged in conversation with other LFC fans, and it was evident that people had flown in from interstate and from overseas (typically New Zealand) to see the Game. Predictably, LFC supporters chose to wear LFC affiliated clothing and other merchandise.
At the time of the Game, the LFC kit was manufactured by, and on behalf of, the Applicant and the kit featured the Opposed trade mark. The Liverpool kit is now manufactured under the NEW BALANCE brand.
The Opposed Trade Mark appears on the chest of the player on the left and possibly on the nearest leg of his sports shorts.
I observe, however, that soccer uniforms and equipment are not present within the Specified Goods and the object of Mr Lolis’s declaration is unclear.
Mr McKinnon states:
I understand that there may be some WARRIOR branded stock of soccer apparel and related clothing and equipment available for purchase in Australia but this is likely to represent a now superseded product line.
In my consideration the declarations of Mr Lolis and Mr McKinnon establish only that Warrior might have used the Opposed Trade Mark in Australia in relation to soccer uniforms. Soccer uniforms are not contained within the Specified Goods. Moreover, there is no verification of these sales, nor are there details of when these sales started, the quantity of sales, the mode of sale, or where these sales occurred.
However, Exhibit TVL-2 to Mr Lolis’s declaration is an undated[4] declaration by Mr David Morrow who is the President and CEO of Warrior. I note that Exhibit DM-10 to Mr Morrow’s declaration was not filed. Relevantly Mr Morrow states:
The Company rolled out the WARRIOR Brand in Australia in 2009 initially to meet the supply of the relatively small Australian lacrosse and ice hockey market. I understand that although these sports are not mainstream sports in Australia there are a number of local teams as well as representative state and national teams.
[…]
The [Opposed Trade Marks] were first used in Australia by [Warrior] in 2009 and have been used continuously since that date to identify a range of sporting related apparel and equipment (hereinafter referred to as “the said goods”) sold by [Warrior].
[4] The document bears a file date of 14 August 2014.
The statement immediately above is not of great assistance as it sheds no light on the exact nature of ‘the said goods’.
Moreover, while Mr Morrow provides annual wholesale figures for the years 2009 to 2104 and advertising for the year 2014, it is impossible to ascertain whether these figures relate to the sale of soccer uniforms (which are not goods in respect of which Warrior seeks registration of the Trade Mark) or the entirety of the Specified Goods.
Further, while Mr Morrow refers to the sale of goods for use in playing lacrosse and ice-hockey under the Opposed Trade Mark, the exhibits to his declaration do not support this. As examples I reproduce images of a sports shoe which is at Exhibit DM-9 of his declaration:
The stylised alphabetical letter W which is present in the Opposed Trade Marks does not appear adjacent to the word ‘warrior’ within the above images. Subsection 7(1) of the Act provides:
7Use of trade mark
(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note:For prescribed court see section 190.
The expression ‘additions or alterations that do not substantially affect the identity of the trade mark’ was considered by Yates J in Optical 88 Ltd v Optical 88 Pty Ltd (No 2)[5] at 256:
Is the modified ‘707 mark a use of the ‘707 mark with additions or alterations not substantially affecting its identity? In order for that question to be answered affirmatively it is necessary to find that a total impression of similarity emerges from a comparison between the two marks: Carnival at 391; Shell at 414. In my view a total impression of similarity does emerge from a comparison of the modified ‘707 mark with the ‘707 mark itself.
[5] [2010] FCA 1380; (2010) 275 ALR 526; (2010) 89 IPR 457 at [256].
In discussing ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd[6] Windeyer J said:
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.
[6] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12].
In my consideration the stylised alphabetical letter W forms an essential feature of the Opposed Trade Mark and its absence from the images which appear at paragraph [29], above, leads to a total impression of dissimilarity when the Opposed Trade Mark and the trade mark WARRIOR are considered side by side. A trade mark may be composed of two elements both of which are essential features.
These examples (‘the Warrior Word Trade Mark’) within Mr Morrow’s declaration do not, therefore, establish use of the Opposed Trade Marks on ice-hockey and lacrosse goods. In fact, those exhibits support use in Australia by Warrior of the Warrior Word Trade Mark.
This assessment may be affirmed by Mr Morrow’s statement that:
The keystone to the WARRIOR Brand is the “WARRIOR” trade mark which as noted is a tribute to my High School lacrosse team, the Brother Rice High School WARRIORS. The WARRIOR Brand includes a number of different trade marks several of which share the WARRIOR word mark. These trade marks include the trade marks set out in the table below. The key branding aspect of these trade marks is the word “WARRIOR”.
I take the above to be six trade marks which are used by Warrior – it is not clear whether they are all asserted to have been used in Australia but what I infer from Mr Morrow’s declaration is that the above trade marks are each used in relation to the different ranges of goods in which Warrior trades.
Viewed in this light, it appears to me that it is quite possible that the sales and advertising figures supplied by Warrior have been attributed solely to the Opposed Trade Mark but have occurred under each of the trade marks in the table above. These figures might thus be inappropriately conflated and it is therefore impossible to ascertain the extent to which the Opposed Trade Mark might have been used in Australia.
Dealings between the parties
Since the prior dealings between the parties will, in part, contribute to my decisions in these matters it is appropriate to outline them here. Relevant to my decisions, the background and timeline of these dealings[7] is as follows:
[7] This is an edited version of the timeline provided in the declaration of Mr Syn which is well supported by exhibits.
1983The Opponent’s predecessor, Zen Imports Pty Limited filed WARRIOR the trade marks in Australia.
1992Warrior’s first use of the Opposed Trade Mark in the United States.
27 April 2007 Warrior filed in Australia to register the trade mark WARRIOR in plain lettering, TM 1173314. On 15 January 2015 application lapsed on citation of registrations 398525 and 398526 then owned by the Opponent’s predecessor in business.
2009 Warrior asserts that it entered the Australian Market.
16 April 2009 The Opponent is assigned the WARRIOR trade mark registrations 398525 and 398526 and business from its predecessor in title, Zen Imports Pty Limited.
19 June 2012 Warrior’s Australian attorneys wrote a letter to the Opponent requesting co-existence (which it subsequently declines).
3 July 2012The Opponent replies stating it is seeking legal advice, but states its concerns of what appeared to be an imminent launch of Liverpool football shirts bearing the WARRIOR trade mark.
13 February 2013 Opponent sends letter to Warrior objecting to the word WARRIOR appearing on Liverpool Football Club shirts sold in Australia.
4 July 2013 The Opponent’s barrister telephoned Warrior’s attorney during a meeting with the Opponent’s directors. The barrister, speaking to the US Applicant’s attorney, voiced disapproval of anticipated shirt sales that would be foreseeable from the MCG game on 24 July 2013 involving the Liverpool football club.
24 July 2013 MCG soccer match - Melbourne Victory versus Liverpool Football Club. Warrior asserts this was associated with massive sales of Liverpool Football Club shirts bearing the Opposed Trade Mark.
22 October 2013 After various negotiations, the Opponent sends letter to Warrior, with a proposed selling price of the Opponent’s registrations.
8 May 2014Warrior declines the Opponent’s offer to sell the registrations to it.
Section 44
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.
[…]
(3)If the Registrar in either case is satisfied:
(a)that there has been honest concurrent use of the 2 trade marks; or
(b)that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note:For limitations see section 6.
To found its opposition the Opponent must establish that the Opponent’s Trade Marks satisfy each of the following:
1.They have priority dates earlier than those of the Opposed Trade Mark; and
2.They are registered in respect of similar goods as the Specified Goods; and
3.They are substantially identical or deceptively similar to the Opposed Trade Mark.
The Opponent’s registrations have priority dates earlier than those of the Opposed Trade Mark and it is not at issue that the parties’ goods are similar goods.
Warrior, however, submits that the trade marks under consideration are not deceptively similar.
In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd[8] Windeyer J said of deceptive similarity:
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”.
[8] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [13].
I note that the element ‘warrior’ within the Opposed Trade Mark is the sole prominent feature by which those trade marks may be requested and identified. I also note that Mr McKinnon refers to the trade marks as ‘the WARRIOR trade marks’ and ‘the WARRIOR brand’, and that Warrior regards the Opposed Trade Mark as being one of the ‘brand’ of WARRIOR trade marks which appear at paragraph [35], above, and further that the evidence Warrior has filed to establish its honest concurrent use of the Opposed Trade Mark in relation to ice-hockey and lacrosse equipment in fact demonstrates the use of the word ‘warrior’ solus. One is prompted to ask the question, ‘If Warrior cannot properly distinguish between its own trade marks regarding the presence or absence of the alphabetical letter W within them, what does this indicate regarding the likely perceptions of the public at large vis a vis the similarity of the Opposed Trade Marks to the Opponent’s Trade Mark?’
I find that the Opposed Trade Mark is deceptively similar to the Opponent’s Trade Mark.
Honest Concurrent Use
Once a ground under either subsection 44(1) or 44(2) is established, the onus is on an applicant to satisfy the Registrar that it is appropriate that she exercise her discretion to accept the application under the provisions of subsections 44(3) or 44(4).
In McCormick & Co Inc v McCormick[9] (‘McCormick’) Kenny J observed:
Section 44(3) gives the Registrar a discretion to accept an application that would otherwise be rejected under s 44(1) in the case of honest concurrent use or other circumstances making it proper to do so. The authorities establish that the principal criteria for determining whether registration should be permitted pursuant to s 44(3) include:
(1) the honesty of the concurrent use;
(2) the extent of the use in terms of time, geographic area and volume of sales;
(3) the degree of confusion likely to ensue between the marks in question;
(4) whether any instances of confusion have been proved; and
(5) the relevant inconvenience that would ensue to the parties if registration were to be permitted.
See In Re Alex Pirie & Sons Ltd’s Application (1932) 49 RPC 195; (1933) 50 RPC 147 at 159-160; In Re John Fitton & Co Ltd’s Application (1949) 66 RPC 110 at 112; and Stingray Surf Co Pty Ltd v Lister [1997] ATMO 3; (1997) 37 IPR 306 at 310-311. These factors are not necessarily exhaustive of the matters to be considered, but they are a useful guide: see In Re Electrix Ltd’s Application [1957] RPC 369 at 379.
[9] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [30].
The Honesty of the Use
In McCormick Kenny J said of the honesty of the use:
The honesty of concurrent use refers to “commercial honesty, which differs not from common honesty”: see In Re Parkington & Co Ltd’s Application (1946) 63 RPC 171 at 182. In that case, Romer J said at 181-182:
[T]he circumstances which attend the adoption of a trade mark in the first instance are of considerable importance when one comes to consider whether the use of that mark has or has not been an honest user.
And in Tivo Inc v Vivo International Corporation Pty Ltd[10] Dodds-Streeton J said of the assessment of the honesty:
Relevant authorities have taken into account a number of factors in determining whether the applicant adopted the trade mark without knowing of the earlier mark or in the honest belief that no confusion would arise or business be diverted by use of the name. They include:
(a) whether the words which make up the trade mark are common, everyday words. If they are, it is more likely that the use will be found to be honest than would be the case if the words are “invented” or are not such as to be obviously attractive to other traders;
(b) the subsequent conduct of the applicant;
(c) the likelihood of confusion;
(d) the applicant’s knowledge of the opponent’s mark; and
(e) whether the adoption of the mark, and the continued use of it, was surreptitious.
Honest concurrent use requires use of the mark as a trade mark (see McCormick). While a substantial period of use is unnecessary (see PB Foods), longer use may fortify an application under s 44(3)(a). The duration of use should not be considered in isolation from its volume and real commercial value.
[10] 2012] FCA 252 at [246].
In terms of the above tests, word ‘warrior’ is, as I have previously observed, an ordinary dictionary word denoting ‘a person experienced in warfare’.
As nascent rights under subsection 44(3) may arise through use in Australia, it is appropriate that I do not consider the honesty of the adoption of the Opposed Trade Marks by Warrior for use in the United States of America but from the time when those rights might be realized through use in Australia – that is, some date in the year 2009.
It is without doubt that Warrior knew of the Opponent’s Trade Marks before entering the Australian market in 2009 as those trade marks had been cited against Warrior’s application 1173314 under the provisions of subsection 44(1) of the Act in 2007. Due to the provisions in common between subsection 44(1) and section 120 of the Act, Warrior was on notice that its prominent use of the word ‘Warrior’ in a trade mark would likely infringe the registrations of Opponent’s Trade Marks: Warrior had been advised in examination reports by a delegate of the Registrar that its trade mark was substantially identical or deceptively similar to the Opponent’s Trade Mark and its goods were similar to those of the registrations. I note also in this regard that the use relied upon by Warrior to establish honest concurrent use is use (at least in relation to its lacrosse and ice-hockey goods) of the Warrior Word Trade Mark which is substantially identical to the Opponent’s Trade Marks.
Similar views were extensively canvassed by the Opponent in its Statement of Grounds and Particulars and in the declaration in Evidence in Support by Mr Syn. For whatever reason Warrior has not addressed the Opponent’s assertions in its Evidence in Answer. In Jones v Dunkel[11] the High Court observed:
It was right enough to point out, in effect, that the evidence given might be the more readily accepted because it had been left uncontradicted, and that the omission to call Hegedus as a witness could not properly be treated as supplying any gap which the evidence adduced for the plaintiff left untouched. But what should have been added, and not being added was in the circumstances as good as denied, was that any inference favourable to the plaintiff for which there was ground in the evidence might be more confidently drawn when a person presumably able to put the true complexion on the facts relied on as the ground for the inference has not been called as a witness by the defendant and the evidence provides no sufficient explanation of his absence. The jury should at least have been told that it would be proper for them to conclude that if Hegedus had gone into the witness-box his evidence would not have assisted the defendants by throwing doubt on the correctness of the inference which, as I have explained, I consider was open on the plaintiff’s evidence.
[11] [1959] HCA 8; (1959) 101 CLR 298.
Here Warrior has not responded in its evidence to the Opponent’s allegations and I accordingly consider that an adverse inference can be drawn from Warrior’s lack of response to the Opponent’s assertions. That is, that Warrior decided to disregard the conflict with the Opponent’s Trade Marks, launch its goods onto the Australian market and place itself in the position of an ‘assiduous infringer’[12] in order to gain registration of its trade marks. This course of action does not, in my consideration, accord with ‘commercial honesty, which differs not from common honesty’.
[12] Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd [1991] FCA 310; (1991) 30 FCR 326; 101 ALR 700; (1991) 21 IPR 1; [1991] AIPC 90-823.
Therefore, in terms of the tests in McCormick at paragraph [47], above, Warrior has not established the honesty of its concurrent use of the Opposed Trade Mark with the Opponent’s Trade Mark.
For completeness I note that the Opposed Trade Mark is not the trade mark which has been used by Warrior in relation to ice-hockey and lacrosse goods in Australia. Warrior, to judge from the exhibits to Mr Morrow’s declaration, has used the Warrior Word Trade Mark in Australia in relation to ice-hockey and lacrosse goods but not the Opposed Trade Mark. As I have discussed, above, in terms of subsection 7(1) of the Act the use of the Warrior Word Trade Mark is not a use of the Opposed Trade Mark and cannot therefore establish the honest concurrent use of the Opposed Trade Mark with the Opponent’s Trade Mark.
Additionally, it is apparent that Warrior relies in large part on evidence of the concurrent use of the Opponent’s Trade Mark on soccer uniforms; however these goods are not a part of the Specified Goods.
Further, the advertising and wholesale figures provided by Warrior appear to relate to use in Australia of both the Warrior Word Trade Mark and the Opposed Trade Mark. The extent of the concurrent use of the Opposed Trade Mark (if any) is thus impossible to gauge.
For the above reasons Warrior has not, in my consideration, filed evidence which would satisfy the Registrar that it is appropriate to exercise her discretion under subsection 44(3). Accordingly, the Opponent has established its ground under section 44 of the Act.
Decision
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.
And regulation 17A.34N provides:
17A.34NDecision on opposition
(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.
(2)The Registrar must notify the International Bureau of the Registrar’s decision.
I refuse to extend protection to IRDA 1083741 (Australian trade mark application 1439156).
I refuse to register application 1616241.
Costs
Warrior requested its costs in these matters should the oppositions to registration not be established. As the Opponent has been successful, I award costs against Warrior; these costs are to be apportioned between these oppositions in accordance with Latrobe Brewing Company v Simmons[13] and Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd[14] at the official scale set out in Schedule 8 to the Trade Marks Regulations 1995.
[13] (1996) 34 IPR 346.
[14] (2001) 53 IPR 591.
Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
19 October 2017
Key Legal Topics
Areas of Law
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Intellectual Property
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Administrative Law
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Commercial Law
Legal Concepts
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Costs
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Statutory Construction
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Remedies
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