Wenger SA v Courier Luggage Pty Ltd

TRADE MARKS ACT 1995

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

Re:Opposition by Wenger SA to registration of trade mark application 1116042(18) - GREEK CROSS DEVICE - filed in the name of Courier Luggage Pty Ltd.

Delegate:

Alison Windsor

Representation:

Opponent: Julian Cooke of counsel, instructed by Spruson & Ferguson patent and trade mark attorneys

Applicant: Anthony Norris of Collison & Co, patent and trade mark attorneys

Decision:

2011 ATMO 31

S52 opposition: Opposition successful under section 44 – applicant’s trade mark deceptively similar to opponent’s earlier registered trade mark – application for permission for opponent to rely on further evidence refused.

Background

Courier Luggage Pty Ltd (‘the applicant’) filed an application to register a trade mark, current details of which are shown here:

Application number: 1116042

Filing date: 30 May 2006

Goods specification:  Class 18 - Travel goods and luggage including bags, cases, trunks, trolley cases, suitcases, garment bags, wet packs, toiletry bags, backpacks, beauty cases, parts and accessories for these goods
Trade mark:            (‘the applicant’s trade mark’)
Endorsement:  It is a condition of registration that, in use, the cross device contained within the trade mark will be rendered in colours other than red on a white or silver background, or white or silver on a red background.

The application was examined as required by section 31 of the Trade Marks Act 1995 (‘the Act’) and following the applicant’s agreement to the condition of registration appearing in the endorsement shown above, it was accepted for possible registration. The acceptance was advertised in the Australian Official Journal of Trade Marks on 28 September 2006.
Wenger SA (‘the opponent’) sought and was granted an extension of time in which to file a notice of opposition (‘the Notice’) to registration of the applicant’s trade mark. The Notice was filed on 28 March 2007 and included grounds under the following sections of the Act: 41, 42, 43, 44, 58, 59, 60, 61 and 62.
The opponent’s evidence in support and the applicant’s evidence in answer were served and filed in due course. The opponent applied for and was granted an extension of time in which to serve and file its evidence in reply.
On 20 November 2009 the opponent requested that the Registrar issue a notice requiring that the applicant produce certain documents (‘the Notice to Produce’). The Registrar issued the Notice to Produce on 25 January 2010, allowing the applicant until 25 March 2010 to provide the requested documentation. The opponent stated that:
The documents requested in the Notice to Produce are relevant for the purposes of the Opposition. In addition, given that the documents include documents relating to the activities of the Opponent, the Opponent should be given the opportunity to review any documents which may clarify the applicant’s Evidence-in-Answer, which in turn would allow the Opponent to finalise any Evidence-in-Reply.
The applicant provided documents in response to the Notice to Produce on 25 March 2010.
The opponent then applied for and was granted further extensions of time for the service and filing of its evidence in reply, which was finally served on 28 June 2010 and filed shortly thereafter. The opponent then asked to be heard, and I was delegated to hear the parties in Sydney on 16 November 2010.
On 8 November 2010, the opponent filed and served an application for permission to serve further evidence. The opponent specifically requested that the issue of permission to serve the further evidence be determined at the commencement of the hearing of the opposition. I agreed to this request, and the parties appeared before me at the appointed time. The opponent was represented by Julian Cooke of counsel, instructed by Rohan Singh of Spruson & Ferguson Patent and Trade Mark Attorneys. The applicant was represented by Anthony Norris of Collison & Co Patent and Trade Mark Attorneys.

Application for permission to serve further evidence

As this matter must be decided prior to the substantive opposition, I shall deal with it first.
The application for permission to serve further evidence is accompanied by three declarations. Two of these are made by Rohan Charles Singh, a solicitor representing the opponent. One of these declarations is a covering declaration in support of the application for permission to serve further evidence; the other serves to correct errors made in one of the declarations provided as evidence in support.
The third declaration comprises the further evidence. It consists of a declaration made by David Lambert, general manager of Travelgoods.com, a distributor of the opponent’s goods in Australia. The declaration was made on 8 November 2010. At paragraph 4 of his declaration Mr Lambert provides information about a chain of e-mail correspondence between Mr Rohit Chavda and the opponent which was received in September 2010. Mr Chavda had e-mailed the opponent with a request for a replacement part for a broken trolley mechanism on a small suitcase which he described as “a swissgear small suitcase”. Subsequent queries by members of the opponent’s staff ascertained that the suitcase had been purchased in Australia, and photographs subsequently provided by Mr Chavda show a suitcase bearing the applicant’s trade mark.
Paragraphs 5 to 13 of the declaration provide information in support of Mr Lambert’s claim that the opponent has an established reputation in Australia, both amongst wholesale consumers and retail consumers. Paragraph 14 gives Mr Lambert’s opinions about the likelihood of the goods shown in the Chavda photographs being mistaken for those of the opponent.
For the opponent, Mr Cooke submitted that the accepted tests for deciding if it is appropriate to allow an application for further evidence may be found in the Registrar’s decision in Studio SrL v Buying Systems (Aust) Pty Ltd (1991) 22 IPR 580. He quoted the tests from the decision as:
·     it must be shown that the evidence could not have been obtained with reasonable diligence at an earlier stage;
·     the evidence must be such that, if given, it would probably have an important influence on the result of the case and
·     that the evidence must be such as is presumably to be believed, ie it must be apparently credible, though not necessarily incontrovertible.
Mr Cooke said that Mr Lambert is independent of the opponent as he is an authorized distributor but has no contractual arrangement with the opponent. He has provided evidence of a recent instance of confusion occurring because of the applicant’s use of its trade mark. In addition, Mr Cooke said, there is a strong public interest in ensuring that any evidence relevant to the issue under consideration is allowed into consideration. He said that the evidence provided does not break new ground, and goes directly to the matter of the likelihood of deception and confusion in the Australian market. He also noted that the evidence had already been served on the applicant, who, according to Mr Cooke, had chosen not to respond to it.
Mr Norris for the applicant queried the relevance of the further evidence with respect to the incident of confusion because it related to an occurrence in September 2010, more than four years after the filing date (30 May 2006). He referred to Part 51 of the Trade Mark’s Office Manual of Practice and Procedure (‘the Manual’) and submitted that none of the further evidence fell within the guidelines which are set out there. He specifically referred to Mr Cooke’s comment about the applicant having chosen not to comment on the further evidence, and noted that paragraph 2.4.2 of Part 51 of the Manual specified that the Registrar must not grant the application unless she has given the parties a reasonable opportunity to make representations concerning the application. He stated that the applicant had not had a reasonable chance to respond.
Paragraph 2.4 of Part 51 of the Manual deals with further evidence. Paragraph 2.4.2 in part states the following:
The Registrar must not grant the application unless he or she:
·     is satisfied that the party seeking permission to serve the further evidence has given a copy of the application and supporting documentation to the other side,
·     has given the parties a reasonable opportunity to make representations concerning the application which may be made at a hearing, or by other means allowed by the Registrar (a period of fourteen days from the date on which the notice was given to the other side is considered to be reasonable for either side to make representations), and
·     is satisfied that the giving of the further evidence is appropriate in the circumstances (subreg 5.15(3)).
In this case, the applicant was served with a copy of the application by e-mail on 8 November 2010, with a hard copy following by mail at a later date. The opposition hearing was set for 16 November 2010, only eight days later. The applicant certainly did not have a 14 day period in which to respond to the application before the hearing, but did have the opportunity to make representations at the hearing.
In the circumstances peculiar to this case, I am not satisfied that the opponent’s proposed further evidence will have an important influence on the outcome of this case. The applicant is quite correct in noting that all the evidence post-dates the relevant date by over four years. Paragraphs 5 to 13 of the Lambert declaration, as well as Exhibit DL-3, contain information which is either very recent, such as copies of web pages downloaded from the internet on 8 November 2010, or which could have been provided much earlier in proceedings.
The information covered by paragraph 4 of the declaration and Exhibit DL-2 also post-dates the relevant date, but as Mr Singh declared in his covering declaration, it could not have been obtained earlier for the simple reason that it did not exist. That may well be true, and if I considered that evidence of confusion occurring recently would be crucial to the decision I must make, I would allow the evidence into proceedings. However, that is not the case, as will become obvious later in this decision.
Paragraph 14 of the Lambert declaration consists of Mr Lambert’s opinion only, and in respect of a hypothetical situation. It does not add anything of value to these proceedings.
In summary, I consider that the opponent’s proposed further evidence is not of sufficient influence that it is appropriate to grant permission. I refuse the opponent’s application for permission to serve further evidence.

Evidence

The following declarations were filed and served as evidence in these opposition proceedings during the periods allowed for that purpose.

Evidence in Support

Dawn Heaney Kirkbride Logan Keeffe, made 26 June 2008, with Exhibits DLK-1 to DLK-4 and Confidential Exhibit DLK-5
John Pulichino, made 29 July 2008, with Confidential Exhibit JP-1A and Exhibits JP-1 to JP-10
Peter Hug, made 18 August 2008 with Exhibits WEN-1 to WEN-5; WEN-9 to WEN-10; and Confidential Exhibits WEN-4A, WEN-4B, and WEN-6 to WEN-8
David Lambert, made 27 August 2008, with Exhibit DL-1 (‘Lambert 1’)

Evidence in Answer

Bryon Martin, made 26 May 2009, with Exhibits BM1 to BM5

Evidence in Reply

David Lambert, made 28 June 2010 (‘Lambert 2’)

Also included as part of the evidence I have considered are the documents received as a result of the issue of the Notice to Produce (‘the Produced Documents’), which I referred to earlier at paragraphs 5 and 6.

Grounds pursued and Onus

At the hearing the opponent pursued grounds of opposition in respect of sections 44, 60 and 42(b). As a formality, and for completeness of my decision, I decide that none of the other grounds indicated on the Notice have been established.
The onus is upon the opponent to establish one or more of the grounds of opposition it has pursued on the balance of probabilities.[1] The time at which the ground of opposition must be established is the date of filing of the application.[2]
[1] Pfizer Products Inc v Karam (2006) 70 IPR 599, per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 at [22] to [26].
[2] Southern Cross Refrigerating co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592; Winton Shire Council v Lomas (2002) 56 IPR 243; Lomas v Winton Shire Council [2003] AIPC 91-839;

Reasons

I have decided this matter under the provisions of section 44 of the Act, and my reasons follow.
In order to establish a ground of opposition under the provisions of section 44, the opponent must be able to point to an earlier dated trade mark application or registration owned by another person which claims the same or similar goods and which is at least deceptively similar to the application trade mark.
While the ground of opposition relevant to section 44 was included in the Notice, the opponent did not specify a trade mark with an earlier priority date at that time. However, in his outline of submissions Mr Cooke nominated as a conflicting trade mark registration number 871532 which is owned by Victorinox AG.[3] The trade mark has a priority date of 3 April 2001 and is registered for goods in classes 9, 18, 21 and 25. The goods in class 18 are the relevant goods for the purposes of section 44 and are as follows:
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; knife sheaths of leather; travelling trunks and valises; beach bags, bags for campers, shopping bags, handbags, travelling bags, school bags; rucksacks; umbrellas, parasols and walking sticks
[3] Victorinox AG acquired the opponent during 2005. However, both companies retain their individual brand identities (paragraph 15, Hug declaration).
The trade mark the subject of registration 871532 is shown below:
(‘the Victorinox trade mark’)
Mr Cooke argued that the two trade marks are deceptively similar and claim the same or similar goods. He submitted that on the basis of imperfect recollection the two trade marks are likely to be confused in the marketplace. He also argued that the provisions of subsections 44(3) and 44(4) could not be applied because the applicant’s evidence did not show appropriate use to establish honest concurrent use (ss 44(3)), and that the Victorinox trade mark has a priority date much earlier than any documented use the applicant has provided (ss 44(4)).
In respect of honest concurrent use, Mr Cooke argued that the documents provided by the applicant would not enable it to establish the honesty of any concurrent use because the Pulichino declaration and the Produced Documents make it clear that the applicant was aware of the Victorinox trade mark and its association with the opponent before adopting its trade mark. He referred specifically to the correspondence between the parties which evidence the applicant’s attempts to negotiate a license to distribute the opponent’s goods within Australia, and the opponent’s discovery that the applicant had contracted a company in China to commence production of goods bearing the applicant’s trade mark even though negotiations were not complete. Mr Cooke said that this discovery caused the negotiations to ‘evaporate’ but notwithstanding this, the applicant deliberately adopted its trade mark. Mr Cooke submitted that registration of the applicant’s trade mark should be refused.
Mr Norris for the applicant noted that the only similarity between the two trade marks is the cross device, and he argued that cross devices are commonplace on the Register. He identified 54 registered or pending trade marks in class 18 which include a Greek cross as part of the trade mark, the same cross device appearing in the applicant’s and opponent’s trade marks. He argued that the differences between the two trade marks far outweigh the similarities, and noted that the prior registration was not cited by the examiner at the time of examination.[4] He argued that on the most generous assessment of imperfect recollection the two trade marks are simply not deceptively similar, and noted that the applicant did not seek to rely on ss 44(3) and 44(4).
[4] I note here that it is unlikely that the examiner was even aware of the opponent’s registered trade mark as her search strategy was such that she would not have found it.
The Victorinox trade mark has a registration date which is some years earlier than that of the application, and the goods in class 18 for which it is registered are the same or similar to those the applicant is claiming. The only remaining matter in order to establish the ground of opposition under section 44 is whether the trade marks themselves are either substantially identical or deceptively similar.
The expression ‘substantially identical’ is not defined in the Act. However, is has been discussed at length in many decisions made by the Registrar and by the courts. It is generally assessed according to the test in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 (‘Shell’)where Windeyer J said at page 414:
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. at p 298, where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity, my opinion is ….
The essential feature of both of the trade marks under consideration is a device commonly described as a “Greek cross”. In the Victorinox trade mark the cross device is mounted on a horizontal bar inside a shield shaped border. In the applicant’s trade mark the cross device is contained within a square with rounded corners, but with no connecting bars. While there are strong similarities between the trade marks, my opinion is that they are not substantially identical.
In discussing deceptive similarity in Shell, Windeyer J went on to say
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.
Here the share the Greek cross as a common element, and that element is the most striking part of each trade mark. I note also that the applicant’s trade mark application bears the so-called ‘Red Cross’ endorsement as a condition of registration.[5] This endorsement restricts the colours in which the trade mark may be used in commerce and the evidence provided by the applicant, as well as the representation supplied at the time of filing, both show the trade mark rendered in silver or grey and blue.
[5] See paragraph 1 of this decision.
The Victorinox trade mark does not carry that same endorsement and may thus be used in any colour at all.[6] While the evidence provided shows that the opponent renders the cross devices in its trade marks in a red colour, its trade mark registration gives it the right to use the trade mark in any colour or colour combination it chooses, and that includes the same colours as those used by the applicant. However, even without considering colours, the general impression of both trade marks is that of a Greek cross within some kind of border.
[6] See s 70 of the Act which provides:
(1) A trade mark may be registered with limitations as to colour.
(2) The limitations may be in respect of the whole, or a part, of the trade mark.
(3) To the extent that a trade mark is registered without limitations as to colour, it is taken to be registered for all colours.

Concerning the comparison of the trade marks and deceptive similarity, Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at page 658 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. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.
More recently, French J, with Tamberlin J agreeing, made the following propositions in Woolworths Ltd v Registrar of Trade Marks (1999) 45 IPR 411 at 428:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) 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.
(iii) 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.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Co Inc (1973) 129 CLR 353 at 362:
"the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."
Taking everything into consideration, I am satisfied that the impressions formed of each trade mark are so similar that there is a real tangible danger of deception or confusion occurring. I am satisfied that the applicant’s trade mark is deceptively similar to the opponent’s trade mark, and that the ground for opposition relating to section 44 has been established. Thus, there is no requirement for me to consider the other grounds pursued by the opponent, although I note that these grounds or any others in the Act may be relied on in the event of an appeal from this decision.

Decision

Section 55 of the Act provides:
55. Unless the proceedings are discontinued or dismissed, 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.
As the ground pursuant to section 44 has been established, I refuse to register trade mark application 1116042.

Costs

The opponent has been successful and is entitled to its costs, which I award against the applicant according to the official scale.

Alison Windsor

Hearing Officer

Trade Marks and Designs Hearings

6 April 2011

[2011] ATMO 31

6 April 2011

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Commercial Law

Intellectual Property

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