Williamson-Dickie Manufacturing Company v Richard Magney

[2012] ATMO 81

TRADE MARKS ACT 1995

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

Re:Opposition by Williamson-Dickie Manufacturing Company to registration of trade mark application No. 1300995 (25) – Dickie Peacock - filed in the name of Richard Magney.

Delegate:	John Spence
Representation:	Opponent: Ms Roseanne Mannion, Solicitor, of Spruson & Ferguson, Patent and Trade Mark Attorneys, assisted by Mr. Ken Hamilton Applicant: Ms. Rebekah Gay, Solicitor, of Shelston IP, Patent and Trade Mark Attorneys
Decision:	2012 ATMO 81 Section 52 opposition – grounds pressed under Sections 42(b), 44, and 60. Grounds not established – application allowed to proceed. Costs awarded against the Opponent.

Background

1.This matter concerns opposition proceedings brought by Williamson-Dickie Manufacturing Company (“the Opponent”) pursuant to Section 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark which is the subject of the application detailed below and in the name of Richard Magney (“the Applicant”):

Application Number:             1300995
Priority Date:    26 May 2009  (“the Priority Date”)

Goods:Class 25: Socks; apparel (clothing, footwear, headgear)

(“the Goods”)

Trade Mark:      Dickie Peacock  (“the Trade Mark”).

2.     The application has been the subject of examination and it was advertised in the Australian Official Journal of Trade Marks dated 24 September 2009 as having been accepted for possible registration.

3.     On 24 March 2010 the Opponent of Forth Worth, Texas, U.S.A. filed and served a Notice of Opposition in respect of the application (“the Notice”). Subsequently, by covering letter dated 7 January 2011, and after the obtaining of appropriate extensions of time within which to do so, the Opponent served the evidence in support on which it seeks to rely.

4.     In turn, the Applicant proceeded to file and serve its evidence in answer by covering letter dated 23 March 2011. The Opponent did not seek to put on evidence in reply or any further evidence. By correspondence dated 5 September 2011, the Opponent requested that this matter be set down for a hearing.

5.     As a delegate of the Registrar of Trade Marks, I heard the parties in Sydney on Monday 16 April 2012. On that occasion, the Applicant was represented by Rebekah Gay of Shelston IP, Patent and Trade Mark Attorneys. The Applicant also appeared. The Opponent was represented by Roseanne Mannion of Spruson & Ferguson, Patent and Trade Mark Attorneys, assisted by Ken Hamilton from that firm.

6.     Prior to the hearing, the attorneys for the respective parties provided an outline of their submissions. Those written submissions were supplemented by oral submissions made in the course of the hearing.

Grounds of Opposition

7.     The Notice includes most of the allowable grounds under the Trade Marks Act 1995 (“the Act”). However Ms. Mannion indicated in her submissions that the Opponent was pressing only those three grounds corresponding to Sections 42(b), 44 and 60 of the Act. For the sake of completeness, I find that the remaining grounds as set out in the Notice are not established.

The Evidence

8.     The evidence in support consists of the Statutory Declaration of Michael Penn made on 22 December 2010. Mr. Penn is Vice President, Worldwide Licensing and International Sales with the Opponent and he has occupied that position since March 2009. In that role, Mr. Penn has been involved in the distribution and sale of goods which bear trade marks containing or consisting of the element DICKIES. His evidence can be summarised as follows:

·the Opponent, founded in Prahn, Texas in 1918, was originally engaged in the “vehicle and harness business”;

·during World War II, the Opponent produced uniforms for the armed forces, and after the war it moved production to civilian clothing;

·today the Opponent is the “number one” manufacturer of work apparel throughout the world and it has expanded its range of goods to offer garments ranging from work pants and work shirts to items such as women’s work wear, chalk coats, denim jeans, men’s, women’s and children’s clothing and footwear, socks, gloves, boots and shoes;

·the Opponent’s goods are sold throughout the world, and the Opponent is the owner of a number of registrations for the trade mark DICKIES and combination trade marks containing the element DICKIES (collectively “the Opponent’s trade marks”) in the U.S.A., Australia and a number of overseas countries;

·the first use of the Opponent’s trade marks in Australia occurred in June 1994 in relation to pants, shorts, skirts, jackets, t-shirts, sweatshirts, caps and bags for men, women and children;

·in 2005 that use was extended to include gloves and socks;

·the Opponent’s trade marks have been continuously used in Australia in all States and Territories since 1994;

·the Opponent has appointed an authorised licensee which operates the website on which the Opponent’s trade marks are displayed;

·the Confidential Annexure SJ-4 sets out particulars of the annual wholesale figures in respect of sales in Australia by the Opponent from 2003 to 2010. Those sales figures indicate turnover of a significant order but not overwhelmingly so;

·use of the Opponent’s trade marks is said to occur on the goods themselves, on packaging, labels, swing tags, brochures, sales literature, invoices, promotional merchandise, websites, catalogues, price lists, vehicle signs; building and shop signage, in print and radio advertising and on stationery and letterhead;

·the Opponent’s trade marks are promoted and advertised in Australia through print, pamphlets, posters, point of sale material, the Internet, radio, television, catalogues, building and vehicle signage, sponsorship, in-store products, trade fairs and exhibitions;

·the Opponent’s licensee holds two “mega sales” each year;

·goods bearing the Opponent’s trade marks have been advertised in a number of magazines and print media in Australia and on MTV Australia (a subscription television channel). In 2005 the Opponent’s licensee sponsored the Australian tour of the French-Canadian pop punk band Simple Plan; and

·particulars of advertising and promotional expenditure relating to goods sold in Australia under the Opponent’s trade marks are given on a confidential basis in Annexure SJ-8.

9.     The Opponent’s evidence primarily goes to the assertion on its part of the existence of a substantial reputation in Australia in respect of use of the element “DICKIES” as a trade mark.

10.     The evidence in answer comprises the Statutory Declarations of the Applicant made on 22 March 2011 and of Michael Deacon made on 23 March 2011. The Applicant provides evidence as to the history and background of the Trade Mark. He states that in February 2009 he decided to develop a business that would produce a range of unique and distinctive socks as well as other clothing accessories and apparel. In May 2009, while attending a dinner party, one of his friends referred to him (presumably facetiously) as “Dickie Peacock”. He indicates that he then decided to use it as the name for his intended business. He took a number of preparatory steps. On 26 May 2009 he filed the trade mark application which is the subject of the present proceedings. On the same day he sought and obtained registration of the domain name dickiepeacock.com in the name of the company Millenium International Pty. Limited (A.C.N. 121 629 570) of which he is the sole director and shareholder as well as the company secretary.

11.     While the Applicant’s activities after 26 May 2009 are not directly relevant to this opposition, I note that the company changed its name to Dickie Peacock Pty. Limited as from 19 February 2010. The Applicant has since taken the further step of engaging the services of the graphic art and web designer Stop.Edit to develop a logo for use with the Trade Mark, and various concepts in this regard were provided to him on or about 3 September 2010. During the period from September 2009 to March 2011 he promoted the Trade Mark through a networking group known as the Friday Club which he organises and which hosts regular business networking events in Sydney and Melbourne. The Applicant further states in his declaration that he intends launching a range of socks and apparel under the Trade Mark. He declares that prior to the commencement of the Opposition proceedings he had never heard of the Opponent’s trade marks.

12.     Mr. Deacon, a solicitor employed by Shelston IP, gives evidence that he attended school with the Applicant who was known by the nickname “Dickie”. In the course of carrying out research and preparatory work in relation to this matter, Mr. Deacon found a book entitled 35,000 +Baby Names-The Largest Selection of Popular and Unusual Names from Around the World by Bruce Lansky (1996 edition) in which (at pages 439 and 298 respectively) the name “Dick” is said to be an abbreviation or equivalent of the name “Richard” while “Dickie” is listed as an equivalent or variation of the name “Dick”. Mr. Deacon also states that he has conducted searches both online and through the State Library of New South Wales and particularly in relation to those magazines and publications on which the Opponent seeks to rely as indicating use of its trade marks in Australia. His enquiries indicate that the first edition of UFC Magazine went on sale in February 2011 (that is, after the Priority Date), that Beat Magazine circulates only in Melbourne, that Australian Ink Magazine launched on 16 June 2009 (again, postdating the Priority Date), and that the first issue of Rugby League Player Magazine was dated May/June 2009 (arguably later than the Priority Date) and it contained no advertising which made reference to any of the Opponent’s trade marks. His review of the seven issues of Crusty Magazine published from March 2008 to April 2009 indicated that only the March/April 2009 issue (which contained two small images of a t-shirt bearing the word “DICKIES” in a stylised font) appeared to have any relevance.

13.     Additionally, Mr. Deacon gives evidence of a search of the online records of the Trade Marks Office which he conducted and which located two prior existing registrations in Class 25 for the trade mark DICKIES (Nos.416180 and 1198095) owned by Australian Weaving Mills Pty. Limited (“AWM”). He states that AWM also has a website at which features the trade mark DICKIES in use for Class 25 goods.

14.     In summary, the evidence of Mr. Deacon identifies apparent anomalies and shortcomings in the materials on which the Opponent has sought to rely as substantiating the reputation of the Opponent’s trade marks in Australia and in particular in relation to the promotion of goods bearing the Opponent’s trade marks through the circulation of magazines and publications in this country.

15.     As earlier indicated, the Opponent has not served or filed any evidence in reply and so, with the Applicant’s evidence being unchallenged, the inference might be drawn that the Opponent does not dispute that evidence.

Submissions

16. The Opponent’s submissions address two primary issues: firstly, the extent of the reputation of the Opponent’s trade marks in Australia and second, the claimed substantial identity or deceptive similarity of the Trade Mark to the Opponent’s trade marks. In this regard, the Opponent relies upon the same trade marks as are set out in the table below (“the Opponent’s Registrations”) in relation to each of its grounds of opposition pursuant to Sections 44, 60 and 42(b) of the Act:

Number	Mark	Goods	Lodgment Date
488659	Class: 25 Men’s and boys’ trousers, jeans, shirts, coveralls, overalls, jackets and shorts; none of the foregoing being made out of towelling	9 June 1988
952564	DICKIES GIRL	Class: 18 Goods made from leather and imitations of leather; belts, wallets, purses; nags including tote bags, school bags, book bags and back packs Class: 25 Clothing and apparel for girls and women, including long and short sleeved T-shirts, tops, baseball-style tops, tank tops, shirts, sweatshirts, sweaters, jackets, bib overalls, short-alls, skirt-alls, skirts, dresses, pants, jeans and slacks, excluding dressing gowns, bathrobes and clothing made from towelling; headgear including hats and caps; footwear	2 May 2003
952569	Class: 18 Goods made from leather and imitations of leather; belts, wallets, purses; bags including tote bags, school bags, book bags and back packs Class: 25 Clothing and apparel for girls and women, including long and short sleeved T-shirts, tops, baseball-style tops, tank tops, shirts, sweatshirts, sweaters, jackets, bib-overalls, short-alls, shirt-alls, skirts, dresses, pants, jeans and slacks, excluding dressing gowns, bathrobes and clothing made from towelling; headgear including hats and caps; footwear	2 May 2003
964159	Class: 25 Clothing, headgear and footwear; none of the foregoing being shave coats, dressing gowns, bathrobes or goods made out of towelling Class: 41 Educational, entertainment and cultural activities in this class including the organisation and running of competitions and awards and the presentation of awards	1 August 2003
964197	Class: 25 Clothing, headgear and footwear; none of the foregoing being shave coats, dressing gowns, bathrobes or goods made out of towelling Class: 41 Educational, entertainment and cultural activities in this class including the organisation and running of competitions and awards and the presentation of awards	1 August 2003
1282635	Class: 18 Goods made from leather and imitations of leather; bags, backpacks, schoolbags, tote bags, purses, wallets and belts Class: 25 Men’s, women’s and children’s clothing and footwear excluding shavecoats, dressing gowns, bathrobes, slippers and other clothing made from towelling; pants, shirts, jeans, coveralls, overalls, jackets, vests, T-shirts, underwear, socks, gloves, skirts; boots and shoes	23 January 2009
1346467	Class: 25 Men’s, women’s and children’s clothing and footwear excluding shavecoats, dressing gowns, bathrobes, slippers and other clothing made from towelling; pants, shirts, jeans, coveralls, overalls, jackets, vests, T-shirts, underwear, socks, gloves, skirts; boots and shoes	17 February 2010

17.     The Opponent’s submissions are essentially as follows:

·that the Trade Mark is substantially identical  with each of the Opponent’s Registrations because the dominant component or “essential feature” of each of those marks is the element DICKIE;

·that trade marks can differ in minor ways and yet be substantially identical. In this instance, the additional word “Peacock” does not distinguish the Trade Mark from any of the Opponent’s Registrations;

·in relation to deceptive similarity, the relevant test (as outlined by Justices Dixon and McTiernan in Australian Woollen MillsLimited v. F.S. Walton & Company Limited (1937) 58 CLR 641) does not require there to be an intention to deceive or cause confusion;

·on the question of deceptive similarity the marks ought not to be compared on a side by side basis but rather it is the impression based on recollection of the Trade Mark and which persons of ordinary intelligence and memory would have which is important;

·a real tangible risk of confusion or deception is necessary for a finding of deceptive similarity, and a mere possibility is not sufficient;

·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 come from the same source;

·the test in considering deceptive similarity requires regard to be given to the impression of the trade marks which is likely to be formed;

·as well, allowance must be made for a degree of “imperfect recollection” of the Opponent’s Registrations;

·for the purposes of Section 44, the marks under comparison must be assumed to be used in a “normal and fair manner” for all the goods (or services) of the registrations or applications which are relied upon and of the opposed application respectively. The statutory rights of both parties are to be compared rather than the actual modes of use, as the trade marks do not need to have been used at all;

·a comparison of the respective marks establishes that the Trade Mark is visually and aurally similar to the Opponent’s trade marks given the common or shared element DICKIE;

·the word DICKIES is the essential element of each of the Opponent’s Registrations and the only way in which consumers will verbalise these marks;

·in this instance, the Goods are identical to the Class 25 goods which are covered by the Opponent’s Registrations, the consumers of those goods are in principle the same (namely, persons wishing to purchase clothing, footwear and headgear), and the respective goods are in principle available for purchase through the same outlets;

·the Opponent is said to have created a “family” of trade marks featuring the element DICKIES, thereby increasing the likelihood that instances of deception or confusion might arise and that consumers would be caused to wonder or entertain a reasonable doubt as to a possible common origin of the respective goods;

·in relation to the Section 60 ground the evidence establishes a reputation in Australia in respect of the Opponent’s trade marks;

·a significant number of consumers would, on seeing the Trade Mark in use for the Goods, at least be caused to wonder whether such products come from the Opponent or would entertain a reasonable doubt as to the existence of a connection between the Trade Mark and the Opponent’s trade marks;

·in relation to the Section 42(b) ground, use of the Trade Mark would be contrary to law because the established reputation of the Opponent’s trade marks makes it clear that members of the public on seeing the Trade Mark in use in respect of the relevant goods would be misled into believing that the relevant goods were provided by or otherwise associated with the Opponent thereby constituting a breach of Sections 18 and 29 of the Australian Consumer Law 2010; and

·as the Opponent has established grounds of opposition under Sections 44, 60 and 42(b) of the Act, registration of the pending application No. 1300995 should be refused.

18. The submissions of the Applicant focus on the issues of the standard of proof and the presumption of registrability, on challenging the evidence of reputation on which the Opponent relies, and on pointing to the differences between the respective trade marks. The Applicant’s conclusions are that there is no real tangible danger or deception or confusion occurring by reason of a notional use of the Trade Mark and that the Opponent’s evidence does not establish sufficient reputation to satisfy the requirements of Section 60 of the Act or Sections 18 or 29 of the Australian Consumer Law 2010.

19.     In her written submissions, Ms. Mannion argued that the evidence establishes the necessary reputation in the Opponent’s trade marks and that this reputation and the likelihood of deception or confusion arising therefrom “has not been disputed by the Applicant”. This statement is both incorrect and misleading. In fact, both in its evidence in answer and in its attorney’s submissions, the Applicant has launched a trenchant and sustained attack against the evidence on which the Opponent seeks to rely (consisting solely of the declaration by Michael Penn), thereby exposing numerous points of weakness, deficiencies and limitations in that evidence. The salient aspects of those criticisms may be summarised as follows:

·Mr. Penn assumed his position as Vice President only two months before the Priority Date;

·Mr. Penn’s view of the evidence regarding the extent of use and reputation of the Opponent’s trade marks in Australia must be given limited weight;

·there are difficulties with the evidence of sales. In particular it is unclear which marks have been used in Australia and in what form;

·there is no evidence of the extent of sales effected under the Opponent’s trade marks in Australia from 1994 to 2003 even though evidence of that nature would presumably have been available to the Opponent. The fact that the Opponent has chosen not to provide such evidence raises the inference that those sales did not assist the Opponent’s cause;

·the history of its filings suggests that before 2003 not much was going on in Australia for the Opponent;

·Mr. Penn’s evidence that use of the Opponent’s trade marks on gloves and socks had taken place since 2005 does not establish that any such use occurred in Australia;

·while Mr. Penn provides details of customers in Australia, there is no indication as to whether such customers are either local or current or whether they existed as at the Priority Date;

·Mr. Penn does not identify “the Opponent’s authorized Licensee”;

·Annexure SJ-3 is said to be a printout of the web home page However it is not made clear when that printout was made, and by inference it is likely to have been made on 22 December 2010 (being the date on which the declaration was made) and thereby to postdate the Priority Date;

·in relation to paragraph 21 and Annexure SJ-5, which purports to be samples of the Opponent’s Registrations in use, no indication is given that the four examples which are provided relate to use before the Priority Date. Rather, due to the present tense which is used in the wording of paragraph 21, the suggestion is that they are current (rather than historical) examples;

·in relation to paragraph 22 and the Annexure SJ-6, the last seven pages of that Annexure appear to be a brochure. References to “Twill” and “oz” (being the abbreviation for “ounce”) on every page, to 21” and 13” (meaning “21-inch” and “13-inch” respectively) at pages  3 and 5, and to “cellphone” (at page 5) arguably indicate that this brochure is intended for trade customers in the U.S.A. and not for consumers in Australia. As such, this evidence should be discounted;

·paragraph 23 of the Penn Declaration refers to the conduct of a “mega sale” at Collingwood, but that sale took place after the Priority Date;

·other advertisements, You Tube printouts and materials in Annexure SJ-7 are undated so that it is not known where or when they were published; and

·in relation to paragraph 25, the magazines and print media advertisements which are referred to are shown (in the declaration of Michael Deacon at paragraphs 4-11) to postdate the Priority Date in many instances.

Discussion

Preliminary

20. Section 55(1) of the Act states:

(1)  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.

Section 55(1), by virtue of the reference to “any ground”, makes it clear that the Opponent need only establish one of its grounds of opposition. The Opponent bears the onus in this regard. The relevant date for determining the rights of the respective parties is the Priority Date, that is 26 May 2009.

21. Section 33 (1) of the Act, which provides that the Registrar must accept an application unless satisfied that there are grounds for rejecting it, gives rise to a presumption of registrability. In this regard, the Registrar should approach the question of registration with the presumption of registrability in mind (per Justice Lander in Kowa Co. Limited v. N. V. Organon (2005) 66 IPR 131 at [139]). In Blount v. Registrar of Trade Marks (1998) 40 IPR 498 at 503, Justice Branson observed that Section 33 “has, in effect, altered the burden of proof generally so far as acceptance of applications is concerned” and that the terms of Section 33 (1) were presumably intended to reflect the introduction of a presumption of registrability (that is, a presumption in favour of the Applicant). This issue has been raised in the present proceedings where in its submissions the Applicant has specifically sought to place reliance on the presumption of registrability as a relevant factor in the determination of this matter and in favour of the Applicant.

22.     There arises the issue as to how the matter of onus is to be judged, with the Opponent having submitted that the relevant test is that of the balance of probabilities while the Applicant argued that the higher standard of proof (namely, that “the trade mark should clearly not be registered”) is the appropriate test in this instance. In arriving at my decision, I have applied the ordinary test of the civil standard of proof (that is, on the balance of probabilities) and in so doing I have followed the prevailing practice which is consistently adopted by delegates of the Registrar.[1]

[1] Following Gyles J in Pfizer Products Inc. v. Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40], Allergan, Inc v Di Giacomo (2011) 94 IPR 541 per Stone J at [11] to [12]; Fry Consulting Pty. Limited v. Sports Warehouse Inc. (2012) AIPC 92-436 per Dodds-Streeton J at [13]; Nexans S.A. v. Nex 1 Technologies Company Limited [2012] FCA 180 per Murphy J at [9]; and Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per McKerracher   J at [9] to [10].

Section 44

23. Only Section 44(1) of the Act is relevant in this instance,[2] This section provides:

[2] Subsection 44(2) does not apply since it relates to services. Subsections 44(3) and (4) are not relevant because there is no evidence before me of use or other circumstances relating to the Trade Mark.

Identical 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.

1. The requisite elements which need to be satisfied for the purposes of Section 44(1) in relation to the present application are:

   ·     as at the Priority Date, there was a substantially identical or deceptively similar trade mark application or registration;

   ·     in respect of similar goods or closely related services;

   ·     in the name of a person other than the Applicant and

   ·     which has an earlier priority date.

2. The Opponent is the registered owner of the Opponent’s Registrations (as detailed in paragraph 16 above). I note that registration No. 1346467 is not relevant since it postdates the Priority Date. The remaining six registered marks are discussed below.

3. The Trade Mark includes the same goods in Class 25 as are covered by the Opponent’s Registrations (bearing in mind that the item “socks” appears only in the specifications of Nos. 1282635 and 1346467). On that basis, with the requisite elements of this ground otherwise satisfied, I turn to consider the sole issue which remains in relation to Section 44(1), namely whether the Trade Mark is substantially identical with or deceptively similar to any of the Opponent’s Registrations.

   “Substantially Identical” or “Deceptively Similar”

4. In Shell Company (Australia) Limited v. Esso Standard Oil (Australia) Limited (1961) 109 CLR 407 at 414-415 Justice Windeyer, having indicated that “substantial identity” and “deceptive similarity” are independent criteria to be judged in different ways, stated:

   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. . . . 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.

5. It is established, then, that the appropriate test which is to be applied in determining whether two marks are substantially identical is that of the “side by side” comparison whereas that test is not appropriate for deceptive similarity which places reliance on the “impression based on recollection” of the respective marks that is carried away by members of the public.

6. It is readily apparent that there exist notable differences and points of distinction between the respective marks. Commenting first on the Trade Mark, my observations are that the stylization of the two words “Dickie” and “Peacock” (each with initial capitalization but with the remaining lettering being in lower case) appearing as they do in combination, together with the fact that the word “Dickie” is generally understood as a form of the first name “Richard” and that the word “Peacock” is a surname or family name (albeit of relatively low incidence in Australia at this time), are salient features to which my attention is drawn. The presence of these factors leads me to conclude that it is more likely than not that consumers, on seeing the Trade Mark, would perceive it as the name of a person (real or fictitious). The Opponent’s Registrations, on the other hand, all feature the element DICKIES. No explanation has been given as to the origin of that term. Of itself, it has no meaning and although the inclusion of the letter “-S” might suggest the plural or possessive form of the word DICKIE, that inference remains a matter of which there is no evidence. Nor, for that matter, is the issue of substantial identity dependent on the derivation of the word. Finally, I note that all but one of the Opponent’s Registrations are composite marks featuring a distinctive device in addition to the word DICKIES.

7. Given the significant differences between the Trade Mark and the Opponent’s Registrations, I am satisfied that the Trade Mark is not substantially identical in the requisite sense with any of the Opponent’s Registrations. Moreover, I find that the differences also go some way to informing the issue as to whether the Trade Mark is deceptively similar to any of the Opponent’s Registrations, the matter to which I now turn.

8. In relation to the issue of deceptive similarity Section 10 of the Act states:

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other mark that it is likely to deceive or cause confusion.

9. Section 10 does not require that there be an intention to deceive or cause confusion. So, it is said that the distinction between “likely to deceive” and “likely to cause confusion” resides not in some element of culpability in the user to be inferred from the word “deceive”, but rather in the effect of the trade mark on potential purchasers. As Justice Richardson explained in the New Zealand case of Pioneer Hi-Bred Corn Company v. Hyline Chicks Pty. Limited [1979] RPC 410 at 423:

   “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 [or services] bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.

10. The test of whether trade marks are “deceptively similar” within the meaning of Sections 10 and 44(l) of the Act concerns the inherent qualities of the marks seen in the light of the proper uses that may be made of them. It is well-established that in applying that test consideration is not to be given to the actual use which the parties may have made of their respective marks. Rather, the test to be applied is that proposed by Justice Evershed in Re An Application by Smith Hayden and Company Limited (1946) 63 RPC 97 at 101. As Justice Branson put it (in her dissenting judgment) in Registrar of Trade Marks v. Woolworths Limited (1999) AIPC 91-499; (1999) 41 IPR 411 (“Woolworths”) at [88]:

    Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of [goods and] services covered by the proposed registration.

11. A useful outline of the relevant general principles which are to be applied in assessing deceptive similarity and a restatement of the classical propositions is to be found in the decision of Justice French (also in Woolworths) at paragraph 50, namely:

    In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

    (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 Company Inc [1973] HCA 43; (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."

    This statement is broadly consistent with the principles as outlined in the Opponent’s submissions which are discussed in paragraph 17 above.

12. By and large, I accept the summary of the relevant principles of law as set out in the Opponent’s written submissions. However I do not agree with the Opponent’s application of those principles to the present matter. In particular, I agree with the Applicant that merely sharing an element in common (in this instance, the expression DICKIE) is not necessarily sufficient to render the trade marks in question deceptively similar. In this regard, in the decision of Capitol Clothing Pty. Limited v. Hush Fashions Pty. Limited [2006] ATMO 79 at paragraphs 29-30 the delegate observed:

    For a trade mark to “so nearly resemble that other trade mark that it is likely to deceive or cause confusion” there would need to be some perceived connection between the two trade marks in the mind of the purchaser. The mere presence in two trade marks of the same word is not sufficient for this to happen. The perception of a connection is more likely to occur when the target word is accompanied by words or images that allude to the trade marks being a family of trade marks owned by the same organization. A simplistic example here would be “ENVY Women” and “ENVY Men”, both in use on a range of clothing.

    However, where the additional words are not relevant to the trade, or where well known phrases are used, this perception is less likely to be the case. I consider this is the situation here.

    In that instance the finding was that, despite the presence of the common element ENVY, the resemblance between that applicant’s trade marks GREEN WITH ENVY and ENVY AVENUE and the opponent’s registered trade mark ENVY was not such that there would be a real tangible danger of deception or confusion occurring in the minds of the buying public.

.36.   In Chris Kingsley v. David Scott [2011] ATMO 20, Hearing Officer Wilson stated (at paragraph 13):

13. The general precedent indicates that if one trade mark is contained within another trade mark that fact may not necessarily lead to a finding of deceptive similarity. This is especially so if the presence of that common word (or device) is diminished by other elements in the trade mark or if the common element is descriptive of the claimed goods/services. If the idea or meaning of the trade mark as a whole has been sufficiently altered by the differing trade mark elements, the likelihood of confusion between the two trade marks is thereby reduced. Whether the respective goods and services of the parties are specialized or commonplace is also relevant in determining if confusion is likely to result. In the end, each trade mark must be considered on its own factual circumstances.

1. For its part, the Opponent argued that it has created a “family” of trade marks containing or consisting of the element DICKIES thereby increasing the likelihood that deception or confusion will result from the use and registration of the Trade Mark. In support of this argument, the Opponent placed reliance on the decisions of Beck, Koller and Company Limited’s Application (1947) 64 RPC 330, Re Derria AG (1984) 4 IPR 433, McDonald’s Corporation v. Macri Fruit Distributors Pty. Limited (2000) AIPC 91-583 and McDonald’s Corporation v. Bellamy (2004) 62 IPR 133; (2004) AIPC 91-995. In this regard, in the line of “family” cases the trade marks of an opponent have been found to have a common element (usually a prefix) which is so thoroughly associated with the opponent’s goods or services that the use by another person of a trade mark incorporating that element would deceive or confuse. Moreover there is judicial support for the notion that, where a trade mark or an element of it has become notorious, notice can be taken of that fact in an assessment of the similarity of the trade marks as it relates to the imperfect recollection of the opponent’s mark.

2. The Applicant has countered with the argument that the Trade Mark must be compared individually with each member of the family of marks which comprise the Opponent’s Registrations whereas the Opponent seeks to make a comparison collectively with them. That approach is said to obfuscate the fact that the Opponent does not own any registration for DICKIES as a word mark but rather that each of the Opponent’s Registrations is rendered in composite form. While DICKIES may be a significant element of each of the Opponent’s trade marks, those marks nevertheless contain other elements (typically in the form of a device or logo).

3. There are additional factors which are relevant in relation to this argument. In particular, such reputation as may be said to exist in respect of the Opponent’s Registrations is not sufficient in my view as to establish that those marks as a family have become notorious in Australia in the sense which is contemplated by the Federal Court in relation to the name WOOLWORTHS (see the Woolworths case, op. cit., at paragraph 61). Moreover, in the “family”, none of the Opponent’s Registrations has any feature or characteristic which would connect those marks to the word “Peacock”. The Opponent’s argument is further undermined by the presence on the Register of those co-existing DICKIES registrations held in the name of Australian Weaving Mills Pty. Limited which are pointed out in the evidence of Mr. Deacon. Moreover, in this instance reliance on a “family” of marks as a factor in relation to the Section 44 ground is likely to be limited to the consideration of imperfect recollection as it applies to this matter. I accept that as part of the surrounding circumstances it is appropriate to take account of the fact that the Opponent holds six relevant trade mark registrations which incorporate the word DICKIES, but I attach limited weight to that argument. In my view, the mere ownership of those trade mark registrations is irrelevant to the “family of marks” argument since that argument depends upon the marks in the claimed family having been used to the extent that the relevant section of the consuming public would perceive them as a family and would be caused to wonder as to whether the Trade Mark constitutes another possible member of that family.

4. The Opponent contends that the Trade Mark is visually and aurally similar to the Opponent’s Registrations given the presence of the common element “Dickie” which is the first, and an essential, element of the Trade Mark. I disagree with this argument. To my mind, the Trade Mark when considered as a whole conveys an entirely different impression from that which is indicated by the Opponent’s Registrations and it has an appearance and a pronunciation which sufficiently serves to avoid the likelihood that instances of deception or confusion might realistically be said to occur. In this regard, I note that the Trade Mark is not a single word but rather it comprises a particular combination of the two words “Dickie” and “Peacock”. The word “Peacock”, on the other hand, has no corresponding element in any of the Opponent’s Registrations so that its appearance in the Trade Mark serves to enhance the prospect that the parties’ trade marks might be distinguished from each other. The inclusion of the word “Peacock” appearing in the Trade Mark changes its overall meaning and significance. and it causes the “Dickie” component to take on the role and function of a qualifying word.

5. Again, in terms of meaning, I find that the likely effect of the expression “Dickie Peacock” is to indicate a person being known or identified by that specific name (that is, by means of the christian name “Dickie” in combination with the surname “Peacock”). That particular impression is the way in which I would expect the Trade Mark to be generally perceived. By contrast, the Opponent’s Registrations do not convey the same impression at all, so that consumers would be unlikely to assume that because the respective marks incorporate the corresponding letters DICKIE they denote a single source for the relevant goods.

6. In any event, ultimately my finding is that the Trade Mark and the Opponent’s Registrations are different both in appearance and pronunciation as well as in terms of meaning. In this instance, I find that I am unable to agree with the Opponent that the Trade Mark and the Opponent’s Registrations are deceptively similar. For that reason, the ground of opposition pursuant to Section 44 fails.

   Section 60

7. The wording of this Section relevantly provides:

   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.

   Note:          For priority date see section 12.

8. In order to establish this ground of opposition, Section 60 makes it clear that the Opponent must satisfy the following elements, namely:

   • there must be another trade mark;
   • which had acquired a reputation in Australia as at the priority date of the opposed application; and
   • that reputation must be such that use of the opposed trade marks would be likely to deceive or cause confusion.

9. Additionally, the decided cases make it clear that the requisite reputation must exist amongst a significant or substantial number of relevant consumers of the goods in question (see, for example, Justice Kenny in McCormick & Company Inc. v. McCormick (2000) 51 IPR 102).

10. In relation to the present matter, in my view the evidence of reputation which has been provided by the Opponent is not adequate to satisfy the requirements of section 60. However, even if it were, given the differences which exist between the parties’ marks I am not satisfied that use of the Trade Mark for the goods in question as at the Priority Date was likely to deceive or cause confusion amongst a significant or substantial number of relevant consumers.

11. I find that the Opponent has not established the ground of opposition pursuant to Section 60 of the Act.

    Section 42(b)

12. This Section provides that an application for registration must be rejected if its use would be contrary to law. The Opponent’s attorney submitted that use of the Trade Mark for the relevant goods would breach Sections 18 and 29 of the Australian Consumer Law (being Schedule 2 to the Competition and Consumer Act 2010) which proscribes misleading or deceptive conduct or the making of false or misleading representations. At the hearing, I pointed out to Ms. Mannion that the Australian Consumer Law took effect as from 1 January 2011 and as such that it had no application as at the priority date of 26 May 2009. I indicated that I would consider this ground on the basis of the corresponding Sections 52 and 53 of its predecessor (the Trade Practices Act 1974), and Ms. Mannion concurred.

13. I have already found that use of the Trade Mark for the goods in question is unlikely to deceive or cause confusion in terms of Section 60 of the Act. There are several decided cases confirming that more is required to establish a likelihood of misleading or deceptive conduct (or, by extension, conduct amounting to the making of false or misleading representations) than is the position with trade marks which are likely to deceive or cause confusion under Section 60. In Parkdale Custom Built Furniture Pty. Limited v. Puxu Pty. Limited (1982) 149 CLR 191; 1A IPR 684, by way of example, Chief Justice Gibbs observed in relation to Section 52 of the Trade Practices Act (at 688):

    In McWilliams Wines Pty. Limited v. McDonald’s System of Australia Pty. Ltd. (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v. Toowoomba Foundry Pty. Ltd. (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.

14. I consider that the reasoning set out earlier in rejecting the Opponent’s argument in relation to Section 60 of the Act is no less applicable to its claim that the Applicant’s use of the Trade Mark would breach Sections 52 or 53 of the Trade Practices Act. That is to say, given the differences between the respective marks when compared as wholes and in the absence of any evidence before me of actual deception, I am not satisfied that the reputation of the Opponent’s relevant trade marks, whether considered individually or in terms of their collective reputation, was such that use of the Trade Mark for the goods in question would be likely to mislead or deceive or would amount to the misrepresentations as alleged. Thus, I find that the Opponent has not established its ground under Section 42(b) of the Act.

    Decision

15. I find that the Opponent has not established its opposition. None of the grounds of opposition which have been relied upon at the hearing has been made out. The trade mark application may, then, proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until such time as the appeal has been decided or discontinued.

    Costs

16. The Opponent has requested an award of costs. However, the Opponent having been unsuccessful on all grounds, I see no reason as to why the general rule should not apply and why costs should not follow the cause. I award costs against the Opponent in accordance with the provisions of Schedule 8 of the Trade Mark Regulations, 1995.

    John Spence
    Hearing Officer
    Trade Marks Hearings
    14 September 2012