Wolverine Outdoors, Inc v Marker Volkl (International) GmbH

[2010] ATMO 70

TRADE MARKS ACT 1995

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

Re:Opposition by Wolverine Outdoors, Inc to registration of trade mark application 953854 (9, 18, 25, 28, 41), IR No. 801052 - LETTER M DEVICE - filed in the name of Marker Volkl (International) GmbH.

Delegate:	Claudia Murray
Representation:	Opponent: Chris Sgourakis of Griffith Hack, Patents and Trade Mark Attorneys and IP Lawyers, Melbourne. Holder: Margaret Ryan of Phillips Ormonde & Fitzpatrick, Patent and Trade Mark Attorneys, Melbourne.
Decision:	2010 ATMO 70 Regulation 17A.29 opposition – section 44 ground established in relation to goods in classes 18 and 25 – protection extended to IRDA in relation to goods and services in classes 9, 28 and 41. Costs awarded against holder.

Background

1. Marker Volkl (International) GmbH (‘the holder’), a Swiss company, requested the extension to Australia of protection for International Registration Designating Australia (IRDA) number 801052. The IRDA’s Australian trade mark application number is 953854, and its priority date is 2 September 2002. It is in respect of the following device trade mark:

2. The IRDA was filed in classes 9, 18, 25, 28 and 41 of the International (Nice) Classification of Goods and Services, in respect of the following goods and services:

   Class 9: Helmets for sportsmen/women, goggles for sportsmen/women

   Class 18: Bags included in this class, including bags for sports apparatus, garment bags, rucksacks

   Class 25: Clothing, footwear, headgear for wear, gloves, sports gloves, sports and casual shoes; ski and snowboard boots, ski and snowboard gloves

   Class 28: Sports articles and apparatus included in this class, skis, ski bindings, snowboards, snowboard bindings, sports articles in the form of protectors for shinbone, knee and/or elbow, ski bags

   Class 41: Organisation of sporting events, also as joint organiser or sponsor

3. A ground for rejection under subsection 41(5) of the Trade Marks Act 1995 (‘the Act’) was raised during examination against all of the goods and services included in the IRDA. However, the full provisional refusal was reconsidered and withdrawn, following consideration of the holder’s submissions. The trade mark was advertised accepted for possible protection in the Australian Official Journal of Trade Marks on 16 September 2004.

4. On 15 March 2005, after obtaining a three month extension of time to do so, Wolverine Outdoors, Inc (‘Wolverine Outdoors’ or ‘the opponent’) filed notice of opposition to protection of the trade mark. Ten grounds of opposition were listed in the notice.

5. Further extensions of time were sought by the opponent before its evidence in support was finally served and filed on 11 October 2007. The holder then applied for two extensions of time within which to serve its evidence in answer, but ultimately chose not to provide any evidence. Then followed a prolonged delay in proceedings, while the parties sought to negotiate settlement of the opposition. Two earlier hearing dates were vacated, before the parties agreed not to defer the matter further. I heard the opposition matter, as a delegate of the Registrar of Trade Marks, in Melbourne on 12 April 2010. Mr Chris Sgourakis of Griffith Hack, Patents and Trade Mark Attorneys and IP Lawyers of Melbourne, represented the opponent. Ms Margaret Ryan of Phillips Ormonde & Fitzpatrick, Patent and Trade Mark Attorneys also of Melbourne, represented the holder.

   Evidence

6. The evidence in support of this opposition comprises:

   ØStatutory declaration of Onder Ors, with Annexures 1 to 7, dated 2 October 2007.

7. Mr Ors is the Group Vice President International of Wolverine World Wide, Inc (‘WWW’). The opponent is a wholly-owned subsidiary of that company. Mr Ors attests that his company traces its origins to a family business established in 1883 and that it is today ‘one of the world’s leading marketers of branded casual, active lifestyle, work, outdoor sport and uniform footwear.’ Mr Ors also explains that the trade marks MERRELL and three versions of an M device were first adopted and used in the US by Sports Holding Corporation with respect to footwear in 1982. WWW acquired the MERRELL and M device trade marks in 1997 and has used them continuously since that date on footwear and clothing. Footwear bearing the trade marks is now sold in over 120 countries, including Australia, and has been available continuously in Australia since 2000. The three versions of M device described as currently being used by Wolverine Outdoors are depicted as:

1. Annexure 3 of Mr Or’s declaration provides details of the opponent’s full range of M device applications and registrations, as follows:

TM No.	Trade Mark	Priority Date	Class / Statement of Goods
838775	11 Feb 2000	Class 25: Footwear
838776	11 Feb 2000	Class 25: Footwear
838777	11 Feb 2000	Class 25: Footwear
912814	14 May 2002	Class: 18 Leather and imitations of leather, and goods made of these materials not included in other classes; leather gloves and leather belts; trunks and travelling bags, purses, wallets, handbags, bags, backpacks, day packs, letter-carrier bags, duffel bags and carry-all totes Class: 25 Clothing, footwear and headgear; leather gloves and leather belts
1152142	8 Nov 2006	Class 25: Clothing, namely shirts, sweatshirts, pants, shorts, pullovers, jackets, hats, gloves, socks and belts
1152143	8 Nov 2006	Class 25: Footwear
1152144	8 Nov 2006	Class 25: Clothing, namely shirts, sweatshirts, pants, shorts, pullovers, jackets, hats, gloves, socks and belts
1152169	8 Nov 2006	Class 25: Footwear

Grounds of opposition

1. The grounds of opposition relied upon by Mr Sgourakis at the hearing were under section 44, 58, 59 and 60. For completeness, at this point, I find that none of the other grounds listed in the notice of opposition, but not pressed at the hearing, have been successful.

   Section 44 - Identical etc. trade marks

2. Section 44, as applied by regulation 17A.28 and 17A.31 to the present circumstances, provides that an IRDA must be rejected if it is substantially identical with, or deceptively similar to, another person’s trade mark application or registration that has an earlier priority date, and covers goods or services that are similar or closely related to the holder’s goods or services. The definition of ‘deceptively similar’ in section 10 is that ‘a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion’. Section 14 defines ‘similar goods and ‘similar services’ as goods or services which are ‘the same’, or ‘of the same description’. The Act does not further define the manner in which particular goods and services may be determined to be closely related to each other.

3. Mr Sgourakis indicated that, in regard to the section 44 ground of opposition, the opponent relied on prior trade mark registrations numbered 838775, 838776, 838777 and 912814 and that the ground was limited to the class 18 and 25 goods covered by the IRDA. There was no dispute between the parties over whether or not their respective goods of interest in those classes were similar goods. Clearly, they are.

4. The matter for determination here, then, is whether the opponent’s prior M device trade marks are either substantially identical or deceptively similar to the applied-for M device. Mr Sgourakis cited the familiar tests for substantial identity and deceptive similarity[1], but he did not press the point over whether I should find the respective M devices to be substantially identical. He did, however, argue strongly that I should find them to be deceptively similar, making the following points:

   [1] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407

   The similarities between the opposed mark and the Opponent’s four marks include the following:

   ·     both marks comprise the letter M;

   ·     the letters M are in capitals;

   ·     both letters M are presented in bold and in a similar font type;

   ·     both letters M are superimposed on an oval or disc device;

   ·     both letters M are represented in an unusual and distinctive manner, namely asymmetrically with the left upright being longer than the right upright of the letter M, so that the letter M looks like it is slanting or shrinking away, or that the letter M looks like it has 3-dimentionality or depth;

   ·     both marks would be pronounced as M and remembered as “the slanting M on disc/oval/ellipse brand”…

   The slight design differences between the marks are not sufficient to distinguish them.  As in other industries, logos in the fashion industry are often varied or “played with” or, every few years, are updated, revised or “refreshed”; consumers have come to expect such brand variations and “refreshes” and continue to associate them with the same source.  The opposed mark would therefore be viewed as no more than a variant, or a brand “refresh”, of one of the Opponent’s marks.  Consumers are in fact “primed” to expect that the Opponent uses its logo in various similar forms, as its four earlier registrations are all slightly different, but are clearly all part of a “family” as they share the same distinctive features and theme.

   Finally, the comparison of a trade mark must take place in the context of the particular market in which the traders operate and the context in which the goods are sold.  In the present case, the class 18 and 25 goods could include low cost or discount bags/clothing/footwear items that are purchased casually.  Such purchases are usually unplanned and not highly considered, with consumers relying on the display of familiar and prominent logos to prompt their choice.  A consumer who is therefore confronted with the Applicant’s mark on the class 18 or 25 goods could easily conclude that there was some association with the Opponent’s marks or its goods.

5. Ms Ryan’s arguments in rebuttal harked back to the Diamond T case[2], which, she said was ‘still good law for the proposition that, by registration, one does not gain a monopoly in such simple devices as a letter or a circle absent their combination.’ She continued:

   M is the initial letter of the Applicant Marker Volkl (International) GmbH. Its M is quite different to the M of trade mark nos 838775 (sic). The device surrounding and being broken by its M is not a circle but an irregular shape, swirl border with a tail. The subject trade mark is a complex trade mark with movement and interaction between its elements. The M in a circle is static, regular, simple, with no interaction between its elements. The M in a circle is light on dark. The subject trade mark is dark on light with a dark border. It is submitted that the Opponent cannot monopolise any device that is vaguely curved. In the context of the goods in question, it is submitted that the two marks are neither substantially identical nor deceptively similar.

   [2] Application by the Diamond T Motor Car Company (1921) 38 RPC 373

6. Ms Ryan also took issue with Mr Sgourakis’s submissions regarding his client’s ‘family’ of trade marks. She said that it was important, when applying the section 44 tests, to pay attention to the singular tense used, which ‘creates an orderly means of comparing trade marks, ie one at a time.’ By contrast, according to Ms Ryan, Mr Sgourakis was effectively ‘blancmanging’ his client’s trade marks together, for the purposes of the test for deceptive similarity.

7. It is easy to understand the opponent’s motivation for wanting a ‘blancmanged’ impression of all of its ‘family’ of M devices to be factored into a consideration of deceptive similarity. Of the device trade marks currently being used by Wolverine Outdoors, the device which might be described as most closely resembling the applied-for trade mark is not the subject of any of its prior registrations eligible for consideration under section 44. For the purposes of illustrating this point only, I have placed those trade marks side by side below:

Holder’s trade mark Opponent’s trade mark subject of TM Nos. 1152143 and 1152144

1. Returning to the comparison of trade marks that is relevant and the list of all the opponent’s prior marks depicted in the evidence summary above, it becomes clear that they are very similar to each other. Two, however, also contain the word MERRELL, albeit in small letters which do not diminish the total effect of those trade marks as being predominantly ‘M devices’. For purposes of expediency, I will focus here on a comparison between the applied-for trade mark and trade mark number 912814. As well as comprising the M device by itself, that trade mark is also the only one of the opponent’s prior registrations which covers a range of goods in both classes 18 and 25, in contrast to its three other specifically ‘footwear’ trade marks. The opponent’s success here will obviate any need for further comparisons. Although I am mindful that a side by side test is only required for a finding of substantial identity, which was not pressed by the opponent in relation to section 44, it is convenient to depict them thus here:

Holder’s trade mark Opponent’s trade mark number 912814

1. Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd[3], said of deceptive similarity:

   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.

   [3] (1937) 58 CLR 641, at 658

2. During the hearing, the state of the Register (whether or not it was crowded with letter M trade marks and the significance to be drawn from this), and the relevance of the examiner’s original decision not to raise a partial refusal of the IRDA, based on a ground of rejection under section 44, was debated at some length. These are matters which I have found to be of greater import in earlier decisions. Here, however, I believe that the very simplicity of the trade marks themselves enables the decision maker to focus clearly on the straightforward and very practical considerations set out by Dixon and McTiernan JJ. In both sound and meaning the trade marks at issue are identical. The ‘nature’ of both is ‘M’. The differences between them can be appreciated visually in a side by side, substantial identity comparison, certainly, but even then, the differences are subtle. Both trade marks may be described and therefore remembered as a sloping letter M in a disc shaped border.

3. It is hard to see how ordinary people, having encountered the opponent’s trade mark on the goods in classes 18 and 25 for which it has been registered, would avoid being deceived or confused when later faced with holder’s trade mark applied to similar, indeed mostly identical, goods. These goods are not in the nature of items such as expensive racing cars or hospital equipment, which may be presumed to be purchased carefully by highly discerning, specialist customers. Rather, they are shoes and gloves and hats and rucksacks and other similar items. These basic commodities are often purchased hurriedly by members of the general public whose priorities are likely to be function and price. Such purchasers would not be carefully inspecting potential purchases so as to determine that one ‘M’ trade marked beanie was, of course, from a different source to another ‘M’ trade marked beanie because the respective borders around the letters on the tags were slightly different. Rather, they would be deceived and confused by their close similarity. I find the trade marks to be deceptively similar.

4. As Mr Sgourakis pointed out, the holder has provided no evidence of prior or honest concurrent use, or other circumstances, which might have invoked the exceptions to subsections 44(1) and (2) provided under subsections 44(3) or (4). I find the ground of opposition under section 44 to be established in respect of the goods in classes 18 and 25 covered by the IRDA.

   Section 59 – Applicant not intending to use trade mark

5. Section 59 (as applied to IRDAs by regulation 17A.31) deals with a holder’s (applicant’s) intention to use its trade mark:

   The registration of a trade mark may be opposed on the ground that the applicant does not intend:

   (a)     to use, or authorise the use of, the trade mark in Australia; or

   (b)     to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services specified in the application.

   Note:   For applicant see section 6.

6. Mr Sgourakis submitted that the filing of a trade mark application is prima facie evidence of an intention to use it in respect of the relevant goods or services at that time[4], but that section 59 is set in the present tense, in line with the findings of the hearing officer in Sapient Australia Pty Ltd and Sapient Corporation v SAP AG.[5] He argued that the opponent had discharged the initial onus upon it to establish lack of intention to use by way of Mr Ors’ declaration that neither he nor anyone else in the opponent’s company was aware of any use of the applied-for trade mark in Australia. Further, Mr Ors had questioned the holder’s honesty in adopting the trade mark in the face of the opponent’s trade marks. Mr Sgourakis then submitted that because the holder did not respond to those claims, it had failed to discharge the onus then upon it to prove that its intention to use was in fact genuine.

   [4] Aston v Harlee Manufacturing Co (1960) 103 CLR 391

   [5] [2002] ATMO 51

7. Firstly, I note that the Full Federal Court has recently found that the date at which the relevant intention must exist for the purpose of section 59 is the date of the application[6], which translates in the case of an IRDA to its date of effect (regulation 17A.4). Further, I do not accept that Mr Ors’ brief comments in his declaration have shifted the onus from the opponent in the way that Mr Sgourakis has claimed. The opponent has fallen far short of making even a slight case for the holder’s lack of either an intention to use its trade mark at the IRDA’s date of effect, or of its genuine intention to use the mark in the future. The holder is entitled to wait for the conclusion of the opposition process, and subsequent registration, before using its trade mark on any of its goods or services. It is also entitled to refrain from filing and serving evidence. Mere observation that a trade mark owner has taken such a course cannot, of itself, serve to rebut the presumption of intention to use created at the date the request for extension of protection to Australia was made.

   [6] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 at 74

8. The opponent has not met its initial burden to shift the onus under section 59 to the holder. The ground of opposition under section 59 has not been established.

   Other grounds of opposition

9. Mr Sgourakis also pressed grounds of opposition under Sections 58 and 60 at the hearing. I have considered his submissions and the opponent’s evidence in relation to these grounds to a limited degree. However, I decline to explore them further here. The opponent has succeeded in its ground of opposition under section 44 in relation to all the goods in classes 18 and 25 covered by the IRDA. I do not believe the opponent’s evidence supports claims in terms of sections 58 or 60 which, even if partially successful, would add to the limitations already to be imposed on the IRDA in terms of section 44. The sections 58 and 60 grounds would, of course, be again available to the opponent in the event of an appeal from this decision.

   Decision and costs

1. Regulation 17A.34 provides:

   (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 any ground on which the IRDA was opposed has been established.

   (2)     The Registrar must tell the International Bureau of his or her decision.

2. The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the appropriate standard of proof required in terms of a ‘balance of probabilities’.[7] His findings upon that issue, arrived at after an exhaustive consideration of the relevant authorities, have recently been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks.[8]

   [7] Pfizer Products Inc v Karam [2006] FCA 1663 (1 December 2006); (2006) 70 IPR 599.

   [8] [2009] FCA 891 (18 August 2009), paragraphs 22-27; (2009) AIPC 92-355; (2009) 82 IPR 13

3. I find here that the opponent has met the onus upon it, in terms of the ground of opposition argued under section 44. The opposition has therefore succeeded in relation to the goods listed in the IRDA in classes 18 and 25, for which protection must not be extended. Accordingly, I have decided to extend protection in Australia to Australian trade mark application number 953854, (IR number 801052) in relation only to the following goods and services:

   Class 9: Helmets for sportsmen/women, goggles for sportsmen/women

   Class 28: Sports articles and apparatus included in this class, skis, ski bindings, snowboards, snowboard bindings, sports articles in the form of protectors for shinbone, knee and/or elbow, ski bags

   Class 41: Organisation of sporting events, also as joint organiser or sponsor.

4. The opponent has requested its costs. It is usual for costs to follow the event, and the opponent has succeeded in one of its grounds of opposition, even if not to the extent of full refusal of the protection to be afforded to this IRDA. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the holder, Marker Volkl (International) GmbH.

   Claudia Murray
   Hearing Officer
   Trade Marks Hearings
   29 July 2010