Wolverine World Wide, Inc v Khoda Ali Ahmed

[2008] ATMO 93

TRADE MARKS ACT 1995

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

Re:Opposition by Wolverine World Wide, Inc to registration of trade mark application 1064467(25) - Posh Puppy - filed in the name of Khodar Ali Ahmed.

Delegate:	Michael Kirov
Representation:	Opponent: Jürgen Bebber, of Griffith Hack, Patent & Trade Mark Attorneys Applicant: No appearance and did not lodge any written submissions
Decision:	2008 ATMO 93 s.52 opposition: grounds under ss. 42(b), 44 and 60 established and ground under s.59 partially established. Registration refused. Costs awarded against the Applicant.

Background

1. This is an opposition brought by Wolverine World Wide, Inc (“the Opponent”) pursuant to s.52 Trade Marks Act 1995 (“the Act”) to registration of the trade mark Posh Puppy, subject of application number 1064467 in the name of Khodar Ali Ahmed (“the Applicant”).

2. Details of the opposed application are as follows:

   Application Number:                1064467
   Priority Date:      12 July 2005

   Goods:Class 25: Clothing, including children’s clothing, headgear and footwear

   Trade Mark:  Posh Puppy

3. The Opponent filed its Notice of Opposition (“the Notice”) on 4 January 2006, with the Opponent bearing the onus of establishing one or more grounds of opposition on the balance of probabilities[1].

   [1] Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411 (“the Woolworths Metro case”); Pfizer Products Inc v Karam (2006) 70 IPR 599

4. The parties lodged Evidence in Support, Evidence in Answer and Evidence in Reply as set out below:

   Evidence in Support
   ▪Statutory Declaration by James D Zwiers made 20 February 2007, with Annexures 1 to 5

   Evidence in Answer
   ▪Statutory Declaration by Khodar Ali Ahmed made 19 June 2007, with Exhibits DR-1 to DR-10

   Evidence in Reply
   ▪Statutory Declaration by Kellie Anne Fenwick made 21 September 2007
   ▪Statutory Declaration by Malcolm Ford made 23 September 2007, with Annexure A
   ▪Statutory Declaration by David Andrew Gordon made 28 September 2007
   ▪Statutory Declaration by Don Murphy made 8 January 2008

5. The matter was heard before me as delegate of the Registrar of Trade Marks on 17 September 2008 in Melbourne.  Jürgen Bebber of Griffith Hack, Patent and Trade Mark Attorneys, appeared for the Opponent.  The Applicant has not been heard from since August 2007, which was shortly after serving his evidence in answer, and has not sought to appear or lodge any written submissions.

   Grounds of Opposition

6. The Notice lists eleven specific grounds corresponding to various provisions of the Act. At the hearing, however, Mr Bebber indicated the Opponent would only be pressing those grounds based on sections 42(b), 44, 59 and 60 of the Act and limited his submissions accordingly. These grounds are discussed below, where I have found it convenient to firstly examine the ss.44, 59 and 60 grounds before then discussing the s.42(b) ground. The remaining grounds listed in the Notice are of course not established.

   Discussion

   Section 44

7. The relevant grounds based on section 44 are indicated in the Notice as follows:

   The trade mark is substantially identical with, or deceptively similar to a trade mark with an earlier priority date registered by another person in respect of similar goods and services; and

   There has been no honest concurrent use, prior continuous use, and no other circumstances exist, justifying acceptance of the trade mark for registration under ss.44(3) or ss.44(4).

8. Section 44 of the Act is reproduced below:

   Identical etc. trade marks

   44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a) the applicant's trade mark is substantially identical with, or deceptively similar to:

   (i) a trade mark registered by another person in respect of similar goods or closely related services; or
   (ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1:  For deceptively similar see section 10.

   Note 2:  For similar goods see subsection 14(1).
   Note 3:  For priority date see section 12.

   (2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

   (a) it is substantially identical with, or deceptively similar to:

   (i) a trade mark registered by another person in respect of similar services or closely related goods; or
   (ii) a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1: For deceptively similar see section 10.

   Note 2:  For similar services see subsection 14(2).
   Note 3:  For priority date see section 12.

   (3) If the Registrar in either case is satisfied:

   (a) that there has been honest concurrent use of the 2 trade marks; or
   (b) that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

   Note:  For limitations see section 6.

   (4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a) beginning before the priority date for the registration of the other trade mark in respect of:

   (i) the similar goods or closely related services; or
   (ii) the similar services or closely related goods; and

   (b) ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1:  An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2:  For predecessor in title see section 6.
   Note 3:  For priority date see section 12.

9. As detailed in Annexure 2 to the Zwiers declaration, the Opponent is the owner of 11 current Australian registrations for the trade mark HUSH PUPPIES (registered as Hush Puppies in the case of registration 1056237[2]) covering a range of goods and services in Classes 3, 9, 14, 18, 24, 25, 35 and 42. At the hearing Mr Bebber indicated that in pressing the s.44 ground the Opponent was relying in particular on four of these registrations, being registrations 168971, 290616, 1056237 and 1071962. The four registrations are detailed below:

   [2] I am proceeding on the basis that the HUSH PUPPIES and Hush Puppies variants of the Opponent’s trade mark are “substantially identical” or, effectively, interchangeable, in line with the decisions in Morny Ltd’s Trade Marks (1951) 68 RPC 131 and Re Lynson Australia Pty Ltd (1987) 9 IPR 350.

Regn No.	Priority Date	Class	Goods and/or Services
168971	31 August 1961	25	Footwear
290616	17 September 1975	25	Clothing for men, women and children, socks, hosiery, headwear including hats and caps, coats, jackets, dresses, blouses, skirts, slacks, trousers, shirts,T-shirts, sweaters, belts and gloves
1056237	20 May 2005	35	Importation, distribution, wholesaling, retailing and marketing of luggage, suitcases, handbags, trolley cases, purses, wallets, travel bags, backpacks, briefcases, attache cases, travel totes, beauty cases, umbrellas, travel accessories, clothing excluding socks and hosiery, belts, headgear
1071962	25 August 2005	35	Retailing, wholesaling, importing, distribution, marketing and advertising services; retailing, wholesaling, importing, distribution, marketing and advertising of the following goods: clothing, footwear, headwear, fashion accessories, gifts, bags, handbags, packs, luggage, small leather goods, watches, toys, eye glasses, sunglasses, stationery, gloves and jewelry; providing the foregoing services through stores, by means of catalogues or direct mail, or on-line from a global computer network or the Internet

1. For s.44 to apply at all, the priority dates of the registrations relied upon by the Opponent must be earlier than the 12 July 2005 priority date of opposed application 1064467 (“the Priority Date”). The priority dates of registrations 168971, 290616 and 1056237, being 31 August 1961, 17 September 1975 and 20 May 2005, are all earlier than the Priority Date. However, the priority date of registration 1071962, being 25 August 2005, is later than the Priority Date and registration 1071962 is thus of no relevance to the Opponent’s s.44 ground.

2. To establish its section 44 ground the Opponent needs to establish on the balance of probabilities that:

   • the opposed application covers similar goods to the goods covered by registrations 168971and/or 290616 and/or covers goods closely related to the services covered by registration 1056237; and

   • the opposed Posh Puppy trade mark is substantially identical or deceptively similar to the HUSH PUPPIES (or Hush Puppies) trade mark subject of the Opponent’s registrations 168971, 290616 or 1056237 (“the Opponent’s Trade Mark”).

3. Mr Bebber did not argue that the opposed trade mark was “substantially identical” to the Opponent’s Trade Mark, but did argue the marks were “deceptively similar”. Section 10 of the Act provides 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”. As was pointed out by French, J in the Woolworths Metro case[3] (in the context of closely related goods and services), however, the logic of s.44 suggests the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, relevant other goods and services is “logically antecedent to” assessing the deceptive similarity of the trade marks. In this regard French, J explicitly approves the observation in Wilcox, J’s first instance decision in the Woolworths matter[4] that “The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive”.  French, J concludes (at [40]):

   In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant's marks would be likely to deceive or to cause confusion.

   [3] Op. cit.

   [4] Woolworths Limited v Registrar of Trade Marks (1998) 42 IPR 615 (at 624)

4. Accordingly I commence with a consideration of whether the opposed application covers goods similar to the goods covered by registrations 168971 or 290616, or closely related to the services covered by registration 1056237.

5. Section 14(1) of the Act defines “similar goods” as follows:

   For the purposes of this Act, goods are similar to other goods:

   if they are the same as the other goods; or

   if they are of the same description as that of the other goods.

6. As mentioned, the opposed application covers “Clothing, including children’s clothing, headgear and footwear”.  It is apparent that the goods described as “Clothing, including children’s clothing” and “headgear” are essentially identical to the “Clothing for men, women and children” and the “headwear including hats and caps” covered by registration 290616.  Clearly, too, “footwear” is covered by registration 168971.  It is thus not necessary to determine whether all or any of the goods covered by the opposed registration are also “closely related” to the services covered by registration 1056237 and I now turn to the issue of “deceptive similarity” on the basis that both parties’ respective trade marks cover identical goods.

7. In the Woolworths Metro case (supra) French J conveniently summarised the issues surrounding deceptive similarity under the Act:

   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) 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.”

8. It is well established that in order to assess deceptive similarity the trade marks should not be compared side by side.  Rather, I should attempt to assess the effect or impression produced on the mind of potential purchasers of “Clothing, including children’s clothing, headgear and footwear”, who know of the Opponent’s Trade Mark (and perhaps have an imperfect recollection of it), when they encounter footwear, clothing and/or headgear bearing the opposed trade mark.  In this regard it is enough if the person of ordinary intelligence and memory would be caused to wonder, or be left in doubt, about whether the goods in question come from the same source.

9. Mr Bebber stressed the fact that the Opponent’s Trade Mark was on the face of it “highly distinctive”, that is inherently distinctive, in relation to Class 25 goods, since it did not apparently refer in any way to such goods.  In particular the Opponent’s Trade Mark featured the element PUPPIES, which had no obvious connection with Class 25 goods[5], but which had subsequently been adopted and incorporated by the Applicant (albeit in its singular form “Puppy”) as a principal element of the opposed Posh Puppy trade mark.  Further, the qualifying element POSH in the opposed trade mark shared obvious resonances on several levels with the element HUSH of the Opponent’s Trade Mark.  Accordingly, Mr Bebber submitted, when considered as wholes the Posh Puppy trade mark was deceptively similar to the HUSH PUPPY trade mark because there was a real likelihood that some consumers of Class 25 goods would wonder or be left in doubt about whether goods bearing the respective trade marks came from the same source.  In this case, he said, many consumers would wonder about, or even assume, an association of some kind, such as that Posh Puppy branded goods were a “luxury” range of similar goods bearing the HUSH PUPPIES trade mark.  Moreover, he added, citing Sports Café Ltd v Registrar of Trade Marks (1998) 42 IPR 552 at 557, further scope for confusion was inherent in the likely tendency of people to shorten phrases such that both parties’ goods might be referred to as “puppies”.

   [5] Mr Zwiers does explain in his declaration how the Opponent came to adopt the HUSH PUPPIES trade mark in 1958 in the United States, but this information does not take away from the trade mark’s inherent distinctiveness for Class 25 goods in my view and there is no evidence the origin of the trade mark would be generally known to Australian consumers in any event.

10. For his part the Applicant states in his declaration his belief that “The trade mark Posh Puppy (Application 1064467) and Hush Puppies are not similar and will not cause any confusion in the market place.” (sic)  Whereas he “acknowledge[s] that in Australia the Hush Puppies mark is recognised in relation to footwear and nothing else”,  his intention is to use the opposed trade mark principally “on kids clothing such as jeans, shirts, dresses and jackets” (and not “on any adult clothing”) and, to a lesser extent, “on headgear and footwear to complement our kids clothing”.  He considers “Australian consumers will recognize and associate the Posh Puppy brand with kids clothing and not shoes”, that “It is highly unlikely, or even impossible, that a consumer that is interested in purchasing a Hush Puppies pair of shoes will mistakenly end up buying a Posh Puppy kids jacket or kids dress” and that “Australian consumers will be able to easily distinguish between the Posh Puppy and Hush Puppies marks”.

11. While the issue of the opposed trade mark’s originality is of no relevance as such to the question of deceptive similarity, which is an objective question, I mention that the Applicant also states in his declaration that he “honestly devised the Posh Puppy mark without any reference to Hush Puppies and [he is] not interested in taking a free ride on the reputation of Hush Puppies or any other company for that matter”.

12. It is apparent from the Applicant’s declaration, however, that the Applicant may have misunderstood the nature of the possible confusion the Opponent says is likely.  It may indeed be “highly unlikely, or even impossible, that a consumer that is interested in purchasing a Hush Puppies pair of shoes will mistakenly end up buying a Posh Puppy kids jacket or kids dress”, but that is not what the Opponent needs to show.  Rather, as mentioned, 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 or not the Class 25 goods of the Opponent and of the Applicant come from the same source.  Applying this test I am satisfied the trade marks in question, when compared as wholes, are deceptively similar.  Whether consciously or not, the Applicant is effectively seeking to adopt an essential, and on the face of it inherently distinctive, feature of the Opponent’s Trade Mark, namely the element PUPPIES (or PUPPY).  The likelihood of confusion, or indeed of deception, amongst a significant number of consumers of relevant Class 25 goods would not in my view be mitigated by the Applicant’s qualifying this distinctive element with the word POSH, which itself resembles the element HUSH of the Opponent’s Trade Mark so closely; indeed, it would arguably increase the likelihood of confusion or deception.

1. In summary, I have found that the opposed trade mark is deceptively similar to the Opponent’s Trade Mark and that the opposed application covers goods identical to those covered by registrations 168971 and 290616. There is no evidence before me that the Applicant has used the opposed trade mark, nor any evidence of other circumstances which might enable the Applicant to rely on sections 44 (3) or 44(4) of the Act. The Opponent has accordingly established its ground of opposition under section 44.

2. I mention that in acknowledging the Opponent’s Trade Mark “is recognized in relation to footwear and nothing else” in Australia the Applicant has stated in his declaration that “If the Posh Puppy mark will cause confusion for Australian consumers then I am willing to drop ‘footwear’ from the mark”. This would however still leave the opposed application covering goods identical to, inter alia, the “clothing for men, women and children” covered by the Opponent’s registration 290616 and would not therefore be enough to overcome the potential for confusion between the Posh Puppy trade mark and the Opponent’s Trade Mark. In this regard it is the statutory rights granted by registration 290616, that is the full range of the goods covered by the registration, that I must consider when assessing the position under s.44 and not any reputation the HUSH PUPPIES mark may have in Australia for clothing and headgear as a result of its past use, if any, for some of those goods.

   Section 59

3. The ground based on section 59 is indicated in the Notice as follows:

   The Applicant does not intend to use, or authorise the use of, or to assign to a body corporate for use by the body corporate in Australia, the trade mark in relation to the goods specified in the application.

4. Section 59 of the Act is reproduced below:

   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.

5. In support of this ground the Opponent points to the following statements made by the Applicant in his declaration:

   “The Posh Puppy mark will be used on kids clothing such as jeans, shirts, dresses and jackets.”;

   “The Posh Puppy mark will also be used on headgear and footwear to complement our kids clothing.”; and

   “The Posh Puppy mark will not be used on any adult clothing.”

6. In light of these statements by the Applicant Mr Bebber argued the Applicant did not have the required “intention to use or authorise the use of the POSH PUPPY trade mark in relation to his broad claim of ‘clothing’ in class 25” (my emphasis).

7. Hearing Officer Debrett Lyons conducted a review of authorities on the issue of intention to use in the recent decision of Americana International Limited v Suyen Corporation (2008) 75 IPR 596 (“the BENCH BODY Logo case”). The first observation made by the Hearing Officer is that there have been a number of decisions noting s.59 is written in the present tense and that its operation is therefore a continuing one. As the Hearing Officer put it (at [27]):

   What is clear is that the intention of the applicant is an ongoing intention not limited by its state of mind at the filing date of the application. Less clear is the proposition that the relevant date is the date the Notice of Opposition was filed. Other cases, some of which are referred to later, suggest that the relevant date is the date of the hearing, but it seems to me that the correct “cut-off” date is when the last evidence is filed. In some cases, for example where further evidence is admitted at a hearing, that date might be the hearing date. In very rare cases, it might even coincide with the filing of the notice of opposition, but what seems to me to be critical is the time when the record of admissible evidence closes.

8. In the present opposition I confirm I am for practical reasons proceeding on the basis that the relevant date for assessing the Applicant’s intention to use the opposed trade mark is 19 June 2007, being the date the Applicant made his declaration stating his then intention.

9. As discussed in the BENCH BODY Logo case, the High Court’s decision in Aston v HarleeManufacturing Co (1960) 103 CLR 391 is longstanding authority that applying to register a trade mark is prima facie evidence of intention to use. Subsequent decisions indicate this prima facie presumption may be rebutted where the evidence readily gives rise to the drawing of an adverse inference and that evidence remains unchallenged and unrebutted by the applicant[6].  In this case it is not necessary to rely on any adverse inference to impeach the Applicant’s intention to use the Posh Puppy mark for all the goods originally covered by the opposed application since the Applicant has been quite open about the issue in his declaration.  The Applicant’s statement in his own evidence that the opposed mark “will not be used on any adult clothing” is clear and unambiguous on the face of it in my view.  So indeed are the Applicant’s further statements that he does intend to use the opposed mark in relation to “kids clothing” and “headgear and footwear to complement our kids clothing”.

   [6] See for example Phillip Morris Products SA v Sean Ngu [2002] ATMO 96; Sapient Australia Pty Ltd and Sapient Corporation v SAP Aktiengesellschaft (2002) 55 IPR 638; Danjaq, LLC v Resource Capital Australia Pty Ltd (2004) 61 IPR 651

10. Based on these statements by the Applicant I accordingly find the opposition ground based on s.59 of the Act is established as far as any Class 25 goods not coming within the description “children’s clothing, headgear and footwear” are concerned.

    Section 60

11. The ground based on section 60 is indicated in the Notice as follows:

    The trade mark is substantially identical with, or deceptively similar to, a trade mark that, before the priority date of the registration of the first-mentioned trade mark, had acquired a reputation in Australia and 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.

12. Section 60 of the Act itself (as it stood at the date the opposed trade mark application was filed[7]) is reproduced below:

    The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

    (a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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 1:  For deceptively similar see section 10.

    Note 2:  For priority date see section 12.

    [7] See Apple Computer Inc v Todaytech Group Ltd [2007] ATMO 80

13. Here the comparison is between the Opponent’s existing HUSH PUPPY trade mark, (in which the Opponent claims it had developed the relevant reputation in Australia as at the Priority Date), and the opposed trade mark. As regards the threshold question in paragraph (a) of Section 60, I have already found that the opposed trade mark is deceptively similar to the Opponent’s Trade Mark in terms of sections 44 and 10 of the Act. I am also satisfied that the respective trade marks are deceptively similar in terms of section 60.

14. Evidence concerning the use and reputation of the Opponent’s Trade Mark is contained in the declarations of James Zwiers, Kellie Anne Fenwick, Malcolm Ford, David Andrew Gordon and Don Murphy.  In my view the evidence shows that reputation, particularly in relation to footwear, was on the face of it very substantial as at the 12 July 2005 filing date of the opposed application.  Mr Zwiers, who is the Opponent’s President, states that the Opponent was established in the United States in 1883 and has been producing shoes since at least 1903, eventually being listed on the New York Stock Exchange in 1965.  He indicates the Opponent’s Trade Mark has been used continuously in Australia for footwear since 1961.  Elsewhere, Mr Zwiers says the trade mark has been used in Australia “with respect to footwear, shoe care products, socks, handbags, small leather goods (such as wallets, change purses and cell phone cases), eye wear and plush toys”.  While Mr Zwiers does not indicate when use for goods other than footwear actually commenced, he does provide approximate wholesale sales figures for these “non-footwear” goods in Australia for the years 1998 to 2005 inclusive and I note these figures are not insignificant. 

15. Mr Zwiers also provides approximate annual wholesale sales figures for footwear bearing the Opponent’s Trade Mark for the years 2001 to 2005 inclusive and I note these are in the tens of millions of dollars for each year indicated.  He mentions that relevant goods “are sold throughout Australia by large and small footwear retailers including national department stores such as Myer and David Jones and footwear retailers such as Hannah’s, Mathers (part of Colorado Group), Shoes and Sox, Betts and Harris Scarfe”.

16. As regards advertising and promotion, Mr Zwiers provides details of substantial amounts spent in Australia by the Opponent since the year 2000 in relation to both “footwear” and “non-footwear” bearing the Opponent’s Trade Mark.  He gives examples of advertising via billboards, on public transport, at trade launches and fashion parades and of advertising campaigns run in several well known magazines.  Mr Zwiers also indicates that significant promotion occurs through the Opponent’s website at and mentions that “In each month between August 2005-June 2006, that website received between 114,000-278,000 hits per month.”

17. Mr Zwiers also attests to what he describes as “the uniqueness of the ‘puppy’ element in the market place” and the fact that the Opponent “has extensively used images and photographs of a bassett hound for its goods, which reinforces the unique ‘dog’ or ‘puppy’ idea”.  Indeed he annexes details to his declaration of several longstanding trade mark registrations consisting of a photograph of a bassett hound owned by the Opponent for goods in Classes 9, 14 18 and 25 and for related services in Class 35.  In this regard it is apparent from the many examples of print and other advertising material accompanying Mr Zwiers’ declaration that a representation of a bassett hound is indeed often used in close proximity to the Opponent’s Trade Mark.

18. Kellie Anne Fenwick and Don Murphy are footwear buyers for Mathers Pty Ltd and Myer Pty Ltd respectively.  Ms Fenwick considers that the Opponent’s Trade Mark is “a very well established brand with a substantial level of brand recognition” and that “Even without advertising, customers visit our stores and specifically ask for HUSH PUPPIES footwear”.  She states that if she were to see the trademark POSH PUPPY on clothing, footwear and headgear she would “expect this to be a brand extension of HUSH PUPPIES”.  Mr Murphy considers “the HUSH PUPPIES trade mark to be one of the strongest brands in Australia” and says that if he encountered clothing, footwear and headgear bearing the POSH PUPPY trade mark he “would regard this as an attempt at establishing, in the minds of consumers, an association between his goods and goods bearing the HUSH PUPPIES trade mark”.

19. David Gordon is the CEO of R Hannah & Co Ltd, “a footwear retailer with 83 outlets across New Zealand and Australia” trading as HANNAH’S, PULP and HUSH PUPPIES.  Mr Gordon has over 10 years experience in the footwear and clothing industries and describes consumer recognition of the HUSH PUPPIES brand in Australia as “extremely high”.  He says that if he saw the POSH PUPPY trade mark on clothing, footwear and headgear he “would interpret this as being an attempt to pass-off such goods as HUSH PUPPIES goods”.

20. Malcolm Ford is the Group General Manager of Pacific Brands Footwear Pty Ltd, which he indicates is the largest distributor and wholesaler of footwear in Australia whose brands enjoy a 30% share of the footwear market.  Mr Ford has some forty years experience in the footwear industry and considers “the HUSH PUPPIES trade mark has a very high level of recognition and reputation in the Australian market”.  He says he “would expect significant confusion to ensue amongst consumers between the trade marks HUSH PUPPIES and POSH PUPPY” and that were he to see clothing, footwear and headgear bearing the opposed trade mark being sold in Australia he “would expect those products to have been made by or made with authority from [the Opponent]”.  He annexes the results of a brand awareness survey conducted by Sweeney Research, which he describes as “one of the leading qualitative researchers in Australia”, and which survey I am assuming was commissioned by the Opponent or its Australian licensee.  The survey indicates a “brand awareness” of “Hush Puppies® MENS” of 85% and of “Hush Puppies® WOMENS” of 94%.  It may of course be that the survey participants were chosen amongst customers in stores prominently featuring the Opponent’s Trade Mark.  Of those surveyed almost half had apparently purchased HUSH PUPPIES branded footwear in the past and/or were considering doing so at the time.  Neither the methodology, nor sample size or type, nor margin of error of the survey is disclosed and its evidentiary value must be considered in this light.  I do nevertheless note the survey results bear the interesting comment “Grosby is seen as being the most similar product –could be due to the dog?”.  This is, I believe, a reference to advertising by another footwear manufacturer for goods bearing the trade mark GROSBY and which advertising I recall may feature an animated blood hound character.

21. After considering all of the evidence going to the reputation of the Opponent’s Trade Mark in Australia as at the Priority Date I am satisfied use of the POSH PUPPY trade mark for “Clothing, including children’s clothing, headgear and footwear” would be likely to deceive, or cause confusion amongst, a significant number of consumers. The Opponent has accordingly established its ground of opposition under s.60.

    Section 42(b)

22. The ground based on section 42(b) is indicated in the Notice as “The use of the trade mark would be contrary to law”, echoing the words of section 42(b) which state “An application for the registration of a trade mark must be rejected if its use would be contrary to law.”

23. At the hearing Mr Bebber submitted use of the opposed trade mark would be contrary to law because it would offend against ss.42(1) and 44(e) and (f) of the Fair Trading Act 1987 (NSW) (“the FTA”). These sections deal respectively with misleading or deceptive conduct and with the making of false or misleading representations and are reproduced below:

    s.42(1) A person shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

    s.44 A person shall not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:

    (…) 

    (e)  represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have;

    (f)  represent that the person has a sponsorship, approval or affiliation the person does not have.

24. These provisions of the FTA are essentially identical to ss.52(1) and 53(c) and (d) of the Trade Practices Act 1974 (C’wealth) (“the TPA”) and it is thus reasonable to consider them in the light of the significant judicial precedent on the corresponding Commonwealth legislation.

25. Mr Bebber’s submission was simply that the Opponent had established sufficient reputation in the HUSH PUPPIES mark to support a finding that use of the opposed mark would be misleading or deceptive or would amount to the representations complained of. I have already found the opposed trade mark is deceptively similar to the Opponent’s Trade Mark in terms of sections 44 and 60 of the (Trade Marks) 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 representations), than is the case with trade marks likely to deceive or cause confusion under sections 44 or 60. In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 1a IPR 684, by way of example, Gibbs, CJ noted with respect to s.52 of the TPA (at 688):

    In McWilliam's Wines Pty Ltd 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.

26. That said, I am satisfied on the evidence that the reputation of the Opponent’s Trade Mark, particularly in relation to footwear but also perhaps extending to items including socks, shoe care products, handbags, small leather goods, eyewear and plush toys, was substantial and of long standing as at the Priority Date. As mentioned in connection with the s.44 ground discussed above, the Applicant’s proposed adoption of the distinctive and memorable element PUPPIES, (by way of its singular form PUPPY), especially given a single bassett hound is often featured in the Opponent’s advertising and promotional material, is in my view significant, whether or not done by the Applicant with intent to mislead or deceive or to suggest some association with the Opponent. The substitution of the element POSH for the element HUSH does nothing to reduce the likelihood of consumers being misled; in fact it probably enhances it. I accordingly accept that use of the POSH PUPPY trade mark would be likely to mislead or deceive and/or amount to the representations complained of. I thus find that the Opponent has established its ground under section 42(b).

    Decision

27. Section 55 of the Act provides:

    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.

28. I have found the Opponent has established the grounds it raised pursuant to sections 44, 42(b) and 60 of the Act and has partially established the ground based on s.59 of the Act. I accordingly refuse to register trade mark application number 1064467.

    Costs

29. Mr Bebber requested an award of costs in the Opponent’s favour.  As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Applicant as per Schedule 8 of the Trade Marks Regulations 1995.

    Michael Kirov
    Hearing Officer
    Trade Marks Hearings
    27 November 2008