Woolworths Limited v Flyers Group Plc

[2013] ATMO 86

TRADE MARKS ACT 1995

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

Re:Opposition by Woolworths Limited to protection of trade mark number 1438128(25) (IR No. 1082325) - SUGAR PINK & device- in the name of Flyers Group PLC.

Delegate:

Claudia Murray

Representation:

Opponent: Ms Francesca Colubriale, Associate of Spruson and Ferguson Patent and Trade Mark Attorneys, Sydney.

Holder: Not represented.

Decision:

2013 ATMO 86

Regulation 17A.29 opposition – opposition successful under section 44 – protection refused – costs awarded against holder

Background

1. Flyers Group PLC (‘the holder’) a UK company, requested the extension to Australia of protection for International Registration number 1082325. The request is known as an International Registration Designating Australia (‘IRDA’) and it was given the Australian trade mark number 1438128. The priority date of the IRDA is 11 March 2011 and it is in respect of the following word and device trade mark:

1. The IRDA lists the following goods in class 25 of the International (Nice) Classification of Goods and Services:

   Clothing and headgear, all the aforementioned being for children.

2. No grounds for rejection under the Trade Marks Act 1995 (‘the Act’) were raised against the IRDA during examination. The IRDA was advertised as accepted for possible protection in the Australian Official Journal of Trade Marks on 22 September 2011.

3. On 22 December 2011, Woolworths Limited (‘the opponent’) filed notice of opposition to protection of the IRDA. Twelve grounds of opposition were listed in the notice. The day before, on 21 December, the opponent’s attorneys had written to this Office requesting revocation of acceptance of the IRDA under regulation 17A.27 of the Trade Marks Regulations 1995 (‘the Regulations’). They argued that a ground for rejection should have been raised under section 44, based upon the opponent’s registration number 1162224, for the plain word trade mark PINK SUGAR in classes 14, 18 and 25. Their request was declined.

4. The opponent sought and obtained extensions of time within which to file its evidence in support. Finally, it filed[1] its evidence on 21 December 2012. No evidence in answer, or indeed any correspondence whatsoever, was forthcoming from the holder, which has been without a nominated address for service in Australia throughout these proceedings.

   [1] In accordance with regulation 17A.33(3), an opponent is not required to serve a copy of its evidence on an IRDA holder that has not provided an address for service in Australia.

   The Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) came into effect on 15 April 2013. The amending Regulation repeals Subdivision 3 of Division 3 of Part 17A and substitutes it with Subdivision C – Opposition to IRDA. However, the repealed provisions referred to throughout this decision continue to apply here, because the opposition was commenced by a notice of opposition filed before 15 April 2013. (See regulation 22.9(1), Item 1.)

5. By letter dated 3 May 2013, the opponent requested a hearing on the opposition. I heard the matter, as a delegate of the Registrar of Trade Marks, on 15 August 2013 in Sydney. Ms Francesca Colubriale, Associate of Spruson and Ferguson Patent and Trade Mark Attorneys, Sydney, represented the opponent. The holder was not represented at the hearing and did not file written submissions.

Evidence

1. The evidence in relation to this opposition comprises:

Evidence in Support

• Statutory declaration of Nicole Rochelle Hands, with Exhibits NH-1 to NH-6, dated 19 December 2012.

1. Ms Hands is the opponent’s Brand Manager. Her declaration provides some background to the opponent’s use of its PINK SUGAR trade mark. She declares:

   Woolworths is one of Australia's best known companies with retail operations in the fields of food and grocery, liquor, petrol, general merchandise and consumer electronics. Woolworths commenced operations in Australia on 5 December 1924. In about 1976, Woolworths opened its first "Big W" discount department store. Big W stores have since grown to become one of Australia's largest chains of discount department stores. There are currently 176 Big W stores across Australia which employ over 25,000 people.

   In 2007, Woolworths adopted "PINK SUGAR" as the brand name for its new line of girls clothing, footwear and accessories to be promoted and sold in its stores across Australia. Since about 2007, Woolworths has promoted and sold clothing and accessories under or by reference to the trade mark "PINK SUGAR" ("Pink Sugar Goods") in its Big W stores across Australia. Pink Sugar Goods have always been primarily marketed to "Tweens" (i.e. girls aged 7 to 12) and teenage girls and are sold in Big W stores across Australia. The range of Pink Sugar Goods currently promoted and sold by Woolworths in its Big W stores across Australia includes:

   Clothing for girls aged 7 to 14 (with each item priced between $3.00 and $24.00);

   Footwear for girls aged to 14 (with each item priced between $7.00 and $35.00);

   Jewellery including bangles, necklaces, earring and headbands (with each item priced between $4.76 and $14.88); and

   Accessories, including hats, bags, scarves, baby hats, belts and wallets (with each item priced between $4.94 and $17.88).

Grounds of opposition

1. The onus is upon the opponent to establish one or more of its grounds of opposition. The Federal Court has referred to the standard of proof required in terms of a ‘balance of probabilities’.[2] In her summary of submissions provided prior to the hearing, Ms Colubriale indicated that the grounds of opposition to be pursued against the IRDA were those under sections 42(b), 44, 59 and 60 of the Act. For completeness, I note that the remaining grounds listed in the notice of opposition have not been made out. An opponent’s success in relation to a single ground of opposition usually renders unnecessary any further consideration of other grounds although, of course, those grounds would still be available to an opponent in the event of an appeal from a delegate’s decision. I will deal with the grounds in the order they were dealt with by the opponent.

   [2] Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32]; Allergan, Inc v Di Giacomo [2011] FCA 1540 (30 November 2011) per Stone J at [11] to [12].

Section 44 - Identical etc. trade marks

1. Section 44, as applied by regulations 17A.28 and 17A.31 to the present circumstances, provides that protection of an IRDA must be refused if it is in respect of a trade mark that is substantially identical with, or deceptively similar to, another person’s trade mark that has an earlier priority date, and covers goods that are similar to the holder’s goods listed in the IRDA (‘the holder’s goods’). Section 14 defines ‘similar goods’ as goods which are ‘the same’, or ‘of the same description’.

2. Ms Colubriale submitted for the opponent that her client’s trade mark registration number 1162224 for the trade mark PINK SUGAR had a priority date – 19 February 2007 – earlier than the priority date of the IRDA, and that the holder’s goods (listed above) were a subset of the class 25 goods covered by the opponent’s registration, being: ‘Clothing, including scarves; footwear; headgear, including hats’. She did not argue that the trade marks were substantially identical, but submitted that the opposed trade mark was deceptively similar to the opponent’s trade mark in terms of section 10[3], because:

   The Opposed Trade Mark comprises of the words "sugar" and "pink" (in stylised form and with a heart device aspect) being the exact (and only) words which comprise the Opponent's registered "PINK SUGAR" mark.

   When considering whether trade marks are deceptively similar, it is well established that the marks are not to be compared side by side. The requisite comparison is a general recollection or impression that is left by the marks.  In Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641 at 658, Dixon and McTiernan JJ said:

   "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same."

   The above is consistent with the principle of judging the general effect of the respective wholes.

   The Opponent adopted its trade mark "PINK SUGAR" as the brand name for its new line of girl's clothing, footwear and accessories in 2007, and such goods promoted and sold by the Opponent under that mark have always been marketed to girls aged 7 to 12 as well as teenagers. Neither "pink" nor "sugar" are invented words however, when combined, the two words (as a whole) connote sweetness and femininity. Irrespective of whether the word "pink" is used before or after the word "sugar", that same idea or impression of sweetness and femininity is ultimately conveyed.

   The doctrine of imperfect recollection strongly supports the argument that the Opposed Trade Mark could very easily be recalled as "PINK SUGAR" rather than "SUGAR PINK", particularly in circumstances where in spoken English, adjectives are used before nouns. The Opposed Trade Mark is therefore likely to be recalled as "PINK SUGAR" and confused with the Opponent's "PINK SUGAR" mark.

   In addition to the similarities between the respective marks, there is a direct overlap between the goods for which the Opposed Trade Mark is sought to be registered and the goods the subject of the Opponent's Registration No. 1162224.

   [3] 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’.

3. I agree with the opponent’s submissions. There is no appreciable difference between the impressions created by the trade marks at issue. When applied to the unarguably similar goods, the message to be carried away and retained is the same, whether the words are combined as ‘pink sugar’ or reversed as ‘sugar pink’. The script in which the opposed trade mark is rendered and the addition of heart devices reinforce, rather than alter in any way, the total impression of sweetness and femininity (as the opponent has put it) that both trade marks convey.

4. I find that the opposed trade mark is deceptively similar to the opponent’s trade mark and that the opponent’s ground of opposition under section 44 has been established.

Other grounds of opposition

1. Ms Colubriale also pressed grounds of opposition under sections 42(b) 59 and 60 against the IRDA at the hearing. However, there is no need to explore those grounds here. The opponent has succeeded in its ground of opposition under section 44 in relation to all the goods listed in the IRDA. As with the outstanding grounds originally listed in the notice of opposition, the remaining grounds of opposition pressed at the hearing would again be available to the opponent in the event of an appeal from this decision.

Decision

1. Regulation 17A.34 relevantly 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. I find here that the opponent has met the onus upon it, in terms of its ground of opposition argued under section 44. I therefore refuse protection to IRDA number 1438128 (IR Number 1082325).

Costs

1. 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, to the extent of full refusal of the protection which was otherwise to be afforded to the subject IRDA. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the holder, Flyers Group PLC.

Claudia Murray

Hearing Officer

Trade Marks Hearings

25 October 2013