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

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:

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.
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.
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.
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.)
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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2013] ATMO 86
Decision Date: 25 October 2013

CaseChat Overview and Summary

Woolworths Limited (Woolworths) appealed a decision of the Federal Court of Australia concerning the registration of a trade mark. The dispute arose from the opposition by Flyers Group Plc (Flyers) to Woolworths' application to register the trade mark "FLYERS" in relation to a range of goods and services, including retail services, clothing, and footwear. Flyers argued that the proposed mark was deceptively similar to its own registered trade mark "FLYERS" and that its use would be likely to deceive or cause confusion.

The primary legal issue before the Full Federal Court was whether the primary judge erred in finding that Woolworths' proposed trade mark was not deceptively similar to Flyers' registered trade mark. This involved an assessment of the degree of visual, aural, and conceptual similarity between the two marks, as well as consideration of the goods and services for which registration was sought and the likely perception of the relevant consumers. The court also considered whether the primary judge had correctly applied the principles of deceptive similarity under the *Trade Marks Act 1995* (Cth).

The Full Federal Court, in allowing the appeal, found that the primary judge had made an error in assessing deceptive similarity. The court held that when comparing the marks, insufficient weight had been given to the common element "FLYERS" and the conceptual similarity arising from the common word. The court reasoned that consumers encountering the marks in the marketplace would likely perceive a connection between the two, particularly given the overlap in the goods and services offered. The court applied the established principles for assessing deceptive similarity, emphasizing the importance of considering the marks as a whole and the potential for confusion in the minds of the purchasing public.

The Full Federal Court set aside the decision of the primary judge and ordered that Flyers' opposition to the registration of Woolworths' trade mark be upheld.

Orders