Yarrum Group Pty Ltd v iGear.com.au Pty Ltd

[2020] ATMO 138

TRADE MARKS ACT 1995

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

Re:Opposition by Yarrum Group Pty Ltd to registration of trade mark application number 1782666 (classes 9 and 35) - iGear - in the name of iGear.com.au Pty Ltd.

Delegate:

Louise Tuohy

Representation:

Opponent: Matt Murphy of Counsel instructed by Timothy Graney of Johnston Withers Lawyers.

Applicant: Trevor Dredge of Intellepro.

Decision:

2020 ATMO 138

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42, 44, 58, 59 60 and 62A – ss 42(b), 58, 59 and 60 pressed – grounds under s 58 partially successful, grounds under ss 42(b), 59 and 60 not established.

Background

1. This is an opposition filed by Yarrum Group Pty Ltd (‘the Opponent’) under s 52 of the Trade Marks Act 1995 (‘the Act’) and related to trade mark application 1782666 (‘the Trade Mark’) in the name of iGear.com.au Pty Ltd (‘the Applicant’). The relevant details of the Trade Mark are set out below:

Trade Mark:         

Application No: 1782666

Filing Date:  12 July 2016

Specification:  Class 9: Handheld or wearable mobile digital electronic devices including mobile phones; carriers, holders and cradles adapted for mobile phones; cases adapted for mobile phones; mobile phone cases, covers sets and straps; protective films adapted for mobile phone screens; leads, cables and connectors for handheld or wearable mobile digital electronic devices; power supplies, batteries chargers and adapters for handheld or wearable mobile digital electronic devices; earphones, wireless speakers and headsets; mobile phone sim kits; wireless accessories being headsets, stylus pens, for handheld or wearable mobile digital electronic devices; camera stands including handheld stands for self photography; multiposition camera stands made from aluminium and steel tubing; selfie sticks for use with mobile phone camera; all the above excluding computers and computer accessories

Class 35: Retail and wholesale services; advertising and marketing services; advertising and marketing services including the promotion of electrical, computer, phones and related accessories for others; retail stores featuring electrical, computer, phones and related accessories; retail of electrical, computer, phones and related accessories; promotion of electrical, computer, phones and related accessories; consultancy relating to sales promotions; sales promotions at point of purchase or sale (for others); ordering services (for others); computerised stock ordering including Internet based ordering; retailing and wholesaling of electrical, computer, phones and related accessories by way of point of sale displays, furniture and accessories; supply of retail point of sale displays and displayed goods including accessories for mobile phones, tablets and computers; wholesale for later retail of mobile phone connectors, leads, adapters, covers, phone protectors and wallets and other prepacked phone accessories displayed on retail display stands and supply of the retail display stands; retail and wholesale of handheld or wearable mobile digital electronic devices and related accessories; retail of handheld or wearable mobile digital electronic devices and related accessories

2.     Following examination, IP Australia advertised the acceptance of the application for possible registration in the Australian Journal of Trade Marks on 16 November 2017.

3.     On 11 January 2018 the Opponent filed a Notice of Intention to Oppose the registration of the Trade Mark.

4.     On 9 February 2018 the Opponent filed its Statement of Grounds and Particulars (‘the SGP’), then filed Additional Information to the SGP on 19 March 2018 completing the Notices of Opposition.

5.     A Notice of Intention to Defend the opposition was filed by the Applicant on 10 April 2018.

6.     Thereafter the Opponent and Applicant filed evidence in accordance with the provisions of the Trade Marks Regulations 1995 (‘the Regulations’).

7.     On 20 February 2020 the Applicant requested an oral hearing and the opposition was referred to me as a delegate of the Register of Trade Marks. I heard the matter on 8 July 2020. The Opponent was represented by Matt Murphy of Counsel who was instructed by Timothy Graney of Johnston Withers Lawyers. The Applicant was represented by Trevor Dredge of Intellepro.

Grounds of Opposition, Relevant Date and Onus

1. In the SGP the Opponent nominates the grounds of opposition under ss 42(b), 44, 58, 59, 60 and 62A of the Act. The Opponent pressed the grounds under ss 42(b), 58, 59 and 60 in the hearing.

2. The rights of the parties are to be determined as at the date of the application[1] which is generally, but not always, the filing date.[2] For the purposes of s 60 which speaks of the priority date, the Relevant date is 12 July 2016 which, in this case, is the same as the filing date of the application. Sections 42, 58 and 59 however, do not refer to a filing date or a priority date. I will proceed on the basis that the filing date of 12 July 2016 is the Relevant date at which to assess all the grounds in the proceedings.[3]

   [1] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, [595].

   [2] See Sections 6, 12 and 72 of the Act.

   [3] Apple Inc v Registrar of Trade Marks [2014] FCA 1304, [45].

3. The Opponent bears the onus of establishing at least one of the grounds of opposition.[4] The standard of proof is the ordinary civil standard of the balance of probabilities.[5]

   [4] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58,[32].

   [5] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132].

   Evidence

   Evidence in Support

   • Statutory Declaration of Trudy Blakeley, Director of Yarrum Group Pty Ltd, made on 16 July 2018, with Exhibits TB1 to TB70A (‘Blakeley’).

   Evidence in Answer

   • Declaration of David Adrian Crossley, Australian Managing Director of iGear.com.au Pty Ltd, made on 6 November 2017, with Exhibits DC1 to DC3 (‘Crossley’).
   • Declaration of Trevor James Dredge, Trade Marks Attorney for iGear.com.au Pty Ltd, made on 25 October 2018, with Exhibits TJD1 to TJD 9 (‘Dredge’).
   • Declaration of Jacqueline Dawn Mulhern, Assistant to the Trade Marks Attorney for iGear.com.au Pty Ltd, made on 25 October 2018, with Exhibit JDM1 (‘Mulhern’).

   Evidence in Reply

   • Statutory Declaration of Arun Thomas Mathew, Sales Assistant of Yarrum Group Pty Ltd, made on 17 December 2018 (‘Matthew’).
   • Statutory Declaration of Mark Andrew Walsh, Sales Assistant of Yarrum Group Pty Ltd, made on 18 December 2018 (‘Walsh’).
   • Statutory Declaration of Darren Neil Roderick, Customer of Yarrum Group Pty Ltd, made on 19 December 2018 (‘Roderick’).
   • Statutory Declaration of Chole Reid, Customer of Yarrum Group Pty Ltd, made on 20 December 2018 (‘Reid’).

   Additional Material

   • Written submission of Johnston Withers Lawyers for Yarrum Group Pty Ltd, dated 14 May 2019 (‘the Opponent’s Submission’).
   • Written submission of Trevor Dredge from Intellepro, Attorneys for iGear.com.au Pty Ltd, dated 13 November 2019 (‘the Applicant’s Submission’).

   The Opponent’s Evidence

   11.   In summary Blakeley claims the following:

   • The Opponent was incorporated on 21 February 2006 and is the corporate trustee of a discretionary family trust, The Alicetronics Trust. Trudy Blakeley and Hunter Fairburn Murray are the Directors and only shareholders of the Opponent since incorporation.[6]

   [6] Blakeley [5-7], [TB1].

   • Since January 2011 the Opponent has operated a store in Alice Springs in the Northern Territory that provides goods and services to customers under its plain word trade mark and its stylised trade mark. The relevant details appear below:

Plain word trade mark

iGear

Stylised trade mark

Good and Services

Retail of the following goods: iPhones and Mobile Phones; Mobile Phone Cases; Tempered Glass Screen Protectors; Charge Cables and Adaptors; USB Drives and MicroSD Memory Cards; Headphones and Bluetooth Speakers; Macbooks and iPads; Powerbanks and Batteries; iPods; MP3 and MP4 Devices; FM Transmitters; Prepaid Phone Recharge or Top-up Vouchers; Simcards; Gadgets for Portable Phones and Devices.

Provision of the following services: Insurance Assessments and Quotes; Mobile Phone Repairs; Screen Replacements; Water Damage Repairs; Replacement of Batteries; MacBook Repairs; Sim Card Cutting; MacBook Upgrades; Phone Data/Contacts Recovery.

• Marked as confidential the Opponent has provided annual sales turnover and advertising expenditure under the trade marks for the years 2011 to 2016.[7]
• The Opponent advertises and promotes its trade marks through regional television stations,[8] the local cinema,[9] the local newspaper,[10] brochures and flyers,[11] local radio,[12] directory listings,[13] and on social media.[14]
• The Opponent has used the trade marks on the uniforms of staff and the interior and exterior of its premises,[15] as well as business cards, letterheads, invoices, job orders and credit application forms.[16]
• The Opponent’s trade marks have been used in supporting and sponsoring events and programs organised by the Chamber of Commerce NT, Bendigo Bank, Our Lady of Sacred Heart School, Larapinta School, IDA Standley Preschool, Central Hockey Club, Mobile Muster, MISS ART Program and the Industry Capability Network.[17]

[7] Blakeley [23], [27], [TB7 to TB10].

[8] Blakeley [31], [31.1.1 to 31.1.2], [TB12 to TB14A], [31.2 to 31.2.4], [TB15 to TB16A].

[9] Blakeley [31.3], [TB17].

[10] Blakeley [31.6 to 31.7], [TB23 to TB25].

[11] Blakeley [31.8 to 31.8.4], [TB10], [TB26 to TB28].

[12] Blakeley [31.9 to 31.9.4], [TB28A to TB30].

[13] Blakeley [31.4], [TB18 to TB19], [31.5], [TB20 to TB22], [32.2], [TB35 to TB36].

[14] Blakeley [32.1 to 32.1.4], [TB31 to TB34].

[15] Blakeley [33], [TB41 to TB41A].

[16] Blakeley [34], [TB42].

[17] Blakeley [35], [TB43 to TB53].

The Applicant’s evidence

12.   In summary Crossley claims the following:

• The Applicant has been using the Trade Mark in Australia since March 2013.[18]
• The Applicant provides wholesale services to retailers and its business model involves supplying point of sale display stands to the retail outlets. The display stands carry packed product in individual packaging with the Trade Mark applied to the display stands and on the product packaging. Retailers at the outlets replenish supplies by placing orders when a company representative visits the store.[19]
• As at the Relevant Date the Applicant had supplied goods to 1,581 retail outlets in all Australian States and Territories. The retails outlets include newsagents, convenience stores, pharmacies, and gift shops. [20]
• The Applicant has not provided sale revenue figures, however it has provided ‘items delivered’ which shows individual units of goods supplied for the financial years 2013 to 2016.[21]
• The Applicant’s advertising expenditure for the financial years 2013 to 2016 is divided between marketing, packaging and display stands.[22]
• The Applicant advertises and promotes the Trade Mark in leaflets, pamphlets, catalogues, brochures, Facebook, hats, bags, balloons and at Trade Exhibitions.[23]

[18] Crossley [3].

[19] Crossley [2], [9], [DC1-2].

[20] Crossley [2].

[21] Crossley [5].

[22] Crossley [8].

[23] Crossley [6], [DC1-2].

Consideration and Reasons

Section 58

13. Section 58 of the Act relatively provides:

58 Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

14. In the SGP the Opponent particularises the s 58 ground of opposition as follows:

The Opponent first used the Opponent’s Trade Marks in 2010 in relation to the goods and services set out in Annexure A (the Opponent’s Goods and Services). The use of the Opponent’s Trade Marks was before the priority date of the Applicant’s Trade Mark, being 12 July 2016. To the best of the Opponent’s knowledge, the Applicant’s Trade Mark was not in use in Australia before 15 November 2012 and the Applicant would not be in a position to assert use before the date of first use of the Opponent’s Trade Marks.

15.   The Opponent’s goods and services set out in Annexure A to the SGP is attached to this decision.  

16.   It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors. These are:

• that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[24]
• that the Applicant’s services are the ‘same kind of thing’ as the services for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[25]and
• that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[26]

[24] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.

[25] Re Hicks’ Trade Mark (1897) 22 VLR 636.

[26] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, [413].

Substantially Identical Trade Marks

17.   In assessing whether trade marks are substantially identical the test stated by Windeyer J in Shell Company of Australia v Esso Standard Oil (Australia) Ltd is applied:

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 feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. [27]

[27] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1961) 109 CLR 407, [414].

18.   Furthermore, the Full Federal Court has said that to correctly apply the test set out by Windeyer J in determining whether the trade marks are substantially identical, first determine the essential features of each of the trade marks under comparison. More recent case law has used other words to express this test but the substance of the test itself has not changed.[28]

[28] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [206].

19.   The respective trade marks to be compared are as follows:

Trade mark	Opponent’s trade marks
iGear

20.   On a side by side comparison, I find that the trade marks are substantially identical. It is apparent that the essential feature in each of the trade marks is the word IGEAR. While there are differences in the trade marks with the Trade Mark containing a leaf device above the letter ‘i’ and the Opponent’s trade marks represented in plain or fancy script, these differences do not outweigh the similarity between them. Accordingly, a total impression of resemblance emerges from a comparison of the trade marks.

Same Kind of Thing

21.   What constitutes goods or services ‘of the same kind’ was considered by Allsop J in Colorado Group Ltd v Strandbags Group Pty Ltd :

The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes: Jackson v Napper 35 Ch D 160. This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods ‘though not identical... yet substantially the same’ (Hemming HB, Sebastian’s Law of Trade Marks (4th Ed) p 91) or ‘goods essentially the same... though they pass under a different name owing to slight variations in shape and size’ (Kerly DM and Underhay FG, Kerly on Trade Marks (3rd Ed) p 206). This approach is conformable with the terms of the 1995 Act.[29]

[29] Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184, [88-89].

22.   A wide range of goods and services has been designated in the SGP and in Blakeley. However, the question arises as to whether the Opponent’s use of its trade marks is actually ‘use’.  In  Brother Industries Ltd v Dynamic Supplies Pty Ltd, Tamberlin J said:

Section 7(4) defines ‘use’ of a trade mark not only as the application of the mark to the product itself, but also the application of the mark to other items relating to the product, such as packaging, invoices, correspondence and advertisements: see Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd [1974] HCA 51; (1974) 131 CLR 592 at 600 (per Jacobs J); Angoves Pty Ltd v Johnson (1982)43 ALR 349 at 359-360 (per Deane J); Davison M, Johnston K and Kennedy P, Shanahan’s Australian Law of Trade Marks & Passing Off (3^rd ed, Lawbook Co., 2003) at [2.145] and [2.230]. Sections 9(1)(b)(i), 9(1)(c)(ii) and 9(2) of the Act provide that a trade mark used on an invoice or attached to either the packaging in which the product is stored or transported is to be taken as being applied in relation to the goods. Accordingly, the use of the Sample Packaging or invoices displaying the mark in respect of the Sample Units is ‘use’ of a trade mark within s 7 of the Act. [30]

[30] Brother Industries Ltd v Dynamic Supplies Pty Ltd [2007] FCA 1490, [54].

23.   The Opponent claims use of the Opponent’s trade marks on the range of goods outlined in Annexure A which covers electrical/electronic equipment and accessories. While the evidence shows examples of these trade marks used in advertising and in promotional material, on staff uniforms, in the interior and exterior of its premises, business cards, letterheads, invoices, job orders and credit application forms, the evidence does not show that the goods offered for sale or sold by the Opponent, are packaged or branded under the trade marks, instead the goods are sold under the manufacturer’s trade marks. Therefore, the evidence does not support the Opponent’s claim that it has used the Opponent’s trade marks in relation to goods.[31]

[31] See Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd (1967) 116 CLR 254, [271].

24.   In relation to the Opponent’s services, I am satisfied that the evidence shows use of the Opponent’s trade marks in relation to retail store services for the electrical/electronic items and related accessories listed in Annexure A of the SGP and in Blakeley, and that the retail services claimed by the Applicant are ‘the same kind of thing’. This extends to the wholesale and ordering services offered by the Applicant, though not identical, they are substantially the same as the Opponent’s retail services because they all result in the provision of goods for sale.

25.   However, in relation to the remainder of the Applicant’s services in class 35, namely the advertising, marketing and promotion services I consider these services to be quite different in nature from the Opponent’s retail services because these services do not result in the provision of goods for sale, but rather in the generation of publicity. Therefore, I am not satisfied that these services are readily characterised as ‘the same kind of thing’.[32]

[32] Trevor Clarke Holdings Pty Ltd v United Artists Corporation H.D. 12 of 1998.

26.   Finally, the Opponent claims the provision of repair, maintenance, and replacement services, as well as insurance assessments and quotes. The Applicant does not claim any of these services or any services which would be considered to be substantially the same.

27.   In review, the following designated services of the Applicant are characterised as being of the same kind:  

Class 35: Retail and wholesale services; retail stores featuring electrical, computer, phones and related accessories; retail of electrical, computer, phones and related accessories; ordering services (for others); computerised stock ordering including Internet based ordering; retailing and wholesaling of electrical, computer, phones and related accessories by way of point of sale displays, furniture and accessories; supply of retail point of sale displays and displayed goods including accessories for mobile phones, tablets and computers; wholesale for later retail of mobile phone connectors, leads, adapters, covers, phone protectors and wallets and other prepacked phone accessories displayed on retail display stands and supply of the retail display stands; retail and wholesale of handheld or wearable mobile digital electronic devices and related accessories; retail of handheld or wearable mobile digital electronic devices and related accessories

28.   This leaves the following goods and services claimed by the Applicant which are not considered to be of the same kind:

Class 9: Handheld or wearable mobile digital electronic devices including mobile phones; carriers, holders and cradles adapted for mobile phones; cases adapted for mobile phones; mobile phone cases, covers sets and straps; protective films adapted for mobile phone screens; leads, cables and connectors for handheld or wearable mobile digital electronic devices; power supplies, batteries chargers and adapters for handheld or wearable mobile digital electronic devices; earphones, wireless speakers and headsets; mobile phone sim kits; wireless accessories being headsets, stylus pens, for handheld or wearable mobile digital electronic devices; camera stands including handheld stands for self photography; multiposition camera stands made from aluminium and steel tubing; selfie sticks for use with mobile phone camera; all the above excluding computers and computer accessories

Class 35: Advertising and marketing services; advertising and marketing services including the promotion of electrical, computer, phones and related accessories for others; promotion of electrical, computer, phones and related accessories; consultancy relating to sales promotions; sales promotions at point of purchase or sale (for others)

Prior use

29.   In relation to the question of prior use, Deane J said in Moorgate Tobacco Co Ltd v Philip Morris Ltd (No.2):

The prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of ‘proprietor’ of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connexion in the course of trade between the goods with respect to which the mark is used and that person.[33]

[33] Moorgate Tobacco Co Ltd v Philip Morris Ltd (No.2) (1984) 156 CLR 414, [432].

30.   Blakeley provides clear evidence that the Opponent had first use of its trade marks in 2011 which is before any use of the Trade Mark by the Applicant.

31.   For the above reasons, I am satisfied that the Opponent has demonstrated, use by a person other than the Applicant of another trade mark, substantially identical to the Trade Mark, in relation to the same kind of services as the Applicant’s designated services.  

32.   In the circumstances, it is appropriate that I consider the additional grounds of opposition in terms of the Applicant’s goods and services in classes 9 and 35 detailed in [28] that are not the ‘same kind of thing’ as the Opponent’s services (or something similar). These goods and services will now be referred to as “the Applicant’s goods and services”.

Section 59

33. Section 59 of the Act provides:

59  Applicant not intending to use 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.

34. In the SGP the Opponent has particularised the s 59 ground of opposition as follows:

The Applicant does not (and did not at the priority date of the Applicant’s Trade Mark) have the requisite intention to use the Applicant’s Trade Mark in respect of the description of the Applicant’s services set out in Class 35 of the application for the Applicant’s Trade Mark.

To the best of the Opponent’s knowledge, the Applicant’s Trade Mark is only in use in relation to certain Goods described in Class 9 of the Application and it is not in use in relation to any of the services described in Class 35 including but not limited to any in respect of advertising, marketing, consulting, ordering and furniture and accessories services. Most significantly, the Opponent submits that the Applicant’s Trade Mark is not in use in relation to retail services as it engages other entities such as newsagents and convenience stores to retail its goods and it does not operate its own store or platform where it brings together a variety of goods of others in order to enable customers to conveniently view and purchase the goods.

To the best of the Opponent’s knowledge the Applicant does not have an intention to use the Applicant’s Trade Mark in relation to the services set out in Class 35 of the application for the Applicant’s Trade Mark.

35.   The act of applying for registration is taken to be evidence of a real and definite intention to use the trade mark in relation to the nominated goods and services.[34]

[34] Aston v Harlee Manufacturing Co (1960) 103 CLR 391, [401].

36.   The Full Federal Court in Food Channel Network Pty Ltd v Television Food Network GP found that the applicant’s lack of intention to use its trade mark must be established at the filing date, while acknowledging that “use (or non-use) after the date of application may be relevant in drawing inferences as to the issue of intention as at the date of application”. [35]

[35] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [74].

37.   In Suyen Corporation v Americana International Ltd Dodds-Streeton J noted:

Because the intention concerns the applicant’s state of mind, it is, as the authorities make clear, difficult for an opponent to discharge the onus it bears under s 59 of the Act. … Opposition has … succeeded where the applicant advances no or no credible evidence of the intention or concedes its absence; or where documents or the circumstances indicate an intention which is, for example, not sufficiently definite, or not directed at use as a trade mark. ^[36]

[36] Suyen Corporation v Americana International Ltd [2010] FCA 638, [212].

38.   If an Opponent establishes a prima facie case the onus shifts to the Applicant to establish that the requisite intention existed at the time of filing.[37]

[37] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100, [163].

39.   The Opponent’s argues that the Applicant has only used the Trade Mark on a limited range of goods and services and has not put forward any evidence that would show an intention to provide the disputed goods and services in the ‘course of trade’.[38]

[38] Opponent’s Submission [15-18].

40.   Crossley claims that the Applicant is constantly expanding and intends to use the Trade Mark in respect of all the goods and services.[39]

[39] Crossley [3].

41.   However, even with the concession contained in Crossley that the Applicant has not used the Trade Mark in relation to the Applicant’s goods and services, mere non-use on part of the Applicant does not, of itself, imply a lack of intention to use the Trade Mark on all the Applicant’s goods and services. In Suyen Corporation v Americana International Ltd Jacobsen J pointed out that:

There is a long standing recognition that the absence of the requisite intention to use cannot be inferred from lack of use per se, particularly as there may be good reason to defer use until the protection of registration is secured.[40]

[40] Suyen Corporation v Americana International Ltd [2010] FCA 638, [207].

42.   Moreover, the Opponent has provided no cogent evidence which would indicate that the Applicant would be incapable of providing, either alone or together with authorised commercial partners, the goods and services of the opposed application and to use the Trade Mark across the scope of the specifications.    

43.   Accordingly, the evidence provided by the Opponent only goes towards non-use and I am not satisfied that the onus has shifted to the Applicant.

44. The Opponent has not established the ground of opposition under s 59 of the Act.

Section 60

45. Section 60 of the Act provides:

60Trade 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.

46. In the SGP the Opponent particularised the s 60 ground of opposition as follows:

Through use of the Opponent’s Trade Mark Trade Marks since at least 2010, in respect of the Opponent’s Goods and Services, which is before the Priority Date of the Applicant’s Trade Mark, the Opponent has acquired a significant reputation in the Opponent’s Trade Marks within the Australian marketplace. Due to the substantial identity or deceptive similarity of the Applicant’s Trade Mark when compared to the Opponent’s Trade Marks and the fact that the Applicant’s Trade Mark is, or is intended to be, used in respect to the similar goods and services to the Opponent’s Goods and Services under the Opponent’s Trade Marks, there is a strong likelihood of deception and confusion amongst a substantial number of consumers as to the origin of the services of the Applicant’s Trade Mark, and/or whether they have been endorsed, licensed, or approved by the Opponent.

47. To establish a ground of opposition under section 60 the Opponent must demonstrate that the trade marks upon which it relies had a reputation in Australia at the priority date, which in this case is the Relevant date and because of that reputation the use of the Trade Mark would likely deceive or cause confusion.

48.   In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in section 60. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’. [41] Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner…[42]

[41] McCormick & Company Inc v McCormick [2000] FCA 1335, [81].

[42] Re ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [118].

49.   On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sale or turnover of goods sold under the trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum sale, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorship, cross-promotions, ‘contra deals’ and so forth.

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sale may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an association of the trade marks with the goods or services themselves. [43]

[43] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG [1999] ATMOS 23; (1999) 47 IPS 423, [426].

50. As stated above, in assessing reputation under section 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. Heerey J in Le Cordon Blue BV v Cordon Blue International Ltd states (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1995) provided some guidance:

What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient …[44]

[44] Le Cordon Blue BV v Cordon Blue International Ltd [2000] FCA 1587; (2000) 50 IPR 1.

51.   The Opponent filed evidence that its trade marks have, before the Relevant date, acquired a reputation in Australia. The Opponent operates one retail store located in Alice Springs, in the Northern Territory. The sales figures in relation to the retail services under its trade marks are moderate and the advertising figures are respectable. The evidence before me shows that the Opponent’s trade marks have been advertised and promoted though channels such as regional television stations, local newspapers and radio, directory listings, social media and through the sponsorships of community events.

52.   In my assessment, the Opponent’s trade marks had prior to the Relevant date a strong reputation amongst residents of Alice Springs and the Northern Territory in relation to its retail services and that the reach of its trade marks was not limited to the Northern Territory because of interstate tourists and its promotional activities.[45]

[45] Blakeley [19].

53.   However, given consumers of specialist electronics retailers in Australia are likely to buy from a shop directly or online, it has to be noted that the Opponent operates only one retail store located in Alice Springs and does not operate an online shopping site.

54.   The evidence before me does not demonstrate the ‘recognition’ and ‘esteem’ required to show a significant or substantial reputation in the Opponent’s trade marks to the relevant Australian public.

55. The Opponent has not established the ground of opposition under s 60 of the Act.

Section 42

56.   Section 42 of the Act relatively provides:

42         Trade Mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

(a)…

(b) its use would be contrary to law.

57. In the SGP the Opponent has particularised the s 42(b) ground of opposition as follows:

Use by the Applicant of a substantially identical or deceptively similar trade mark is likely to result in conduct which is in contravention of Schedule 2 of the Competition and Consumer Act 2010 (Cth) (the ACL) under Section 18 which prevents conduct that is misleading or deceptive, or likely to mislead or deceive. Such conduct is also likely to be in contravention of Section 29 (g) of the ACL for making a false and misleading representation that the goods under the Applicant’s Trade Mark have sponsorship, approval, performance characteristics, accessories, uses or benefits which are from, or associated with the Opponent. Use by the Applicant would also constitute the tort of passing off.

58. As with all the grounds of opposition, the onus of proof rest with the Opponent and in that regard the case law on s 42(b) of the Act requires it to show that use of the Trade Mark would be, rather than could or might be contrary to law. [46]

[46] Advantage Rent a Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

59. There is no relevant misrepresentation that would support this claim. Section 18 of the Australian Consumer Law [47] (‘ACL’) is concerned with misleading or deceptive conduct. I have found that the Opponent failed to establish a ground of opposition under s 60 of the Act and the case law relevant to the ACL has made it plain that s 18 imposes a more stringent test than that for deception or confusion under s 60.[48] Further, the alleged breaches of s 29 of the ACL can also be dismissed since it has been held that where a trade mark does not offend s 18 of the ACL, neither will it offend s 29 of the ACL [49] or constitute the tort of passing off.

[47] Schedule 2 to the Competition and Consumer Act 2010 (Cth).

[48] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; 91982) 149 CLR 191, [198].

[49] In Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, Beaumont J considered – on connection with the superseded Trade Practices Act 1974 (‘TPA’) that ‘the Court’s conclusion on section 52 would necessarily carry with it a conclusion on section 53 (c) and (d). Sections 53(c) and 53(d) of the TPA are the equivalent provisions to sections 29(1)(g) and 29(1)(h) of the ACL.

60. The Opponent has not established the ground of opposition under s 42(b) of the Act.

Decision

61. Section 55 of the Act relatively provides:

55          Decision

(1)    Unless subsection (3) applied to the proceeding, 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.

62. I am satisfied that the Opponent has partially made out its ground of opposition under s 58 of the Act in relation to the following designated services in class 35:

Class 35: Retail and wholesale services; retail stores featuring electrical, computer, phones and related accessories; retail of electrical, computer, phones and related accessories; ordering services (for others); computerised stock ordering including Internet based ordering; retailing and wholesaling of electrical, computer, phones and related accessories by way of point of sale displays, furniture and accessories; supply of retail point of sale displays and displayed goods including accessories for mobile phones, tablets and computers; wholesale for later retail of mobile phone connectors, leads, adapters, covers, phone protectors and wallets and other prepacked phone accessories displayed on retail display stands and supply of the retail display stands; retail and wholesale of handheld or wearable mobile digital electronic devices and related accessories; retail of handheld or wearable mobile digital electronic devices and related accessories

63.   Therefore, I direct that unless this decision is appealed, after one month from the date of this decision, the services in class 35 of Trade Mark 1782666 listed above be deleted from the application.

Costs

64.   Both parties have requested that costs be awarded and I see no reason to depart for the general rule that costs follow the event. As the successful party the Opponent is so entitled and I award costs against the Applicant as per Schedule 8 of the Trade Marks Regulations 1995.

Louise Tuohy

Hearing Officer

Trade Marks Hearings

17 August 2020

Annexure A

Retail goods and services including retail goods and services in respect of carriers adapted for mobile phones; cases adapted for mobile phones; cellular mobile telephones; holders adapted for mobile phones; local mobile telephone systems; mobile communication terminals; mobile data apparatus; mobile data communications apparatus; mobile data instruments; mobile phone cases; mobile phone covers; mobile phone sets; mobile phone straps; mobile phones; mobile phones for use in vehicles; mobile radio broadcasting units; mobile radio receiving apparatus; mobile radio transmitting apparatus; mobile telecommunications apparatus; mobile work stations (computer, other than furniture); digital music (downloadable) provided from MP3 web sites on the Internet; MP3 players; carriers adapted for mobile phones; cases adapted for mobile phones; cell phone straps; cell phones; cellular phones; downloadable ring tones for mobile phones; electronic ornaments for mobile phones to indicate incoming calls; entry phone apparatus; entry phones; hands free kits for phones; holders adapted for mobile phones; mobile phone cases; mobile phone covers; mobile phone sets; mobile phone straps; mobile phones; mobile phones for use in vehicles; phone appliances; phone covers (specifically adapted); phone plugs; video phones; cellular mobile telephones; cell phone straps; cell phones; cellular phones; cellular radio alarm communication apparatus; cellular radio alarm communication instruments; cellular radio telephone apparatus; cellular radio telephone instruments; cellular telecommunications apparatus; cellular telecommunications instruments; cellular telephones; electric cells; electric dry cells; electrical cells; electricity generating solar cells and panels; electrochemical cells; photovoltaic cells; rechargeable cells; rechargeable cellular telephone batteries; storage cells (electric); battery adaptors; battery booster cables; battery cables; battery chargers; battery charging apparatus for vehicles; battery packs; charging systems for battery operated appliances; consumer type nickel cadmium battery chargers; electric battery chargers; power supply devices for battery chargers; uninterruptible power supply apparatus (battery); apparatus for mounting cinematographic cameras on stands; auto-focus photographic cameras; camera apparatus; camera body caps; camera cases adapted or shaped to contain a camera; cameras; cameras (photography); cameras for use in broadcasting; cameras for use in identification; cameras for use in portrait photography; motion picture cameras; mounts for cameras; moving picture cameras; tripods for cameras; video cameras; carrying cases adapted for compact discs (CDs); cases adapted for mobile phones; mobile phone cases; battery chargers; chargers for electric batteries; consumer type nickel cadmium battery chargers; electric battery chargers; portable field chargers; antennae; communications antennae.