Yves Saint Laurent International BV v East West Trading Co Pty Ltd

[2002] ATMO 77

TRADE MARKS ACT 1995

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

Re:Opposition Yves Saint Laurent International BV to registration of trade mark 799678(25) – DAN LAURENT – in the name of East West Trading Co Pty Ltd. 

Background

In this matter, East West Trading Co Pty Ltd of Bondi Junction, New South Wales, (‘East West’) filed application on 9 July 1999 to register the trade mark DAN LAURENT (“the opposed trade mark”) in respect of ‘Men’s shirts’ in Class 25 of the International (Nice) Classification of Goods and Services.

The application was accepted for registration and advertised as such in the Australian Official Journal of Trade Marks on 11 May 2000.  On 11 November 2000, after seeking and receiving extension of time in which to do so, Yves Saint Laurent International BV (‘YSL’) served and filed Notice of Opposition.  The Notice cites various grounds of opposition but YSL relied on those under sections 44(1) and 60 of the Act in written submissions by Sean McManis of Baldwin Shelston Waters.  Michelle Howe of Davies Collison Cave has filed written submissions on behalf of East West

The parties have served and filed evidence in support and evidence in answer in these proceedings; however neither parties has requested to be heard.  Section 55 of the Act provides:

55  Decision

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.

As this issue is now to be decided, it has been forwarded to me as a delegate of the Registrar of Trade Marks for my decision.

The Evidence

The evidence comprises a statutory declaration in support of the opposition by Yann Kerlau, General Manager of YSL and, in answer, statutory declarations by:

·     Kevin Franklin, Merchandise Controller of Lowes Manhattan Menswear of Arncliffe, New South Wales;

·     Katherine Louise Kemp, Trade Mark Researcher, Davies Collison Cave; and,

·     Vashi Bulchand Melwani, Director of East West.

The evidence shows that the YVES ST LAURENT trade mark has been extensively used in Australia since 1977 on goods which include men’s clothing; I am satisfied that the evidence establishes the YVES ST LAURENT trade mark had a reputation in Australia in respect of clothing including men’s clothing and shirts at the priority date of the opposed application.

The evidence of East West shows that it has used the trade mark on men’s dress shirts since 1995; that LAURENT is a surname that occurs 175 times in a search of the Trade Marks Office SFAS facility; and, that there is one trade mark comprised of the word LAURENT in the Fashion Brand Index.

Issues

The grounds under which the opposition is argued are under section 44(1) and 60.  Prior registration is not essential for the purposes of section 60; and, details of relevant trade mark registrations by YSL for the purposes of subsection 44(1) are:

Reg No:  239394
Priority Date:             29 May 1970
Class:  25
Goods:  Clothing, including boots, shoes and slippers
Trade Mark:               

Reg No:  751529
Priority Date:             19 December 1997
Class:  25
Goods:  Clothing, belts, gloves, headgear and footwear
Trade mark:                SAINTLAURENT

In terms of section 60, YSL’s YVES ST LAURENT trade mark had a reputation at the priority date; in terms of subsection 44(1) and it had an earlier registration for the same or similar goods.  The evidence does not show that the YSL trade mark SAINTLAURENT had a reputation at the priority date. 

The remaining issue, in common to both sections 44 and 60, is whether the trade marks at issue are deceptively similar.  These trade marks are the words YVES ST LAURENT SAINTLAURENT on the one side and DAN LAURENT on the other.  YSL has alleged, both in evidence and submission, that it is commonplace for compound trade marks such as theirs to be foreshortened so that it could be known as LAURENT.  I am aware that this does, in fact, happen with some trade marks and the ‘shorthand’ version can itself achieve trade mark status.  However, there is no evidence that this is, in fact, the case here – or what the shorthand trade mark is, or what sort of reputation it might have achieved at the priority date.  Accordingly, I take no notice of this suggestion.

Deceptive Similarity

Deceptive similarity is defined by section 10, which states:

10  Definition of deceptively similar

For the purposes of this Act, 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.

Concerning the comparison of the trade marks in question, Windeyer J said in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, at 415:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions.

Windeyer J added, at 416, that "[the] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone but, by the effect of that similarity in all the circumstances".

As submitted by Ms Howe, the test in Clark and Sharp (1898) 15 RPC 141 is apposite. One should compare the trade marks:

… bearing in mind the points of resemblance and points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding and comparing the results of such matters, but by judging the general effect of the respective wholes.

I consider that a general impression of dissimilarity emerges from the comparison.  Mr McManis, in his submissions, focuses on the import of the word LAURENT as a ‘rare’ surname.  Without deciding whether LAURENT is a rare surname or not, my general impression of the YSL trade marks is rather that they contain the surname ST LAURENT or SAINTLAURENT and that this is how the YSL trade marks will be perceived.   There is, I consider, some contextual incongruity in any focus upon the element LAURENT in isolation within the opponent’s trade marks when it is likely to be perceived and recalled by the public as a part of the compound element ST LAURENT, or SAINTLAURENT, and not as being separate or distinct within either trade mark.  While the element LAURENT is, conversely, likely to be perceived as a surname in the East West trade mark, the impact of the opposed trade mark is as a person’s name and not as being primarily composed of or comprising the word LAURENT. 

Further, in regard to the foregoing, (and without comment on whether YSL has any rights in the surname ST LAURENT) any such focus on the element LAURENT, solus, is fraught with the risk that it might imply some rights in that word as a surname, or otherwise, which do not exist in terms of section 44 and are not shown by the evidence to exist in terms of section 60.

Further, my general impression of the trade marks of the parties is that while they are patently the names of people, these people are obviously different people.

Mr McManis also makes allegations in his submissions which are based on how the East West trade mark incorporates a monogram as it appears in use and alleged similarities between his client’s trade marks and the East West trade mark as it is used.  This is not a part of the opposed trade mark as filed and, accordingly, the submissions are not relevant to these proceedings.

In view of the foregoing considerations, I am not satisfied that the trade marks of the parties are deceptively similar and YSL has not established its grounds of opposition.

Decision

YSL has not established its grounds of opposition and the opposed trade mark may on the elapse of four weeks from this decision proceed to registration.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Ian Thompson
Hearing Officer

13 September 2002