FEDERAL COURT OF AUSTRALIA

Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited

 & Anor [2003] FCA 901

TRADE MARKS – appeal from decision of delegate of the Registrar of Trade Marks pursuant to s 56 of the Trade Marks Act 1995 (Cth) – nature of an appeal from an opposition hearing before a delegate – whether appeal a full hearing of factual issues on the merits – nature of onus

TRADE MARKS – whether marks are substantially identical – whether marks are deceptively similar – ’reverse’ confusion – aural similarity – visual similarity – idea conveyed by marks– imperfect recollection – proprietorship

WORDS AND PHRASES – ‘substantially identical’, ‘deceptively similar’

Trade Marks Act 1955 (Cth)

Trade Marks Act 1995 (Cth)

Patents Act 1990 (Cth)

Anheuser-Busch Inc v Budejovicky Budvar (2003) 56 IPR 182

Aristoc Ltd v Rysta Ltd (1944) 1B IPR 467

Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641      

Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353

Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 

C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42

Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375  

Chantelle v Kabushiki Kaisha Chandeal (1996) 36 IPR 563 

Clark v Sharp [1898] 15 RPC 141

Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536

Companhia Souza Cruz Industria E Comercio v Rothmans of Pall Mall (Australia) Ltd (1998) 41 IPR 497

Eno v Dunn (1890) 1B IPR 391

Ex parte O’Sullivan; re Craig (1944) 44 SR (NSW) 291

F Hoffman la Roche v New England (2000) 99 FCR 56

Fina Research SA v Halliburton Energy Services Inc (2002) 121 FCR 94

Gardenia Overseas Pte Ltd v The Garden Co Ltd (1994) 29 IPR 485

In the Matter of an Application of William Bailey (Birmingham) Ltd to Register a Trade

Mark and Opposition Thereto by AC Gilbert Co [1935] 52  RPC 136

Jafferjee v Scarlett (1937) 57 CLR 115

Johnson & Johnson v Kalnin (1993) 26 IPR 435

Lomas v Winton Shire Council (2003) AIPC 91-839

Mars GB Ltd v Cadbury Ltd  [1987] RPC 387

MID Sydney Pty Ltd v Australian Tourism Company Ltd & Ors (1998) 90 FCR 236

Pacific Publications Pty Ltd v IPC Media Pty Ltd  (2003) 57 IPR 28

Pianotist Company Ltd’s Application (1906) 23 RPC 774

Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410

Radio Corporation Pty Ltd v Disney (1937) 57 CLR 448

Re Bali Brassiere Co Inc’s Registered Trade Mark and Berlei Limited’s Application (1968) 118 CLR 128

Re London Lubricants (1920) Ltd’s Application (1925) 42 RPC 264

Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365  

Shell Co of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407

Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592

Sporoptic Pouilloux SA v Arnet Optic Illusions Inc (1995) 32 IPR 430

Sports Café Ltd v Registrar of Trade Marks (1999) 42 IPR 552

The Coca-Cola Company v All-Fect Distributors Ltd t/as Millers Distributing Company (1999) 47 IPR 481 

The Kendall Co v Mulsyn Paint and Chemicals (1963) 109 CLR 300

The Shell Co of Australia Ltd v Rohm & Haas Co  (1949) 78 CLR 601

Wingate Marketing Pty Ltd v Levi Strauss (1994) 49 FCR 89

Working Party to Review the Trade Marks Legislation, Recommended Changes to the Australian Trade Marks Legislation, Australian Government Publishing Service, Canberra, July 1992

Macquarie Dictionary (revised third edition)

TORPEDOES SPORTSWEAR PTY LIMITED (subject to deed of company arrangement) (ACN 072 597 114) V THORPEDO ENTERPRISES PTY LIMITED (ACN 082 077 110) & ANOR

N 1327 OF 2002

BENNETT J

27 AUGUST 2003

SYDNEY

ON APPEAL FROM THE DELEGATE OF THE REGISTRAR OF TRADE MARKS

THE COURT ORDERS THAT:

1.         The application is dismissed.

2.         The applicant is to pay the first respondent’s costs.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

ON APPEAL FROM THE DELEGATE OF THE REGISTRAR OF TRADE MARKS

REASONS FOR JUDGMENT

1                     This is an appeal from the decision of the Delegate of the Registrar of Trade Marks (‘the Delegate’) to accept the application made by the first respondent, Thorpedo Enterprises Pty Limited (‘Enterprises’ or ‘the respondent’) on 17 March 1999 to register the trade mark THORPEDO (‘the THORPEDO mark’).  The goods and services in respect of which the application was sought is set out in a schedule to these reasons.  The trade mark application was accepted by the Delegate and that acceptance was advertised in the official journal on 29 June 2000.

2                     On 21 September 2000 the applicant, Torpedoes Sportswear Pty Ltd (‘Sportswear’), filed a notice of opposition to the registration of the THORPEDO mark.  On 21 November 2002 the Delegate rejected Sportswear’s opposition and directed that the THORPEDO mark proceed to registration.  Sportswear appeals from that decision to this Court pursuant to s 56 of the Trade Marks Act 1995 (‘the Act’).

THE PARTIES

3                     Australian Trade Mark Registration No 585117, being PARADISE LEGENDS TORPEDOES (‘the Paradise Legends mark’), was registered by Paradise Legends Pty Ltd (‘Paradise’) in 1992 in class 28: protective paddings, protective paddings for sporting shorts, therapeutic protective padding.   Paradise assigned the Paradise Legends mark on 24 February 1998 to Torpedoes International Pty Limited (‘International’).  Paradise was placed into liquidation on 1 October 1998.

4                     International filed a trade mark application on 7 September 1998 in class 25: clothing including headgear and footwear, which is Australian Trade Mark Registration No 772346 (‘the T device mark’) as follows:

I shall refer to the large, stylised T that precedes the word Torpedoes as ‘the T device’.

5                     International was placed into liquidation on 6 December 1999.  On 9 December 1999, Sportswear acquired the assets of International, including the Paradise Legends mark and the T device mark (together, ‘the Sportswear marks’) for $25,000.  On 18 December 2000, Sportswear filed an application to register the T device mark in class 18: Travelling bags and trunks; bags, sports bags, brief cases, computer cases, attache cases, backpacks and beach bags; leather and imitations of leather, and goods made of these materials; key cases, wallets, purses, pouches, garment bags, hand bags, bum bags, waist bags, straps and shoulder belts; umbrellas, parasols, walking sticks, walking stick seats and alpenstocks.

6                     Sportswear appointed a voluntary administrator on 1 August 2001 and is subject to a Deed of Company Arrangement.  Sportswear’s only unrealised assets which are to be sold are the Sportswear marks.

7                     Mr Quin, who gave evidence for the applicant, is a director of Sportswear.  He was not, at any time, a director of Paradise Legends or of International.  He first became involved in the affairs of Sportswear in April 2000.

8                     Mr Ian Thorpe describes himself as ‘an Australian swimming representative’.

9                     The first occasion on which Mr Thorpe was called ‘Thorpedo’ was, apparently, on 17 March 1997, when it was used in an article in the Daily Telegraph newspaper.  Since then, on numerous occasions, in both the print and electronic media and in advertisements the word ‘Thorpedo’ has been referred to in connection with Mr Thorpe.  On each occasion, according to the evidence, Mr Thorpe’s name and/or his likeness have appeared when the word was used.

10                  In early 1998, Mr Thorpe instructed his financial adviser, Mr Sheridan, to incorporate a company to enter into commercial arrangements on his behalf, to be called Thorpedo Enterprises Pty Ltd.  Mr Thorpe chose the ‘Thorpedo’ part of the company name because he liked the name that the media had used to describe him.  In 2001, he instructed Mr Sheridan to incorporate Thorpedo International Pty Limited (‘Thorpedo International’).

11                  Enterprises applied for the THORPEDO mark on 17 March 1999 (‘the relevant date’). 

12                  While some goods are not within the registered classes for both the Sportswear marks and the THORPEDO mark, there are common classes of goods for which the competing marks are registered.

THE OPPOSITION

13                  The opposition was filed pursuant to s 52 of the Act.  The grounds of opposition, as permitted by s 52(4) were, essentially:

·        Enterprises is not the proprietor of the THORPEDO mark (s 58).

·        The THORPEDO mark is substantially identical with or deceptively similar to the Paradise Legends mark and the T device mark, each of which have an earlier priority date and each of which is registered for similar goods and/or closely related services as one of the classes in which the THORPEDO mark is registered (s 44).

·        The THORPEDO mark is substantially identical with, or deceptively similar to, the unregistered trade mark ‘Torpedoes’, which had acquired a reputation in Australia so as to be likely to deceive or cause confusion (s 60).

·        There is a connotation in the word ‘Thorpedo’, such that its use by Enterprises on the goods and services specified in the application, if not endorsed by Mr Thorpe himself, would be likely to deceive or cause confusion (s 43).

14                  The grounds of appeal from the Registrar’s decision pressed in the appeal are:

            ‘2.(e)    Registration of the trade mark should be refused because:

(i)                 The first respondent is not the proprietor of the Trade Mark.

…

(iii)       The applicant is the beneficial owner of Australian Trade Mark Registration No 585117 and No 772346 in Classes 28 and 25 respectively (applicant’s trade marks).  The Trade Mark is substantially identical with or deceptively similar to the applicant’s trade marks which have an earlier priority date and which are registered for similar goods and/or closely related services.

…

(v)       The Trade Mark was wrongly accepted under the provisions of Section 44 of the Trade Marks Act 1995.

(vi)      Use of the Trade Mark would be likely to deceive or cause confusion because of the reputation of another trade mark (namely the applicant’s trade marks) which is substantially identical with or deceptively similar to the opposed trade mark and which had, before the priority date for registration of the Trade Mark, acquired a reputation in Australia.’

THE NATURE OF THE APPEAL

15                  The appeal is heard in the original jurisdiction of the court and is by way of a rehearing (Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 (‘Blount’) at 506).  The Act has clearly placed the onus of establishing a ground of opposition on the opponent (Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 (‘Woolworths’); Lomas v Winton Shire Council (2003) AIPC 91-839 (‘Lomas’) at [36].  This is common ground.  It is also common ground that the appeal is a hearing de novo. 

16                  In Lomas (at [17] to [19]), the Full Court discussed the standard to be applied by a single judge in considering an appeal under s 56 of the Act and expressed what might be described as a tentative view that the Court should only uphold an opposition if satisfied that ‘the trade mark should clearly not be registered’.  The Full Court (at [17]) noted the parallels that may be drawn with the scheme of appeals in opposition proceedings under the Patents Act 1990 (Cth) (‘the Patents Act’).  Reference may be made in that regard to the decisions of Emmett J in F Hoffman la Roche v New England (2000) 99 FCR 56 (‘Roche’) at 64-66 and of Moore J in Fina Research SA v Halliburton Energy Services Inc (2002) 121 FCR 94.

17                  Neither party raised this matter during the hearing, so I gave the parties the opportunity to provide written submissions, which they did.

18                  The reasoning of Emmett J in Roche in relation to the scheme of appeals in opposition proceedings under the Patents Act is, in my opinion, applicable to appeals in opposition proceedings under the Act.  In particular, s 158(2) and s 160 of the Patents Act, to which Emmett J attached some significance in making his decision, are identical to s 195(2) and s 197 of the Act.

19                  Further, the report of the Working Party to Review the Trade Marks Legislation, dated July 1992 (‘the Working Party Report’) stated at paragraph 1.3.4 that:

            ‘the procedural steps for the conduct of opposition to registration of a trade mark should, where appropriate, be brought into agreement with those applicable to patents opposition’.

20                  The implementation of the Government’s response to the Working Party Report formed the basis for the Act (see Explanatory Memorandum of the Trade Marks Bill 1995).

21                  Adopting the test from Roche is consistent with the approach which was taken by the Full Court in Woolworths (at 371-372) to the ‘presumption of registerability’ under the Act.  Sportswear, appropriately recognises the force of the decision of Emmett J in Roche but seeks to distinguish it on the basis that, in the case of a patent, there is a right to revoke a patent improperly registered.  This ignores a corresponding right to seek rectification of the register (s 88 of the Act).

22                  In my opinion, having regard to the onus placed on the opponent, the parallels between the Patents Act and the reasons given by Emmett J in Roche, the opposition should be upheld only if the Court is satisfied that the trade mark should clearly not be registered.

THE STATUTORY FRAMEWORK

23                  Subsection 44(1) of the Act provides:

            ‘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.’

‘Deceptively similar’ is defined in s 10:

            ‘For the purposes of this Act, a trade mark is taken to be deceptively similarto another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.’

‘Similar goods’ are defined in sub-section 14(1):

            ‘(1)      For the purposes of this Act, goods are similarto other goods:

(a)               if they are the same as the other goods; or

(b)              if they are of the same description as that of the other  goods.’

24                  The applicant also relies on s 60, which provides:

‘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.’

USE OF THE PARADISE LEGENDS MARK AND T DEVICE MARK

25                  It is apparent that ‘Torpedoes’ was used by Paradise, not only as registered in either the Paradise Legends mark or T device mark, but to describe a range of performance protection apparel.  There is evidence that, in 1992, clothing called ‘Torpedoes’ which were, apparently, a form of padded shorts, were offered for sale and worn in Rugby League games, in particular by the St George team.  There is also correspondence relating to a possible manufacture and distribution of these ‘Torpedoes’ bearing the official Waratah Rugby Union logo.

26                  ‘Torpedoes’ and Paradise Legends ‘Torpedoes’ were the subject of correspondence concerning sales during 1993 and 1994.  A ban apparently imposed by the International Rugby Board in October 1993 on padded shorts may explain why there was no such evidence after that date.

27                  ‘Torpedoes’ were also advertised in Paradise merchandising catalogues in 1994/1995 and 1997/1998, not generally displaying the Paradise Legends mark but rather as a descriptive item, for example,  ‘Torpedoes for Cricket’.  The catalogue also contains the T device mark both in script and shown on the clothing.  In each case, the T device figures prominently although, in the earlier catalogue, the T device is often placed on top of, rather than next to, the word ‘Torpedoes’.  On occasions, the T device is used alone.  ‘Torpedoes’ are again described generically as items of clothing said to be suitable for different sports.  Paradise received orders for ‘Torpedoes’ in the period from July 1993 to June 1998.  Conceding that such use is not in accordance with the registered mark, Sportswear does not rely on it for the purposes of s 44 of the Act but does rely on it for the purposes of s 60, with which I will deal later.

28                  In 1997/1998 Paradise was involved in sponsoring the Australian Under 19 Cricket Championships, known as the ‘1998 Torpedoes Cup’, where the T device, the T device mark and the Paradise Legends mark were featured.

29                  As Paradise assigned the Paradise Legends mark and the goodwill of the business to International on 24 February 1998 and application for the registration of the T device mark was on 7 September 1998, I conclude that advertisement or sale of clothing by Paradise bearing the word ‘Torpedoes’ would have been prior to that date.  Similarly, advertisement and sale, both to distributors and retail, of clothing and products bearing the T device mark by International would have been during or after 1998.  The T device mark appeared on International’s letterhead. 

30                  International was placed into liquidation on 6 December 1999 and Sportswear acquired the T device mark and the Paradise Legends mark. Thereafter the T device mark was used on Sportswear’s letterhead and on clothing; products were advertised and sold and used in sponsorship by Sportswear of sporting activities, until it was placed into voluntary administration in August 2001.  Such use was, of course, after the relevant date.

31                  Sportswear produced promotional material and clothing for a broad range of sports which either did not bear a trade mark or bore different versions of identification.  These included: the T device as a stand alone feature without the word ‘Torpedoes’; the T device with the word ‘Torpedoes’ but in a spatial relationship different from that depicted in the T device mark; the word ‘Torpedoes’ on the outside of clothing, without the T device (since April 2000) and brochures for school rugby union which included advertisements for sportswear bearing the T device mark (in the years 2001, 2002 and 2003). Sportswear also marketed products which did not refer to either ‘Torpedoes’ or the T device.

USE OF THORPEDO

32                  There is no dispute that the nickname ‘Thorpedo’ has been applied to Mr Thorpe, nor that the name has been used frequently in connection with him.  There is also no dispute that Mr Thorpe has been referred to by other names, such as ‘Thorpie’ and ‘Thorpey’ and that other words have been used in connection with him such as ‘Superfish’,  ‘Torpedo’,  ‘Flipper’ and ‘Bigfoot’.  The evidence does, however, clearly establish that the word ‘Thorpedo’ has been frequently used in this way.  The evidence established that when the word was used in connection with Mr Thorpe, it was frequently in association with a photograph or live coverage of him, in fan mail and as part of introductions in interviews and at functions.  His website refers to his nicknames of ‘Thorpey’ or ‘Thorpedo’ and provides ‘thorpedo tips’.   There are seven domain names incorporating the THORPEDO mark.  There was no evidence of use of that word in connection with someone or something other than Mr Thorpe.

33                  The word has been used in a context that specifically suggests a weapon, for example ‘Australia unloads its new weapon – the Thorpedo’,  ‘the Human Thorpedo’ and ‘Thorpedo on target’ and in a more general sense, for example, ‘Australian ‘Thorpedo’ Ian Thorpe’ and ‘the swimmer, nicknamed ‘Thorpedo’’.  Sometimes, in the same article, other nicknames such as ‘Thorpey’ are used.  In one instance, the words ‘Thorpedo’ and ‘torpedoes’ have been used in the same article where the former referred to Mr Thorpe and the latter to the action of another swimmer:  ‘Heugill torpedoes Klim’.  There were also examples of the use of ‘torpedo’ in connection with Mr Thorpe, for example  ‘golden day for teen torpedo’, ‘like a torpedo’ and ‘Thorpe torpedoes yet another State record’.

34                  Sponsorship with respect to breakfast cereal, an airline, a utility and a television network utilise the nickname ‘Thorpedo’ in connection with Mr Thorpe.  In various sponsorship agreements, in the main entered into after the relevant date, Enterprises or Thorpedo International retain certain rights, for example, to approve advertisements containing a likeness of Mr Thorpe or aspects of his identity or to terminate for actions that adversely affect his reputation.  The first agreements were entered into by Enterprises, while many of the later agreements were entered into by Thorpedo International.

35                  Advertisements placed prior to the relevant date in respect of sponsorships, such as those of Uncle Toby’s Limited, refer to Mr Thorpe by the name ‘Thorpedo’.  After that date and, in particular, prior to the Sydney Olympics in September 2000, pieces of memorabilia entitled ‘Thorpedo’ and referring to Mr Thorpe, were sent to approximately 320,000 Westpac customers; approximately 250 pieces were sold.  From 1998 to 2000, approximately 1.4 million units of Uncle Tobys breakfast cereal bearing a reference to Mr Thorpe and ‘Thorpedo’ were sold.  Further, 20,000 to 30,000 copies of a book about Mr Thorpe and containing a chapter entitled ‘Thorpedo’ have been sold since publication in late 2000.

36                  While many of the promotional activities and agreements concerning ‘Thorpedo’ were entered into after the relevant date, there was significant television and general media use of the name in connection with Mr Thorpe and in the Uncle Toby’s promotion before the relevant date.

37                  One newspaper article pointed out that Mr Thorpe should register his nickname to prevent unauthorised exploitation.  In March 1998, Mr Thorpe was approached for the first time to use the name ‘Thorpedo’ commercially, in connection with swimwear.  There is no evidence that the name was used as a trade mark prior to the application by Enterprises to register the THORPEDO mark.

38                  There is also no evidence of any actual confusion in connection with the Sportswear marks arising from the above uses of ‘Thorpedo’.

THE DECISION OF THE DELEGATE OF THE REGISTRAR OF TRADE MARKS

39                  There was no dispute before the Delegate that the opponent’s trade mark registrations have an earlier priority date nor that there was significant overlap between the goods covered by the respective trade marks.  The Delegate also noted that both parties were in agreement that the THORPEDO trade mark has a connotation and that the identity it connotes is related to Enterprises, not the opponent, Sportswear.  The Delegate agreed.  She also found that Mr Thorpe had endorsed the use of THORPEDO as a trade mark and that a ground of opposition under s 43 of the Act was not established.

40                  In considering the issue whether the trade marks are substantially identical, the Delegate said:

‘There is a total impression of dissimilarity between the applicant’s and the opponent’s trade marks that leads inescapably to a finding that they are not substantially identical’.

41                  The opponent had submitted that the T device mark would be known by the word ‘Torpedoes’ alone and that the words ‘Torpedoes’ and ‘Thorpedo’ were visually and aurally virtually the same and that they conveyed the same idea.

42                  In considering deceptive similarity, the Delegate said that she was ‘not persuaded that the words THORPEDO and TORPEDOES are so close that, in the context of the goods and services to which they were applied, “ordinary people” could not help but confuse a trade mark comprising one with a second mark containing the other’.  Noting that the onus was to establish a reasonable likelihood of deception or confusion before denying acceptance for registration (Woolworths) and that the probability of deception and confusion must be finite and non-trivial, the Delegate commented on the absence of evidence of actual cases of deception.  She also commented on the apparent inconsistency of the submissions on behalf of the opponent that ‘Thorpedo’ connotes ‘Torpedo’ because they both evoke the idea of a fast and aggressive instrument for pushing through water and that ‘Thorpedo’ connotes the ‘household name’ Mr Thorpe.

43                  The Delegate relied upon the principle of notoriety or familiarity as applied to popular recognition of Mr Thorpe’s nickname to negate any likelihood of deception (Woolworths; C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42).

44                  The Delegate did not consider the question of aural similarity.

45                  The Delegate, having found that there was no substantial identity or deceptive similarity, did not consider the extent of Sportswear’s reputation and held that the opponent failed to establish a ground of opposition under s 60. 

46                  There is no presumption in favour of the correctness of the Delegate’s decision but weight will be given to the Delegate’s opinion as that of a skilled and experienced person (Woolworths at 377).

SUBSTANTIALLY IDENTICAL

Applicant’s submissions

47                  The only mark claimed to be substantially identical, both visually and aurally, to the THORPEDO mark, is the T device mark. 

48                  Sportswear submits that the ‘es’ at the end of the word ‘Torpedoes’ is insignificant and that the presence of the T device in the T device mark and the ‘h’ in ‘Thorpedo’ combine to render the two marks ‘more identical’, in part because of the total number of rises above and falls below the line.  This somewhat ingenious submission was to the effect that the visual effect of the T device was to introduce an additional ‘T’ which ‘effectively replaces’ the ‘h’ in ‘Thorpedo’.  This is said to mean that a visual comparison gives a total impression of resemblance rather than dissimilarity.  It is submitted that the Delegate erred in finding that the T device was the most prominent aspect of the T device mark.

49                  Sportswear also submits that the Delegate erred in failing to deal with the aural similarities of the marks in which Mr Wood, counsel for Sportswear, submitted the T device plays no part.  In emphasising the test in s 44 as one of substantial identity and not absolute identity, Mr Wood submits that, aurally, the ‘es’ is not significant, is located at the end of the word and is a common form of pluralisation which does not change the meaning or create a distinction. 

50                  The ‘tho’, it is submitted, is so like ‘to’ in pronunciation that it is not capable of being distinguished, even by a person of perfect diction.

Respondent’s submissions

51                  Mr Ellicott QC, who appeared with Mr Studdy for Enterprises, emphasises the T device which, he submits, has considerable prominence as well as the differences in the typeface of the two marks, both as to font and the joinder of letters.  He also points to the differences in the beginning of the two words.  The respondent submits that, for substantial identity, visual comparison only is permitted.

Decision

52                  The test to be applied for visual comparison is that in Shell Co of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 (‘Shell’) at 414, the marks are:

‘compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison’.

53                  It is not just a question of adding up and comparing the points of resemblance and dissimilarity, nor of portions of a word (In the Matter of an Application of William Bailey (Birmingham) Ltd to Register a Trade Mark and Opposition Thereto by AC Gilbert Co [1935] 52  RPC 136 at 153).  It is the general effect of  ‘the respective wholes’  (Clark v Sharp [1898] 15 RPC 141 at 146). 

54                  It is clear that there are apparent and distinct differences between the Paradise Legends mark and the THORPEDO mark.  The words ‘Paradise’ and ‘Legends’ are clearly essential to the Paradise Legends mark and form no part of the THORPEDO mark.  Those words cannot simply be ignored.  There is no substantial similarity, visually or aurally, between these two marks and, indeed, the appellant did not submit that there was.

55                  The following seem to me to be essential visual features of the T device mark:

·        The presence and style of the T device

·        The word ‘Torpedoes’

·        The typeface

·        The joinder of the letters ‘orpedoes’

56                  Each of these is an essential feature of the T device mark.  For the purpose of considering substantial identity it is sufficient to note that the T device, so prominent in the T device mark, is not present in the THORPEDO mark, which contains no device.  Further, the T device mark is stylised, with the features referred to above, whereas the respondent’s mark is not stylised.  These are significant differences that give a total impression of dissimilarity.

57                  As to the words themselves, in my opinion the words of the Deputy Registrar of Trade Marks in Chantelle v Kabushiki Kaisha Chandeal (1996) 36 IPR 563 (‘Chantelle’) at 568 are apposite.  She observed that ‘[o]n little more than a cursory glance it is apparent that the two words look different, are spelt differently, will be said differently and do not mean the same thing’.

58                  The respondent, relying on Shell, submitted that the comparison may only be visual and that aural similarity, while relevant in considering deceptive similarity, is not relevant in determining whether two marks are substantially identical.  I find nothing in s 44 of the Act that draws this distinction.  ‘Identical’ is relevantly defined as ‘corresponding exactly in nature, appearance, manner, etc’ (Macquarie Dictionary, revised third edition).  While Windeyer J in Shell compared the visual and not the aural features, that was in the context of the marks there under consideration and does not assist Enterprises in precluding consideration of the aural characteristics.  The requirement of substantial identity recognises that the identity is not absolute but, as is clear from Shell, the question involves a consideration of the essential elements of the mark, the matters that are ‘exactly similar in everything that matters for all relevant purposes’  (Ex parte O’Sullivan; re Craig (1944) 44 SR (NSW) 291 at 298).  It is not limited to appearance.  In considering the total impression, both the visual and aural aspects are relevant.  Further I note that s 7(2) of the Act specifically provides that aural representation is a use of the mark. 

59                  If the principle is applied to an aural comparison, the first question is whether the T device, as an essential feature of the mark, should be taken into account.  The respondent has submitted that it should and that the comparison is between ‘Tee Torpedoes’ and ‘Thorpedo’.  If that is the case, there is no substantial similarity of either pronunciation or syllable structure.  If the ‘Tee’ is disregarded, the essential aural features are the ‘Torp’ syllable, as distinct from the ‘th’ sound of ‘thorp’ and the plural, effected by the ‘es’.  Further, although not perhaps as significant, there is some difference in emphasis on the syllables of the respective words.  Aurally, the differences are not as prominent as are the visual differences but they do exist and they give a total impression of dissimilarity.

60                  For the purposes of substantial similarity, the totality of the characteristics of the marks should be taken into account.  In my opinion, compared side by side, the marks are not substantially identical either visually or aurally.

Deceptively similar

Applicant’s submissions

61                  To summarise the Sportswear submissions, Sportswear notes the similarity of goods to which the marks will be applied, namely clothing for sport and the outlets from which they will be sold which, Mr Wood asserts, will be the same.  ‘At the nub of the applicant’s contention’ is the likelihood of confusion, having regard to the visual and aural similarities.

62                  Sportswear points, again, to the fact that the ‘es’ is at the end of Sportswear’s mark.  In Re London Lubricants (1920) Ltd’s Application [1925] 42 RPC 264 (‘London Lubricants’), a number of factors relevant to deceptive similarity were raised, including the English language tendency to slur the termination of words and accent the first syllable, a factor relied upon by Sportswear to discount the ‘es’ at the end of ‘Torpedoes’ such that it would be disregarded in the imperfect recollection of the average consumer, causing him/her to wonder at the source of the goods.  Sportswear relies specifically on an asserted likelihood of confusion where the goods are the subject of telephone or oral enquiries, especially if the customer does not, by reason of a slight speech impediment or accent, pronounce the ‘th’.

63                  Mr Wood also seemed to place some emphasis on the fact that ‘Thorpedo’ is not Mr Thorpe’s name but a nickname.  The asserted relevance of this seems to be that Mr Thorpe is known by a number of other nicknames, such as ‘Thorpie’ and ‘Thorpey’, which are said to dilute the notoriety of and connotation of ‘Thorpedo’ in connection with Mr Thorpe as relied upon by Enterprises.  He also relies on the fact that the nickname ‘Thorpedo’ is a play on the word torpedo and asserts that ‘Thorpedo’ itself connotes a torpedo, leading to a tendency to use the words interchangeably.  Counsel did not point to any evidence of the words actually being used interchangeably.

64                  Counsel accepted that the onus is on Sportswear to establish deception or confusion and properly conceded that, if I am left unsatisfied or unsure as to whether or not confusion is likely to emerge, the onus is not satisfied and the THORPEDO mark should be registered.  He did, however, emphasise that there was no need to establish actual confusion and that the standard was a ‘reasonable likelihood’.

Respondent’s submissions

65                  The respondent emphasises the burden on Sportswear and the absence of any evidence of actual confusion.

66                  As to the Paradise Legends Mark, Enterprises again points to the additional two words, which are essential to that mark and which are absent in the THORPEDO mark.  That fact alone is said to distinguish the two marks (Chantelle; London Lubricants at 279).

67                  As to the T device mark, Enterprises points to the differences already referred to in respect of substantial identity and the presence of the T device.  The respondent again asserts that the T device must be taken into account in looking at an aural comparison, such that the T device mark is referred to as ‘Tee Torpedoes’.

68                  With respect to both of the Sportwear marks, Enterprises relies on the differences between the words ‘Torpedoes’ and ‘Thorpedo’. 

69                  For a visual comparison, Enterprises points to the following in comparing the T device mark and the THORPEDO mark:

·        The fact that the T device mark has two ‘T’s’: the T of the device and the first letter of ‘Torpedoes’, both of which must be taken into account not only visually.

·        The differences in the first portion of the names.

·        The differences in typeface and font.

·        The joinder of letters in Sportswear’s mark.

·        The difference at the end of the words, conceding that such a difference is less significant visually than is a difference at the beginning of the words.

·        As at the relevant date, the word ‘Thorpedo’ had a substantial degree of notoriety and a clear association with Mr Thorpe.

70                  With respect to reputation, the respondent questions whether Sportswear has established a reputation in its marks as at the relevant date such that the use of that mark would be likely to deceive or cause confusion. Enterprises points to the fact that the three companies that have used the T device mark have failed financially and that the T device mark and the Paradise Legends mark were included in assets sold to Sportswear for $25,000. 

71                  In the alternative, the respondent submits that, if there were sufficient use and the marks were deceptively similar, there has been honest concurrent use and that the circumstances justify registration of the THORPEDO mark.

Relevant principles

72                  The question of deceptive similarity involves a number of different and additional considerations.  The question is whether the normal use of the THORPEDO mark in relation to the class of goods specified in the application would be likely to cause deception and confusion in the face of Sportswear’s normal use of its marks.

73                  A different comparison is made than that for substantial identity.  Here the question is one of impression based on recollection of the mark (Shell at 415).  While it is not necessary to prove actual deception, neither is a mere possibility of confusion sufficient: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (‘Southern Cross’);  there must be real, tangible danger of confusion occurring (Woolworths).  It is sufficient if, by reason of use of the mark, a number of people would wonder if two products came from the same source (Southern Cross).  In Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 (‘Woollen Mills’), Dixon and McTiernan JJ apparently considered both the visual and aural use of the marks there in question; the reference by their Honours to the effect produced in the course of the ordinary conduct of affairs would include aural use, where the evidence was that the mark was applied to goods that were regularly referred to orally by name (at 658).

74                  The task is one requiring the application of common sense and impression, which can depend on a combination of visual and aural impression and the estimation of the effect likely to be produced in the ordinary conduct of affairs (Anheuser-Busch Inc v Budejovicky Budvar (2003) 56 IPR 182 at 217.

75                  I was referred to a number of cases in which words were compared and conclusions drawn as to whether or not there was deceptive similarity.  It is, of course, helpful to see the process of reasoning applied in each case but, of necessity, much turns on the individual words under consideration.  It is not necessarily helpful to trawl through decided cases to examine how different decision makers have formed conclusions, based on their own impressions, as to whether or not confusion or deception arises when two specific words are compared visually and aurally.  In this regard, I refer to the words of Windeyer J in Re Bali Brassiere Co Inc’s Registered Trade Mark and Berlei Limited’s Application (1968) 118 CLR 128 at 139:

            ‘Cases were cited to me from passages in judgments dealing with marks held to be, or held not to be, by reason of similarities, deceptive or confusing.  I have read these cases, and others.  I do not think I need discuss them.  The governing principles are not in dispute; and little is to be gained by the quotation of enunciations and elaborations of them in other cases.  The difficulty is always in their application to the facts of the case in hand.’

76                  Much depends on the words themselves, their origins and meanings and the surrounding circumstances of their use.  What an examination of the cases where similar words are compared visually and aurally show, is that each such comparison depends on matters such as the pronunciation of the words, their meaning and the categories of goods to which the marks are to be applied. 

77                  There is little dispute as to the principles to be applied although it must be remembered that previous decisions frequently turned on the question of onus, which has changed under the Act.

78                  Those principles, as relevant to this case, can be summarised as follows and are largely drawn from the very well known and regularly cited cases Pianotist Company Ltd’s Application (1906) 23 RPC 774 (‘Pianotist’) per Parker J; Woollen Mills; Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 (‘Cooper Engineering’) (which specifically adopted Parker J in Pianotist); Southern Cross; Shell and other cases to which I shall refer:

·         The rights of the parties are determined as at the date of the application (Woolworths at 383).

·         The two words are considered by look and by sound but not side by side.  An attempt must be made to estimate the effect or impression produced on and retained by customers and potential customers (Shell at 415; Woollen Mills at 658).

·         What is to be compared with one mark is the impression based on recollection of the other mark that persons of ordinary intelligence and memory would have (Shell at 415; MID Sydney Pty Ltd v Australian Tourism Co Limited  (1998) 90 FCR 236 (‘MID Sydney’) at 245).

·         Consideration is given to the goods to which the marks are to be applied and the nature of the customer, as well as all the surrounding circumstances when the marks are used in a normal way as a trade mark (Pianotist at 777).

·         In considering the look and sound of the marks, the goods, the customers and all the surrounding circumstances, it is also important to look at the whole of the marks  (Mars GB Ltd v Cadbury Ltd  [1987] RPC 387 at 395).

·         If a mark in fact or from by its nature is likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part.  The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected (Woollen Mills at 658).

·         The question is whether there will be confusion in the mind of the public which will lead to confusion in the goods (Pianotist at 777); that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source (Southern Cross at 595 and 608).  This involves estimating the effect or impression produced on the mind of potential customers (Woollen Mills at 658). 

·         Deceptiveness must result but from similarity; a likelihood of deception is judged by the effect of the similarity in all of the circumstances (Shell at 416).

·         It is not necessary to prove actual probability of deception leading to a passing off but mere possibility of confusion is not enough; there must be a real, tangible danger of it occurring (Southern Cross at 595).  The court would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration (Woolworths at 381).

·         When the sounds of two words are being compared, it is generally a matter of first impression, because a person familiar with the two words will be neither deceived nor confused.  It is not a question of meticulous comparison and allowance must be made for imperfect recollection and bad or careless pronunciation (Aristoc Ltd v Rysta Ltd (1944) 1B IPR 467 (‘Aristoc’) at 472).

·         In making an aural comparison, one has regard to what appears to be the natural and ordinary pronunciation, although evidence is admissible to establish a pronunciation that departs from the normal fashion, such as evidence of those in the trade or consumers (Wingate Marketing Pty Ltd v Levi Strauss (1994) 49 FCR 89 at 129 per Gummow J;  Pacific Publications Pty Ltd v IPC Media Pty Ltd  (2003) 57 IPR 28 at 56).

·         The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them and a proprietor of a mark is not entitled to a complete monopoly of all words conveying the same idea as that mark (Cooper Engineering at 539).  This fact can, however, be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive (Cooper Engineering at 539).  The presence of  a common idea may be a determining factor because the idea is more likely to be recalled that the precise details of the mark (Jafferjee v Scarlett (1937) 57 CLR 115 (‘Jafferjee’) at 121-2) but the suggestion of differing ideas may serve to reduce the risk of confusion (Johnson & Johnson v Kalnin (1993) 26 IPR 435 (‘Johnson & Johnson’) at 440).  The idea that is relevant is the idea that the mark will naturally suggest to the mind of one who sees it (Jafferjee at 121).

·         Where an element of a trade mark has a degree of notoriety or familiarity, it would be artificial to separate out the physical features of the mark from the viewer’s perception of them.  The question of resemblance is about how the mark is perceived (Woolworths at 386).

·         It is sufficient if persons who only know one of the marks and have perhaps an imperfect recollection of it are likely to be deceived (Cooper Engineering at 538; Aristoc at 472).

·         Consideration must be given of all goods or class of goods in respect of which registration is desired (Pianotist at 777-778).

·         The comparison is between marks, not uses of marks, although use is not irrelevant as a circumstance.  The consideration is not only actual use but also  the extent of the statutory monopoly by reference to the full extent of the goods or services in respect of which the mark is registered (MID Sydney at 245).

·         Onus of proving that there is or is not a reasonable probability of deception may be a deciding factor (eg Aristoc).

79                  The test of ‘resemblance’ for the purposes of s 6(3) of the Trade Marks Act 1955 was summarised by Lindgren J in Gardenia Overseas Pte Ltd v The Garden Co Ltd (1994) 29 IPR  485 (‘Gardenia’) at 493:

            ‘“Resemblance” with s.6(3) of the [1955] Act involves an assessment by the court of the visual and aural impressions made by the two marks when compared, but the likelihood of deception or confusion referred to in that subsection involves an assessment of what would be the probable visual and aural impressions on customers and potential customers which would arise if the marks were being used properly and within the scope of the registration, that is to say, it involves the concept of “notional normal and fair use.”’

80                  This was approved by the Full Court in The Coca-Cola Company v All-Fect Distributors Ltd (t/as Millers Distributing Company) (1999) 47 IPR 481 at 496 in respect of the Act. In Gardenia, Lindgren J found sufficient difference in the words ‘garden’ and ‘gardenia’, including differences in ‘syllabic structure and pronunciative emphases’ of the respective words, bearing in mind that the test of aural impression is not one of supposing the two words are said one after the other. I have already noted the slight difference in ‘pronunciative emphasis’ of ‘Thorpedo’ and ‘Torpedoes’. His Honour concluded in Gardenia that it may be possible that a person would be caused to wonder but that there was no ‘real tangible risk’ of confusion occurring.

Decision

81                  Sportswear’s case on deceptive similarity was based on the T device mark.  In the present case, for reasons that, taking into account the history of the parties and the use of the marks, are understandable, there is no evidence of actual deception nor of the manner in which potential buyers will refer to goods bearing the opposed mark.  There was no evidence called or submissions addressed specifically to the question of the way in which the goods would be purchased.  This could affect the relative importance of the visual impression of the two marks and the aural comparison. 

82                  I must also consider the use of the marks across the range of goods in the classes in which the marks are registered.  Sportswear relied on evidence that goods bearing the T device mark were themselves advertised, sold and known by the name ‘Torpedoes’, as descriptive of a kind of clothing, the padded shorts.  Indeed, it would seem that goods were called ‘Torpedoes’ when the mark itself was not used, for example when the T device was missing or in a different orientation to the word.  There is no evidence that goods bearing the THORPEDO mark would be called ‘Thorpedoes’ rather than, in accordance with ordinary usage, by the item of clothing, with the mark representing the source of the goods and not descriptive of the goods themselves.

83                  I can conclude, from the evidence of Sportswear, that brochures and other visual material were used.  There is no evidence that goods within the relevant classes were ordered orally or by use of the marks.  There is no evidence that, in the context of, for example, sporting goods stores or classes of clothing which routinely bear sports-associated logos, there would be a likelihood of confusion.  There is evidence that a particular type of sporting apparel, padded shorts, were described as ‘Torpedoes’ but the past use of the word ‘Torpedoes’ was not so limited, nor should consideration of the future use to which the T device mark can properly be put (Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362).  It is, however, the past use, that is relied upon to establish reputation and likelihood of confusion.

Visual impression 

84                  I accept the respondent’s submission that, by reason of the visual differences between the T device mark and the THORPEDO mark, the visual impression of the marks is different.  There is no evidence that consumers would ignore the T device.  Even if I were to disregard the typeface and the joinder of the letters in ‘Torpedoes’, that device would convey an impression of dissimilarity.

Aural comparison

85                  I am prepared to accept that goods may be ordered by the relevant members of the public over a counter or by telephone by the spoken word.  It is then necessary to balance the relative importance of the aural use of the marks and their visual appearance.  It is not the case, however, (as in Woolworths at 421) where marks used in relation to services would not be displayed on goods.  In those circumstances, as the Full Court noted, the aural impression might be more important than the manner of visual presentation.

86                  One may have regard to the likelihood of careless pronunciation (Eno v Dunn(1890) 1B IPR 391)but there is no evidence as to what the consequence of such carelessness would be.  It is, of course, possible to pronounce ‘Thorpedo’ and ‘Torpedoes’ in a very similar fashion.  One could ignore the ‘th’ and pronounce it as a ‘t’; one could then, simultaneously, ignore the ‘es’.  However, in ordinary use, ‘th’ functions as a different letter and different sound to ‘t’.  The presence of the ‘es’ not only adds to the end of the word, it also serves to shift to some extent the emphasis on the syllables of ‘Torpedoes’ compared to ‘Thorpedo’.  In the latter there is slightly more emphasis on the middle syllable; in the former the emphasis is more evenly distributed throughout the word. 

87                  The respondent again submits that the comparison aurally is between ‘Tee Torpedoes’ and ‘Thorpedo’, the ‘tee’ being necessary to take account of the essential feature, the T device.  I do not accept that a consumer would speak of the T device mark in this way and would not include the ‘tee’.  However, if the consumer did so, that would further lessen the likelihood of deception or confusion.  I am not persuaded that, aurally, the words themselves are sufficiently similar to cause confusion but that is not an end to the matter.  

Confusion as to the origin of the goods

88                   It should be borne in mind that a question is whether the customer is likely to be confused as to the origin of the goods.  Sportswear relied upon the aural similarities.  Again, there was no evidence of circumstances of purchase that might assist Sportswear, as it did in Companhia Souza Cruz Industria E Comercio v Rothmans of Pall Mall (Australia) Ltd (1998) 41 IPR 497.  The evidence establishes a linkage between ‘Thorpedo’ and Mr Thorpe.  Bearing in mind Mr Thorpe’s sporting ability, that linkage would reasonably extend to the mind of a customer for sporting goods and clothing.  In the absence of evidence of actual confusion, I am of the view that it is unlikely that customers would attribute a ‘Torpedoes’ origin to goods bearing the THORPEDO mark, especially when the test is not one of mere possibility of confusion but of real, tangible danger that a number of persons will be caused to wonder whether the products come from the same source (Southern Cross at 595 and 608).

Imperfect recollection

89                  Is THORPEDO sufficiently close to to cause confusion, particularly in terms of imperfect recollection?  In Chantelle, the Deputy Registrar of Trade Marks was of the view that, on the basis of spelling, appearance and phonetics the words had much in common and that there was little in their meanings to distinguish between them.  Visually, she found sufficient difference when the marks were compared side by side but not when the marks were considered with the other mark in mind and held that, verbally, the similarities between the words were sufficient to produce confusion and deception.  This conclusion was, however, based in part on her finding that the registered mark, Chantelle, was not a commonly used given name and that its meaning was not either so well known or obvious to off-set the likelihood of mistaken impression derived from imperfect recollection.  When comparing two words which are both well known, one as a word used in ordinary parlance and the other a word associated with a particular person, it is more difficult to establish a likelihood of mistaken impression. 

90                  In Johnson & Johnson, the court dealt with a submission that, with a famous mark, the likelihood of imperfect recollection should be discounted.  The evidence there did suggest that perception and recognition do not involve the whole word so much as certain features which are then matched to that which is contained in the memory, so that the word is then recognised.  There is no such evidence in this case and the situation is reversed, in that the evidence leads to the conclusion that, as between ‘Thorpedo’ and ‘Torpedoes’, the former was, at the relevant date, the more well known and, it could be said, famous.

The idea behind the marks

91                  Taking into account the visual and aural characteristics of the two marks, Sportswear has not established deceptive similarity, even accounting for imperfect recollection.  I am not satisfied that there is a likelihood of deception or confusion.  To the extent that there are some similarities, the different ideas behind the marks and the different connotations would lessen the likelihood of consumer confusion so that such a consumer would not be confused as to the origin of goods bearing the THORPEDO mark.  I will deal later in these reasons with ‘reverse confusion’.

92                  In Sports Café Ltd v Registrar of Trade Marks (1999) 42 IPR 552 (‘Sports Café’), the Full Court considered deceptive similarity and the relevance of the idea behind a mark.  The Court there affirmed the principle that, rather than a side by side comparison, regard is had to the impression carried away as well as the effect of spoken description.  Citing Cooper Engineering which, in turn, approved the principles summarised by Parker J in Pianotist at 777, the Full Court adopted the test of judging the look and the sound, together with the goods to which the marks are to be applied and the nature and kind of customer likely to buy those goods and the surrounding circumstances.  In Cooper Engineering the High Court observed (at 539):

            ‘[t]he fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive’.

93                  ‘Thorpedo’, while an invented word, is based upon Mr Thorpe’s name.  The evidence is that it was a name by which Mr Thorpe was known and referred to; it connotes Mr Thorpe rather than a torpedo, the connotation of the T device mark.  Use of the opposed mark, not necessarily as a trade mark, before the filing date of the application may serve to distinguish goods of Sportswear from the goods of another person (Blount at 508-510)and this would lessen the likelihood of confusion.  While I am of the view that the marks are not visually similar, visually similar marks can engender different meanings which provoke independent ideas, for example by reason of surname significance.  That is the case here so that, even if they were visually similar, the marks can exist side by side without confusion (Sporoptic Pouilloux SA v Arnet Optic Illusions Inc (1995) 32 IPR 430 at 436.

94                  It has been put that the idea behind each of the words is a torpedo.  Again, of course, there was no evidence to establish this point.  The evidence points the other way.  ‘Thorpedo’ is associated with Mr Thorpe, as a play on his name.  While it may well have been coined to bring in the connotation of a torpedo that is not, according to the evidence, the primary association of the word.  The words ‘Thorpedo’ and ‘Torpedoes’ are used separately and distinctly and in different contexts in the evidence.  In any event, the presence of some common idea (a torpedo) may tip the scales because the idea is more likely to be recalled than the precise details (Jafferjee at 121-2; Johnson & Johnson at 439) while the suggestion of different ideas (Mr Thorpe versus a torpedo) may serve to reduce the risk of confusion (Johnson & Johnson at 440).  To give a proprietor of a mark a monopoly over any mark which conveyed an idea would contravene the Cooper Engineering principle (Sports Café at 559).

95                  In any event, a registered trade mark does not give a complete monopoly of all words conveying an idea.  Even if it were to be accepted that both words only conveyed the idea of a torpedo, the fact that a common idea is conveyed becomes relevant only if the marks themselves look or sound alike and then might tip the balance (Sports Café at 557).  In looking at questions of aural similarity, it is not sufficient to look at similarities of sound alone; similarities of meaning must also be considered (Woollen Mills at 658).  There is no evidence that the public would attribute the same or a similar meaning to the two words; the evidence is to the contrary.

RIGHTS UNDER S 60 OF THE ACT        

96                  The argument put forward is that the reputation acquired in the Sportswear marks by reason of sales and sponsorships remains relevant and that the absence of current advertising and sale by Sportswear at the time that Enterprises enters the market serves to increase the likelihood of confusion, due in part to an inability to compare the marks directly or to have a fresh recollection.

97                  Sportswear relies upon s 60 with respect to the T device mark and the word ‘Torpedoes’ as used prior to the relevant date.

98                  The evidence of the use of apparel bearing the word ‘Torpedoes’ but not with the T device and the word ‘Torpedoes’ with the T device on top is relied upon by Sportswear as relevant to reputation for the purposes of s 60.

99                  Section 60 of the Act provides:

            ‘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.’

100               This section brings into consideration the question of the common law rights and reputation Sportswear acquired in respect of the Sportswear marks as well as common law rights in the word ‘Torpedoes’.  Mr Ellicott submits that Sportswear has not raised its rights in respect of the ‘Torpedoes’ name in the notice of appeal and has limited its appeal to consideration of its rights in the Sportswear marks, the registered marks.

101               Paragraph 2(iii) of the notice of appeal specifies reliance on the applicant’s trade marks which have an earlier priority date and are registered.  By contrast, paragraph 2(vi), which raises s 60, refers to the applicant’s trade marks which had acquired a reputation before the priority date for registration of the THORPEDO mark and does not refer to registered marks.  In my view, this encompasses the use of the word ‘Torpedoes’ as a mark.

102               I have already dealt with the question of whether the T device mark is substantially identical with or deceptively similar to the THORPEDO mark.  The failure by Sportswear to establish the ground of opposition under s 44 means that, with respect to the T device mark, s 60 does not apply.

Likelihood of deception or confusion

103               I have already dealt with the question of whether the word ‘Torpedoes’ is, aurally, deceptively similar to the word ‘Thorpedo’ and my conclusion is that this has not been established.  When comparing the words visually to determine deceptive similarity the factors to which I have already referred are relevant and do not support Sportswear’s case of similarity of visual impression.  Sportswear submitted that, for visual comparison of the two words, consideration should be given to the fact that more emphasis is placed by the consumer on the beginning of the word (London Lubricants at 279).  Even if this were so, the relevant beginning of the words are ‘Torp’ and ‘Thorp’.  The association of ‘Thorp’ with Mr Thorpe, particularly in connection with sporting apparel, cannot be disregarded; indeed ‘Thorp’ is the common element of his various nicknames ‘Thorpedo’, ‘Thorpie’ and ‘Thorpey’.  This further lessens any likelihood of confusion.  Again, of course, there is no evidence of actual confusion.  Sportswear has not established that ‘Thorpedo’ and ‘Torpedoes’ are deceptively similar.

Reputation

104               Even if I were to find that the words are deceptively similar, Sportswear would need to establish that ‘Torpedoes’ had acquired a reputation in Australia and that, because of the reputation, the use of the THORPEDO mark would be likely to deceive or cause confusion.

105               Sportswear relies upon the reputation derived from the use of the word ‘Torpedoes’, in particular the use exemplified by the St George team wearing ‘Torpedoes’ onto the field.  It is interesting that Mr Flaskas, called by the respondent, remembered that event.  Sportswear submits that the reputation, established prior to the relevant date, was not affected by the transfer of ownership or Sportswear’s placement into administration and that reputation is a matter retained in the mind of the consumer.

106               Reputation may be retained but it could be affected by the passage of time since ‘Torpedoes’ were sold and publicly used and the relevant date.  In this regard, it must be noted that there was no direct evidence, apart from Mr Flaskas’ cross-examination as above, of the reputation of ‘Torpedoes’ as clothing.  Enterprises points to the fact that the three companies that have used the Sportswear marks have all failed financially and that the marks were included in the assets sold to Sportswear for $25,000 and submits that this evidence indicates a failure to establish a reputation.  Accordingly, it is said, the use of the THORPEDO mark would not be likely to deceive or cause confusion by reason of the reputation of the Sportswear marks.

107               The test for reputation required under s 60, as set out by Kitto J in The Kendall Co v Mulsyn Paint and Chemicals (1963) 109 CLR 300 at 305 is that any substantial number of persons likely to be concerned in the purchasing of goods must either infer that the goods have come from the same source or at least be caused to wonder whether that might be so but it is necessary for a party relying on reputation to establish it by evidence.  

108               Sportswear submits that, where a holder of a mark has obtained a reputation but is not advertising or selling products at the time the respondent enters the market, the likelihood of confusion may be increased due to the inability of a consumer to conduct a side by side comparison of the marks or to analyse them from a standpoint of having a fresh recollection of Sportswear’s mark.  Sportswear says that ‘it is possible that confusion … would occur’.  A mere possibility is not sufficient and there is, of course, no evidence of actual confusion in which the reputation of ‘Torpedoes’ played a part which, while not necessary, would support Sportswear’s case.

109               Sportswear also submitted that it can rely on the combined reputation arising from use of the Paradise Legends mark, which placed prominence on the word ‘Torpedoes’ in a relatively unstylised presentation, the use of the T device mark and the use of the word ‘Torpedoes’ alone.  This ignores the words of s 60 which require a link between the mark, to which the THORPEDO mark is said to be deceptively similarand the reputation of that mark.  It also draws attention to the lack of evidence directed to the reputation of the word ‘Torpedoes’ alone.  Sportswear has not established the link.

110               Even if I were to assume that I can take account of the combined use of the Paradise Legends mark, the T device mark and the word ‘Torpedoes’ as giving rise to a reputation in the word alone, and taking no account of the status of Sportswear and its predecessors in title, the evidence, including that of advertising and sales does not establish reputation.  The evidence does not lead to the conclusion that, because of the reputation of ‘Torpedoes’, the use of the THORPEDO mark would be likely to deceive or confuse.

Reverse confusion

111               Acceptance of the notoriety of the THORPEDO mark and its association with Mr Thorpe gives rise to the question whether the public may be confused and wonder whether ‘Torpedoes’ has a connection with the THORPEDO mark and/or Mr Thorpe (‘reverse confusion’).  Where a name or a word is clearly associated in the public mind with a particular person, such as Mickey Mouse and Minnie Mouse with Walt Disney, their use by another as trade marks would be likely to deceive, as suggesting that the goods are somehow connected with that person (Radio Corporation Pty Ltd v Disney (1937) 57 CLR 448).

112               Both parties accept that s 60 has no application if confusion only arises because of the reputation of the THORPEDO mark.

113               Enterprises submits that s 44 is not concerned with reverse confusion, that it is limited to confusion where the public believes that the subsequent mark is connected with the earlier mark.  If the Act were intended to cover reverse confusion, where the public believes that the earlier mark is connected with the subsequent mark, it would, Mr Ellicott suggests, have been made clear in the statute.  Enterprises draws comfort from the fact that s 60 is clearer in this regard and submits that s 60 is ‘far broader than section 44’.

114               Mr Wood submits that s 44 deals with the question of similarity of marks, not the reputation of either mark nor the direction of the confusion, in contrast with s 60 where direction is made relevant and it is made clear that it is only the reputation of the registered mark that is relevant.

115               The question is whether the reputation of the mark for which application is made is relevant in the question of deceptive similarity in s 44.  This raises the question whether s 44 is ‘directional’, that is, whether the deceptive similarity is determined only by making the comparison as against the registered mark.  This involves determining whether a consumer would be caused to wonder whether goods with the proposed mark come from the registered mark’s source.  Alternatively, the non directional construction would include consideration as to whether a consumer would be caused to wonder whether goods bearing the registered mark come from the source of the proposed mark.  The language of the section ‘an application for the registration of a trade mark … must be rejected if the applicant’s mark is … deceptively similar to a trade mark registered by another person’ (emphasis added) may indicate that a directional approach is mandated.  The section does not say, for example, that as a result of registration there is deception, which would indicate a non-directional approach.  This is in contrast to the more neutral language, in a directional sense, of s 28 of the Trade Mark Act 1955 (Cth) which refers to ‘a mark … the use of which would be likely to deceive or cause confusion … shall not be registered as a trade mark’.

116               Section 44 directs reference to s 10 of the Act for deceptive similarity.  Section 10 provides that ‘a trade mark is taken to be deceptivelysimilar to another trade mark if it so nearly resembles that other trade mark’ as to deceive or cause confusion.  This language is somewhat more consistent with a directional approach.  Further, the Working Party Report, in dealing with permissible grounds of oppostion (at page 47) spoke in terms of the prior reputation in Australia of the registered mark whereby use of the proposed mark would be likely to deceive or confuse and did not refer to the reputation of the proposed mark.

117               Combining the effect of s 44(1)(a)(i) and s 10, the registration of the THORPEDO mark must be rejected if the THORPEDO mark is substantially identical with the Sportswear marks or if it so nearly resembles the Sportswear marks that it is likely to deceive or cause confusion (emphasis added).

118               Section 43 provides:

            ‘An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.’

119               It seems to me that, under s 43, it is the connotation of the trade mark the subject of the application that is relevant so that the question whether the use of the THORPEDO mark (with its connotation) would be likely to deceive or cause confusion arises.  This section is not directional and the difference in language supports the submission that s 44, by contrast, is directional.  Sportswear does not, in its notice of appeal or in submissions, rely on s 43.

120               There have been cases where the opponent’s reputation was considered and whether the reputation in the registered trade mark was sufficiently substantial to lead to the possibility that goods covered by the proposed trade mark would be identified with the opponent (e.g. Pioneer Hi-Bred Corn Co. v Hy-Line Chicks Pty Ltd [1979] RPC 410 (‘Pioneer Hi-Bred’) at 423-424).  Counsel were, however, unable to find a case where such ‘reverse confusion’ has been directly considered, although in Woollen Mills at 658, Dixon and McTiernan JJ said:

            ‘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’.    (emphasis added)

121               In any event, it must be borne in mind that what is being compared for the purposes of deceptive similarity are the marks themselves.  To focus on an issue of whether there is established a reputation sufficient to support a business goodwill for a passing-off action diverts attention from the real issues that arise under s 44 (Pioneer Hi-Bred at 439; Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 (‘Carnival Cruises’)at 383).  Reputation is only relevant as one of the surrounding circumstances affecting an evaluation of whether consumers would be likely to be deceived or confused.  Reputation of the proposed mark is then a factor which may mean that resemblance to the registered mark will still not result in deception or confusion and, in that context, I have already dealt with it.   Sportswear draws some comfort from s 44(4) and submits that the limited scope of that subsection, dealing with continuous use by an applicant for registration of a trade mark in respect of similar goods, is consistent with the relevance of reverse confusion s 44(1).  Enterprises did not specifically address this point but it seems to me that it is equally arguable that, as s 44(4) specifically allows for some prior use of the proposed trade mark but only in limited circumstances, it suggests that otherwise, the use, including reputation, of the proposed mark is irrelevant.

122               Mr Wood submits that, if it is accepted that the word Thorpedo is so clearly associated with Mr Thorpe and that the connotation is as strong as the respondent’s evidence suggests, there could be deception of confusion as to the source of goods sold under the Paradise Legends mark or T device mark so that people might be caused to wonder whether those goods were associated with Mr Thorpe.  In theory, he submits, such an association may not be in the interests of the registered owner and that Mr Thorpe’s reputation may be short-lived.  The latter aspect of this submission is dealt with by the fact that the date for consideration of deceptive similarity is the relevant date.  In any event, the evidence in the present case establishes that the reputation has not been short-lived.  Mr Wood also points to what could collectively be described as a number of unfair scenarios, where the benefits of registration would be watered down by the fact that mere fame would enable the subsequent registration of an otherwise deceptively similar mark.  This elevates the factor of reputation beyond the relevance that it has to a determination of deceptive similarity of two marks.  The question is whether or not there is confusion in a representation that one mark is in some way associated with another’s goods; it is not a question of which party would be damaged and which party would profit (Shell at 416). 

123               Does s 44 mandate a consideration whether, by reason of the reputation of the opposed mark (the THORPEDO mark), purchasers of the goods with the registered mark (the T device mark), may be caused to wonder whether the source of those goods is Mr Thorpe or Enterprises?  In my opinion, the answer is no.  The reputation of the THORPEDO mark is relevant, in the way I have dealt with it.  As I have said, that reputation, relevant as a circumstance to be taken into account in considering deceptive similarity under s 44, indicates that purchasers of goods would be less likely to be deceived or confused.  In any event, there is no evidence that purchasers of Sportswear’s goods would be confused as to the source of those goods.

proprietorship

124               Sportswear’s basis for this argument (s 58 of the Act) is that ‘Thorpedo’ was coined and is used by persons other than Mr Thorpe, who subsequently adopted it and that, even if Mr Thorpe does own the nickname, it is not owned by Enterprises.  Sportswear submits that such use of the THORPEDO mark as has existed is by International.  If the marks are substantially identical, it is said that the use of ‘Torpedoes’ as early as 1992 means that Sportswear owns the THORPEDO mark.

125               The evidence, uncontested, is that Mr Thorpe instructed Mr Sheridan to incorporate Enterprises and instructed Mr Flaskas to apply for the mark, which he did, in the name of Enterprises.  The respondent relies upon the words of Dixon J in The Shell Co of Australia Ltd v Rohm & Haas Co  (1949) 78 CLR 601 (‘Rohm & Haas’) at 627-8 to support its claim that Enterprises is the owner of the THORPEDO mark:

                        ‘The basis of a claim to proprietorship in a trade mark so far unused has been found in the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and the applying for registration … Authorship of course includes claim through or under the author.  But it involves the origination or first adoption of the word or design as and for a trade mark.’

126               While Enterprises did not invent the word, it was Enterprises that first entered into an agreement permitting the use of ‘Thorpedo’ as a trade mark and it was Enterprises that applied to register the THORPEDO mark, with the authority of Mr Thorpe.

127               The other basis of Sportswear’s claim to ownership of the THORPEDO mark relates, broadly speaking, to the similarity of the marks.  The parties seem to be in agreement that, where there is a disputed claim to proprietorship, it must be shown that the trade marks are substantially identical.  As was pointed out by Gummow J in Carnival Cruises at 391, nothing less than substantial identity will suffice.

128               As Sportswear’s marks are not substantially identical with the THORPEDO mark, it cannot claim ownership of that mark under s 58.

Conclusion

129               In oppositions (and appeals from them), the question of onus is particularly important (Woolworths; Southern Cross).

130               I am not satisfied that any of the grounds of opposition have been made out.  Despite a very able presentation by Mr Wood, Sportswear has not established that Enterprises is not the proprietor of the THORPEDO mark.  It has not established that the THORPEDO mark is substantially identical with or deceptively similar to either the Paradise Legends mark or the T device mark.  It has not established that the THORPEDO mark was wrongly accepted under s 44 of the Act.  It has not established that the THORPEDO mark is substantially identical to the mark ‘Torpedoes’, nor that ‘Torpedoes’ had acquired a reputation in Australia nor that, because of its reputation, the use of the THORPEDO mark would be likely to deceive or cause confusion.  Sportswear has not satisfied the onus in respect of any of those grounds for the reasons I have given.  I am not satisfied that the THORPEDO mark should not be registered nor that the THORPEDO mark should ‘clearly not be registered’. 

131               It follows that the application, being an appeal from the Delegate, should be dismissed and that Sportswear should pay Enterprise’s costs.

ORDERS

132               The Court orders that:

1.         The application is dismissed.

2.         The applicant is to pay the first respondent’s costs.

Associate:

Dated:              27 August 2003

SCHEDULE

Classes of goods and services in respect of which the application to register the THORPEDO mark was sought

Class: 3  Soaps and perfumes

Class: 5  Deodorants, vitamin preparations, hair lotions

Class: 9  Cinematographic, life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; audio visual teaching apparatus, breathing apparatus for underwater swimming, cameras, animated cartoons, eyeglass cases, clocks and time recording devices, compact disk players, compact disks, computer programs, computer software, computers, life-saving apparatus and equipment, sound recording apparatus, sound recording disks, sun glasses, swimming belts, swimming jackets, tapes, television apparatus, telecommunication transmitters, video cassettes, video game cartridges, video recorders, video tapes, telephone apparatus, mobile telephones, telephone receivers, telephone transmitters, telephone wires

Class: 12  Vehicles, apparatus for locomotion by land, air or water, automobiles, boats, ships, sports cars

Class: 16  Paper, stationery (excluding writing instruments) books, calendars, notebooks, paper sheets, postcards, stickers

Class: 18  Trunks and travelling bags, beach bags, garment bags for travel umbrellas

Class: 25  Clothing, footwear, headgear, bathing suits, bathing trunks, beach clothes, beach shoes, belts, headbands, headgear for wear, hosiery, jackets, jumpers, knitwear, leggings, overcoats, pyjamas, pants, parkas, sandals, scarfs, shawls, shirts, shoes, singlets, socks, sports jerseys, sports shoes, stockings, swim suits, T-shirts, underclothing

Class: 28  Games and playthings; gymnastic and sporting articles, balls for games, board games, body building apparatus, body training apparatus, dolls, dolls clothes, exercise bicycles, flippers for swimming, automatic games, golf bags, golf clubs, novelties for parties, dances, machines for physical exercises, plush toys, surf boards, teddy bears, toys

Class: 29  Jams, yoghurt

Class: 30  Coffee, tea, cocoa, sugar, rice, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, salt, mustard, vinegar, sauces, spices, ice, ice cream, edible ices, custard, biscuits, chewing gum, frozen yoghurt, pastries, sorbets, sugar confectionery, sweets, tea

Class: 32  Mineral and aerated waters and other non-alcoholic drinks, fruit juices and fruit drinks, syrups and other preparations for making beverages, waters

Class: 35  Advertising, business management, business administration, consultancy, public relations, publicity, radio advertising, radio commercials, television advertising, television commercials

Class: 41  Education and providing of training in relation to sport, human development and charitable organisations; entertainment services in relation to sport; sporting and cultural activities, arranging and conducting conferences, organisation of competitions, providing sports facilities, television entertainment