In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney”. The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney”. This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas. It is likely, in my consideration, that many people would be caused to wonder at a connection between the goods of the applicant sold under the opposed trade mark and those of the opponent sold under its similar trade mark although that wonderment might not persist to the point of sale. In any event, the opponent’s goods bearing the Polo One and Polo Two trade marks are sold through 80 independent boutiques where signage bearing the opponent’s house marks may not be so obvious (as contrasted with retail environments within the opponent’s shops and ‘shops within shops’). In independent retail outlets both deception and confusion arising from the reputation of the opponent’s trade marks are, in my consideration, inevitable. It follows that the opponent has established its opposition in terms of section 60 of the Act. I add that, should I have been wrong in my assessment of the honest concurrent user of the opposed trade mark in terms of subsection 44(3), my finding in terms of section 60 corrects that possible defect. In McCormick Kenny J observed at [96]: Whilst I accept, as counsel for Mary McCormick contends, that the doctrine of honest concurrent user is derived from the common law and pre-dates trade mark legislation, I am of the view that s 44(3) of the Act does not provide an exception to s 60. Decison Section 55 of the Act relevantly provides: 55 Decision (1) 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. I refuse to register application 1269272.

The Polo/Lauren Company LP v Megan Philip and Rowena Sylvester [2012] ATMO 45 (8 May 2012)

Last Updated: 14 June 2012

TRADE MARKS ACT 1995

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

Re: Opposition by The Polo/Lauren Company LP to registration of trade mark application 1269272(25) - CP & POLO PLAYER LOGO - filed in the name of Megan Philip and Rowena Sylvester.

DELEGATE:	Iain Thompson
REPRESENTATION:	Opponent: Ben Fitzpatrick of Counsel instructed by Davies Collison Cave. Applicant: Amanda Caldwell of Spruson & Ferguson
DECISION:	2012 ATMO 45 S52 Opposition: s44 - trade marks deceptively similar, s44(3)considered; s60 reputation of the opponent’s trade mark, likelihood of confusion with opposed trade mark. Opposition established.

Background

1. In this matter Megan Philip and Rowena Sylvester (‘the applicants’) of Yass, New South Wales, have filed application under the Trade Marks Act 1995 (‘the Act’) to register a trade mark, current details of which appear below:

Application No: 1269272
Priority Date: 24 October 2008

Goods: Class 25: Clothing, including men’s, women’s and children’s clothing; footwear; headgear.
Trade Mark:

(‘the opposed trade mark’)

2. The application was examined in compliance with section 31 of the Act and advertised as accepted for possible registration on 26 February 2009 in theAustralian Official Journal of Trade Marks.
3. On 20 August 2009, after seeking and receiving an extension of time in which to do so, Polo/Lauren Company LP (‘the opponent’) filed Notice of Opposition (‘the notice’) to the registration of the opposed trade mark. The notice cites most available grounds of opposition including those under section 44 and 60 of the Act which were subsequently argued at a hearing. For the sake of completeness I find the grounds other than those under sections 44 and 60 have not been established.
4. As a delegate of the Registrar of Trade Marks, I heard the submissions of the parties at a hearing in Sydney on 19 April 2012. Mr Ben Fitzpatrick of Counsel, instructed by Davies Collison Cave represented the opponent. Ms Amanda Caldwell of Spruson & Ferguson represented the applicants who also attended the hearing.

Onus

5. The opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities. See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 at [22] to [26] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051.

Evidence

6. The parties have served and filed evidence in support, evidence in answer and evidence in reply as allowed by the regulations. This comprises:

Evidence in Support

Statutory Declaration of David Brown made on 2 July 2010 with Exhibits DB-1 to DB-22;

Statutory Declaration of Elwira Teresa Terebka made on 12 July 2010;

Evidence in Answer

Statutory Declaration of Megan Philip made on 5 November 2010 together with Exhibits MP-1 to MP-7;

Statutory Declaration of Dominic Michael Beirne made on 27 September 2010;

Statutory Declaration of Wendy Thorley made on 8 October 2010;

Statutory Declaration of Joseph Paul Gurran made on 8 October 2010;

Statutory Declaration of Lyndelle Anne Morgan made on 10 October 2010;

Statutory Declaration of Graham Lachlan McGregor made on 9 November 2010; and

Statutory Declaration of Amanda Caldwell made on 12 November 2010.

Evidence in Reply

Statutory Declaration of Kevin Fine made on 15 August 2011 and Exhibits 1 to 4.

7. The opponent relies on both the registration and reputation (under sections 44 and 60 respectively) of its trade mark which appears below.

Registration No: 382189
Priority Date: 7 October 1982

Goods: Class 25: All goods in this class excluding clothing and footwear designed specifically for polo players.
Trade Mark:

(‘the Polo One trade mark’)

8. The opponent also relies, under section 44, on the registered trade mark appearing below:

Registration No: 336470
Priority Date: 13 August 1979
Goods: Class 25: Clothing and all other goods in this class
Trade Mark:
(‘the Polo Two trade mark’)

Endorsements: Registration of this trade mark shall give no right to the exclusive use of the device of a polo player

9. At the hearing Ms Caldwell, for the applicant, conceded that the opponent’s Polo One and Polo Two trade marks have substantial reputations but, as the mode of use of both parties’ trade marks affects my decision, I will set out the history in Australia of both the Polo One and Polo Two trade marks and the opposed trade mark to add clarity to my reasons for the decision.
10. The Brown declaration details the opponent’s use of its Polo One and Polo Two trade marks. Mr Brown states that he is Vice President of International Trade Marks for PRL International, Inc. (a Delaware Corporation) of Wilmington, Delaware. PRL International, Inc. is General Partner of The Polo/Lauren Company, L.P, a Limited Partnership of the State of New York, United States of America, of 650 Madison Avenue, New York, New York 10022, United States of America, which was formed on 23 August 1978.
11. The opponent’s goods are predominantly clothing for men and women but since 1972 have included small leather goods such as bags, satchels, clutches, cosmetic bags, grooming kits, coin purses, wallets and key cases. Subsequently, use of the trade mark extended to watches, clocks and watch bands on 1 January 1976, to jewellery on 1 January 1976, to towels, sheets, pillowcases and other Manchester on 1 October 1983, to rattan and wicker furniture on 31 May 1985 and to rugs and wallpaper on 6 December 1993,
12. Mr Brown states that the opponent has three major retail modes within Australia (and elsewhere in the world): firstly, via stand-alone shops, secondly, via ‘shops within shops’; and, thirdly through independent boutiques to which the opponent wholesales its goods.
13. In 1989 the opponent opened ‘shops within shops’ in David Jones department stores in Brisbane, Adelaide, Melbourne and Sydney. In 1992, the opponent opened freestanding ‘Polo Ralph Lauren’ stores in the Queen Victoria Building, Sydney, and at Greenwood Plaza, North Sydney. In 2002, the opponent opened a ‘shop within shop’ in David Jones, Perth. Clothing and fashion accessories bearing the Polo One and Polo Two trade marks have been sold through all the foregoing stores. In addition, Mr Brown states that ‘products’ (which I infer to be ‘clothing’) have been sold through Myer/Grace Bros and Daimaru[1]stores since approximately 1993.
14. Mr Brown further declares that the opponent has since 1992 opened a number of freestanding ‘Polo Ralph Lauren’, ‘Polo Sport’ and Polo Jeans Co.’ retail stores throughout Australia which have since that date sold clothing and accessories bearing the Polo One and Polo Two trade marks and provides the following table detailing these openings:

Date of Opening	Name of Store	Location
October 1998	‘Polo Sport’ renamed ‘Polo Ralph Lauren’ in October 2002	Pitt Street Mall, Sydney, New South Wales
October 1998	‘Polo Ralph Lauren’	Chatswood Chase, New South Wales
November 1999	‘Polo Ralph Lauren’	Chadstone, Victoria
November 1999	‘Polo Ralph Lauren’	Collins Street, Victoria
November 1999	‘Polo Ralph Lauren’ Factory Store	Nunawading, Victoria
December 1999	‘Polo Ralph Lauren’ Factory Store	Harbourtown, Queensland
December 2000	‘Polo Jeans Co.’	The Galleries Victoria, Sydney, New South Wales
August 2001	‘Polo Ralph Lauren’	Castle Hill, New South Wales
September 2001	‘Polo Ralph Lauren’ Factory Store	Homebush, New South Wales
September 2001	‘Polo Jeans Co.’	Hornsby, New South Wales
October 2002	‘Polo Ralph Lauren’	Macarthur Central, Brisbane, Queensland
March 2003	‘Polo Jeans Co.’	Chatswood, New South Wales

15. Mr Brown states that, since June 2003, the opponent has also sold clothing and accessories through 80 boutiques (which I understand to be independent) throughout metropolitan, suburban and country Australia.
16. Mr Brown’s evidence shows that the opponent has guidelines on how its merchandise is to be displayed and that this includes directions on how clothing is to be folded and displayed so that the Polo One or Polo Two trade marks (or other trade marks of the opponent) are always prominently displayed. Employees of the opponent visit shops where the opponent’s goods are sold to ensure that these and other guidelines are followed.
17. The sales revenues and expenditure on advertising and promotion in relation to the Polo One and Polo Two trade marks by the opponent in Australia and elsewhere in the world have been considerable.
18. Megan Philip is CEO of Club Polo International, NSW Business Name Registration No. M2309603, which has a principal place of business at 128 Comur Street, Yass, New South Wales, 2582. Ms Philip states that she has been associated with Club Polo International for 18 years, and has full access to its records relating to trade mark matters.
19. Ms Philip declares at [4] and [5] of her declaration:

I have been involved with the game of polo since 1981, through my husband, who has played polo for the last 30 years. We are actively involved with polo and breed polo ponies on our property near Yass, NSW. Following a trip to Argentina, where the game of polo is a national sport, I wanted to design a genuine clothing label in Australia for polo players, spectators and supporters. These goods were not intended as technical products for use in the game of polo, but rather as after match attire for, players and supporters.

Together with my previous business partner, the Club Polo International business was started in 1992 to provide ‘polo inspired’ garments to the Australian polo fraternity. The initial range of garments, which I designed and produced, were sold at polo tournaments around Australia

20. Ms Philips goes on to state at [6] and following in her declaration:

The CP Mark was created in 1996, and has been continuously used in Australia since that time in connection with women’s, men’s and children’s casual clothes all relating to the game of polo, which clothing is worn not only by polo players but also spectators and team supporters. Now shown to me and marked Exhibit MP-1 is a copy of a catalogue from 1996 showing use of the CP Mark in Australia. Now shown to me and marked Exhibit MP-2 are photographs from 1996 and 1997 of goods bearing the CP Mark in use on various clothing.

The CP Mark was initially used as part of a larger print on fabric. Since 1998, it has been used in the same embroidered format, and is never used without the letters ‘C’ and ‘P’ to either side of the polo player device.

Initially goods bearing the CP Mark were provided to customers throughout Australia by way of a mail order business, as well as field days, open days and the Sydney Royal Easter Show. This resulted in wide recognition from the equestrian set, and the polo industry, particularly in New South Wales, Victoria, Queensland and Western Australia.

The early ranges of goods, including polo shirts, sweatshirts, jackets and t-shirts for adults and children using high quality local and imported fabrics, were manufactured in both Sydney and Melbourne. As recognition of the CP Mark brand grew, it began appealing to a wider audience, which resulted in the development of product lines more suited to the wider market.

In 2002, wholesale accounts were targeted, and I embarked on a lengthy mission to find new avenues for production. The Summer 2004 range and all subsequent ranges to date have been produced entirely offshore, and I regularly visit suppliers in China to check on production, source new products and reinforce relationships with existing partners.

In 2008 the first ‘Club Polo Clothing’ retail store opened in the main street, of Yass, NSW. This store provides women’s, men’s and children’s clothing and accessories bearing the CP Mark and the CLUB POLO label.

Since 2004 goods bearing the CP Mark have been sold by agents into various retail outlets on a wholesale basis. Presently there are wholesale agents in New South Wales, Queensland and the Australian Capital Territory. Those goods are then sold by the retail outlets to the general public. Now shown to me and marked Exhibit MP-3 is a list of retail outlets in which goods bearing the CP Mark are sold.

Customers can also purchase goods bearing the CP Mark via mail order and online using an order form which customers can complete and return by post, fax or email. Now shown to me and marked Exhibit MP-4 is further information regarding mail order and online purchasing of goods bearing the CP Mark.

The CP Mark is used in connection with the goods themselves (generally embroidered onto the garments), as well as brochures, sales literature, promotional merchandise, websites (see www.clubpolo.com.au), catalogues, price lists and advertising in print, radio or television. Now shown to me and marked Exhibit MP-5 is an example of the CP Mark as used in connection with the relevant goods.

Goods bearing the CP Mark are advertised extensively, by way of catalogues, posters, point of sale material, internet advertising, promotional merchandise, direct mail, building or vehicle signage, sponsorship of sporting or cultural events, in-store products, sales promotions, and trade fairs and exhibitions. Now shown to me and marked Exhibit MP-7 are sample advertisements for goods bearing the CP Mark in Australia.

21. After reviewing the applicant’s evidence I consider that the alphabetical letters CP within the opposed trade mark is an initialization of the applicants’ CLUB POLO trade mark. The trade mark CLUB POLO functions as a ‘house mark’ for the applicants and the opposed trade mark appears to be invariably used in association with the house mark but not adjacent to it.
22. Ms Philip gives the names of various publications in which the applicants advertise their goods under the opposed trade mark and states, “Since 1996, I am not aware of any instances of confusion by consumers or members of the relevant industry, between goods bearing the CP Mark and goods bearing the trade marks of the opponent.”
23. I will discuss the other declarations served and filed by the parties as and when they become relevant to my decision.

Section 44

24. The applicants started use of the opposed trade mark in Australia in relation to goods in 1996, after the priority date of the Polo One trade mark (7 October 1982) thus subsection 44(4) cannot apply to the opposed application. Section 44 thus relevantly provides:

44 Identical etc. trade marks

(1) 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.

Note 1: For deceptively similar see section 10.

Note 2: For similar goods see subsection 14(1).

Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

[...]

(3) If the Registrar in either case is satisfied:

(a) that there has been honest concurrent use of the 2 trade marks; or

(b) that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note: For limitations see section 6.

25. The priority date of registration 382189 on which the opponent relies is earlier than that of the opposed application, the goods are similar goods and Mr Fitzpatrick did not argue that the trade marks of the parties are substantially identical. It thus falls to me to decide whether the trade marks are deceptively similar.
26. The expression ‘deceptively similar’ is defined by section 10 of the Act which provides:

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.

27. The expression ‘deceptively similar’ has also been judicially considered. In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at [13] Windeyer J said:

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. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106 . And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same” (1937) 58 CLR, at p 658.

28. The trade marks are to be compared within the context of the marketplace for the relevant goods: see In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, where Parker J said:

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

29. Moreover, the comparison must also take into account the fair and normal use of the trade marks to the extent of the specifications of both the goods of the opponent’s registration and those of the application in respect of which registration is sought. The fair and normal use is to be considered in all markets for the goods and the actual use of the trade marks by the parties is not of weight. See Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 per French J at [88]:

The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration.

30. And the comparison is moderated by the factors discussed in Woolworths at [50] by French J who said:

In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

(iv) The rights of the parties are to be determined as at the date of the application.

(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

31. Mr Fitzpatrick submitted that when assessing the visual impression created by the opposed trade mark:

One must consider “the idea which the mark will naturally suggest to the mind of one who sees it” (Jafferjee v Scarlett [1937] HCA 36; (1937) 57 CLR 115 at 121, per Latham CJ (McTiernan J agreeing)). Unlike the court, consumers will be influenced by “a general recollection or impression of the mark which they have seen” (per Latham CJ at 122). See also Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 (‘Tivo’) per Dodds-Streeton J, at [94] — [103].

32. While I am in general agreement with Mr Fitzpatrick, I observe that a decision maker is entitled to consider the likelihood that he or she would be confused. As observed by Lord Diplock in Re ‘GE’ Trade Mark (1972) 1B IPR 543 at 567:

[W]here goods are sold to the general public for consumption or domestic use, the question whether such buyers would be likely to be deceived or confused by the use of the trade mark is a “jury question”. By that I mean: that if the issue had now, as formerly, to be tried by a jury, who as members of the general public would themselves be potential buyers of the goods, they would be required not only to consider any evidence of other members of the public which had been adduced but also to use their own common sense and to consider whether they would themselves be likely to be deceived or confused. The question does not cease to be a “jury question” when the issue is tried by a judge alone or on appeal by a plurality of judges. The judge’s approach to the question should be the same as that of a jury. He, too, would be a potential buyer of the goods. He should, of course, be alert to the danger of allowing his own idiosyncratic knowledge or temperament to influence his decision, but the whole of his training in the practice of the law should have accustomed him to this, and this should provide the safety which in the case of a jury is provided by their number. That in issues of this kind judges are entitled to give effect to their own opinions as to the likelihood of deception or confusion and, in doing so, are not confined to the evidence of witnesses called at the trial is well established by decisions of this House itself.

33. Further, I must allow for the fact that people’s memories are not perfect. Dodds-Streeton J observed in Tivo at [100]:

In Crazy Ron’s Communications Pty Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196; (2004) 209 ALR 1 (“Crazy Ron’s”) at [77], the Full Federal Court reiterated the House of Lords’ unanimous approval in Aristoc Ltd v Rysta Ltd [1945] AC 68 (“Aristoc”) at 86 of Luxmoore LJ’s recognition inRe Rysta Ltd’s Application [1943] 1 All ER 400 at 407 that the court must allow for consumers who know only of one of the marks and have an “imperfect recollection” of it when encountering the other trade mark, and that accordingly:

[l]ittle assistance... is to be obtained from a meticulous comparison of words, letter by letter, and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person’s wants.

34. Dodds-Streeton J continued, at [112] in Tivo:

In Aristoc, Viscount Maugham agreed with Luxmoore LJ’s view that the court must make allowance for imperfect recollection, and that (at 86) “[t]he tendency to slur a word beginning with ‘a’ is, generally speaking, very common”, and held that the similarity between “Aristoc” and “Rysta” for stockings was such that taking “the effect of careless and slurred pronunciation, imperfect recollection, and the limitation of the knowledge of the customer and the shop assistant to one only of the marks, that being the one of which the other is ignorant”, the two words were likely to deceive and cause confusion.

Lord Macmillan also stated at 99 that:

the proposed trade mark “Rysta” ought not to be registered because it so nearly resembles, phonetically, the appellants’ trade mark “Aristoc” as to be likely to cause confusion.

Lord Simonds stated (at 104) that a comparison of the two words syllable by syllable would serve to emphasise differences rather than similarities, and the truer test was of a hypothetical sales assistant:

... who has heard of “Rysta” stockings but not of “Aristoc” stockings, being asked by a customer whether she has any “Aristoc” stockings... It is easy, perhaps, to exaggerate the risk of careless pronunciation, but it may at least be said that the standard of ordinary speech is not the precise articulation of the perfect announcer and that the inquiry for one article or the other will not be made in the quiet atmosphere of the studio.

35. Although the trade marks under consideration consist of largely of graphical elements, the above case-law makes it quite clear that members of the public are not to be expected to recall precise details of trade marks whether or not they are comprised of words, graphical elements or both words and graphical elements. Further, if a graphical element is (or is likely to be) the source for the visual recognition of a trade mark, or a verbal request for the goods in respect of which it is used, I must take that into consideration.
36. Additionally, I must take some notice of the inherent nature of the trade marks themselves: Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; (1952) 86 CLR 536 (RAINMASTER v RAIN KING); “Frigiking” Trade Mark [1973] RPC 739 (THERMO-KING v FRIGIKING);[2] Conde Nast Publications Pty Ltd v Virginia Taylor [1998] FCA 864; (1998) 41 IPR 505 (VOGUE v EUROVOGUE & Device); Miss World (Jersey) Limited & Anor v Mrs of the World Pageants, Inc. [1988] FCA 12; (1988) AIPC 90-460 (MISS WORLD v MRS WORLD); Health World Ltd v Shin-Sun Australia Pty Ltd[2008] FCA 100 (2008) 75 IPR 478 (INNER HEALTH PLUS v HealthPlus); Coca-Cola Co (Canada) Ltd v Pepsi- Cola Co (Canada) Ltd (1942) 59 RPC 127 (COCA COLA v PEPSI COLA); Sports Cafe Ltd v Registrar of Trade Marks [1998] FCA 1614; (1998) 42 IPR 552.
37. If elements of a trade mark lack inherent adaptation to distinguish, those elements ought to be discounted to some extent in the comparison – conversely, however, weight ought to be placed on elements which are inherently adapted to distinguish.
38. Ms Caldwell submitted for the applicant:

The Applicants’ CP & Device Trade Mark is distinguishable from the Opponent’s Mark by the following:

(i) The Applicants’ mark contains as its sole verbal element the letters “CP”. These letters are prominently displayed in both size and placement within the Applicants’ mark as a whole, and are also the only verbal component. They are the means by which consumers would verbally refer to the Applicants’ mark, and are readily apparent on viewing the Applicants’ mark, and serve to visually as well as phonetically distinguish the CP & Device Trade Mark as a whole from each of the Opponent’s Marks.

(ii) The Applicants’ mark further contains a polo player device which has a different orientation and arrangement to the device portion of the Opponent’s Marks, as well as different visual characteristics. We submit that when these visual, phonetic and conceptual differences are considered along with the letters CP, the Applicants’ CP & Device Trade Mark as a whole would not be imperfectly recalled or otherwise confused with the Opponent’s Marks. As such, there is no real tangible danger of deception and confusion occurring.

The Registrar is also in a position where she can look to the evidence in the marketplace. The Applicant has been using its CP & Device Trade Mark in Australia since 1996, and the trade marks of the Applicants and the Opponent had, as at the Priority Date, co-existed in the Australian marketplace for approximately 12 years. Despite their allegations that confusion would occur, the Opponent has not produced any evidence to suggest that in 12 years any consumers have in fact been deceived or confused.

Further, the Opponent’s Marks do not give it exclusive rights in all polo player device trade marks. As outlined in the Evidence in Support, in addition to the Opponent’s Marks there are various additional trade marks on the Register in Class 25 which contain a horse or polo player device (see Caldwell Declaration). That these trade marks co-exist on the Register for similar Class 25 goods in the names of different proprietors shows that no one trader, including the Opponent, can claim exclusive rights in all marks containing a polo player or horse device in Class 25. We submit this state of the Register indicates the Applicants’ mark, which contains a polo player device which has a different orientation, arrangement and visual impression to that of in the Opponent’s Marks, should similarly be entitled to co-exist.

39. I do not consider that much is to be gained by a detailed examination of trade marks which are on the Register of Trade Marks. It is not suggested by Ms Caldwell that the Polo One trade mark of the opponent lacks inherent adaptation to distinguish the goods of the parties or is in any way common to the clothing trade. I observe, however, that each of the trade marks to which Ms Caldwell refers in which a polo player is depicted have apparently been registered by polo clubs and do not bear any semblance to the opposed trade mark.
40. Additionally, both delegates of the Registrar and the Courts are slow to put weight on contents of the Register rather than to rely on their own judgment and common sense. Moreover to blindly follow the ‘precedent’ set by some registrations might be to perpetuate error: I am to consider the likelihood of deception and confusion which might arise from the concurrent use of the trade marks under consideration.
41. Further, the lack of reported confusion is not in itself a determinative factor but may be given more weight under subsection 44(3) of the Act should questions of honest concurrent user arise. And, in any event, the history of the parties’ uses of their respective trade marks shows those uses to have been, until comparatively recently, predominantly in discrete markets – the applicants’ sales have been at polo matches, horse events, agricultural shows and so forth. The applicants’ first wholesale agent was appointed in 2004 and their shop in Yass was opened in 2008 and, comparatively, the applicant’s sales have been quite modest. Under such circumstances (and coupled with people’s natural reticence to confess to having being confused) lack of report of confusion might be regarded as unsurprising.
42. Here, the registered trade mark of the opponent is inherently adapted to distinguish – it is likely to be recognized as being distinctive of the opponent’s goods. What is likely to impressed on the minds of people is that the opponent’s trade mark is a silhouette representation of a polo player bearing an uplifted mallet astride a cantering horse. However, this description exactly matches that of the opposed trade mark. Even without the trade marks of the parties before me, the general impression formed in my recollection of the trade marks is (apart from the letters CP) very much one which forms an identity and such differences which exist in the graphical elements are impossible to describe without both trade marks side by side for comparison.
43. I do not agree with Ms Caldwell’s submission that the opposed trade mark contains a polo player device which has a different orientation and arrangement to the device portion of the opponent’s Polo One and Polo Two trade marks such that confusion with the opposed trade mark is unlikely. It is, in my consideration, highly improbable that potential purchasers of the parties’ goods would remember and recall the precise orientation of the horses, the placement of their legs, the angle formed by the uplifted mallets or the particular poises of the riders and use those recollections as a basis for differentiation between the trade marks. Indeed, as I have indicated, such an analysis necessitates having the trade marks before the purchaser for a detailed side by side comparison of the type which would almost never occur when contemplating a purchase. These side by side comparisons are the familiar ones involved in consideration of substantial identity and not (as I am considering here) deceptive similarity. As observed by Latham CJ in Jafferjee v Scarlett [1937] HCA 36; (1937) 57 CLR 115; [1937] ALR 404 (‘Jafferjee’):

The court naturally and readily appreciates the distinctions between the marks which are seen side by side. When, however, the court has to determine the probability of deception arising from simultaneous user of the same marks in the same market, it is very important to remember that the purchasers in that market will not ordinarily have an opportunity of comparing the two marks side by side. They will compare the actual mark which they see upon goods which are offered to them with the memory of the other mark, which they will retain in a more or less distinct form. They therefore will not be in the same position as that in which the court finds itself when it is endeavouring to determine whether or not they are likely to be deceived. The court must endeavour to put itself in the position of ordinary purchasers of goods who have noticed a trade mark as being distinctive of particular goods, but who have not compared that mark with any other mark, and who are quite probably not aware of the fact that another more or less similar mark exists. Such purchasers have not had the opportunity or the occasion to make a precise comparison of the two marks. They will be guided, so far as they are influenced by trade marks at all, by a general recollection or impression of the mark which they have seen.

44. I do not consider that the letters CP within the opposed trade mark are more likely to form the basis for the recollection, recognition or request for goods under the opposed trade mark than is the representation of a polo player. However, in the Polo One trade mark the absence of any other feature but the representation of the polo player makes a verbal request for the opponent’s goods by reference to the representation of the polo player inevitable. Under such circumstances the supply by a shop assistant of goods bearing the opposed trade mark which contains very similar representation of a polo player is unavoidable.
45. Further, the Polo Two trade mark on which the opponent relies to a lesser extent under subsection 44(1) does contain words. While these words are quite dissimilar to the letters CP, their presence in the Polo Two trade mark is both a thematic similarity and a visual cue for purchasers who (to paraphraseJafferjee, above) have “noticed the opponent’s trade marks as being distinctive of particular goods” and that the device appearing in the opponent’s trade marks is not necessarily used on its own.
46. In my consideration the trade marks are deceptively similar and the opposition is established under subsection 44(1) of the Act.
47. The applicant submits that should the ground under subsection 44(1) be established then subsection 44(3) should apply on the basis of the honest concurrent use of the opposed trade mark by the applicant.
48. In McCormick & Company Inc v McCormick [2000] FCA 1335, Kenny J said of subsection 44(3) and honest concurrent use:

Section 44(3) gives the Registrar a discretion to accept an application that would otherwise be rejected under s 44(1) in the case of honest concurrent use or other circumstances making it proper to do so. The authorities establish that the principal criteria for determining whether registration should be permitted pursuant to s 44(3) include:

(1) the honesty of the concurrent use;

(2) the extent of the use in terms of time, geographic area and volume of sales;

(3) the degree of confusion likely to ensue between the marks in question;

(4) whether any instances of confusion have been proved; and

(5) the relevant inconvenience that would ensue to the parties if registration were to be permitted.

See In Re Alex Pirie & Sons Ltd’s Application (1932) 49 RPC 195; (1933) 50 RPC 147 at 159-160; In Re John Fitton & Co Ltd’s Application (1949) 66 RPC 110at 112; and Stingray Surf Co Pty Ltd v Lister [1997] ATMO 3; (1997) 37 IPR 306 at 310-311. These factors are not necessarily exhaustive of the matters to be considered, but they are a useful guide: see In Re Electrix Ltd’s Application [1957] RPC 369 at 379.

THE HONESTY OF THE USE

The rights of the parties are to be determined as at the date of the application for registration - in this case, 9 March 1992: Southern Cross at 594-95; In Re Simac S p A Macchine Alimentari’s Application (1987) 10 IPR 81 (“Simac”) at 90-91; Aromas Pty Ltd v Aroma Coffee & Tea Co Pty Ltd (1997) 40 IPR 75 (“Aromas”) at 86; and Trepper v Miss Selfridge Ltd (1991) 23 IPR 335 at 346.

The honesty of concurrent use refers to “commercial honesty, which differs not from common honesty”: see In Re Parkington & Co Ltd’s Application (1946) 63 RPC 171 at 182. In that case, Romer J said at 181-182:

[T]he circumstances which attend the adoption of a trade mark in the first instance are of considerable importance when one comes to consider whether the use of that mark has or has not been a honest user.

49. Ms Caldwell submitted concerning the honesty of the applicants’ adoption of the trade mark:

The evidence indicates that since 1981 the applicant Megan Philip and her husband have been actively involved with the game of polo, and that following a trip to Argentina “wanted to design a genuine clothing label in Australia for polo players, spectators and supporters”. The Applicants’ subsequently commenced business in 1992 to “provide “polo inspired” garments to the Australian polo fraternity”, and commenced use of the CP & Device Trade Mark the subject of the Application in 1996. The Applicants adopted a trade mark incorporating a polo player device because it is inherently associated with the sport of polo with which the Applicants are actively involved, and whose players, spectators and supporters are the target consumers of the Applicants’ goods.

The Applicants’ longstanding involvement with the sport of polo, and the circumstances leading to Applicants’ adoption of the CP & Device Trade Mark, clearly indicate that the CP & Device Trade Mark was honestly adopted.

50. My initial observation is that Ms Caldwell puts a gloss on Ms Philips’s declaration. While Ms Philips relates her background in the sport of polo, Ms Philip does not expressly state why she adopted the opposed trade mark; nor does she state whether she was aware of the Polo One or Polo Two trade marks at the time she adopted the opposed trade mark and whether when she adopted the opposed trade mark (if Ms Philips did know of the Polo One and Polo Two trade marks) Ms Philips believed then that the applicants’ use of the opposed trade mark would not confuse or deceive.
51. The applicants’ use of the opposed trade mark has been comparatively modest; the use has been at polo meetings, agriculture shows and events, through mail order and more recently, since 2004, through wholesale agents and since 2008 through the applicants’ CLUB POLO shop in Yass.
52. In my consideration the likelihood of deception and confusion is high. While the applicants have emphasised that there have been no instances of deception or confusion, that lack can partially be explained by the factors I have outlined above. Also pertinent is the fact that the opposed trade mark is used by the applicants in association with their CLUB POLO trade mark. While the CLUB POLO trade mark does not appear alongside the opposed trade mark in use, there appears to be some degree of association between these trade marks on the shop-front, labels and so on such that the likelihood of deception or confusion is diminished. Such is not the case with the application under consideration which is the opposed trade mark on its own and, as previously discussed, I am to consider all uses to which the applicants might put the opposed trade mark to the limits of any registration which might ensue.
53. While the applicant has submitted declarations from six people who state that they have not been confused or deceived by the applicant’s use of the trade mark and/or are not aware of any confusion, these declaration are not of any assistance. Two examples will suffice to illustrate why these declarations are of low weight. Dominic Michael Beirne is Managing Director of Australian Fashion Partners Pty Ltd and states:

1. That I have been aware of the Club Polo International (CPI) business and clothing brand since September 2005 when Australian Fashion Partners Pty Ltd (AFP) undertook consultancy work for CPI.

2. That AFP, founded in July 2003, is the premier professional services firm specialising in the Textiles Clothing and Footwear Industries.

3. That AFP, or myself under previous employers, have provided professional services to both CPI and Oroton Group Ltd, Ralph Lauren’s licensee in both Australia and New Zealand.

4. That as part of AFP’s work for CPI we became aware that the CPI logo and branding had been in use since 1996 on both clothing and accessories without causing confusion to consumers.

5. That there are clearly understood differences within both the wholesale clothing trade and the retail consumer market of the brands, logos, products and market identities of both CPI and Ralph Lauren.

6. That to the best of my knowledge, information and belief I am unaware of any confusion regarding the CPI trademark and Ralph Lauren’s or any other organisation’s trademark.

54. Mr Beirne does not specifically refer to the Polo One and Polo Two trade marks of the opponent or to the opposed trade mark. The nature of the consultancy work that AFP undertook for the applicant is not spelt out.
55. Wendy Thorley is a sales agent of Bowral. In her declaration Ms Thorley states:

I have been aware of the Club Polo label of clothing since 2004 when the then family business, Miwenla Pty. Ltd. began representing Club Polo in NSW country areas.

Our Agency had over 20 years of experience in developing and maintaining Stockist accounts in NSW for brands such as R.M. Williams Pty. Ltd. and Saltbush Clothing Co.

We had an extensive network of accounts to present Club Polo to and a strong foundation for creating new business. We did this successfully until 2009.

In this environment, to the best of my knowledge, information and belief, I was not aware of confusion between the Club Polo and Ralph Lauren trademarks.

56. Ms Thorley refers to the use of two trade marks which are not here under consideration.
57. The other ‘trade’ declarations suffer from similar defects.
58. Additionally, in my consideration, the balance of conveniences flows very obviously to the opponent. The opponent’s Polo One and Polo Two trade marks are very well known and obviously of considerable worth. As some indication of the value of the opponent’s Polo One trade mark (or trade marks which incorporate the device which forms Polo One), Mr Brown declares that the opponent’s worldwide net annual revenues from goods sold under these trade marks was (at the priority date of the opposed application) US$4880.1 million, and in Australia was between AU$60 and AU$70 million with an approximate annual Australian advertising budget of about AU$3 million. Whilst the applicant’s claim confidentiality for the revenues under the opposed trade mark, it is sufficient to observe that their 2008 revenue from sales under the opposed trade mark was very modest in comparison and was in fact well under half the amount of opponent’s Australian advertising budget for that year. The relative inconvenience to the opponent in the dilution of the commercial distinctiveness and worth of its trade marks is significant.
59. Set against the opponent’s inconvenience is that of the applicants which is, by comparison to that potentially inflicted on the opponent, much more modest although in terms of their business it could be considerable. I further observe that the opposed trade mark is what might be termed a ‘subsidiary’ trade mark: it is not a house mark but is used in association with the applicants’ CLUB POLO house mark and as a ‘subsidiary’ trade mark is more readily changed without the same inconvenience which would attend the adoption of a new house mark.
60. The applicants have not established their argument for acceptance under the provisions of subsection 44(3).

Section 60

61. Section 60 of the Act provides:

60 Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note: For priority date see section 12.

62. The applicant acknowledges that the trade mark on which the opponent relies has a reputation. However, it is necessary to make some observations about how I see that reputation as arising and what public perceptions of it are likely to be.
63. The operation of section 60 contrasts with that of section 44 of the Act in that here I am to consider the likelihood of deception or confusion within the confines of the actual use of the trade mark on which the opponent relies compared to the notional use of the opposed trade mark to the extent it may be honestly used within the limits of any registration which might ensue.
64. In McCormick Kenny J said, at [81]:

What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

65. As a corollary of the above, it is pertinent to ask how the reputation of the Polo One trade mark operates.
66. As we have seen, the opponent has three major retail modes within Australia (and elsewhere in the world): firstly, via stand-alone shops, secondly, as ‘shops within shops’; and, thirdly through independent boutiques to which the opponent supplies its goods. The opponent wholesales its goods to 80 of these independent boutiques throughout Australia.
67. It is apparent from the evidence that in both the opponent’s stand-alone shops, and its ‘shops within shops’, the Polo One trade mark functions as a ‘subsidiary’ trade mark in relation to the opponent’s house marks, the Ralph Lauren and Polo (word) trade marks. Thus, much of the reputation of the Polo One trade mark which derives from the sales through the stand-alone shops, and ‘shops within shops’, must to an extent exist in the shadow of the Ralph Lauren house marks. That is not to say that the Polo One trade mark does not have a reputation in its own right but to acknowledge that the opponent’s house marks may play a part in the reputation which stems from sales through its stand-alone shops and its ‘shops within shops’. However, the opponent also sells through some 80 boutiques where its house marks may not be prominently on display and it is fair to observe that the reputation of the Polo One trade mark which stems from this source must be considerable.
68. The evaluative process is to take into account the factors discussed in Woolworths at [50] by French J which are referred to at [30] of this decision.
69. The opponent’s Polo One trade mark has a very well established reputation and, I consider, a high degree of recognition within Australia. It is very likely that most people when encountering the opposed trade mark will be struck by the similarities between the parties’ trade marks and will not notice the differences to the extent that those discrepancies alert even a wary purchaser that the goods are not in fact those of the opponent. This is especially so because, as is stressed in Mr Brown’s declaration, the opponent puts a special emphasis on its Polo One trade mark in the displays of its goods.
70. While the evidence shows that the Polo One trade mark often appears in association with the Ralph Lauren house marks, this factor while it may ameliorate deception does not, in my consideration, dispel the likelihood of confusion. The word ‘confuse’ refers to a different state of mind than does the word ‘deceive.’ In Pioneer Hi-Bred Corn Co v Highline Chicks Pty Ltd [1979] RPC 410, at 423, Richardson J, in the New Zealand Court of Appeal, said:

‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.

71. In Radio Corp Pty Ltd v Disney [1937] HCA 38; (1937) 57 CLR 448 Rich J, at 454, said of the word ‘confusion’:

In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney”. The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney”. This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.

72. It is likely, in my consideration, that many people would be caused to wonder at a connection between the goods of the applicant sold under the opposed trade mark and those of the opponent sold under its similar trade mark although that wonderment might not persist to the point of sale.
73. In any event, the opponent’s goods bearing the Polo One and Polo Two trade marks are sold through 80 independent boutiques where signage bearing the opponent’s house marks may not be so obvious (as contrasted with retail environments within the opponent’s shops and ‘shops within shops’). In independent retail outlets both deception and confusion arising from the reputation of the opponent’s trade marks are, in my consideration, inevitable.
74. It follows that the opponent has established its opposition in terms of section 60 of the Act.
75. I add that, should I have been wrong in my assessment of the honest concurrent user of the opposed trade mark in terms of subsection 44(3), my finding in terms of section 60 corrects that possible defect. In McCormick Kenny J observed at [96]:

Whilst I accept, as counsel for Mary McCormick contends, that the doctrine of honest concurrent user is derived from the common law and pre-dates trade mark legislation, I am of the view that s 44(3) of the Act does not provide an exception to s 60.

Decison

76. Section 55 of the Act relevantly provides:

55 Decision

(1) 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.

77. I refuse to register application 1269272.

Costs

78. Both parties requested their costs in the event that they should be successful and I award costs against the applicants at the official scale.

Iain Thompson
Hearing Officer
Trade Marks Hearings
8 May 2012

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[1] I note that the Daimaru store in Melbourne closed in July 2002.
[2] Per Whitford J “necessarily [the Court’s deliberations] involve some enquiry as to the inherent distinctiveness of a part which is common to both marks under consideration”.