Jockey is the registered owner of a number of trade marks relating to underwear featuring JOCKEY as a component. The trade mark has been used in Australia since at least 1947. It was first used in the US in 1929.
Wilkinson filed an application for registration of THROTTLE JOCKEY on 2 August 2006 in respect of "T-shirts, caps, beanies, head bands, sweat bands". The application was accepted on 31 October 2006 and advertisement of acceptance ran from 7 December 2006. Jockey filed a Notice of Opposition on 7 March 2007. Eventually, the issues to be determined related to Sections 42(b), 44, 60 and 62A of the Act.
The Delegate set out that the onus is on the opponent to establish opposition. Currently, the view is that the opponent needs to show on a balance of probability that the opposed trade mark should not be registered. So there is no special or high standard of proof which is imposed on an opponent.
Ground/s of opposition must be established as on the date of filing the application for registration. In this case, the date was 2 August 2006.
An application for registration of a trade mark must be rejected if its use would be contrary to law. "Contrary to law" is not defined. But it is established that covers contraventions of section 52 and section 53 of the Trade Practices Act.
Jockey argued that use of the trademark "THROTTLE JOCKEY" by the applicant would constitute infringement of the registered trademarks and thus be contrary to law by virtue of being in breach of section 120 of the Act.
This decision contains an interesting and well-considered discussion on the differences between the statutory prohibitions on misleading or deceptive conduct and the common-law tort of passing off. In short, a cause of action under the federal and state statutory laws relies on whether or not the use of a particular getup or name by an alleged wrongdoer is likely to mislead or deceive persons familiar with the product of the injured party. Passing off, on the other hand, protects a right of property in business or goodwill. For example, the focus of section 52 of the Trade Practices Act is on the misleading of others, rather than upon injury to a competitor.
In establishing a likelihood of misleading or deceptive conduct, something more is required than the possibility that instances of deception of confusion could be said to occur. The relevant test has been said to be stricter than the test applicable in relation to section 60 of the Trademarks Act. That sets out that a ground of opposition to the registration of a trademark can be based on the likelihood of deception or confusion because of the reputation of another trademark.
That trademark law concept of confusion in the sense of mere wonderment as to common origin or connection has little part to play in the consumer protection statutes, to use the words of the delegate.
Mere wonderment does not necessarily rise to the level required to satisfy section 42 (b) of the Fair Trading Act 1987 (New South Wales) - Red Hat Inc versus Mary-Ann Martinek (2002) 56 IPR 292.
Assertions of misleading or deceptive use are required to be supported by evidence that goes beyond establishing "mere wonderment" for the statutory prohibitions. The Delegate found that the evidence presented by Jockey had shortcomings. For example, there was no evidence from consumers or from within the trade. Thus, the public perception of the "THROTTLE JOCKEY" trademark was not addressed.
There was no evidence as to the likelihood that members of the public would be misled or deceived. There was also no evidence of any incidents of misleading or deceptive conduct having occurred to the extent sufficient to satisfy the requirements of the Fair Trading Act mentioned above.
The Delegate considered the respective trademarks and their inherent nature. He found that there was a significant element of difference. It was by no means certain or established that prospective consumers would be misled or deceived. To his mind, the impressions which are created and conveyed by the respective expressions "THROTTLE JOCKEY" and "JOCKEY" are significantly different. He certainly did not think it likely that one could draw an inference of an association between the two. Even allowing for Jockey's reputation, he did not accept that the use of the expression "THROTTLE JOCKEY" would result in a situation where consumers would be likely to be misled or deceived.
The Delegate reiterated the well-known trinity of requirements for "passing off" namely:
(1) reputation (in the relevant mark);
(2) misrepresentation (leading to deception);
(3) damage to goodwill (or the likelihood thereof).
The Delegate said there was no evidence of any actual use of the "THROTTLE JOCKEY" trademark by the applicant having occurred. It follows that there was no activity or conduct on the part of the applicant which threatened the goodwill or reputation of the opponent. The opponent's common-law rights were not contravened and so the operation of the law of passing off could not be invoked.
However, section 42 (b) of the act sets out that the application must be rejected if its use would be contrary to law. Thus, it was necessary to have regard to the notional use of the trademark. Even on that basis, the delegate held that the action of passing off would be likely to fail. There are clear points of differentiation which exist between the two trademarks. Thus, it did not follow that a misrepresentation could be said to be likely to occur.
Usefully, the delegate set out the following elements of this section to have been satisfied by Jockey in order for it to succeed in establishing this ground of opposition:
(1) there must be a trademark which is substantially identical with or deceptively similar to the applicant's trademark
(2) that trademark must be a registration or an application for registration
(3) the trademark must be in the name of a person other than the applicant
(4) the relevant goods or services of the respective marks must be similar
the relevant date at which the circumstances must be established was 2 August 2006.
As far as the "substantially identical" leg was concerned, Jockey relied upon the decision of Seven-up Company versus Bubble up Company Inc (1987) 9 IPR 259. The law has changed significantly since that decision and the Trade Marks Act has also been superseded since then.
In considering the meaning and application of the expression "substantially identical with" reliance is usually placed upon the often quoted text as stated in Shell Company (Australia) Ltd versus Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407: "In considering whether marks are substantially identical they should, I think, be compared side-by-side, the similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark the total impression of resemblance or dissimilarity that emerges from the comparison".
The inclusion of the word "JOCKEY" in both trade marks was insufficient to support Jockey's contention that the trademarks were substantially identical.
The expression "deceptively similar" requires a different approach. This expression has been the subject of many decisions. The most frequently quoted is from Australian Woollen Mills Ltd versus F.S.Walton and Co, Ltd [ 1957 ] HCA 51. There it was held:
(1) The marks should not be compared side-by-side.
(2) The effect or impression produced on the minds of potential customers should be estimated.
(3) The impression or recollection which is carried away and retained should be considered.
(3) The effect of spoken description must be considered.
(4) If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express a desire to have the goods, their similarities both in sound and meaning may play an important part.
(5) The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.
In other words, the test of whether a trademark is deceptively similar to another is a test concerning the inherent qualities of the two trademarks seen in the light of the proper uses that may be made of them.
After some deliberation, the delegate reached the conclusion that "THROTTLE JOCKEY" would be unlikely to be mistaken for the expression "JOCKEY" and vice versa, in normal use. Jockey appeared to place significance on the function of the expression "JOCKEY" as part of the family of a series of marks. They said that use of the trademark "THROTTLE JOCKEY" would be likely to be seen as an extension of Jockey 's "family" of trademarks. However, as the Delegate pointed out, this had more to do with section 60 of the Trademarks Act which deals with reputation rather than section 44 where reputation is not a relevant factor.
The delegate also responded to Jockey's reliance on the decision of Registrar of Trade Marks versus Woolworths Ltd [ 1999 ] FCAFC to support its contention as to the notoriety of the "JOCKEY" trademark when making the argument relating to the "family" of trademarks. The delegate pointed out that the expression "WOOLWORTHS" can only have one meaning indicating the name of the owner, and that expression does not have a meaning or significance in Australia other than indicating the company Woolworths Ltd. "JOCKEY" is a word with a potential range of possible meanings. The word "Jockey" is primarily an ordinary English word with an established and well-known meaning.
The delegate set out the elements of the section which need to be made out as:
(1) there was another trademark
(2) which had acquired a reputation in Australia
such that use of the opposed trademark would be likely to cause instances of deception or confusion to occur amongst a significant section of the public.
The delegate accepted that there was a substantial and extensive reputation both in Australia and internationally in respect of the "JOCKEY" trademark.
The applicant had made the point that it had very few sales of its products and so it placed reliance on the fact that there were no actual instances of deception or confusion. However, the delegate pointed out that the question whether a mark is likely to confuse is not limited to whether there has been actual confusion in the use of the mark. The question is whether its use is likely to confuse.
In relation to section 60, having regard to Jockey's reputation, the delegate felt that the test of the likelihood of deception or confusion was made out and satisfied.
This section provides that the registration of the trademark may be opposed on the ground that the application was made in bad faith.
For an assessment of "bad faith" to be made there needs to be an element of intentional dishonesty or a deliberate attempt to mislead the Registrar of trade marks or the public in some way.
Jockey submitted the applicant must have been acting knowingly and in a deceptive manner because "JOCKEY" is so well-known and had already established such a significant reputation that any person seeking to register and adopt the expression "THROTTLE JOCKEY" could only be doing so.
The delegate felt that argument was seriously flawed. There was no evidence that there had been any intention on the part of the applicant to imitate the "JOCKEY" trademark. In fact, as the delegate held, there was no evidence as to the state of mind of the applicant. As such, the delegate was not prepared to adopt an assumption.
It appears that Jockey managed to succeed only on the basis that its trademark had acquired a significant reputation in Australia. The case is worth reading because of the manner in which the Delegate dealt thoroughly with each of the grounds raised by Jockey.
There are some good lessons for practitioners here as far as the preparation of evidence is concerned. For example, for the statutory prohibitions against misleading and deceptive conduct, evidence relating to actual deception or confusion would have been very useful.