Reputation in, but not registration for, JOCKEY found to be sufficient to prevent registration of THROTTLE JOCKEY in Australia

A 2010 decision of a delegate of the Registrar of Trade Marks (Australia) has found reputation in the mark JOCKEY, but not registration for the mark JOCKEY, to be sufficient to prevent registration of the mark THROTTLE JOCKEY by the third party.

In August 2006 Darren James Wilkinson (“the Applicant”) applied to register the mark THROTTLE JOCKEY in Australia for “T-shirts, caps, beanies, head bands, sweat bands”. The application was accepted and advertised.

The application was opposed by Jockey International, Inc. (“the Opponent”). The Opponent was the registered owner of a number of Australian trade marks for marks consisting of, or containing, the word JOCKEY, and had used the trade mark JOCKEY internationally since 1929 and in Australia since at least 1947.

The Opponent pursued grounds of opposition under sections 42(b), 44, 60 and 62(A) of the Trade Marks Act 1995, as discussed below.

Section 42(b)

The Opponent claimed that use of the mark THROTTLE JOCKEY would be contrary to law. Specifically the Opponent claimed that use of the mark THROTTLE JOCKEY would contravene provisions of the relevant fair trading acts (of each state/territory), Trade Practices Act (Cth), would amount to passing off and would constitute infringement of the Opponent’s registered trade marks.

The Delegate noted that it was necessary to consider notional use of the mark THROTTLE JOCKEY, that is, to consider what the result would be if the mark were actually used for the goods for which registration was sought. The Delegate emphasized that for the Opponent to succeed under this ground, the Delegate must be satisfied that the law would be breached; it is not sufficient that the law might or maybe breached. Noting that there were significant visual, aural and conceptual differences between the respective marks, the Delegate considered that the evidence did not support a finding that the law would be breached.

Section 44

The Opponent claimed that the mark THROTTLE JOCKEY is substantially identical with, or deceptively similar to, the mark Opponent’s marks which are registered and have priority for the similar goods.

The Delegate accepted that the Opponent’s marks had priority over the mark THROTTLE JOCKEY and that the respective goods were similar. However, the Delegate found that the respective marks were not substantially identical or deceptively similar. In reaching this view, the Delegate noted that the inclusion of the common element JOCKEY in the mark THROTTLE JOCKEY is not in itself sufficient to conclude that the respective marks are substantially identical or deceptively similar. The Delegate cited a number of reasons for his decision that the marks were not substantially identical or deceptively similar, including that the mark THROTTLE JOCKEY consists of two words, that the concept of the mark THROTTLE JOCKEY is clever and unusual and different to the concept of JOCKEY, that the first word in the respective marks differ and that the word THROTTLE is the dominant part of the mark THROTTLE JOCKEY.

It is also noteworthy that the Delegate did not consider the Opponent’s submission that the mark THROTTLE JOCKEY would erroneously be seen as an extension of the Opponent’s “family” of registered marks to be persuasive under this ground of opposition. In this case, for each of the individual members of the “JOCKEY” family the work “JOCKEY” invariably appears first and the qualifying word follows compared with the Applicant’s mark the word “JOCKEY” appears last.

Section 60

The Opponent claimed that the mark JOCKEY had acquired a reputation in Australia and because of that reputation use of the mark THROTTLE JOCKEY would be likely to deceive or cause confusion.

The Delegate noted that under this ground of opposition there is no requirement that respective marks must be substantially identical or deceptively similar. Furthermore, under this ground of opposition the Delegate considered that use of a “family” of marks including the word JOCKEY by the Opponent increased the risk that consumers would be deceived or confused by use of the mark THROTTLE JOCKEY by a third party. Ultimately the Delegate found that having regard to the Opponent’s longstanding use of the mark JOCKEY, the Opponent had acquired a reputation such that use of the mark THROTTLE JOCKEY by the Applicant would be likely to deceive or cause confusion.

Section 62A

The Opponent argued that the application to register the mark THROTTLE JOCKEY was made in bad faith on the basis that the Opponent’s JOCKEY trade mark is so well known that a third party could only choose to adopt the trade mark THROTTLE JOCKEY in a deceptive manner.

The Delegate rightly considered this submission to be seriously flawed and found that there was no evidence to support a finding of bad faith.

Comments

This case confirms that a mark should not be refused registration merely because it encompasses the entirety of a prior registered mark. Each case must be determined on its own facts.

Furthermore, this case confirms that the respective marks need not be “substantially identical” or “deceptively similar” for an Opponent to succeed under section 60 of the Act. Arguably, a similar approach should apply to section 17(1)(a) of the New Zealand Trade Marks Act 2002 which also does not specify similarity as a requirement. Although this contradicts previous decisions of the Assistant Commissioner which have required similarity under section 17(1)(a).

Naomi Hand - February 2011.