Sportsgirl victorious against SPORTSBOY

The Australian Trademarks Office has upheld the opposition filed by Sportsgirl Pty Ltd, a well-known Australian clothing manufacturer and retailer, against the application for the registration of the trademark SPORTSBOY in respect of goods in Class 25 of the Nice Classification ([2007] ATMO 71, October 22 2007). The delegate of the registrar of trademarks found that Sportsgirl had done "sufficient work" in transferring the onus onto the applicant, Filip Sali, to establish that confusion and deception would not occur.

Sali applied to register the trademark SPORTSBOY for "clothing, footwear, headgear and clothing accessories" in Class 25. Sportsgirl is the owner of a number of registered trademarks, including SPORTSGIRL and SPORTSKIDS, for a broad range of clothing goods in Class 25. Moreover, Sportsgirl has prior use of the unregistered trademark SPORTSGIRL BOY in relation to a range of accessories, including pendants, necklets, bracelets and rings.

Sportsgirl opposed the registration of the SPORTSBOY trademark on several grounds under the Trademarks Act 1995, including Sections 41, 42(b), 43, 44, 59 and 60. At the hearing, Sportsgirl argued grounds of opposition under Sections 44, 60 and 42 of the act. Sali did not appear and made no submissions. The delegate of the registrar of trademarks decided the opposition based solely on Section 44 of the act.

Along with filing evidence of use and reputation of its SPORTSGIRL trademarks, Sportsgirl relied on evidence demonstrating the common girl/boy 'pairings' of trademarks by the same owner in Class 25. It also relied on evidence that Sali may have adopted the SPORTSBOY trademark following a business meeting with Sportsgirl in which Sali allegedly expressed that "there should be a Sportsboy for guys".

At the hearing, Sportsgirl submitted that the SPORTSBOY trademark incorporated the essential distinguishing or memorable features of the SPORTSGIRL and SPORTSKIDS trademarks. Sportsgirl argued that the respective trademarks used the word 'sports' in conjunction with a second word of similar meaning (ie, a young person), with the words in each trademark conjoined. Sportsgirl further submitted that Sali had adopted the same first word as the word adopted in Sportsgirl's suite of SPORTSGIRL and SPORTSKIDS trademarks.

The delegate observed that the common element between the trademarks - the word 'sports' - has a very low capacity to distinguish the goods of any one trader in respect of the goods of interest in this case. As for the words 'girl' or 'kids', these indicated only the intended consumers of the goods. The delegate's initial view was that the SPORTSGIRL and SPORTSKIDS trademarks were not strongly similar to the SPORTSBOY trademark.

However, the delegate could not dismiss the following factors in considering whether the trademarks of the parties were deceptively similar:

• Sportsgirl's use of the unregistered trademark SPORTSGIRL BOY and of the registered trademark SPORTSKIDS;
  
  
• Sportsgirl's evidence concerning Sali's alleged adoption of the SPORTSBOY trademark; and
  
  
• Sportsgirl's evidence demonstrating that boy/girl coinages in trademarks are not uncommon in Australian and overseas marketplaces.

The delegate also took into consideration Sportsgirl's undoubted reputation in the SPORTSGIRL brand. He concluded that in some circumstances, it is impractical to ignore the reputation of a trademark in the comparison - particularly where that reputation is strong and unlikely to be divorced from the minds of consumers in any comparison that they might make.

Therefore, the delegate found that Sportsgirl had done sufficient work in transferring the onus onto Sali to establish that the SPORTSBOY trademark would not cause confusion or deception. Given the absence of any submissions or evidence from Sali, and in view of Sportsgirl's evidence and submissions, the delegate found that the opposition was established in terms of Section 44. The delegate thus rejected the application to register the trademark SPORTSBOY.

Lisa Ritson and Emma Rodigari, Blake Dawson, Sydney