Two oppositions based on well-known marks rejected

In Nicklaus Companies LLC v Randazzo ([2009] ATMO 63, August 11 2009) and Tiffany and Company v Koury ([2009] ATMO 68, August 31 2009), delegates of the registrar of trademarks have dismissed two separate oppositions against the registration of the trademarks DROP BEAR GOLF and TIFFANY KOURY.

In Nicklaus, Michael Randazzo applied to register the trademark DROP BEAR GOLF (with paw print device) in respect of a wide range of golfing equipment in Class 28 of the Nice Classification. Nicklaus Companies LLC opposed the registration on numerous grounds, including under Section 60 of the Trademarks Act 1995. Nicklaus relied on two registrations for the trademark GOLDEN BEAR and one registration for a device mark depicting a large bear.

Section 60 of the act provides that a trademark application may be opposed if use of the mark would be “likely to deceive or cause confusion” because of the existence of an earlier trademark which has “acquired a reputation in Australia”. The earlier trademark need not have been registered in Australia, but must have “acquired a reputation” in this country.

The delegate accepted (as did Randazzo) that, in golfing circles, 'Golden Bear' is well known as the nickname of Jack Nicklaus, whose fame as a golfer was not in question. The delegate further accepted that the products bearing Nicklaus's trademarks had achieved a “significant reputation” at the relevant priority date. 

Australians use the term 'drop bear' to refer to a non-existent species of so-called 'killer koalas'. The term is used in mythical stories, each with their own embellishments, in order to frighten tourists into believing that Australia’s koalas (often wrongly referred to as koala bears) have a devilish propensity to drop from trees onto their unsuspecting victims.

However, this idiomatic, colloquial and descriptive use of the term 'drop bear' was only one basis for the delegate’s decision. Notwithstanding the proximate use of the words 'bear' and 'golf' in relation to golfing equipment, the opposition failed because the word 'bear' was clearly governed by the word 'drop', and not the word 'golf' (and regardless of whether any specific consumer was aware of the dangers of the mythical 'drop bear'). The word 'drop' is the first element of the mark and is evident whenever the mark is used either aurally or in print. The presence of the word 'drop' thus negated the likelihood of deception or confusion with Nicklaus’s GOLDEN BEAR mark or bear device mark.

Moreover, Section 60 required:

• an analysis of the reputation of Nicklaus's trademarks (and not of the general reputation of Nicklaus); and
• a finding that DROP BEAR GOLF would be “likely to deceive or cause confusion” when used on golfing equipment because of the reputation of Nicklaus's trademarks.

However, the lack of a sufficient resemblance between DROP BEAR GOLF and Nicklaus's trademarks precluded such a finding in this case.

In Tiffany, Tiffany Koury applied to extend protection to Australia of her international registration for the trademark TIFFANY KOURY. She applied for registration in respect of various clothing products in Class 25. Tiffany and Company, the well-known jewellery store and the owner of a large portfolio of Australian registrations for trademarks including the word 'Tiffany', opposed the extension of Koury’s registration on numerous grounds, including under Section 60 of the act.

The delegate noted and accepted that Tiffany:

• was engaged in the design, manufacture and sale of collections of high-quality luxury consumer items for personal and household use and adornment, as well as the provision of related services;
• had 246 stores worldwide, including stores in Sydney, Melbourne, Brisbane and Perth;
• had used its TIFFANY marks globally for luxury goods since 1837; and
• had a significant reputation arising from its use of its TIFFANY marks, both internationally and in Australia.

In these circumstances, the delegate accepted that the word 'Tiffany' alone could connote Tiffany. However, the delegate concluded that in the context of its use with the surname Koury, consumers of clothing items (particularly luxury clothing items) would be likely to inspect the goods before purchase and, therefore, would be unlikely to ignore the presence of the surname Koury in the mark.

Tiffany argued that deception and confusion would arise even with the addition of the surname Koury because TIFFANY KOURY still brings Tiffany to the mind of the consumer. However, the delegate held that a “reminder of the opponent [did] not equate to a perceived trade connection” between Tiffany and the trademark TIFFANY KOURY. In essence, the delegate thought that consumers would be more likely to view the TIFFANY KOURY mark as the full name of a female person. Consequently, there was no likelihood of confusion.

Julian Gyngell, Julian Gyngell, Wahroonga