In this case, prior registrations for BIANCA did not prevent the registration of the BIANCA AND BRIDGETT trade mark for the same goods.
Bianca and Bridgett Pty Ltd filed an application to register the BIANCA AND BRIDGETT trade mark for goods in Class 25. It was opposed by Bianca-Moden GmbH & Co. KG, the owner of prior registrations in Australia for the bianca trade mark, also covering goods in Class 25.
Bianca-Moden claimed that the BIANCA AND BRIDGETT trade mark was substantially identical with or deceptively similar to its prior bianca registrations.
Notably, Bianca-Moden did not file any Evidence-in-Support of the opposition, although the Delegate noted that it ultimately did not need to file any Evidence-in-Support to succeed. However, following Evidence-in-Answer filed by the Applicant (which weighed significantly in the determination of this matter), Bianca-Moden filed Evidence-in-Reply to that.
As the bianca trade marks covered the same goods in Class 25 as the BIANCA AND BRIDGETT trade mark, the only issue for determination in this matter was whether the BIANCA AND BRIDGETT trade mark was substantially identical with, or deceptively similar to, the earlier bianca trade marks.
On the question of substantial identity, the Delegate noted that the contention that the marks are substantially identical because BIANCA is the essential feature of both marks is “not wholly without merit”. He did not make a finding of substantial identity, however, owing to a lack of a “total impression of resemblance” which emerges from a comparison of the marks.
The Delegate also found that the marks were not deceptively similar taking into account the following:
- The Opponent’s submission that the element “Bianca” retains its identity in the BIANCA AND BRIDGETT trade mark and that consumers would therefore view the BIANCA AND BRIDGETT trade mark as an extension or sub brand of the bianca brand; and
- The lack of evidence provided by the Opponent to substantiate a reputation in the bianca trade mark such that consumers would view BIANCA AND BRIDGETT as an extension or sub brand of the bianca brand; and
- The practice direction at IP Australia on comparing trade marks consisting of given names which requires the relative commonness of the given name to be taken into account; and
- That the name ‘Bianca’ is “not uncommon” and that this is frequently used in the fashion industry based on the evidence-in-answer filed by the Applicant; and
- That coupling given names is a fashion industry naming convention based on the Evidence-in-Answer filed by the Applicant (such that consumers would not view the BIANCA AND BRIDGETT trade mark as an extension or sub brand of bianca).
Overall, this opposition was unsuccessful for failure of the Opponent to file any evidence to establish that the presence of a common element between these marks would cause confusion among consumers (even though the Opponent carries the burden of proof). In contrast, the Applicant led significant evidence of naming practices in the relevant industry to show that consumer confusion in this case was not likely.