Federal Court of Australia rules on trade mark ownership in dispute over retail bags

OUTCOME: Dismissed

FEDERAL COURT OF AUSTRALIA

[RESPONDENT] v [RESPONDENT] [COMPANY] [2007] FCAFC 184

TRADE MARKS – ownership – first use – combination mark – whether goods "of the same kind" – whether word mark sufficiently distinctive to identify goods

PASSING OFF – whether [RESPONDENT] raised geographical limitation of use before [NAME] judge

EVIDENCE – evidential onus of proof – whether [NAME] judge's conclusions on evidence matters of impression

Trade Marks Act 1995 (Cth) ss 14, 17, 27, 41, 44, 58, 88, 120, 122, 124 [NAME] Act 1875 (UK) s 10 Trade Practices Act 1974 (Cth) s 52

[NAME] v [NAME] (1960) 103 CLR 391 cited [NAME] v [COMPANY] (1926) 38 CLR 332 cited [NAME] v [NAME] (1998) 83 FCR 50 cited [COMPANY] v [NAME] (No 2) [COMPANY] (2001) 117 FCR 424 discussed, applied [COMPANY] v [NAME] & [COMPANY] [1996] RPC 281 cited Builders Licensing Board v [NAME]) [COMPANY] (1976) 135 CLR 616 cited [NAME] v [NAME] (2001) 108 FCR 311 cited [COMPANY] v [NAME] (1938) 55 RPC 125 referred to [COMPANY] v [NAME] [NAME] (1998) 42 IPR 265 [COMPANY] v [COMPANY] (1994) 120 ALR 495 discussed [NAME] v [NAME] (1964) 111 CLR 511 discussed [COMPANY] v [NAME] (1999) 48 IPR 158 cited [NAME] v [NAME] (1994) 29 IPR 225 cited [COMPANY] v [NAME] (2006) 224 ALR 1 cited [COMPANY] v [NAME] (1993) 27 IPR 124 cited Edwards v Dennis (1885) 30 Ch D 454 cited First [NAME] v [COMPANY] (2000) 49 IPR 199 cited [NAME] v [NAME] (2003) 214 CLR 118 cited [NAME] v [NAME] (1993) 28 IPR 143 cited [NAME] v [NAME] 240 US 251 (1916) referred to [COMPANY] v [NAME] (1936) IPR 638 In re [NAME]'s Trade mark (1889) 6 PR 189 cited In re [NAME]'s Trade Mark (1897) 22 VLR 636 referred to In re [NAME]'s Trade Mark (1883) 24 Ch D 504 cited [NAME] v [NAME] (1886) 35 Ch D 160 cited King v Hayward (1997) 39 IPR 431 cited [COMPANY] v [NAME] (2006) 234 ALR 241 referred to [COMPANY] v [COMPANY] (1998) 42 IPR 561 cited [COMPANY] v [COMPANY] (1980) 145 CLR 457 discussed [COMPANY] v [COMPANY] (No 2) (1984) 156 CLR 414 discussed [NAME] v [COMPANY] (1999) 45 IPR 649 cited [COMPANY] v [NAME] (2000) 47 IPR 579 cited [COMPANY] v [NAME] (1990) 24 FCR 1 cited [COMPANY] v [COMPANY] (1999) 47 IPR 47 discussed Perry Davis & Son v Harbord (1890) 15 App Cas 316 cited [NAME] v [COMPANY] [COMPANY] [1894] AC 8 cited [COMPANY] v [COMPANY] (1995) 33 IPR 53 cited Re [NAME]'s Trade Mark (1885) LT NS 337 cited Re [NAME]'s Application (1946) 63 RPC 59 cited Re [NAME]'s Trade Mark (1886) 54 LT NS 659 cited Re The [NAME] "[NAME]"; Ex parte [COMPANY] (1951) 82 CLR 199 cited [NAME] v [NAME] [COMPANY] [1913] AC 624 cited [NAME] v [NAME] [1891] 2 Ch 522 cited [NAME] v [NAME] ([COMPANY] (1987) 10 IPR 402 cited [COMPANY] v [NAME] (Australia) [COMPANY] (1963) 109 CLR 407 discussed [NAME] of Australia v [NAME] (1949) 78 CLR 601 discussed [NAME] v [COMPANY] (1954) 91 CLR 592 cited [NAME]'s Australia [COMPANY] v [COMPANY] (2000) 48 IPR 513 referred to [NAME] [COMPANY] v [COMPANY] (2003) 61 IPR 334 cited [NAME] [COMPANY] v [NAME] (2001) 113 FCR 322 cited [COMPANY] v Société des [COMPANY] [2006] FCA 782 cited [COMPANY] v [COMPANY] (1995) 31 IPR 557 cited [COMPANY] v [COMPANY] (No 2) (2006) 154 FCR 97 cited

[NAME] et al, [NAME]'s Australian Law of Trade Marks and Passing Off (3rd Ed, [NAME], 2003) [NAME], [NAME], [NAME] & Related Rights ([NAME], 2006) [NAME], [NAME]'s Law of Trade Marks (4th Ed) [NAME] and [NAME], [NAME] on Trade Marks (3rd Ed, [NAME], 1908) [NAME], Trade Marks and Unfair Competition Vol 2 ([NAME], 1984) Restatement of the Law of Torts Vol III (1938)

[RESPONDENT] AND [RESPONDENT] v [RESPONDENT] [COMPANY] 859 OF 2006

[NAME]

28 NOVEMBER 2007

[RESPONDENT]

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY VID 859 OF 2006

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

[RESPONDENT]: [RESPONDENT]

Respondent

[RESPONDENT] OF ORDER: 28 NOVEMBER 2007

[RESPONDENT]

THE COURT ORDERS THAT:

1. On or before 7 December 2007, the parties file an agreed form of order providing for the matters identified in paragraph [229] of the reasons of [NAME], failing such agreement, on or before 7 December 2007, each party file the orders for which it contends, together with brief submissions as to the differences [RESPONDENT] them.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY VID 859 OF 2006

[RESPONDENT]

Respondent

[RESPONDENT] [COMPANY]-[RESPONDENT] [RESPONDENT]: [NAME]: 28 NOVEMBER 2007

PLACE: [RESPONDENT] FOR JUDGMENT

[NAME] J 1 These proceedings concern the use by two [NAME] of the word "[RESPONDENT]" on various items, including backpacks, handbags, purses and wallets. Pursuant to the Trade Marks Act 1995 (Cth) ("the 1995 Act"), with effect from 16 February 2001, the [RESPONDENT] is and has been the owner of the [NAME] trade mark number 866291 for the word mark "[RESPONDENT]" in respect of, amongst other things, bags, wallets, purses, backpacks, belts, clothing, boots, shoes, slippers and other footwear. The controversy in these proceedings stems in large part from the fact that both [NAME] used the word "[RESPONDENT]" well prior to 2001. 2 I have read in draft the judgment of [NAME], which sets out the circumstances that give rise to these proceedings and makes a detailed analysis of the evidence pertinent to the issues that now fall for determination. There is nothing to be gained by reiterating these matters. The various issues argued on the appeal, [NAME]-appeal and [NAME]' notice of contention invite consideration of points of law, a detailed appreciation of the evidence, and scrutiny of the findings of fact made at first instance. 3 The first topic argued by the parties concerned the relationship of trade mark [NAME] by first use and [NAME]. Generally speaking, there was no contest about the applicable principles in this regard. 4 In order for a person properly to [NAME] a trade mark, the person must be the owner (formerly, [NAME], which is the same thing) of the trade mark: see ss 27(1) and 58. As the learned [NAME] judge said (in [RESPONDENT[COMPANY] v [RESPONDENT[COMPANY] (2006) 67 IPR 628 ("first judgment") at [23]): First, in respect of a mark which has never been used the [NAME] is the person who is (or claims through) the author of the mark (which could include the copyist of a foreign mark) and intends to use it: In re [NAME]'s Trade-Marks (1886) 32 Ch D 311, 319-320; [NAME] of Australia [COMPANY] v [NAME] (1949) 78 CLR 601, 627-628. This proposition is not in doubt, although it does not assist in the present case. 5 Where a person has used a mark prior to an application for [NAME] (as in this case), this person may be regarded as the owner of the mark, providing another person has not made earlier use of it. This proposition is relevant here. Again, to quote the [NAME] judge (in his first judgment at [23]): In the case of an inherently distinctive mark nothing more than first use is necessary to establish [NAME]. The applicant need not show that the mark has gained public recognition. Any general use of the mark as a trade mark will be enough, although in a rare case the use may be so inconsequential that it should be ignored as de minimis … If a mark is not inherently distinctive but indicates that an article emanates from some (unusually anonymous) source because, or partly because, the mark has acquired a secondary meaning, strictly speaking first use is not sufficient to establish [NAME]. To make out [NAME] it is also necessary to show that the mark does in fact distinguish the applicant's goods from the goods of others. Even if this is not an aspect of [NAME], unless a secondary meaning is established s 41 would bar [NAME] of the mark. 6 The owner of a mark does not have rights at large in relation to the mark. The effect of the 1995 Act, which, in this regard, is much the same as earlier trade mark legislation, is that a trade mark must be [NAME] in respect of particular goods or services as set out in Schedule 1 to the Trade Marks Regulations 1995 (Cth): see reg 3.1, 4.4 and Sch 1; also the 1995 Act, s 19 and 27. Ownership by first use is therefore ownership (or [NAME]) in relation to the goods or classes of goods on which the mark has first been used. The owner's right to [NAME] in this circumstance is not [COMPANY] to the identical goods or classes of goods but extends to goods or classes of goods "of the same kind": see [NAME] v [NAME] (1886) 35 Ch D 162 at 178 and In re Hick's Trade Mark (1897) 22 VLR 636 at 640 . 7 The [RESPONDENT] claimed that, as at 16 February 2001, it was the owner of the mark "[RESPONDENT]" in respect of (amongst other things) backpacks, bags, wallets, and purses and for services in respect of these goods. Amongst other things, the [NAME] contended, and the respondents denied, that they made first use of the [RESPONDENT] mark on backpacks, designed predominantly for schoolchildren and sold from retails [NAME] in 1982. It was not in dispute that the [NAME] used the word "[RESPONDENT]" in combination with a "simple mountain motif" on backpacks and shoes before the word "[RESPONDENT]" was used by the respondent or its predecessor [RESPONDENT] ("[NAME]"). As a general rule, however, an owner of a combination mark is not the owner for trade mark purposes of the marks comprising each separate component of it: see In re [NAME]'s Trade-Mark (1883) 24 Ch D 504 and [NAME] v [NAME] [1891] 2 Ch 522.

Accordingly, the evidence of witnesses who were with the [NAME]' business in 1982 was significant for the question whether in 1982 or thereabouts the backpacks had borne the word "[RESPONDENT]" without the motif. The [NAME] judge held, however, that the evidence did not permit "any conclusion about the nature of the mark on backpacks [RESPONDENT] 1982 and, say, 1985". Since he was not satisfied that at the relevant time the mark constituted both the word and the motif, and he considered that the respondent bore the onus on the [NAME]-claim, then the respondent failed on this issue. Before us, the respondent submitted that the [NAME] judge was wrong as to onus; and, in any event, in their notice of contention, the [NAME] argued that there was sufficient evidence to find that the word "[RESPONDENT]" had been used alone on backpacks from 1982. 8 I agree with [NAME] (and therefore the [NAME] judge) that, if the evidence was unclear, the respondent failed. This is because, by its [NAME]-claim, the respondent sought to have the [RESPONDENT]'s [NAME] mark removed from the [NAME] on the basis that its predecessor, [NAME], made first use of the mark on backpacks: see ss 58, 88(1) and 88(2)(a) of the 1995 Act. Since the evidence was unclear, the respondent failed to make out its competing claim of first use. 9 Whilst it does not affect the result, I would not go so far as to say, as [NAME] does, that the [NAME] judge should have found that [RESPONDENT] the [NAME] used the word "[RESPONDENT]" on backpacks from 1982 other than in conjunction with a logo. Minds might reasonably differ on the effect of the relevant evidence (which is referred to [NAME]'s reasons and in the first judgment of the [NAME] judge at [31]). Having regard to this circumstance and "the subtle and imprecise, yet real" advantages the trial judge enjoyed, and giving proper weight to his assessment, I would not depart from the trial judge's finding that "one cannot say with any confidence that the mark comprised both the word and logo": see [COMPANY] v [NAME] (No 2) [COMPANY] (2001) 117 FCR 424 ('[NAME]') at 437 per [NAME] (with whom Drummond and Mansfield JJ agreed). 10 Whilst the respondent failed to establish that the [NAME] did not have first use of the word "[RESPONDENT]" on backpacks, the [RESPONDENT] retained its right to [NAME] the mark in respect of backpacks and goods "of the same kind". The Registrar accepted that the [RESPONDENT] owned the mark in respect of "bags, wallets, purses, backpacks and belts" in class 18. The respondent further contested the [RESPONDENT]'s ownership, upon the basis that these other goods were not goods of the same kind as backpacks. 11 I agree with [NAME] that there is no error in the finding made by the [NAME] judge (first judgment at [32]) that bags, wallets, purses and belts are not goods of the same kind as backpacks. The parties invited the Court to elucidate the phrase "of the same kind" in this context. 12 Counsel for the [NAME] contended that whether goods were of the same kind for this purpose should be determined "with the same degree of liberality that one approaches the matter when one is dealing with goods of the same description" elsewhere in the 1995 Act: see, e.g., ss 14 and 44(1); and ss 120(2) and (3). The authorities that have considered the phrase goods "of the same description" are numerous: see, e.g., [NAME] (1946) 63 RPC 59 at 69-72 per Romer J; and [NAME] v [COMPANY] (1954) 91 CLR 592 at 606-607 per [NAME], [NAME], Webb, [NAME] and [NAME]. These authorities indicate that, depending on the goods, there are various factors that may be important in determining whether goods are of the same description as other goods, including their nature and uses, and the trade channels or markets in which they are sold. The [NAME]' counsel submitted that the [NAME] judge concentrated unduly on the fact that their backpacks were predominantly for use by school children and failed to pay sufficient attention to the evidence that backpacks were in some instances fashion items too. He argued that handbags, purses and wallets were the same kind of thing as backpacks because they were "receptacles which ordinary people carry around with them every day for transporting their things". 13 The respondent's counsel argued for a narrow approach to the notion of goods of "the same kind". He contended that appropriate approach was necessarily constrained by s 27 of the 1995 Act, which required that the [NAME] be the owner of the mark "in relation to the goods and/or services". This entailed, so the respondent's counsel argued, a more refined approach to the problem of characterization than that mooted by the [NAME]. I accept that the respondent's approach is to be preferred, although I do not consider the authorities to be especially helpful in this regard. 14 As we have seen, generally speaking, the prior public use in Australia of a mark as a trade mark – that is, the use of the mark in relation to goods or services in order to show a connection [RESPONDENT] the goods and the [NAME] of the mark – may support the [NAME]'s claim to be the "owner" of the mark for the purpose of s 27 of the 1995 Act: see [COMPANY] v [COMPANY] [No 2] (1984) 156 CLR 414 at 432 per Deane J (with whom [NAME], Mason, [NAME] agreed). For this purpose, too, the owner's right to [NAME] extends to goods "of the same kind" as the goods that have already borne the mark: see [NAME] v [NAME] (1886) 35 Ch D 162 at 178 per [NAME] and In re [NAME] (1897) 22 VLR 636 at 640 per [NAME]. Authoritative discussions show that this extension to goods of the same kind is confined to goods that are essentially the same, though they may differ in size, shape and name. This point is emphasised in [NAME] v [NAME] where [NAME] gave some attention to this question in considering the difference [RESPONDENT] an axe and a hatchet. He said (at 177-178): [The Respondents] said there was a little difference in the size, as I understand, and a little difference in the shape; but can it be, that a [NAME] having made goods of a particular size, which might be designated as small axes – which in fact is the definition given in [RESPONDENT]'s Dictionary of a hatchet – is to be precluded from putting his mark upon things of the same description or belonging to the same class of goods, but of a different size and a different shape? The objection of course is founded on Edwards v [NAME] [30 Ch D 454], in which it was held that a [NAME] having [NAME] a mark for iron goods and having manufactured, I think, sheet-iron, and applied his mark to that, was not entitled to stop another [NAME] from using the same mark in respect of iron wire which he had never used at all. That to my mind is a totally different thing from saying that a [NAME] who has used a mark on hatchets of a particular size and shape is not entitled to use a trade-mark as applied to an axe, which is a thing of the same kind but a little different in size and a little different in shape. No doubt at first the classes of goods under the Trade Marks Act were drawn too wide, and that has led to difficulty, but if I were to accede to this notion and say that because a [NAME] had merely manufactured small axes, he was not to be allowed to [NAME] in respect of axes, the logical consequence would be that he would have to [NAME] the shapes and sizes of everything to which he attached his mark. That was an inconvenience that was never intended to be imposed on an applicant, and I hold that a [NAME] who has manufactured and applied his mark to small axes is entitled to [NAME] it in respect of axes generally. 15 [COMPANY] v [COMPANY] (1994) 120 ALR 495 [NAME] briefly considered whether there was any lack of identity [RESPONDENT] the services for which the respondent sought [NAME] and those that had been previously provided by the applicant. [NAME]'s approach emphasised the absence of any material difference [RESPONDENT] the parties' services. He held (at 514) that the evidence did not "suggest that there is any particular difference in the character or quality of the services provided by" either party other than their geographical location. Had it been important, he would not have held that "the difference in the description of services was such as to disqualify [NAME] from any other success it would otherwise have had in its opposition based on its claim to [NAME]". 16 In identifying whether or not goods or a class of goods are essentially the same as other goods or classes of goods, a decision-maker will have regard to a range of factors, depending on the goods in question. Physical and functional differences may be relevant. Other matters may be as well. There is no bright line that marks out the factors for a "same kind" inquiry from the factors for a "same description" inquiry, although these inquiries may differ in the answers they yield. Goods that are properly regarded as "essentially the same" may well cover a narrower field that goods "of the same description". 17 As [NAME] notes, this approach conforms to the approach in the Trade Mark Office in opposition proceedings based on prior use. [NAME] refers to numerous examples. Other examples can be cited. In [COMPANY] v [NAME] (1936) IPR 638 the services of the opponent – the treatment of motors and engines – were held not to be the same kind of thing as the applicant's lubricant conditioning agent. [COMPANY] v [NAME] (1999) 48 IPR 158 the opponent's insulated containers were held not to be the same kind of thing as the applicant's insulated thermoelectric containers. In [NAME] [COMPANY] v [COMPANY] (2003) 61 IPR 334, the opponent's service of providing food and drink refreshments to cinema patrons was not the same kind of thing as the applicant's food goods. In [NAME] v [COMPANY] (1999) 45 IPR 649 the clocks mounted in the opponent's vehicles were not the same kind of thing as the applicant's clocks and watches. [COMPANY] v [NAME] [NAME] (1998) 42 IPR 265 olive oil and olive [NAME] were held not to be the same kind of thing as coffee. 18 This approach best serves the purposes of the 1995 Act. It may be borne in mind that an [NAME] may apply for [NAME] in respect of as broad a range of goods and services as desired. Whilst the application does not confer a right to [NAME], a right to [NAME] arises once certain conditions are met, including that the mark is free from objection: see s 68. As the High Court observed in [COMPANY] v [COMPANY] (1980) 145 CLR 457 at 478, in relation to the Trade Marks Act 1955 (Cth) ("the 1955 Act"): Even so, a critical question, if not the critical question, for the Registrar to decide is whether the applicant is the [NAME] in the statutory sense. If the applicant is the [NAME] and there are no lawful grounds of objection, then the Registrar is bound to accept the application. 19 The [NAME] is a public document in so far as it is open to inspection when the Trade Mark Office is open for business: see s 209. Whilst the [NAME] may be altered or amended from time to time, it is at the heart of the statutory regime for trade mark regulation: see Pts 8 and 9 of the 1995 Act. If the acquisition of ownership of a mark by prior [NAME] were to extend to a broad ill-defined set of goods, this would have the capacity to undermine the efficiency of the [NAME] system. 20 For these reasons and for the reasons stated by [NAME], I agree that backpacks used predominantly by school children are not essentially the same as handbags. For largely utilitarian purposes, backpacks such as these are designed to be worn on the back and to hold the articles schoolchildren ordinarily carry [RESPONDENT] home and school, some of which may be quite heavy or bulky. Handbags are ordinarily smaller than backpacks. Handbags are generally held in the hand or worn over the shoulder. They are intended to carry the small everyday articles that an adult requires to move around the community (such as money or keys), as well as small items for personal use (such as a comb). They are also an everyday fashion item for use by women of all ages and, on occasions, by men. Plainly enough, a purse or wallet is even less like a school child's backpack than a handbag. 21 The [NAME] conceded that, if backpacks and handbags were not goods of the same kind, then the respondent's predecessor [RESPONDENT] made first use of the mark "[RESPONDENT]" in respect of handbags. A further issue of [NAME] arose, however, in relation to wallets and purses. The parties approached this question on the basis that purses and wallets were goods of the same kind. On this basis, the [NAME] judge stated his view that purses and wallets were goods of the same kind as handbags. The [NAME] contested this on their appeal. [NAME] reached this conclusion because he considered that handbags and purses were "intended as fashion items and are used to carry small, everyday items such as money, credit cards, keys and like objects": see [RESPONDENT[COMPANY] [RESPONDENT[COMPANY] (No 2) (2006) 69 IPR 281 at [31]. [NAME] states the contrary view, observing that handbags often have a wider purpose than purses and wallets. There is something to be said for both points of view. Indeed, the difference of opinion highlights that the matter is essentially one of impression about which reasonable minds might well differ. 22 For my own part, I am reminded of [NAME]'s comments in [NAME] v [NAME] at 178 (set out above). A purse is usually (though not always) smaller than a handbag and often (though not always) holds only money or credit cards. A purse or wallet can be as much a fashion item as a handbag. Viewed in this way, there is no clear, generally valid, distinction to be made [RESPONDENT] handbags and purses (and therefore wallets). This supports the view, expressed by the [NAME] judge, that handbags, purses and wallets should be regarded as goods of the same kind. In any case, I do not think it can be said that the [NAME] judge was wrong in this conclusion, even if the Court on appeal preferred the contrary view. It follows from this that, if the point were significant, I would not interfere with the [NAME] judge's finding in this regard: see [NAME] at 435-440 and [NAME] v [NAME] (2001) 108 FCR 311 at 362 per Hill, Weinberg and Dowsett JJ. 23 Having reached this conclusion, it is unnecessary for me to express a view as to whether, as the [NAME] assert, they made first use of the word mark "[RESPONDENT]" on wallets and purses. I would add, however, that, for the reasons stated by [NAME], I agree that it was open to the [NAME] judge to find that [NAME] (the respondent's predecessor) used swing tags with the word "[RESPONDENT]" on wallets and purses from before 1993. 24 It follows from the foregoing that I agree in the result as to [NAME] reached by [NAME]. 25 The second topic that arose for the Court's consideration was distinctiveness. An application for [NAME] of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be [NAME] from the goods or services of other persons: see s 41(2). In deciding whether a mark is capable of distinguishing the designated goods from the goods of others, the Registrar must take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods from the goods of others: see s 41(3). If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is so capable of distinguishing the designated goods or services, then the Registrar must consider a number of other matters: see s 41(5). If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, then s 41(6) applies. 26 The [NAME] judge rejected the [NAME]-[RESPONDENT]'s submissions that the word "[RESPONDENT]" lacked distinctiveness. He held that the word "[RESPONDENT]" was a geographic term, the use of which, in relation to the goods in question, was arbitrary "making it inherently distinctive and thus requiring no proof of secondary meaning": first judgment at [35]. He also rejected the possibility, "with one slight exception", that the word "[RESPONDENT]" can be descriptive of backpacks or shoes: first judgment at [36]. Referring to [NAME] v [NAME] (1964) 111 CLR 511 ("[NAME]") at 513-514 per [NAME], the [NAME]-[RESPONDENT] argued before us that the [NAME] judge had not addressed the correct question. [NAME] was a decision under the 1955 Act. 27 In [NAME] [NAME] held that the [NAME] was right to refuse to accept an application for [NAME] of the word "Michigan" in respect of earth moving and like equipment, because the word was not adapted to distinguishing these goods from the like goods of others. [NAME[NAME] said (at 513) that the ultimate question: … is not whether the mark will be adapted to distinguish the [NAME]'s goods if it be [NAME] and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of [NAME], is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. After referring to certain well-known statements of [NAME] in [NAME] v [NAME] [COMPANY] [1913] AC 624, at 634-635, [NAME] concluded: … the question whether a mark is adapted to distinguish [must] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make [NAME] use of words forming part of the common heritage, for the sale of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a [NAME] trade mark granted in respect of it. 28 Obviously enough, applications to [NAME] as trade marks the names of countries, cities and geographical features will commonly fail to pass this test. Again, as [NAME[NAME] said in [NAME] (at 514-515): It is well settled that a geographical name, when used as a trade mark for a particular category of goods, may be saved by the nature of the goods or by some other circumstance from carrying its prima facie geographical signification, and that for that reason it may be held to be adapted to distinguish the applicant's goods. Where that is so it is because to an [NAME] [NAME] the idea of using that name in relation to such goods or in such circumstances would simply not occur… The consequence is that the name of a place or of an area, whether it be a district or a county, a state or a country, can hardly ever be adapted to distinguish [NAME]'s goods from the goods of others when used simpliciter or with no addition save a description of designation of the goods, if goods of the kind are produced at the place or in the area or if it is reasonable to suppose that such goods may in the future be produced there. In such a case, the name is plainly not inherently, i.e. in its own nature, adapted to distinguish the applicant's goods; there is necessarily great difficulty in proving that by reason of use or other circumstances it does in fact distinguish his goods; and even where that difficulty is overcome there remains the virtual if not complete impossibility of satisfying the Registrar or the Court that the effect of granting [NAME] will not be to deny the word to a person who is likely to want to use it, legitimately, in connexion with his goods for the sake of the geographical reference which it is inherently adapted to make. 29 Presumably, the phrase "inherently adapted to distinguish the designated goods from the goods of other persons" in s 41(3) of the 1995 Act is intended to be understood in light of earlier decisions under the 1955 Act, such as [NAME]. I agree with [RESPONDENT] and [NAME] JJ that the word "[RESPONDENT]" as applied to backpacks, bags, wallets, purses, shoes and other goods of the [RESPONDENT] was not a "fancy name" as that expression was used by [NAME] in [NAME] (at 515). It is the name of a State in the [NAME]. There was evidence that the word was used to invoke adventure, ruggedness, trekking and like images associated with the State of [RESPONDENT], on account of the Rocky Mountains being there. The use of the word "[RESPONDENT]" was entirely different from the use of the expression "North Pole" in connection with bananas, which was one of [NAME]'s examples of a "fancy name". The use of the word "[RESPONDENT]" was not arbitrary and its use was not equivalent to a made-up word or device. I agree in substance with [NAME] that it is likely that another [NAME] will want to use the word "[RESPONDENT]", legitimately, with regard to his goods, for the sake of the geographical reference which it is inherently adapted to make or the connotations that that geographic reference invokes.

Accordingly, I agree in the conclusion of [RESPONDENT] and [NAME] JJ that the word "[RESPONDENT]" alone is not inherently adapted to distinguish the designated goods or services of the [RESPONDENT] from the goods or services of other persons. 30 Further, I agree, for the reasons stated by [NAME], that the use by the respondent of the word "[RESPONDENT]" is relevant to an inquiry under s 41(5) of the 1995 Act (and, for the same reasons, an inquiry under s 41(6)). Having regard to the evidence, which is set out in detail by [NAME], it is tolerably clear that, as [NAME] concludes, it cannot be said that, as at 2001, the [NAME]' use of the word "[RESPONDENT]" alone or in conjunction with any device was such that the word did or would distinguish the designated goods as being the [NAME]'. If s 41(5) applied, then it did not assist the [NAME]. There seems no reason to believe that s 41(6) would offer them any greater assistance. 31 Since the respondent's use of the word "[RESPONDENT]" is relevant to an inquiry under ss 41(5) and (6), the respondent's submission on its [NAME]-appeal concerning false representation falls for consideration. The respondent submitted that a statement made to the [NAME] in support of the [RESPONDENT]'s application for [NAME] implicitly represented that nothing of relevance happened after 1990 or 1991 and that this was plainly false. [NAME], and substantially for the reasons he has stated, I would not conclude, without more, that the acceptance of the application for [NAME] was on the basis of a false representation. 32 Since I am of the view that the trade mark "[RESPONDENT]" in not capable of distinguishing the [NAME]' goods and services from the goods and services of others and is therefore not a registrable mark, there is no need to consider ss 120(2) and 124 of the 1995 Act. It suffices to note that [NAME] discusses the parties' submissions concerning their operation in this case. 33 For the reasons stated by [NAME], I agree that no relevant error has been shown in the [NAME] judge's rejection of the [NAME]' passing off and TPA claims. 34 For the reasons stated, I agree with the disposition of the appeal and [NAME]-appeal proposed by [NAME] and in the orders he proposes.

I certify that the preceding thirty-four (34) numbered paragraphs are a true copy of the Reasons for Judgment herein of the [NAME].

Associate: Dated: 28 November 2007

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY VID 859 OF 2006

[RESPONDENT]: [RESPONDENT] [RESPONDENT]

Respondent

PLACE: [RESPONDENT] FOR JUDGMENT

[NAME] 35 The issues on the appeal and [NAME]-appeal have been comprehensively analysed in the reasons of [NAME] that I have had the benefit of reading in draft. In my opinion, the trademark "[RESPONDENT]" is not capable of distinguishing the [NAME]' goods from the goods of other persons within the meaning of s 41 of the Trade Marks Act 1995 (Cth) (the Act) thus leading to a failure of the appeal and success of the [NAME]-appeal as to the trade mark issues on the basis explained by [NAME]. I agree with the reasoning of [NAME] on this point but wish to add some supplementary reasons of my own. 36 An anomaly lies at the heart of the case. The [NAME] claim [NAME] in the mark "[RESPONDENT]" from 1982 onwards. However, in practice, that word could not have been [NAME] as a trade mark during most of that period. It was virtually impossible to obtain [NAME] of a geographical name under the Trade Marks Act 1955 (Cth) (the 1955 Act) because of s 24(1)(d) of that Act. It is only necessary to refer to [NAME] v [NAME] (1964) 111 CLR 511 and [COMPANY] v [NAME] (1990) 24 FCR 1 to explain the point. [RESPONDENT] is a significant state in the west of the [NAME] known far and wide for the Rocky Mountains and outdoor activities such as hiking, skiing, canoeing and (historically) as part of the "wild west" with cowboys and Indians. The most substantial early use of the mark on behalf of the [NAME] was in conjunction with a mountain logo which reinforced the geographic connotation of the word. It is to be noted that the respondent's predecessor disclaimed the word "[RESPONDENT]" when application was made for [NAME] of "[RESPONDENT]" with the [NAME] head device in April 1991. The [NAME] head device was, no doubt, chosen because of the cowboy and [NAME] connotation of [RESPONDENT]. 37 The trial judge referred to evidence that, when the [RESPONDENT] [NAME] were established in July 1993, it was intended that the [NAME] would market their [NAME] with a "strong reference to [an] outdoors rugged lifestyle" ([RESPONDENT[COMPANY] v [RESPONDENT[COMPANY] (2006) 67 IPR 628, [2006] FCA 160 at [9]). The trial judge quoted the following from a report which led to the opening of the [NAME]: "[RESPONDENT] has been chosen as it has lifestyle connotations that are representative of to [sic] the [NAME]. Within Australia the [RESPONDENT] name has very strong attributes that make it the ideal promotional platform. The chain will gain instant [NAME] value from the rich cultural and geographical images that [RESPONDENT] evokes. Our [NAME] research tells us that the name [RESPONDENT] conjures up images of;- · [NAME] · Rugged · Trekking · Rocky Mountains. The [NAME] aspect of the name is seen as an advantage, equating to;- · Fashion · Quality · Style implication (rugged)." It was suggested that the [NAME]'s "new image" be built around the [RESPONDENT] mountain logo. Significantly the trial judge also referred to the following part of the report (67 IPR 628, [2006] FCA 160 at [10]): "The report also discussed '[NAME]'. It noted: 'Under Australian trademark law, [NAME] of geographical names are [sic] difficult. Currently we are endeavouring to [NAME] [RESPONDENT] as a business name and our distinctive mountain logo as a trademark. Should we be unsuccessful in securing binding [NAME], we will change to a new name, however, maintaining the identical concept.'" 38 The present Act has no equivalent of s 24(1)(d) of the 1955 Act. As Note 1 to s 41(6) indicates, the effect of that section is not very different in practice, although the door may be slightly more ajar (cf [COMPANY] v [NAME] (1998) 83 FCR 50; [COMPANY] v [COMPANY] (1998) 90 FCR 236 at 248; [COMPANY] v [NAME] (2000) 47 IPR 579 at 589; [NAME], [NAME], [NAME], [NAME] of Trade Marks & Passing Off (3rd edn, [NAME], 2003), paras 6.50–6.110; [NAME] A, [NAME], [NAME] & Related Rights, [NAME], 2006, 54180). No application was made for [NAME] by the [RESPONDENT] until 2001. There was evidence that the [RESPONDENT] was aiming to change its image to that of "[NAME]", apparently some time after 1997 or 1998, although there is no finding as to when, if at all, this became effective. Over the years there had been considerable use of the name "[RESPONDENT]" with or without the [NAME] head device by the respondent and its predecessor, as explained by [NAME], that use having reached considerable proportions by 2001. In those circumstances, there obviously was, and is, a serious question as to whether the [RESPONDENT] could satisfy the test of distinctiveness laid down by s 41 of the Act. 39 The trial judge considered that issue in 67 IPR 628, [2006] FCA 160 at [33]–[36]. He did not refer to the terms of s 41 and did not pose the questions he answered by reference to the text of s 41. There is no discussion as to the integers of the section or how they might apply to the case. Rather, apart from a brief reference to [NAME] 111 CLR 511, the trial judge directed himself entirely by reference to United States sources. The trial judge held that "[RESPONDENT]" used in connection with the kind of goods involved was an arbitrary use, the equivalent of a fancy word, and so inherently distinctive. The trial judge went on (67 IPR 628, [2006] FCA 160 at [36]): "In reaching this conclusion, I have rejected the possibility, with one slight exception, that the word "[RESPONDENT]" can be descriptive of backpacks or shoes. I have referred to the evidence which is to the effect that the word "[RESPONDENT]" conjures up notions of trekking, ruggedness, fashion, Rocky Mountains and so on. For the most part those ideas are concerned with the image of the [NAME] and are not descriptive of the goods themselves. The slight exception is that the word may incidentally say something about quality (for example that the goods are "rugged" or durable) but because the word is only indirectly informative it is not likely to be perceived by many in a descriptive sense. Thus the attack based on lack of distinctiveness is not made out." 40 The question is not whether "[RESPONDENT]" can be descriptive of backpacks or shoes but, if it were, I have difficulty in understanding the concept that the ideas were concerned with the image of the [NAME] rather than the goods themselves. In my respectful submission, it is not possible to regard "[RESPONDENT]" as being an arbitrary or fancy word when used in relation to goods of the relevant description. Amongst other things, it is contrary to the [RESPONDENT]'s own assessment of the situation. 41 As [NAME] has explained, the respondent accepted that the relevant inquiry was under s 41(5). When the questions posed by s 41(5) are addressed, in my opinion, the word "[RESPONDENT]" is inherently adapted to distinguish the designated goods or services only to a slight extent. Whether taken to indicate the origin of goods or the association of the goods with the known or perceived characteristics of the [NAME], "[RESPONDENT]" is unlikely to distinguish the goods of the [RESPONDENT] compared with the goods of other parties who may legitimately choose to use the word in connection with such goods. The use or intended use of the trade mark by the [RESPONDENT] can be taken to be considerable. It may be that some people would associate the mark with the [RESPONDENT] and would not make the connection [RESPONDENT] the mark and the place. However, it is likely that many would. In my opinion, the use and intended use by the [RESPONDENT] would not distinguish its goods in the manner required. That conclusion is put beyond doubt by considering the "other circumstances". In my opinion, they must include the considerable use of the word in connection with goods by the respondent and its predecessor. In my opinion, that circumstance is decisive against a finding that the trade mark does or will distinguish the designated goods or services of the [RESPONDENT]. 42 I agree with the conclusions of [NAME] in relation to passing off and s 52 of the Trade Practices Act 1974 (Cth). I add that, in my opinion, the geographical connotation of "[RESPONDENT]" is such as to render any successful claim in passing off out of the question in this case. I have a reservation as to [NAME]'s conclusion that relief [COMPANY] in area would not be available, but that does not arise on my view of liability. 43 I agree with the orders foreshadowed by [NAME].

I certify that the preceding nine (9) numbered paragraphs are a true copy of the Reasons for Judgment herein of the [NAME].

Associate: Dated: 28 November 2007

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY VID 859 OF 2006

[RESPONDENT]: [RESPONDENT] [RESPONDENT]

Respondent

PLACE: [RESPONDENT] FOR JUDGMENT

[NAME] 44 This is an appeal and [NAME]-appeal against orders made by a Judge of the Court in a proceeding commenced by the [NAME] in which they asserted that the respondent had infringed the [NAME] trade mark "[RESPONDENT]" and engaged in passing off and in conduct in contravention of s 52 of the Trade Practices Act 1974 (Cth). The proceeding spawned a [NAME]-claim by the respondent for revocation of the trade mark based on the use said to have been made by the respondent of the same word. Issues of authorship and concurrent [NAME], amongst other issues, make a precise understanding of the facts essential. The [NAME] judge delivered two judgments, on 28 February 2006 and 7 July 2006. Orders were made on the latter of these dates. 45 The following factual introduction is taken in large part from the [NAME] judge's reasons, and also from the evidence, assisted by the joint chronology provided by the parties.

Factual introduction 46 The [RESPONDENT] ("[NAME]") is the [NAME] of [NAME]. The [NAME] commenced on 16 February 2001. The [NAME] mark is the word "[RESPONDENT]" and the [NAME] is for goods and/or services set out in the certificate of [NAME]. These included, in class 3, shoe and boot cleaning and polishing preparations and shoe and boot protection preparations; in class 9, sunglasses, cases, lenses and parts thereof; in class 14, watches; in class 18, bags, wallets, purses, backpacks and belts; in class 25, clothing, boots, shoes, slippers and other footwear, socks and hosiery; in class 26, boot and shoe laces; in class 35, advertising, business management, business administration, [NAME], and services being the bringing together for the benefit of customers of a variety of goods thereafter described in classes 3, 9, 14, 18, 26 and 35. The goods referred to in class 18, in this context, included bags, belts, wallets, purses and backpacks. 47 [NAME] is, and has been since 1999, a public company listed on the [NAME]. Before its listing in 1999, it was a subsidiary of an [NAME], [COMPANY], which was formerly known as [COMPANY]. Prior to 1991, two footwear retailing businesses, "[RESPONDENT] the [NAME]" and "[NAME]" were carried on by two subsidiaries of [NAME]; the second [RESPONDENT] ("[NAME]") and [RESPONDENT], respectively. From 1991, after a restructuring of the group, [NAME] carried on these two businesses in its own right. 48 As described below, in 1982, the word "[RESPONDENT]" began to be used in Australia on backpacks sold in "[RESPONDENT] the [NAME]" [NAME]. In 1982, there were approximately 140 "[RESPONDENT] the [NAME]" [NAME] around Australia run by [NAME]. In these [NAME], in addition to shoes, backpacks were sold. From 1982, the word "[RESPONDENT]" began to be used on backpacks with the word embroidered on the front of the backpack. It will become important in due course to understand whether, and if so from when, the word "[RESPONDENT]" was used in conjunction with a logo comprising a mountain motif. The backpacks were sold all over Australia, predominantly for use by schoolchildren, and were most successfully sold in North Queensland. 49 From 1987, the word "[RESPONDENT]" was also placed on shoes sold in the "[RESPONDENT] the [NAME]" [NAME], and from 1990 in "[NAME]" [NAME], in conjunction with a simple mountain logo in the sock of the shoe, and alone on the heel of the shoe. From 1988 to 1991 a new mountain logo was developed having three peaks. From 1991, this new mountain logo was placed on shoes bearing the word "[RESPONDENT]". This new logo was placed on the inner sole, the bottom of the sole and outside on the upper of the shoes. 50 The sale of what can be referred to as [RESPONDENT] backpacks through the "[RESPONDENT] the [NAME]" [NAME] was modest. Considerable success was achieved in the sale of what can be called [RESPONDENT] shoes through the "[RESPONDENT] the [NAME]" and "[NAME]" [NAME]. In 1990, about $8 million of what can be said to be [RESPONDENT] branded [NAME], backpacks and shoes, were sold by these two chains of [NAME]. 51 This moderate success apparently led to a desire to widen the use of the word "[RESPONDENT]" by expanding the "[RESPONDENT] range" of goods to include clothing and accessories and by establishing a chain of "[RESPONDENT]" [NAME] to sell such [NAME]. In the development and preparation of these commercial aims, an advertising report was prepared in late 1992. The [NAME] judge described the key findings in this report at [9] of his reasons as follows: The [NAME] concept was wholeheartedly endorsed by both lower and middle-upper income groups. Significantly, the [NAME] concept was able to achieve interest amongst lower-income males who generally had little interest in both shopping and clothes. … The mountain graphic was a real winner and is seen to be representative of [RESPONDENT]. It should be maximised in [NAME]. Despite being easily identified, it should not replace the door as it is not dramatic enough. It is graphically strong and contemporary but would soon become on [sic] of the crowd. "[RESPONDENT] has been chosen as it has lifestyle connotations that are representative of to [sic] the [NAME]. Within Australia the [RESPONDENT] name has very strong attributes that make it the ideal promotional platform. The chain will gain instant [NAME] value from the rich cultural and geographical images that [RESPONDENT] evokes. Our [NAME] research tells us that the name [RESPONDENT] conjures up images of; - • [NAME] • Rugged • Trekking • Rocky Mountains. The [NAME] aspect of the name is seen as an advantage, equating to; - • Fashion • Quality • Style implication (rugged)." [emphasis added] 52 The [NAME] judge said that the "proposal suggested that the [NAME]'s 'new image' be built around the [RESPONDENT] mountain logo." 53 In July 1992, the [RESPONDENT] resolved to proceed with the proposal to develop "[RESPONDENT]" [NAME]. In 1992 and 1993, relevant persons in [NAME] developed a range of [NAME] to be sold in these new [NAME], being clothing, footwear, accessories (including backpacks, socks, hats, underwear and shoe care [NAME]), leather and non-leather belts, bags and wallets. The first three "[RESPONDENT]" [NAME] opened in July 1993 in Doncaster, Victoria and in Parramatta and Penrith, New South Wales, A fourth [NAME] opened a month later at Darling Harbour, Sydney. These [NAME] were fully stocked with "[RESPONDENT]" branded [NAME]; some, such as bags, were marked with the word "[RESPONDENT]" alone, others had the word and the mountain logo used in association with one another. The [NAME] judge found at [12] of his first judgment that the predominant use of the word was in association with the mountain logo, particularly in relation to footwear, bags, handbags and other accessories. Six more such [NAME] were opened [RESPONDENT] 1993 and 1996, three in New South Wales, two in Queensland and one in Victoria. A change was implemented in 1998. The number of "[RESPONDENT]" [NAME] was expanded and the marketing image of the [NAME] was redefined. As part of this redefinition, the word "[RESPONDENT]" was used principally without any associated logo and there was a widening of the range of [NAME] on which it was placed to include goods such as watches and eyewear. The idea behind these changes was to redefine the "[RESPONDENT] image" to an "[NAME]" [NAME], and away from the previous "outdoor" image. 54 The word mark "[RESPONDENT]" was only [NAME] in 2001. There has been no [NAME] by the [NAME] of any mountain logo. 55 At the time of the hearing before the [NAME] judge, [NAME] operated 165 "[RESPONDENT] the [NAME]" [NAME], 96 "[NAME]" [NAME], 82 "[RESPONDENT]" [NAME], 28 "JAG" [NAME] (selling men's and women's clothing and fashion accessories) and 10 "[NAME]" [NAME] (selling women's footwear and leather goods). 56 The respondent, [RESPONDENT[COMPANY] ("[RESPONDENT]"), conducts, partly through franchises, a chain of 186 [NAME] around Australia. It is a speciality retailer of bags, travel goods, backpacks, wallets and other small leather goods and accessories. In 1998, [RESPONDENT] purchased various businesses from a company called [COMPANY] ("[NAME]"), a company owned and controlled by Mr [NAME] and his wife, Ms [NAME]. Those businesses (with assets, including goodwill) purchased by [RESPONDENT] were known as "The [NAME]", "The [RESPONDENT[NAME]" and "[NAME]". An asset included in the sale was a [NAME] trade mark using the word "[RESPONDENT]" with a logo depicting the head of a [NAME] as a combination mark. As is evident from the presence of the name "[RESPONDENT]" in the businesses sold by [NAME] to [RESPONDENT] in 1998, it is necessary to trace the origins of the use of the word "[RESPONDENT]" by [NAME] and of the [NAME] of its "[RESPONDENT]" combination trade mark. 57 During the 1980s, [NAME] sold bags, luggage, briefcases and accessories under the businesses called "The [NAME]" and "[NAME]". The goods sold were initially bought from [NAME] or [NAME]. In early 1990, Mr [RESPONDENT] decided to import goods using the name "[RESPONDENT]". The [NAME] judge did not believe [NAME]' evidence about how he came to choose that name. The [NAME] judge said that he suspected that [NAME] had come across the name on goods (probably of one of the [NAME]), had formed the view that he wanted to use it, and then made business name and trade mark searches to identify any impediment to that course. It was agreed that before 1991 [NAME] conducted a business selling bags, baggage, briefcases, wallets and accessories under the business names "The [NAME]" and "[NAME]". It operated only in Queensland and it did not use the mark "[RESPONDENT]" on any of its goods. 58 In early 1991, [NAME] prepared a logo design of the head of a [NAME] for use with the word "[RESPONDENT]". On 2 April 1991, Mr [RESPONDENT] applied to [NAME] the mark. In 1991, the combination word and logo mark was [NAME] as a trade mark in respect of handbags, [NAME] and belts in class 18. The mark (No 552979) is as follows: 59 The [NAME] judge described the use of this mark as follows at [17] of his first judgment as follows: …The [NAME] initially manufactured bearing the new mark (the word "[RESPONDENT]" with the [NAME] head logo) were a range of handbags. The mark was embossed on the front of each handbag. Sales of the new line began in 1991 at [NAME]'s then eleven [NAME]. In 1992 changes were effected to the style of the mark "[RESPONDENT]" and to the [NAME] head and applied to the then existing range of over twenty-four styles of handbag. The handbags proved to be popular so new [NAME] were added to the range, such as suitcases, wallets, key cases and coin purses. As the range expanded to include other [NAME], the combination mark was applied to them as well. [RESPONDENT] 1995 and 1998 the combination mark was applied to goods such as backpacks, briefcases and associated [NAME] as well as handbags. Depending on the size of the product, the word and logo were either stamped on a leather patch and sewn onto the product or stamped directly onto the product. As the range of goods continued to expand this practice varied. For example, the word "[RESPONDENT]" was stamped onto a gold metal tag and affixed to handbags, business bags and luggage. The word "[RESPONDENT]" was also printed on business card inserts that were placed inside wallets. 60 Shortly thereafter, in August 1992, [NAME] opened a [NAME] in Liverpool in Sydney that was designed as a "[RESPONDENT] theme [NAME]" with the word "[RESPONDENT]" in the shopfront design and [NAME] marked with the [NAME] combination [RESPONDENT] mark sold along with other [NAME]. The [NAME] sold handbags, travel goods, wallets and associated [NAME] such as umbrellas. This [NAME] closed in 1994. At this time, other [NAME] [NAME] were selling goods marked with its [RESPONDENT] combination mark. 61 [RESPONDENT] 1995 and 1997, [NAME] opened 14 [NAME] trading under the name "The [RESPONDENT[NAME]". 62 By 1998, the sales of goods by [NAME] that were marked with the combination [RESPONDENT] mark were approximately $2.08 million. 63 In 1998, [RESPONDENT] bought [NAME]'s businesses (and related assets), including the combination trademark. The existing stock, including that marked with the combination mark was liquidated by March 1999. [RESPONDENT] then imported its own [NAME] of goods, including footwear, leathergoods (including wallets), backpacks, travel goods and business goods marked "[RESPONDENT]". A range of "[RESPONDENT]" branded handbags was designed and introduced in 2002.

The [NAME] judge's conclusions 64 The [NAME] judge found: (a) that [RESPONDENT] had not proved (the onus being on it in its claim for expungement of the mark) that the first trademark use of the word "[RESPONDENT]" on backpacks was not by [NAME]; (b) that backpacks were not goods of the same kind (or like relevant expression) as bags, wallets and purses; (c) that [NAME] used the word "[RESPONDENT]" as a trade mark before [NAME] (or a relevant predecessor company) in relation to handbags, wallets and purses; (d) that [NAME] was not entitled to the benefit of the [NAME] trade mark for handbags, wallets and purses; (e) that the use by [RESPONDENT] of the word "[RESPONDENT]" on handbags, wallets and purses was not an infringement of the trade mark, taking into account s 120 of the Trade Marks Act 1995 (Cth) (the "1995 Act"); (f) though it was unnecessary to decide the issue, that [RESPONDENT] would also be entitled to take advantage of the defence in s 122(1)(f) of the 1995 Actthat it could obtain [NAME] of the mark "[RESPONDENT]" if it were to apply for it in relation to handbags, wallets and purses; (g) that there was no passing off or conduct in contravention of s 52 or any other provision of the Trade Practices Act.

The issues 65 Numerous factual and legal issues arise on the appeal by [NAME], the [NAME]-appeal by [RESPONDENT] and under the notice of contention filed by [NAME]. These issues can be grouped under the headings of [NAME], other questions of validity, infringement, passing off and misleading or deceptive conduct. It is not of utility at this point to attempt to set out exhaustively the interlocking factual and legal issues. The issues (factual and legal) will be approached in the order that they were addressed by the parties in their submissions.

The first group of issues: [NAME] 66 The [NAME] judge expressed the view at [25] of his first judgment that: …[NAME] in relation to the goods or classes of goods on which the mark has been used. The [NAME] is entitled to have his mark [NAME] in respect of those goods. This entitlement is not confined to identical goods or classes of goods. [NAME] may also be obtained for goods or classes of goods which is or are "a thing [or things] of the same kind" ([NAME] v [NAME] (1886) 35 Ch D 160, 178) or "like articles of production" ([COMPANY] v [NAME], 150 US 460, 464 (1893)) or "articles of merchandise of the same kind" ([NAME] v [NAME], 70 NY 573, 578 (1877)) or "kindred articles" ([NAME] v [COMPANY], 18 F 561, 570 (1882)), if there be any difference [RESPONDENT] these expressions. See also Edwards v Dennis (1885) 30 Ch D 454. 67 Neither side argued that this was an incorrect approach. 68 On this appeal, both sides argued that the issues on [NAME] were: Who had first used the word "[RESPONDENT]" on backpacks, bags, purses and wallets? And, depending on the answer to this question, what were the consequences in terms of authorship by reference to goods "of the same kind"? 69 The [NAME] judge posed the question in [26] of his reasons: With this background in mind the first question to be resolved on [NAME] is whether as at 16 February 2001, [RESPONDENT] Group was the [NAME] of the mark "[RESPONDENT]" in respect of backpacks, bags, wallets, purses and belts and for services in respect of those articles. In looking at this question I will assume for the time being, though it is a matter in dispute, that the mark was capable of being distinctive of [RESPONDENT] Group's goods and services. The answer to the first question requires consideration of three issues, viz (1) Was [RESPONDENT] Group or its predecessor the first [NAME] of the [RESPONDENT] mark on a backpack, being the article in respect of which first use is claimed? (For this purpose it is conceded that [RESPONDENT] the [NAME] was the predecessor of [RESPONDENT] Group. It is also conceded that [RESPONDENT] the [NAME] was the first [NAME] of the word "[RESPONDENT]" in combination with the "simple mountain motif"); (2) If the word was applied to backpacks not alone but in combination with the "simple mountain motif" can [RESPONDENT] Group (or its predecessor) nevertheless claim to be the first [NAME] of the [RESPONDENT] mark?; (3) If [RESPONDENT] Group (or its predecessor) was the first [NAME] of the [RESPONDENT] mark on backpacks, is a bag, wallet, purse or belt the same kind of article? Unless each pair of questions (1) and (3), or (2) and (3), are answered affirmatively, the [NAME] has gone too far and either [RESPONDENT] Group is not the [NAME] of the [RESPONDENT] mark or is not the [NAME] in respect of bags, wallets, purses and belts. It may be that [NAME] first used the word "[RESPONDENT]" on those goods, albeit in combination with the [NAME] head logo. (The parties were agreed that one can ignore the reference to belts.) 70 The evidence disclosed that the word "[RESPONDENT]" had been used on backpacks from 1982. The evidence was not clear, however, that the word was used alone rather than in association with the mountain motif logo, in effect as a combination mark. The finding of the [NAME] judge about this was at [31] of his first judgment, in which he agreed with the submissions put on behalf of [NAME] (which submissions were repeated on appeal), that it was unclear whether the word "[RESPONDENT]" on backpacks was accompanied by the mountain motif logo. It was not put on the appeal by [NAME] that [NAME] erred in failing to find positively that the word "[RESPONDENT]" alone was placed on backpacks from 1982. However, in the notice of contention it was put that the evidence was sufficient to find that the word had been used alone on backpacks from 1982. 71 In answer, [RESPONDENT] said that on the evidence it could be concluded that the word "[RESPONDENT]" alone was not placed on backpacks from 1982. 72 Both sides also relied on onus. In this respect, [NAME] had the benefit of the [NAME] judge's view, expressed at [31] of his first judgment, that the lack of clarity was necessarily fatal to [RESPONDENT] which carried the onus on the [NAME]-claim. [RESPONDENT] challenged this. It submitted that having proven positively a use, by it, in 1994 of the word alone on backpacks, an evidentiary onus shifted to [NAME] to prove that its use of the word alone on backpacks pre-dated 1994. 73 In my view, the [NAME] judge was correct in this respect on onus, assuming that the position on the evidence was unclear. [RESPONDENT] was seeking to have a [NAME] mark removed from the [NAME], on the basis being dealt with here that its predecessor ([NAME]) not [NAME]'s predecessor ([NAME]) was the first [NAME] of the mark on backpacks. It failed to prove that. 74 The [NAME] also pressed the Court with the evidence that they said was sufficient to found a conclusion that [RESPONDENT] 1982 and 1985 [NAME] used the word mark "[RESPONDENT]" alone in relation to backpacks. The evidence in relation to this was as follows: (a) First, [NAME] [RESPONDENT], who commenced work in the "[RESPONDENT] the [NAME]" business in 1982 (then conducted by [NAME]) swore in his affidavit that during his training in 1982 and 1983 he observed that the "[RESPONDENT] the [NAME]" [NAME] were selling a style of backpack which he would describe as a small day pack with the name "[RESPONDENT]" embroidered on the front, without any logo, in lower case and plain font. (b) Mr [RESPONDENT] was [NAME]-examined on this issue. The [NAME]-examination began by [NAME] (without objection) raising with Mr [RESPONDENT] that "one of the other witnesses [had] a slightly different recollection than [his]." He was then told, in effect, that the other witness said that there was a possibility that there was a logo used with the word. To this suggestion Mr [RESPONDENT] said, "I know they came packaged in the cartons where (sic) they were in cellophane bags with a cardboard top saying [RESPONDENT]. I'm sure that there was [RESPONDENT] across the top flap of the backpack. A recollection of the logo I cannot recollect. (sic)" When asked whether he could "rule it out", he said that he could not. (c) The "other witnesses" were [NAME] and [NAME]. Mr [RESPONDENT] was a trainee manager at the [NAME] "[RESPONDENT] the [NAME]" [NAME] from 1978 to 1980, a [NAME] manager at "[RESPONDENT] the [NAME]" [NAME] at various locations in Victoria and New South Wales from 1980 to 1988, a district manager and later buyer until 1999, a product developer, merchandising manager until 2003, when he became general manager of the "[RESPONDENT] the [NAME]" division. He said that from the mid-1980s to the late 1980s "[RESPONDENT] the [NAME]" sold backpacks "under the name '[RESPONDENT]' and using a three or four mountain peak logo". His evidence was silent on his recollection of use of the word "[RESPONDENT]" before the mid 1980s. The inference is that he had no recollection. He was not [NAME]-examined on this point. Mr [NAME], who no longer worked for the [NAME], began work for [NAME] in 1988 as general manager buying and marketing for, amongst other divisions, "[RESPONDENT] the [NAME]". In his affidavit he recalls seeing in 1988 the word "[RESPONDENT]" used in conjunction with a mountain top log. (d) Also, it should not be forgotten that the evidence disclosed that from the mid-1980s the use of the word was with a mountain device. Further, there was no explanation as to why the word alone would be used and then a change made to the word plus device. (e) The respondent emphasised that the evidence put before the Registrar (a declaration by a [NAME] and a statement by (the same) Mr [RESPONDENT]) did not (as did the affidavit of Mr [RESPONDENT] referred to at (a) above) state unequivocally that the word "[RESPONDENT]" was used on backpacks without the logo. 75 The [NAME] judge dealt with this evidence in [31] of his first judgment as follows: There is another basis for this conclusion. As regards backpacks (being the only article in respect of which there is a possibility of establishing first use of the word mark) I agree with Mr [APPELLANT] that it is unclear whether the word "[RESPONDENT]" was accompanied by the logo, at least in the early years. There were only two witnesses called who were with [RESPONDENT] the [NAME] in 1982 and onwards, Mr [RESPONDENT] and [NAME]. In his affidavit Mr [RESPONDENT] said that the backpacks were packaged in a cellophane bag which bore the printed word "[RESPONDENT]". He also said the word "[RESPONDENT]" was embroidered on the front of the backpack without the "simple mountain motif". In oral evidence he said he was "sure that there was [the mark] across the top flap of the backpack. A recollection of the logo I cannot recollect." When pressed he said: "[I] couldn't rule it [the mountain logo] out." Mr [NAME] recollection went back only to the mid-1980s. He said that at that time the mark on the backpacks comprised the word "[RESPONDENT]" and the mountain logo. Given this state of the evidence it is not possible to reach any conclusion about the nature of the mark on backpacks [RESPONDENT] 1982 and, say, 1985. In particular, one cannot say with any confidence that the mark comprised both the word and logo. This conclusion is necessarily adverse to [RESPONDENT] Group which carries the onus on the [NAME]-claim. 76 It is important to recall that the so-called inconsistency with the evidence of other witnesses mentioned by [NAME] was not by any means direct. Neither Mr [NAME] nor Mr [NAME] dealt with the period 1982 to the mid-1980s. In substance Mr [RESPONDENT] accepted that he could not "rule out" what had been put to him as a possibility: that there was use of the word in conjunction with the logo. [NAME] did not, however, seek to have Mr [RESPONDENT] withdraw what was evidence stated otherwise with some clarity: that the word was used without the logo. The events were nearly 25 years before. The [NAME] judge concluded as he did. It was not a conclusion based on credit. Though I am extremely reluctant to depart from the [NAME] judge's conclusion, I do not think that it is a question in which judgment or impression affects the task of the appeal court: [COMPANY] v [NAME] (No 2) [COMPANY] (2001) 117 FCR 424 at 437-438 [29]-[30]. [COMPANY] v [NAME] (2006) 234 ALR 241 at 263 [118]; Builders Licensing Board v [NAME]) [COMPANY] (1976) 135 CLR 616; [NAME] v [NAME] (2003) 214 CLR 118; [COMPANY] v [NAME] (2006) 224 ALR 1. I agree with the second last sentence of [31] in the [NAME] judge's first judgment, but not the third last. On the balance of the evidence before the [NAME] judge, given the unwillingness of [NAME] to challenge the recollection of Mr [RESPONDENT] any further than he did, it was open to find and indeed, on the evidence, in my view, should be found that [NAME] used the word "[RESPONDENT]" on backpacks from 1982 other than in conjunction with a logo. On the evidence, it was plain that that was use as a trade mark. 77 Thus, not only do I agree with the last sentence of the [NAME] judge's reasons in [31], on the hypothesis that the evidence was equivocal, but also I would conclude that, in light of the [COMPANY] attack in the [NAME]-examination upon Mr [RESPONDENT]' evidence in chief and the terms of that sworn evidence, it can be concluded that there was use of the word as a trade mark on backpacks from 1982. 78 I do not think that the respondent can say that it discharged some evidential onus by proving when it used the word alone on backpacks, thereby requiring the [NAME] or prove unequivocally their earlier first use. The fact is that Mr [RESPONDENT] said when that first use was. His evidence was qualified to an extent in [NAME]-examination, but [NAME] did not seek from him an answer that would negate his sworn evidence. In these circumstances, at the very least the respondent has not discharged its onus on the [NAME]-claim (based on a claim derived from s 58 of the 1995 Act). The better view is, as I see it, that the failure to neutralise the evidence of Mr [RESPONDENT] permits a finding, notwithstanding the passage of time and the other surrounding objective circumstances, that [NAME] did use the word "[RESPONDENT]" alone on backpacks in about 1982. 79 The next issue requires consideration as to what flows from these conclusions about the evidence of use of the word "[RESPONDENT]" on backpacks from 1982. 80 The [NAME] judge posed the question in [25] and [26] of his first judgment as follows: It follows that [NAME] by first use is [NAME] in relation to the goods or classes of goods on which the mark has been used. The [NAME] is entitled to have his mark [NAME] in respect of those goods. This entitlement is not confined to identical goods or classes of goods. [NAME] may also be obtained for goods or classes of goods which is or are "a thing [or things] of the same kind" ([NAME] v [NAME] (1886) 35 Ch D 160, 178) or "like articles of production" ([COMPANY] v [NAME], 150 US 460, 464 (1893)) or "articles of merchandise of the same kind" ([NAME] v [NAME], 70 NY 573, 578 (1877)) or "kindred articles" ([NAME] v [COMPANY], 18 F 561, 570 (1882)), if there be any difference [RESPONDENT] these expressions. See also Edwards v Dennis (1885) 30 Ch D 454. With this background in mind the first question to be resolved on [NAME] is whether as at 16 February 2001, [RESPONDENT] Group was the [NAME] of the mark "[RESPONDENT]" in respect of backpacks, bags, wallets, purses and belts and for services in respect of those articles. In looking at this question I will assume for the time being, though it is a matter in dispute, that the mark was capable of being distinctive of [RESPONDENT] Group's goods and services. The answer to the first question requires consideration of three issues, viz (1) Was [RESPONDENT] Group or its predecessor the first [NAME] of the [RESPONDENT] mark on a backpack, being the article in respect of which first use is claimed? (For this purpose it is conceded that [RESPONDENT] the [NAME] was the predecessor of [RESPONDENT] Group. It is also conceded that [RESPONDENT] the [NAME] was the first [NAME] of the word "[RESPONDENT]" in combination with the "simple mountain motif"); (2) If the word was applied to backpacks not alone but in combination with the "simple mountain motif" can [RESPONDENT] Group (or its predecessor) nevertheless claim to be the first [NAME] of the [RESPONDENT] mark?; (3) If [RESPONDENT] Group (or its predecessor) was the first [NAME] of the [RESPONDENT] mark on backpacks, is a bag, wallet, purse or belt the same kind of article? Unless each pair of questions (1) and (3), or (2) and (3), are answered affirmatively, the [NAME] has gone too far and either [RESPONDENT] Group is not the [NAME] of the [RESPONDENT] mark or is not the [NAME] in respect of bags, wallets, purses and belts. It may be that [RESPONDENT] first used the word "[RESPONDENT]" on those goods, albeit in combination with the [NAME] head logo 81 The [NAME] agreed with the test put forward by the [NAME] judge that first use of the word in relation to backpacks would entitle [NAME] to [NAME] of the mark in respect of backpacks and other goods which might be described as "things of the same kind" or "like articles of production" or "kindred articles". Nor did the respondent disagree with the test. Rather, each saw its application differently. 82 The [NAME] attack the [NAME] judge's conclusions in [32] of his first judgment which were as follows: On the last of the three questions — Are bags, wallets, purses and belts the "same kind" of goods as a backpack? — the answer in my view is in the negative. First it must be recalled that the style of backpack in respect of which the mark was used (and in respect of which it could be [NAME]) was designed and promoted principally for use by schoolchildren for carrying stationery, books and other school items. There are other styles of backpack, for example fashion backpacks or those used for mountain-climbing and hiking, but they are not the type with which the comparison must be made. Broadly speaking, a "bag" is a receptacle made of some flexible material closed in on all sides except at the top: see Oxford English Dictionary vol 1 (2nd ed, 1989) 880. There are, however, many different types of bags. They are as varied as plastic bags, bodybags, laundry bags etc. Thus, not every bag can be the "same kind of thing" as a schoolboy's backpack. In particular, a schoolboy's backpack is not akin to a ladies handbag. Those are usually intended as a fashion item for the female [NAME] (albeit for an everyday use). Articles such as wallets, purses and belts are even more dissimilar to the schoolboy's backpack given their respective, and different, uses. This is not a case where the [NAME] of a mark which has been applied to different kinds of articles that fall within a class or category of goods seeks to [NAME] that mark in respect of other articles within the class or category. Such a [NAME] would be entitled to [NAME] his mark not only for each article in the class to which the mark has been applied but also for such other articles in the class which a [NAME] would reasonably believe are likely to originate from the same source. 83 The [NAME] submitted that [NAME]'s approach involved an over-dissection of the goods in question and that a backpack was simply a type of bag, as were handbags, wallets and purses. The respondent supported [NAME]'s approach. 84 The notion of ownership ("[NAME]" under the Trade Marks Act 1955 (Cth), the "1955 Act") is reflected in the 1995 Act, ss 27 and 58. Ownership is not restricted by prior actual use. A claimto ownership under s 28(a) may be based on use or intended use: s 27(1)(b). Thus, in this statutory context the rights that arise from use are most usually examined from the perspective of opposition. The context often is: to what extent the claim to ownership based on use and intended use is cut back by the ownership by an opponent of the trade mark by its previous use: see the 1995 Act, s 58. 85 Here, for the reasons that I have given, it can be accepted that [NAME] used the word mark "[RESPONDENT]" on backpacks from 1982. I will come shortly to the evidence about use on handbags, purses and wallets. The claim to ownership that was accepted by the Registrar was for "bags, wallets, purses, backpacks and belts" in class 18. If the respondent had sought to become [NAME] in the way [NAME] was, that application could have been opposed by [NAME] on the ground that it was the owner of the trade mark, in that, by use in 1982, it had used a sign to distinguish backpacks in the course of trade: the 1995 Act, ss 17 and 58. 86 This enquiry about [NAME] is not directed by the 1995 Act to notions of deceptive similarity or close relationship, as may be the subject of enquiry in other contexts: see the 1995 Act, ss 14, 44, 120(2) and 124(1). Indeed, this is reinforced by s 124(1). 87 The notion of ownership (or [NAME]) was discussed in In re [NAME] (1897) 22 VLR 636; [NAME] v [COMPANY] (1926) 38 CLR 332; [COMPANY] v [COMPANY] (1980) 145 CLR 457 at 477-78; [COMPANY] v [COMPANY] (No 2) (1984) 156 CLR 414 at 432-34; [NAME] of Australia v [NAME] (1949) 78 CLR 601 at 626-629; Re The [NAME] "[NAME]"; Ex parte [COMPANY] (1951) 82 CLR 199; [NAME] v [NAME] (1960) 103 CLR 391 at 399-401; [NAME] v [NAME] ([COMPANY] (1987) 10 IPR 402 at 413-414; and [COMPANY] v [COMPANY] (1994) 120 ALR 495 at 505-514. Few of these cases discussed what might be said to be the width or scope of the right gained by use by reference to the similarity or closeness of the goods on which the mark was used to other goods. The case most usually cited in this respect is In re [NAME] 22 VLR 636. That case concerned a clear earlier [NAME] of the identical mark ("Empress") on identical goods (stoves) and was under a statute (the Trade Marks Act 1890 (Vic)) in which the word "[NAME]" was defined as meaning "the person entitled to the trade mark by reason of his exclusive [NAME] of it." It was in this context that [NAME[NAME] said the following, speaking for the [ADDRESS]: …In order to substantiate his application to be placed on the [NAME] for this word he must have claimed to be the [NAME], and the word "[NAME]" must be taken to mean the person entitled to the exclusive use of that name. If there is anyone else who would be interfered with by the [NAME] of the word "Empress" in the exercise of a right which such person has already acquired to use the same word in application to the same kind of thing, then ought not to have been put on the [NAME] for that trade mark, and his name will be properly removed on the application of the person whose right of [NAME] was thereby disturbed… [emphasis added] 88 In [NAME] [NAME] v [NAME] 120 ALR at 514, [NAME[NAME] referred to there being no differences of "character or quality" of the services in that case to gainsay that they were the "same kind of thing". 89 There is a certain difficulty in fixing upon the proper frame of reference for the enquiry identified by the words used by [NAME[NAME], "same kind of thing". Assistance is gained from the statutory context in which the question arises (see above), the common law notion of the right to [NAME] from use, when that was the defining requirement: see Edwards v Dennis (1885) 30 Ch D 454 and [NAME] v [NAME] (1886) 35 Ch D 160 and the notion of the ownership of a common law trade mark: see the cases referred to by the [NAME] judge at [25] of his first judgment (set out at [66] above). The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created [NAME] in relation to axes: [NAME] v [NAME] 35 Ch D 160. This approach recognises ownership or [NAME] in a mark beyond the very goods on which the mark is used, to goods "though not identical… yet substantially the same" ([NAME] HB, [NAME] of Trade Marks (4th Ed) p 91) or "goods essentially the same… though they pass under a different name owing to slight variations in shape and size" ([NAME] and [NAME], [NAME] on Trade Marks (3rd Ed) p 206). This approach is conformable with the terms of the 1995 Act. 90 That backpacks are a type or style of bag does not answer the question as to whether they should be viewed as essentially the same goods as any bag or receptacle. The backpack is a bag with straps to be worn on the back. It is not essentially the same or the same kind of thing as other bags, handbags, purses or wallets. The task is not to identify the genus into which the goods upon which the mark was used fall, but to identify the goods. 91 This approach conforms with a tolerably settled approach in the Trade Marks Office to the same question as it arises in opposition proceedings based on prior use by the opponent. [COMPANY] v [NAME] (1993) 27 IPR 124, the goods used by the opponent which were excluded from the [NAME] of the applicant were identified as cricket balls; in [NAME] v [NAME] (1993) 28 IPR 143, they were lingerie; in [NAME] v [NAME] (1994) 29 IPR 225, they were printed paper [NAME] namely reports, newsletters, brochures, plans, maps and architectural drawings being some of the goods in class 16; in [COMPANY] v [COMPANY] (1995) 31 IPR 557, they were opal jewellery; in [COMPANY] v [COMPANY] (1995) 33 IPR 53, they were pressed paper food containers; in King v Hayward (1997) 39 IPR 431, they were long and short sleeve T-shirts and shorts; in First [NAME] v [COMPANY] (2000) 49 IPR 199 they were tampons (distinguished from women's disposable underwear). This approach also reflects the views of the authors of [NAME] of Trade Marks and Passing Off (3rd Ed) p 58 [3.40]. 92 For these reasons, I find no error in the [NAME] judge's conclusions in [32] of his first judgment (see [82] above). 93 The issue of [NAME] also arises in relation to wallets and purses. The [NAME] concede that if they are wrong (as I think they are) about the consequences of the use by [NAME] of the word on backpacks from 1982, then the respondent's predecessor, [RESPONDENT], made first use of the word mark in respect of handbags. The [NAME] assert, however, that [NAME] made first use of the word mark on wallets and purses. If one were to treat handbags as different in kind to wallets and purses, then to resolve this contest it is once again necessary to return to the minutiae of the facts. Before doing so, however, it is necessary to note that at [30]-[31] of his second judgment, the [NAME] judge came to the conclusion that purses and wallets were goods of the same kind as handbags for the purposes of [NAME], thus making the first use of the mark (the word "[RESPONDENT]" alone) by [NAME] in 1991 in respect not only of handbags, but also wallets and purses. In this regard, the [NAME] judge said the following: On the facts as I have found them, [RESPONDENT] was, and its successor [RESPONDENT] Group is, unambiguously the [NAME] of the [RESPONDENT] mark in respect of handbags because of first use. There was a contest about its first use in relation to wallets and purses. Even if that contest had been resolved differently it would not have affected the outcome. In my earlier judgment I explained that a person is entitled to [NAME] of a mark not only in respect of goods to which the mark has been applied but also to goods or classes of goods that are "of the same kind": [NAME] v [NAME] (1886) 35 Ch D 160. This is because it is assumed that a [NAME] is likely to believe that the other goods originate from the same source as the goods in respect of which the mark has been used. In my view purses and wallets are goods of the same kind as handbags. Both are intended as fashion items and are used to carry small, everyday items such as money, credit cards, keys and like objects. True, handbags are usually larger than both wallets and purses but I do not think this affects the kind of goods they are. At any rate, it is often very difficult to tell the difference [RESPONDENT] what is a purse and what is a handbag these days, with many handbags being quite small in size. A [NAME] would expect a handbag and a purse or wallet bearing the same mark to come from the same source. Some are even matching in design. Indeed, many leading fashion houses sell [NAME] of handbags, purses and wallets. 94 Whilst these are questions of some judgment, about which minds could reasonably differ, using the approach discussed above, I cannot agree that handbags are the same kind of thing as wallets and purses. All three items are receptacles, but wallets and purses tend to be the same object (generally for men and women respectively) used for the same purpose – to carry money, cards (mainly credit cards), receipts and the like. Handbags often fulfil a wider purpose. I accept that wallets and purses are the same kind of thing and, indeed, both sides approached the appeal on this basis. Therefore, I think that handbags, on the one hand, and wallets and purses on the other, should be dealt with separately. 95 From the mid-1980s [NAME] sold backpacks bearing the word "[RESPONDENT]" and a multiple peak mountain device. An example of a four or five peak device used with the word "[RESPONDENT]" on shoe boxes sold as at 1988 is as follows: 96 Mr [NAME] drew a logo that he recalled seeing when he began at [NAME] in 1988 as follows: 97 There was also evidence of the use of something like this device in the advertising and promotion of shoes in the following form: 98 It was agreed that from 1987, [NAME] sold shoes bearing the word "[RESPONDENT]" and the simple mountain motif, and that the word "[RESPONDENT]" appeared by itself on the outside of the shoe near the heel. 99 It was agreed that in the early 1990s, the "[RESPONDENT] the [NAME]" [NAME] displayed [NAME] with signage bearing the word "[RESPONDENT]" and a mountain peak device. 100 Mr [RESPONDENT] gave evidence that from at least early 1994 [NAME] sold wallets branded using a peaked logo as set out below, with the word "[RESPONDENT]" in an unspecified relationship. The logo was: 101 From the early 1990s, "[RESPONDENT] the [NAME]" [NAME] displayed [NAME] with signage bearing the word "[RESPONDENT]" and a mountain peak device as follows: 102 Photographs in evidence revealed the use of "[RESPONDENT]" and this peak logo, by the placement of the peak logo prominently above the printed words "[RESPONDENT]". This was a common use by [NAME] in the 1990s, an example being: 103 The signage in the "[RESPONDENT]" shops sometimes used the word alone, and sometimes used the word with a logo. 104 It was agreed that from 1991 [NAME] sold handbags bearing the word "[RESPONDENT]" and the [NAME] head device (as to which, see [58] above). From about 1992, a metal plate bearing the word "[RESPONDENT]" was affixed inside the handbags and a swing tag was attached to the handbag with the following appearing on it: BE A [RESPONDENT] 105 The issue [RESPONDENT] the parties about the first use of "[RESPONDENT]" on wallets and purses concerned both use by [NAME] and by [NAME]. I will deal first with the asserted use by [NAME]. The "[RESPONDENT]" retail [NAME] run by [NAME] opened in mid-1993. Mr [NAME] evidence was that these [NAME] provided a complete range of clothing, footwear and accessories and that wallets bore the word "[RESPONDENT]" plus the multi-peak device. The [NAME] contend that this use was substantially identical to the mark applied for, the word being "[RESPONDENT]" simpliciter. The [NAME] judge dealt with this issue in two places: [30] of his first judgment and [7]-[9] of his second judgment. In the first judgment, the [NAME] judge said that his "impression" was that at least the word component served a distinct function as a trade mark. In his second judgment, the [NAME] judge referred to this as "toying with" the argument. After referring to cases under the [NAME] Act 1875 (UK), s 10, [NAME] concluded that one could not disentangle the word "[RESPONDENT]" from the use in combination with the device and one could not conclude that there had been use of the word alone as a trademark. 106 In [NAME] [NAME] [NAME] v [NAME] 120 ALR 495 at 512-513, [NAME[NAME] discussed the need for identity of prior use and the claim to [NAME]. He first explained the statutory context of, and reasoning in, [NAME] of Australia v [NAME] 78 CLR 601 in rebutting the suggestion made by counsel that something less than substantial identity [RESPONDENT] the two marks will suffice. [RESPONDENT[NAME] referred to the phrase "substantially identical" in the infringement context (there, the 1955 Act, s 62) and the discussion by [NAME[NAME] of that concept in [COMPANY] v [NAME] (Australia) [COMPANY] (1963) 109 CLR 407 at 414. [NAME[NAME] said at 513: …It requires a total impression of similarity to emerge from a comparison [RESPONDENT] the two marks. In a real sense a claim to [NAME] of the one extends to the other. But to go beyond this is, in my view, not possible.… 107 Though it is potentially dangerous to reason from other facts, it is worth noting that in that case, whilst [NAME[NAME] said that there was no material distinction to be drawn [RESPONDENT] [NAME], and that neither the use of the definite article nor of the plural created a material distinction, he concluded that [NAME] was for this purpose a different trade mark to SITMAR'S FUNSHIP and FAIRSTAR THE FUNSHIP. 108 This approach is consistent with the cases in the nineteenth century about what could be [NAME] based on prior use: In re [NAME]'s Trade Mark (1883) 24 Ch D 504; Re [NAME]'s Trade Mark (1886) 54 LT NS 659; In re [NAME]'s Trade Mark (1889) 6 PR 180; Perry Davis & Son v Harbord (1890) 15 App Cas 316; [NAME] v [COMPANY] [COMPANY] [1894] AC 8; Re [NAME]'s Trade Mark (1885) LT NS 337. 109 The [NAME] relied on various infringement cases in order to support the proposition that the overwhelming or essential element or feature in the use of the word with the multiple peak device (in whatever form) was the word. After referring to [NAME] v [NAME] 120 ALR 495 and [NAME] v [NAME] 109 CLR 407, the [NAME] referred to [COMPANY] v [COMPANY] (1999) 47 IPR 47. There, [NAME] had used "CHILL" in relation to flavoured milk before [NAME]. [NAME] applied to [NAME] "CHOC CHILL", subject to a claim to vary the first word to indicate a different flavour. [NAME] lodged an objection to [NAME]' application. The delegate and [NAME] on appeal both came to the view that [NAME]'s prior use of "CHILL" was substantially identical to "CHOC CHILL". The delegate then exercised a discretion under the [NAME] concurrent [NAME] provision (the 1995 Act, s 34(1)). The reasoning of [NAME] (at 47 IPR at 52-55) was that the first word "CHOC", or a word or abbreviation indicating some other flavour, was not distinctive, but was descriptive. He concluded that the essential feature of the trade mark sought to be [NAME] as "CHOC CHILL" was "CHILL". It was the word "CHILL", [NAME] said "which serves to denote the trade origin of the goods". Thus the trade mark use was found in the word "CHILL". The word "CHOC" had, [NAME] said, different work to do – describing the flavour. [NAME] then discussed other examples from the authorities in which weight had been placed on the existence of another word in one of the marks to destroy the conclusion of substantial identity. Important to his distinguishing of these cases was the descriptive function of the first word "CHOC" or any replacement word or abbreviation to show flavour. 110 Here, though the evidence was less than precise as to what the mark plus device use was by [NAME], the examples in evidence reveal an important, perhaps even dominant, effect of the word "[RESPONDENT]", but always with a device. That device was part of the trade mark use; it had a capacity to distinguish. It did not, in my view, operate as a separate mark, nor as a mere descriptor. It operated as part of a combination with the word "[RESPONDENT]", in part reinforcing it. In these circumstances, I agree with the [NAME] judge's concluded view that though the word "[RESPONDENT]" is important in the impression, it cannot be said to have been used alone, rather than as part of a composite mark (with the device) to show origin. 111 Thus, I reject the argument of the [NAME] that they used the mark "[RESPONDENT]", being the [NAME] mark, on wallets from mid-1993. 112 The respondent accepted that its use of the "[NAME] head" composite mark (see [58] above) was not use of the word "[RESPONDENT]" alone. 113 Mr [APPELLANT] conceded in argument that, leaving the mutual combined use of word and motif or device to one side, [RESPONDENT] was the first to use the word "[RESPONDENT]" on wallets some time after 1995. The evidence disclosed that from 1995 [NAME], began to insert a mock credit card into each wallet which bore the word "[RESPONDENT]". There was a dispute as to whether swing tags were used on wallets before mid-1993 by [NAME]. The parties were also agreed in the approach to the appeal that wallets and purses could be dealt with together and the references in the evidence to wallets encompassed purses. 114 The [NAME] argued that the [NAME] judge mistakenly found in [18] of his second judgment that the word "[RESPONDENT]" on the swing tag (see [104] above) was attached to wallets (and purses) in the early 1990s. The [NAME] judge having found this, then concluded at [19] and [20] that this was a trade mark use of the word (a conclusion that was not challenged). Thus, [NAME] concluded at [21] of the second judgment that [NAME]'s use of the word "[RESPONDENT]" on handbags, wallets and purses predated the use by [NAME] and [NAME] of the word on those goods. 115 This debate about whether the evidence was sufficient to permit the [NAME] judge to conclude that swing tags bearing the word "[RESPONDENT]" were used on wallets (and purses) from before mid-1993 falls away if one concludes, as I do, that the use by [NAME] from mid-1993 of the word "[RESPONDENT]" with the motif or device was not use of the word alone. 116 For the sake of completeness, lest the matter go further, I will deal with the disputed issue as to what the evidence shows about the use of swing tags on wallets (and purses) before 1995. 117 [NAME] who, with her husband, Mr [NAME], was involved in the running of the [NAME] business said clearly in [NAME]-examination in a discussion about the use of the swing tags that swing tags were not used on wallets (and, inferentially, purses). She explained that "there was never really anything to attach it to". Mr [NAME] in his affidavit in chief said something similar: "For wallets, where it was often not practical to attach swing tags, a credit card shaped card bearing the word '[RESPONDENT]' was placed inside the wallets." In [NAME]-examination, however, he divided the period up [RESPONDENT] the later period of putting the mock credit card in the wallet and an earlier period in which a swing tag was used with wallets. He then said in description of the swing tag that it was the tag which had the [NAME] head device. He was [NAME]-examined as to the content of this mark by Mr [APPELLANT] who gave [NAME] an opportunity to describe any use of the word "[RESPONDENT]" alone. [NAME] only referred to the [NAME] head device. So, Mr [APPELLANT] submitted before us, without recollection from [NAME] as to the use of the word "[RESPONDENT]" on the swing tag, it must have been a swing tag with only the [NAME] head device with the word. The difficulty with this submission is that the only swing tag referred to in the evidence of Mr [NAME] was one which had the [NAME] head device and word on one side and the words "Be a [RESPONDENT]" (as at [104] above) on the other. Mr [RESPONDENT] in fact exhibited an example of such a swing tag. Further, the [NAME]-examination can be seen to have been conducted on the basis of an assumption that there was only one swing tag. Such a factor is one aspect of the advantage of the trial judge: [NAME] 117 FCR 424 at 437-38 [29]. 118 In my view, there was evidence to found the conclusion of the [NAME] judge that swing tags with the word "[RESPONDENT]" were used on wallets and purses before 1993. I see no error in the conclusion of the [NAME] judge.

Conclusions on ownership ([NAME]) 119 Thus, my conclusions are: (a) that [NAME] made the first use of the word "[RESPONDENT]" on backpacks in about 1982; (b) that said use did not give [NAME] ownership of the word beyond backpacks to handbags, wallets and purses; and (c) that [RESPONDENT] made the first use of the word "[RESPONDENT]" on handbags, wallets and purses.

Validity 120 The parties next addressed the question of validity. I will start with distinctiveness.

Distinctiveness 121 In his first judgment, the [NAME] judge held that the word "[RESPONDENT]" was not used in a geographical sense, but its use in connection with the kind of goods with which he was concerned was arbitrary, making it inherently adapted to distinguish the goods (for s 41(3)) and thus requiring no proof of secondary meaning (under s 41(5) or s 41(6)). The [NAME] judge relied on a passage from the Restatement of the Law of Torts Vol III (1938) in respect of geographic names as follows: The reasons for the rule that geographical names cannot be trademarks do not weigh heavily when the geographical name has obviously only an arbitrary or fanciful significance in connection with the goods upon which it is used. Thus Gibraltar may be a trade-mark for [NAME] since there is no likelihood that such use of the name would lead purchasers to suppose that there is any particular relation [RESPONDENT] the [NAME] and the geographical locations known by that name, or any likelihood that it would seriously interfere with the freedom of merchants at Gibraltar to use that name. Again, [NAME] may be a proper trade-mark for ladies' stockings; for, while suggestive of a certain color and sheen, it is only fancifully so and there is no likelihood that other merchants may have occasion properly to use the name Ethiopia on stockings since there is no factor of importance associating stockings with Ethiopia. Such is also the case of [NAME] for bread or Arctic for refrigerators. 122 [NAME] also referred to the following passage in [NAME] v [NAME] 240 US 251 (1916): …We do not regard the words '[NAME],' adopted and employed by complainant in connection with shoes of its manufacture, as being a geographical or descriptive term. It does not signify that the shoes are manufactured in America, or intended to be sold or used in America, nor does it indicate the quality of characteristics of the shoes. Indeed, it does not, in its [NAME] signification, indicate shoes at all. It is a fanciful designation, arbitrarily selected by complainant's predecessors to designate shoes of their manufacture. We are convinced that it was subject to appropriation for that purpose, and it abundantly appears to have been appropriated and used by complainant and those under whom it claims. 123 Using these authorities and [NAME] on Trade Marks and Unfair Competition Vol 2[14.7], the [NAME] judge posed three questions: …(1) Is the mark the name of the place from which the goods come?; (2) Is the geographic term likely to denote to a reasonable purchaser that the goods come from the place or region named?; (3) Is the place or region noted for the particular goods in question?... 124 In answering these questions the [NAME] judge said: …The result of such inquiries would likely show, for instance, that consumers would perceive as designating geographic origin the word "Swiss" when applied to watches, the word "Japan" when applied to motor vehicles, the word "Brazil" when applied to coffee beans and, for those with a local interest, the words "Bank of [RESPONDENT]" in relation to banking services. On the other hand, I am certain in my own mind that the word "[RESPONDENT]" when applied to backpacks or other articles, such as shoes, is not used in a geographical sense. The use of the word "[RESPONDENT]" in connection with the kinds of goods with which we are concerned is an arbitrary use making it inherently distinctive and thus requiring no proof of secondary meaning. In reaching this conclusion, I have rejected the possibility, with one slight exception, that the word "[RESPONDENT]" can be descriptive of backpacks or shoes. I have referred to the evidence which is to the effect that the word "[RESPONDENT]" conjures up notions of trekking, ruggedness, fashion, Rocky Mountains and so on. For the most part those ideas are concerned with the image of the [NAME] and are not descriptive of the goods themselves. The slight exception is that the word may incidentally say something about quality (for example that the goods are "rugged" or durable) but because the word is only indirectly informative it is not likely to be perceived by many in a descriptive sense. Thus the attack based on lack of distinctiveness is not made out. 125 The respondent ([NAME]-[RESPONDENT]) submitted that this approach contained error. First, it was submitted that the relevant question about geographic origin was stated in [NAME] v [NAME] (1964) 111 CLR 511 at 513-514, where [NAME] said the following: That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the [NAME]'s goods if it be [NAME] and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of [NAME], is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In [NAME] v. [NAME] [COMPANY] [1913] AC 624 at pp 634-635. [NAME] of [NAME], having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the applicant's goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: "The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of [NAME]) must, I think, largely depend upon whether [NAME] are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the [NAME] and the Courts have always shown a natural disinclination to allow any person to obtain by [NAME] under the Trade Marks Act a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as [NAME]. pointed out in the case of [COMPANY]. [1913] 1 Ch 446 at p 463; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives—in the exercise, that is to say, of the common right of the public to make [NAME] use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess—will think of the word and want to use it in connexion with similar goods in any manner which would infringe a [NAME] trade mark granted in respect of it. 126 Thus, the respondent submitted that the relevant question was not, as the [NAME] judge stated, whether the word was used by the [NAME] in a geographical sense, but whether the word has a "signification" which it ordinarily possesses (geographic or not) which [NAME] may wish to use (honestly) for that signification in relation to similar goods. Thus, it was submitted that if, as [NAME] found, "the word "[RESPONDENT]" conjures up notions of trekking, ruggedness, fashion, Rocky Mountains and so on" (see [36] of the first judgment), [NAME] may wish to use the word for the signification of such attributes as well as a simple geographic signification. 127 The submissions of the respondent showed that the evidence was replete with recognition by witnesses that the word was used to conjure up an image of adventure, the outdoors, ruggedness, trekking and the like by association with the [RESPONDENT]. This, it was submitted was not "arbitrary use making it inherently distinctive" as the [NAME] judge found at [35] of his first judgment. Thus, it was submitted, proof of secondary meaning was required, as the Registrar had found. 128 The [NAME] relied upon and supported the [NAME] judge's approach. In particular, they tended to brush away the importance of the geographical indicator by saying that the State of [RESPONDENT] was not recognised as a place with any reputation for shoes, clothes, bags or wallets. This approach of the [NAME] rather ignores the possible relationship [RESPONDENT] backpacks and mountains and trekking – [RESPONDENT] backpacks, for instance, is a possible signification of backpacks from that State or backpacks that might conjure the images redolent of that State that [NAME] found. I have difficulty in accepting that the word "[RESPONDENT]" is inherently adapted to distinguish backpacks, or even bags, wallets and purses. It is not a fancy or made up word. It is the use of a name being a State of the [NAME] which has well-known mountains and is a rugged holiday area. In my view, the [NAME] could well wish to make use of the signification of the word for geographic reasons – especially in relation to backpacks, or to raise a connotation from the geographic attributes of that State. In my view, the [NAME] judge was wrong to conclude that the word was inherently adapted to distinguish. 129 On this basis, the correct next step might be seen to be to examine the position under s 41(6) on the hypothesis that the trade mark is not inherently adapted to distinguish the designated goods or services from those of others: cf [RESPONDENT] v [RESPONDENT] (No 2) (2006) 154 FCR 97. The respondent, however, accepted in submissions in its approach to the appeal that the word was to some extent inherently adapted to distinguish the designated goods or services and submitted that the relevant enquiry was under s 41(5). It is unnecessary, therefore, to consider the application of s 41(6) and whether it would lead to any different result than would the application of s 41(5). Section 41(5) of the 1995 Act is in the following terms: … (5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services: (a) the Registrar is to consider whether, because of the combined effect of the following: (i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services; (ii) the use, or intended use, of the trade mark by the applicant; (iii) any other circumstances; the trade mark does or will distinguish the designated goods or services as being those of the applicant; and (b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services--the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and (c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services--the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons. 130 Under s 41(5) it was necessary to examine the extent to which the applicant ([NAME], or its predecessors) had used the word "[RESPONDENT]" to distinguish its goods or services from those of others. In this regard, the respondent relies on the findings of the [NAME] judge at [52]-[55] of the first judgment in dealing with the passing off and s 52 claims. [NAME] was looking at the issue from the perspective of 1998, not 2001. The evidence of sales of the respondent after 1998 make it safe to conclude that [NAME]'s findings about 1998 can be transposed to 2001. The [NAME] judge found: (b) Both the [NAME] and the respondent had a reputation in the name [RESPONDENT]. (c) Whilst in the 1980s the two groups had separate fields of activity, in the 1990s their fields of activity overlapped. (d) This concurrent use created the potential for confusion; though this confusion was [COMPANY] by the separate locations of the [NAME] and the different devices. (e) From the time the [COMPANY] bought the [NAME] business, both it and [RESPONDENT] Group had a strong reputation in the [RESPONDENT] [NAME]. 131 The [NAME] first submitted that the respondent's use of "[RESPONDENT]" as a word or with a device was irrelevant to the enquiry under s 41, and only relevant to an opposition based on s 60 or a rectification application under s 88. 132 If, on the other hand, the respondent's prior use is relevant for the enquiry under s 41(5), then unless these findings by the [NAME] judge are overturned, the clear use of the same mark by both the [NAME] and the respondent in the same field of goods over some years, enabling the [NAME] judge to say that both had strong reputations in the "[NAME]", would allow the comfortable conclusion that the trade mark use of the word that has taken place does not distinguish the goods or services of the [RESPONDENT] from the goods or services of others (including the respondent). See generally [NAME] v [NAME] (1998) 83 FCR 50; [COMPANY] v [NAME] (1938) 55 RPC 125 at 145; and [COMPANY] v [NAME] & [COMPANY] [1996] RPC 281. 133 The [NAME] put that the respondent's use was minor and confined to [NAME]. The findings of the [NAME] judge are contrary to this. The notice of contention contains the following at [3]: If the mark [RESPONDENT] was only to some extent, or not at all, inherently adapted to distinguish the goods for which it was sought to be [NAME] and thus use of the mark before the date of application for [NAME] was necessary to render it distinctive in fact, then the use of the mark actually made by the [NAME] was sufficient for that purpose. 134 Further, the [NAME] complained that the [NAME] judge, wrongly, at [54] of the first judgment stated that they did not claim that the respondent should be restricted to a particular geographical area for particular kinds of goods. 135 These issues, as well as the questions involved in the respondent's continuous use of its marks for the possible operation of s 124 of the 1995 Act, the way the various goods were sold by the parties as relevant to whether handbags, wallets and purses are "goods of the same description" for infringement purposes, the passing off claim and the claim for contravention of the Trade Practices Act require further examination of the evidence. This is undertaken below for the variety of purposes thrown up by the above issues. 136 Before coming to these factual issues, it is necessary to deal with the [NAME]' argument that use by the respondent is a circumstance irrelevant to the enquiry under s 41(5) of the 1995 Act. In my view, the use by the respondent of the word "[RESPONDENT]" is relevant to the inquiry under s 41(5). The "distinguishing" there referred to and required to be found is of the designated goods or services of the applicant from the goods and services of other persons. As [NAME] [NAME] [NAME] said in [NAME] v [NAME] (1938)55 RPC 125 at 145, the distinctiveness contemplated is that the goods are distinguished as the goods of a particular person, and no other. The evidence of concurrent use may be relevant for s 60, but it also may mean that the applicant is not able to persuade the Registrar (or the Court) that the mark does or will distinguish the designated goods or services as (to use the concluding words of s 41(5)(a)) "being those of the applicant". 137 Thus, in my view, for the [NAME] to succeed on distinctiveness they must satisfy the Court (the [NAME] judge not having dealt with the matter) that s 41(5) is satisfied on the evidence. I will return to the question of the Court's power under s 88 in due course.

Additional Facts 138 I will not repeat what I have earlier set out as to the conduct of the respective businesses of the [NAME], the respondents and their respective predecessors. 139 It is convenient to discuss the events chronologically. The first period is conveniently identified as 1982 up to about 1991/1992. In this period [NAME] [RESPONDENT] used the word "[RESPONDENT]" principally in conjunction with a device on backpacks and shoes as described at [47]-[50] above. The backpacks and shoes were sold [NAME], though the backpacks sold most successfully in North Queensland. The "[RESPONDENT] the [NAME]" [NAME] sold other bags and items; ladies' dress bags, casual espadrilles and other items which were differently marked, without the "[RESPONDENT]" mark in any form. 140 The numbers of "[RESPONDENT]" branded [NAME] (principally with word and some device) ordered by the "[RESPONDENT] the [NAME]" [NAME] and "[NAME]" [NAME] after they began selling "[RESPONDENT]" branded shoes in 1987 were: (a) 1987: 16,386, it being unclear the division [RESPONDENT] shoes and backpacks (b) 1988: 32,412, including 600 backpacks (c) 1989: 33,984, including 4,800 backpacks (d) 1990: 33,693, including 2,540 backpacks. 141 The "[RESPONDENT] the [NAME]" and "[NAME]" [NAME] sold about $8 million in 1990, $10 million in 1991, and $11 million in 1992, worth of "[RESPONDENT]" branded [NAME], most of which was for the sale of shoes. 142 In 1991, [NAME] sold handbags bearing the [NAME]-head mark, a metal plate bearing the word "[RESPONDENT]" and a swing tag with the words at [104] above. The [NAME] were aware of this. It is not possible to say how many of these bags were sold in 1991. Mr [RESPONDENT] said that he recalled seeing a [NAME] with signage "[RESPONDENT[NAME]" in Sydney in about 1990 or 1991. This may have been 1992 when [NAME] opened its Liverpool (NSW) [NAME]. 143 "[RESPONDENT] the [NAME]" and "[NAME]" spent $101,000 in 1991 and $108,000 in 1992 on advertising (not including catalogues) promoting "[RESPONDENT]" [NAME], mainly shoes. 144 On 26 June 1992, Mr [RESPONDENT] applied to [NAME] the business name "[RESPONDENT[NAME]" in New South Wales. 145 The "[RESPONDENT]" theme [NAME] opened by [NAME] in Liverpool in August 1992 was advertised in the [NAME] telephone directory. 146 Thus, up to 1992, the [NAME] used the word "[RESPONDENT]", mainly in conjunction with a device, in respect of shoes and backpacks, around Australia. 147 In 1991, [NAME] began using the business name as the name of [NAME] in Queensland and in Liverpool in Sydney, selling handbags and wallets. The goods were sold using a different device to the mountain peak device used by [NAME]. There is no suggestion in the evidence that the get up of the [NAME] [NAME] was similar to the [RESPONDENT] the [NAME]" or "[NAME]" [NAME]. 148 The second period was from about 1993 when [NAME] began its "[RESPONDENT] [NAME]". In July 1993, [NAME]'s "[RESPONDENT]" [NAME] opened in Doncaster (Victoria), Parramatta and Penrith (New South Wales). The signage of these [NAME] bore the word "[RESPONDENT]" prominently displayed at the entrance, curved over a mountain peak logo, as follows: 149 In September 1993, [NAME] opened another such [NAME] in Darling Harbour, Sydney with similar signage. 150 These "[RESPONDENT]" [NAME] were stocked with clothing, footwear and accessories. The mountain peak logo was used consistently on the goods. Mr [RESPONDENT] said that from July 1993 to 1996 "[RESPONDENT]" branded bags "would be" marked with the word "[RESPONDENT]" alone or with a mountain logo. Wallets had the word and the mountain logo. The evidence other than this recollection was that bags were marked with the word alone in 2001. (The debate is not of consequence since it was agreed that [NAME] first used the word alone on bags using the swing tag.) From 1993 to 1996 the signage of these [NAME] prominently displayed the word "[RESPONDENT]". The signage above the entrance was as depicted at [148] above. 151 The sales for the "[RESPONDENT]" division of [NAME] (that is the "[RESPONDENT]" [NAME]) were: Year Sales 1993 $1,767,000 1994 $4,016,000 1995 $6,624,000 1996 $9,476,000 1997 $17,153,000 1998 $31,107,000 1999 $52,620,000 2000 $88,240,000 2001 $106,049,000 2002 $117,135,000 2003 $128,737,000

Though it is not possible to say precisely how much of these figures related to bags and wallets, it was a very small proportion. 152 The [NAME] spent the following on marketing and advertising, though it can be accepted that most related to shoes and clothing: Year Amount spent on advertising 1993 $400,000 1994 over $1 million 1995 over $1.5 million 1996 over $1.7 million 1997 about $2 million 1998 over $3.5 million 1999 about $1.8 million 2000 about $2.6 million 2001 about $2.3 million 2002 over $2.5 million 2003 about $2.5 million

153 The "[RESPONDENT] the [NAME]" and "[NAME]" [NAME] sold the following amount of branded product, respectively, mostly shoes: Year Branded product sold 1993 $10,000,000 1994 $27,078,000 1995 $46,774,000 1996 $59,196,000 1997 $64,957,000 1998 $65,140,000 1999 $69,439,000 2000 $75,364,000 2001 $62,705,000 2002 $58,400,000 2003 $61,830,000

154 The "[RESPONDENT]" Division of [NAME] sold the following numbers of wallets: Year Number of wallets sold 1994 1,146 1995 1,696 1996 2,046 1997 3,250 1998 1,310 1999 3,665 2000 8,324 2001 9,555 2002 10,189 2003 8,092

155 In May 1995, [NAME] opened two further "[RESPONDENT[NAME]" [NAME] in Queensland (in Indooroopilly and Toowoomba). 156 By August 1996, there were ten "[RESPONDENT]" [NAME] run by [NAME], six in New South Wales, two in Queensland and two in Victoria. 157 By December 1996 there were eleven "[RESPONDENT[NAME]" [NAME] run by [NAME]; nine in Queensland and two in New South Wales (at [NAME] and [NAME], the [NAME] having closed in 1994). [NAME] also sold its "[RESPONDENT]" branded bags and wallets at all its other "[NAME]" and "[NAME]" [NAME]. 158 In 1996 and 1997 [NAME]'s sales for "[RESPONDENT]" branded product (bags and wallets) was $1,383,678, and $1,271,790 respectively. 159 By January 1997, [NAME] operated 14 "[RESPONDENT]" [NAME], seven in New South Wales, four in Queensland, two in Victoria and one in South Australia. 160 By October 1997, [NAME] operated 15 "[RESPONDENT[NAME]" [NAME], 13 in Queensland and two in New South Wales ([NAME] and [NAME]). It continued to sell its "[RESPONDENT]" branded bags and wallets through its "[NAME]" and "[NAME]" [NAME]. 161 By January 1998, [NAME] operated 19 "[RESPONDENT]" [NAME], eight in New South Wales, seven in Queensland, two in Victoria and two in South Australia. 162 In August 1998, the first letters of complaint are sent by the [NAME]' then lawyers to Mr [RESPONDENT]. 163 On 21 September 1998, the respondent acquired the business assets of [NAME]. 164 By the end of 1998 or January 1999, [NAME] operated 30 "[RESPONDENT]" [NAME]: eleven in New South Wales, two in the ACT, one in the Northern Territory, eight in Queensland, four in Victoria, three in South Australia and one in Western Australia. 165 [NAME]'s [RESPONDENT] division sold the following numbers of bags and backpacks having the value of: Year Number of Bags & Value of sales Backpacks 1998 3,316 $115,159 1999 7,130 $245,572 2000 13,817 $362,727 2001 30,524 $737,621 2002 25,111 $540,018 2003 26,111 $586,066

and wallets having a value of:. Year Number of Wallets Value of sales 1998 1,310 $39,036 1999 3,665 $140,178 2000 8,324 $259,167 2001 9,555 $381,506 2002 10,189 $37,630 2003 8,092 $283,339

166 In 1999, the respondent, after liquidating the [NAME] stock of "[RESPONDENT]" bags and wallets designed and placed orders for handbags, wallets, backpacks, travel goods and business [NAME] using the "[RESPONDENT]" mark. At this time, the respondent had over 200 [NAME] across Australia, each of which sold "[RESPONDENT]" branded bags and wallets. The value of the sales by the respondent in 1999 of "[RESPONDENT]" bags and wallets was $1,271,790. This was considerably less than the total sales of the "[RESPONDENT]" division and [RESPONDENT] the [NAME] though in fact [NAME]'s sales of "[RESPONDENT]" branded bags and wallets as distinct from shoes in 1999 was only $385,750. 167 By January 2000, there were 49 "[RESPONDENT]" [NAME] operated by [NAME]; 15 in New South Wales, two in the ACT, one in the Northern Territory, 13 in Queensland, ten in Victoria, three in South Australia, one in Tasmania and four in Western Australia. 168 In 2000, the respondent sold "[RESPONDENT]" branded bags and wallets at its 192 [NAME] Australia wide, to a value of $1.2 m. This may be compared with sales by [NAME]'s "[RESPONDENT]" branded bags and wallets of $621,894. The respondent continued to operate [NAME]'s 15 "[RESPONDENT[NAME]" [NAME] until the beginning of 2002, 12 until the beginning of 2003 and nine to the beginning of 2004. 169 By January 2001, [NAME] operated 64 "[RESPONDENT] [NAME]" in all Australian States and Territories. 170 In 2001, the respondent sold $2,151,682 worth of "[RESPONDENT]" branded bags and wallets in its 190 [NAME] [NAME] and the 15 "[RESPONDENT[NAME]" [NAME]. 171 On 16 February 2001, [NAME] applies for [NAME] of Trade Mark No 866291. 172 By January 2002, there were 77 "[RESPONDENT]" [NAME] operated by [NAME]. 173 In 2002, the respondent sold "[RESPONDENT]" branded bags and wallets through its 185 [NAME] [NAME] and 12 "[RESPONDENT[NAME]" [NAME], selling $5,261,952 worth of "[RESPONDENT]" branded goods; compared to $907,648 of sales by [NAME] of "[RESPONDENT]" branded bags and wallets. 174 By January 2003, there were 83 "[RESPONDENT]" [NAME] operated by [NAME]. 175 In 2003, the respondent continued to sell "[RESPONDENT]" branded bags and wallets from its 189 [NAME] [NAME] and from nine (by early 2004) "[RESPONDENT[NAME]" [NAME]. In 2003 it sold $9,614,789 of "[RESPONDENT]" branded bags and wallets. 176 By January 2004, there were 89 "[RESPONDENT]" [NAME] operated by [NAME]. 177 In 2004, the respondent continued to sell "[RESPONDENT]" branded bags and wallets from its 190 [NAME] [NAME] and now nine "[RESPONDENT[NAME]" [NAME].

Conclusions to be drawn from all the facts on distinctiveness 178 In 1991, both [NAME] and [NAME] used the word "[RESPONDENT]". The predominant use of both was with different logos. [NAME] had a trade mark which included the (disclaimed) word "[RESPONDENT]". The word and marks were employed in relation to goods in different fields (backpacks and shoes as compared to wallets and bags and accessories). [NAME] was the first (from 1992) to set up a "[RESPONDENT]" themed [NAME]. 179 In the 1990s, until 1998, [NAME] and [NAME] and [NAME] actively promoted [NAME] of a "[RESPONDENT]" kind. Signage with the word, and with the word and logo, was placed on the shops. From 1993, the [NAME] moved into a wider field of goods, including wallets and handbags, which had been sold from 1991 by [NAME] using the word and the word and [NAME] head device. Thereafter, the [NAME] expanded their [NAME] throughout Australia, while the [NAME] operated by [NAME] were located in Queensland, Sydney (from 1992 to 1994), [NAME] (on the border with Queensland) and [NAME] in south central country New South Wales. From 1998, the respondent sold goods (bags and wallets) using the word "[RESPONDENT]" and the word with the device all over Australia. 180 In all these circumstances, unless one is to put to one side all the use by [NAME] and the respondent, it cannot be said that the use by the [NAME] of the word or the word in conjunction with any device was such that the word, as at 2001, did or would distinguish the goods claimed in the application as being those of the [NAME] or one of them, and no other. This is so even if one included under "any other circumstances" (for the purposes of s 41(5)(a)(iii)) the use of the word plus device, the shop signage, advertising and use on shoes and clothes. [NAME] had first used the word on backpacks in 1982, by 2001 it could not be concluded that the trade mark sought, the word "[RESPONDENT]", was capable of distinguishing the goods or services of the [NAME] in respect of bags, backpacks or wallets (including purses). 181 For these reasons, in my view the trade mark does not satisfy the requirements of s 41. Subject to there being power in the Court to do so, I would uphold the [NAME]-appeal on backpacks and order the cancellation of the [NAME] of the trademark in respect of backpacks.

I would dismiss the appeal insofar as it complained about the orders of the Court made on 7 July 2006, ordering that the [NAME] be rectified by deleting all references to bags, wallets and purses.

False suggestion 182 As to false suggestion, the complete answer to the allegation, in the view of the [NAME] judge, was that s 41(5) was irrelevant. The [NAME]' submission that the respondent's prior use was irrelevant to the determination of the s 41(5) question would also be a complete answer. My view is, however, that the respondent's use was relevant for s 41(5). Therefore, it is necessary to examine what happened. 183 The [NAME] judge dealt with the issue at [37]-[41] of the first judgment as follows: To deal with the allegation that the trade mark [NAME] was obtained by false suggestion or misrepresentation I need to say a little more about the facts. Following the examination of the application for the [NAME] of the trade mark it appeared to the [NAME] that there were grounds for rejecting it. On 29 June 2001 the Registrar wrote to [RESPONDENT] Group advising it of those grounds (by providing it with a copy of the [NAME]'s report) and giving it a reasonable time within which to address those grounds. One issue raised by the [NAME] was that the trade mark was not distinctive. Relevantly the [NAME]'s report stated: "To be registrable, your trade mark must be capable of distinguishing your goods/services from the similar goods/services of [NAME] in the market place. Your trade mark is not capable of distinguishing your goods and services because it has insufficient inherent adaptation to distinguish. [RESPONDENT] is the name of a state in the USA. [NAME] are likely to need to use this name to indicate an obvious or potential connection with their goods and services. However, I may be able to reconsider this matter if you provide evidence of use of your trade mark under sub-section 41(5)." On 8 October 2002 [RESPONDENT] Group provided the Registrar with additional information in support of its application. After considering the additional information the Registrar accepted the application and, there being no opposition to its [NAME], the mark was [NAME] with effect from the date of lodgement. The information provided to the Registrar, and upon which the Registrar presumably relied to grant [NAME], included a statement of Mr [RESPONDENT] made a year earlier. When it provided the additional information [RESPONDENT] Group was well aware of the activities of [RESPONDENT] Group. More importantly, it knew about the activities of [RESPONDENT] Group as at February 2001, which was the relevant time for the purpose of considering whether the trade mark was distinctive of [RESPONDENT] Group's goods. [RESPONDENT] Group also appreciated that it had to provide some information to the Registrar about the use to which the word "[RESPONDENT]" had been put by [RESPONDENT] Group. Mr [RESPONDENT]' statement dealt with that matter. He said: "My recollection is that the first [RESPONDENT] opened in Sydney in 1990 or 1991. This coincided with the introduction of the new [RESPONDENT] logo. At the time, the company [[RESPONDENT] the [NAME]] was concerned about its branding of the word '[RESPONDENT]' given the opening of the [RESPONDENT[NAME]. At the time [RESPONDENT[NAME] started in the market, the public was familiar with '[RESPONDENT]' as a [NAME]. The [NAME] had a reputation for quality built by the sale of its upmarket shoes. At this time, the [RESPONDENT] shoes had a minimum point of sale price of $60 and the $100 range of [RESPONDENT] shoes was being sold in all [NAME]. The minimum $60 price was implemented to ensure that the [RESPONDENT] [NAME] was associated with quality." This was much less information about [RESPONDENT] Group's activities than was actually known to [RESPONDENT] Group. Partly for that reason it is said that Mr [RESPONDENT]' statement was misleading, and did in fact mislead the Registrar. The statement is said to have been misleading in the following respects (and here I quote from [RESPONDENT] Group's submissions): "(a) at least, as to the 2001 status of the Respondent's uses, and/or (b) very possibly, so as to think that there was some relationship [RESPONDENT] the trade mark applicant and the [RESPONDENT[NAME]." As to (b) it is not being alleged that what was said was untrue (a direct misrepresentation) but, rather, that there was an implied or inferred representation to the effect that all that was known about [RESPONDENT[NAME] was being disclosed. Further, this is not a case of omission because an omission (if there be any) must render an actual statement false for it to be a misrepresentation: Arkwright v Newbold (1881) 17 Ch D 301, 309. I propose to proceed on that view. I do not accept that the Registrar would have read Mr [RESPONDENT]' statement as indicating that there was some relationship [RESPONDENT] Group and [RESPONDENT[NAME]. The last sentence of the first quoted paragraph only makes sense if there were no relationship [RESPONDENT] the two. The other alleged misrepresentation, however, cannot be dismissed out of hand. If what was said by Mr [RESPONDENT] would naturally lead the Registrar to suppose that Mr [RESPONDENT] had disclosed all that he knew about the activities of [RESPONDENT[NAME] he has made a representation to that effect: [NAME] v [NAME] (1864) 17 CB (NS) 482, 510. In deciding what the Registrar would suppose, I am required to assume the Registrar is a reasonable person in that position: [NAME] v [COMPANY] (1995) 183 CLR 563, 576-577. The view I take is that a reasonable Registrar would likely think that Mr [RESPONDENT] was providing him with information about the situation in 1991 and not as things stood in 2001. The first paragraph is in terms confined to events in 1991 — "The first [RESPONDENT] opened [in] 1990 or 1991" — "At the time" this was a cause for some concern but not a major concern because "at that time" the [NAME] was characteristic of [RESPONDENT] Group's goods. The reference in the second paragraph to "At the time" and "at that time" likewise points the Registrar to 1990 or 1991. In both paragraphs Mr [RESPONDENT] is making what he no doubt thought was an important point (whether it was or not being irrelevant), namely, that nothing of relevance happened after 1990 or 1991 because the mark had already acquired distinctiveness. I do not accept that Mr [RESPONDENT]' statement would have been understood by the Registrar as referring to "the 2001 status of [[RESPONDENT] Group's] uses." This conclusion makes it unnecessary to consider whether the Registrar was in fact misled by any implied misrepresentation. It goes without saying that it would have been near to impossible for this allegation to be made out in the absence of the Registrar, who was not called to give evidence. 184 The respondent submitted that the statement of Mr [RESPONDENT] plainly contained the implicit representation that nothing of relevance happened after 1990 or 1991. Equally plainly, it was submitted, that was not correct. The construction of the letter as [COMPANY] to the events of 1990 or 1991 did not overcome the difficulty, it was submitted, that the letter led the Registrar to the false impression that there were no facts of relevance after 1991. It can be inferred, it was submitted, that the Registrar acted on this basis. 185 The [NAME] submitted that there was no duty upon [NAME] to bring to the attention of the [NAME] the use by [NAME]. They emphasised that there was no request for such information in the report of the [NAME]. 186 I am troubled by the sparseness of the information contained in Mr [RESPONDENT]' statement. The report of the [NAME] did only refer to "evidence of use of your trade mark". However, that was in the context of distinguishing goods from [NAME]. As the [NAME] judge found, "[RESPONDENT] Group also appreciated that it had to provide some information to the Registrar about the use to which the word '[RESPONDENT]' had been put by [RESPONDENT] Group". (See [38] of the first judgment.) The provision of the information in the form it was provided gave an impression, or was apt to create the assumption, that the four paragraphs about the [RESPONDENT[NAME], dealing with its activity in the early 1990s, amounted to the relevant information about use by others for the purposes of the enquiry. Plainly it was not. It was, however, no more than an impression. The statement gives no clear information as to how long the activity lasted, and where other [NAME] were opened. The information was incomplete, but I do not think that it clearly conveyed that this was all the information about the use made by others. It was not put that the information was put forward with the intention of creating a false impression. There was no request by the [NAME] for further information about the use by others.

In all the circumstances, not without hesitation, I am not prepared to conclude that the acceptance of the application for [NAME] was on the basis of false evidence or false representation.

Infringement 187 The [NAME] judge found no infringement other than in respect of backpacks. In coming to this conclusion [NAME] rejected the propositions: (1) that handbags, wallets and purses were goods "of the same description" as backpacks for the purposes of s 120(2) of the 1995 Act; (2) that these goods were "closely related" to the service of bringing together backpacks for the benefit of customers; (3) that the service of bringing together handbags, wallets and purses for the benefit of customers was "closely related" to backpacks; (4) that the service referred to in (3) above was a service of the same description as the service referred to in (2) above. 188 The [NAME] judge's reasons for rejecting the proposition in (1) above were at [24]-[26] of the second judgment: I can dispose of the "same description" inquiry fairly swiftly. Whether goods are "of the same description" is a question of fact. According to the authorities, the three principal factors to be considered are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of the goods, including their intended purposes; and (3) the trade channels through which the goods are bought and sold. It is not essential that all criteria be met. See Re [NAME]'s Application for a Trade Mark (1946) 63 RPC 59; [NAME] ([COMPANY] for a Trade Mark (1948) 65 RPC 369; Reckitt & [NAME] (Australia) [COMPANY] v [NAME] (1945) 70 CLR 84; McCormick & [COMPANY] v McCormick (2000) 51 IPR 102. The expression "same description" is not to be construed restrictively and regard is to be paid to the business or commercial context in which the goods in question are bought and sold: [COMPANY] v [COMPANY] (1988) 10 IPR 539, 546; [NAME] (1889) 6 RPC 311, 318. Goods are not of the same description simply because they can be used for the same purpose, for example for personal adornment: [COMPANY] v [NAME] of the [NAME] (1988) 15 NSWLR 158, 220; [NAME] v [NAME] (1994) 30 IPR 547. I do not think it can be said that handbags, purses and wallets are of the same description as backpacks. Backpacks, especially those in respect of which [RESPONDENT] Group or its predecessor applied the mark (being school backpacks), are not put to the same use as handbags, wallets or purses. The nature of the [NAME] is, to my mind, quite different. Backpacks are highly functional and directed toward comfort, weight-bearing, support and durability while wallets and purses have a predominant fashion purpose. While perhaps not decisive, a person wishing to buy a backpack would not find a handbag, wallet or purse to be an acceptable substitute or alternative: see [COMPANY] v [COMPANY] (2000) 50 IPR 321, 330; [NAME] v [NAME] (1996) 69 FCR 401, 410-411. In any event, a [NAME] is not likely to think that these goods originate from the same source. That is, I do not accept that either the trade or the public would regard the goods as similar. I do not treat as relevant, as [RESPONDENT] Group asserted it was, that both it and [RESPONDENT] Group sell these goods from the same [NAME] and to the same sorts of customers. The fact that goods may be found in the same shop or in the same department within a department [NAME] is more a symptom of modern marketing methods which "tend to unify widely different types of [NAME] in the same retail outlets or distribution networks", than any great similarity in the goods: [COMPANY] v [COMPANY], 492 F.Supp 1088, 1096-1097(1979). In my view, correspondence in the channels of trade is no longer a very helpful line of inquiry in relation to many goods, although there may be exceptions. 189 The [NAME] judge's reasons for rejecting the proposition in (2)-(4) above were at [27] of the second judgment: The final question is whether the service of bringing together handbags, wallets and purses for sale is a service "closely related" to backpacks or whether it is "of the same description" as the service of bringing together backpacks for sale. I think these claims are hopeless. I do not understand how it can be said that the service of bringing handbags, wallets and purses together is "closely related" to backpacks. There is no relationship [RESPONDENT] the two. In my opinion, speaking generally it is only when retailing services consist of supplying the very goods in respect of which it is said the services are related that the services and goods will be closely related: see [COMPANY] v [COMPANY] (2001) 50 IPR 143, [NAME] v [COMPANY] (1991) 23 IPR 149. Put another way, I cannot imagine that the public would expect the same business to supply handbags, wallets and purses as well as backpacks: [COMPANY] v [COMPANY] (1999) 46 IPR 627, 630. For much the same reasons, I reject the submissions that the service of bringing together handbags, wallets and purses for the benefit of customers is a service "of the same description" as the service of bringing together backpacks for sale and that handbags, wallets and purses are goods "closely related" to that service. 190 No complaint was made by the [NAME] about the principles which the [NAME] judge applied to analyse the questions. It is unnecessary to repeat what [NAME] said, set out at [188]-[189] above. Even giving somewhat greater weight to the question of channels of trade, I am unable to identify any error in the [NAME] judge's approach beyond what flows from coming to a different conclusion. To a degree, the conclusion about this is one of impression and judgment and due weight should be given to the [NAME] judge's conclusion: [NAME] 117 FCR at 437-38 [29]. I certainly agree with the [NAME] judge that wallets and purses are not goods of the same description as backpacks. It might be said, however, that a backpack is a species of general bag. I am less convinced that there is no error in relation to bags or handbags, given the more general purpose of such items for carrying things as a backpack. 191 Given my view on s 41, this conclusion is strictly unnecessary, but I tend to think that bags and handbags (but not wallets and purses) are goods of the same description as backpacks. 192 Subject therefore to the operation of s 120(4) of the 1995 Act, if I am wrong about distinctiveness, I would find infringement not only by the use of the word "[RESPONDENT]" (other than by use of the prior [NAME] trade mark with the [NAME] head) on backpacks, but also on bags and handbags.

Defences 193 The [NAME] judge dealt with a defence under s 122(1)(f) at [29]-[32] of the second judgment. This was an error. The respondent had abandoned this defence. 194 The respondent did however put forward a defence under s 124 of the 1995 Act. Section 124 is in the following terms: (1) A person does not infringe a [NAME] trade mark by using an [NAME] trade mark that is substantially identical with, or deceptively similar to, the [NAME] trade mark in relation to: (a) goods similar to goods ([NAME] goods) in respect of which the trade mark is [NAME]; or (b) services closely related to [NAME] goods; or (c) services similar to services ([NAME] services) in respect of which the trade mark is [NAME]; or (d) goods closely related to [NAME] services; if the person, or the person and the person's predecessor in title, have continuously used in the course of trade the [NAME] trade mark in relation to those goods or services from a time before: (e) the date of [NAME] of the [NAME] trade mark; or (f) the [NAME] of the [NAME] trade mark, or a predecessor in title, or a person who was a [NAME] [NAME] of the trade mark under the repealed Act, first used the trade mark; whichever is earlier. (2) If the [NAME] trade mark has continuously been used only in a particular area of Australia, subsection (1) applies only to the use of the trade mark by the person in that area. 195 The [NAME] judge did not deal with s 124. [NAME] perhaps did not need to. Given his views on "goods of the same description" for s 120(2) and that he found infringement in respect of backpacks only, the ability of the respondent to prove the matters in s 124(1)(f) was problematical. 196 There was no debate but that the respondent had used the mark substantially identical with or deceptively similar to the word "[RESPONDENT]" in respect of backpacks, bags and handbags and that these were "similar goods" for s 14 of the 1995 Act and the expression "goods similar to goods in respect of which the trade mark is [NAME]" for s 124(1)(a). 197 There were a number of questions debated in respect of s 124. The first question is whether the respondent and [RESPONDENT] (which was agreed to be its predecessor in title for s 124(1)), continuously used in the course of trade the [NAME] mark (that is substantially identical to or deceptively similar to the [NAME] mark) in relation to those similar goods from the relevant date. 198 The second question concerned the relevant date in s 124(1)(f) and whether the first use of the trade mark by [NAME] on backpacks in 1982 marks the relevant date for bags and handbags, as well as for backpacks. 199 The third question concerned the effect on s 124(1) of s 124(2) and whether the continuous use has to be shown sufficiently widely over Australia to invoke the operation of s 124(1), even before s 124(2) is engaged. 200 The fourth question was as to the engagement of s 124(2) and the extent of the responsibilities of the parties to the litigation to plead and prove the matters there contained. 201 It is convenient to deal with the second of these questions first, because if the relevant date is 1982, not only for backpacks but also for bags and handbags, the attempted invocation of s 124 fails in limine. The question then is, is the use of s 124(1) excluded in respect of infringement on bags and handbags, when it is agreed that [RESPONDENT] was the first to use the mark (the word "[RESPONDENT]" alone) on bags and handbags, but not backpacks? The question did not arise in Mr [APPELLANT]'s written submissions. In those submissions, he approached the issue on the basis that one looked to s 124(1)(f) in relation to bags and handbags separately or differentially from backpacks. In oral address he refined the argument to take this point. 202 Section 124 uses the definition in s 14. "Similar goods" from s 14 are two kinds of goods – goods that are the same, and goods that are of the same description. Section 124 uses this combined definition to provide a defence to both ss 120(1) and (2). If, as here, the [NAME] first used the mark on the goods, and the [NAME] first used the mark on other goods which are of the same description (but not sufficiently identical to be considered the same goods covered by the ownership of the mark), and s 124 is otherwise satisfied, one would have thought that there is reason to think that the defence would apply to the infringement by the use of the mark on goods of the same description, but not the same goods. Another construction (and one put by Mr [APPELLANT] in oral address) would be that the [NAME] must use the mark on the same goods or goods of the same description before any use of the mark by the [NAME] or its predecessor. 203 These two alternatives raise some difficulties. Use by the [NAME] of the mark on the same goods would, one would have thought, enable it to challenge the ownership of the [NAME] to the mark. Putting that complexity to one side, if "first used" in s 124(1)(f) relates to any first use and if s 124(1) is to be read by reference to similar goods (through s 14) as a composite whole, then any first use by the [NAME] (even on goods that are only of the same description) will protect it in relation to all use after the [NAME]'s first (and later) use on the goods for which the mark is held. Thus, here, if it be the case that [NAME] must show (which it cannot) use before 1982 on goods of the same description, it cannot invoke s 124(1) in this case. This construction, however, would mean that if [NAME] could show some use on handbags (being goods not the same as backpacks, but goods of the same description) before 1982, that would protect it from infringement on goods, not only of the same description as backpacks, but also the same goods, backpacks, themselves. 204 I prefer Mr [APPELLANT]'s considered first impressions in his written submissions. The sensible construction of s 124(1)(f) is to assess the first use of the [NAME] by reference to the "same goods" and "goods of the same description", they being the separate components of "similar goods" or "goods similar". Thus, if someone has been using the mark before the [NAME] on goods (though not the same goods) of the same description as those for which [NAME] is obtained, s 124(1) is available to that person, even if the [NAME] was the first to use the mark on the goods themselves for which [NAME] is obtained. 205 I should add that not only are these views obiter, they have been reached in the absence of detailed argument by counsel on the history and context of s 124, including its relationship with other provisions of the 1995 Act. I only express the view such that the approach that I would take is clear should I be wrong on distinctiveness and on the successful fate of the [NAME]-claim. 206 I turn then to the third question. In his written submissions, Mr [APPELLANT] submitted: As to defences, section 124 would apply if [NAME] was correct in holding that bags, wallets and purses should be removed from the scope of [NAME] of the mark in suit but infringement is nevertheless found on the basis that such goods are goods of the same description as backpacks. However, even then, as the [NAME] submitted at trial, s. 124(2) would confine the operation of the defence to Queensland, [NAME] and [NAME]. There was an attempt in oral argument to propound a construction of s 124(1) that the effect of s 124(2) was to require proof of continuous use of the mark over all of Australia, and to disengage different uses in different parts of Australia and require them to be looked at individually. I think that is an unreal and overly complicated way of looking at s 124. If there has been use by the parties identified that can be said to be "continuous", that is sufficient unless someone wishes to invoke the limitation on the defence in s 124(2). That deals with the third question. 207 As to the first question, there was no real attempt to argue that there had not been continuous use. There was some evidence of Mr [NAME] about the change of stock. His evidence was that by about March 1999, the respondent had sold all of the stock acquired from [RESPONDENT] of handbags, backpacks, [NAME] and business goods, including satchels. Designing replacements had already begun. These became available in the [NAME] in June 1999. From early 1999 until mid-1999, there was communication [RESPONDENT] the respondent and [NAME] about the new proposed use of the word on handbags and bags and other goods. No detailed analysis of this evidence was undertaken and no assertion was put that there had been any sufficient break in the relevant trade mark use such that the respondent had not satisfied s 124(1). 208 I turn then to the fourth question concerning s 124(2). The defence to the Second Further Amended Statement of Claim at [9] pleaded the use by [NAME] and itself from at least 1992 to fall within, so it was pleaded, s 124 of the 1995 Act. There was no fresh reply filed. The earlier reply merely joined issue with the defence. There was no pleading by the applicant of s 124(2). 209 Whether by pleading of s 124(2) or by some sufficient step to raise the issue, it was for the applicant to place reliance on s 124(2). If the hearing had been conducted on the basis that "use" (that is use as a trade mark) had only occurred in a particular area, the parties would then have been in a position to address the issue. There was, it was true, no debate about where the various shops of [NAME] were (Queensland, [NAME], [NAME]). There was otherwise no investigation of the width of any "use" beyond the location of those shops. There were also, however, the "[NAME]" and "[NAME]" [NAME]. The use by the respondent from 1999 was [NAME]. It was, it seems to me, for the [NAME] (applicants at the trial) to raise this issue. 210 The [NAME] submitted that at the trial they raised this geographical limitation, not only for the purposes of s 124(2), but also for the purposes of the scope of injunctive relief. At [54] of his first judgment the [NAME] judge said: For the sake of completeness I should mention that [RESPONDENT] Group did not in the action pursue a claim that [RESPONDENT] Group should be restricted in the use of its "[RESPONDENT]" mark to a particular geographic area (for example, Queensland) or to particular kinds of goods (say, handbags). There are many cases where a party using a mark has been restrained from extending its use in a way that will encroach upon the established reputation of a [NAME] either in a particular geographical area or in a particular line of business. I mention this not to suggest that the pursuit of such a claim could have provided the applicants with some relief, but simply to show that the point has not been overlooked. 211 Mr [APPELLANT] submitted that he had pursued a claim for a geographical limitation to the orders and to the application of s 124(2). He first pointed to his opening submissions, where he said to the [NAME] judge: Your [NAME], what [RESPONDENT] did from September 1988 was to liquidate all stock on hand bearing the [RESPONDENT] mark and then towards the end of the next year in 1998 recommenced use of the [RESPONDENT] mark on their product, but with this important difference to what had happened previously: [RESPONDENT] is a very large organisation with hundreds of [NAME] [NAME] and what [RESPONDENT] did, which Mr [RESPONDENT] hadn't done previously, was then to sell [RESPONDENT] [NAME] of [NAME] [NAME] and thereby bring itself into direct conflict with my client. As well, from about 2004 up until the time of issue of this application, they substantially increased their volume of sales. Your [NAME], the direct result of that has been that consumers buy [RESPONDENT] [NAME] from [RESPONDENT] and when they fall apart they send them back to us and we will be calling to give evidence a number of consumers who have had that problem, they've bought something from [RESPONDENT], the zip has broken or whatever it might be and they come complaining to us. He then pointed to his oral address before the [NAME] judge on 22 July 2005: Your [NAME], we say that must have been the position when [NAME] [sic] started its trading activities in 1991-1992. As [NAME] has said this morning, we agree that one must look at the conduct complained of at the time of its commencement. If they are [NAME[NAME]'s [sic] successor in title, one looks at the conduct complained of at the time [NAME] [sic] engaged in that conduct. But [NAME] elides over the second relevant date, which is 1999-2000. It's not as if they just took over [NAME] [sic] business and happily carried on, as Mr [NAME] was in [NAME]. The point, as we have made numerous times before, is that in 1999-2000, [RESPONDENT], being the new purchaser of the business, then started selling [RESPONDENT] [NAME] bags and wallets all over Australia, at 200 outlets. So even if they had an answer in Queensland and maybe Wagga, on the basis that people in those places had some prior experience of [RESPONDENT[NAME] and there weren't confused as to the source of bags bearing the mark [RESPONDENT], that could never be said of consumers in [RESPONDENT], for example. So our position is it was passing off in 1991-1992, but even more obviously so in 1999-2000 and thereafter. In his written submissions to the [NAME] judge Mr [APPELLANT] said: Consumers are well aware of the [NAME] [RESPONDENT] by reason, inter alia, of their knowledge of the footwear sold by the Applicants under the mark and, because of that awareness, they think that wallets and bags bearing the mark also come from the Applicants. That must have been the position as well in mid-1991/1992 when [NAME] commenced its activities in Queensland, and it must have been the position, a fortiori, in 1999/2000 when the Respondent moved the [NAME] [NAME]. 212 No pleading of s 124(2) was made. No claim for injunctive relief based on passing off and the Trade Practices Act was made other than general relief undifferentiated by geography in Australia. 213 The issues as to "use" for s 124(2) may, perhaps, be different from the issues that might arise as to reputation based on commercial activity in a particular region. At least in respect of the latter, questions as to travel from people outside the particular areas to those areas, scope of advertising and extent of reputation would arise. These were not investigated. [NAME], who appeared at the trial and on the appeal for the respondent, said that they did not arise because they were not an issue and if it had been there may well have been further evidence. I accept that submission. If a geographical limitation on use (for s 124(2)), reputation or deception (for the scope of the injunctive relief) is to be part of the resolution of the controversy, it should be raised by the party relying on it. That is the function of pleadings, particulars and case management. There was no clarity about these issues from the applicant. The case may have been conducted differently. [ADDRESS] on appeal should not entertain the issue. I refer to what I said in this context in [NAME] 117 FCR at 439-40 at [38] and especially the second and third considerations there referred to. 214 In my view, if one gets to infringement on bags and handbags under s 120(2), s 124 provides a defence to the respondent.

Passing off 215 I do not repeat what I have said above about the geographical reach of an injunction to an area less than that claimed: the whole of Australia. 216 The parties were agreed that the [NAME] judge was in error in directing himself to 1998 and not 1991, when [RESPONDENT] began using the word "[RESPONDENT]". I therefore approach the matter on this basis. 217 [NAME] began using the word and word and device, the use by the [NAME] had been, principally, of the word with device on shoes and backpacks. Whilst I am prepared to find that a use of the word alone was made in 1982, the evidence was that the overwhelming use was with the devices employed. 218 [NAME] used an [NAME] head device and also the word in combination and the word alone. It used it in respect of bags, wallets and purses. 219 I am not prepared to conclude that this was likely to mislead the public in 1991. There may or may not have been confusion, but there is an inadequate foundation to conclude passing off in 1991. I take comfort in this respect (but draw no further assistance than that) from the failure of the [NAME] even to challenge the conduct of [NAME] until 1998. 220 [NAME] began to sell in the field of handbags, wallets and purses, the [NAME] dramatically expanded their participation using themed shops. To a degree no doubt some confusion was caused; but if it was caused it can be seen as the development of the [NAME]' business outside shoes and backpacks and into the field in which [NAME] was engaged – themed [NAME], bags, wallets and purses. 221 To the extent that the submissions of the [NAME] then sought to complain about 1998, I think that the [NAME] judge's reasoning at [52] and [53] of the first judgment are amply supported by the evidence: Now, coming back to September 1998, the position was this. At that time both [RESPONDENT] Group and [RESPONDENT] Group had a reputation in the name [RESPONDENT]. I rather think that if one were to go back to the 1980s when [RESPONDENT] the [NAME]'s use of the name was confined to backpacks and shoes it and [NAME] occupied different fields of trade and it is unlikely, except for those consumers who were careless, that confusion would arise. By the time the companies' fields of activity began to overlap (that is when [RESPONDENT] Group was opening its [RESPONDENT] [NAME] and [NAME] was operating its [RESPONDENT[NAME] [NAME]) there was the potential for confusion. In the early years the different locations in which the parties operated would suggest that any confusion would not be substantial. Moreover, the fact that [RESPONDENT] Group's combination mark (word and mountain logo) was different from [NAME]'s combination mark (word with [NAME] head) would also minimise the possibility of confusion. Whatever be the position in the years leading up to 1998, from the time [RESPONDENT] Group purchased the [NAME] business both it and [RESPONDENT] Group had a strong reputation in the [RESPONDENT] [NAME]. I think this finding must put an end to the passing off claim. In a trade mark case [NAME] v [NAME] Co [COMPANY] [1972] 1 WLR 729, 743, [NAME] said: "In cases of [NAME] concurrent [NAME] [and [RESPONDENT] Group's use is concurrent], neither of the owners of [a common law trade mark] could restrict the other from using it, but as against a [NAME] who infringed it either owner of the mark could obtain an injunction". In a passing off case when two traders have a reputation in the same or similar names that are concurrently being used "neither of them can be said to be guilty of any misrepresentation. Each represents nothing but the truth, that a particular name or mark is associated with his goods or business": [COMPANY] v [COMPANY] [1981] 1 WLR 1265, 1275 per [NAME] LJ. If in such circumstances there might be confusion that is just "one of the misfortunes which occur in life", but it is not actionable as a passing off: [NAME] v [NAME] and [COMPANY] [1992] FCR 1, 2. 222 I should add that some members of the public were called to prove deception. This evidence is all consistent with the proposition discussed by the [NAME] judge in [53] of his first judgment.

Trade Practices Act claims 223 The [NAME] did not direct submissions to the Trade Practices Act claims different to passing off.

Court's power and s 88 [ADDRESS] raised with the parties its authority to act under s 88 of the 1995 Act to order the [NAME] to be rectified if the Court were of the view that the mark was not distinctive for the purposes of s 41. The respondent filed submissions to the effect that the Court has authority under s 88. No issue was taken by the [NAME] in respect of that approach. The respondent submitted that the proper question before the [NAME] judge (and so before this Court on appeal) is whether the Court is satisfied that the respondent ([NAME]-claimant) had established on the balance of probabilities that the mark was not capable of distinguishing "[RESPONDENT]'s" goods or services from the goods or services of other persons having regard to the matters in s 41(3)-(5). 225 Various cases were referred to by the respondent [NAME] claimant in its submissions: [NAME] [COMPANY] v [NAME] (2001) 113 FCR 322 in particular [31], [NAME] [COMPANY] v [COMPANY] [2006] FCA 782, [COMPANY] v [COMPANY] (1998) 42 IPR 561, [NAME]'s Australia [COMPANY] v [COMPANY] (2000) 48 IPR 513 at [39] and [NAME] v [NAME] (1998) 40 IPR 498 at 502-509. 226 In [NAME]' case the [ADDRESS] said the following at [39]: The grounds for rejection of an application therefore include the grounds for rejection of an application therefore include the ground in s 41 dealing with a trademark that is not capable of distinguishing an applicant's services from the services of other persons.

Accordingly, lack of distinctiveness is a ground for cancellation under s 88. 227 In the light of these authorities and in the light of the approach of the parties it is unnecessary to deal with the matter beyond stating the position that the Court has held to date that lack of distinctiveness is, as the parties submit, a ground for rectification under s 88 of the 1995 Act.

Slip as to belts 228 The parties were agreed that the orders made on 7 July 2006 should not have dealt with belts on the [NAME].

Orders 229 I would order that the parties bring in orders conformable with these reasons. Those orders should deal with the following: 1. the dismissal of the appeal; 2. the allowing the [NAME] appeal; 3. the setting aside the declarations 1 and 2 and orders 3, 4, 5, 8, 11 and 12 of the orders of the [NAME] judge made on 7 July 2006; 4. the amending order 6 of the orders of the [NAME] judge made on 7 July 2006 to delete reference to belts and to add a reference to backpacks; 5. the ordering that the [NAME] pay the costs of the appeal and of the hearing below. I certify that the preceding one hundred and eighty-six (186) numbered paragraphs are a true copy of the Reasons for Judgment herein of the [NAME].

Associate: Dated: 28 November 2007 Counsel for the [RESPONDENT]: [[RESPONDENT]]

Solicitor for the [RESPONDENT]: [[RESPONDENT]]

Counsel for the Respondent: [redacted]

[NAME]: [RESPONDENT] of Hearing: 5 & 6 March 2007

Date of Judgment: 28 November 2007