3M Company v David Guthries & Polytech 5000 Pty Ltd

[2006] ATMO 76

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by 3M Company to registration of trade mark application 1005429(2) M3 Protectives (Logo) proceeding in the name of David Guthrie and Polytech 5000 Pty Ltd.

Delegate:

Iain Thompson

Representation:

Opponent

Trevor Stevens of Davies Collison Cave

Applicant

Written submission by Carmen Champion of counsel

Decision:

1. s52 opposition, ss 44, 60 and 43 – sections 44 and 60 established – registration refused.
2. Costs ordered against applicant.

Background

1. David Guthrie and Polytech 5000 Pty Ltd, ('the applicants') of Russell Lea, NSW, has filed an application to register a trade mark, current details of which are:

   App No:  1005429

   Filing Date:  9 June 2004

   Services:Class: 2:  Paints, preservatives against rust

   Trade Mark:  

2. On 17 November 2004, 3M Company, of St Paul, Minnesota, ('the opponent') filed Notice of Opposition (‘the Notice’) to the registration of the trade mark.  The Notice cites most of the available grounds under the Trade Marks Act 1995 (‘the Act’).

3. Evidence in support and evidence in answer, and the opponent’s evidence in reply, was duly served and filed in accordance with the Act and regulations thereto.

4. As a delegate of the Registrar of Trade Marks, I heard the arguments of the parties at a hearing in Sydney on 19 July 2006.  The opponent relied on oral and written submissions by Trevor Stevens of Davies Collison Cave.  The applicant relies on the written submissions of Carmen Champion, of Counsel, instructed by FB Rice & Co.

   Evidence

5. Evidence in support comprises a statutory declaration by Thomas Spenser, Company Secretary and Legal Counsel of 3M Australia Pty Ltd.  Mr Spenser details the history of the opponent, which was historically known as the Minnesota Mining & Manufacturing Company.  The opponent is a large, diversified manufacturing company who make a wide range of products (60,000) which, amongst other goods, range from Post-it® Notes to sandpapers, Scotch® cellophane tape, surface coatings, paints, and rust protection preparations.

6. The opponent is one of the top ten USA companies according to Fortune magazine.  The opponent’s 3M trade mark is well-known in Australia in relation to a range of products.

7. The opponent has several trade mark registrations of its 3M trade mark in Australia, the most relevant of which is:

   Reg No:               590926

   Priority Date:  23 November 1992

   Goods/Services:              Class: 2 Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists

   Trade Mark:  

8. Mr Sharpe attests to the process by which the applicants arrived at the form of the opposed trade mark and to sale of goods to councils, government and waterproofing contractors.  An associated company of the applicants is called Millenium 3 Pty Ltd and the expression M3 is a contraction of the company name.  The goods are sold in drums which do not carry the trade mark, although the trade mark is used in data sheets and promotional materials- and on the company’s letterhead.  This use started in mid 2004 – at around the same time this application was filed.

9. Sales, thus far, of the applicants’ products have been quite modest.

10. The applicant’s evidence also contains a printout from the Trade Marks Office data-base, ATMOSS, of various trade marks which contain the indicia M3.  But, as observed by the opponent, the only relevant records are pending applications which are (according to the evidence in reply) either being monitored by the opponent or opposed by it.

    Discussion

11. With the exception of section 43, the grounds under which the opposition was argued each rely, if those grounds are to be established, on the opponent establishing that the trade marks are deceptively similar. The applicant’s goods fall within the description of goods of 590926, which, in terms of section 44, has an earlier priority date than that of this opposed application.

12. The opponent does not argue that the trade marks are substantially identical, but submits that they are deceptively similar. Deceptive similarity is defined within section 10 of the Act which provides:

    10  Definition of deceptively similar

    For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

13. As regards ‘deceptive similarity’, French J said in Registrar of Trade Marks v Woolworths [1999] FCA 1020, at paragraph 50:

    In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

    (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

    (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:

    "...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

14. The test is not to be applied to the trade marks side by side but rather from the impression of the trade marks which is likely to be formed by the public.  In the words of Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd, (1937) 58 CLR 641 at page 658:

    In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.

15. All of the surrounds circumstances are to be taken into consideration, including the market context.  In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777), Parker J said:

    You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion -- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you may refuse the registration, or, rather, you must refuse the registration in that case.

16. In their submissions, both Mr Stevens and Mrs Champion urge me to consider the essential features of the trade marks.  On a superficial level, the opponent’s trade mark contains the numeral and letter 3M and the applicant’s trade mark contains the letter and numeral M3.

17. As Mr Stevens observed, the perceptions of the opposed trade mark are linked to the orientation of the M or 3 portion of the opposed trade mark which are identical shapes but may be seen as the letters M,W,E or the numeral 3 depending on their orientation.

18. Mr Stevens drew my attention, in this regard, to the remarks of Williams J in Sym Choon & Co Ltd v Gordon Choons Nuts Ltd (1949) 80 CLR 65, at 78, in the application of the doctrine of imperfect recollection to the essential features of the trade marks.

19. In Sym Choon the applicant was, of course, in petitorio and such is not the case here – here it is for the opponent to clearly establish its case on the balance of probabilities.  However, in the end, I am convinced that the trade marks are deceptively similar, for the following reasons.

20. It has been held by the Courts that the presence of a common idea in trade marks may be a determining factor because the idea is more likely to be recalled than the precise details of the trade marks: Jafferjee v Scarlett (1937) 57 CLR 115. This principle feeds into the doctrine of imperfect recollection enunciated in Sym Choon (and also see Aristoc Ltd v Rysta Ltd (1944) 1B IPR 467).  Here the commonality of idea is the same single numeral and alphabetical letter in common between the trade marks.

21. These factors must be counterbalanced by the observations in Cooper Engineering at 539 that the fact that two trade marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them and a proprietor of a mark is not entitled to a complete monopoly of all words conveying the same idea as that trade mark.

22. However, I consider it is likely that a person who knows of the opponent’s 3M trade mark is likely to imperfectly remember the opponent’s trade mark and wrongly recognize the opposed trade mark for that of the opponent and, in fact, did so myself when preparing for the hearing of this matter.  The issue, I think, arises because, as the Court has noted, most people will have remembered the opponent’s trade mark by forming a general impression of it.  As a matter of logic, the same process is used when looking for the opponent’s trade mark on the shelves of shops or wholesalers – the search is one of looking for a trade mark which gives the impression of matching the memory, which itself is a general impression, rather than looking for a detailed match.  In other words, the search is, in essence, one of looking for a trade mark which meets the general pattern of that in the retained memory which is not necessarily precise. 

23. Here, the trade marks in question appear to me to be very much the same pattern and impression.  The trade marks are both composed of the same numeral and letter which, as the opposed trade mark vividly illustrates, are the same general shape.

24. In the instance of the trade marks under consideration, they cannot be distinguished on the basis that they convey a different idea.  The idea within the trade marks is very similar and, as far as the opponent having a monopoly in that idea is concerned, the situation before me here is quite different from that in Cooper Engineering, above, where the trade marks involved were RAINMASTER and RAIN KING.  For the situation in Cooper Engineering to be directly analogous to that here, the trade marks under consideration there would have been KING RAIN and RAIN KING.

25. The situation is not assisted by the particular get-up of the opposed trade mark where the letter and numeral may both be seen interchangeably as either the letter M or the numeral 3.

26. The word PROTECTIVES, being wholly descriptive of the goods, does not aid in distinguishing the trade marks from each other.

27. The trade marks are thus, in my estimation, deceptively similar.

28. The opponent has established its ground of opposition under section 44 of the Act.

29. Application of the provisions of subsection 44(3) is not appropriate since use of the trade mark does not, apparently, predate the date of application; the geographical extent of the use of the opposed trade mark is not stated; the trade mark does not appear on the goods; and, the amount of the user, such as it is, is modest.

30. As the opposition has succeeded under section 44, there is no need for me to consider the grounds under sections 43 or 60.

    Decision

31. Section 55 of the Act provides:

    55. Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

    (a) to refuse to register the trade mark; or
    (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note:  For limitations see section 6.

32. I refuse to register application 1005429.

    Costs

33. The opponent is entitled to its costs in relation to this matter and I order costs against the applicant at the official scale.

    Iain Thompson

    Hearing Officer

    Trade Marks Hearings

    15 August 2006