Aktiebolaget Electrolux v Notetry Limited

[2003] ATMO 3

TRADE MARKS ACT 1995

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

Re:Opposition by AKTIEBOLAGET ELECTROLUX to registration of trade mark application 712907(9) - DUAL CYCLONE - filed in the name of NOTETRY LIMITED.

DATE OF DECISION:

16 January 2003

DELEGATE:

Hearing Officer Claudia Murray

REPRESENTATION:

Opponent
Beverley Fagan, of Davies Collison Cave, Patent and Trade Mark Attorneys

Applicant
Sean McManis, of Baldwin Shelston Waters, Patent and Trade Mark Attorneys

DECISION:

1. Section 52 Opposition: registration allowed - s 55(b)

2. Costs awarded against opponent

Background

Notetry Limited (the applicant) filed trade mark application number 712907 on 15 July 1996. The application, in class 9 of the International (Nice) Classification of Goods and Services, was for the plain word trade mark:

DUAL CYCLONE

The statement of goods (at the time of filing) was:

Apparatus for cleaning, polishing and shampooing floors and carpets; vacuum cleaners; carpet shampooers; floor polishers; parts and fittings for the aforesaid goods

A ground of rejection under section 44 of the Trade Marks Act 1995 (the Act) was raised against the application in the examiner's first report. This was based on the prior trade mark registration number 710659, in the name of Aktiebolaget Electrolux, for the trade mark CYCLONE in respect of "Vacuum cleaners and parts and fittings for vacuum cleaners in this class". The applicant filed evidence in response, and agreed to amend its statement of goods, in accordance with its evidence, to "Vacuum cleaners and parts and fittings therefor". The trade mark application was endorsed to the effect that the provisions of subsection 44(4) of the Act had been applied, and it was then accepted for registration. (Subsection 44(4), which is discussed in more detail below, recognises an applicant's rights in a trade mark gained through continuous use of that mark, beginning before the priority date of a trade mark cited against it.) Acceptance of the application was advertised in the Official Journal of Trade Marks on 8 October 1998.

On 8 April 1999, after obtaining three months extension of time, Aktiebolaget Electrolux (the opponent) filed notice of opposition to registration of the trade mark. Ten grounds of opposition were listed in the notice.

The opponent's evidence in support, applicant's evidence in answer and opponent's evidence in reply was duly served and filed. At the end of the process the matter came to a hearing before me, as a delegate of the Registrar, in Canberra, on 4 July 2002. Mr Sean McManis, of Baldwin Shelston Waters, Sydney, represented the trade mark applicant by telephone. Ms Beverley Fagan, of Davies Collison Cave, Melbourne made written submissions on behalf of the opponent.

Evidence

Evidence in support

The opponent's evidence in support comprises a declaration by Mr Doug Williams, Company Secretary and Financial Controller of Electrolux Pty Ltd, the exclusive Australian distributor of the opponent, which is a Swedish company. The declaration is dated 30 November 2000. Mr Williams cites details of trade mark application number 778279, filed in Australia by the opponent. He points out that this trade mark application was a divisional, in terms of section 45 of the Act (see below), of earlier trade mark number 710659 (mentioned above as having been originally cited against the application). The current details of these trade marks are reproduced in the following table. For easy reference, I have included details of subsequent trade mark application number 865331, also made by the opponent, which claims divisional status based upon trade mark number 778279, and the earlier filing date of trade mark number 710659. This trade mark application was drawn to my attention by Ms Fagan in her written submissions for the hearing.

TM No	Class	Trade Mark	Filing Date	Priority Filing Date (s50 claim based on divnl. status)	Statement of Goods	Status
710659	9	CYCLONE	13 Jun 96	Initial Application	Vacuum cleaners and parts and fittings for vacuum cleaners in this class	Lapsed 17 Dec 98
778279	7	CYCLONE	13 Nov 98	13 Jun 96	Vacuum cleaners	Lapsed 7 Jun 01
865331	7	CYCLONE	7 Feb 01	13 Jun 96	Vacuum cleaners for domestic use	Pending

Mr Williams declares that the CYCLONE trade mark was first used on vacuum cleaners in Australia by his company, as the opponent's authorised user, in June 1994, and has been used continuously by it since that date. He says that the opponent is well known throughout the world as a leader in vacuum cleaners, floor cleaners and other white goods, and its trade marks are also well known world wide. Further, he declares that the opponent chose the name CYCLONE as part of its range of "power weather" trade marks, which includes the marks TORNADO, WHIRLWIND and HURRICANE. These trade marks have been, registered in several countries throughout the world.

Mr Williams provides sales and advertising figures for his company's use of the CYCLONE trade mark since 1994. He says, in his opinion, which is based upon 23 years of experience in the manufacturing and marketing of vacuum cleaners and whitegoods, the trade mark CYCLONE distinguishes his company's goods from other traders in the same field. Consequently, he believes that use by the applicant of the DUAL CYCLONE trade mark on vacuum cleaners would likely cause deception and confusion of the public.

Mr Williams' declaration is accompanied by Exhibits DW-1 to DW-3, being copies of material from the opponent's Internet website, other advertising material, and copies of relevant overseas trade mark registrations.

Evidence in answer

The applicant's evidence in answer comprises a leading declaration by Mr Ross Cameron, Managing Director of Dyson Appliances (Aust) Pty Limited. The declaration is dated 29 June 2001. Mr Cameron explains that his company distributes vacuum cleaners throughout Australia under the trade marks DYSON and DUAL CYCLONE on behalf of the applicant, which is incorporated in the United Kingdom. Mr Cameron also gives a brief history in his declaration of the history of the DUAL CYCLONE vacuum cleaner, and his personal involvement in its promotion, as a "major breakthrough in vacuum cleaner design and performance". He gives his company's sales and advertising figures dating from May 1996 until April 2001, for vacuum cleaners sold in Australia under the DYSON and DUAL CYCLONE trade marks.

In reply to Mr Williams' assertions, Mr Cameron draws on his (almost) 30-year involvement in the vacuum cleaner industry to declare that, to the best of his knowledge, the opponent has never traded in Australia under the single word mark CYCLONE. He further declares that he has been aware, from 1997, of the opponent's use of CYCLONE in advertising references to "cyclonic cleaning" attachments and cassettes for its products, and as part of the trade marks MEGA CYCLONE and CYCLONE POWER. However, he believes the opponent had not used CYCLONE in Australia in any form, prior to commencement of trading by the applicant under the DUAL CYCLONE trade mark in this country. He says:

The words DUAL CYCLONE have only been used in relation to products produced under licence from James Dyson and I believe that the DUAL CYCLONE trade mark is readily identified with and distinguishes the vacuum cleaners which are traded by my company on behalf of Notetry Limited.

Mr Williams' declaration is accompanied by Exhibits RC-1 to RC-3. These are copies of declarations previously filed during examination in support of the applicant's case for acceptance based upon its prior continuous use of its trade mark.

Four additional declarations (all dated late June 2001) made by Branch Managers from Mr Williams' company, supporting his comments reported above, complete the applicant's evidence in answer.

Evidence in reply

The opponent's evidence in reply is made up of a second declaration by Mr Williams, dated 25 March 2002, with Exhibits A to D, together with declarations by Mr Neil Kibble (dated 21 March 2002) and Mr Lawrie Kilworth (dated 28 March 2002), with Exhibits LK-1 and LK-2.

Grounds of Opposition

In her written submissions, Ms Fagan indicated that the opponent principally sought to rely on grounds under sections 44, 58 and 60. I will deal with them here in that order.

Section 44 - substantially identical or deceptively similar trade marks

Subsection 44(1) provides:

44(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar goods or closely related services; or

(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1:        For deceptively similar see section 10.

Note 2:        For similar goods see subsection 14(1).
Note 3:        For priority date see section 12.

The definition of "deceptively similar" in section 10 is that "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". Subsection 14(1) provides that goods are similar to other goods if they are the same as, or of the same description as, those other goods. Section 12 states that the priority date for the registration of a trade mark is either its date of registration or, if the trade mark is not yet registered, the day that would be its date of registration, if it were registered. Subsection 44(4) provides the following exception to subsection 44(1):

44(4) If the Registrar ... is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a) beginning before the priority date for the registration of the other trade mark in respect of:

(i) the similar goods or closely related services; or

(ii) the similar services or closely related goods; and

(b) ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:        For predecessor in title see section 6.
Note 3:        For priority date see section 12.

The provisions of Division 3 of Part 4 of the Act - Divisional applications - are also relevant to the circumstances of this opposition. Sections 45 and 50 from that Division relevantly state:

45(1) If an application (initial application) for the registration of a trade mark in respect of certain goods and/or services is pending, the applicant may, in accordance with this Division, make another application (divisional application):

...

(b) for the registration of the trade mark in respect of some only of the goods and/or services in respect of which registration is sought under the initial application

Note 1:        For applicant see section 6.
Note 2:        For pending see section 6.

50 A divisional application is taken to have been filed on the day on which the initial application concerned was filed.

Note:          For file see section 6.

Section 6 provides that "file" means to file at the Trade Marks Office, and that the "filing date" in relation to a divisional application for registration of a trade mark is the day on which the initial application (as referred to in section 45) was filed.

Submissions
Ms Fagan began her written submissions by stating that the opponent was the owner of trade mark application number 865331, in respect of the trade mark CYCLONE. She said that this application was a divisional from parent application number 710659, and therefore claimed (under section 50) the filing date of 13 June 1996. This meant that it should now stand as a citation against the applicant's trade mark in terms of subsection 44(1). I have referred earlier to the fact that the opponent's application number 710659 was originally cited against the applicant's trade mark, which was then accepted under subsection 44(4). In her submissions, Ms Fagan challenged the examiner's finding that the applicant's case for prior continuous use of its trade mark had been made out. She argued that the evidence was insufficient for acceptance in the face of the opponent's new divisional application, because it retained the priority date, (before which the applicant's use must have commenced), of 13 June 1996.

In response, Mr McManis argued that the applicant had indeed established prior use of its trade mark. In any case, he said, a ground of rejection or opposition under section 44 no longer applied to his client's application. This was because the section 44 ground could only have been based upon applications numbered 710659 and 778279, both of which had since lapsed. Further, said Mr McManis, the priority claim to a filing date of 13 June 1996 by the opponent's new divisional application 865331 appeared to have been recorded in error by the Trade Marks Office. He referred me to Arista Enterprises Inc (2000) ATMO 25 (the DOC'S case) and Part 12.10 of the Trade Marks Office Manual of Practice and Procedure. He said these sources confirmed that a divisional application based upon an earlier filing that was itself a divisional application from an original "parent" was only entitled to claim priority of the filing date of the first divisional. It was not entitled to claim the filing date of the original parent application. Trade mark number 865331 was not, as Ms Fagan claimed, a divisional of 710659, but of 778279, and was therefore only entitled to claim the filing date of 13 November 1998.

After the hearing, I ascertained that the Office's recordal of trade mark number 865331's claimed filing date did indeed appear to have occurred in error. Office procedures had been put in place, in accordance with the Deputy Registrar's finding in the DOC'S decision, to screen divisional claims shortly after filing, so as to avoid invalid filing date claims resulting from divisionals of divisionals being recorded on the database. Clearly, the procedure had broken down in the case of the opponent's application, as the date claimed on the application had simply been entered, without the opponent being alerted to any difficulties arising from the claim. In all, this uncertainty regarding the priority date of the opponent's trade mark number 865331 had come to light in somewhat unusual circumstances. It was raised for the first time by the applicant at a hearing where the opponent was not present and therefore had no opportunity to respond. Taking this into account, I wrote to the parties, undertaking to defer my decision on the opposition until the opponent had had an opportunity to comment on the situation and the applicant to reply. Both sides duly responded, and their comments are noted below.

Ms Fagan argued that Deputy Registrar Hardie's decision in the DOC'S case could and should be distinguished from the present situation. This was because in DOC'S, the central issue was whether a divisional application based on an earlier divisional was able to claim, not just the earliest filing date, but also a Convention priority date (under section 29) claimed on the parent application, but not claimed by the first divisional. Ms Fagan said that Ms Hardie had not needed to explore further beyond her decision that a second divisional application was not entitled to claim Convention priority that had not been claimed on the first. Therefore, when she went on to consider the effects of making a divisional application from an earlier divisional application, these issues were obiter dicta and were not the raatio decidendi of her decision. Accordingly, Ms Fagan submitted, the DOC'S case did not stand for the general principle that a subsequent divisional application cannot be based on an earlier divisional application and yet claim the initial filing date of the earlier divisional's parent application.

Mr McManis responded that, while it was true there were other factors involved in the DOC'S decision, it was nevertheless directly on point and relevant to the current proceedings. He said:

There is nothing to cast any doubt upon the correctness of the Deputy Registrar's reasoning in respect of her determination of the priority date for Application No. 785389 and there is no reason why that finding and the practice of the Trade Marks Office based on that finding should not be followed.

Discussion
Ms Fagan's arguments that the DOC'S case does not stand for the general principle that "divisionals of divisionals" cannot claim the filing date of the earliest parent application are flawed. It is true there was a complicating issue of an additional priority claim under section 29 to be determined. Section 29 provides that a priority claim may be made in respect of an application for registration of a trade mark whose registration has previously been sought in a country defined as Convention country in regulation 21.29 of the Trade Marks Regulations 1995. In the revocation case before the Deputy Registrar, it was the ability to claim a Convention priority date that made the ultimate difference between whether the two possible citations in question did or did not have prior conflicting rights. However, Ms Hardie found it necessary to consider the question of how the second "divisional of divisional" application's filing date should be determined, in order to properly assess its entitlement to claim the Convention priority date. She said, at page 7:

In the words of section 50, a divisional application is taken to have been filed on the day on which the initial application concerned was filed. The Note to section 50 draws attention to the definition of file in section 6 where the meaning is given as "to file at the Trade Marks Office". Under the definition of file there is a further Note referring to section 213 which describes the various means by which a document may be filed at the Trade Marks Office or a sub-office of the Trade Marks Office. These are references to the actual filing of documents. Given the wording of section 50 and the content of the explanatory Notes, I consider that the filing date for a divisional application is determined by the actual date of filing of the initial application concerned. I come to the same conclusion by reference to paragraph (b) of the definition of filing date in section 6. There again the use of the words "was filed" (immediately after a definition of the meaning of file) indicates that it is the date of actual filing of the initial application that will determine the filing date of the divisional application rather than any deemed date of filing which may apply to the initial application.

In light of this finding, the Trade Marks Office issued an Official Notice in the Official Journal of Trade Marks, on 18 January 2001, advising that "the priority date of a divisional application will be the date on which its parent application was received by the Trade Marks Office". The Trade Marks Manual of Practice and Procedure was amended accordingly, as Mr McManis has duly noted.

The present circumstances of trade mark application number 865331 mirror those of the divisional trade mark application dealt with in the DOCS decision. Even though, at filing, the application was nominated as being a divisional application based upon application number 778279, filed on 13 June 1996, this is clearly not the case. The opponent's earlier application number 710659 was filed 13 June 1996, but it lapsed on 17 December 1998 and so, on 7 February 2001, did not have the pending status required of an initial application under section 45. Trade mark application number 778279, which was pending at the relevant time, was actually filed on 13 November 1998 and that, in line with the DOCS decision, must be the date of filing accorded to trade mark number 865331, in terms of section 50.

Both the opponent's applications numbered 710659 and 778279 have now lapsed, and I have found that the priority date of its application number 865331, being 13 November 1998, is later than the filing date (15 July 1996) of the applicant's trade mark. Therefore, the ground of opposition under section 44 of the Act fails at the hurdle set by paragraph 44(1)(b), because the priority date of the applicant's trade mark application is earlier than that of the opponent's single remaining application.

Section 58 - ownership of the trade mark

Section 58 of the Act provides:

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:    For applicant see section 6.

Submissions
Ms Fagan began her submissions under section 58 by referring me to the principles laid down in Shell Co of Australia Ltd v Rohm & Haas Co (1949) 78 CLR 601 at 625 and 627, and Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) AIPC 91-049, 31 IPR 375. She argued that the opponent claimed ownership of the trade mark DUAL CYCLONE in Australia, by virtue of being the first to use the trade mark CYCLONE in this country on goods which were the same as the applicant's goods. Ms Fagan submitted that the trade marks DUAL CYCLONE and CYCLONE were substantially identical, because the essential feature of each mark was the word CYCLONE and DUAL was descriptive. She said:

The word DUAL is defined in the Australian Concise Oxford Dictionary as meaning "two fold, divided in two, double." As such, the word DUAL is a non-distinctive and descriptive word. In the present context, the word DUAL does not detract from the total impression of similarity which emerges form the comparison between the two marks.

In support of these arguments, Ms Fagan referred me to Virgin Enterprises Ltd v Bowes (2000) AIPC 91-656 at 38,391, where the trade marks VIRGIN and VIRGIN HOME SERVICES were found to be substantially identical. She also referred to QH Tours Ltd v Mark Travel Corporation (1999) AIPC 91-501, where FUN JET was found to be substantially identical to FUN JET SERVICE. She then cited PB Foods Ltd v Malanda Dairy Foods Ltd (1999) AIPC 91-531, where Carr J held that the trade marks CHOC CHILL and CHILL were substantially identical.

Further, said Ms Fagan, the opponent's evidence showed that the trade mark CYCLONE had been used in Australia on vacuum cleaners by its exclusive Australia distributor and authorised user since June 1994. That is, prior to the date of filing of the applicant's trade mark.

Mr McManis responded that, in his opinion, the evidence was too vague and unclear to support any valid claim by the opponent to ownership of the word CYCLONE per se. In any event, he said:

Even if there was a use of CYCLONE, the marks DUAL CYCLONE and CYCLONE are very different trade marks. DUAL CYCLONE is a substantially different trade mark since DUAL entirely alters the meaning and connotation of the mark and renders the mark entirely novel, unusual and newly coined. It is not an ordinary extension and changes the meaning, visual appearance and phonetic appearance of the marks. It is in no way equivalent to adding a descriptive word such as "service" or "home services" to a distinctive trade mark. Neither is it an ordinary description such as choc (for chocolate product), which is a purely descriptive and regularly used variable feature.

Mr McManis drew my attention to Somers v Greenbelt Pacific Pty Limited (1998) 42 IPR 587 at 589, where the trade marks PLANET and PLANET 2000 were found not to be substantially identical. He also referred to Sizzler Restaurants International Inc v Grater Seven Pty Limited (1996) 38 IPR 201 at 209. There, Hearing Officer Homann said "by no stretch of the imagination" could the trade marks MEXICANA SIZZLERS and SIZZLER, when inspected in close proximity, be regarded as identical or substantially identical to each other.

Discussion
In Trade Mark Law in Australia (2000), Elkington, Hall and Kell say of ownership disputes, at page 77:

The battle therefore is between the party who was first to file and an opponent who claims to have been first to use. In such cases the first user prevails. But this ground of opposition is tightly confined. The use must have been commercial use, as a trade mark, of the very mark applied for or one extremely close to it, and for the goods or services of application or "the same type of thing".

There has been no argument between the parties over the question of whether their goods of interest are "the same type of thing". Matters in dispute are whether the trade marks in question are substantially identical, and whether prior commercial use of the opponent's trade mark has indeed occurred. A failure to satisfy either of these criteria will result in a failure of the ground of opposition under section 58. The test for substantial identity between the trade marks is therefore a threshold test. It is put by Windeyer J in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, at page 414:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

Ms Fagan has drawn my attention to the findings in relation to the trade marks CHILL and CHOC CHILL in PB Foods Limited v Malanda Dairyfoods Limited, supra. I do not believe that the situation there is analogous to the present case. In deciding that the trade marks CHILL and CHOC CHILL were substantially identical, and applying Windeyer J's test quoted above, Carr J found (at paras 31 and 32) that the essential feature of both trade marks was the word CHILL. This word "serve[d] to denote the trade origin of the goods." The word CHOC, he said, had "different work to do". The word was "utterly descriptive". This phrase, as Carr J went on to explain, was borrowed from a decision by Hearing Officer Forno, Microcom Pty Ltd v Microcom Systems Inc (1998) 41 IPR 163. In that decision, Hearing Officer Forno found the words NETWORKING PROTOCOL to add nothing to the mark MICROCOM NETWORKING PROTOCOL, such that the trade marks MICROCOM and MICROCOM NETWORKING PROTOCOL were substantially the same.

I do not believe that the same can be said of the word DUAL in the trade mark DUAL CYCLONE. When considered in the context of the vacuum cleaners to which it is applied, the word is a little ambiguous and consequently not able to be immediately dismissed as "utterly descriptive" and adding nothing to the word CYCLONE. This circumstance is reinforced by the fact that, as the evidence shows, (although neither party has sought to draw this to my attention, for obvious reasons), the word CYCLONE itself is not without relevance to the goods in question. The combination DUAL CYCLONE creates a different visual and aural impression from the word CYCLONE by itself, such that someone making a side-by-side comparison of the two trade marks cannot fail to conclude there is a "total impression of dissimilarity" between them. It cannot be said, "in a real sense a claim to proprietorship of the one extends to the other." (Carnival Cruise Lines Inc v Sitmar Cruises Ltd, supra, at page 391.)

I find that, because the trade marks DUAL CYCLONE and CYCLONE are not substantially identical, the ground of opposition under section 58 has not been made out.

Section 60 - trade mark with a reputation in Australia

Section 60 provides:

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note 1:        For deceptively similar see section 10.

Note 2:        For priority date see section 12.

Submissions
Ms Fagan drew my attention to her earlier submissions in terms of section 58 that the trade marks in question were substantially identical. Further, she said, if I did not consider that this was the case, I should certainly be persuaded that they were at least deceptively similar, in terms of the well-known tests. Here she referred me to Southern Cross Refrigerating Co v Toowomba Foundry Pty Ltd (1954) 91 CLR 592, and Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641. Ms Fagan argued that, given the trade marks were applied to the same goods, and the word DUAL was non-distinctive, there was a real risk that a number of persons would be caused to wonder whether the two products came from the same source.

In so far as the opponent's reputation in the CYCLONE trade mark was concerned, Ms Fagan argued that the opponent's evidence demonstrated it had established a strong reputation in the trade mark CYCLONE as at 15 July 1996, the filing date of the applicant's trade mark DUAL CYCLONE.

In response, Mr McManis argued that the inclusion of one trade mark within another did not necessarily render the two deceptively similar. In support of this point, he cited several cases, including Mid Sydney Pty Limited v Australian Tourism Co Limited (1998) 1616 FCA (18 December 1998) and the unreported opposition decision (dated 17 January 2000), by a delegate of the Registrar regarding trade mark number 663433. He then said:

While descriptive extensions may render a mark deceptively similar, changes which alter the general identity, meaning and idea of the mark are not likely to be deceptively similar. The combination DUAL CYCLONE has no known meaning. It is a novel and newly coined expression, it is phonetically and visually original and is entirely different from any other mark of any relevance to the current proceedings.

Mr McManis concluded by strongly disputing that the opponent had discharged the onus upon it to establish it had a reputation in the trade mark CYCLONE prior to the applicant's filing date. He attacked the opponent's evidence for what he called its "total lack of specificity".

Discussion
To satisfy section 60, an opponent must demonstrate that at the time of filing of the opposed application, it had a reputation in a substantially identical or deceptively similar trade mark, such that use of the applicant's trade mark would likely cause the public to be deceived or confused. I have already concluded above that I do not consider the trade marks in question to be substantially identical. However, The tests for deceptive similarity are less straightforward than those for substantial identity. Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd, supra, at page 658 say:

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.

I do not agree with Mr McManis' argument that the word DUAL in the trade mark DUAL CYCLONE has altered the identity of the trade mark CYCLONE, to such an extent as to create an entirely novel expression with no known meaning. Mr McManis quoted to me, in particular, the findings of Hearing Officer Nancarrow in the unreported opposition decision cited above. He said Mr Nancarrow's finding that the trade mark VIRGIN GARDEN could not be seen as a deceptively similar extrapolation from the trade mark VIRGIN, because their respective meanings were different, paralleled the circumstances of the present case.

Mr Nancarrow says, at page 11 of his decision:

There are situations that can be used by a trade mark owner to extrapolate from a single word trade mark to a two word mark, whereby the average purchaser would expect ownership by one entity. Such marks as UNICORN and UNICORN KIDS, UNICORN and UNICORN ULTRA, UNICORN and UNICORN NY's or UNICORN and UNICORN LITE are examples of such extrapolation. Depending on the goods involved, constructions of variations to this theme are not difficult. In the examples given above, it is clear that the heart of the trade mark in each case is the word UNICORN. The second word in each case adds either a descriptive connotation in relation to the goods (KIDS or LITE) or some information about a line of goods (ULTRA or NY's).

Although the ordering of the words is different, the circumstances of the UNICORN trade marks described above seem to me to be much closer to those of CYCLONE and DUAL CYCLONE, than those of VIRGIN and VIRGIN GARDEN.

Further, as I alluded to above, the evidence of both parties illustrates that the word CYCLONE is not without relevance to the applicant and opponent's goods of interest. I do not wish to visit the question of the capacity of the applicant's trade mark to distinguish the vacuum cleaners to which it is applied. Section 41 was not argued as a ground of opposition either in the evidence or before me at the hearing. However, I believe this circumstance does affect the question of deceptive similarity between the trade marks at issue. It increases the likelihood that the vacuum-cleaner-purchasing public, knowing the CYCLONE trade mark, could form an impression that DUAL CYCLONE merely represents the addition of more descriptive matter to the word that (for all its descriptive content) is nevertheless "the heart of the trade mark". The situation is similar to what occurred in Sports Cafe Ltd v Registrar of Trade Marks [1998] 1614 FCA. There, the Full Federal Court found the word trade mark THE SPORTS CAFE to be deceptively similar to device trade mark THE CIRCUIT SPORTS CAFE (with a border device), in the context of use on similar services. Taking all of the above into account, I find that the trade mark DUAL CYCLONE is deceptively similar to the trade mark CYCLONE.

Having come to this conclusion, I must now determine whether the opponent has demonstrated it had a sufficient reputation in the trade mark CYCLONE, as at 15 July 1996, that use of the applicant's DUAL CYCLONE trade mark would have likely caused deception or confusion of the public. Having carefully reviewed the evidence, I do not believe this to be the case. Mr Williams has attested to a reasonable number of sales of the opponent's goods "under the said trade mark" in the years 1994 to 1996. However, the brochures he has tendered in evidence do not definitively show use of the single word CYCLONE as a trade mark at that important time. As a whole, the evidence suggests that the opponent's early use of the word CYCLONE in Australia was not consistent. It included use in a purely descriptive sense, (as in "cyclonic cleaning cassette") and use in combinations such as EUREKA CYCLONE, CYCLONE POWER and VOLTA MEGA CYCLONE. Considerably more evidence is necessary to establish reputation in a trade mark, than the "slight use" that might be found sufficient to demonstrate ownership in terms of section 58 (Malibu West, Inc v Catanese [2000] FCA 1141 (18 August 2000), paragraph 28). While I take Ms Fagan's point that reputation in a jurisdiction may be proved by a variety of means (ConAgra Inc v McCain Foods Aust Pty Ltd (1992) AIPC 90-892), still I am in agreement with the applicant here that convincing proof has not been forthcoming. Ms Fagan submitted:

The name Electrolux of the opponent company can be a regarded as a household word from the times in which Electrolux goods were sold door to door by salesmen known as "the friendly Electrolux man". The opponent company has been selling goods in Australia for 75 years, see Exhibit DW3 of the first Williams declaration. We submit that the public would be aware of the significant reputation in the trade marks of Electrolux and its subsidiary companies in Australia and that esteem and reputation would apply to the trade mark CYCLONE.

The evidence does show that the opponent has a long history in Australia under its ELECTROLUX trade mark. However, more is required for the leap to be made from this point to a conclusion that the opponent had, at the relevant date, the requisite reputation in the trade mark CYCLONE to satisfy a finding under section 60. I find that the opposition has not succeeded under section 60.

Decision

I find that the opposition has failed on all the grounds pursued by the opponent at the hearing. For completeness, and as I have no basis to be satisfied that any of the other grounds of opposition raised in the notice of opposition have been made out, I find each of those grounds has also failed. I direct that the endorsement on the Trade Marks Database relating to the application of the provisions of subsection 44(4) to trade mark number 712907 be removed. The trade mark application may then proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

In regard to the opponent's divisional trade mark application number 865331, I direct that the filing date for that application be corrected on the database, to read "13 November 1998".

Costs

Both sides have claimed costs in this opposition. I see no reason why costs should not follow the result in this case. I therefore award costs, according to the official scale, against the unsuccessful opponent, Aktiebolaget Electrolux.

Claudia Murray
Hearing Officer
Trade Marks Hearings
16 January 2003