Alltype Printing Pty Ltd v Peter Douglas Scott, Catherine Anne Scott and Rhys David Andrew Scott
[2006] ATMO 83
•11 October 2006
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Alltype Printing Pty Ltd to registration of trade mark application 1044526 (35, 41, 42) - ALLTYPE PRINTING INNOVATORS IN PRINT & DESIGN AND DEVICE - filed in the name of Peter Douglas Scott, Catherine Anne Scott and Rhys David Andrew Scott.
Delegate: | Michelle Scislo |
Representation: | Opponent No appearance Applicant No appearance |
Decision: | S52 opposition: S44 marks deceptively similar and some services of same description. Registration refused in part. |
Background
Trade mark application 1044526 was filed on 3 March 2005 by Peter Douglass Scott, Catherine Anne Scott and Rhys David Andrew Scott (‘the applicant’) in respect of the following services:
Class: 35: Photocopying services, document reproduction services, document duplication services, word processing services, secretarial services including direct mailing services, marketing services including publication of advertising material
Class: 41: Desktop publishing services in this class, typesetting, electronic publishing, digital imaging, photography
Class: 42: Printing and duplicating services, including offset printing services, colour printing services, graphic design; preparation and designing services in relation to artwork for printed matter
The trade mark, the subject of this application (‘the present trade mark’), is:
The application was advertised accepted on 13 October 2005 under the provisions of subsection 44(4) for possible registration whereupon a notice of opposition was filed by Alltype Printing Pty Ltd (‘the opponent’) on 5 December 2005 citing grounds of opposition under sections 43, 44, 58, 59 and 60 of the Trade Marks Act 1995 (‘the Act’). The opponent served its evidence in support of the opposition on 8 March 2006. The applicant did not file or serve evidence in answer and requested a decision on the written record on 8 June 2006.
I have been delegated to decide this matter on the written record.
Evidence
The opponent’s evidence in support was due to be served on 5 March 2006 however it was not served until 8 March 2006. The applicant objected to the late service of evidence, however the opponent did not rectify this by requesting an extension of time under regulation 5.15 to cover the service of the evidence.
As the evidence in support was served late, it is not material in which the opponent is entitled to rely on – regulation 5.7(1). Since the opponent is aware of its failure to comply with the regulation and has elected to ignore it, I believe it is neither necessary nor appropriate to consider the evidence.
The applicant chose to not serve evidence in answer. As advised by letter dated 8 June 2006, “We confirm that notice was served on lawyers for the Opponent by facsimile on 7 June 2006 that the applicant does not intend to rely on evidence in answer to the above opposition”.
Ground under section 44
This ground of opposition is based on trade mark registration 940121 and trade mark application 980296. The latter has now lapsed and is of no further relevance.
940121
Priority date: 14 January 2003
Class: 40: Prepress services
As mentioned previously, I am not giving weight to the opponent’s evidence in support. However the ground under section 44 can still be made out if the present trade mark is at least deceptively similar[1] to trade mark registration 940121, in addition to being applied to the same services or services of the same description[2].
[1] Section 10 gives the definition of deceptively similar as follows:
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.
[2] Section 14(2) provides the relevant definition of “similar services” in s 44
The present trade mark and registration 940121, even though they are represented quite differently, share the same dominant elements being the words ALLTYPE PRINTING. The trade marks would leave the same impression on consumers and assuming imperfect recollection[3] consumers would be confused in recollecting the one mark when they are confronted by the other. There is therefore no doubt that the trade marks are at least deceptively similar.
[3] Rysta Ltd's Appn (1943) 60 RPC 87
I will now compare the services claimed for the trade marks. This is the second leg of s 44(2), which I will not set out in full. The present trade mark application claims the services of ‘photocopying services, document reproduction services, document duplication services, word processing services, secretarial services including direct mailing services, marketing services including publication of advertising material, desktop publishing services, typesetting, electronic publishing, digital imaging, photography, printing and duplicating services, including offset printing services, colour printing services, graphic design; preparation and designing services in relation to artwork for printed matter’ and registration 940121 claims ‘prepress services’.
It is immediately obvious that prepress services are those which are required to turn a product (such as a book, photo or design) into final form, including developing, printing, mounting, duplicating, copying, enlarging, reducing, scanning, image setting, colour correction, typesetting, layout and proofreading.
The services claimed of ‘typesetting’ and ‘printing services, including offset printing services, colour printing services’ are therefore ‘prepress services’ or are of the same description because these services need to be performed to turn a product into its final form.
The logical meaning of ‘duplicating services’ as used in the present statement of services is document duplication. ‘Prepress services’ include the services of duplicating, copying, enlarging, and reducing. I would consider these services fall within the broader term of ‘duplicating services’ and they are the same or are of the same description as ‘photocopying services, document reproduction services, document duplication services’ and the secretarial services of this nature.
The applicant’s claim of ‘secretarial services including direct mailing services’ would include some document duplication services such as photocopying and document reproduction services therefore only some secretarial services such as direct mailing services, telephone answering, typing and record keeping would be of a different description to ‘prepress services’.
The services of ‘desktop publishing services, electronic publishing, digital imaging, graphic design, preparation and designing services in relation to artwork for printed matter’ are services which are of the same description to ‘prepress services’ because consumers would expect the services to be provided by the same trader, the nature of the services are the same, and the uses are the same[4].
[4] Re Jellinek's Application (1946) 63 RPC 59
The services of ‘word processing services, marketing services including publication of advertising material’ are provided as part of administration and office functions. ‘Marketing services including publication of advertising material’ are advertising services which are not prepress services. ‘Photography’ is not a prepress service because it is usually provided either separately or prior to the prepress services. In none of these instances are the services of the same description as prepress services because they are all rendered as parts of very different trades, and for different purposes. See, in this regard, Mid Sydney Pty Ltd v Australian Tourism Co Ltd & Ors[5].
[5] [1998] 1616 FCA )
I am satisfied that the ground under section 44(2) has been made out based on registration 940121 in relation to ‘photocopying services, document reproduction services, document duplication services, desktop publishing services in this class, typesetting, electronic publishing, digital imaging, printing and duplicating services, including offset printing services, colour printing services, graphic design; preparation and designing services in relation to artwork for printed matter’ and some ‘secretarial services’.
When this application was examined, prior to its acceptance for possible registration, the examiner of trade marks reached much the same conclusion. The applicant then elected to rely on evidence of use, which it filed with the trade marks office. The provisions of 44(4) were then applied as I have already noted. Briefly, these would allow a later filed trade mark to proceed in the face of an earlier-filed and deceptively similar one if the owner of the later application can show use of the relevant trade mark before the priority date of the earlier.
On finding registration of this application opposed, the applicant has made a deliberate decision not to rely on evidence in answer to the opposition. The applicant had legal representation and those solicitors must presumably have been aware of the risks inherent in not relying on evidence in answer to the opposition. I have found that the provisions of section 44(2) have been established and I believe it would be unsafe to give any weight to the evidence filed previously when the applicant has made a deliberate decision not to serve any of it on the opponent. I consider the words of Hearing Officer Williams in Johnny Walker Pty Ltd v Chocolatier (Aust) Pty Ltd [2002] ATMO 105 to be appropriate here:
‘…his client has not served that evidence on Walkers, for whatever reasons, and cannot now rely on it. That, of course, does not preclude me from doing so, provide that I deal fairly with Walkers. However, my general view is that, if an applicant fails to bring in evidence that goes to the use of its mark in the face of another, it probably has some good reason for this. In the present instance, my suspicions were aroused by the Business Review Weekly extract in the evidence in support and therefore, contrary to usual practice, I have had brief recourse to the material. I have seen sufficient to confirm, on that basis, that the earlier evidence is questionable. Therefore, I am even more reluctant than usual to bring in material that the application has, apparently with quite goods reason, chosen to leave out. If this puts the applicant in a difficult position, so be it.’
I am not going to give weight to material on file which was submitted during examination as evidence of prior use because I do not think it is safe to do so. The evidence of prior use has not been served on the opponent and it would not be either procedurally fair or appropriate to introduce it at this stage. I therefore find no reason why I should consider evidence that the applicant itself has elected not to rely on.
Other grounds of opposition
The opponent also cited grounds of opposition under sections 43, 58, 59 and 60 however, since the opponent is not entitled to rely on evidence in support, these grounds have not been established.
Decision
I refuse to register the application in its present form. The application may proceed to registration one month from the date of this decision for the following services and the applicant should request this amendment forthwith.
Class: 35: Word processing services; secretarial services being direct mailing services, telephone answering, typing and record keeping; marketing services including publication of advertising material
Class: 41: Photography
If the Registrar has been served with a notice of appeal before that time, I direct that the application will not be amended and that registration shall not occur until the appeal has been decided or discontinued.
Michelle Scislo
Senior Examiner
Trade Marks Hearings
11 October 2006
1
1
0