Austech Ltd v Silver Colloid Pty Ltd

[2003] ATMO 53

TRADE MARKS ACT 1995

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

Re:Opposition by Austech Ltd to registration of trade mark application 809632 (11) – Denta-pure 5k - filed in the name of Silver Colloid Australia Pty Ltd.

Date of Decision:

18 September 2003

Delegate:

Ian Thompson

Representation:

Opponent

Austech Ltd
Applicant
Silver Colloid Australia Pty Ltd

Decision:

1. Section 52 Opposition: established under section 58 – ownership of trade mark
2. Costs ordered against applicant

Background

1.       This matter concerns opposition to the registration of the following trade mark:

Appn No:  809632
Owner:  Silver Colloid PtyLtd  (‘the applicant’)
Priority Date:  7 October 1999

Goods/Services:                  Class 11:  Apparatus for water supply; water treatment apparatus; water purification installations, apparatus and machines; water filtering apparatus and water filters; water softening apparatus and installations

Trade Mark:  DENTA-PURE 5K

Advertised:  27 July 2000 – Australian Official Journal of Trade Marks

1. On 26 October 2000, Austech Ltd (‘the opponent’) filed notice of opposition to registration of the trade mark. Nineteen grounds of opposition were listed in the notice.  However, in written submissions by the opponent, it relies on those grounds under paragraphs 8, 18 and 20 of the notice, these being under sections 42, 58 and 60 of the Act.  For convenience, I now note that those other grounds in the notice have not been established.

2. The opponent has filed a statutory declaration by Ralph Michael Schmidt, Secretary of the opponent, as evidence in support of its opposition.  Attempts to serve this evidence on the applicant have been unsuccessful and there is no evidence in answer.

   The Evidence

   4.       In June 1998, the opponent started using the trade marks DENTAPURE and DENTAPURE 5000 in relation to water purification apparatus for applications in dentists’ surgeries.  There is evidence of the sale of some 17 items bearing the trade mark DENTAPURE with a numeral immediately after the word (such as DENTAPURE 1000) by the opponent’s agent in 1998.  There is no evidence that such sales continued to the priority date of the opposed application.  There is in evidence a brochure, featuring the trade mark, which the opponent published in June 1998 – there is no evidence of the number of brochures that were printed or its distribution.

3. A dispute between the parties in the Federal Court was settled by consent orders.

4. The evidence before me is not sufficient for a basis to found grounds under sections 42 or 60 under which the opponent must demonstrate the reputation of its trade mark in order to establish the grounds.  There is evidence of some 17 sales of goods bearing the trade marks on which the opponent relies; however, it is not possible to gauge the size of the market or the degree of recognition that the trade marks might have gained within this market before the priority date of this opposed application.  There is no evidence of the number of machines that had been sold at the priority date or the amount spent on advertising.  There is no evidence that sales actually continued up to the priority date.  There are no supporting declarations from others in the trade or from clients which attest to their knowledge or recognition of the trade mark.

5. Accordingly, there is one ground of opposition remaining for consideration – that being under section 58 of the Act.

   Reasons

   8.       Section 58 of the Act provides:

   Applicant not owner of trade mark

   Section 58

   58. 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.

6. Ownership of a trade mark is established by use of the trade mark in Australia or by the filing of an application for registration of the trade mark, whichever is the earlier.  An opponent may rely on use of a trade mark in Australia, before the priority date of the opposed application, which is at least substantially identical to the opposed trade mark, to displace the applicant’s claims to ownership inherent in the making of the application.

7. Substantial identity is assessed on the basis of a side by side comparison of the trade marks: Windeyer J in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, said 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.

8. In PB Foods Limited v Malanda Dairyfoods Limited 1999 FCA 1602, 47 IPR 47, the Court found that the trade marks CHILL and CHOC CHILL were substantially identical in relation to dairy foods. The approach of the Court was to view the word CHOC as being inherently non-distinctive and descriptive in relation to the goods and therefore to be discounted from the trade mark CHOC CHILL when making the comparison.

9. The question posed in this matter is whether, on the basis of the side-by-side comparison quoted at paragraph 10 of this decision, the trade marks DENTA-PURE 5K and DENTAPURE 5000 are substantially identical.

10. In finding that the trade marks of the parties are substantially identical, I observe that the assessment is one which occurs in the context of the particular trade marks and goods.  The consideration is not one of assessing if the signs 5K and 5000 are in themselves interchangeable and/or identical but whether, in the context of the trade marks and goods in question, the trade marks as wholes have a substantial identity. 

11. The numeral 5000 and sign 5K are, in the context of these trade marks and goods, going to be viewed by most people as being model numbers or designators and adding little to the trade marks but explanation of the particular size or capacity of equipment on which the DENTA-PURE/DENTAPURE trade marks are being or will be used.  Thus, while, hypothetically, the differences between the designators 5K and 5000, might in the context of other trade marks and goods be sufficient to support a conclusion that the trade marks alongside which they are used are not substantially identical, I am satisfied that that is not the case here.  In so finding, I also note also that the letter 'K' is used to designate '1000' and that therefore is also likely that the sign 5K will be read by many as 5000.

12. I do not consider that the presence of the hyphen in the applicant’s trade mark affects the identity of the trade marks.  Both trade marks are manifestly composed of the elements DENTA and PURE and are, in esence, the same trade mark.

13. As the opponent has demonstrated that it has had first use of a substantially identical trade mark for the same kind of thing in Australia before the priority date of the opposed application, (and the applicant has not shown earlier use of the trade mark), the opponent has established that it is the owner of the trade mark. 

14. The opponent has therefore established its grounds in terms of section 58 of the Act.

    Decision

    18.     Section 55 of the Act provides:

    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.

    19.     As the opponent has established its grounds under section 58 of the Act, I refuse to register application 809632.

    Costs

    20.     The opponent has sought its costs in this matter. It is usual for costs to follow the event and the opponent has been successful here. 

15. Accordingly, I order costs against the applicant.

    Ian Thompson
    Hearing Officer
    Trade Marks Hearings
    18 September 2003