Australian Cables Pty Ltd v Rajeev Sunu

[2000] ATMO 42

TRADE MARKS ACT 1995

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

Re:Opposition by Australian Cables Pty Ltd to the registration of trade mark application number 748948 in the name of Rajeev Sunu for the word trade mark FINOLEX in Class 9

Background
Trade mark application number 748948 was filed on 19 November 1997 in the name of Rajeev Sunu (the applicant).  The application was for the registration of the word trade mark FINOLEX and covered the statement of goods, "Electric cable" in Class 9.  Subsequent to examination, the trade mark was advertised as accepted in the Australian Official Journal of Trade Marks of 19 March 1998.

Following the grant of an extension of time to do so, a notice of opposition to the trade mark’s registration was filed by Australian Cables Pty Ltd (the opponent), on 26 June 1998.  That notice listed a number of grounds.  However, in its written submissions, made to the Registrar in lieu of appearing at a hearing, the opponent only pursued those grounds under ss.41, 42, 44, 58 and 60.  Accordingly, these grounds are the subject of this decision and the reasons for it.

The opponent requested that the matter be heard by the Registrar.  However, Mr Sunu requested an adjournment of the hearing, through Mr David Rainey of Pizzeys, Trade Mark Attorneys, on the grounds that, because Mr Sunu had temporarily left his address for service between January 1999 and September 1999, he had allegedly not received any documents regarding the opposition during that period.

Mr Rainey made submissions regarding the application for deferral, as did Mr Sunu, who made separate representations to the Registrar on the matter claiming that he had not had the opportunity to view the opponent's evidence and had thus been disadvantaged.  As the Registrar's delegate, I gave the matter careful consideration, checking the records held by the Trade Marks Office.  Having determined that the Office had not been advised of any change of address and following an assessment of Mr Rainey's and Mr Sunu's arguments, I refused to defer the hearing, giving my reasons to those parties via email, as requested, on 13 December 1999, and also by telephone on that day.

The substantive matter then came before me, as a delegate of the Registrar, for hearing in Canberra.  Neither party appeared at the hearing but relied upon written submissions, both of which I received by facsimile prior to the time set down to determine the matter.  The opponent's submissions were made, under cover of a letter, by Freehills Patent Attorneys (Freehills), while Mr Sunu sent a statutory declaration by himself, which I have taken to be his submissions in the matter.  Mr Rainey of Pizzeys appears to have dropped out of the picture at this point, although I do note that Pizzeys remains the address for service for the applicant.

The Evidence
The evidence in support comprises a declaration by Tony Jones, the Marketing Manager for Electricity Supply Industry (ESI), a business unit of Pacific Dunlop Limited (Dunlop), the original opponent in the matter.  He gives the history of the adoption and use of the trade mark OLEX on cables by the original opponent and its previous owner, Olympic Consolidated Industries (Olympic) since 1973.  Mr Jones gives annual sales figures for 1981/82, and declares as to his belief that the mark OLEX has achieved an extensive reputation over many years in Australia.  He also discusses Mr Sunu's trade mark FINOLEX and various inquiries made by the opponent into Mr Sunu's business.

Mr Jones gives details of the manner of the opponent's use of the OLEX trade mark, and the marketing and promotional activities it has carried out under that mark.  He annexes to his declaration details of promotional expenditure and sales of goods bearing the mark OLEX.  He also annexes details of various trade marks used by the opponent which incorporate that word, and examples of the ways that that mark is used on various promotional and stationery material.

There was no evidence in answer served by the applicant.

Submissions
I will attempt to present here a brief summary of the main points made by both sides in their written submissions, in relation to the grounds relied upon.

On the s.41 ground, Freehills said, in its written submissions, that the subject mark was not capable of distinguishing the applicant's cables from those of the opponent, arguing that the test was whether other traders would honestly wish to use a mark owned by another party, or one closely resembling it, in relation to their own goods - Clark Equipment Co v Registrar of Trade Marks, 111 CLR 511.

The attorney said, in relation to the s.42 ground, that the use of the present mark by the applicant would be contrary to law because it's use would constitute passing off, or breach the Trade Practices Act 1974.  He pointed for support, in these contentions, to the Office decision in Paragon Shoes Pty Ltd v Paragini Distributors (NSW) Pty Ltd (1988)13 IPR 323, and also to Taco Company of Australia Inc. v Taco Bell Pty Ltd (1982) ATPR 40-303.

With respect to the opposition ground under s.44, Freehills said that the trade mark FINOLEX, the subject of the present application, was substantially identical or deceptively similar to the trade mark OLEX, which had already been registered by the opponent for cables of all kinds in Class 9, in relation to registration numbers 269699, 274341 and 340861.  The attorney referred to the tests for determining substantial identity and deceptive similarity which were enunciated in Shell Co of Australia v Esso Standard Oil (Australia) Ltd, (1961) 109 CLR 407, and also Australian Woollen Mills Ltd v F. S. Walton & Co Ltd (1937) 58 CLR 641. He said that the addition of the prefix FIN- was of little effect in differentiating the respective marks and, because of the alleged substantial identity or deceptive similarity of the competing trade marks, the registration of the subject mark for goods which were the same or similar to the opponent's would be likely to lead to deception or cause confusion. He referred to several cases for support here, including Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, Pianotist Co's App'n (1906) 23 RPC 774 and Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536.

The attorney pointed to the decisions in De Cordova v Vick Chemical Co. (1951) 68 RPC 103, Polaroid Corp. v N. Sole Pty Ltd [1981] NSWLR 491 and Polo Textile Industries Pty Ltd and Anor. v Domestic Textile Corporation Pty Ltd 26 IPR 246 for support in his argument that the public would see trade marks which ended in the suffix -OLEX and which were used on cables, as being one of a family of marks incorporating the same "idea". He further referred to the decision in Registrar of Trade Marks v Woolworths 45 IPR 411 (the Woolworths Metro decision), saying that the approach of the court in that case meant that the two marks here should be considered deceptively similar because the common element of both marks carried a reputation.  In any case, he said, there had been no claim made by the applicant of any honest concurrent use of the marks, or any evidence to support such a contention.

In relation to the ground under s.58, Freehills said that the opponent was the owner of the OLEX mark in Australia because of its authorship, its use, and its registration of that mark - Shell Company (Australia) Limited v Rohm and Haas Co (1949) 78 CLR 601. The attorney submitted that, because of the similarity of the opponent's OLEX mark to the applicant's FINOLEX mark, then the opponent was the owner of both.

On the s.60 ground, Freehills said that the opponent's OLEX mark had been used extensively and continuously since 1973, in relation to all sorts of cables, and that party had achieved a very extensive reputation in this country being, because of substantial sales and national advertising and promotional activities, "…one of the best known trade marks for cables in Australia".  The attorney said that, in contrast, the applicant had not provided any evidence at all of the use of the FINOLEX mark on its own goods.  He said that, accordingly, the applicant had not discharged the onus upon it to show that its use of that mark would be unlikely to cause deception in the minds of those who saw it.

Freehills closed its submissions on behalf of the opponent by seeking costs in the matter in favour of that party.

Mr Sunu made statements in his statutory declaration about alleged events which led up to his filing of the application for registration of the trade mark FINOLEX, including agreements between himself and a company in India to register that mark in Australia, and market cables in this country on its behalf.  He also declared as to negotiations which he said had taken place subsequently between various parties.

However, none of this information is corroborated by any evidence at all and, accordingly, I cannot have regard to any unsupported claims which he has made in his declaration.  In that document, Mr Sunu also made further claims about his alleged non-receipt of material in the matter during the period when he had temporarily left his address for service.  However, I had already determined that matter prior to the hearing of the substantive opposition and it has no relevance here.

In summary, there is nothing in Mr Sunu's declaration which goes toward disputing the various grounds raised in the notice of opposition.

Analysis
As I have previously stated, in giving the reasons for my decision in this opposition matter, I will deal with the grounds of opposition raised by the opponent via its attorneys' written submissions.

Section 41(2)
This part of s.41 section reads:

(2) An application for the registration 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 registered (designated goods or services) from the goods or services of other persons.

The opponent's attorney has argued that the present mark FINOLEX is not capable of distinguishing the applicant's goods from those of the opponent because that mark closely resembles the latter party's own trade mark OLEX.  However, I cannot agree that the mark is not capable of distinguishing the applicant's goods under this section of the Act.  This is because s.41 defines the basic tests for the mark to be registered by the applicant, and makes no reference to marks owned by other persons, which may be in conflict with the applicant's mark.  The opponent has done nothing here to show that the subject mark is not inherently adapted to distinguish the applicant's goods.

Accordingly, I dismiss the ground of opposition based on s.41.

Section 42(b)
This part of s.42 reads:

42.      An application for the registration of a trade mark must be rejected if:

…

(b)       its use would be contrary to law.

The cases cited by the opponent's attorney to support this ground included findings of various courts in relation to whether passing off or illegal activities had occurred.  However, I have not been presented with any decision of a court, nor any evidence which might show me that something unlawful has occurred in relation to the present application for registration of the opposed mark.  The Registrar has no competence to decide matters beyond the Trade Marks Act 1995 and he is unable to determine whether there have been breaches of other Commonwealth or State Acts.

I therefore find that the opponent is not successful on this ground of its opposition.

Section 44
The relevant part of this section reads:

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.

There is no doubt that the goods contained in the specifications of the respective trade marks of both parties are the same.  Those specifications all include cable goods in Class 9.  Additionally, the applicant's registered marks, numbers 269699, 274341 and 340861, all comprising the word mark OLEX, were registered in the 1970s and obviously have earlier priority dates than the present application.

The matter therefore boils down to whether or not the competing trade marks are substantially identical or deceptively similar to each other.  As pointed out by Freehills, the tests to determine these questions are conveniently laid out in such cases as Australian Woollen Mills and Shell v Esso, both supra, where, in the latter case, Windeyer J said, at 414-415: (in relation to substantial identity)

(the marks should) 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,

and, (in relation to deceptive similarity)

The marks are not now to be looked at side by side.  The issue is not abstract similarity, but deceptive similarity.  Therefore the comparison is the familiar one of trade mark law.  It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions.

I have compared the marks in question side by side, as per the tests expounded by Justice Windeyer in the Shell case, supra.  They are, on one hand, the opponent's mark OLEX, and on the other, the applied-for mark FINOLEX.  Although both marks share the common ending OLEX, the latter mark also contains the prefix FIN-.  Given that distinction, and despite Freehills claim that the prefix has little effect, I am of the opinion that the marks are visually and phonetically different to each other.  Accordingly, I cannot agree that the applicant's mark is substantially identical with opponent's word mark.

I now move on to the question of whether the marks are deceptively similar.  Freehills have argued that the word OLEX, being wholly contained within the word FINOLEX, is deceptively similar because it would be perceived by the relevant cable-buying public as being one of a "family" of OLEX marks.  A search of the Australian Trade Marks Office database does reveal a number of registered trade marks owned by the opponent which include the word element OLEX.  However, as the opponent was advised in an Official letter of 22 May 1998, there are also co-existing registrations for trade marks, owned by entities other than the opponent, such as MOLEX, ROLEX, JIHOLEX, TROLEX and NAPOLEXX, for goods in Class 9 which could encompass cables in their specifications.  What I do need to consider, given the accepted tests, is whether a person of normal intelligence and memory would retain the same impression based on a recollection of both the respective parties' marks here.

I note that, as a general principle, the first letter or syllable of word trade marks is regarded as the most important means of distinguishing between them - London Lubricants ( 1920) Ltd.'s Appn. 42 RPC 264. Here, the applicant's mark includes the prefix FIN- which adds another syllable and a different appearance to the element common to both competing marks -OLEX. I am of the opinion that the average person, when referring orally to the present mark, would place emphasis on the prefix, viz, FINolex and would not give equal regard to the suffix.  This is also true, I think, in any visual comparison of the respective marks.  Additionally, I believe that, even given the reputation that the opponent's declarant, Mr Jones, says that it enjoys for its OLEX mark, that most people in the appropriate market would make a visual distinction between the competing marks by regarding the mark FINOLEX as one word, rather than, as claimed by the opponent's attorney, a combination of the inconsequential prefix FIN- with the common ending -OLEX.  Even given that shared element, I would expect consumers to be able to differentiate the marks owned by the parties here.  Given the above, I do not think that the ordinary purchaser of cables in the appropriate market would consider that the applicant's and opponent's marks are deceptively similar to each other.

Consequently, I must find that the opponent is not successful on the s.44 ground.

Section 58
This section reads:

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

The term "owner" in the Trade Marks Act 1995 equates to that of "proprietor", as referred to in the Trade Marks Act 1955 - see p.2 of the Readers Guide to the 1995 Act.  The initial onus, with respect to ownership, is on the applicant for registration.  As is stated in s.27 of the Act:

27.(1) A person may apply for the registration of a trade mark in respect of goods and/or services if:

(a)the person claims to be the owner of the trade mark; and

(b)one of the following applies:

(i)the person is using or intends to use the trade mark in relation to the goods and/or services;

(ii)the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

(iii)the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

The dispute of a claim to ownership of a mark can only proceed to be considered where the opponent can also show that the word or words it relies upon as being owned by itself or another person is substantially identical with the mark, the subject of the application for registration.  As Gummow J. said in Carnival Cruise Lines Inc v Sitmar Cruises Ltd. (1994) AIPC 91-049 at 38,114, when referring to the concept of proprietorship in the Trade Marks Act 1955, and to Shell Co. (Aust.) Ltd v Rohm and Haas, supra:

[Shell v Rohm and Haas] does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice. The phrase "substantially identical"  was discussed by Windeyer J. in The Shell  Company of Australia Limited v Esso Standard Oil (Australia) Limited (1961-1963) 109 CLR 407 at 414.

As I have already found, in relation to the s.44 ground, that the applicant's and the opponents trade marks are not substantially identical with each other - or indeed deceptively similar - then this leg of the opposition must also fail.

Section 60
This section reads:

60. 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.

I have already found that the respective trade marks are neither substantially identical nor deceptively similar to each other.  That being the case, it is not necessary for me to further explore whether deception or confusion would be caused if the presently applied-for mark is used on the goods in the specification, in the light of the opponent's reputation in the trade mark in Australia.

However, notwithstanding my finding of a lack of substantial identity or deceptive similarity between the marks, I think that, had I decided for the opponent on either of those issues, then it would have needed to have done more than it has here to show that there existed a sufficient reputation in Australia for its marks so that deception or confusion would be likely to occur because of the subject mark's use.  There is no change in the law from the Trade Marks Act 1955 that there is an evidentiary onus on the opponent, in the first instance, to establish the extent of its reputation in Australia - re Heery J., when referring to s.28 of that Act, in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 at 501.

Mr Jones, in his declaration, does provide impressive promotional and sales figures.  Nevertheless, the opponent would have needed to establish that its marks' reputation was sufficient amongst a substantial number of persons, as at the critical date of the filing of the present application - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, so that deception or confusion was bound to occur amongst a substantial number of people, likely to be concerned in the purchasing of the particular goods, because of the use of the applicant's mark - as per Kendall Company v Mulsyn Paint and Chemicals 109 CLR 300. That being the case, then I would have expected that some supporting declarations by those in the trade attesting to such a status should have been included to put the matter beyond doubt. This could have perhaps been supported by some other material which might have helped to establish a sufficient reputation as at a particular date.

Accordingly, I find that the opponent is not successful on this ground of its opposition.

Section 55
This section reads:

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.

Having due regard to the provisions of s.55, nothing has been done, either in evidence or in the opponent's submissions, which has convinced me, as the delegate of the Registrar, that I should decide otherwise than to register the trade mark, the subject of this application.

Conclusion
I have found that the opponent has not succeeded on any of the grounds of its opposition.  Accordingly, I dismiss the opposition and direct that the mark should proceed to registration, providing that the registration fee has been paid.

Costs
Mr Sunu made no representations as to costs and it would seem unlikely that there would be any given his self representation for most of the proceedings, the lack of evidence served on his behalf and his non-appearance at the hearing.  However he is entitled to any costs that are legitimate, given that the opponent has failed in its case.

Accordingly, I order that the opponent pay the applicant's costs in the matter.  On application those costs will be taxed and allowed by an officer of the Trade Marks Office, appointed for that purpose.

Ian Forno
Hearing Officer

11 May 2000