BATMark Limited v Speedlight Pty Ltd

[2004] ATMO 5

TRADE MARKS ACT 1995

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

Re:Opposition by BATMark Limited to registration of trade mark application 866941(9, 34) - BAT & DEVICE - filed in the name of Speedlight Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent: Trevor Stevens of Davies Collison Cave, Attorneys

Applicant: no appearance

Decision:

Section 52 opposition: ss 44 and 60 grounds established for Class 34 goods. Registration refused unless application amended to delete Class 34 goods.

Costs awarded against the applicant

Background

1. Speedlight Pty Ltd (“the applicant”) has filed application to register the trade mark, details of which follow:

Application Number:

866941

Priority date:

21 February 2001

Goods:

Class 9: Goggles and sunglasses; head gear and face gear for cyclists for protection against accident and injury; protective gloves for cyclists; fashion spectacles; optical goods; reading glasses

Class 34: Tobacco, raw or manufactured; smokers' articles; matches

Trade Mark:

Advertised:

18 July 2002

1. On 18 October 2002, BATMark Limited (“the opponent”) filed a notice of opposition pursuant to section 52 of the Trade Marks Act 1995 (“the Act”). The notice specified 10 grounds of opposition, in effect each of the grounds provided by the Act.

2. The matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Sydney on 28 October 2003.  The opponent was represented by Mr Trevor Stevens of Davies Collison Cave, Patent and Trade Mark Attorneys of Sydney.  The applicant was not represented at the hearing, nor did it make any written submissions.

3. Three grounds of opposition were relied on at the hearing, being those under sections 43, 44 and 60 of the Act. The opponent did not pursue the remaining grounds.

Evidence

1. The evidence filed in these proceedings consisted of a declaration by Murray Gilliland Charles Anderson, the Company Secretary of BATMark Limited of London.  The declaration was executed on 8 May 2003 and contained 11 exhibits, numbered Exhibit 1 to Exhibit 11.

2. The applicant did not file any evidence in these proceedings.

Ground 1 - s43 Connotation Likely to Deceive

1. Section 43 provides that registration may be refused if, because of some connotation that the trade mark (or constituent part of it) has, the use of the trade mark is likely to deceive or cause confusion.

2. It has been confirmed in Winton Shire Council v Lomas (2002) 56 IPR 72 that this ground is directed to the mark itself, and not to any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect is dealt with under s60.

3. It was submitted that a second meaning of connotation has been recognized by the Registrar of Trade Marks, that is where there is a connotation of sponsorship, endorsement, affiliation or connection with another entity may arise.  This other entity must possess a degree of notoriety that surpasses the concept of reputation.

4. The evidence clearly showed that the opponent is widely known by its acronym bat.  I am satisfied that within the tobacco industry that the opponent is universally known by that acronym.  The opponent itself has identified with the acronym since 1915.  However, I am not satisfied that the evidence clearly establishes more than reputation.

5. I dismiss this ground of opposition.

Ground 2: s60 Prior Reputation

1. To satisfy section 60, the opponent has the burden of establishing the following elements:

¨    a pre-existing trade mark;

¨    substantial identity or deceptive similarity between the applied for trade mark and the pre-existing trade mark;

¨    the acquisition of a reputation in Australia by the pre-existing trade mark; and

¨    a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

1. 
   The opponent relied on a common law trade mark (which is part of a registered trade mark) that appears as follows:

1. The evidence satisfies me that the above mark has been used as a trade mark in relation to tobacco products internationally and in Australia since about 1963.

2. Applying the well known tests derived from Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641, and Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, I am satisfied that the applicant’s mark, when used in relation to tobacco products, is deceptively similar to the opponent’s common law mark.

3. The next question in respect of the section 60 ground, however, is whether the opponent has shown a sufficient reputation in its trade mark to satisfy the requirements of subsection 60 (b), such that the reputation is wide enough that deception and confusion is likely.

4. It is not necessary to prove reputation by direct evidence of consumer appreciation; it is commonplace to infer reputation from a high volume of sales, together with substantial advertising and other promotions: McCormick & Company v McCormick [2000] FCA 1335, at paragraph 86.

5. The evidence establishes that the opponent has a 45% market share in the tobacco industry in Australia.  It is forbidden to advertise tobacco products in Australia; however, it still has a substantial volume of sales.  I am satisfied that evidence allows me to infer a substantial reputation in respect of tobacco products.

6. I am also satisfied that there is a real and tangible likelihood that use of the applicant’s mark would deceive or cause confusion.  The source of the deception or confusion is obvious - the use of the word bat, with or without a bat device, with tobacco products is likely to suggest to likely purchasers that the products are those of the opponent.

7. I find that this ground of opposition has been established in respect of Class 34 goods.

Ground 3: Section 44 - Conflicting Trade Mark

1. To establish the s44 ground, the opponent must establish all of the following:

¨    At the priority date

¨    there was a substantially identical or deceptively similar trade mark application or registration

¨    in respect of similar goods or closely related services

¨    in the name of a person other than the applicant.

1. 
   The opponent has the following trade mark, number 634885, registered in Australia with a priority date of 13 July 1994:

1. This trade mark is registered in Class 34 for cigarettes, tobacco, tobacco products, smokers’ requisites, lighters and matches.  I am satisfied that these are similar goods to those of the applicant.

2. I have already found that the bat word element of this mark is deceptively similar to that of the applicant.  I am satisfied that the same conclusion can be drawn in respect of the opponent’s registered trade mark.  Therefore, I am satisfied that the applicant’s trade mark is deceptively similar to the opponent’s registered mark.

3. I find that this ground of opposition has been established in respect of Class 34 goods.

Decision and Costs

1. I find that the grounds of opposition under ss 44 and 60 have been established. However, I further find that the grounds apply to the applicant's trade mark, in relation only to the Class 34 goods which are included in the applicant's present statement of goods. Therefore, my decision in relation to the applicant's trade mark as it stands must be to refuse registration.

2. However, provided that the applicant, within fourteen days of the date of this decision, consents to restrict its specification of goods to the existing Class 9 goods and deletes the Class 34 goods, the trade mark 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. If after fourteen days have expired from the date of this decision and the applicant has not sought to amend its application as stated above, pursuant to s55 of the Act, I refuse to register the mark.

3. Both parties sought their costs. I see no reason why costs should not follow the general rule that costs are usually awarded against the unsuccessful party.  The opponent has succeeded in its opposition, which was presented in terms of protecting its interests in respect of Class 34 goods.  I award costs against the applicant and direct that the applicant pay the costs of the opponent in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

Jock McDonagh

Hearing Officer

Trade Marks Hearings

30 January 2004