Bausch & Lomb Incorporated v Karl Storz & Ci Kg

TRADE MARKS ACT 1995

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

Re:Opposition by Bausch & Lomb Incorporated to registration of trade mark application 874554(9, 10) - STORZ THE WORLD OF ENDOSCOPY (LOGOFORM) - filed in the name of Karl Storz & Co KG.

Delegate:

Iain Thompson

Representation:

Opponent: Hamish Bevan, counsel, instructed by Simon Williams of Spruson & Ferguson.

Applicant: Carmen Champion, counsel, instructed by FB Rice & Co.

Decision:

2008 ATMO 71

s52 opposition - s42 - agreement between parties - use not contrary to law; s44 - subsection 44(3) applied; s60 - not established deception or confusion would occur because of reputation of opponent’s trade mark.

Opposition not established.

Costs ordered against opponent

Background

This opposition to trade mark registration under section 52 of the Trade Marks Act 1995 (‘the Act’) concerns an application filed in the name of Karl Storz & Co GmbH (‘the applicant’) of Tuttlingen, Germany. Current details of this application are:

Application No: 874554

Priority Date: 3 March 2001

Goods:Class: 9 Endoscopes for technical purposes and parts thereof, including probes for technical purposes, and illuminating and lighting apparatus, in particular for endoscopy; cameras, in particular CCD-cameras, in particular for endoscopy; microscopes; adapters and cables for connecting cameras to endoscopes; picture reproduction and picture recording apparatus, in particular for endoscopy; ultrasonic generators; training, teaching and instructing apparatus; test and check apparatus and instruments for the aforesaid apparatus and instruments; safe keeping and transport receptacles adapted to the aforesaid apparatus and instruments; data processing apparatus, data media, documentation apparatus for endoscopy.
Class: 10 Surgical, medical, dental and veterinary apparatus and instruments, in particular endoscopes for medical purposes and parts thereof; orthopaedic articles; suture materials; test and check apparatus and instruments for the aforesaid apparatus and instruments; safe keeping and transport receptacles adapted to the aforesaid apparatus and instruments; suction and irrigation apparatus for medical applications; high frequency apparatus and instruments for medical purposes; high-frequency voltage generators for surgical applications; ultrasonic apparatus and instruments for medical applications.

Trade Mark:

(‘the opposed trade mark’)

It is my understanding that the material appearing in the alphabetical letter ‘O’ in the opposed trade mark is a representation of a globe.
The application was advertised on 13 February 2003 in the Australian Official Journal of Trade Marks as accepted for possible registration.
On 13 August 2003, after seeking and receiving an extension of time in which to do so, Bausch & Lomb Incorporated, (‘the opponent’) of Rochester, New York, United States of America, filed Notice of Opposition (‘the Notice’) to registration of the trade mark.
The Notice includes the following grounds of opposition:
(1)        The use of the Trade Mark would be contrary to law and, in particular, contrary to the terms of an agreement dated 26 April 1982 between Storz Instrument Company and Karl Storz GmbH & Co.
(2)        The Trade Mark is substantially identical with or deceptively similar to:
a.a trade mark registered by another person in respect of similar goods or closely related services; or
b.a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
the priority date for the registration of the 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.
(3)        The Trade Mark is sought to be registered in respect of particular goods and is:
a.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, had acquired a reputation in Australia; and
b.because of the reputation of that other trade mark, the use of the Trade Mark would be likely to deceive or cause confusion.
These grounds invoke sections 42, 44 and 60 of the Act.
The parties served their evidence as allowed by the regulations and the matter came before me as a delegate of the Registrar of Trade Marks in Sydney on 24 July 2008. Hamish Bevan, counsel, instructed by Simon Williams of Spruson & Ferguson represented the opponent. Carmen Champion, counsel, instructed by FB Rice & Co, represented the applicant.

The Evidence

Evidence in Support

This matter is slightly unusual in that central to the evidence and the main ground of opposition under section 42 of the Act is an agreement – the outcome of these proceedings is said to be dependant on a correct interpretation of that agreement. What is different from the usual is that, viewed in the broad, it does not matter how the agreement is interpreted because the end result in terms of the opposition is, I consider, the same.
The agreement is exhibited to the declaration of Craig Marshall Stamp, Managing Director of Bausch & Lomb (Australia) Pty Ltd, a wholly owned subsidiary of the applicant.
The agreement is between Storz Instrument Company, then a corporation of the State of Missouri, and Karl Storz GmbH & Co., which was then a corporation of the Federal Republic of Germany and was executed on the same day (26 April 1982) in St Louis (Missouri) and Tuttlingen (in what was then the Federal Republic of Germany). There is no witness to the execution of the agreement in St Louis on behalf of Storz Instrument Company.
Mr Stamp says:
In 1998, the Storz Instrument Company merged with Storz Ophthalmics, Inc, which itself subsequently merged with Chiron Vision Corporation that same year. Subsequently in 1998, Chiron Vision Corporation changed its name to Bausch & Lomb Surgical, Inc. In March 2001, Bausch & Lomb Surgical, Inc merged with Bausch & Lomb, Incorporated. By virtue of the above mergers, Bausch & Lomb, Incorporated acquired all of the business assets of the Storz Instrument Company, including the trade marks “STORZ” and “STORZ INSTRUMENT COMPANY” (“Bausch & Lomb’s STORZ Marks”).
The above history requires further discussion. The United Kingdom Intellectual Property Office issued a decision concerning a similar matter involving the same parties. Mr Salthouse, for the UKPTO Registrar, said:
The opponent filed a witness statement, dated 13 June 2006, by Jon Webster, the opponent’s Senior Trade Mark Counsel. He states that he has full access to the opponent’s records and is authorised to make his statement. He states that in 1997 his company acquired the business of Storz Instrument Company including its trade mark portfolio. [Stress added]
Subsequently, Mr Salthouse says:
The applicant filed two witness statements. The first, dated 29 January 2007, is by Dr Sybill Storz the Managing Director of the applicant company. She states that in 1982 her company entered into an agreement with Storz Instrument Company, later purchased by the opponent. [Stress added].
Inasmuch as Mr Stamp’s evidence might suggest that some share swap resulted in the merger of the opponent and its predecessors, this is at least appears to be open to question – the acquisition of the opponent’s trade marks appears more likely to have been via a takeover, or takeovers. Further, it will emerge during my discussion of the evidence that Storz Instrument Company was also, during some relevant period, a subsidiary of American Cyanamid Company. Mr Stamp’s evidence thus appears to be incomplete on this point.
The portion of the agreement most relevant to these proceedings reads as follows:
The primary purpose of this Agreement is to define the ways in which the word “Storz” can be used an a trademark or service mark, or as part of a trademark or a service mark by STORZ INSTRUMENT or by KARL STORZ, such as on their respective goods, on displays associated with their respective goods, in catalogs and in advertisement, as examples of typical trademark and service mark usages. Company names and their usages are not the primary concern of this Agreement, and the word “Storz” can continue to be used as part of the company names of STORZ INSTRUMENT or of KARL STORZ or of any of their distributors presently in existence, including the existing company names, for the purpose of identifying the company. However, it is agreed that, in any company name that includes the word “Storz”, only KARL STORZ may use any of the following words: “Endoskop”, “endoscope”, “endoscopy”, the word or formative “endo-”, or any foreign word or term in any language having the same meaning or a similar meaning to any of the foregoing.
With the foregoing in mind, the parties agree that wherever they use the word “Storz” in the trademark or service mark sense, it will be used alone only as specified below, and when used with a formative, only as specified below:
As to STORZ INSTRUMENT:
i)         STORZ-USA
ii)        STORZ INSTRUMENT CO. - St. Louis, MO
iii)       STORZ INSTRUMENT CO. - USA
iv)       STORZ INSTRUMENT - USA
v)        STORZ INSTRUMENT - USA - GmbH
vi)       STORZ-STORZ Block Logo Design as shown in Exhibit A hereto
vii)      STORZ in stylized letter form as in U.S. Reg. No. 623,625 (Karl Storz GmbH            Co. agrees not to use the stylized letter form as in U.S. Reg. No. 623,625)
As to KARL STORZ:
i)         KARL STORZ GERMANY
ii)        STORZ-GERMANY
iii)       KARL STORZ
iv)       KARL STORZ USA
v)        KARL STORZ ENDOSCOPY-AMERICA
vi)       KARL STORZ-ENDOSCOPY
vii)      STORZ ENDOSKOP
viii)     KARL STORZ ENDOSKOP
ix)       KS STORZ
x)        The initial “K” may be substituted for “KARL” in any of the foregoing.
As to both parties, they may supplement any of the above examples with additional trademark formatives, whether by way of letters, numbers, words, syllable, or designs.
[…]
It is the intention of both parties that this settlement between them shall be worldwide in scope, and shall result in respective tradename, trademark and service mark positions which will properly be enforceable not only as between the parties, but also against all other entities.
[…]
Both parties will take all reasonable steps in all countries to avoid any likelihood of confusion between their respective marks and goods. This will be done, for example, by the agreed upon use of the tradenames and marks set forth in paragraph 3, above, and also by maintaining distinct differences in the packaging, trade dress, labeling, color, advertising and promotion of the parties’ respective marks and products. If any instances of confusion are found to exist, the parties will take whatever reasonable steps are appropriate in an attempt to resolve the problem.
This Agreement shall be binding upon and inure to the benefit of affiliates and subsidiaries of the parties and their successors.
There is no proviso in the agreement as to the laws and jurisdictions that govern it.
Mr Stamp also deposes that the opponent has sold medical instruments under the opponent’s trade marks in Australia since 1989 – these have included those in the following categories:
Hand-held instruments for use in various types of surgery (including eye, ear, nose, throat, plastic and reconstructive surgery, including for human and veterinary application;
Disposable or consumable products for use in eye surgery (including for human and veterinary application);
implants for use in eye surgery,
Intra-ocular lenses;
Phaco-emulsification systems;
Diagnostic apparatus for use in ear, nose and throat, plastic and reconstructive surgery;
Inner ear instruments;
Trachea, Laryngectomy and Speaking Tubes for use in laryngectomy and related procedures;
Transsphenoidal instruments for use in transsphenoidal procedures such as the removal of pituitary tumours;
Trocars and trocar needles used to make incisions in body tissue;
Miscellaneous other medical and surgical equipment for use in various types of surgery (including eye, ear, nose, throat, plastic and reconstructive surgery);
Nasal endoscopes and accessories for nasal endoscopes.
Confidential sales figures are exhibited to Mr Stamp’s declaration. In the years after the acquisition of the Storz Instrument Company or its successor by the opponent these sales are in the order of a couple of million dollars a year – prior to the acquisition, the sales figure were well in excess of this amount.
Mr Stamp’s evidence also draws attention to the opponent’s trade mark registrations within Australia. These are:

Reg No: 306138

Priority Date: 7 April 1977

Goods: Class: 10 Medical and surgical apparatus and instruments including endoscopy instruments and equipment

Trade Mark: STORZ

Reg No: 451084

Priority Date: 27 August 1986 (Status ‘Removed – Non Use’)

Goods:Class: 10 Surgical, medical, dental and veterinary instruments, equipment and apparatus, and parts and fittings therefor included in this class

Trade Mark:

Reg No: 559101

Priority Date: 5 July 1991

Goods:Class: 10 Medical devices and in particular, for intraocular lenses and all other goods in this class

Trade Mark:

Reg No: 559102

Priority Date: 5 July 1991

Goods:Class: 5 Pharmaceutical products and all other goods in this class

Trade Mark:

Evidence in Answer

The deponent is Mr Jack Frydrych who is CEO and General Counsel of Karl Storz North American region.
In relation to the agreement, Mr Frydrych attests to correspondence between the parties concerning the trade mark which appears immediately below:

The trade mark was one which the applicant proposed to use and had some concern that such use might have been outside the terms of the agreement.
On 18 June 1985, Norman Silbertrust, Executive Vice President of the applicant wrote to Robert Blankemeyer, Senior Vice President, Sales and Marketing, of Storz Instrument Company saying:
The Karl Storz Companies have become increasingly dissatisfied with their basic logo, and have gone to a European designer to prepare a new and more attractive one. We have kept in mind our obligation not to use “storz” without additional formatives, also, we have kept in mind the stylized form of your mark, which the Karl Storz companies have agreed not to use.
Attached to this letter is a copy of a logo which the Karl Storz companies propose to adopt within the next few months. It is intended to be used world-wide, and will always include some form of “endoscope” or of “endoscopy”. The logo will be used in a total size that depends on where it is displayed. On letter-heads and cards it will be smaller, and on posters and wall displays it will be larger, but the relative proportions of the formatives will remain the same, the proportions having been determined by aesthetic considerations.
Should you have any adverse comments or suggestions about the enclosure, please advise as at once. Otherwise we will assume that you have no objection.
On 24 June 1985, Mr Blankemeyer responded to the above, saying:
In regard to our recent discussion regarding the Karl Storz logo changes, I would like to offer the following:
•         The proposed logo in no way offends the letter or spirit of our Agreement on trademarks.
•         I feel you should avoid utilizing the color combinations of blue, white or silver.
•         According to your letter of June 18, you would intend to always use this logo with the words “endoscope or “endoscopy”, and I am sure that would be practical on literature, posters and even business cards,, but I wonder if it is practical to set it on, instruments themselves? I am sure you recall the instruments themselves can no longer say “Storz”, and I would appreciate knowing how you are going to identify endoscopic instruments.
•         I would also appreciate knowing what your intentions are in regard to surgical instruments (such as ear, nose and throat instruments). What form of logo do you intend to use on instrument catalogs, posters, etc.? Obviously it is not your intention to use the new logo format for these purposes.
In summary, we have no objections to your proceeding as planned. We do, however, have a concern as to what you will do concerning surgical instruments, and would appreciate your responses to those questions.
The response, dated 22 July 1985, from Mr Silbertrust is in the following terms:
Thank you very such for your response to my letter concerning our new logo design. In order to even more clearly distinguish ourselves from your company, we have now developed a new version of our future logo.
This one points out the “Karl Storz” in addition to “Storz Endoscopy”. We are sure that you will like this version even better than the other one presented to you in my letter of 18 June 1985. We would be pleased to know your opinion.
Karl Storz in Tuttlingen has informed us that they will use “Karl Storz Germany” on their instruments in the future, if at all possible. Where this is not the case, the name an the instruments will certainly be according to our agreement.
Further correspondence, from early in 1989, appears to show that a predecessor of the opponent was aware of the opposed trade mark, or a trade mark very similar to it. On 23 February 1989, Mr Garland C Boothe, Manager of the Trademark and Copyright Department of American Cynamid Company wrote to Mr Silbertrust of the applicant stating:
You may be aware that on April 26, 1982 Karl Storz GmbH & Co. of Tuttlingen, West Germany, entered into an agreement with Storz Instrument Company, now a subsidiary of American Cyanamid Company, intended to resolve various problems each company had with reference to the use of the STORZ name worldwide.
It has recently come to our attention that some of your literature and your display at the American Academy of Otolaryngology Trade Show in Washington, D.C. violates this agreement. Since the agreement was intended to avoid confusion between our respective companies and the products of our respective companies, I would hope that this situation can be remedied as quickly as possible.
Specifically, it was agreed by Paragraph 3 [of the agreement] that Karl Storz would use the name STORZ only in conjunction with additional letters or words to create phrases such as KARL STORZ, KS STORZ or STORZ GERMANY. It was intended that the name STORZ would not be used all by itself. Nevertheless, that is what appears at the top of the cover of your brochure entitled, “STORZ (in large type) The World of Endoscopy.” The same usage of STORZ standing alone appears at the upper right-hand corner of the remaining pages of this brochure.
Likewise, the sign at the American Academy of Otolaryngology uses the name STORZ standing alone followed in the same sign in much smaller type by the phrase “The World of Endoscopy.”
In addition, we note that much of your labelling and packaging material is now printed in the blue color with white background that has been used by our company for many years. This usage also is likely to confuse doctors and other professionals who are customers for our respective products.
A response to Mr Boothe addressing this letter came from Donald D Mon, Attorney at Law, on behalf of the applicant. Mr Mon (relevantly to this matter) said:
Section 3 of the Agreement states that with certain limited exceptions neither Storz Instrument nor Karl Storz may use the word “STORZ” alone (the exceptions are for Storz Instrument’s use of the STORZ-STORZ block Logo design and the word “STORZ” in its stylized form as shown in U.S. Registration No. 623,625). Section 2 of the Agreement specifically reserves the words “Endoskop”, “Endoscope” and “Endoscopy” for the exclusive use of Karl Storz. In addition, Section 3 approves the use of the names “Karl Storz Endoscopy-America,” “Karl Storz-Endoscopy”, “Storz Endoskop”, and “Karl Storz Endoskop”, and states that Karl Storz may supplement any of those names “with additional trademark formatives,” whether by way of letters, numbers, words, syllable,’ or designs”.
The disputed design contains a large stylized “STORZ” on top and one of the three phrases “The World of Endoscopy”, “Karl Storz-Endoskop” or “Karl Storz Endoscopy” underneath. As you can see, the word “STORZ” is not used alone, but is always accompanied and modified by some form of the word “Endoscopy”. These three phrases are clearly in the tenor of the names approved in Section 3 of the Agreement. The “STORZ” above each phrase is presented in a highly stylised form (e.g., the bullseye of the “O” as well as a stylized type style) in the manner of a design, and thus would be a supplemental formative permitted by Section 3 of the Agreement.
Karl Storz adopted variations on the disputed designs in 1985, after consultation with Storz Instrument. Letters dated June 18, 1985, June 24, 1985 and July 22, 1985 were exchanged between Norman Silbertrust and Robert H. Blankemeyer, the Senior Vice President Sales and Marketing for Storz Instrument at that time. Please note that these designs were transmitted to Mr. Blankemeyer for his review, and that his letter of June 24, 1985 specifically states that “the proposed logo in no way offends the letter or the spirit of our Agreement on trademarks”. Karl Storz relied on this prior approval when adopting its new designs, and subsequent modifications have been minor (“STORZ-Endoscopy” to “STORZ-The World of Endoscopy” for example).

The balance of the evidence in answer is a declaration by Gordon Stenning who is Managing Director of N Stenning & Co Pty Ltd of Camperdown, NSW, which company has been the exclusive distributor in Australia of the applicant’s goods.
Mr Stenning states that he is familiar with the applicant’s sales and promotion of its goods in Australia, including those sold under the opposed trade mark and is authorized to make his declaration by the applicant.
Mr Stenning says:
As Karl Storz’s exclusive distributor in Australia, my Company attends congresses and meetings, and holds workshops for interested customers and doctors in Australia.
As Karl Storz’s exclusive distributor in Australia, my Company also distributes Karl Storz catalogues to medical institutions in Australia, which institutions place orders for the Goods as required.
I am aware, and the records of my Company show, that since 1988, Karl Storz has used the Trade Mark on the front page of all Karl Storz catalogues for medical, veterinary, and industrial instruments and accessories that my Company has distributed in Australia.
Attached and marked GS1 is a copy of a Karl Storz catalogue bearing the Trade Mark and featuring goods in the field of aesthetic surgery that my Company has distributed in Australia. GS1 features a wide variety of surgical instruments in the field of aesthetic surgery.
Attached and marked as GS2 is a copy of a Karl Storz publication bearing the Trade Mark and featuring goods in the field of maintenance and sterilization.
Attached and marked as GS3 is a set of copies of the front page and Table of Contents for
Karl Storz catalogues bearing the Trade Mark and featuring goods in the following fields:
•         Cardiovascular Surgery
•         Laparoscopy
•         Proctology
•         Anesthesiology & Emergency Medicine
•         Thorax
•         Veterinary Endoscopy - Large Animals
•         Anesthesiology & Intensive Care Medicine
•         Industrial Endoscopy
•         Urology
•         Gynecology
•         Plastic Surgery
•         ENT
Mr Stenning goes on to give annual sales figures for goods sold under the opposed trade mark – these, in the two or three years immediately preceding the priority date, were in the order of five times greater than the sales of the opponent’s goods under its trade mark.

Evidence in Reply

This declaration is by Robert Blankemeyer, who is mentioned above in connection with correspondence between Storz Instrument Company and the applicant in 1982. Mr Blankemeyer is now President of ENT, Ophthalmic and Neuro Technologies Division of Medtronic Xomed, Inc. He avers:
From the early 1900’s until the 1950’s and beyond, Storz Instrument had manufactured and distributed ear, nose and throat and ophthalmic instruments in the United States (“US”) (and around the world) under or by reference to the trade mark “STORZ”. From about the 1950s to about the late 1970’s, Storz Instrument became the Applicant’s exclusive US distributor of endoscopy instruments. From about the 1950s, the Applicant used the mark “STORZ” on its products and packaging and also adopted a blue and silver box design similar to the blue and white livery which had been used by Storz Instrument for many years in the US (and worldwide) prior to 1950. While Storz Instrument and the Applicant manufactured and sold instruments for different markets, there was an overlap between their respective customers (comprising doctors, nurses and purchasing agents at hospitals) and their channels of trade (both using some of the same distributors and both presenting their respective products at the same trade shows).
In the late 1970’s and early 1980’s, I was aware that an increasing number of Storz Instrument’s customers were becoming confused about whether Storz Instrument and the Applicant were the same company. For example, Storz Instrument’s customers would place an order with Storz Instrument and send payment to the Applicant. I was also aware that the Applicant was filling orders and billing Storz Instrument’s customers, after Storz Instrument had quoted prices to that customer. Storz Instrument’s customer service department would also frequently receive calls from customers inquiring about the Applicant’s products or attempting to contact the Applicant. Furthermore, in the late 1970’s and early 1980’s, the Applicant moved towards direct distribution of its goods in the US, by contacting and taking orders direct from Storz Instrument’s customers and also by using some of the same distributors which distributed Storz Instrument’s goods. In early 1980’s, Storz Instrument and the Applicant ended the exclusive distribution arrangement as it was no longer profitable for Storz Instrument once the Applicant began competing with Storz Instrument to distribute its products directly. At about the same time, the Applicant and Storz Instrument agreed that the growing consumer confusion would not serve either party and to prevent any further confusion between Storz Instrument and the Applicant in the market place, Storz Instrument and the Applicant signed the 1982 Agreement. The 1982 Agreement defined the precise manner in which each party could use and register a trade mark containing the word “STORZ” worldwide.
Mr Blankemeyer also gives his understanding of the impact of the agreement and the intention of the parties – however, for reasons that will become apparent, I do not think that these should be accorded overly much weight in these proceedings.

Further Evidence

A further declaration by Mr Blankemeyer recapitulates the correspondence between the parties already discussed above and confirms that negotiations concerning a new agreement between the parties started in 1992 and persisted through to 1994 culminating with a meeting between representatives of the parties in Chicago, at O’Hare Airport in 1994. I infer that these negotiations came to naught.
The balance of the further evidence from the opponent is an opinion from Floyd A Mandell who is a member of the board of directors of Katten Muchin Rosenman LLP the USA outside trade mark counsel for the opponent. The opinion is about whether the opposed trade mark breaches the agreement between the parties.
I will treat this ‘evidence’ as submission for similar reasons as those stated by the Court in Allstate Life Insurance Co and Ors v Australia and New Zealand Banking Group Limited and Ors (No 33) [1996] FCA 1348. After reciting section 80 of the Evidence Act 1995, and referring to paragraph 24 of an affidavit, Lindgren J says at paragraph 20 of his decision:
I find it convenient at the outset to state some principles of the general law against which, in my view, the effect of para 80 (a) is to be determined. It is fundamental that the ascertainment of the law relevant to a matter before a court and its proper application to the facts of the particular case are of the essence of the judicial function and duty. Although those processes are properly the subject of submission, evidence of opinion, whether as to the identification of the relevant law or as to its proper application, is not admissible. The rationale underlying this fundamental principle may be expressed in various closely related ways: to admit such evidence would be to permit abdication of the judicial duty and usurpation of the judicial function; such evidence cannot be allowed to be probative or to rise higher than a submission; such evidence is necessarily irrelevant.
In the case of foreign law, the only variation required to the foregoing statements is that foreign law is proved in the way in which facts are proved (this is what is meant by statements that foreign law is proved “as fact”), whereas the court is presumed to know the public laws of the State. But foreign law remains law to be applied by the Court. It has been said that where there is a jury, “the only sound view, either on principle or on policy, is that it should be proved to the judge, who is decidedly the more appropriate person to determine it”: Wigmore on Evidence (J H Chadbourn (ed), Little Brown and Co, 1981) vol 9, section 2558 at p 687, and authorities there cited. Accordingly, evidence of opinion as to the proper application of foreign law to fact is not admissible.
Lindgren J went on to find that section 80 of the Evidence Act does not provide an exception to this rule.

Other

Very similar matters to this opposition have been considered by both the United States Patent & Trade Marks Office and United Kingdom Patent & Trade Mark Office – albeit with diametrically opposed outcomes. The British Office allowed the application to proceed to registration and the United States Office refused it.

Discussion

Section 42

Section 42 of the Act provides:
Trade mark scandalous or its use contrary to law
42. An application for the registration of a trade mark must be rejected if:
(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.
Here Mr Bevan, for the opponent, argues that the use of the opposed trade mark would be contrary to law as there is an agreement between the parties and the trade mark is one that is proscribed by that agreement.
Mrs Champion, for the applicant, suggested that I lack capacity to decide this matter on the basis of the agreement as the words ‘contrary to law’ do, in her submission, mean ‘contrary to some statute’. Essentially, her argument is that consideration of the agreement is ultra vires my power as a delegate of the Registrar of Trade Marks.
In support of her argument, Mrs Champion points to the definition of the expression ‘contrary to law’ in Black’s Law Dictionary, which I note is an American publication, albeit with some English contributors:
Contrary to law. Illegal; in violation of statute legal regulations at a given time. In respect of verdict, in conflict with the law contained in court’s instructions.
Mrs Champion also referred me to the Trade Marks Office Manual of Practice & Procedure which addresses the scope subparagraph 42(b) in the following way:
Under section 42, an application for registration of a trade mark must be rejected if use of the trade mark would be contrary to law.
At the examination stage the question of whether a trade mark is contrary to law is usually limited to circumstances where:
the trade mark contains or consists of a sign the use of which is precluded under a particular piece of legislation eg. Telstra Corporation Act 1991, Olympic Insignia Protection Act 1987, Australian Wine & Brandy Corporation Act 1980, or
a court decision has been issued on the particular trade mark which establishes the illegality of its use.
To be caught by this section of the Act, use of the trade mark should breach some piece of legislation, as opposed to being in breach of common law rights. As the function of this office is administrative, rather than judicial, this section is only applied in what is clearly a breach of another Act. In Re Kelly, (1987) AIPC 90-374, the trade mark offended the provisions of the Advance Australia Logo Protection Act 1984, and was precluded from registration by section 28 of the Trade Marks Act 1955.
Examples of statutory legislation which prohibits the use of words and signs as trade marks is given in Annex A1 to this Part of the manual. This list is not exhaustive. Those words and signs the use of which is contrary to law by virtue of these Acts are entered on the prohibited marks section of the Trade Marks database and will therefore be found when carrying out the usual search for conflicting trade marks.
Following the decision in the “Advantage Rent-a-Car” case, (Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683), it became clear that the Registrar was obliged in certain circumstances to give consideration to legislation such as the Copyright Act 1968 (the Copyright Act) and the Trade Practices Act 1974 (the Trade Practices Act). Consideration of these types of issues is unlikely to occur in the examination stages, but may become relevant during opposition proceedings. However, if an examiner is provided with definite information indicating that a particular trade mark would be contrary to any relevant legislation, grounds for rejection must be raised. A specific example here involves copyright in the Aboriginal flag, which was the subject of an Official Journal Notice in 1999. Refer to Annex A2 for the wording of the notice.
As I observed at the hearing, however, the Trade Marks Manual of Practice & Procedure is for the guidance of trade mark examiners and applicants. Hearing officers routinely consider a range of common law issues albeit usually within the confines of the Act, as in for example, ownership of trade marks which arises at common law, uses of trade marks at common law, and distinctiveness acquired at common law.
Further, hearing officers have considered argument and decided matters under common law grounds accessed by opponents via subparagraph 42(b) of the Act. Hearing officer Mr Purvis-Smith observed in Aktibolaget Astra v Biogen Inc [2002] ATMO 50:
The “law” which must be considered is both common and statutory in nature, and is not restricted to any particular field - Advantage-Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683; 52 IPR 24 (ADVANTAGE). However, it is, by necessary implication, incumbent upon an opponent who relies on this ground to set out the law which he or she asserts will be contravened. In the interests of fairness, this should be stated in the notice of opposition or notified to the applicant at some reasonable time prior to the hearing.
And in Inventions Marketing Pty Ltd v Aqualoc Pty Ltd [2002] ATMO 57, I said:
Subsection 42(b) provides a ground of opposition to registration of a trade mark which may be established if an opponent’s evidence satisfies the Hearing Officer that the use of the opposed trade mark would be contrary to law. Thus, subparagraph 42(b) may bring into consideration the contractual relations that might have, in law, existed between the parties. If, for example, the evidence clearly showed that one of the parties had agreed not to use the trade mark, or to transfer the ownership of the trade mark on expiration of a contract, its continued use or ownership of the trade mark could be caught by the provisions of subparagraph 42(b). [stress added]
Historically, Hearing Officers have been slow to look at such issues in proceedings before the Registrar of Trade Marks. However, in Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, at paragraph 26, Madgwick J said:
However, in my opinion the fact that the existence of any contrariety to law is to be exercised in some circumstances by an administrative body and, in other circumstances, by a judicial body does not mean that the phrase “if its use would be contrary to law” should have an ambulatory meaning, depending upon what kind of tribunal is to apply it. Nor can any reticence on the part of an administrative decision-maker to express an opinion on a matter of law be encouraged. The idea that “contrary to law” in the context of judicial proceedings means contrary to all laws, whilst in the context of proceedings before the Registrar it means contrary to laws which are easy for the Registrar to determine or which are “clear cut”, is not sustainable.
And, at paragraph 28, His Honour said:
I acknowledge the claim made by counsel for the Registrar that such an approach requires the Registrar to look at questions of law outside his or her expertise and that this can be difficult and may place a large and onerous responsibility upon the Registrar. However, the Registrar has the comfort that the criterion is that the use “would” not “could” be contrary to law. Further, there is no reason why the Registrar could not seek legal advice before forming his/her opinion. It should also be noted that what is required is that the Registrar form a view as to whether the use of a trade mark would be contrary to law. Such opinion does not have a similar effect to say, a judicial conclusion of law as to breach of copyright in copyright proceedings; the effect is limited to the refusal of registration. In any case, an appeal de novo lies from the Registrar’s decision to this Court where any error of the Registrar may be corrected
I will therefore consider the agreement.
There are a number of issues which have persuaded me that it would be most unsafe to conclude that, because of the agreement, the applicant’s use of the opposed trade mark would be contrary to law.
I will set aside potential problems for a lay tribunal such as which laws and jurisdictions apply to the agreement; the lack of a witness to the Storz Instrument signature; the fact that the opponent was a third party to the agreement when it was executed; and related questions concerning the possible devolution of the related trade marks and agreement to the opponent via the American Cyanamid Company which is not expressly attested to or documented in opponent’s evidence.
Firstly, there is uncertainty as to what has actually been agreed. One clause at paragraph 3 of the agreement states:
With the foregoing in mind, the parties agree that wherever they use the word “Storz” in the trademark or service mark sense, it will be used alone only as specified below, and when used with a formative, only as specified below.
There follows two specific lists of the trade marks which the parties are allowed to use on their own or with ‘formatives’. However, these very specific lists are followed by the clause:
As to both parties, they may supplement any of the above examples with additional trademark formatives, whether by way of letters, numbers, words, syllable, or designs.
The use of the word ‘examples’, above, suggests that the list might not be specific or prescriptive. The word ‘example’ is defined in the Oxford English Dictionary:
1. A typical instance; a fact, incident, quotation, etc. that illustrates, or forms a particular case of, a general principle, rule, state of things, etc.; a person or thing that may be taken as an illustration of a certain quality. Phrases, for, by way of, example; formerly also (ellipt.) example in same sense.
Thus the specific lists of ‘examples’ might be reasonably taken to be illustrative of the general principle to be adopted by the parties when selecting their trade marks, rather than a prescriptive list.
Furthermore, the expression ‘only as specified below’ refers not only to the restrictive list of trade marks but also to the more liberal expression, ‘they may supplement any of the above examples with additional trademark formatives’. It would thus appear that the agreement is capable of a much more liberal interpretation than that which the opponent would have me adopt.
Secondly, the opponent’s predecessor appears to have consented to the applicant’s use of a trade mark similar to the opposed trade mark and not containing the word KARL (or another prescribed word) alongside the word STORZ, this being the trade mark appearing at paragraph 21, above.
In regard to the above trade mark (which is outside the scope of the interpretation that the opponent urges me to put on the agreement), Mr Blankemeyer of Storz Instrument Company said:
The proposed logo in no way offends the letter or spirit of our Agreement on trademarks.
This permission or consent would also tend to support the view that the two lists of trade marks are expressions of a general principle, rather than a prescriptive listing.
Thirdly, the opponent, or its predecessor, has been aware of the applicant’s use of the opposed trade mark since 1989. This trade mark, or one very similar to it, is referred to in correspondence as the STORZ-WORLD OF ENDOSCOPY trade mark. The opponent at that time complained to the applicant about it; Mr Mon, attorney-at-law for the applicant, subsequently wrote to American Cyanamid Company with an explanation that the trade mark was within the scope of the agreement and that it was very similar to the one approved by Mr Blankemeyer. However, the opponent, or its predecessor, did nothing more about it. This appears to be either a tacit assent that the applicant was correct or a consent to the use of the trade mark.

Fourthly, the agreement places an obligation upon the opponent, if any instances of confusion are found to exist, to take whatever reasonable steps are appropriate in an attempt to resolve the problem. If, after twenty years of use of the opposed trade mark, the opponent has taken no steps to prevent use of the opposed trade mark, one might reasonably suspect that no great confusion has resulted from its use. As far as I can determine, these proceedings, and those in the United Kingdom and the USA, are to prevent registration, rather than the use of the relevant trade marks. However, the relevant portions of the agreement appear to me to go to the use of trade marks, rather than their registration.
Fifthly, I think that it should be most difficult to convince me that the use of a trade mark, in these circumstances, would be contrary to law where the opponent has been aware of the use for twenty years and has taken no active steps to prevent it. This opposition is, of course, not an action to prevent the use of the opposed trade mark – it would merely prevent the registration of a trade mark which is being used.
Thus, when I pose the question, ‘Would the use of the opposed trade mark be contrary to law?’ and I take the above factors into account, I find myself saying, ‘Well, possibly, maybe, or perhaps; but not necessarily.’ Thus I am of the view that the evidence shows that the use of the opposed trade mark could be contrary to law, but not that it would be contrary to law.
However, if the use of the opposed trade mark is contrary to the agreement, I consider that the prior course of dealings between the parties concerning the STORZ-WORLD OF ENDOSCOPY trade mark and the assent to the use of the trade mark shown at paragraph 52, combined with the twenty years of the opponent’s continuing inaction in the face of its knowledge of the use of the opposed trade mark, effectively act as an assent to its use. Furthermore, refusal to register the opposed trade mark on the basis of the alleged breach of the agreement would, given the evidence of the opponent’s prolonged inaction in the face of the use of the opposed trade mark which is presently continuing, change nothing vis-à-vis a resolution of the alleged breach of the agreement.
The opponent has not established its ground under section 42 of the Act.

Section 44

Section 44 of the Act relevantly provides:
Identical etc. trade marks
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.
[…]
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
I do not consider that it is a matter for debate that the goods of the parties are not similar goods. Equally, the trade marks are deceptively similar and the priority dates of the trade mark registrations upon which the opponent relies are earlier than that of the opposed application.
Accordingly, the provisions under subsection 44(1) are met.
However, the applicant argues that the application should proceed to registration under the provisions of subsection 44(3) – that there has been honest concurrent user of the trade marks or that in the circumstances it is proper to so allow.
I will digress at this stage to note that the applicant has a number of trade mark registrations in Australia and has used the trade mark KARL STORZ in Australia since 1971, and the opposed trade mark since about 1988 – this latter fact is under some challenge from the opponent but I understand from the thrust of Mr Bevan’s submissions that the opponent’s point is that this fact is not well supported by the evidence, rather than objecting that the use did not occur. The earliest example of proven use of the opposed trade mark is 1994 in a catalogue exhibited to Mr Stenning’s second declaration – however, I observe that the pattern and content of correspondence between the parties provides some corroboration for the applicant’s claim to have used the trade mark in Australia since 1988. Details of the applicant’s other trade mark registrations in Australia are:

Reg No: 476493

Priority Date: 16 November 1987

Goods:Class: 10 Rigid or flexible endoscopes with optical or electrical image transmission for medical purposes and accessories for the same, namely light sources for operation with endoscopes and suitable for the illumination of objects to be examined with endoscopes, joint observation attachments or image deflection attachments having optical or electrical image transmission connectible to endoscopes, cameras and flash guns connectible to endoscopes, moving picture equipment connectible to endoscopes, video equipment and screens connectible to endoscopes, image processing equipment substantially comprising video cameras and computers connectible to endoscopes, manually operated tools modified for use with endoscopes, mechanically operated tools modified for use with endoscopes, mechanical, electromechanical, hydraulic or pneumatic positioning devices for endoscopes, excepting instruments in the dental and ophthalmological fields

Trade Mark: KARL STORZ

Endorsement: Provisions of sub-section 34(1) applied[1]

[1] Honest concurrent user under the provisions of the Trade Marks Act 1955.

Reg No: 568611

Priority Date: 3 December 1991

Goods:Class: 9 Scientific apparatus for use in conjunction with endoscopes; endoscopes in this class

Trade Mark: KARL STORZ

Endorsement: Provisions of sub-section 34(1) applied[2]

[2] Honest concurrent user under the provisions of the Trade Marks Act 1955.

Reg No: 786813

Priority Date: 26 February 1999

Goods:Class: 9 Endoscopes for non-medical purposes and parts for use therewith including probes for technics and illuminating and lighting installations and apparatus; cameras, including CCD-cameras, in particular for endoscopy; microscopes; adapters and cables for connecting cameras to endoscopes; picture reproduction and picture recording apparatus, in particular for endoscopy; ultrasonic generators; training, teaching and instructing installations and apparatus; test and check installations and safe keeping and transport receptacles for said apparatus and instruments; data processing apparatus, data media, documentation installations and apparatus for endoscopy.
Class: 10 Surgical, medical, dental and veterinary apparatus and instruments including endoscopes for medical purposes and parts and accessories therefor; orthopaedic articles; suture materials; test and check installations and safe keeping and transport receptacles for aforesaid apparatus and instruments for medical purposes; suction and rinsing apparatus for medical applications; high-frequency apparatus and high frequency voltage generators for surgical applications; ultrasonic apparatus and instruments for medical applications.

Trade Mark:

Endorsement: Provisions of paragraph 44(3)(b) applied.

Reg No: 786815

Priority Date: 26 February 1989

Goods:Class: 9 Endoscopes for non-medical purposes and parts for use therewith including probes for technics and illuminating and lighting installations and apparatus; cameras, including CCD-cameras, in particular for endoscopy; microscopes; adapters and cables for connecting cameras to endoscopes; picture reproduction and picture recording apparatus, in particular for endoscopy; ultrasonic generators; training, teaching and instructing installations and apparatus; test and check installations and safe keeping and transport receptacles for said apparatus and instruments; data processing apparatus, data media, documentation installations and apparatus for endoscopy.
Class: 10 Surgical, medical, dental and veterinary apparatus and instruments including endoscopes for medical purposes and parts and accessories therefor: orthopaedic articles; suture materials; test and check installations and safe keeping and transport receptacles for aforesaid apparatus and instruments for medical purposes; suction and rinsing apparatus for medical applications; high-frequency apparatus and high frequency voltage generators for surgical applications; ultrasonic apparatus and instruments for medical applications

Trade Mark:

Endorsement: Provisions of paragraph 44(3)(b) applied.

I note that each of the above registration was accepted under the honest concurrent user provisions of the prevailing Trade Marks Acts. There is a clear implication that each of the above-listed trade marks was used in Australia for some years preceding the priority dates of the registrations.
Honest concurrent user was discussed by Kenny J in McCormick & Company Inc v McCormick [2000] FCA 1335 (‘McCormick’) at paragraph 30:
Section 44(3) gives the Registrar a discretion to accept an application that would otherwise be rejected under s 44(1) in the case of honest concurrent use or other circumstances making it proper to do so. The authorities establish that the principal criteria for determining whether registration should be permitted pursuant to s 44(3) include:
(1) the honesty of the concurrent use;
(2) the extent of the use in terms of time, geographic area and volume of sales;
(3) the degree of confusion likely to ensue between the marks in question;
(4) whether any instances of confusion have been proved; and
(5) the relevant inconvenience that would ensue to the parties if registration were to be permitted.
See In Re Alex Pirie & Sons Ltd’s Application (1932) 49 RPC 195; (1933) 50 RPC 147 at 159-160; In Re John Fitton & Co Ltd’s Application (1949) 66 RPC 110 at 112; and Stingray Surf Co Pty Ltd v Lister (1997) 37 IPR 306 at 310-311. These factors are not necessarily exhaustive of the matters to be considered, but they are a useful guide: see In Re Electrix Ltd’s Application [1957] RPC 369 at 379.

The honesty of the concurrent use

The opponent had known of the use of the opposed trade mark for some thirteen years at the priority date of the opposed application – the applicant was quite open about the use of the opposed trade mark and may reasonably have believed that it had a consent from the opponent to the use of the trade mark or one very similar to it. It will be recalled that the opponent stated that the use of a trade mark with the word STORZ similarly rendered within it in a similar degree of prominence and without the words KARL STORZ was within the letter and spirit of the agreement and also knew of the STORZ-WORLD OF ENDOSCOPY trade mark as early as 1989. The opponent, on the evidence before me, apparently accepted then that the opposed trade mark was also within the letter and spirit of the agreement as explained by the applicant’s attorney at law, Mr Mon in his letter to American Cyanamid Company and seemingly accepted then by the opponent’s predecessor in business.
I am satisfied that the applicant has established the honesty of it use of the opposed trade mark.

The extent of the use

Depending on one’s view of the evidence, the applicant has used the opposed trade mark from either 1988 or 1994 in Australia on all of its catalogues. These catalogues for medical, surgical, veterinary and industrial instruments and accessories are circulated to hospitals and at conferences and congresses. The catalogues appear to be a primary sales tool for both the applicant’s and opponent’s goods.
The applicant’s sales under the trade mark were in the order of ten million dollars annually in the years immediately preceding the priority date of the opposed application and appear to have been throughout Australia.

The degree of confusion

The goods of the parties have a very large degree of overlap. However, I consider that the fact that the goods of the parties are likely to be ordered by reference to the catalogues and brochures that the parties circulate mitigates to some extent against the likelihood of confusion – the opposed trade mark is displayed clearly on the front of the applicant’s catalogue. Further, the goods are likely to be ordered by, or on behalf of, professionals who are skilled in their fields and have a good knowledge of the range of instruments and apparatus available and the trade marks or trade origins of such goods. Never-the-less, as observed by Mr Bevan for the opponent, the trade marks and goods of the parties are in the one trade channel.
As observed by Kenny J in McCormick at paragraph 42:
Counsel for Mary McCormick pointed out that the very existence of an honest concurrent use exception implies a toleration of a degree of confusion: see, e.g., In Re Alex Pirie & Sons Ltd’s Application (1932) 49 RPC 195 at 206; 49 RPC 207 at 213-4 and In Re `Buler’ Trade Mark [1975] RPC 275 at 289. Registration has proceeded where there has been little evidence of actual or extensive confusion. In Jean Patou Parfumeur v Crisena Corp Pty Ltd (1990) 20 IPR 660 at 664-5, for example, it was held that the likelihood of confusion arising from the concurrent use of the marks in question was not particularly high, given that one mark was directed to the expensive and exclusive end of the market and the other to the inexpensive end enjoyed by the general public. See also Aromas at 88 and Emdon Investments Pty Ltd v Shell International Petroleum Co Ltd (1988) 12 IPR 525 at 534. Registration has also been permitted where the likelihood of confusion was extremely high: see No Name Restaurants Pty Ltd v No Name Restaurants (Cesare) Pty Ltd (1996) 36 IPR 488 at 497. In Buler, Graham J observed at 289:
[T]he degree of likely confusion is relatively unimportant ... provided the honesty of the applicant [for registration] is established and it is otherwise just in all the circumstances that his mark should be registered.
As I have stated above, I am satisfied that the honestly of the use of the opposed trade mark by the applicant has been established.

Proven instances of confusion

The evidence of actual confusion appears to be somewhat sparse. There is some mention of this in Mr Blankemeyer’s declaration, albeit in relation to conditions in the USA market, where he says:
… Storz Instrument’s customers would place an order with Storz Instrument and send payment to the Applicant. I was also aware that the Applicant was filling orders and billing Storz Instrument’s customers, after Storz Instrument had quoted prices to that customer. Storz Instrument’s customer service department would also frequently receive calls from customers inquiring about the Applicant’s products or attempting to contact the Applicant.
It is not clear if this confusion was due to the distribution of Karl Storz goods by Storz Instrument Company and how much this confusion was abated by Storz Instrument Company ceasing its distributorship of the Karl Storz goods. It is not clear to me from the evidence that this type of confusion arising from the similarity of the trade marks has ever existed within Australia. Mr Stamp is the Managing Director of Bausch & Lomb (Australia) Pty Ltd and is ideally placed to know of this, but in his declaration is silent on actual instances of confusion.

The relative convenience

As I have remarked above, it would seem that a refusal to register the trade mark would change very little – the applicant would presumably continue to use its trade mark without interference from the opponent as it has done for the last twenty years. Looked at from this perspective, the balance of conveniences between the parties swings fairly evenly each way. However, the applicant has used its trade mark for some thirteen years before the priority date of the opposed application, has established goodwill in the trade mark and should be able to readily enforce its rights via a trade mark registration. Viewed from this perspective, the balance of conveniences swings the applicant’s way – registration of the opposed application merely formalises a situation which has existed for the last twenty years, or which had, at the priority date, existed for thirteen years.
Accordingly, the opponent has not established its ground of opposition under subsection 44(3) of the Act.

Section 60

At the relevant date, section 60 of the Act provided:
Trade mark similar to trade mark that has acquired a reputation in Australia
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.
Note 1: For deceptively similar see section 10.
Note 2: For priority date see section 12.
I have already noted that the trade marks in question are deceptively similar. On the basis of the annual sales figures and other evidence supplied by the opponent, I also consider that the opponent’s STORZ trade mark had a reputation in relation to goods at the priority date in terms of the test set out in McCormick, above, by Kenny J at paragraph 81:
What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".
Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public's mistakenly attributing a business connection between the two or attributing her product to the company?
I also now note that, on the evidence before me, the opposed trade mark also had a reputation in Australia at the priority date – if this is to be gauged by sales figures alone, the applicant’s sales under its trade mark were in the order of five time greater than those under the opponent’s trade mark in the two or three years immediately preceding the priority date – and prior to that were seemingly of the same kind of order.
In McCormick, Kenny J observed that where an opponent’s trade mark has a reputation, it may present an insurmountable obstacle to registration of the opposed trade mark. At paragraph 96, after discussing the issues and the structure of the Act, Her Honour observed:
Whilst I accept, as counsel for Mary McCormick contends, that the doctrine of honest concurrent user is derived from the common law and pre-dates trade mark legislation, I am of the view that s 44(3) of the Act does not provide an exception to s 60.

However, it is striking here that if I am to find that the opponent has established its opposition to registration under section 60 of the Act, what might occur in the future between these parties could be characterized as a Mexican stand-off in relation to their trade marks which consist of, or contain, the word STORZ. Both could successfully oppose each other’s STORZ trade marks based on the reputation of their own STORZ trade mark and neither the applicant nor the opponent could register their STORZ trade marks.
It is obviously appropriate to closely consider the wording of section 60 and apply the rule in McCormick with some care.
The source of the confusion or deception in terms of subparagraph 60 must be the reputation of the trade mark on which the opponent relies. In this case, both of the trade marks had a reputation in Australia at the priority date and, although the sales under the opponent’s trade mark were markedly down in two or three years preceding the priority date, prior to that they were seemingly of comparable order to those under the opposed trade mark but possibly slightly less.
The opposed trade mark has been used in Australia probably since 1988 and certainly since 1994. The opponent’s trade mark has been used in Australia since 1989.
Under these circumstances, it is, I think, impossible for me to point at the trade mark of either party and say that it is the reputation of that STORZ trade mark which is the source of deception and confusion. The source of the confusion or deception could be the reputation of either, or both.
Thus, when I paraphrase the test posited by Kenny J in McCormick, ‘Does the evidence establish that in Australia before 3 March 2001 the opponent’s trade marks were recognised by the public generally and, because of that, the use by the applicant of the opposed trade mark would be likely to cause the public confusion?’ the answer is ‘No’. What the evidence establishes here is that the trade mark of the opponent was recognized by the public generally but the confusion or deception caused by the use of the opposed trade mark is not ‘because of that’, since it could equally be the reputation of the opposed trade mark which is the source of the deception or confusion.
The opponent has not established its ground under section 60.

Decision

Section 55 of the Act provides:
Decision
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.
Note: For limitations see section 6.
As discussed above, the opposition to registration has not been established by the opponent.
The trade mark application may 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 the disposition of the application be in accordance with the Court’s order or direction.

Costs

The applicant is entitled to its costs which I order against the opponent.

Iain Thompson

Hearing Officer

Trade Marks Hearings

11 August 2008

[2008] ATMO 71

11 August 2008

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