Beko (UK) Ltd v Ali Halici

[2001] ATMO 91

TRADE MARKS ACT 1995

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

Re:Opposition by Beko (UK) Ltd to the registration of trade mark application number 783399 in the name of Ali Halici for a trade mark comprising the word BEKO, in slightly stylised form, in Class 20.

Background
Application number 783399 was filed on 20 January 1999 in the name of "Beko" (later amended to Beko Raks Pty Ltd).  The trade mark was subsequently assigned to Ali Halici (the applicant).  The application was for the registration of the trade mark as shown below:

and covered the statement of goods: "Furniture, including sofas, chairs, stools, tables, desks, shelves, cupboards, cabinets and beds, mattresses, hall stands, picture frames, mirrors, curtains rods and runaways, cushions, parts for these goods included in this class," in Class 20.

Following examination, the trade mark was advertised as accepted in the Australian Official Journal of Trade Marks of 17 June 1999.  On 16 December 1999, following the grant of an extension of time within which to do so, Beko (UK) Ltd (the opponent) filed notice of opposition to the trade mark’s registration.  The opponent duly served evidence in support of the opposition.  The applicant did not serve any evidence in answer.  Neither party requested a hearing to determine the opposition and in due course, the Registrar delegated the matter to me to decide on the written record.  Neither side submitted any written submissions for my consideration and I have therefore determined the matter solely on the material currently on the Official file.

The notice of opposition listed a wide range of grounds.  However, the only matters to which the opponent's evidence in support appears to be directed are those under ss.44, 58 and 60 of the Act.  Accordingly, I cannot find that a prima facie case has been established for the applicant to answer on any grounds, other than those under these sections.  Thus, I find that all of the other opposition grounds are unsuccessful.

The Evidence
The evidence in support includes a declaration by Andros Chrysiliou, a solicitor of Chrysiliou Moore Martin, the opponent's legal representatives in this matter.  Mr Chrysiliou declares as to a visit he made to the premises of Beko Raks Pty Ltd and also a search that he made of the records of the Australian Securities Commission in relation to that company.

Completing the evidence in support is a declaration by Erol Usten, an Executive Officer of the opponent.  He provides an account of certain business dealings between the opponent and the applicant.  He further gives details regarding the opponent's use of the mark BEKO on television sets in Australia, and also its prior registered Australian trade mark comprising that word, in Classes 7, 9 and 11.  He additionally furnishes particulars on various trade mark applications and registrations of BEKO by the opponent, in countries around the world.

Analysis
Section 44
The relevant part of s.44 reads as follows:
44 Identical etc. trade marks

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.

The trade mark, on which the opponent appears to be basing its s.44 ground, is its registration number 719892, for the word mark BEKO.  This mark has been registered since 17 October 1996 - before the priority date of the present application - and covers the following goods:

Class 7 - Cleaning machines; washing machines and compressors for washing machines; machines for cleaning and washing carpets and upholstery; machines for drying and airing clothes; dishwashers; machines for use in the preparation of food and beverages; electric kitchen machines; electric can openers; electric knives and sharpeners; presses; sewing, embroidering and knitting machines; laundry and ironing machines; grinding machines; waste disposal machines; parts and fittings in this class for all the aforesaid goods.

Class 9 - Audio, video, optical, photographic and cinematographic apparatus and instruments; video recording, amplifying, reproducing and transmitting apparatus and instruments; tape recorders and tape play-back machines; optical disc recorders and play-back machines; record playing apparatus and instruments; loud-speakers; earphones and headphones; radio receivers and radio signal tuners; video cameras; television apparatus and instruments; remote control apparatus and instruments; communications, telecommunications and telephone apparatus and instruments; aerials, satellite broadcast receiving and decoding apparatus and instruments; games apparatus adapted for use with television receivers; electric hair rollers; electric flat irons; portable steamers for fabrics; electric polishing machines for household purposes; vacuum cleaners; cash registers; electronic calculators; computer software, hardware and firmware; data-processing apparatus; apparatus and instruments for the recording, storage, carriage, transmission, manipulation, processing, retrieval and reproduction of sounds, images, signals, data, code and information; electric irons; parts and fittings in this class for all the aforesaid goods.

Class 11 - Cooling and freezing apparatus, appliances and containers; refrigerators; freezers; air-conditioning, air cooling and ventilation apparatus and instruments; lighting apparatus; electric apparatus for making beverages; installations, apparatus, appliances and utensils, all for cooking; stoves, ovens, microwave ovens, toasters and griddles; barbecues and grills; electric steam baths for the face; electric foot baths; hair dryers; electric hair dryers; heating and water heating installations and apparatus; apparatus for drying and airing clothes; water purification and filtration apparatus; electric kettles; parts and fittings in this class for all the aforesaid goods.

In deciding whether or not competing trade marks are substantially identical with each other, the test is conveniently laid out in such cases as Australian Woollen Mills Ltd v F. S. Walton & Co Ltd (1937) 58 CLR 641 and in Shell Co (Australia) Ltd v Esso Standard Oil (Australia) Ltd, (1963) 109 CLR 407, where, in the latter case, Windeyer J said, at 414:

(to determine 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.

I think that it is obvious that, when that test is applied to the respective parties' trade marks, they are so similar that they must be considered as being the same.  The word BEKO is the whole of the opponent's trade mark covered by registration number 719892.  That word, in only a very slightly stylised form, also comprises the applied for trade mark.  In my opinion, the difference in appearance is so small as to be completely discounted.  I therefore find that the respective trade marks are substantially identical.

In order to determine the second element of the s.44 ground, I will now turn to determine whether the goods of the parties can be regarded as similar, in terms of the Act.  Similar goods are defined in s.14 as being those that are the same as the other goods to which they are being compared, or being of the same description as those other goods.  The criteria to determine whether goods are of the same description as each other are found in such cases as McCormick & Company Inc v McCormick [2000] FCA 1335; and Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592. These tests basically concern a consideration of the nature of the goods, their uses, and the trade channels through which they are bought and sold. Despite the wide ranging statements of goods covered by the competing trade marks, the only words from the opponent regarding their alleged similarity is in Mr Usten's declaration. He says there that he is "aware of the practice of selling cabinets and furniture stands for television sets and (sic) to contain the (sic) household items, in conjunction with and in the same store location as television sets".

I have considered this apparent argument as it might be applied to the accepted tests.  Mr Usten appears to be claiming that, because television sets are sometimes sold in the same stores as furniture, they should be considered as similar.  Using this logic, this could mean that such disparate items as menswear and stationery should be considered as similar goods, merely because they might be sold in possible close proximity to each other in department stores - clearly something that is not the case.  I note that many goods are sold side by side in the same outlets, without any consideration of them being similar to each other.  Similarly, in the present instance, I cannot agree that television sets could be considered as being either the same goods, or of the same description, as furniture.  With respect to whether the nature of the respective goods can be regarded as similar, I am of the opinion that, although a television set might be housed in a wooden cabinet it is, first and foremost, the receiver of television signals.  On the other hand, furniture may be made of wood but can also be of other materials, and is designed for comfort and utility.  In relation to the uses to which the apparent respective goods might be put to, I think that it is obvious that a television set is used for entertainment or education, while furniture is primarily intended for the purposes of relaxing in, eating at, or sleeping on.  Merely because ornaments or fish tanks might be placed on top of a television set, it does not mean that the TV can be considered as being, chiefly, a piece of furniture.  Given the foregoing, I do not agree that any of the applicant's goods can be considered as being similar to those covered by the opponent's registration.

Accordingly, despite my determination that the respective trade marks are substantially identical, I find that the opponent is not successful under this ground of its opposition because the goods of both parties are not "similar", as countenanced by the Act.

Section 58
This section reads:

58. Applicant not owner of trade mark

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 Application--how made

(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 [Carnival Cruise Lines Inc v Sitmar Cruises Ltd. (1994) AIPC 91-049 and Shell Co. (Aust.) Ltd v Rohm and Haas, (1949) 78 CLR 601]. In the present case, I have already found that the trade marks owned by the respective parties are substantially identical, so I will now move on to look at the other indices of ownership as laid down in the relevant authorities.

The basis of a claim to proprietorship (read ownership) of a trade mark was explained by McGarvie J, who said in Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413:

The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there: Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 203; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603; Moorgate Tobacco Co Ltd v Philip Morris Ltd(No 2) 59 ALJR 77 at 83.
 ...
In considering who, within s.40 (1) of the Act, was at the time of Settef's application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia: The Shell Co of Australia Ltd v Rohm & Haas (1949) 78 CLR 601 at 625 and 627.

In other words, the first user of a trade mark in Australia (for the relevant goods and prior to the date of application) becomes the owner at common law.  That ownership, however, is limited to "the same kind of thing", as per Holroyd J in Hicks' Trade Mark (1897) 22 VLR 636. Any small amount of use will suffice, but the effect of the act relied on to constitute use must be the creation, in the minds of those concerned, of an impression that the goods of a particular trader are being offered for sale, in Australia, under the trade mark.

The opponent here has claimed first use of the word BEKO on "television products", since "sometime prior to the filing date of application 783399, January 20, 1999..." and has an Australian registered trade mark from 17 October 1996, in Classes 7, 9 and 11.  In the absence of anything from the applicant to the contrary, the opponent would therefore appear to be the owner of that mark in Australia for those goods.  However, it has not shown any earlier use at all for goods, which are the "same kind of thing" as the furniture covered by the present application.

Given the foregoing, I find that the opponent has also failed on this ground of its opposition.

Section 60
This section reads:
60 Trade mark similar to trade mark that has acquired a reputation in Australia

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.

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 for its mark in Australia - re Heerey 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.

In order to satisfy the onus, the opponent must show:

1. that it had a reputation in Australia;

2. the reputation was known by a substantial number of persons;

3. the reputation existed at the date of the filing of the application - here 20 January 1999; and that,

4. as a result of the reputation, a substantial number of persons likely to be concerned in the purchasing of the particular goods were likely to be deceived or confused if the applicant used the applied for trade mark.

[Southern Cross Refrigerating v Toowoomba Foundry, supra and The Kendall Company v Mulsyn Paint and Chemicals (1963) 109 CLR 300].

I have already found, in relation to the s.44 ground, that the applicant's and the opponent's trade marks are substantially identical with each other.  I must now assess whether elements 1 through 4 (above) have been satisfied.

Mr Usten has said, in his declaration, that the opponent's BEKO trade mark had appeared on television goods since "sometime" prior to January 1999.  There are no sales figures, nor are there any advertising amounts supplied for the period prior to the critical date, nor are there any declarations from those in the trade, or in the market, who might attest to the opponent's reputation in its mark.  In the absence of any of this type of supporting material, I can only conclude that such a reputation is non-existent, or so small as to be insufficient to be significant, in relation to this ground.  The opponent would therefore appear to have stumbled at the first hurdle in establishing the s.60 ground.

Accordingly, I can only find that the opponent has also failed on establishing this ground of opposition.

Conclusion
I have found, as the Registrar's delegate, that the opponent has not been successful on any of the grounds relied upon.  I therefore dismiss the opposition and direct that the trade mark, the subject of this application, should proceed to registration, provided that the relevant fees have been paid.

I make no orders as to costs.

Ian Forno
Hearing Officer

25 September 2001