Berol Corporation v Sharp Kabushiki Kaisha

[2004] ATMO 4

TRADE MARKS ACT 1995

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

Re:Opposition by Berol Corporation to registration of trade mark application 833575(1, 16) - SHARP - filed in the name of Sharp Kabushiki Kaisha.

Delegate:

Jock McDonagh

Representation:

Opponent: no appearance

Applicant: Trevor Stevens of Davies Collison Cave, Patent & Trade Mark Attorneys

Decision:

All grounds of opposition dismissed

Costs awarded against the opponent

Background

1. Sharp Kabushiki Kaisha (“the applicant”) has filed application to register the trade mark, details of which follow:

Application Number:

833575

Priority date:

1 May 2000o

Goods:

Class 1: Developers for photocopiers and facsimile machines

Class 16: Typewriters and electronic whiteboards; correction tape; paper and inking ribbons

Trade Mark:

sharp

Advertised:

5 July 2001

1. On 5 October 2001, Berol Corporation (“the opponent”) filed a notice of opposition pursuant to section 52 of the Trade Marks Act 1995 (“the Act”). The notice specified seven grounds of opposition.

2. The matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Sydney on 29 October 2003.  The opponent was not represented and relied on written submissions by FB Rice & Co, Patent & Trade Mark Attorneys of Balmain.  The applicant was represented by Mr Trevor Stevens of Davies Collison Cave, Patent & Trade Mark Attorneys of Sydney.

Evidence

1. The evidence filed in these proceedings consisted of the following:

Date	Declarant	Description	Exhibits	Known As
Evidence in	Support
3.03.2003	Dale L. MATSCHULLAT	Vice President, General Counsel of Berol Corp.	Annexures A to C	Matschullat
Evidence in	Answer
4.06.2003	Douglas Roger WALTER	Company Secretary, Sharp Corporation of Australia Pty Ltd	DW-1 to DW-4	Walter

Ground 1 - Section 44, Deceptive Similarity

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 cited trade mark registration 788785 sharpie for Class 16: Permanent marker.  This registration has a priority date of 19 March1999 and is in the name of the opponent.

2. The Opponent's evidence and its written submissions did not address the similarity of the goods. 

3. The applicant’s attorney submitted that permanent markers are not the same as "developers" nor whiteboards/correction tape and paper and inking ribbons.  Further, if the respective goods are not the same, the opponent bears the onus of showing that the respective goods are of the same description.  This has not been done.  The applicant’s attorney made the following submissions relating to the similarity of goods.

• The respective goods are clearly different in their natures – that is, the compositions and raw materials of the goods differ.  There is no reason to suppose that manufacturers of permanent markers are the same or that such manufacturers are likely to produce developers, whiteboards, etc.

• The purposes of the respective goods also differ and this is apparent from even a superficial assessment of the goods themselves.

• Whilst the trade channels may be broadly similar, within those channels it seems to us that there is a discrete market for permanent markers.  Not only would such goods be displayed and offered for sale in a specific area but – importantly – customers seeking permanent markers would know precisely what they were looking for and there seems no reason why they would associate SHARPIE permanent markers with the Applicant's goods.

• In any event these are matters which should be addressed by the opponent.  Since they have not been addressed in the evidence or written submissions it is not appropriate to speculate as to the precise circumstances which might be relevant to the natures, purposes or trade channels of the respective goods.

1. I concur with the applicant’s submissions, and find that the goods are not similar.

2. For purposes of assessing whether the trade marks are substantially identical the I was referred to Shell Co (Aust) Ltd v. Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at 414/415. This requires a side by side comparison of the trade mark and, in making that comparison, the I was asked to note the following:

• The Opponent's trade mark is stylised (see below) whereas the Applicant's trade mark is rendered in block letters:

 

SHARP

• The word sharp has five letters, the opponent's has seven letters.

• The word sharp has one syllable whereas the word sharpie has two syllables.

• Each word is an ordinary dictionary word with a meaning in the English language.

1. The applicant submitted that in Torpedoes Sportwear Pty Ltd v. Thorpedo Enterprises Pty Ltd [2003] FCA 901 at paragraph 55 the court, in assessing substantial identity, afforded particular importance to the styling of the marks and to the typeface. The court also referred to the "joinder" of the letters. All these features – style, typeface and joinder – are present in this case and all those features differ in the presentation of the words sharp and sharpie. The court referred to those features as being "essential" (at paragraph. 56). The applicant submitted that these differing features in the respective trade marks give "a total impression of dissimilarity".

2. I concur with the applicant’s contention that the words SHARP and SHARPIE are not substantially identical.

3. In relation to deceptive similarity the applicant referred to the following passage from Australian Woollen Mills Ltd. v. F.S. Walton & Co. Ltd (1937) 58 C.L.R. 641 at 658:

   “In deciding this question, the marks ought not, of course, to be compared side by side.  An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought.  The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.  The effect of spoken description must be considered.  If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part.  The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.  Evidence of actual cases of deception, if forthcoming, is of great weight.”

4. The principal issue for purposes of deceptive similarity is one of impression based on recollection of the mark.  Whilst actual deception need not be proved, a mere possibility of confusion will not suffice – there must be a real, tangible danger of confusion occurring.  See Thorpedo at paragraph 73 and the cases discussed therein.

5. Based on long-standing authorities, the following factors are relevant in assessing deceptive similarity:

• a visual comparison

• a phonetic comparison

• the meaning of the words

• pronunciation

• the surrounding circumstances

1. I conclude that that the trade mark SHARP is not deceptively similar to the trade mark SHARPIE.

2. Apart from the issue of deceptive similarity between the trade marks, the likelihood of deception is a separate – albeit related – issue.  This was succinctly stated by Windeyer, J. in the Shell case at p. 416 as follows:

   "[t]he deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone but, by the effect of that similarity in all the circumstances".

3. The degree of similarity is clearly a factor to be taken into account but consideration must also be given to that similarity "in all the circumstances".

4. Neither the opponent's evidence nor its submissions make any reference to whatever circumstances might be relevant to assessing any likelihood of deception.

5. The failure to address this issue has the inevitable consequence that the onus that it bears under s44 is not discharged.  I dismiss this ground of opposition.

The Other Grounds

1. The remaining grounds listed in the Notice of Opposition were pursuant to ss 27(1), 41, 42(b), 43 and 60 of the Act. None of these grounds was supported by evidence or submissions. Again, this has the inevitable consequence that the onus that it bears is not discharged. I dismiss these grounds of opposition.

Decision

1. The opponent has not established any of its grounds of opposition. Therefore, the applicant's trade mark 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 registration shall not occur until the appeal has been decided or discontinued.

Costs

1. The applicant sought its costs.  The general rule in awarding costs is that costs are usually awarded against the unsuccessful party, unless there is some conduct on the part of the successful party that would justify a departure from the general rule.

2. I see no reason why costs should not follow the general rule. I award costs against the opponent and direct that the opponent pay the costs of the applicant in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995)

Jock McDonagh

Hearing Officer

Trade Marks Hearings

28 January 2004