Bonny Sports Corporation v Pacific Dunlop Limited

[1995] ATMO 17

TRADE MARKS ACT 1955

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

Re:Opposition by PACIFIC DUNLOP LIMITED to registration of trade mark application number 547672 in the name of BONNY SPORTS CORPORATION

Background

Application number 547672 was lodged, on 17 December 1990, in the name of BONNY SPORTS CORPORATION (the applicant).  The application was for registration of the mark as shown below, for the statement of goods, "Sporting and gymnastic goods in this class; rackets, racket strings; golf clubs, billiard cues, balls, grips for rackets and golf clubs", in Class 28.  The mark was advertised as accepted in the Official Journal of 21 January 1993.

Notice of opposition to the mark's registration was lodged, on 16 April 1993, by PACIFIC DUNLOP LIMITED, (the opponent). The opposition was primarily based on s.28 of the Trade Marks Act, that use of the mark by the applicant would be likely to cause deception and confusion; on s.33, that the present trade mark was substantially identical or deceptively similar to a prior registered trade mark owned by the opponent; and on s.24, that the mark was not distinctive of the applicant's goods.

The evidence

The service and lodgment of the opponent's evidence in support and the applicant's evidence in answer in the matter was completed by 20 June 1994.  The evidence comprised:

Evidence in support

*Statutory declaration by Andrew M. Reid dated 20 July 1993 and exhibits AMR1 and 2.

Evidence in answer

*Statutory declaration by Jin-San Hong dated 30 May 1994 and exhibits JH1 to 3

In his declaration forming the evidence in support, Mr Reid, the Financial Controller of Dunlop Slazenger Australasia, a division of the opponent, described the history of the opponent's own registrations for the mark, as shown below, which he referred to as the Flying D mark:

He said that the mark had been used on sporting equipment and clothing, generating a great deal of income for the opponent.  The mark was applied to the goods via a printing process, or by the application of a transfer to the goods.  It was also applied by printing the mark onto the strings of racquets manufactured by the opponent.  This was a common method in the trade and meant that the reverse side of a racquet showed the mark pointing in a different direction.  He said that the opponent's particular concern with the subject mark was the arrow and circle logo if it was applied to racquets in a similar fashion.  He also listed the opponent's advertising and promotion expenditure on sporting goods bearing the opponent's mark.  Attached as exhibits to Mr Reid's declaration were copies of extracts from a product catalogue and also a poster, all showing the opponent's mark applied to its goods.

The applicant's Managing Director, Mr Hong, in his declaration lodged as the evidence in answer, listed the overseas registrations of the subject mark.  He said that the applicant's and opponent's marks were used side by side in Taiwan without conflict and that correspondence had passed between the parties, with the applicant using its mark on its letterhead.  He said that the marks were shown together in a magazine and that the respective marks co-existed in the same marketplace with no confusion.  Annexed to his declaration were examples of the marks in use, copies of correspondence between the applicant and a Dunlop Slazenger company in Taiwan, and a copy of a Japanese tennis magazine showing both marks in use.

The matter was set down before me, as the Registrar's delegate, for hearing in Sydney on 1 March 1995.  The opponent was represented at the hearing by Mr Laurie Dyson of Watermark.  Appearing on behalf of the applicant was Mr John Walsh of H.R. Hodgkinson and Co.

Submissions

Mr Dyson said that the opponent would be relying upon ss.24, 28 and 33 of the Trade Marks Act in the present proceedings and that each of the related issues would be addressed in turn. He submitted that, with respect to the opposition under s.24, the word BONNY was not an invented word but was, in fact, a dictionary term meaning, inter alia, "good or robust". Therefore the mark had direct reference to the character or quality of the goods for which registration was sought. He said that the other feature of the mark was a tennis racquet head device and that this was also not distinctive when applied to such goods specified in the schedule.

In relation to the s.28 ground, Mr Dyson said that the opponent's evidence showed many instances of the widespread use of its own mark, the Flying D device. The opponent owned registration number 297200 for this mark, for "sporting articles" in Class 28, a statement of goods which included those of the applicant. He said that Mr Reid's declaration showed that the opponent's mark had received long and extensive use, and had been widely advertised. Mr Dyson said that Mr Reid was qualified to make such a declaration on behalf of the opponent by virtue of his position with an Australian division of the parent company. The opponent company group was very diverse but there was no doubt that it was the opponent who was the controlling entity of all the DUNLOP and Flying D marks on the Australian Register. He said that the Flying D mark, when applied to racquets in use, would sometimes be shown in reverse, given its method of application. This meant that it was likely that deception and confusion could occur if the present mark was registered because of its similarity, when applied to racquets, to the Flying D mark.

Mr Dyson said that there was no evidence of any use by the applicant of its mark, whilst the opponent's evidence clearly established that it had used its mark widely in the Australian market place.  Although the applicant alleged that it had used the mark alongside the Flying D mark with no confusion occurring in Taiwan and Japan, the opponent did not itself use the Flying D mark there and, in any case, the marketing situation in Australia was different.  He said that the Registrar needed to consider the different ways that the mark could be used in Australia.  The evidence lodged by the applicant, which demonstrated its overseas use, clearly showed that the portion of the mark which it used on racquets was the device only.  This device of a racquet head inside a chevron looked deceptively similar to the opponent's Flying D mark.  The present application was for two separate marks which had been joined to gain registration as a composite mark.  He said that, because of the opponent's strong reputation for sporting goods in Australia and the applicant's lack of any reputation at all, deception and confusion could well occur - especially given the notional use of both marks.  He said that the applicant bore the onus of showing that there was no likelihood of such deception and confusion occurring if the mark was registered.

In relation to the opposition under s.33, Mr Dyson said that there were several points of resemblance between the respective marks, even when considered in their entirety. He said that the word BONNY was not, prima facie, distinctive. Despite this, it did help to differentiate the marks when it was used in close association with the racquet head device. However, there was no endorsement required as a condition of acceptance that both parts of the mark should be used together. The devices in both marks were fundamentally similar, both being the device of a circle inside an arrow and, given the evidence of the manner in which the applicant used the mark in overseas markets, i.e. the device portion of its mark, alone, applied to the goods, then it was deceptively similar to the opponent's Flying D mark. He said that the present situation was one where the concept of imperfect recollection, similar to the situation in Aristoc Ltd v Rysta Ltd (1945) 62 RPC 65, needed to be taken into account.

He concluded his submissions by asking for costs on behalf of the applicant.

In reply, Mr Walsh submitted that the device in the applicant's trade mark was not the same as the opponent's Flying D mark.  He said that the opponent had not produced evidence of any likelihood of confusion if the present mark was registered and that cases such as New South Wales Dairy Corp v Murray Goulbourn Co-op Co Ltd 18 IPR 385 showed that the absence of such material is significant. Also important was the fact that the examiner had not raised any objections under ss.24, 28 or 33 during examination. He said that it was significant that the opponent had not sought any injunction to prevent the applicant using its mark in Australia and had not threatened any passing off action.

With respect to the opponent's allegations regarding the distinctiveness of the mark, Mr Walsh said that the composite mark, comprising the word BONNY and the tennis head devices, was very distinctive of the applicant's goods. That word was in no way descriptive of the applicant's goods and it instead performed the function of differentiating the applicant's and opponent's marks.

Mr Walsh said that there was some doubt as to whether the opponent, as listed in the notice of opposition, was the rightful owner of the registrations relied upon in the s.33 ground of the opposition. There appeared to be some discrepancies regarding the ownership of those marks in relation to the Australian Company Numbers and addresses listed in the Register. On that basis, it was also unclear with which entity the reputation - imperative before any case could be established under s.28 - resided for the opponent's alleged mark. Additionally, the only mark which could said to be supported by any evidence of use, with respect to showing an established reputation, was the version of the Flying D mark covered by registration number 297200. Mr Walsh also questioned the credentials of Mr Reid, who had made a declaration in favour of the opponent but did not have a direct link with it.

Mr Walsh said that the legal framework, when comparing marks to determine whether marks were substantially identical or deceptively similar was divided between statutory interpretation and the common law.  He said that ss.6(3), 28 and 33(1), when marks were compared, all referred to the concept of deception needing to be likely.  The examiner had not raised any objections relating to possible deception or confusion, despite the consideration of marks previously on the Register, including the opponent's Flying D mark.  He said that, under common law, the opponent had the onus to show a reputation in a trade mark - Arthur Fairest Ltd's App'n (1951) 68 RPC 197, whilst the applicant bore its own onus of having to show that a trade mark would not deceive or cause confusion with a previous mark.

He said that, having applied the tests laid out in Shell Co of Australia v Esso Standard Oil (Australia) Ltd, (1963) 109 CLR 407, it was obvious that the marks were not substantially identical. When they were compared side by side and as a whole, the marks had several major differences. These significant differences included the word BONNY in the applicant's mark and the fact that many features of the devices included in the respective marks were noticeably dissimilar.

With respect to whether the marks could be considered deceptively similar, Mr Walsh said that, despite now not comparing the marks side by side, there was some unavoidable overlap in the Shell Co, supra, tests.  He said that it was hard to ignore the prominent features of opposing marks when trying to assess the impression that the marks had on purchasers.  Again there had been no evidence which suggested how the mark might be used in Australia and whether there was a real risk of the confusion of a significant number of people - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592. There was no basis then for a claim that the mark applied for was, as a whole, deceptively similar to the opponent's mark and that users would infer that the marks had a common source. He said that the strong reputation of the opponent's mark in Australia made it even more unlikely that the marks would be confused.

Mr Walsh said that, when comparing the marks, they each needed to be taken as a whole and consideration needed to be given to whether the respective marks contained the same essential idea and features.  The main feature of the opponent's mark was the D device.  However, there was no such element in the applicant's mark.  That mark did contain a device but it was quite clearly the head of a racquet.  However, the most important element of the mark was the word BONNY.  He said that there were numerous examples of marks which included the device of a circle within an arrow and which co-existed on the Australian Register, and he listed various registrations to illustrate this.  He said that this design concept for marks was common in the industry and on the Register, and that some of the registered marks bore a greater resemblance to the opponent's mark than did the present one.  It was unreasonable to speculate how the applicant would use its own mark but, in any event, registration was sought for the present mark as a whole and not its individual components.

He finished by asking that costs be awarded in the matter to the applicant.

Discussion

Section 28 - Deception and confusion

The provisions of this section of the Act read as follows:

A mark -

(a) the use of which would be likely to deceive or cause confusion;
           (b) the use of which would be contrary to law;
           (c) which comprises or contains scandalous matter; or

(d) which would otherwise be not entitled to protection in a court of justice,

shall not be registered as a trade mark.

The test to be applied under paragraph (a) of these provisions, on which the opponent partly relies, has been well established by cases such as Southern Cross, supra, where it was said:

Registration should be refused if it appears that there is a real risk that the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case the two products come from the same source.

That risk must extend to a substantial number of people: Kendall Co v Muslyn Paint and Chemicals (1963) 109 CLR 300.

Following the High Court decision in New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Ltd 18 IPR 385, the Moo case, the Registrar now follows the practice as laid out in the decision of Hearing Officer Homann in Titan Manufacturing Co v John Terrence Coyne 22 IPR 613 - that is, that all paras of s.28 should be read together. This means that, should I find that the mark is likely to deceive or cause confusion, then it will also be necessary to find that it would not be entitled to protection in a court of law.

In assessing the reputation of the opponent's mark in Australia, the relevant date is the date of lodgment of the opposed application - Southern Cross, supra.  I accept from the opponent's evidence, and from my own knowledge that, at the relevant date, the opponent had a very well established reputation in this country for its Flying D mark.  It is, in my opinion, very well adapted to distinguish the opponent's goods.  On the other hand, the present mark is dominated by the word BONNY.  The O of that word is made up of an elliptical racquet head device.  There is also the device of a racquet head, this time enclosed by a chevron device, on the left hand side of the word.

The opponent has made some allegations about what it sees as the likely method of use in Australia of part of the mark, i.e. the device portion alone applied to the strings of a racquet.  I have considered the evidence of such use in overseas countries.  However, it is only speculation that an integer of the mark would be applied in the same manner in Australia.

It is true that there are cases, such as De Cordova v Vick Chemical Co. (1951) 68 RPC 103 and Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, where it was found that, if the later mark incorporates the essential or distinguishing feature of the earlier mark, then confusion is likely to result. However, I do not agree that the present case falls into this category. The Flying D mark of the opponent is very distinctive of its goods but I do not think that the applicant's racquet head device inside a chevron is sufficiently similar to cause a purchaser to be deceived or confused into thinking that it belongs to the same entity. I agree here with Mr Walsh that this is even more unlikely given the number of marks, which include a circular device within a chevron or arrow, already co-existing on the Register with the opponent's mark. If the present mark, as applied for, is used on the applicant's sporting and gymnastic goods I think the chances of deception and confusion are minimal. I take Mr Dyson's point about possible use of the device portion alone on the strings of a tennis racquet but that is not the issue here and the opponent has resort to other remedies if it feels that passing off or infringement is taking place. There is certainly not, in my opinion, anything remarkable in the fact that the mark has been accepted without an endorsement requiring that the two "parts" of the mark should be used together. Such an endorsement is not usually required. It is the mark as a whole which is registered and not its individual parts.

For the foregoing reasons, I find that use of the applicant's mark will not lead to deception or confusion.  I am therefore satisfied that the requirements of paragraph 28(a) have not been made out.

Given the above, I need not proceed further in relation to the s.28 objection. However, I do note that there is nothing before me to show that there has been any blameworthy conduct on the part of the applicant, nor any other circumstance which would disentitle the mark to protection in a court of justice. I find, therefore, the requirements of paragraph 28(d) have also not been made out. The opponent's case, in terms of its objection under s.28, must therefore fail.

Section 33 - Substantially identical or deceptively similar

Sub-section 33(1) reads:

Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, of goods of the same description as those goods, or of services that are closely related to those goods, unless the date of registration of the first-mentioned trade mark is, or will be earlier than the date of registration of the second-mentioned trade mark.

In considering the question of whether the mark in question is caught by the provisions of s.33, I must firstly determine whether it is substantially identical with, or deceptively similar to, the marks owned by the opponent.

To judge whether the subject mark is substantially identical to the opponent's mark, it is necessary to carry out a straight comparison of the two marks.  In the case of Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd, supra, the words of Windeyer J. are pertinent:

In considering whether marks are substantially identical they should, I think, 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 similarity that emerges from the comparison ...

When the marks in question here are compared side by side, they have distinct differences which are readily observed.  The applicant's mark comprises the word BONNY, with the O in that word formed by a racquet head, and the device of a racquet head inside a chevron to the left of that word.  On the other hand, the opponent's mark is the Flying D device.  I therefore find that the marks are not substantially identical and move on to decide if the marks are deceptively similar.

Sub-section 6(3) defines a mark as deceptively similar if it is likely to deceive or cause confusion.  Here, the marks should not be placed side by side but consideration should be given to any common net impression inferred from the two marks.  I refer here to the judgment in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd (1937) 58 CLR 641, where Dixon and McTiernan JJ. said:

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.

I think that the applicant's mark, when considered as a whole, is dominated by the word BONNY.  This is the memorable feature which observers would carry away with them.  The racquet head within a chevron device to the left of that word plays a subsidiary role.  If the mark is applied to the specified goods as a whole, I am of the opinion that it is extremely unlikely that purchasers would infer a common ownership of that mark and the opponent's Flying D mark, even after taking into consideration the concept of imperfect recollection.  Mr Dyson postulated that the device portion of the applicant's mark and the opponent's Flying D mark were deceptively similar when applied to a tennis racquet head.  However, the device is not the mark applied for and, in any case, I do not agree that the devices are sufficiently similar to be considered deceptively similar.  I am therefore of the opinion that there is very little possibility of the present marks being considered deceptively similar.

For the foregoing reasons, I find that the opponent's objection, as it is based on s.33, must fail.

Section 24 - Distinctiveness

Section 24 (1) of the Act reads:

A trade mark is registrable in Part A of the Register if it contains or consists of-

(a) the name of a person represented in a special or particular manner;
           (b) the signature of the applicant for registration or of some predecessor in his   business;
           (c) an invented word;
           (d) a word not having direct reference to the character or quality of the goods   or services in respect of which registration is sought and not being, according   to its ordinary meaning, a geographical name or a surname; or
           (e) any other distinctive mark.

I am satisfied that the mark applied for satisfies the requirements of s.24 in that it does not refer to the character or quality of the goods of the application and that it is distinctive of the applicant. The word BONNY, is defined in dictionaries as primarily meaning "fine, pretty or handsome" and has fairly obscure meanings as "strong and robust". However, it is not the usual way to describe the sporting goods included in the specification. The other features in the mark, comprising the racquet head devices, are sufficiently stylised to further distinguish the applicant's goods. The opponent has done nothing to convince me to the contrary and I therefore dismiss this ground of the opposition.

Conclusion

I find that the opponent has failed on all of the grounds relied upon in the notice of opposition.  I therefore dismiss the opposition and, subject to any appeal from this decision, the mark should proceed to registration.  I can see no reason why costs should not follow the result and I accordingly award costs in the matter to the applicant.

Ian Forno
Hearing Officer

20 April 1995