Caltex Corporation v Y.E. Choices Merchandising SDN BHD

[2000] ATMO 97

TRADE MARKS ACT 1995

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

Re:Opposition by Caltex Corporation (previously Caltex Petroleum Corporation) to registration of trade mark application 768006(25) - STAR device and word MART- filed in the name of Y.E. Choices Merchandising SDN BHD.

Background

On 21 July 1998, Y.E. Choices Merchandising SDN BHD ('the applicant'), of Malaysia, applied to register the trade mark appearing below, in respect of the goods also appearing below:

Class: 25

Caps, hats; T-shirts, clothing for men, women and children; shoes, boots and sandals, all included in Class 25

Following examination, the application was accepted on 19 October 1998 and advertised as such in the Australian Official Journal of Trade Marks on 19 November 1998.

On 18 May 1999, after seeking and receiving an extension of time in which to do so, Caltex Corporation, ('the opponent') filed Notice of Opposition to the registration of the trade mark.  The relevant grounds cited in the Notice will emerge sufficiently from my reasons, below.

On 18 August 1999, the opponent lodged its evidence in support of the opposition.  The applicant has not filed any evidence in answer, nor did it seek extension of time in which to do so.  Accordingly, the opponent, by letter dated 3 April 1999, requested that this office set the matter down to be heard.

The hearing was before me, as delegate of the Registrar of Trade marks in Sydney on 24 July 2000.  Mr Brian Munday of Spruson & Ferguson represented the opponent. The applicant was not represented and did not appear.  The solicitors who had represented the applicant until that stage informed me by letter shortly before the hearing that they were no longer the address for service for the applicant.  They did not advise whether they still acted for the applicant in this matter but did not appear.

The evidence

The evidence in support of the opposition consists of two statutory declarations.  The first is a statutory declaration by Michaela Wing-Kum Chan who is Brand Retail Manager of Caltex Australia Limited ('CA').  In summary she says that CA is the licensee in Australia of various trade marks including the Caltex Corporate Logo and STAR MART which is registered in different classes.

On 24 February 1999, CA launched the new Caltex logo and the renaming of a number of its convenience stores under the name STAR MART.  Various press releases and publicity materials concerning the launch of the new Caltex logo and re-naming of the convenience stores are exhibited to the declaration.  Another exhibit to this declaration is the cover of the CA Annual review that shows one of the new STAR MART convenience stores located at a service station.

The second declaration is one by Brian Munday, a principal of Spruson & Ferguson, a firm of patent and trade mark attorneys.  Mr Munday attests to the fact that he caused his firm's trade marks searching staff to obtain print-outs from the trade marks office data-base and encloses details of various of the opponent's registrations and of one application.  In summary these are:

Reg Number:   496596
Owner:  Caltex Petroleum Corporation
Priority Date:  30 September1988

Services:Restaurant services inclusive of services provided by self-service restaurants and snack bars; and the retailing of food, drinks and confectionery, petroleum products, motor vehicle parts and accessories, and tools (42)

Trade Mark:    STARCARD

Reg Number:   553787
Owner:  Caltex Petroleum Corporation
Priority Date:  15/04/1991

Services:Restaurant services inclusive of services provided by self-service restaurants and snack bars; and the retailing of food, drinks and confectionery, petroleum products, motor vehicle parts and accessories, and tools (42)

Trade Mark:    STARFLEET

Reg Number:   645399
Owner:  Caltex Petroleum Corporation
Priority Date:  09 November 1994

Services:Restaurants including self-service restaurants, snack bars and cafeterias; catering services; retailing of goods namely packaged oil, automotive parts and accessories, hardware, photographic requisites, cosmetics, newspapers and magazines, food, drink and confectionery

Trade Mark:   

Reg Number:   645403
Owner:  Caltex Petroleum Corporation
Priority Date:  09 November 1994

Services:Restaurants including self-service restaurants, snack bars and cafeterias; catering services; retailing of goods namely packaged oil, automotive parts and accessories, hardware, photographic requisites, cosmetics, newspapers and magazines, food, drink and confectionery

Trade Mark:   

Reg Number:   653441
Owner:  Caltex Petroleum Corporation
Priority Date:  16 February 1995

Services:Retailing of goods namely packaged oil, automotive parts and accessories, hardware, photographic requisites, cosmetics, newspapers and magazines

Trade Mark:    STAR SHOP

Reg Number:   653442
Owner:  Caltex Petroleum Corporation
Priority Date:  16 February 1995

Services:Retailing of goods namely packaged oil, automotive parts and accessories, hardware, photographic requisites, cosmetics, newspapers and magazines

Trade Mark:    Star MiniMart

Reg Number:   653444
Owner:  Caltex Petroleum Corporation
Priority Date:  16 February 1995

Services:Retailing of goods namely packaged oil, automotive parts and accessories, hardware, photographic requisites, cosmetics, newspapers and magazines

Trade Mark:    STAR MART

App Number:  715555
Owner:  Caltex Petroleum Corporation
Priority Date:  20 August 1996

Services:Restaurants including self-service restaurants, snack bars and cafeterias; catering services; retailing of goods including packaged oil, automotive parts and accessories, hardware, photographic requisites, cosmetics, newspapers and magazines, food, drink and confectionery; all the foregoing being provided by or in conjunction with motor vehicle service stations

Trade Mark:   

The Submissions

Mr Munday presented submissions in terms of section 44 of the Act to the effect that the evidence shows that the opponent had used the word and device of a star interchangeably within its registered trade marks.  It has registrations that incorporate either the word STAR or the device of a five-pointed star.  Mr Munday also argued that, while clothing is not expressly mentioned in the specification of registration 715555, the generality of the specification includes clothing and certain types of clothing and headwear are normally sold within service stations.

Further, Mr Munday argued that, if the applicant's trade mark were to be used, advertised and referred to in the course of trade, it would be referred to as STAR MART.  Mr Munday observed that the series of squiggles to the left-hand side of the applicant's trade mark is innominate - that is, it is not a graphical representation of a known object which has a name by which it could be referred to in the course of trade.

Reasons

Section 44 of the Act provides, as far as it is relevant here:

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.

Section 10 provides:

Definition of deceptively similar

10. For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

Each of the cited trade marks on which the opponent relies has an earlier priority date than that of this application.  I am inclined to accept Mr Munday's arguments that petrol stations regularly retail certain items of clothing and that I should regard these services as being included in the specification that he referred to.  Read at its broadest, these services are included in the specification.  Moreover, this is not incongruous: Mr Munday's observations accord with my own experience and I can recall seeing caps, tee shirts, sweat-shirts and the like on sale at various shops attached to service stations.  Very often these are sold as souvenir items for tourists, but frequently they are sold as promotional items which carry the trade marks of the petroleum retail outlet that is selling them.

It remains for me to decide whether 'retail of clothing' is a closely related service to the goods 'clothing'; and if the trade marks are deceptively similar.

It is apparent from the decision of French J in Registrar Of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 that the question of whether retail services are closely related to the goods upon which those services are rendered is complex and is to be considered on a case by case basis. The court appears to have either accepted that retail services are closely related to the goods being retailed, or, has not considered the question as the decision was based on the similarity of the trade marks. French J's decision makes it plain that the goods/services question cannot be divorced from some consideration of the similarity between the trade marks in question: at page 425 he says:

In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the registrar or a judge on appeal from the registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant’s marks would be likely to deceive or to cause confusion.

[041] Mr F J Smith, a former Commonwealth Registrar of Trade Marks and Designs and Commissioner of Patents, observed at the time of the 1978 amendment (53 ALJ 118 at 120) that:

It will be an exercise of the registrar’s judgment and ultimately of his discretion whether goods and services are closely related. The relationship would have to be close, not merely a tenuous or remote connection. Where the services are performed upon, or in relation to, or even by means of certain goods, this is a factor which would make deception or confusion between marks used in respect of those services and goods more likely.

That observation is consistent with a proper focus upon the core question whether the resemblance between the marks is likely to deceive or confuse.

I will therefore consider the similarity of the trade marks in question before considering whether the goods and services are closely related.

The nature of the hearing, at which the applicant did not tender any evidence and then did not appear, does not have an Australian address for service and was not represented, introduces some difficulty for me.  It is plain in the Woolworths decision that French J considers proceedings which are before the registrar or the Court after acceptance in opposition proceedings to be different from proceedings before the registrar or Court concerning applications which have not yet been accepted.  At page 423 in Woolworths, French J says:

The mandatory language of s 33 and the legislative policy which informs it also suggest that the acceptance stage is not the time for the kind of detailed adversarial examination of the application that might emerge from a contested opposition. This will have an impact upon the way in which the registrar approaches the question whether a mark proposed for registration is deceptively similar to others.

This application is, of course, in a status that is after acceptance.  Further, as the Chief Assistant Registrar observed in Camelot Design Industries Group Pty Ltd v Bernard Leser Publications Pty Ltd (1987) 9 IPR 596, at page 598:

By not responding in any way to the opposition proceedings the applicant renders its application more susceptible to refusal, since it is not appropriate that the Registrar act as advocate on its behalf. However, it is appropriate that I consider the opponent’s case to the extent of finding whether or not there are matters for the applicant to answer. If there are, and the applicant has not answered them, the matter must be resolved in favour of the opponent.

I intend here to adopt the approach of the Chief Assistant Registrar, bearing in mind that there is now a presumption of registrability and it is for the opponent to establish its grounds.

Deceptively similar trade marks

One of the classic statements of the considerations concerning the comparison of trade marks is in the words of Dixon and McTiernan JJ, in Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658, talking of deceptive similarity:

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 descriptions 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, then 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.

And, in the words of Lord Parker (then Parker J) in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, where he said:

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion — that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods — then you may refuse the registration, or, rather, you must refuse the registration in that case.

It is the opponent's contention that the word STAR and the graphic representation of the star in the application are interchangeable and that, accordingly, the public when referring to the trade mark, or the applicant in advertising the trade mark (or otherwise referring to the trade mark orally) will refer to the trade mark using the words STAR MART.  To support this contention, the opponent points to its own registrations where it has a number of them that incorporate the word STAR and a number of others that incorporate the graphic device of a star.  It also points to its own registration of the words STAR MART as a trade mark.

The issues to be considered when assessing the likelihood of deception and confusion, in terms of section 10, above, have been given recent judicial consideration by French J in Woolworths, above, at page 428:

[050] In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594–5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

(iv) The rights of the parties are to be determined as at the date of the application.

(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

In respect of the last proposition, Mason J observed in  Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353; at 362; 1 ALR 443; at 450:

… the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.

Closely related goods/services

I might digress at this point to consider whether the goods and services involved here are closely related.  I note that, in doing so, I am to consider all of the uses to which the parties might reasonably want to put their respective trade marks: adapting the words in Re Smith Hayden and Co’s Application (1946) 63 RPC 97 at 101 in the light of the comments of French J in Woolworth's, above at 426:

Assuming a use by the proprietor of each of the cited trade marks in a normal and fair manner in respect of any of the goods and services covered by those registrations, is the delegate satisfied that there will be a likelihood of deception and confusion among a substantial number of persons if the applicant for registration (the respondent to this application) also uses its mark normally and fairly in respect of services covered by the proposed registration.

I note that the opponent currently uses its trade marks through its petroleum service stations and through retail outlets attached to them.  However, where this mode of trade is not reflected on its registrations, the trade marks could be used in any location and within any type of retail outlet.

Concerning the test of whether the goods and services are closely related I refer to Re: Aussat (1993) 27 IPR 309 where, as delegate of the Registrar, I said:

I believe that the tests must lie in the adoption of criteria similar to those oft quoted from Re John Crowther & Sons (Milnsbridge) Ltd’s Appn (1948) 65 RPC 369 at 372 adopted by the High Court in Reckitt and Colman (Aust) Ltd v Boden (1945) 70 CLR 84 at 94. I believe that these criteria should include:

• are the services performed directly upon or by means of the goods? if so,

• are the goods and services generally regarded by the ordinary consumer as originating in, or being part of, the one industry or trade, or, a closely related trade or industry?

In consideration of the latter point some guide-lines might be suggested and I stress that these are not in any particular order of priority:

• are the goods and services of matching technical complexity?

• is the technical training of the people who make the goods or provide the services the same?

• do the people who make the goods or provide the services belong to the same unions or associations?

• are there personnel who are implicit in the provision of the service, or a necessary ancillary to the provision of it, who are viewed by the ordinary person as having the essential expertise in common to the provision of either the goods or services? (For example, in “vehicle hire services” and the goods “cars”, there are the ancillary personnel common to both, such as car detailers, mechanics, salespersons, credit checkers, and so on which give both the same flavour).

• do the goods usually have this service as a related service agreement or package? For instance, it would be most unusual for a person buying a very expensive piece of machinery not to enter some sort of service agreement. Conversely, are the goods usually offered as part of a service agreement?

• is the nature of the goods or the service such that they would cease to exist without each other, thus creating an expectation of a common source? (Such as “transportation services” and “vehicles” ; or, “vehicle hire services” and “vehicles” ; or “restaurant and take-away food services” and “food”).

• does the service consist of altering, matching and/or installing the goods to a customer’s or client’s requirements? (Such as “curtains and furnishings” and “the sewing of furnishings”). It must be observed that the person doing the service of sewing the furnishings is also exercising the same or very similar skills as were involved in mailing the curtains. Also, the installers of domestic and industrial equipment are often employed either directly or indirectly by the manufacturer.

• are the goods and services commonly offered by the one company or organisation? (For example, “retail sales” and the equivalent “goods”; or, “telephone communication services” and “telephones”).

• are the goods a necessary adjunct to a particular service or the only tangible result of it? (For example, “advertising services” and “directories”, or “publications”; or, “travel agency services” and “publications” ; or “telephone services” and “directories”).

This list of criteria is not exhaustive, neither, I think, is it necessary that all considerations be satisfied, nor do I think that any single criterion is of necessity conclusive although it may be. However, taken as a general guide, these criteria build up a picture of the total of the considerations involved in assessing what are closely related goods and services. In complex cases such as oppositions, the issue may only become clear on the provision of evidence that addresses factors such as those above.

Mr Munday drew my attention to the fact that many service station shops are now, in effect, mini markets, which sell a large range of household products and other goods as well as the more traditional lines of automotive products.  This submission is reflected in the evidence in support of the opposition that refers to 110 convenience stores attached to the opponent's service stations around the time of the priority date of this application as well as "1100 service stores".  I have already referred to the availability of certain items of clothing within such outlets: these items may carry the trade marks associated with the service stations.  I think that, on this basis, I accept Mr Munday's argument that the public would see the goods as being connected with the retail services carried on at the service station; or, that the owner of the service station had the goods made and the trade mark affixed under his aegis.  It may be that this conclusion might not be reached if the applicant had put in evidence and argument but this has not happened. 

Having regard to the way that the opponent has used its own trade marks, I am inclined to accept Mr Munday's submissions that the trade marks are deceptively similar; and, that the similarity between the trade marks is such that, in the context of the evidence before me, the concurrent use of the trade marks would lead to deception or confusion.  In the face of a more determined applicant and countervailing evidence and argument, these arguments may not have succeeded, but I am not to act as advocate for the applicant: Camelot Design, above. 

In summary, I am satisfied that the opponent has established prima facie that the trade marks are deceptively similar and that the goods and services are closely related.  The applicant has not put any evidence or argument to negative this.  The opposition therefore succeeds.

Decision

The opponent has been successful in making out a case for its opposition in terms of section 44.   I therefore refuse to register application 768006.

Costs

The opponents, having been successful, are entitled to their costs if they wish to claim them.  I award costs against the applicant.

Ian Thompson
Hearing Officer

4 September 2000