Carl Zeiss AG v Zhang Yimin

[2009] ATMO 69

TRADE MARKS ACT 1995

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

Re:Opposition by Carl Zeiss AG to protection of International Registration Designating Australia 1123520(9) – International Registration No 886551(9) - SKYPAL - filed in the name of Zhang Yimin.

Delegate:	Frances Aarnio
Representation:	Opponent:  Marion Heathcote of Davies Collison Cave, Sydney Holder:  Not represented
Decision:	2009 ATMO 69 Regulation 17A.29 opposition:  Grounds under reg 4.15A/s44, s 59 and s 60 pursued – grounds under s 59 and s 60 not established – ground under reg 4.15A established in respect of some goods - opposition successful – protection extended in respect of remaining goods listed in the IRDA.

Background

1. On 25 April 2006 Zhang Yimin (‘the holder’) requested protection in Australia for the following International Registration Designating Australia (‘IRDA’):

Trade Mark No:          1123520

International
Registration No:           886551

Priority Date:               25 April 2006

Goods:  Class 9:  Computer peripheral devices; network
  communication equipment; megaphones; camcorders;
  earplug ware; mouse (data processing equipment);
  cabinets for loudspeaker microphones; headphones;
  sunglasses

Trade Mark:                SKYPAL

1. The IRDA was examined, and, on 24 August 2006, IP Australia advertised in the Official Journal of Trade Marks its intention to extend protection to Australia.

2. On 24 November 2006 Carl Zeiss AG (‘the opponent’) filed a notice of opposition to extension of protection of the IRDA to Australia, listing all the grounds of opposition allowable under the Trade Marks Act 1995 (‘the Act’).  By notice dated 1 December 2006 the International Bureau of the World Intellectual Property Organisation was advised of refusal of protection based on the opposition.  That notice included a reminder to the holder that, if it wished to participate in the opposition, it would need to file an address for service in Australia within three months, as per reg 17A.33(3) of the Trade Mark Regulations (‘the Regulations’).

3. The opponent filed evidence in support of the opposition.  The holder did not provide an address for service in Australia, or seek an extension of time to do so, and the opponent was not required to serve a copy of its evidence on the holder.

4. IP Australia subsequently wrote to the holder setting a date for service of evidence in answer.  No reply was received and the holder did not file or serve any evidence.

5. The opponent requested to be heard, and the matter came before me as a delegate of the Registrar of Trade Marks in Sydney on 4 May 2009.  Marion Heathcote of Davies Collison Cave represented the opponent.  The holder was not represented, did not appear at the hearing or make written submissions.

6. The applicable law is that which existed as at the priority date, 25 April 2006.

7. The opponent has the onus of establishing a ground of opposition on the balance of probabilities.[1]

   [1] Pfizer Products Inc v Karam [2006] FCA 1663.

   Evidence

8. The opponent’s evidence in support comprised:

   ·    Statutory declaration of Katherine Louise Kemp, with Exhibits KK1 to KK5.     Ms Kemp is a trade mark searcher of 21 years experience, currently employed by Davies Collison Cave, Sydney, attorneys for the opponent.  She gives details of a search she conducted of the Australian Trade Marks office database for trade marks containing the prefix SKY or the suffix PAL.  She also provides the results of internet research she conducted in relation to goods produced by the opponent under the trade mark SKYPOL.

   ·    Statutory declaration of Claudia Bolsinger, with Exhibit CB-1.  Ms Bolsinger is a managing clerk in the Corporate Legal Affairs Department of Carl Zeiss AG, the opponent.  She attests to her knowledge of ownership and use of trade mark registrations 502566 HYPAL and 961839 SKYPOL by the opponent and its subsidiary,

   Discussion

9. At the hearing the opponent pursued grounds under reg 4.15A/s44, s59 and s60 only.  For completeness, I record that the opponent has not established the remaining grounds listed in the Notice of Opposition.

   Section 44

10. Section 44(1) of the Act reads:

    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.
    Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia:  see Part 17A.

11. Regulation 4.15A provides grounds similar to those under s 44, which allow an IRDA to be cited against another trade mark application, as per note 4 in section 44 quoted above.

12. To be successful the opponent must establish a registered or pending trade mark which (i) has an earlier priority date than the priority date of the opposed trade mark application, (ii) is substantially identical with or deceptively similar to the opposed mark, and (iii) is for the same or similar goods or closely related services.

13. The opponent relies on the following registered trade marks:

Trade mark/IRDA	Goods	Priority date
Trade mark no 502566 HYPAL	Class 9: Spectacle lenses, including tinted lenses and such lenses made of plastics material	5 January 1989
IRDA 961839 (International Registration  no 804733) SKYPOL	Class 9: Optical apparatus and instruments; spectacles, spectacle lenses	30 May 2003

Priority date

1. Both of the opponent’s marks have priority dates earlier than that of the opposed IRDA.

   Similar goods

2. The opponent submitted that sunglasses included in the holder’s specification are the same or similar to the goods for which the opponent’s trade marks are registered.   

3. Drawing my attention to the following definition of “sunglasses” as listed in the Macquarie Dictionary, 2^nd Edition:

   Spectacles having tinted, darkened or Polaroid lens to protect the eyes from glare or sun

   the opponent argued that the spectacle lenses covered by trade mark 502566 would include not only lenses designed for vision correction but also lenses designed for sun protection, and lenses which are designed to fulfill multiple roles, including sun protection.  Similarly, spectacles and spectacle lenses covered by trade mark 961839 would include sunglasses, sun protection lenses, multi purpose spectacles and their lenses. 

4. Romer J in Jellinek’s Application[2] observed that the question of similar goods requires a consideration of the nature, use and trade channels of the respective sets of goods.  In John Crowther & Sons (Milnsbridge) Ltd,[3] the Assistant-Comptroller elaborated on those observations.  At 372 he said:

   In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application (1946) 63 RPC 59 Romer J classified these various factors under three heads, viz, the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself.

   [2] (1946) 63 RPC 59.

   [3](1948) 65 RPC 369.

5. I think there is no doubt that sunglasses are the same or similar to spectacles and spectacle lenses covered by the opponent’s trade marks.  Sunglasses are simply spectacles designed for glare or sun protection.   As with other spectacles, sunglasses can be mass-produced or custom-designed with prescription frames and lenses, including lenses which serve multiple purposes of vision correction and eye protection.  They come in a very wide variety of styles (including traditional framed, frameless, and clip-on) and their lenses can be fixed or interchangeable.    Sunglasses and sunglass lenses are sold through the same trade channels as other spectacles and spectacle lenses and those engaged in their manufacture and distribution would regard them as belonging to the same trade.

   Comparison of marks

6. The opponent argued that its trade mark 961839 SKYPOL is substantially identical to the opposed IRDA.  In summary its reasons were:

   • There is only letter difference between SKYPOL and SKYPAL.
   • Each trade mark appears in ordinary block type.
   • Each trade mark commences with the prefix SKY and ends with a similar suffix.

7. On the question of substantial identity Windeyer J said in Shell Co (Aust) Ltd v EssoStandard Oil (Aust) Ltd[4] at 414-415:

   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 dissimilarity that emerges from the comparison . . .

   [4](1963) 109 CLR 407 (‘Shell’).

8. When I compare the opponent’s trade mark side by side with the IRDA, I find they are not substantially identical.  The difference between POL and PAL is obvious and, in my view, sufficient to establish the trade marks are not substantially identical.

9. I turn now to the question of deceptive similarity.

10. In terms of s 10 of the 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.

11. The tests for deceptive similarity are well known.  They rely on a comparison of the net impression created by each of the competing marks.[5]  In Australian Woollen Mills[6] at 658 Dixon and McTiernan JJ stated:

    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, 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.

    5 Shell (1963) 109 CLR 407; Australian Woollen Mills v FS Walton & Co Ltd (1937) 58 CLR 641 (‘Australian Woollen Mills’).

    6 (1937) 58 CLR 641.

12. Taking into account the change in onus under the 1995 Act, French J in Registrar ofTrade Marks v Woolworths[7] recast the established criteria.  At 428 he said:

    [7] (1999) 45 IPR 411.

    In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 94-5, 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.

13. I agree with the opponent that trade mark 961839, SKYPOL, and the opposed IRDA, SKYPAL, are deceptively similar. 

14. The trade marks are invented words consisting of two syllables.  The first syllable in each is identical, being the prefix SKY.  The second syllable in each is very similar, being the suffixes POL and PAL.  As a whole the marks are visually and aurally very similar and create similar impressions.

15. In a purchasing environment where particular care is likely to be taken, as may occur with eyewear at the top end of the market, the visual and aural differences between the marks may be sufficient to diffuse any likelihood of confusion.  However, the overlapping goods are not limited to any particular quality.  They would include goods across all styles and price ranges, the buying public would include most members of the community, and the most likely manners of purchase would be in busy shopping environments or via the internet.  In such circumstances, the minor differences between the marks would go unnoticed or would be difficult to detect, and a real likelihood of confusion would exist.  On the basis of imperfection recollection, the trade marks could easily be confused.   

    Bridging over

16. Referring me to Taylors Drug Co Ltd’s Application[8] and James Hardie & Co Ltd v Asbestos Products Ltd[9], the opponent urged me to consider that deception and confusion would also be likely to arise on the basis that the opposed IRDA, SKYPAL, is the result of a “bridging over” of the opponent’s marks, HYPAL and SKYPOL. 

    [8] (1923) 40 RPC 193.

    [9] (1937) 7 AOJP 767.

17. I do not find the opponent’s arguments on this point persuasive.  In both of the cases referred to, there was evidence available to the decision maker as to the fame or reputation of the “bridged over” marks.  While the opponent has provided some evidence of use of the trade mark SKYPOL in Australia in relation to lenses, the evidence is not sufficient to establish the trade mark is well-known or that it enjoys a strong reputation in Australia.  There is no evidence before me relating to use of the trade mark HYPAL in Australia.  Without more, I cannot be satisfied that the buying public would know of the trade mark HYPAL, let alone that they would draw the inference the opponent is suggesting.

    Summary

18. I am satisfied that the opposed IRDA, SKYPAL, is deceptively similar to the opponent’s registered trade mark 968139, SKYPOL, which has an earlier priority date.  I am also satisfied that sunglasses covered by the IRDA are identical or similar to goods included in the specification of trade mark 968139.  The opponent has therefore established the reg 4.15A ground of opposition. 

    Section 59

19. Section 59 states:

    Applicant not intending to use trade mark

    59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

    (a) to use, or authorise the use of, the trade mark in Australia; or
    (b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

    in relation to the goods and/or services specified in the application.

    Note:  For applicant see section 6.

20. In Americana International Limited v Suyen Corporation[10] the Registrar's delegate summarised a number of principles from case law under s 59.  Those which are relevant in the circumstances of this case are:

    ·Section 59 refers to a continuing or current intention to use the trade mark.[11]

    ·The act of filing of a trade mark application is prima facie evidence of intent to use the mark.[12]

    ·The onus is on the opponent to establish a prima facie case of lack of intention to use.  If such a case is established, the onus is then on the applicant or holder to refute the opponent's claims.[13]

    ·An inference can be drawn to indicate a lack of intention to use.[14]

    [10] (2008) 75 IPR 596.

    [11] Sapient Australia Pty Ltd and Sapient Corporation v SAP AG (2002) 55 IPR 68 (‘Sapient’).

    [12] Aston v Harlee Manufacturing Co (1960) 103 CLR 391.

    [13]Sapient (2002) 55 IPR 68.

    [14]Ibid.

21. Delegates of the Registrar have found a lack of intention to use may be inferred from :

    ·   a history of failed attempts to communicate with the applicant;[15]

    ·   the applicant providing an incorrect or incomplete address on the application, or applicant moving from the address provided on the application and failing to inform the Registrar of its current address.[16]

    [15] Cadbury Limited v Cream & Dream s.r.o. [2008] ATMO 60 (‘Cream & Dream’).

    [16] Apple Inc v Artistic Licence International [2009] ATMO 15 (‘Apple’).

22. The opponent submitted that, regardless of the holder’s intention at the time of filing the IRDA, the holder no longer had an intention to use the trade mark in Australia in relation to the specified goods and, as per Cream & Dream,[17] the provisions of s 59 should be deemed established.

    [17]Cream & Dream[2008] ATMO 60.

23. There is sufficient evidence, the opponent argued, for an inference to be drawn that there was a lack of intention to use and to shift the burden of proof from the opponent to the holder.  That evidence is: 

    ·    the holder’s failure to respond once the opposition was filed;

    ·    its failure to provide an address for service in Australia;

    ·    its continuing lack of action in relation to the opposition proceedings; and

    ·the history of the holder’s International Registration 886551 as shown on the WIPO database.

24. In regard to the latter, the opponent referred me to a search of the WIPO database conducted in relation to International Registration 886551 which shows that, in addition to Australia, six of the 10 nominated designations have issued Notices of Provisional Refusal of Protection. Of those six designations, four have also issued statements refusing protection of the mark.  This has occurred, the opponent submits, without any apparent action on the part of the holder.  The opponent contends that, as  was the case in Apple,[18] there would be no breach of natural justice if the information were taken into account even though this information has not been brought into the proceedings by way of formal evidence. It is factual information on the public record that would be available to the holder who is likely to be aware of the status of its own trade mark registration.

    [18] [2009] ATMO 15.

1. I am not prepared to take into account the status of the WIPO database even though the information is factual and available to the general public, including the holder.    In my view, if I am being asked to draw an inference from material relating to history of the international registration in other jurisdictions, particularly an inference that may adversely affect the holder, the material should be brought into formal evidence and the holder at least provided with an opportunity to respond.  Even if I were to consider the material, I do not consider I would be able to draw anything from it that would assist in the present case.  The holder’s failure to act in relation to its trade mark registration in other jurisdictions does not speak for its intentions regarding its trade mark in Australia. 

2. The opponent’s case, then, is limited to the holder’s failure to participate in the opposition proceedings.  I am not satisfied this is sufficient to shift the onus to the holder.  There may be many reasons why the holder has not responded to the opposition.  As indicated by the Registrar’s delegate in Television Food Network GPv Food Channel Network Pty Ltd[19], the failure may point to a lack of intention to use the trade mark, but it could also point to misunderstandings or disorganisation within the holder’s company.

   [19] [2006] ATMO 88.

3. The opponent has not established the s 59 ground. 

   Section 60

4. Section 60, in the form applicable, reads:

   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.

5. To satisfy this ground of opposition, the opponent needs to establish:

   Ø   A pre-existing trade mark;

   Ø  substantial identity or deceptive similarity between the IRDA and the pre-existing trade mark;

   Ø  the acquisition, by the relevant date, of a reputation in Australia by the pre-existing trade mark; and

   Ø  a likelihood that, because of that reputation, use of the IRDA would deceive or cause confusion.

6. I have already found the opponent’s pre-existing trade mark 961839 SKYPOL is deceptively similar to the opposed IRDA. 

7. In McCormick & Company Inc v McCormick[20] Kenny J at [81] set out criteria for assessing reputation.  Applied to this opposition, those criteria may be restated as:

   Does the evidence establish that in Australia before the opponent’s SKYPOL trade mark was recognized by the public generally and, because of that, the use by the holder of its SKYPAL 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 the holder’s product to the company?

   [20][2000] FCA 1335.

8. The Bolsinger declaration establishes that in the four years between 1 October 2002 and 30 September 2006 the opponent sold in Australia 86 SKYPOL sunglass lenses, the approximate cost of a lens given not in Australian dollars but in euros.   The opponent has not provided any further evidence to establish the nature of those lenses.  There is no annual breakdown of figures, no indication of the geographical extent of the sales, no indication of market share, or any other evidence that would assist me in determining the buying public’s perception of the trade mark in Australia.   On the basis of such scant evidence, I am not satisfied the opponent’s trade mark SKYPOL has the required reputation. 

9. The s 60 ground is therefore not established. 

   Decision

10. Subregulation 17A.34(1) provides:

    17A.34(1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

    (a) to refuse protection in respect of all of the goods or services listed in the IRDA; or

    (b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

    having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

11. The opponent has established the opposition ground under reg 4.15A in respect of some of the goods listed in the IRDA, namely sunglasses.

12. I therefore decide to extend protection one month from the date of this decision in respect of the remaining goods listed in the IRDA, namely computer peripheral devices; network communication equipment; megaphones, camcorders; earplug ware; mouse (data processing equipment); cabinets, phones, headphones.  

13. If the Registrar has been served with a notice of appeal before that time, I direct that protection shall not occur until the appeal has been decided with protection proceeding or discontinued or, if this decision be successfully appealed, that the application be dealt with as the Court sees fit.  If the Registrar has not been served with a notice of appeal before that time the International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accord with reg 17A.34(2).

    Costs

14. The opponent requested its costs in this matter.  The opponent being the successful party, I award costs against the holder at the official scale.

    Frances Aarnio
    Hearing Officer
    Trade Marks Hearings
    31 August 2009