Champ International Sales Pty Ltd v Che Shing Co Pty Ltd

[2011] ATMO 8

TRADE MARKS ACT 1995

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

Re:Opposition by Champ International Sales Pty Ltd to registration of trade mark application 1113816(35) - MOTOQUIPE - filed in the name of Che Shing Co Pty Ltd.

Delegate:	Debrett Lyons
Representation:	Opponent: Mark Goldblatt of counsel instructed by Goldsmiths Lawyers Applicant:   No representation – written submissions only
Decision:	2011 ATMO 8 S. 52 opposition: ss. 42(b), 44, 58 and 60 pressed; none established and oppositions fails. Costs: opponent to pay applicant’s costs

Background

1. Che Shing Co Pty Ltd (‘the applicant’) is the applicant for registration of a trade mark, current details of which are:

   Application No:               1113816
   Priority Date:                   16 May 2006

   Services:Class: 35 Retailing of car accessories, car audio and car visual equipment, and spares (by any means)

   Trade Mark:  MOTOQUIPE

   Endorsement: Provisions of subsection 44(4) applied

2. Following examination, the application was accepted on 5 October 2007 for possible registration and advertised as such in the Official Journal of Trade Marks on 18 October 2007.

3. On 30 January 2008, Champ International Sales Pty Ltd (‘the opponent’) filed a Notice of Opposition under section 52 of the Trade Mark Act 1995 (‘the Act’), opposing the registration of the trade mark.

4. The parties duly served and filed evidence in support and evidence in answer to the opposition.  The evidence served and filed by the opponent consists of Statutory Declarations by:

   ·David Treiser declared 16 April 2008 including exhibits “DT-1” to “DT-6”;

   ·David Treiser declared 13 February 2009 including exhibits “DT-7” and “DT-13”;

   ·Shane Muhamit Shahin declared 13 February 2009;

   ·David Treiser declared 30 October 2009 including exhibits “DT-14” to “DT-19”; and

   ·Shane Muhamit Shahin declared 30 October 2009.

5. The evidence served and filed on behalf of the applicant consists of Statutory Declarations by:

   ·Yeong Kang Ng declared 15 October 2008 including exhibits “YKN-1” to “YKN-17”;

   ·Phillip Martin Cash declared 15 October 2008;

   ·Jack Highland declared 15 October 2008 including exhibits “JH1”;

   ·Adrian Highland declared 12 June 2009.

   ·Adam Walters declared 12 June 2009;

   ·Tai Yu Ng declared 16 June 2009; and

   ·Yeong Kang Ng declared 21 June 2009. 

6. The opponent asked to be heard and the matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Melbourne on 18 October 2010.  The opponent was represented by Mark Goldblatt of Counsel, instructed by Goldsmiths Lawyers. The applicant was not represented and relied on the written submissions of its agent, Madderns, Patent & Trade Mark Attorneys.

7. The Notice of Opposition cited most grounds of opposition available to the opponent under the Act; however, in submissions the opponent limited its grounds of opposition to those under sections 42(b), 44, 58, and 60.  The Opponent expressly stated that the remaining grounds of opposition were abandoned.

8. For the purposes of section 44, the registrations on which the opponent relies are:

Trade Mark
Trade Mark No.	638952
Priority Date	29 August 1994
Specification	Class: 12 Car aerials and aerial lead extensions; battery hold downs, battery test clips and booster cables, bonnet safety hooks, cable ties, cigarette accessory plugs and lighters for vehicles, circuit testers, funnels, gear knobs, mirrors, mud flaps, pumps, windscreen wipers, steering wheel covers, tyre gauges, windscreen washers and washer motors, and wheel braces, all included in Class 12

Trade Mark
Trade Mark No.	1055943
Priority Date	19 May 2005
Specification	Class: 8 Hand tools Class: 12 Spare parts and accessories used for motor vehicle applications

(‘the opponent’s registrations’)

Discussion

1. In opposition proceedings before the Registrar, the opponent bears the onus of establishing at least one ground of opposition stated in the Notice of Opposition on the balance of probabilities.[1]

   [1] Pfizer Products Inc v Karam (2006) 70 IPR 599, per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 at [22] to [26].

2. As a preliminary comment, I note that in spite of the many declarations made in this matter, very little of the content therein bears on the fundamental points that must be determined, having regard to the grounds of opposition pressed by the opponent.

   Section 44   

3. Section 44(2) of the Act states:

   44Identical etc. trade marks

   (2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a)it is substantially identical with, or deceptively similar to:

   (i)a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

4. Thus, in order to establish this ground, the opponent must establish:

   ·     the existence of one or more trade marks registered or pending in the name of a person other than the applicant;

   ·     that/those trade marks having earlier priority date(s) than that of the opposed trade mark;

   ·     that/those trade marks must be registered or pending in respect of goods which are similar, or services which are closely related, to those in respect of which the opposed application is made; and

   ·     the opposed trade mark must be substantially identical or deceptively similar to the trade mark(s) on which the opponent relies.

5. The opponent’s registrations have earlier priority dates than that of the opposed trade mark.  It is very clear that the services in respect of which the opposed trade mark is sought to be registered are closely related to the goods of the opponent’s registrations.  It remains only to be determined whether the trade marks of the parties are (or are not) substantially identical or deceptively similar.

6. Substantial identity is to be assessed according to the test in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407, where Windeyer J said at page 414:

   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. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.

7. It is evident from an application of that test that the respective trade marks are not substantially identical. 

8. In the same case, Windeyer J went on to state that:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions.

9. The word elements of the compared trade marks are virtually identical.  When pronounced, I would think that MOTOQUIPE and MOTOQUIP (or MOTO-QUIP) sound identical.  Whilst the added matter in the opponent’s registrations prevent, in my view, a finding of substantial identity with the applicant’s trade mark, I think there is no doubt that the overall impression of the compared marks is the same.  I decide that they are deceptively similar.

10. It is likely that the trade mark examiner followed this same reasoning when she cited the opponent’s registrations against the applicant as a bar to acceptance of the application under section 44 of the Act.  Nonetheless, the examiner was persuaded to apply section 44(4) which states:

    (4)     If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

    (a)beginning before the priority date for the registration of the other trade mark in respect of:

    (i)        the similar goods or closely related services; or

    (ii)       the similar services or closely related goods; and

    (b)       ending on the priority date for the registration of the applicant’s  trade mark;

    the Registrar may not reject the application because of the existence of the other trade mark.

11. The evidence served and filed in these proceedings does not include whatever was presented to the trade mark examiner which caused her to invoke section 44(4).  Nevertheless, from the evidence now before me in this opposition, it is clear that the applicant has used the trade mark of the application continuously since 1991 in relation to services which I have already determined to be closely related to the opponent’s goods.

12. The Notice of Opposition did not include reference to section 58A of the Act which came into operation after the application was filed.  Section 58A states:

    58AOpponent’s earlier use of similar trade mark

    (1)This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

    (a)subsection 44(4); or

    (b)a similar provision of the regulations made for the purposes of Part 17A.

    Note:Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first‑mentioned trade mark has been continuously used since before the priority date of the other trade mark.

    (2)The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

    (a)first used the similar trade mark in respect of:

    (i)similar goods or closely related services; or

    (ii)similar services or closely related goods;

    before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

    (b)has continuously used the similar trade mark in respect of those goods or services since that first use.

    Note:For predecessor in title see section 6.

13. Whether or not it would have been appropriate for me to take section 58A into account in reaching my findings, it would have had no ultimate impact on the outcome of the opposition because, by the opponent’s own admission, the trade marks of the opponent’s registrations have only been used since 2004.

14. The opponent has failed to establish its section 44 ground of opposition.

    Section 58

15. Section 58 states:

    58Applicant 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.

16. Opposition to registration based on section 58 can not be established for at least the following reasons: (i) I have already found that the parties’ trade marks are not substantially identical; (ii) if I was to be found incorrect in that regard, the applicant is the first user of the trade mark in Australia.

    Sections 42(b) and 60

17. These remaining grounds of opposition share for their success a common dependency upon proof of reputation in Australia before 16 May 2006 in one or both of the trade marks of the opponent’s registrations.

18. In McCormick & Co Inc v. McCormick (2000) 51 IPR 102, Kenny J discussed the meaning of “reputation” in section 60 and said that it was permissible to infer reputation from the high volume of sales and advertising expenditure.

19. Mr. David Treiser is the director of the opponent, a position he has help since 1999 when the opponent was incorporated.  Mr. Treiser declares that the opponent has used its trade marks in Australia since 2004.   There are no sales figures given for goods bearing the trade marks before 16 May 2006.  The only figures are from 2007 during which year Mr. Treiser declares that $10,000 worth of products bearing the trade marks were sold.  He states that the “trade marks have not been used extensively upon products in Australia”.  He states that “the trade marks have not been promoted extensively by way of advertising”.

20. If I adapt the wording of Kenny J. in McCormick & Company Inc v McCormick (2000) 51 IPR 102 at [81] and pose the following question:

    Does the evidence establish that in Australia before [16 May 2006], the opponent’s mark was recognised by the public generally and, because of that, the use by the [applicant] of the opposed trade mark would be likely to cause the public confusion, as for example, by the public mistakenly attributing a business connection between the two or attributing [the applicant’s] product to [the opponent]?

    my finding is that it does not.  Accordingly, section 60 is not established.

21. The ground of opposition based on section 42(b) requires evidence that use of the trade mark “would be contrary to law”. The Opponent submits that use of the trade mark would offend one or both of sections 52 and 53 of the Trade Practices Act 1974 and would constitute the tort of passing-off.

22. Given the absence of even the smallest reputation in the opponent’s trade marks before the priority date, the claims based on section 42(b) are unsustainable.  This ground is not established.

23. I use this opportunity to comment on the class 35 specification, as advertised, being: Retailing of car accessories, car audio and car visual equipment, and spares (by any means).  The words “by any means” add nothing and their inclusion render the scope of any resulting registration slightly vague and out of conformity with other similar acceptances in class 35.  Those words are to be deleted.

    Decision

24. Section 55 of the Act provides:

    Decision

    55. Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

    (a) to refuse to register the trade mark; or
    (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

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

    Note:  For limitations see section 6.

25. I have found that the opponent has been unsuccessful under each of the grounds pressed.

26. The trade mark application may then proceed to registration one month from the date of this decision in respect of the following services: Retailing of car accessories, car audio and car visual equipment, and spares.

27. If the Registrar has been served with a notice of appeal against this decision, I direct that registration shall not occur until any appeal has been decided or discontinued and that the disposition of the application be in accordance with the Court’s direction or order.

    Costs

28. The applicant is the successful party and is entitled to its costs. Accordingly, I award costs against the opponent, as per Schedule 8 of the Regulations.

    Debrett Lyons
    Hearing Officer
    Trade Marks Hearings
    25 January 2011