Citizen Tokei Kabushiki Kaisha v Micro Forte Pty Limited

[2003] ATMO 64

TRADE MARKS ACT 1995

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

Re:Opposition by CITIZEN TOKEI KABUSHIKI KAISHA to registration of trade mark application 841368(9) - BIGWORLD:  CITIZEN ZERO - filed in the name of MICRO FORTE PTY LIMITED.

Delegate:

Claudia Murray

Representation:

Opponent
Carmen Champion, of Counsel, instructed by Hodkinson and McInnes, Patent and Trade Mark Attorneys
Applicant
David Rainey, of Pizzeys Patent and Trade Mark Attorneys

Decision:

1. Section 52 Opposition: registration allowed - s 55(b)

2. Costs awarded against opponent

Background

1. Micro Forte Pty Limited (the applicant) filed trade mark application no. 841368 on 4 July 2000. The subject of the application is the word trade mark:

   BIGWORLD:  CITIZEN ZERO

2. The application was filed in class 9 of the International (Nice) Classification of Goods and Services, for "Electronic equipment and apparatus, electronic games and computer games, automatic vending machines and mechanisms for coin operated apparatus". No grounds of rejection under the Trade Marks Act 1995 (the Act) were raised against the application during examination, which was advertised accepted for registration in the Australian Official Journal of Trade Marks, on 8 February 2001.

3. On 16 May 2001, after obtaining a brief extension of time to do so, Citizen Tokei Kabushiki Kaisha (the opponent) filed notice of opposition to registration of the trade mark. Nine grounds of opposition were listed in the notice.

4. The opponent's evidence in support was eventually filed and served almost exactly two years later. The applicant elected not to provide evidence in answer, and the opponent then requested a hearing upon the matter. This was held before me, as a delegate of the Registrar, in Canberra, on 22 July 2003. Ms Carmen Champion, of Counsel, instructed by Ms Helen Peachey of Hodkinson and McInnes, Patent and Trade Mark Attorneys, Sydney, represented the opponent by telephone. Mr David Rainey, of Pizzeys Patent and Trade Mark Attorneys, Canberra, provided written submissions on behalf of the applicant for consideration at the hearing.

   The evidence

5. The opponent's evidence in support of its opposition comprises a statutory declaration by Satoshi Kimura, General Manager of the Intellectual Property Department of the opponent, dated 28 April 2003. Mr Kimura provides a brief history of his company, and its use of the trade mark CITIZEN. He explains that the Mayor of Tokyo originally recommended the adoption of the word CITIZEN, and that the founder of the company adopted CITIZEN as part of its corporate identity and its "house-mark" in the early 1920's. Mr Kimura declares that the company first produced CITIZEN watches for the Japanese market in 1924, first exported to Australia in 1965, and in 1986 was identified as "the world's No.1 watch manufacturer". Mr Kimura also declares that, prior to July 2000, his company had sold CITIZEN calculators, printers, LCD TVs, radios and cassette players, in Australia.

6. Exhibits A to I accompany Mr Kimura's declaration, being mainly copies of advertising catalogues, etc.

   Grounds of opposition

7. At the hearing, Ms Champion advised that the opponent would be relying on grounds of opposition under sections 42, 43, 44 and 60 of the Act.

   Section 42 - use of trade mark contrary to law

8. Section 42 of the Act relevantly provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law. Ms Champion submitted that the applicant's use of its trade mark on any of the goods specified in its application would be contrary to law under section 42. This was because such use would contravene section 52 of the Trade Practices Act 1974 (the TPA), section 120 of the Trade Marks Act 1995 (the Act), and/or constitute passing off at common law.

9. Section 52 of the TPA provides:

   (1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

10. Section 120 of the Act deals with the infringement of registered trade marks. Infringement proceedings, unlike opposition proceedings, cannot be brought before the Registrar of Trade Marks, but only before the courts prescribed, which include the Federal Court, under section 190.

11. Ms Champion cited Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 and Global Sportsman Pty Ltd v Mirror Newspapers Pty Ltd (1984) FLR 82 in arguing that, for conduct to be misleading or deceptive in terms of the TPA, it must:

    Convey a misrepresentation; and result in a real or not remote chance or possibility, regardless of whether it is more or less than fifty percent, of the class of consumers likely to be affected by the conduct (including the astute and the gullible, the intelligent and the not so intelligent, the well educated and the poorly educated) being misled or deceived.

12. Further, Ms Champion submitted, to succeed in an action for passing off a plaintiff must establish reputation, misrepresentation and the likelihood of damage (Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 and Betta Foods Australia Pty Ltd v Betta Fruit Bars Pty Ltd (1998) ATPR 41-624). She argued that there is no requirement of an intent to deceive and no need to prove fraud (Office Cleaning Services Ltd v Westminster Office Cleaning Association [1944] 2 All ER 269). Ms Champion continued:

    It is sufficient that the defendant's conduct is calculated or likely, rather than intended, to deceive. The test for determining that question is the likely impression on the casual and unwary customer, and it is no answer that an observant person making a careful examination would not have been misled. The appropriate standard is that of the typical customer for the goods in question.

13. Finally, in relation to the opponent's claims of infringement under section 120, Ms Champion indicated that it was relying upon its trade mark registrations numbered 196552, 407018 and 544673. The details of these trade marks are as follows:

TM No.	T/Mark	Filing Date	Class	Statement of Goods
196552	CITIZEN	12 Aug 65	9	Electric adding machines and other electric computing machines, parts thereof and accessories therefor
407018	CITIZEN	17 Apr 84	9	Computers and peripheral equipment therefor in this class including videos for data communication terminals, printers, floppy disks, magnetic heads and floppy disk drives; applied electronic display apparatus in this class namely liquid crystal display panels, electrochromic displays and electroluminescent displays; electronic communication machines and apparatus in this class including television apparatus, radios, cameras, and magnetic tapes for video recording; electronic clinical thermometers, scales and weighing instruments or devices in this class; spectacles and parts thereof in this class; contact lenses
544673	CITIZEN	25 Oct 90	9	Electronic and electrical apparatus and instruments in this class, including electronic diaries which can be used like pocket notebooks and have calculator, telephone directory, calendar, schedule and memo functions; electronic time tables which can store transportation schedules such as those of buses, trains and airplanes, and have a clock function; portable computers including dictionary and foreign language translation capabilities; telephone apparatus; batteries, and all other goods in this class, but not including protective clothing

1. Mr Rainey made no written submissions in response to the opponent's ground of opposition under section 42. His comments indicated that the applicant had not deemed it necessary to respond specifically to all of the grounds.

2. Ms Champion directed her submissions to me in relation to section 52 of the TPA, section 120 of the Act, and the tort of passing off, as if my single decision in any one of these matters would directly represent success for her client in the current opposition. She has made some persuasive arguments in terms of how a decision-maker might reach a decision under those particular circumstances. However, a finding under section 42 of the Trade Marks Act 1995 requires, in effect, two separate, consecutive decisions to be made. Only the second of those decisions results in a finding within the Registrar's actual jurisdiction. The first decision is, to quote Madgwick J in Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, at paragraph 22, merely an "expression of an opinion upon a hypothesis". The Advantage-Rent-A-Car case discusses in some detail the principle that section 42 of the Act may require the Registrar to make determinations regarding issues of law outside of the discrete area of trade marks. At paragraph 28 Madgwick J said:

   I acknowledge the claim made by counsel for the Registrar that such an approach requires the Registrar to look at questions of law outside his or her expertise and that this can be difficult and may place a large and onerous responsibility upon the Registrar. However, the Registrar has the comfort that the criterion is that the use "would" not "could" be contrary to law...It should also be noted that what is required is that the Registrar form a view as to whether the use of a trade mark would be contrary to law.

3. The hypothetical scenarios painted by Ms Champion involving section 52 of the TPA and passing off, in reality would succeed only if a plausible case could be made that the applicant had engaged in behaviour contrary to those doctrines. The mere allegation that these doctrines have been breached is insufficient for even hypothetical success, given both the inherent nature of the applicant's trade mark, and also its differences from the opponent's trade marks. Shanahan's Australian Law of Trade Marks and Passing Off, 3^rd Edition, 2003 at page 598, discussing section 52 of the TPA, states: "Misleading conduct does not merely cause confusion; it actually directs a person towards the wrong choice". Ms Champion has described how the success of a passing off action depends upon being able to demonstrate that the conduct of a defendant is likely to deceive.

4. Further, the infringement provisions under section 120 allow a registered trade mark owner to obtain relief from a person found (by the court) to be using a substantially identical or deceptively similar trade mark in the manner specified, without the protection of the exceptions listed in subsequent provisions.

5. The opponent's submissions at the hearing were unsupported by any evidence relating to the circumstances I have described. Indeed, the opponent has led no evidence, not even "evidence of mere wonderment" on the part of the opponent itself (Shanahan, supra, at page 279), in relation to these matters. Under these circumstances, I have no basis for venturing even "an expression of an opinion upon a hypothesis", in Madgwick J's terms, upon the opponent's claims. It follows naturally that I am also not in a position to form the requisite view in terms of section 42 that the applicant's use of its trade mark would be contrary to the laws identified by the opponent. The ground of opposition under section 42 is therefore unsuccessful.

   Section 43 - Trade mark likely to deceive or cause confusion

6. Section 43 provides that an application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

7. Ms Champion cited Durkan v Twentieth Century Fox Film Corporation (1999-2000) 47 IPR 656 in support of her submissions. She argued that the evidence demonstrated the opponent's activities had resulted in the trade mark CITIZEN acquiring a "secondary meaning", being associated with the opponent in the minds of substantial numbers of the purchasing public in Australia and elsewhere. As a result, the overall connotation likely to be imparted to a significant section of the Australian public by the use of the mark CITIZEN as part of the opposed trade mark was that the applicant or its goods had an association or sponsorship they did not actually have.

8. Mr Rainey's comments in relation to the section 43 ground of opposition were that there was "not the slightest likelihood of deception or confusion" occurring through use of the applicant's trade mark BIGWORLD: CITIZEN ZERO in respect of the goods for which registration was sought. This was because, he submitted, the opponent's evidence had only established an Australian reputation in respect of watches, and to a significantly lesser extent, calculators.

9. The conditions under which a ground of opposition under section 43 should succeed can be a matter of some debate. The kind of circumstances most clearly intended to be addressed by that section occurred in the VITAMIN and ORLWOOLA cases (J. Kitchen & Sons Pty LTD v Inman (1939) 9 AOJP 1383 (Reg.), Re Trade Mark "Orlwoola" (1909) 26 RPC 850 (C.A.)). In those cases, there was a danger the public might make a reasonable, but incorrect, assumption about a product based upon the trade mark, which could not easily be confirmed or discounted by even close inspection of the product. The situation being addressed in Durkan v Twentieth Century Fox Film Corporation, supra, was different from this, and the situation here is different from both.

10. In Big Country Developments Pty Ltdv TGI Friday's Inc, [2000] FCA 720, 48 IPR 513, at 521, Wilcox, Kiefel and Emmett JJ commented:

    The case on deception and confusion sought to be made by Big Country and Friday's Australia in the present proceedings is one that falls outside the reasons specified in [section 43]. It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others. So the alleged deception or confusion is not for a reason covered by s 43.

11. Even were I to take a more liberal view of the scope of section 43 than perhaps suggested by this brief observation by the Full Federal Court, (see, for example, Lahore, Patents, Trade Marks and Related Rights (2001) at 54,275 and 66,125), this would not assist the opponent here. Conditions where an opponent could demonstrate the existence of a connotation now inherent in a word, but originally derived from use of that word as a trade mark and resulting in deception and confusion of the public when used as part of another trade mark, would be rare indeed. I am being asked to find that the ordinary meaning of the word CITIZEN has been eclipsed by the opponent's use of it as a trade mark, such that its presence in the trade mark BIGWORLD: CITIZEN ZERO causes that mark as a whole to connote an association with the opponent. There is a considerable burden of proof associated with such a claim, and the opponent's evidence falls very far short of discharging that burden. I find the ground of opposition under section 43 to be unsuccessful.

    Section 44 - substantially identical or deceptively similar trade marks

12. Subsection 44(1), applied to the present circumstances, provides that an application for registration must be rejected if it is substantially identical, or deceptively similar, to another person's trade mark application or registration that has an earlier priority date, and covers similar goods. The opponent's registrations all have much earlier priority dates than the subject application and, despite Mr Rainey's very brief assertions to the contrary, I find little merit in any suggestion that there is not a significant overlap between the goods covered by the trade marks at issue. The crux of the matter to be decided under section 44 is, therefore, whether the respective parties' trade marks are either substantially identical, or deceptively similar.

13. Ms Champion chose not to make any claims on the opponent's behalf that the trade marks were substantially identical. Accordingly, this aspect of the test under section 44 needs no further mention. She did, however, argue that the marks were deceptively similar. She referred me to the trade mark infringement case Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 26 IPR 246. In that case, Burchett J found the trade mark POLO to be infringed by the trade mark POLO CLUB. Ms Champion also drew my attention to the judge's observations (at page 250) upon de Cordova v Vick Chemical Coy (1951) 68 RPC 103, where a registered trade mark containing the words VICKS VAPORUB SALVE was found to be infringed by use of the trade mark KARSOTE VAPOUR RUB.

14. Mr Rainey argued that there were compelling differences between the applicant and opponent's trade marks. The most important of these were:

    The applicant does not use the word "citizen" in its mark in a singular sense in a manner which could lead to its products being known as, for example, BIGWORLD CITIZEN computer games. Rather in its mark BIGWORLD:  CITIZEN ZERO, the applicant uses the word "citizen" in the honorific or titular sense of the word, ie as in CITIZEN KANE, CITIZEN DANTON, CITIZEN SMITH. This too lends greater distinctiveness to the mark.

    [Additionally], in the applicant's mark BIGWORLD:  CITIZEN ZERO, the honorific "citizen" is followed by the name ZERO. This links the name of the game with characters of fiction whose name is ZERO, ie CAPTAIN ZERO, JOHNNY ZERO and MR ZERO, thereby lending a yet further level of distinctiveness to the applicant's mark BIGWORLD:  CITIZEN ZERO in comparison with the opponent's mark CITIZEN per se.

15. I agree with Mr Rainey's assessment. It is not sufficient, in considering whether the trade marks in question are deceptively similar, for the opponent to rely solely upon the fact that its trade mark is contained within the applicant's trade mark. It is important to consider the context in which the word CITIZEN appears, and the resulting impression it might create in the minds of customers. The familiar guidelines for recognising deceptive similarity laid out by Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd (1937) 58 CLR 641 at page 658 place a strong emphasis upon this factor:

    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 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.

16. In Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505, Burchett J found the trade marks VOGUE and EUROVOGUE with device not deceptively similar. He distinguished his earlier POLO CLUB decision, because there, "the original meaning of 'Polo' is retained and is dominant, so that a product labelled with the two words may be taken as merely the 'club' version of the Polo" (page 510). At pages 511-12, he continued:

    ... it should be borne in mind that "vogue" is neither a made-up word nor a word wholly without any direct application, in the ordinary use of language, to the goods in question. A trader is not entitled to monopolise such a word, denying its use entirely to other traders. Deceptive or confusing use is barred by the applicant's registration, but the court should be careful not to shut out inappropriately other traders from the fair use of the language in ways that will not in reality deceive or confuse.

17. Use of the word CITIZEN within the applicant's trade mark BIGWORLD:  CITIZEN ZERO is, in my opinion, a similar fair use of the language, equally unlikely to result in deception or confusion of the ordinary buying public. I find that the applicant and opponent's trade marks are not deceptively similar. The ground of opposition under section 44 therefore fails.

    Section 60 - trade mark with a reputation in Australia

18. To satisfy section 60, an opponent must demonstrate that, at the time of filing of the opposed application, it had a reputation in a substantially identical or deceptively similar trade mark, such that use of the applicant's trade mark would likely cause the public to be deceived or confused. The opponent's trade mark need not be subject of an application or registration, in order to be able to be relied upon under this section.

1. I have briefly discussed, in the context of the section 43 ground of opposition, the parties' divergent views of the nature and extent of the opponent's reputation in its CITIZEN trade mark. However, I have also found above that the registrations relied upon by the opponent in relation to section 44, which it also relies upon for its section 60 ground, are not deceptively similar to the applicant's trade mark. The opponent's case under section 60 accordingly stalls at this threshold, and cannot succeed.

   Decision

2. I have found that the opponent has not succeeded under any of the grounds pursued at the hearing. For completeness, and as I have no basis to be satisfied that the other grounds raised in the notice of opposition have been made out, I find each of those grounds also to be unsuccessful. Trade mark application number 841368 may therefore proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

   Costs

3. Both sides have claimed their costs in the opposition. Further, Mr Rainey argued for "a special award to cover the applicant's additional expenses associated with the opponent's protracted extensions of time (seven extensions totally 21 months) to prepare the Evidence-in-support". While I have every sympathy for a party aggrieved by the tardiness of an opponent in producing its evidence, the provisions of regulation 21.13 of the 1995 Trade Marks Regulations (the Regulations) allow for no such special award in relation to extensions of time. I therefore award costs in these matters in accordance with the official scale set out in Schedule 8 of the Regulations, against the unsuccessful opponent, Citizen Tokei Kabushiki Kaisha.

   Claudia Murray
   Hearing Officer
   Trade Marks Hearings
   24 October 2003