Craig Anthony O'Sullivan v Michael Frederick Lewis

[2005] ATMO 52

TRADE MARKS ACT 1995

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

Re:Opposition by Craig Anthony O'Sullivan to registration of trade mark application 920765, 920766 (1,3) - FIVE STAR - filed in the name of Michael Frederick Lewis.

Delegate:

Jock McDonagh

Representation:

Opponent:  Mr David Kell of counsel, instructed by Moloney Lawyers

Applicant:  Mr Scott Buchanan, solicitor, of Buchanan Law instructed by Trademarks Australia

Decision:

Section 52 opposition: ss 43, 44 and 60 not established. Provisions of s44(4) applied. Registration to proceed. Costs awarded against opponent

Background

1. The applicant, Michael Frederick Lewis, filed trade mark application for the following trade mark:

Application Number:

    920765  920766

Trade Mark:

  five star

Priority date:

24 July 2002

Goods:

Goods:

(cont’d)

Class 1   Chemical fuel injection treatments, radiator conditioner, coolant, radiator stop leak, radiator flush, radiator anti-rust, rust penetrant, distilled water for radiators,  decarbonising fluid for engines, engine oil treatment, oil conditioner, oil stabiliser, differential/gear additive diesel fuel conditioner, automatic transmission conditioner engine flush, air intake cleaner, water dispersant penetrant, chemical additives for fungicides, starter fluid for vehicles, oil treatment for vehicles, radiator sealant, fuel saving preparations in this class, chemical oil treatment, chemical and other additives for engines, fuel systems and radiators, including anti-freezing, rust inhibiting and leak inhibiting compound and preparations included in this class; additives for diesel fuels

Class 3   Carburettor and throttle body cleaner, brake and parts cleaner, tyre polish, glass cleaner for vehicles, degreaser including floor degreaser for vehicles

Advertised:

 5 June 2003

1. The opponent, Craig Anthony O'Sullivan, filed notice of opposition to the trade marks’ registration on 4 September 2003.  Following amendment, the notice listed five of the available grounds of opposition provided in the Trade Marks Act 1995 ("the Act"), however only those pursuant to sections 43, 44 and 60 of the Act were relied upon.

2. The opponent duly served and filed evidence in support. The applicant likewise served and filed evidence in answer.

3. The matter came to a hearing before me, as a delegate of the Registrar of Trade Marks, in Canberra on 14 June 2005. Mr David Kell of counsel, instructed by Moloney Lawyers, represented the opponent. Mr Scott Buchanan, solicitor, of Buchanan Law instructed by Trademarks Australia, represented the applicant.

Evidence

1. The evidence relating to the opposition consists of the following declarations:

Declarant	Date declared	Exhibits	Known As
Evidence in Support
Craig Anthony O’Sullivan	02.03.04	CAO1 to CAO6	O’Sullivan
Evidence in Answer
Michael Frederick Lewis	11.11.04	A to G	Lewis

1. At the hearing, counsel for the applicant advised that a copy of the opponent’s confidential exhibit CAO6 had not been served upon the applicant. After discussions with, and the concurrence of, counsel for the parties, pursuant to Regulation 5.16 I directed that the applicant may make further submissions regarding the confidential exhibit by the end of 24 June 2005, with the opponent having liberty to make submissions in answer. By letter dated 22 June 2005, the applicant’s representatives advised that the applicant would not make any further submissions.

2. The O’Sullivan declaration is made by the opponent, the owner of trade mark registration number 794484, with a priority date of 18 May 1999, as shown below:

3. Mr O’Sullivan’s trade mark is registered in respect of the following goods:

Class 1: Radiator sealant, radiator flush, radiator anti-rust, chemical oil additives, chemical oil treatment, engine flush, anti-freeze, radiator coolant, chemical diesel conditioner, chemical engine performance booster, rust inhibitors, engine smoke inhibitors, chemical engine starting fluid, and chemical fuel injection treatments

Class 3: Car shampoo, interior cleaner, soft wax, super cutting compound, glass cleaner, wheel cleaner, bug and tar remover, wash and shine, polymer wax, fibre shine, dashboard shine, washer additive, car wash, degreaser, brake cleaner, spray degreaser, tyre shine polish, vinyl and rubber polish and carburettor cleaner

1. The O’Sullivan declaration provides a history of the opponent’s trade mark, details of aspects of its use and marketing, of the trade channels of its goods, and cites some alleged incidents of confusion. It also exhibits the confidential exhibit referred to above.

2. The Lewis declaration is made by the applicant himself.  It also outlines the history of the applicant’s trade marks and the details of the applicant’s business, aspects of its use and marketing, the trade channels of its goods, and denies any alleged incidents of confusion.

Section 60 - Prior Reputation

1. To satisfy section 60, the opponent has the burden of establishing the following elements:

¨    a pre-existing trade mark;

¨    substantial identity or deceptive similarity between the applied for trade mark and the pre-existing trade mark;

¨    the acquisition of a reputation in Australia by the pre-existing trade mark; and

¨    a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

1. I am satisfied that the opponent’s trade mark was being used in Australia before the priority date. 

2. It is an element of both the s44 and s60 grounds of opposition that the mark is ‘substantially identical with or deceptively similar to’ an opponent’s mark.  The opponent submitted that the marks are substantially identical with, or deceptively similar to, the opponent’s mark.

3. In considering whether marks are ‘substantially identical’, they are to 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 that comparison’

   Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited (1961) 109 CLR 407 at 414-415.

4. The test to determine whether trade marks are 'deceptively similar' is set out in Shell Company  v Esso at 415:

   'The marks are not now to be looked at side by side [as for substantial identity].  The issue is not abstract similarity, but deceptive similarity … the comparison … 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 impression that such persons would get from the defendant's [trade mark]'

5. The Court added at 416, that:

   '[The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.'

6. I am satisfied that the applicant's device mark 920765 is substantially identical with the opponent's trade mark.  The essential feature of the opponent's mark is the word 5 star combined with the Southern Cross device.  This is also the essential feature of the opposed mark the subject of application number 920765 (with the word ‘five’ and the figure 5 being aurally indistinguishable and highly likely to lead to identical recall of this aspect in the mind of the consumer).  This essential feature heavily outweighs any differences between the marks so as to satisfy the test of substantial identity.

7. In both of the applicant's marks the dominant essential feature is the words five star.  As noted above, the word ‘five’ and the figure 5 are aurally indistinguishable and highly likely to lead to identical recall of this aspect in the mind of the consumer.  The opponent's mark and each of the applicant's marks are likely to be referred to by consumers and the trade as simply as the five star or 5-star mark with ‘5’ and ‘five’ likely to be used interchangeably and indiscriminately.

8. In terms of the doctrine of imperfect recollection, the consumer who has viewed the applicant's marks or the opponent's mark is likely to come away with retained (but imperfect) or recollection of the mark in each instance featuring the word 5-star or five star.

9. The applicant's marks and the opponent's mark in each used in respect of automotive accessory products.  For all practical purposes, the relevant goods at issue are the same.

10. I am satisfied that the applicant's word mark is also deceptively similar to the opponent's trade mark.

11. The next question, in respect of the section 60 ground, is whether the opponent has shown a sufficient reputation in its trade mark to satisfy the requirements of subsection 60 (b), such that the reputation is sufficient that deception and confusion is likely. The reputation must be shown to have existed at the priority date.

12. Reputation in Australia cannot be assumed - it must still be established as a question of fact - per Lockhart J in Conagra Inc v McCain Foods (Aust) Pty Ltd, (1992) 23 FCR 302. It is not necessary to prove reputation by direct evidence of consumer appreciation; it is commonplace to infer reputation from a high volume of sales, together with substantial advertising and other promotions: McCormick & Co Inc v McCormick (2000) 51 IPR 102, at 129.

13. The O'Sullivan declaration states that the opponent has supplied a wide range of automotive accessory products on a continuous basis since 1994.  The opponent distributes such products under a number of brands including its 5-star mark. The products are said to have been sold and distributed in very well-known retail outlets.  For the period up to the priority date the opponent lists by year sales figures totalling some $15 million over a period of eight years before the priority date.  There are no sums ‘spent’ on advertising, according to the opponent, because the opponent has an arrangement with retail customers whereby it allows them an advertising rebate of 12.2% of the wholesale value of the products purchased.

14. While the opponent has provided evidence of substantial sales and advertising rebates in respect of its products, I am not satisfied that this is sufficient to support the necessary inference of reputation.  In Briginshaw v Briginshaw (1938) 60 CLR 336, at 361-362, Dixon J stated:

    “The truth is that, when the law requires the proof of any fact, the tribunal must feel actual persuasion of its occurrence or existence before it can be found. It cannot be found as a result of a mere mechanical comparison of probabilities independently of any belief in its reality…”

15. I am concerned that the opponent has not provided sufficient details of sales and other promotions with specific reference to the 5-star mark.  Given the high volume of sales and the extensive customer base of high-profile retail outlets asserted, I would have expected that the opponent would have provided a breakdown of sales by trade mark/brand, and preferably with reference to retailer and/or geographical area.  Supporting documentation would have assisted in assessing reputation.

16. While in McCormick, supra, Kenny J states that it is commonplace to infer reputation from a high volume of sales, etc, her Honour had also stated that the “assessment of the reputation of a trade mark goes far beyond mere examination of sales… figures”.  It is difficult clearly to infer sufficient reputation merely from the sales figures provided in this instance.

17. The opponent's evidence relating to alleged confusion is also less than satisfactory.  The example of Nick's Automotive is second-hand hearsay and, in any event, apparently occurred after the priority date.  Likewise, the vague examples of telephone calls from wholesalers and consumers cannot be attributed to any time before the priority date.

18. I am not satisfied that the opponent has established the acquisition of a reputation in Australia by the pre-existing trade mark or a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

19. Consequently I dismiss this ground opposition.

Section 44 – Identical etc Trade Marks

1. To establish the s44 ground, the opponent must establish all of the following:

¨    At the priority date

¨    there was a substantially identical or deceptively similar trade mark application or registration

¨    in respect of similar goods or closely related services

¨    in the name of a person other than the applicant.

1. I have already found that there is a prior substantially identical or deceptively similar trade mark registration.  Counsel for the applicant conceded that the goods were similar.

2. The applicant raised the issue of the provisions of subsection 44(4).  This subsection allows:

   (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.

   Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2:For predecessor in title see section 6.

3. I am satisfied that the evidence of the numerous invoices exhibited in the Lewis declaration demonstrates that the applicant has the relevant continuous use its trade marks in respect of similar goods to those of the opponent..

4. Consequently, I apply the provisions of s44 (4). I therefore dismiss this ground of opposition.

Section 43 - A connotation within the trade mark

1. Section 43 provides:

Trade mark likely to deceive or cause confusion

43. 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.

1. This section does not depend on the existence of a conflicting trade mark.  Connotation refers to that which is implied within the mark itself, as a secondary implied or associated meaning: Down to Earth (Victoria) Co-operative Society Ltd v Schmidt (1998) 41 IPR 632 at 644 and confirmed in Winton Shire Council v Lomas (2002) 56 IPR 72.

2. TGI Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720 confirms that the connotation must be in the applicant's trade mark itself. The connotation cannot be determined as a result of external considerations, such as reputation or use.

3. Counsel for the opponent submitted that the opponent had an established and widespread reputation in its mark such that use of either of the applicant's marks would convey the connotation that the applicant has the license or approval of the opponent.

4. Under the section 60 ground, I have already determined that the opponent does not have the requisite reputation to support the ground. There is certainly insufficient evidence to support the level of notoriety required to generate an implication of endorsement or licence.

5. I am not satisfied that there is an inherent connotation in the term 5 star as connoting the opponent’s goods and I am not satisfied that the expression has achieved any currency in general language amongst the opponent’s customers and/or the general public.  This ground of opposition is not established.

Conclusion

1. The opponent has not established any of its grounds of opposition.  Accordingly, I dismiss the opposition.

2. The trade mark application may therefore proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

1. The applicant sought its costs.  I see no reason why I should not take the usual course of awarding costs to follow the event.  I order that the opponent pay the applicant's costs in accordance with the official scale.

Jock McDonagh

Hearing Officer

Trade Marks Hearings

30 September 2005