Crown Scientific Pty Limited v Livingstone International Pty Limited

[2000] ATMO 134

TRADE MARKS ACT 1995

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

Re:Opposition by Crown Scientific Pty Limited to registration of trade mark application 769064(9) - SAMCO- filed in the name of Livingstone International Pty Limited.

Background

Livingstone International Pty Limited (the applicant) filed application number 769064, for the slightly stylised word trade mark depicted below, on 3 August 1998 in respect of 'Scientific apparatus and instruments' in class 9.

The first examination report cited a trade mark, number 670850, registered in class 9 that the examiner stated conflicted with the present application in terms of s.44 of the Trade MarksAct 1995. The cited trade mark, registered from 29 August 1995, specified the following goods:

'Laboratory equipment and related goods and accessories within the class including water baths, stirrer/hot plates, shaking assemblies, tube racks, water bath lids and flask holders; but not including measuring instruments and devices.'

The trade mark for this registration is also a stylised word as shown below.

The applicant requested application of s.44(4) of the Act - a subsection containing provisions to allow the registration of a trade mark in the face of a conflicting mark, under specific circumstances. To this end, the applicant submitted evidence that led the delegate of the Registrar to accept the application under the provisions of s.44(4), in respect of a limited range of goods. The goods specified for this application, when advertised as accepted in the Australian Official Journal of Trade Marks of 17 December 1998 read: 'Scientific apparatus and instruments, being transfer pipette and specimen vials'.

Details of this acceptance were conveyed to the owner of the mark that was cited in the first report by the examiner. That party, Crown Scientific Pty Limited, is the opponent in the present matter. The opponent, after seeking an extension of time in which to do so, filed a notice of opposition on 17 June 1999. The evidence in support of the opposition was filed and served on the applicant. The applicant chose not to serve any evidence in answer in the matter.

Both parties were offered the opportunity to be heard but declined the offer in favour of a decision on the material held in this Office.

The Evidence

The opponent's evidence in support consists of six declarations.

This evidence goes to show that the SAMCO trade mark is registered to S Murray & Co Limited in the United Kingdom by means of four separate registrations, as follows.

Registration date	Class	Goods
21 December 1949	9	Scientific glassware.
2 March 1955	9	Laboratory apparatus, but not including weighing apparatus, measuring apparatus or automatic temperature regulators or any goods of the same description as any of these excluded goods.
28 February 1978	9	Scientific, laboratory and chemistry apparatus, instruments and utensils, all for laboratory use in the medical field, and parts and fittings for all the aforesaid goods, all included in class 9, but not including magnets or any goods of the same description as magnets.
28 February 1978	10	'surgical, medical and veterinary apparatus and instruments; cases for surgical instruments and cases incorporating medical and surgical instruments; and parts and fittings included in class 10 for all the aforesaid goods, but not including x-ray tubes or any goods of the same description a x-ray tubes'

The mark is also currently registered to Samco Scientific, Inc. in the United States of America. This registration is as a result of a change of name of the original registration in the name of Saint-Amand Manufacturing Co, Inc registered from 13 May 1980 in respect of 'pipettes' in class 9.

The details of the declarations submitted in the evidence in support are as shown in the table below. Samco Scientific Corporation is identified as S.S.C. in the table and I will continue with this abbreviation throughout these reasons.

DECLARANT	STATUS	DATE	ATTACHMENTS	HEREINAFTER
Brian Marsden Munday	Attorney for opponent	6 September 1999	BMM-1 to BMM-4	Munday declaration
Peter M Murray	Managing Director S Murray & Co Ltd	7 October 1999	PMM-1, PMM-2	Murray declaration
Saundra McKenzie	Customer Services Manager S.S.C.	13 March 2000	Nil	McKenzie declaration
Tuyen Nguyen	General Manager S.S.C.	13 March 2000	A to D	Nguyen declaration
Sean Francis McManis	Attorney for opponent	15 March 2000	A	McManis declaration
Elmer F Saint Amand	Founder/Owner and President Saint-Amand Manufacturing Co	15 March 2000	Nil	Saint Amand declaration

The Murray declaration sets out the history of S Murray & Co. Limited. This material shows use of the SAMCO mark in 1968, 1969 and 1987 in the United Kingdom, and use in Australia by S Murray & Co Limited in 1984 and 1986. Mr Murray claims continuous use of the mark in Australia from at least 1976 to the present time.

The McKenzie declaration states that S.S.C. has used the present mark on pipettes since at least 1981. This statement is supported by the Saint Amand declaration, in which Mr Saint Amand states that the mark has been in use in Australia, in relation to pipettes, since 1978, and in continuous use for these goods at least until 1990.

Mr Nguyen avers that S.S.C. has used the SAMCO mark in relation to pipettes continuously since 13 June 1977. He also states that he is personally aware of continuous use, in Australia, since 1990 and that inquiries made of Mr Saint Amand reveal that continuous use in Australia began in 1978 on pipettes.

The Nguyen declaration also provides sales figures for the SAMCO mark in Australia for the years 1994-99 inclusive and the exhibits include a selection of invoices covering that same period, some of which show trade with the present opponent. Other exhibits to the Nguyen declaration show the labelling of pipettes for export into Australia and sales brochures giving information on pipettes manufactured by S.S.C.

The applicant has chosen not to provide any evidence in answer to this material. Both parties elected to have the matter decided on the written material held in this Office and so the matter has now been directed to me, as a delegate of the Registrar, for decision.

Submissions

Neither party has made specific written submissions in the matter, although the opponent's evidence in support, involving six declarations, is quite extensive. There is one matter, however, that requires my attention which was raised by the attorney for the opponent, in a letter sent to this Office dated 15 April 1999. The letter was sent as a result of an objection by the applicant to an extension of time in which the opponent could file its notice of opposition to the registration of the mark.

The attorney indicated in that letter that the then proposed opponent intended to dispute the basis on which the application was accepted under the provisions of s.44(4).

Discussion

The notice of opposition lists grounds of opposition under ss.58, 59, 60, and 62 and also under s.57 of the Act in respect of ss.41, 42, 43 and 44. Nothing before me in the evidence goes toward a case for ss.59, 62, 41, 42 or 43. Consequently, I dismiss opposition to registration in relation to those five grounds. Three grounds remain for consideration - those grounds taken under ss.44, 58 and 60.

(a) Section 44 - Identical etc. trade marks

The notice of opposition has nominated s.44 as a ground of opposition, and the attorney for the opponent had earlier claimed that the opponent would dispute the acceptance under the provisions of s.44(4). Although the opponent provided no submission or evidence to progress that case beyond an allegation of an improper acceptance, in the context of this opposition, I intend to briefly deal with the matter. This subsection of the Act may be applied to enable a trade mark to become registered, in the face of a prior conflicting trade mark, provided the applied for mark has been used continuously from a time prior to application being made for the conflicting trade mark. Legislation relevant to the matter reads:

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) ...

(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.

(2) ...

(3) ...

(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.
Note 3:  For priority date see section 12.

In the present circumstance, the examiner raised the registered trade mark, number 670850, for the word SEMCO in a slightly stylised form, in terms of s.44(1), as being a barrier to acceptance. The conflicting mark carries a priority date of 29 August 1995 - the date on which application had been made to the Registrar to register that mark. The present applicant, during the course of examination, provided declaratory evidence that it had used the SAMCO mark continuously from 1988 and provided sales figures for the financial years of 1994-95 to 1997-98. This material directly addresses the issues raised in s.44(4) in respect of two items of goods - transfer pipettes and specimen vials. On this basis, the Registrar's delegate accepted the application for registration in respect of those two items. The opponent has not provided reason why this should not be the case. Thus, I find in relation to the ground of opposition under s.44 that the opponent is not successful.

(b) Section 58 - Applicant not owner of trade mark

Relevant to ownership in an opposition matter the relevant legislation reads:

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:  For applicant see section 6.

Under this ground of opposition, the opponent has claimed that two other parties have used the mark, in Australia, prior to the present applicant. The legal position, in relation to ownership of trade marks, is settled. The term 'owner' under the Trade Marks Act 1995 is to be read in the same sense as that of 'proprietor' was under s.40 of the Trade Marks Act 1955. A person who claims ownership rights in a mark may apply to register the mark. These provisions are expressed in s.27:

27.(1)   A person may apply for registration of a trade mark in respect of goods and/or services if:

(a) the person claims to be the owner of the trade mark; and

(b) one of the following applies:

(i) the person is using or intends to use the trade mark in relation to the goods and/or services;

(ii) the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

(iii) the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

In order to consider the issue concerning ownership in opposition proceedings, it must be shown that the mark on which the opponent relies for ownership rights, is substantially identical with the mark the subject of the application for registration - Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (31 IPR 375). Additionally, the goods or services involved must be the 'same kind of thing' - Re Hicks' Trade Mark (1897) 22 VLR 636 at 640 - and the use of the mark relied on by the opponent, or application to register the mark, must pre-date the applicant's claim to ownership. An applicant can claim its ownership rights based on the date of its application, or the first use of the mark, whichever is the earlier date.

In relation to the accepted test for substantial identity of trade marks, this has been set out in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd 109 CLR 407 at 414 where Windeyer J said:

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 applied for mark is the word SAMCO in slightly stylised font. The opponent led evidence to show that S.S.C. has used the mark SAMCO both in plain upper-case typescript and in italicised upper-case typescript. The opponent's evidence also showed that S Murray & Co Limited has used the mark in both plain upper-case typescript within a diamond device and also in lower-case lettering in which the letters are scripted with a double line. The word involved in all cases is the word SAMCO. The minor differences due to variations in style of lettering or of upper-case and lower-case are overwhelmed by the congruency of the word in all marks. I am of the opinion that the applied for mark is substantially identical with of the trade marks used by S.S.C. and by S Murray & Co Limited to which the opponent directed my attention.

The other legs of s.58 involve the similarity of the respective goods on which the marks have been used and the first use of the marks involved - which may be claimed by either an application to register the mark or actual use of the mark.

So far as the goods are concerned, the applicant has both specified in the application, and says that it has used the mark on, 'transfer pipettes and specimen vials'. The evidence shows that S.S.C. has used its mark on a range of 'pipettes', whereas S Murray & Co Limited has used the mark on 'specimen tubes, test tubes, elastic tubing and specimen vials'.

The present application was filed on 3 August 1998 and use was claimed by the applicant from 1988, with specific sales figures quoted from the 1994-95 financial year. The uncontroverted evidence submitted in the Amand and Nguyen declarations claims use of the mark by S.S.C., in Australia, continuously since 1978 on 'pipettes'. The Murray declaration makes the claim that S Murray & Co Limited has used its mark, in Australia, continuously since at least 1976 and also provides copies of invoices, from as early as 12 March 1984, showing use on 'specimen tubes, glass vials and elastic tubing' and as early as 18 June 1984 on 'test tubes'.

From the above material, I find that the applicant's claim to be the owner of the mark, by means of use of the mark from 1988 in respect of 'transfer pipettes and specimen vials' is overturned by the earlier use of the mark in Australia by S.S.C. and S Murray & Co Limited in respect of those same goods.

Thus, in relation to the ground of opposition under s.58, I find that the opponent is successful.

(c) Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

The legislation relevant to this ground of opposition reads:

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.

I have already found, as set out in relation to s.58 above, that the present mark is substantially identical with the trade marks used by both S.S.C. and by S Murray & Co Limited. No evidence is before me to quantify the size of the reputation of the mark, in Australia, for S Murray & Co Limited.

S.S.C. provides evidence, via the Nguyen declaration, of its reputation in the SAMCO mark. Mr Nguyen states that, in general, his company only maintains records for a period of five years before disposal. On that basis, sales figures for the calendar years 1994 to 1999 are supplied. From these figures and the exhibits of the sales invoices (which demonstrate a range of companies throughout Australia trading with S.S.C.) I believe that S.S.C. had a more than modest reputation in its mark in Australia as at 3 August 1998 - the filing date of the present application.

As can be seen from a reading of s.60, there is no requirement under the Act that the goods of the present application and the goods offered in the course of trade by S.S.C. need to be similar. However, where that circumstance does occur, it would be expected that the same reputation would produce a greater likelihood of deception or confusion than in those circumstances where the goods are clearly separated. A similar comment could be made concerning the trade marks involved. The closer the similarity of the respective trade marks, the greater the likelihood of deception or confusion for a given reputation in an opponent's trade mark.

Both of the above circumstances occur in the present case. The applicant and S.S.C. both market pipettes and the trade marks used by both companies, in Australia, are substantially identical.

Given these surrounding circumstances, a sufficient reputation exists for another trade mark which, in my opinion, produces a likelihood of deception and confusion, in relation to use of the applied for mark on both 'transfer pipettes' and on 'specimen vials'.

Thus, I find that the opponent is also successful under its s.60 ground of opposition.

Conclusion

In summary, I have found in favour of the opponent in terms of two grounds of opposition, those under s.58 and s.60 of the Act in relation to other users of the SAMCO trade mark in the marketplace.

Notwithstanding this, I have also found that the provisions of s.44(4) were properly applied, in relation to the initial acceptance of the application, in the face of the registered SEMCO trade mark, number 670850, and that opposition in terms of s.44 is not successful.

Thus, as the delegate of the Registrar in this matter, I find the overall opposition to be successful and refuse registration of this trade mark.

Don Nancarrow
Hearing Officer

18 December 2000