De Beers Centenary AG v Shenzhen Millenium Star Industry Development Co

[2008] ATMO 36

TRADE MARKS ACT 1995

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

Re:Opposition by De Beers Centenary AG to protection of international registration designating Australia 1112757(14) - MILLENNIUM STAR, CHINESE CHARACTERS & DEVICE (international registration number 881126) in class 14 - filed in the name of Shenzhen Millenium Star Industry Development Co., Ltd.

Delegate:

Michael Kirov

Representation:

Opponent: Wayne Willis, FB Rice & Co, Patent and Trade Mark Attorneys of Sydney

Holder: Unrepresented and no appearance (No address for service in Australia)

Decision:

2008 ATMO 36

Regulation 17A.29 opposition: Ground under reg. 17A.28/s.44 established, other grounds not pressed –extension of protection to Australia refused

Background

1. Application 1112757, an international registration designating Australia (“IRDA”), was filed in the name of Shenzhen Millenium Star Industry Development Co., Ltd (“the Holder”) under the Madrid Protocol on 21 February 2006.  IP Australia was notified of this on 11 May 2006 and, following examination of the IRDA, advertised on 22 June 2006 its intention to extend protection to Australia.

2. Details of the IRDA are as follows:

Application Number:  1112757

International Number:                  881126

Priority Date:       21 February 2006

Goods:  Class 14:  Diamonds; precious stones; rings (jewellery, jewelry (Am.)); pearls (jewellery, jewelry (Am.)); bracelets (jewellery, jewelry (Am.)); chains (jewellery, jewelry (Am.)); brooches (jewellery, jewelry (Am.)); earrings; tie clips; olivine (gems)

Trade Mark:

Endorsements:  Trade Mark Description: Colour Claimed: YELLOW and BLACK.* The applicant has advised that the characters appearing in the trade mark may be transliterated as QIAN XI ZHI XING XING which may be translated into English as MILLENNIUM STAR.*

1. On 31 August 2006 De Beers Centenary AG (“the Opponent”) lodged Notice of Opposition (“the Notice”) to extension of protection of the IRDA to Australia.

2. On 25 September 2007 the Opponent filed evidence in support of the opposition, being Statutory Declaration by Andrew George Poolman sworn 31 July 2007, with Exhibits 1 to 4 (“the Poolman Declaration”).  Since the Holder did not have an address for service in Australia the Opponent was not required to serve a copy of its evidence on the Holder, in accordance with regulation 17A.33 (3) Trade Marks Regulations 1995 (“the Regulations”). The Holder did not file any evidence in answer, although I note for the record that IP Australia wrote directly to the Holder on 7 October 2007 advising that the Opponent had served its evidence in support and inviting the Holder to do so.

3. The matter was heard before me as delegate of the Registrar of Trade Marks on 9 April 2008 in Sydney.  At the hearing, Wayne Willis of FB Rice, Patent and Trade Mark Attorneys, appeared for the Opponent.  As at the date of the hearing the Holder still did not have an address for service in Australia and the Holder made no appearance or submissions.

Grounds of opposition

1. While the Notice specified seven grounds, at the hearing Mr Willis only pressed the ground corresponding to section 44 of the Trade Marks Act 1995 (“the Act”), namely:

   The protection of the Trade Mark is prevented by the combined operation of regulation 17A.28 and s.44(1) and/or s.44(2) due to the existence of prior entries identified as follows:

   843571

   details of which are attached and there is no basis for protection of the Trade Mark under the provisions s.44(3) or s.44(4).

2. Details of registration 843571, which is owned by the Opponent, are as follows:

Registration Number:                   843571

Registration Date:  24 July 2000

Goods:Class: 14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery and imitation jewellery; precious and semi-precious stones, horological and chronometric instruments
Class: 35 Retail and wholesale services in the field of precious metals and their alloys and goods in precious metals or coated therewith, jewellery and imitation jewellery, precious and semi-precious stones, horological and chronometric instruments
Class: 36 Jewellery appraisal; precious and semi-precious stone appraisal; financial consultancy, evaluation, information and investment services, provision of finance; financial sponsorship
Class: 37 The mounting, repairing, maintaining and cleaning of semi-precious stones, precious stones and jewellery
Class: 40 Treatment of semi-precious stones, precious stones and jewellery
Class: 42 Quality control services all concerned with or relating to precious metals and their alloys and goods in precious metals or coated therewith, jewellery and imitation jewellery, precious and semi-precious stones, horological and chronometric instruments

Trade Mark:      

Endorsements:  Convention priority details claimed: 2 June 2000, Switzerland, No. 06598/2000 in respect of classes 14,35,36,37 and 42.*

Discussion

So much of section 44 as is relevant to this matter is reproduced below:

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.

1. The priority date of the Opponent’s registration 843571 is 24 July 2000 in the case of its class 40 specification and 2 June 2000 in the case of its specifications in classes 14, 35, 36, 37 and 42, both dates being well before the 21 February 2006 priority date of the opposed IRDA. To establish its section 44 ground the Opponent therefore needs to establish on the balance of probabilities that:

   •         registration 843571 covers goods the same as or similar to, and/or services closely related to, the goods covered by the opposed IRDA; and

   •         the mark subject of the opposed IRDA (“the Opposed Trade Mark”) is substantially identical or deceptively similar to the mark subject of registration 843571 (“the Opponent’s Trade Mark”).

2. As indicated above, the class 14 specification of registration 843571 covers “Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery and imitation jewellery; precious and semi-precious stones, horological and chronometric instruments”.  I am satisfied that on the face of it this specification entirely embraces all of the goods covered by the opposed IRDA.

3. Turning to a comparison of the Opposed Trade Mark and the Opponent’s Trade Mark, Mr Willis did not claim the trade marks were substantially identical, but did argue they should be considered deceptively similar.  As discussed below, I agree with his submissions on this point.

4. Section 10 of the Act defines the expression “deceptively similar”. The opposed mark must so nearly resemble the earlier mark that it is likely to deceive or cause confusion. In Registrar of Trade Marks v Woolworths (1999) 45 IPR 411 French J said of deceptive similarity:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, 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.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:

   "...the question whether there is a likelihood of confusion is to be

   answered, not by reference to the manner in which the respondent has

   used its mark in the past, but by reference to the use to which it can

   properly put the mark. The issue is whether that use would give rise to

   a real danger of confusion.".

5. In order to assess the question of deceptive similarity the trade marks should not be compared side by side.[1]  Rather, they are to be considered by their look and sound (if any), with due allowance for imperfect recollection.  The Opponent’s Trade Mark is wholly contained within the Opposed Trade Mark.  The Opposed Trade Mark contains, in addition, a relatively feint yellow oval and the words MILLENNIUM STAR rendered in both plain Roman letters and in Chinese characters.  I do not however believe this additional, arguably non-distinctive, material is sufficient to obviate a real tangible risk of a number of persons being caused to wonder whether it might not be the case that diamonds or closely related products sold under the two trade marks come from the same source.

   [1] Australian Woollen Mills Ltd v F.S. Walton & Co (1937) 58 CLR 641 (at 658); Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 109 (at 415)

6. As regards the apparently non-distinctive nature of the words MILLENNIUM STAR, I note the Poolman Declaration indicates MILLENNIUM STAR is the name of a particularly unusual diamond owned, as it happens, by the Opponent’s De Beers group of companies (“De Beers”).  Mr Poolman attests that the MILLENNIUM STAR diamond is some 203 carats and “is the largest D Flawless pear-shaped diamond ever cut”.  De Beers exhibited the diamond in the United Kingdom, Japan and the United Arab Emirates in 1999 and 2000 and the diamond attracted further international notoriety following an attempted robbery in November 2000 when it was on public display in London’s Millennium Dome.  I am thus satisfied that the words MILLENNIUM STAR enjoyed some association with the Opponent as at the 21 February 2006 priority date of application 1112757.  In merely adding these words (in Roman letters and Chinese characters) to what is essentially the Opponent’s Mark I consider the Holder has if anything increased the likelihood of deception or confusion amongst relevant consumers of the sort discussed by French, J in the Woolworths case.

7. The Opponent has accordingly established its section 44 ground.

Decision

1. The Opponent has, in terms of reg. 17A.34, established a ground of opposition.  I accordingly refuse to extend protection of the IRDA to Australia in respect of all the goods it covers.  If the Registrar has not been served with a notice of appeal within the relevant period, the International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accord with Regulation 17A.34(2).

Costs

1. As the successful party, the Opponent is entitled to its costs and I award costs against the Holder as per Schedule 8 of the Regulations.

Michael Kirov

Hearing Officer

Trade Marks Hearings

21 May 2008