Dent Wizard International Corporation v Michael Cross

[2011] ATMO 55

TRADE MARKS ACT 1995

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

Re:Opposition by Dent Wizard International Corporation to registration of trade mark applications 1280291(8) DENT WIZARD TOOLS, 1289878(37) CHIP WIZARD, 1289880(37) PINSTRIPE WIZARD, and 1289884(37) DETAIL WIZARD filed in the name of Michael Cross.

Delegate:

Iain Thompson

Representation:

Opponent: Mr Chris Round of Middletons

Applicant: Mr Norman Donato of Bartier Perry

Decision:

2011 ATMO 55

S52 opposition – s44 – similar goods and closely related services.  Trade marks deceptively similar to opponent’s trade mark.

Registration refused.

Background

1.     In these matters Mr Michael Cross (‘the applicant’) of The Entrance North, NSW, has applied to register trade marks, current details of which appear below:

Application No: 1280291

Priority Date:                   19 January 2009

Goods:Class 8:  Hand held tools, hand-operated for use in the motor industry; hand operated finishing tools for use in the motor industry; hand operated fit-up tools for use in the motor industry; hand tools (hand operated) for use in the motor industry; hand tools (hand operated) for use with motor vehicles; hand-operated tools for use in the car industry; hand-operated tools for use in the maintenance of cars; hand-operated tools for use in the repair of cars

Trade Mark:  DENT WIZARD TOOLS

Application No: 1289878

Priority Date:                   25 March 2009

Services:  Class 37:  Panel beating; panel beating (repair)

Trade Mark:  CHIP WIZARD

Application No: 1289880

Priority Date:                   25 March 2009

Services:  Class 37:  Car detailing

Trade Mark:  PINSTRIPE WIZARD

Application No: 1289884

Priority Date:                   25 March 2009

Services:  Class 37:  Panel beating

Trade Mark:  DETAIL WIZARD

2.     The applications were examined and accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks.

3.     Dent Wizard International Corporation (‘the opponent’) of St Louis, Missouri, has opposed registration of each of the trade marks.

4.     I heard the submissions of the parties at a hearing in Melbourne on 8 March 2011.  The opponent was represented by Mr Chris Round of Middletons.  Mr Norman Donation of Bartier Perry represented the applicant who was also present at the hearing.

Evidence

5.     The opponent has served and filed evidence in support of the opposition.  The applicant has not served and filed evidence in answer.

6.     The evidence in support comprises statutory declarations made by:

·     Anthony Brooke Watson dated 21 May 2010 (‘Watson’); and

·     Terry Robert Koebbe dated 17 June 2010 (‘Koebbe’).

7.     As the substance of Watson is re-iterated in Koebbe, I will discuss only the Koebbe declaration.

8.     Mr Koebbe is Executive Vice President of the opponent and had held that position for about 17 years at the time of making his declaration. 

9.     Mr Koebbe states that the opponent devised, and has marketed continuously since 1983, a paintless system to remove dents from vehicles under the trade mark “Dent Wizard”:

The “Dent Wizard” system removes dents from vehicles without affecting the original factory finish (‘opponent’s system’). The opponent’s system utilises tools which are specially designed by and for the opponent. A significant part of the opponent’s business is repairing vehicles damaged by hail.

The opponent has grown to become the world leader in paintless dent removal with operations in United States, Canada, Mexico, Germany, the United Kingdom, Sweden, Australia, Brazil, Argentina and France.

The opponent has continuously, since 1983, trained technicians in its paintless dent removal system. The opponent currently utilises over 1,400 trained technicians in the United States, Canada and Europe alone, who were all trained by the opponent. The opponent’s system is provided to car dealerships, domestic and import automobile manufacturers, auto auctions, body shops and collision centres, rental car agencies, insurance companies, fleet owners and operators and individual vehicle owners.

The opponent originally operated its business using a franchise model, acting as a franchisor and expanding its reach into new territories through the use of franchisees. Each of the franchisee businesses used the “Dent Wizard” name under licence from the opponent. Franchisees were permitted, under the franchise agreement with the Opponent (and subject to obtaining the approval of the Opponent) to establish businesses outside of the United States of America.

In the early 1990s Big Buckley and Mark Miravella, the directors of the San Francisco “Dent Wizard” franchise established a dent removal business in Australia trading through a company called Dents & Dings of Australia Pty Ltd. Chris Head, an employee of the opponent at that time, managed the Dents & Dings of Australia Pty Ltd business in Australia.

Following negotiations with the opponent, in 1998, with the licence and approval of the Opponent, Dents & Dings of Australia Pty Ltd changed its name to Dent Wizard Australia Pty Ltd (Dent Wizard Australia) in August 1999.

The Opponent licensed Dent Wizard Australia to use the DWI Marks in Australia. Dent Wizard Australia changed its stationery in August 1999 to incorporate the name change and the DWI Marks into its livery and marketing materials. Now produced and shown to me and marked TK-1 are examples of stationery and marketing material showing use of the DWI Marks by Dent Wizard Australia.

Between 1999 and 2001 Dent Wizard Australia trained and deployed 15 technicians who operated through out Australia. Each of these technicians was trained by the opponent in the USA in relation to the Opponent’s System. Once trained, each of the consultants returned to Australia to provide paintless dent removal services using the Dent Wizard livery and the DWI Marks, for Dent Wizard Australia.

In 2001 Dent Wizard Australia combined its business with the business of Pro Dent Repairs (Gold Coast) Pty Ltd (Pro Dent), another paintless dent removal service provider operating in Australia which was owned and operated by Michael Lund.

Chris Head returned to the USA in 2002. With the licence and approval of the opponent, Pro Dent commenced to use the DWI Marks in Australia in relation to the provision of paintless dent removal services.

On 21 January 2002, with the consent and licence of DWI, Pro Dent changed its name to DENT WIZARD QLD & NORTHERN NSW PTY LTD. Now produced and shown to me and marked TK-2 is a copy of a company search which records the name change of Pro Dent.

On 11 March 2003 Michael Lund incorporated Dent Wizard Group Australia Pty Ltd. This entity also used the DWI Marks in Australia with the licence and approval of the Opponent in relation to the provision of paintless dent removal services. Dent Wizard Group Australia Pty Ltd changed its name to Wizard Automotive Systems Pty Ltd (WAS) on 8 April 2003. Now produced and shown to me and marked TK-3 is a copy of a company search which shows the name change of WAS.

Since 2003 Michael Lund and WAS have made extensive use of DWI Marks in Australia under licence from the Opponent. Now produced and shown to me and marked TK-4 are printouts from a website operated by WAS which shows use of the DWI Marks.

10.   I note that the website referred to immediately above contains the following:

The team at Wizard Automotive Systems has extensive knowledge in the Paintless Dent Removal, Paint Perfecting and Touch Up Industry, that stretches back as far as 1991.

In 1998 the team at Wizard opened one of Australia’s first Paintless Dent Removal and Paint Touch Up facilities on the Gold Coast.

In 2004 Wizard launched its Paintless Dent Removal and Paint Perfecting licensee program by setting up mobile technicians in most states of Australia. Our technicians work under the national brand names Dent Wizard Australia and Paint Wizard Australia. They service car dealerships, panel shops, fleet companies, Insurance companies and the retail sector.

In December 2006, The Wizard Scratch & Dent Centre was officially opened at Australia Fair Shopping Centre, located on the Gold Coast. This retail centre is the first of it’s kind in Australia, that offers cosmetic Dent and Paint Touch Up services in the convenience of a shopping precinct.

In December 2007 Wizard expanded its operations with the opening of the new SMART Repair Centre in Southport. The main focus of this centre will be bumper bar & plastic repairs, key scratch repairs, mag wheel repairs & refurbishment, minor paint blemishes and all driveable minor collision damage,

11.   As I have observed above, the applicant has not served and filed evidence in answer.

Onus

12.   After reviewing the precedents in Pfizer Products Inc v Karam [2006] FCA 1663, in particular whether such matters should be decided in summary manner only on clear proof, Gyles J said of the onus in trade mark oppositions:

I am faced with the clear words of the statute, on one hand, and the opinions of various judges, on the other. There is no binding Full Court authority. I cannot find any instance where a single judge has actually applied the higher standard. In my opinion, in this case, comity does not demand that I depart from my view as to the meaning of the statute. ‘The fundamental responsibility of a court when it interprets a statute is to give effect to the legislative intention as it is expressed in the statute’ per Mason J in Babaniaris v Lutony Fashions Pty Ltd [1987] HCA 19; (1987) 163 CLR 1; cited with approval by Mason CJ, Wilson, Dawson, Toohey and Gaudron JJ in John v Federal Commissioner of Taxation [1989] HCA 5; (1989) 166 CLR 417 at 439. I will, therefore, approach the matter on the basis that the opponent has to establish a ground of opposition, although not clearly establish such a ground, whether in a summary fashion or otherwise.

13.   See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 at [22] to [26].

14.   I will accordingly decide this matter on the balance of probabilities.

Submissions

15.   Mr Round couched his submissions in terms of sections 42, 44 and 60 of the Act and I will discuss these submissions in more detail below.  For the sake of completeness I find that the other grounds mentioned in the Notice have not been established by the opponent.

16.   Mr Donato opened his submissions by referring to evidence filed in relation to another issue by Smart Repair Australia Pty Limited and to applications under section 92 of the Act by both Smart Repair Australia Pty Limited and the opponent’s Australian licensee.  Mr Donato also referred to the register of trade marks and submitted that the element WIZARD is common on the register and that people are used to distinguishing between trade marks on the basis of other matter occurring in trade marks such as those here under opposition.

17.   I am given to understand from Mr Donato’s submissions that Smart Repair Australia Pty Limited is a company linked to the applicant in this matter.

18.   Mr Round objected to the above lines of submission by Mr Donato and observed that the applicant had had ample opportunity to serve and file evidence in answer.  The applicant had not submitted any evidence and, Mr Round submitted, I should be constrained to consider only evidence which had been so filed.

19.   Mr Donato responded that all of this evidence is known to the opponent and should not take the opponent by surprise.

20.   While this may be so, I will not consider only evidence which has been served and filed in relation these matters.  While the opponent might be aware of the content of other evidence in other proceedings, the opponent has not had an opportunity to respond, via evidence in reply, to evidence in answer in these proceedings.  The applicant had (to judge by the material on file and in evidence) apparently been uninterested in these oppositions until three weeks or so before the hearing, did not then apply to serve and file further evidence, and the opponent is not in a position to anticipate that the applicant might spring an ambush at the hearing, relying on evidence which has not been served and filed.

21.   The state of the register in relation to the element WIZARD is another matter.  In any matter my inclination is to refer to the state of the register (if it is not in evidence) only if it is illustrative (rather than determinative) of a viewpoint.  While the state of the register is public knowledge, it is possible that if a party knows (via the service of evidence) that if it is to be relied on at a hearing that party might put on more or better evidence in reply which rebuts that evidence or goes to, for example, sections 42 or 60.  In these matters the state of the register does not assist the applicant for the reasons I will set out under my discussion of the section 44 ground.  The state of the register must, in any event, be discussed with a degree of caution: Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177 (‘Ocean Spray’) and see my further discussion of this below.

Section 44

22.   Section 44 of the Act relevant provides:

Identical etc. trade marks

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.

(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.

Note 1: For deceptively similar see section 10.

Note 2:  For similar services see subsection 14(2).

Note 3:  For priority date see section 12.

23.   In regard to section 44, Mr Round submitted that the opponent relies on Australian trade mark registration 793291(37) DENT WIZARD, which is referred to in Koebbe and is registered in respect of ‘automotive repair services’.

24.   As Mr Round submitted, section 44 operates in the following manner:

In order to establish opposition under this ground the opponent has the burden of providing the following:

·     a trade mark, either registered or pending registration, in the name of a person other than the applicant, and in relation to which the applied-for trade mark is either substantially identical or deceptively similar;

·     the trade mark in the name of the other person must be in respect of similar services or closely related goods [or similar goods or closely related services as the case may be]; and

·     the priority date of the trade mark of the other person be the earlier.

The expression “deceptively similar”, in the first of these tests, is defined within section 10 of the Act, which provides:

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

The expression, “similar services”, in the second of the tests above, is defined within section 14(2) of the Act, which provides:

For the purposes of this Act, services are similar to other services:

(a)        if they are the same as the other services; or

(b)if they are of the same description as that of the other services.

25.   The trade mark on which the opponent relies has an earlier priority date than each of the opposed applications.

26.   In Registrar of Trade Marks v Woolworths [1999] FCA 1020, (‘Woolworths’) French J observed at paragraph 39:

The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods.

27.   Similar logic applies to the consideration of the similarity of the goods or services of the opposed applications in Classes 8 and 37 with those of the registration in Class 37 on which the opponent relies.

28.   Some guidance as to whether goods are similar to services is found within Woolworths where French J said at paragraph 38:

The range of relationships between goods and services which may support the designation “closely related” will be limited by the requirement in s 44(2) that there be a substantial identity or deceptive similarity between the potentially conflicting trade marks which attach to them. The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets. Similar examples were suggested in Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co [1983] FCA 145; (1983) 48 ALR 511 by Lockhart J who saw service marks as potentially giving rise to problems of confusion with goods marks and other service marks “...of greater difficulty and subtlety than has previously been experienced in the case of goods marks alone”. His Honour observed that:

“Confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods or where services (for example, consultancy services) involve goods but can be provided either with or without the sale or promotion of goods.” (at 522)

29.   The goods, “Hand held tools … for use in the repair of cars” are a necessity in performing the subset of automotive repair services here involved which are apparently panel beating services.  My general observations of panel beating and crash repair tools are that they are specifically designed for the services that are performed with them.  The opponent’s evidence is that it makes such a range of hand tools which are tailored for automotive repair services. 

30.   In Woolworths while considering whether goods and services are similar French J continued at paragraph 39:

In Rowntree plc v Rollbits Pty Ltd (supra)[1] registration was sought for a trade mark in respect of foods which included biscuits, cakes and pastry goods. The same applicant also sought registration of a service mark with respect to services rendered or associated with restaurants, take-a-way food stores and other retail food outlets which sell and promote prepared food and drinks for consumption. Both applications were accepted but opposed. On appeal by the opponent from the decision of the  Registrar , Needham J found the applicant’s mark in respect of goods to be deceptively similar to the opponent’s registered mark as covering goods “of the same description” under s 33(1). His Honour also concluded that the goods covered by the opponent’s registered mark were “closely related” to the services in respect of which registration of the applicant’s service mark was sought. While accepting that it was not a logical necessity that the relevant question under subs 33(2) of the 1955 Act must be answered in the same way as the question under subs 33(1), his Honour said at 546:

“...I think, in the present case, that the conclusion that the goods are goods of the same description requires a conclusion that the services contemplated by the defendant, which would feature the goods already held to be goods of the same description as those of the plaintiff, are services closely related to the plaintiff’s goods.”

[1] (1988) 10 IPR 539 (‘Rowntree’)

31.   Here the applicant has a co-pending opposed application 1289878(37) CHIP WIZARD in respect of panel beating services which is subset of the term ‘automotive repair services’.  The test in Rowntree, quoted above, dictates that tools for panel beating are closely related to panel beating services.

32.   The next question is whether the services of the opponent’s registration (automotive repair services) are similar to car detailing services (application 1289880(37) PINSTRIPE WIZARD).

33.   The Macquarie Dictionary defines the word ‘detail’, in the context of car detailing services, as:

13. to improve the appearance of (a motor vehicle, aeroplane, etc.) before sale by finishing and decorating it, inside and out.

34.   Thus automotive detailing services includes not only washing, polishing, cleaning upholstery, vacuuming carpets, etc but also the removal of minor blemishes such as scratches or chips and small dents and performing minor paintwork.  The removal of minor blemishes such as scratches or chips and small dents and performing minor paintwork are in the nature of being ‘automotive repair services’.

35.   The services nominated on opposed application 1289880 (PINSTRIPE WIZARD) and the services on the registration on which the opponent relies are thus similar services.

36.   I turn now to the question of whether the trade marks in question are deceptively similar.

37.   Mr Round, for the opponent, submitted that the word WIZARD is the distinctive and memorable portion of both the opposed trade marks and the trade mark on which the opponent relies.  The other matter is purely descriptive of the particular services in the automotive panel beating field or goods used in the performance thereof.  As such, he submitted, the applicant’s use of the opposed trade marks on similar services and closely related goods would lead to deception or confusion.

38.   Mr Donato submitted for the applicant that the word WIZARD is in widespread use as an element of trade marks and the register of trade marks demonstrates this.  He submitted that the meaning of each trade mark is quite different and the public can distinguish between each trade mark quite readily.  On that basis, Mr Dontato submitted, confusion or deception is unlikely.

39.   Deceptive similarity is to be assessed according to the tests set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at paragraph 13 per Windeyer J:

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. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. 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” (1937) 58 CLR, at p 658.

40.   And in Woolworths, at paragraph 50, French J discussed the standard to be applied in the assessment of deceptive similarity in the following way:

In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (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] HCA 43; (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.”

41.   I turn now to the trade marks relied upon by the applicant in Mr Donato’s submissions.

42.   The word WIZARD occurs in one other registered trade mark in Class 8:

Registration No:             1116843

Owner:  Leonid Kraskov

Priority Date:                   2 January 2006

Goods:Class 8: Nozzles attached to a hand operated pump; this tool is used mainly in the drywall industry.

Trade Mark:  DRYWALL WIZARD

43.   The above goods are unrelated to hand tools for panel beating.

44.   The word WIZARD occurs in several registered trade marks in Class 37.  Omitting the opposed applications and the trade marks of the opponent these are:

Registration No:             443997

Owner:  Wood Wizards Australia Pty Ltd

Priority Date:                   18 April 1986

Services:Class 37: Services relating to the cutting to measure of timber panels and synthetic panels, being timber-based fabricated boards with attached surfaces, for the merchandising of building materials

Trade Mark:  WOOD WIZARDS

Registration No:             521493

Owner:  The Cleaning Wizard Pty Ltd

Priority Date:                   23 October 1989

Goods:Class 37: Cleaning services, particularly for industrial and commercial premises

Trade Mark:  CLEANING WIZARD

Registration No:             881951

Owner:  PR Finance Group Ltd

Priority Date:                   11 July 2001

Services:  Class 37: Motor vehicle service and repair

Trade Mark:  

Registration No:             902347

Owner:  Power Games Pty Ltd

Priority Date:                   6 February 2002

Services:Class 37: Removal of deep scratches from discs and surface polishing of discs

Trade Mark:  

Registration No:             958672

Owner:  Wizard Automotive Systems Pty Ltd

Priority Date:                   23 June 2003

Services:Class 37: General automotive repairs, service, installation; motor vehicle modification; automotive parts dismantling, automotive performance product and repairs, motor body repairs and automotive paint touch-ups, spray painting and resprays

Trade Mark:  

Registration No:             999317

Owner:  International Cleaning Services Australia Pty Ltd

Priority Date:                   27 April 2004

Services:Class 37: Provision of cleaning services; the installation, repair, servicing and maintenance of machinery and other equipment; the hire of cleaning machinery and equipment; none of the aforementioned relating to plumbing or gas fitting

Trade Mark:  SPIN WIZARD

Registration No:             1058751

Owner:  The Printer Wizards Pty Ltd

Priority Date:                   3 June 2005

Services:Class 37: Installation, servicing and repairs of printers, faxes, copiers and associated consumables; including refilling of printer cartridges

Trade Mark:  

Registration No:             1148689

Owners:  William Alistair Mackay, Elizabeth Mackay

Priority Date:                   24 November 2006

Services:  Class 37: Installation of water tanks

Trade Mark:  

Registration No:             1171782

Owner:  Wizard Automotive Systems Pty Ltd

Priority Date:                   17 April 2007

Services:  Class 37: The repair of motor vehicles and boats

Trade Mark:  

Registration No:             1185445

Owner:  Wizard Automotive Systems Pty Ltd

Priority Date:                   3 July 2007

Services:Class 37: The repair of motor vehicles and boats including paint and dent repair

Trade Mark:  

Registration No:             1185446

Owner:  Wizard Automotive Systems Pty Ltd

Priority Date:                   3 July 2007

Services:Class 37: Washing and cleaning of cars with and without water by hand or mechanical or automatic apparatus using cleaning and revitalising products and materials

Trade Mark:  

Registration No:             1279299

Owner:  Michael Cross

Priority Date:                   6 January 2009

Services:  Class 37: Panel beating; panel beating (repair)

Trade Mark:  DING WIZARD

45.   I note that the last registration is owned by the applicant.

46.   I do not consider that the above trade mark registrations should be regarded as being of any assistance to the applicant.  The element WIZARD occurs several times in the automotive field but these are in registrations owned by the opponent’s licensee and are not in any event of the same linguistic construction as the trade marks here in question.  The sole registration for services in the automotive field (other than that of the opponent) in which the trade mark has a similar construction to the opposed trade marks is owned by the applicant and is, in my consideration, anomalous.  The opponent’s registered trade mark is the sole preceding trade mark which is comprised only of a word with direct reference to services in the automotive trade (‘DESCRIPTIVE WORD’) followed immediately by the word WIZARD. 

47.   What appears on the register is, at most, something we can consider as a guide rather than a rule.  Precedent on the Register is not binding in any way.  In relation to the British equivalent of section 41, Jacobs J in British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281, 303 (‘Treats’) said: 

Adherence to prior precedence is secondary to the question of adaption to distinguish.

48.   The same principle should apply to considerations under section 44 of the Act.  I quote Jacobs J again from Treats:

In particular the state of the register does not tell you what is actually happening out in the market and in any event one has no idea what the circumstances were which led the registrar to put the marks concerned on the register. It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration, see eg Re “Madame” Trade Mark [1966] RPC 541 and the same must be true under the 1994 Act. I disregard the state of the register evidence.

49.   And in Ocean Spray Wilcox J observed at paragraph 35 (after quoting Jacobs J in Treats):

I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.

50.   The opponent’s trade mark, as I have observed, consists of ‘DESCRIPTIVE WORD’ WIZARD.  The passage which I have quoted above[2] from the website of the opponent’s licensee demonstrates both how it is natural to coin similar ‘DESCRIPTIVE WORD’ WIZARD trade marks and for both traders and the public to view them as being related.

[2] “Our technicians work under the national brand names Dent Wizard Australia and Paint Wizard Australia.” (Stress added).

51.   In John Fitton & Co Ltd's Appn (1949) 66 RPC 110, (‘Fitton’) at 113, in finding deceptive similarity between the trade mark EASYJEST compared with the registered trade mark JEST, the Assistant Comptroller said that no limitation was to be placed “upon the nature of the confusion or deception so envisaged, whether it be visual or phonetic confusion of the marks themselves, or what is termed contextual confusion, or deception as to the trade provenance of the goods”.

52.   The trade marks strongly suggests that they are related, in terms of Fitton via the common use of the distinctive element WIZARD preceded by a word with direct application in the automotive repair services industry.  The trade marks thus propose a likely common trade provenance for the goods and services in question.

53.   While there may be good arguments that the trade marks of the parties are substantially identical,[3] Mr Round did not argue this and I am satisfied that the opposed trade marks are deceptively similar to trade mark registration 793291(37) DENT WIZARD on which the opponent relies.

[3] PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602; Watermark Restaurant Pty Ltd v The Watermark Hotel Group Pty Ltd [2002] ATMO 43; Austech Ltd v Silver Colloid Pty Ltd [2003] ATMO 53; Oregon Brewing Company v Thira Holdings Pty Ltd [2011] ATMO 33

54.   This being so, the opponent has established its ground under section 44 of the Act.

55.   As the opponent has been successful, I will not discuss the other grounds which were argued at the hearing.

Decision

56.   Subsection 55(1) of the Act provides:

55(1). 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.

57.   I refuse to register trade mark applications 1280291(8) DENT WIZARD TOOLS, 1289878(37) CHIP WIZARD, 1289880(37) PINSTRIPE WIZARD, and 1289884(37) DETAIL WIZARD.

Costs

58.   The opponent is entitled to its costs at the official scale appropriately apportioned against each of the opposition matters (which have been prosecuted largely as a single matter) and I award these against the applicant.

Iain Thompson

Hearing Officer

Trade Marks Hearings

29 June 2011