Dynapac International Adtiebolag v Kobelco Construction Machinery Co, Ltd

[2008] ATMO 59

TRADE MARKS ACT 1995

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

Re:Opposition by DYNAPAC INTERNATIONAL AKTIEBOLAG to protection of International Registration Designating Australia 1119981 (International Registration No. 884965) (7) - DYNASPEC - filed in the name of KOBELCO CONSTRUCTION MACHINERY CO., LTD.

Delegate:	Alison Windsor
Representation:	Opponent:  Peter Hallett of Watermark Patent and Trade mark Attorneys Applicant:  not represented
Decision:	2008 ATMO 59 Regulation 17A.29 opposition: Grounds under sections 44 and 60 pursued – trade mark not substantially identical or deceptively similar – neither ground of opposition established – opposition unsuccessful.

Background

1. Kobelco Construction Machinery Co., Ltd, (“the holder”) requested protection in Australia for the following International Registration Designating Australia (“IRDA”):

Application Number:	1119981
Priority date:	11 January 2006 (a Convention priority based on a Japanese application)
Goods:	Class 7 - Power shovels and other construction machines and apparatus; loading – unloading machines and apparatus
Trade mark:	Dynaspec
Acceptance Advertised:	13 July 2006

1. Section 189A of the Trade Marks Act 1995 (“the Act”) governs the consideration of IRDAs.  This section makes provisions for the regulations to “provide for such matters as are necessary to enable the performance of the obligations of Australia, or to obtain for Australia any advantage or benefit, under the Madrid Protocol.”

2. Notice of opposition to the protection of an IRDA is governed by the provisions of regulation 17A.29 of the Trade Marks Regulations 1995 (“the Regulations”).

3. Following the advertisement of acceptance, Dynapac International Aktiebolag (“the opponent”) filed a notice of opposition in broad terms, but specifically notifying, in respect of the section 44 ground, ownership of the following three trade marks registered in Australia:

Trade Mark Number	Trade Mark	Class/goods
153481 (16 April 1959)	DYNAPAC FYNAPAC	Class 7:  Vibrating and tamping machines, all for compacting soil, concrete and ballast, vibrating tables (machines), road rollers and parts of all these goods,
267142 (2 April 1973)	DYNAPAC	Class 7:  Electric generators; motors for use with vibrating machines and with electric generators, and for use in association with transformers; vibrators, vibrating screens and vibrating screens and vibrating feeders, all being machines; vibrating mechanisms, and electro-magnetic vibrators, all being parts of vibrating machines; shake-out machines for use in foundries; elevators for use in grain cleaning operations
267143 (2 April 1973)	DYNAPAC	Class 9:  Electric transformers; apparatus incorporating a vibrating mechanism for measuring the consistency of concrete; electrical apparatus and instruments for measuring the water content of concrete; and apparatus for testing the binding and breaking stress of concrete beams under load

1. The opponent filed and served its evidence in support on 20 June 2007.  The holder elected not to submit any evidence in answer.  On 30 October 2007 the opponent’s attorneys requested a hearing pursuant to Regulation 5.14.  An informal hearing notice was issued to both parties on 22 January 2008. Subsequently, the holder advised that it did not wish to attend at hearing.  The office advised the holder that it could file written submissions at any time prior to the hearing but no further communication or reply has been received from the holder.

2. The matter came before me, as a delegate of the Registrar of Trade Marks, at a hearing in Melbourne on 3 March 2008.  Peter Hallett of Watermark, Patent and Trade Mark Attorneys, represented the opponent. The holder did not appear or provide any written submissions.

   Grounds of opposition

3. The notice of opposition nominated all grounds of opposition available under the Act. However, at the hearing Mr. Hallett stated that the opponent would primarily be relying on the grounds of opposition under sections 44 and 60. The remaining grounds as set out in the notice of opposition were not pressed or pursued and no submissions were put forward in respect of same. For completeness, I find that none of these other grounds has been established.

4. The onus is on the opponent to establish at least one of the grounds pursued at the hearing in order to succeed in this opposition.

   Evidence in Support

5. As noted previously, the only evidence in this matter is the opponent’s evidence in support.  This comprises the Statutory Declaration of Hugo Wernbro, legal counsel of the opponent.  The declaration was made on 4 June 2007 and includes Annexures HW-1 and HW-2.  

6. The declaration states that the opponent was founded in Sweden in 1934 and that it has grown to become an international manufacturer of compaction and paving equipment and one of the world’s leading suppliers of equipment for use in road building and civil construction. While the opponent’s head office is located in Sweden, its products are sold in more than 115 countries. It has manufacturing facilities located in Sweden, Germany, France, Brazil, the U.S.A. and China, and its group of companies employ over 2,100 people world-wide. 

7. In Australia, the declaration says, the opponent commenced selling its products under the DYNAPAC trade mark in 1971 through its then-authorised dealer Atlas Copco, and it has since sold products in this country under the DYNAPAC trade mark continuously, either through independent distributors or through sales companies owned by the opponent. In June 2004 the wholly-owned subsidiary company Dynapac Australia Pty. Limited was incorporated and the opponent’s products are currently distributed through that company. As at the relevant priority date of 11 January 2006, the opponent’s product range available throughout Australia included vibratory rollers, static rollers, asphalt pavers, planers, pedestrian operated light compaction equipment and pedestrian operated concrete vibration and finishing equipment.  In addition, the opponent provides a comprehensive range of support services to its customers.

8. The opponent estimates that it holds approximately 27% of the total market for vibratory rollers and static rollers in Australia, and sales figures for this country are of a very substantial order. The opponent promotes its products extensively, primarily through trade magazines, industry association publications, and trade shows, and it conducts a comprehensive merchandising program to reinforce and promote the DYNAPAC brand name. However, no figures in respect of advertising expenditure have been provided.

9. The opponent operates a web site located at That web site is accessible in Australia and it provides details and references to the opponent’s product range and its uses of the DYNAPAC trade mark. The opponent asserts that it goes to great lengths to protect the reputation of the DYNAPAC name, and it is concerned that any negative publicity associated with the DYNASPEC application in the context of the construction industry might have adverse consequences for its business.

   Submissions

10. The opponent submitted that the holder’s trade mark was deceptively similar to its registered trade mark, DYNAPAC, citing the following factors as being particularly relevant: 

    ·The structure of the two trade marks is the same – they both consist of the prefix DYNA with a single syllable suffix.

    ·The common prefix DYNA is not directly descriptive or laudatory.  Whilst DYNA may suggest the word “dynamic”, and there are other trade marks registered in class 7 with the prefix DYNA, the term is not in the same league as a descriptive word such as “cell” or an obvious abbreviation for a directly descriptive term such as “dura”.

    ·It is well established that the first part of a trade mark is the most important for the purposes of comparison.

    ·Both trade marks end in the letter “c”.  The sound “ec” is close to the sound of “ac” (with many of the accents commonly found in Australia – e.g. New Zealand accent – they are basically identical), and the tendency of Australians in particular to slur the ending of words is well known

    ·Both trade marks are coined words – they have no meaning that can be readily ascribed to them as an aide memoire – and this increases the risk of confusion.

    ·The only difference of any substance between the two trade marks is that the suffix of the applicant’s[1] trade mark starts with “sp” whereas the opponent’s trade mark it starts with “p”. But the differences in look and pronunciation between “sp” and “p” are outweighed by the similarities between the trade marks.

    ·The aural similarities between the trade marks are significant, in that replacement parts, consumables or repairs for the relevant goods may well be ordered in a noisy construction environment, which increases the likelihood of confusion. Nothing in section 10 of the Act limits the enquiry in relation to risk of confusion to the point of sale. The risk of confusion should be assessed not only at “point of sale”, but also in the context of pre-sale advertising and post-sale use of the mark.

    ·So far as the opponent is aware, the applicant has not made any use of its trade mark in Australia, and so it has not been possible to obtain evidence of actual confusion.  However, it is well established that it is not necessary for an opponent to provide evidence of actual confusion.

    [1] The opponent’s submissions use the term “applicant”, rather than the term “holder”, the more appropriate term when dealing with an IRDA.

11. In respect of the goods, the opponent submitted the goods covered by the present application are clearly similar to the goods falling within the opponent’s registrations, and in particular registration 267142 in class 7. The relevant test for “similar goods” within the meaning of Section 44, it submitted, involves an assessment of the nature of the relevant goods and the trade channels through which they are typically bought and sold. In the present matter, the opponent submitted the relevant goods are “all types of machinery used for construction purposes, and in particular road construction, in Class 7”. The respective goods would be targeted at the same market, by companies that sell construction machinery, and would typically be used near or alongside each other.

12. The opponent submitted that it clearly had a reputation in the “DYNAPAC” trade mark in Australia as at the priority date of the application and in respect of goods of a corresponding nature. Further, the respective trade marks are substantially identical with or deceptively similar to each other for the purposes of Section 60, and the use of the “DYNASPEC” application would be likely to deceive or cause confusion in the light of the opponent’s reputation in the “DYNAPAC” trade mark.

13. Brief submissions were also made in respect of the following points: 

    ·The holder has not provided any evidence to contradict the opponent’s evidence that use of its mark would be likely to cause market confusion.

    ·It is open to the hearing officer to reach a finding that the relevant marks are deceptively similar for the purposes of Section 60 even if they are considered not to be deceptively similar under Section 44 (see Pfizer Products Inc v Karam (2006) 70 IPR 599).

    ·In terms of the onus of proof, it is sufficient that the opponent establishes a ground of opposition on the balance of probabilities (see the Pfizer case).

    ·The holder, in electing not to put on any evidence, to appear, or to respond, renders its application more susceptible to refusal (see Camelot Design Industries Group Pty Limited v Bernard Leser Publications Pty Limited (1987) 9 IPR 596 at 598 and Sportsgirl Pty Limited v Filip Sali (2007) ATMO 71.

    Discussion

14. The opponent submitted that its registered trade mark DYNAPAC is deceptively similar to the holder’s application DYNASPEC. This matter requires close attention, because of its relevance to both sections 44 and 60, the two grounds of opposition pursued at the hearing.

15. Both these sections rely on reference to trade marks which are substantially identical or deceptively similar.  The opponent made no submissions in respect of substantial identity, and, on a consideration of the generally accepted tests as set out by Windeyer J in Shell Co (Australia) Limited v Esso Standard Oil (Australia) Limited (1961) 109 CLR 407 at paragraph 12, quoted below, I am satisfied that the trade marks do not meet that test, and the matter need not be considered further:

    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.

    Deceptive similarity

    Section 10 of the Act defines the expression “deceptively similar” as follows:

    10.  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.

16. The accepted test for “deceptive similarity” is also expressed by Justice Windeyer in Shell v Esso (supra) as follows:

    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 or ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions.

17. Additional comment is found in the following words of Dixon and McTiernan JJ in Australian Woollen Mills Limited v F S Walton & Co Limited (1937) 58 CLR. 641 at 658:

    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 minds 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. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and meaning may play an important part.  The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected … .

18. French J, in the Woolworths Metro case, Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411 at 428, in restating the earlier propositions of Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Limited (1954) 91 CLR. 592 and of Parker J in Re Application by the Pianotist Co Limited (1906) 23 RPC. 774 at 777 expressed the relevant essential elements 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 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.

19. A judgment about deceptive similarity is generally a matter of first impression rather than meticulous comparison.   Allowance must be made for imperfect recollection (see Aristoc v Rysta (1945) 62 RPC 65). This principle applies as much to a visual comparison as it does when the sounds of two words are being compared. Taking into account the decisions and tests quoted above, it follows that, when comparing the two trade marks for the purpose of considering whether they are deceptively similar, the relevant consideration is the likely effect or impression produced on and retained by customers and potential customers who may be familiar with one of the marks, but not the other.

20. The opponent placed considerable emphasis on the element of similarity existing between the respective trade marks DYNASPEC and DYNAPAC.  It argued that the respective marks have the same “structure” in that they both consist of the prefix DYNA– together with a single syllable suffix.  Both marks end in the same letter “c”. The sound of the ending “–ec” in the holder’s trade mark is, the opponent submits, close to the sound of the “–ac” ending of the opponent’s trade mark.

21. I agree with the opponent that there is an undeniable element of similarity between the trade marks, but I do not accept that such similarity serves to render the present application deceptively similar to the opponent’s DYNAPAC registrations.  While Mr. Hallett points to the “significant aural similarities between the marks”, I find that upon closer consideration it is the points of difference between the marks which stand out.

22. Significant here, to my mind, is the presence of the letter S in the suffix to the holder’s trade mark, that is, –SPEC.  While it could be argued that a New Zealander could pronounce PAC as PEC, the holder’s trademark includes the letter S, a strong sibilant.  In pronouncing the holder’s trade mark, whether in a quiet office or on a noisy building site, this letter will be obvious. 

23. In addition to that particular and very obvious difference, there is the matter of the prefix DYNA–.  A search of the Register of Trade Marks demonstrates that the prefix DYNA– is relatively common.  In particular, there are 182 trade marks on the Register in the two classes of interest, namely 7 and 9, with statuses of “pending” or “registered”.  This fact has definite bearing on my decision in this matter.

24. In the decision of Application by Harrods Limited to Register a Trade Mark (1934) 52 RPC 65 at 70 it was stated:

    Now it is a well recognised principle, that has to be taken into account in considering the possibility of confusion arising between any two trade marks, that, where those two marks contain a common element which is also contained in a number of other marks in use in the same market, such a common occurrence in the market tends to cause purchasers to pay more attention to the other features of the respective marks and to distinguish between them by those other features. This principle, however, clearly requires that the marks comprising the common element shall be in fairly extensive use and, as I have mentioned, in use in the markets in which the marks under consideration are being or will be used.

1. Applying that principle to the matter at hand, I find that the presence of the common element “DYNA–” in each mark has the effect causing more attention to be paid to the remainder of each mark, being the respective suffixes “–SPEC” and “–PAC”. 

2. An additional matter for consideration here is that raised in LANCER Trade Mark Application [1987] RPC 303. The goods of both parties in this opposition are not mass-marketed, cheaply produced goods. They are expensive goods, and their purchasers are likely to purchase them with due consideration and care. Taking those factors into account, there is less likelihood of significant confusion, especially when the differences in both appearance and likely sound are noted.

3. As a result of this, I am satisfied that there is little likelihood of any real, tangible chance of significant confusion occurring between the trade marks.  I thus do not find them to be deceptively similar.

   Ground of opposition - Section 44

4. To be successful in respect of the ground based on section 44 of the Act, the opponent must be able to refer me to trade marks on the Register which

   ·have earlier filing dates

   ·are for the same or similar goods and

   ·which are substantially identical with or deceptively similar to the holder’s trade mark.

5. All three of these requirements must be met, and as I have found the opponent’s trade mark is not either substantially identical or deceptively similar to the holder’s trade mark, the ground under section 44 cannot be established.

   Ground of opposition – Section 60

6. The form of wording of this section of the Act applicable in this instance is that which existed as at the filing date of the holder’s application, that is 30 March 2006. This is a date prior to the amendments which were implemented by virtue of the Trade Marks Amendment Act2006 and which commenced to have effect as from 23 October 2006.   In this regard, I refer to the decision of the Registrar’s delegate in the MACRON case, Apple Computer Inc v Todaytech Group Limited [2007] ATMO 40.

7. Section 60, as it applies to this opposition, reads as follows:

   Trade mark similar to trade mark that has acquired a reputation in Australia

   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.

8. I noted previously the opponent’s reference to the relevance of the Pfizer v Karam decision, including the comment that the hearing officer is, as a result of this decision, able to decide that two trade marks may be deceptively similar for the purposes of section 60, even if they have not been found so for the purposes of section 44.

9. Section 60 brings in the factor of reputation. The provision is concerned with whether the use of the trade mark subject of the application under consideration would be likely to deceive or cause confusion by reason of the reputation in Australia of another deceptively similar trade mark. Applying the words expressed by Evershed J in Re Application by Smith Hayden & Co Limited (1946) 63 RPC 97 the relevant test under Section 60 can be stated as follows:

   Having regard to the reputation acquired by the trade mark [“DYNAPAC”], is the Court satisfied that the mark applied for, if used in a normal and fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons (per Justice Wynn-Parry in Application by Bayer Products, Limited and Opposition by A. Wander, Limited (1947) 44 RPC 125 at 130).

10. From the information provided via the evidence of use, I am satisfied the opponent can claim a reputation in Australia for it’s rather specialist range of products. However, I am not satisfied that there is likely to be confusion caused within the relevant market by virtue of this reputation once the holder chooses to enter it. I remain satisfied that the trade marks under consideration are not deceptively similar, which is the threshold test before section 60 is even brought into play. Even if I was to take the opponent’s reputation into consideration, I am satisfied the likelihood of any confusion would be slight. Therefore the ground of opposition under the provisions of section 60 has not been established.

    Decision

11. Subregulation 17A.34(1) provides:

    17A.34 (1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

    (a) to refuse protection in respect of all of the goods or services listed in the IRDA; or
    (b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

    having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

12. I have decided that the trade marks in question are not either substantially identical or deceptively similar, and that neither of the grounds of opposition pursued at the hearing have been established.  The opposition is therefore unsuccessful.

13. Accordingly, protection may be extended in Australia in respect of all of the goods listed in this IRDA, Australian application number 1119981 for the trade mark DYNASPEC, one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, protection shall not occur until the appeal has been discontinued or protection is otherwise ordered by the court.  If the Registrar has not been so served with a notice of appeal before that time the International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accord with subregulation 17A.34(2).

    Alison Windsor
    Hearing Officer
    Trade Marks Hearings
    7 July 2008