E.I Du Pont De Nemours & Company v Starwell Australia Pty Ltd

[2000] ATMO 75

TRADE MARKS ACT 1995

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

Re:Opposition by E.I. Du Pont de Nemours and Company to the registration of trade mark application number 730147 in the name of Starwell Australia Pty Ltd for the word trade mark COMFORTFIL in Classes 20 and 24.

Background
Trade mark application number 730147 was filed on 19 March 1997 in the name of Starwell Australia Pty Ltd (the applicant).  The application was for the registration of the word trade mark COMFORTFIL and, following amendment, covered the statements of goods, "Pillows, cushions, furniture and bedding included in this class" and "Textile products in this class including bed and table covers", in Classes 20 and 24, respectively.  Subsequent to examination, the trade mark was advertised as accepted in the Australian Official Journal of Trade Marks of 14 May 1998.

Following the allowance of an extension of time within which to do so, E.I. Du Pont de Nemours and Company (the opponent) filed notice of opposition to the trade mark’s registration on 16 November 1998.  That notice listed a number of grounds.  However, at the hearing held to determine the matter, the opponent's legal representative only pursued the grounds based on ss.57 and 60.  Accordingly, those grounds are the subject of this decision and the reasons given for it.

The opponent requested that the matter be decided by the Registrar and it came before me, as a delegate of the Registrar, for hearing in Canberra on 8 March 2000.  Representing the opponent at the hearing was Mr John Hawker of Callinan Lawrie.  The applicant's lawyers, Ebsworth & Ebsworth, advised before the hearing that the applicant had elected not to appear or to be represented at the hearing, and also was not relying on written submissions.

The Evidence
The evidence in support includes a declaration by Joanne Drysdale, the Marketing Manager of the Dacron Division of Du Pont Australia Ltd, the Australian branch of the opponent.  Ms Drysdale declares as to the opponent's ownership of the trade COMFOREL which, she says, has been used by that party on pillows and quilts throughout Australia since 1993.  She gives details on retail outlets which sell the opponent's goods, magazines where advertisements featuring the opponent's mark have been included, examples of packaging and point of sale material and sales figures for the opponent's goods under the mark from 1995 to 1998 inclusive.

Submissions
In his submissions on behalf of the opponent, Mr Hawker said that the Drysdale declaration demonstrated the wide extent of the opponent's reputation in Australia for its mark COMFOREL in relation to pillows, quilts and filling material for those goods.  He said that the mark had been used on these goods since 1993 and he submitted that the opponent's reputation for its mark was widely acknowledged in the industry - in addition to its wide public recognition.  He again pointed to the evidence, where the different retail outlets selling the opponent's goods were listed, as were the trade sales figures for the years 1995 to 1998 inclusive.

Mr Hawker drew my attention to the two competing marks here: the applicant's applied for mark COMFORTFIL and the opponent's mark COMFOREL, saying that their very similar pronunciation and appearance would lead to deception and confusion if the former mark was used.  He said that, in any comparison of the marks, I should give more emphasis to the common prefix COMFOR-, because the different endings of similar words were less important and also that the marks here were long ones, placing more importance on the beginnings of them.  He said that this was especially so, given the manner of sale of such goods, whereby marks on soft furnishings were not always fully visible.  Added to this, he contended, the prefixes COMFOR- or COMFORT- were not common to the trade, the only other two marks on the Register including these, which could be "generically put in this category", were the Pacific Dunlop marks COMFORTECH and COMFORTOP.  He said that the present mark COMFORTFIL was further removed from these marks in appearance and pronunciation and also in the goods covered.  However, he submitted, it was very similar to the opponent's COMFOREL mark and its goods of interest.

Analysis
If the opponent intended to rely upon grounds raised in the notice of opposition, other than ss.57 and 60, it did not support them in the evidence or in its attorney's submissions.  As I have previously indicated, I will limit my deliberations to those two grounds referred to by the opponent’s legal representative at the hearing.

Section 57
This section of the Act states that:

57.  The registration of a trade mark may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected under Division 2 of Part 4, except the ground that the trade mark cannot be represented graphically.

Mr Hawker did not specify what, specifically, the opponent was relying upon under the s.57 ground.  However, those applicable sections which do fall under Division 2 of Part 4, under which a trade mark application may be rejected, comprise ss.39, 41, 42, 43 and 44.  Mr Hawker did not make any specific submissions, in relation to any of these sections, nor was there any evidence directed towards them.

Notwithstanding this, I have inferred, from his arguments at the hearing in relation to the opponent's registered marks for the word COMFOREL in Classes 20 and 24, that the opponent may be relying upon a ground of opposition under s.44.  The opponent's registered marks for this word are, respectively, number 451900 in Class 24, for the statement of goods, "All goods in this class", and number 498895 in Class 20, and covering the goods, "Pillows and sleeping bags and all goods in this class".

Section 44
The relevant part of this section 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)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.

There is no doubt that the goods of interest for both parties are the same, or similar.  The opponent's registered marks cover all the goods in classes 20 and 24, while the present application cover goods within those two classes.  Additionally, the opponent's trade marks were registered in 1986 and 1988, respectively, and quite obviously have earlier priority dates than does the present application.

The matter therefore boils down to whether or not the competing trade marks are substantially identical with, or deceptively similar to, each other.  The tests to determine these questions are conveniently laid out in such cases as Australian Woollen Mills Ltd v F. S. Walton & Co Ltd (1937) 58 CLR 641, and Shell Co of Australia v Esso Standard Oil (Australia) Ltd, (1961) 109 CLR 407, where, in the latter case, Windeyer J said, at 414-415 : (in relation to substantial identity)

(the marks should) 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,

and (in relation to deceptive similarity):

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 determine whether the marks are substantially identical, I have compared the marks in question side by side, as per the first test expounded by Justice Windeyer.  Those marks are, on one hand, the opponent's mark COMFOREL, and on the other, the applied-for mark COMFORTFIL.  Although both marks share the common prefix COMFOR - as submitted by Mr Hawker - they have different endings and they are visually and phonetically different to each other.  Accordingly, I cannot agree that the applicant's mark is substantially identical with the opponent's word mark.

I now move on to the question of whether the marks are deceptively similar.  What I do need to consider here, given the second test in the Shell case, is whether a person of normal intelligence and memory would retain the same impression based on a recollection of both the respective parties' marks.  I agree with Mr Hawker that, as a general principle, the first syllable of word marks is of primary significance in their comparison. [London Lubricants ( 1920) Ltd.'s Appn. 42 RPC 264]. It is also true, as Mr Hawker claimed at the hearing, that both marks here include the word element COMFOR-.  However, I believe that the following consonant, the letter T, in the opposed mark would lead to an inference that the major element was the "hard ending" word COMFORT, followed by the suffix - FIL.  I am further of the opinion that that word would usually be pronounced as if it were two words, viz: COMFORT FILL.  In the opponent's case, I think that it would be legitimate to see its mark as being the "soft ending" word COMFOR- with the addition of the suffix -EL.  With no plosive in the middle of the word, I believe that these word elements would be run together in speech.  Thus, the two marks, while having the same number of syllables, would be perceived as having different pronunciations, word elements and appearance to each other.  I am further of the opinion that the average person, when viewing the present mark, would see it as having a slight allusion to pillows, cushions and other such goods which are "filled with comfort".  In the opponent's case, I think that the ordinary observer would see it as being a meaningless word - although with a very slight reference to "comfort".

Mr Hawker, in his submissions, made much of the way that the marks owned by the respective parties would be shown on their goods which could be presented for sale on shelves - with perhaps only part of the marks being visible.  He said that the possibility of confusion between the marks would thus be exacerbated.  However, it is my experience that the type of goods covered by the present application, rather than being sold in old-style stores with shelves behind a counter, are retailed mainly in department stores and the like, where buyers can, and do, pick the goods up and inspect them for comfort, quality and origin.  Thus, they would have ample opportunity to see the entire of the marks before making their selection.  Additionally, the opponent's mark apparently happily coexists on the Australian Trade Mark Register with the Dunlop marks COMFORTECH and COMFORTOP for similar goods.  Therefore, it would seem unlikely that the parallel presence of the present mark COMFORTFIL on the Register would present any additional confusion.

Accordingly, even taking into consideration the shared word element, I would expect consumers to be able to differentiate the marks owned by the parties here.  Consequently, I do not think that the ordinary purchaser of goods in the appropriate market would consider that the applicant's and opponent's marks are deceptively similar to each other.  Given the foregoing, I find that the opposition, so far as it relies upon s.44, is not made out.

As I have said, none of the other sections, which may be inferred as being grounds of opposition relied upon under s.57, were addressed in Mr Hawker's submissions or in the opponent's evidence.  As there is nothing to support these grounds, I formally find that the opposition has not been successful in relation to them.

Section 60
This section 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.

I have already found that the respective trade marks are neither substantially identical nor deceptively similar to each other.  That being the case, it is not necessary for me to further explore whether deception or confusion would be caused if the presently applied-for mark is used on the goods in the specification, in the light of the opponent's reputation in the trade mark in Australia.

However, for the sake of completeness, notwithstanding my finding of a lack of substantial identity or deceptive similarity between the marks, had I decided for the opponent on either of those issues, then I believe that it would have needed to have done more than it has here to show that there existed a sufficient reputation in Australia for its mark so that deception or confusion would be likely to occur because of the subject mark's use.  There is no change in the law from the Trade Marks Act 1955 that there is an evidentiary onus on the opponent, in the first instance, to establish the extent of its reputation in Australia - re Heerey J., when referring to s.28 of that Act, in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 at 501. Any deception or confusion should be bound to occur amongst a substantial number of people, likely to be concerned in the purchasing of the particular goods, because of the use of the applicant's mark - as per Kendall Company v Mulsyn Paint and Chemicals 109 CLR 300. The test for deception or confusion was recently dealt with in the judgement of French J in Registrar of Trade Marks v Woolworths, (1999) AIPC 91-499 at 39,695 (paragraph 43). In considering the phrase "likely to deceive or cause confusion", his Honour says:

The use of the word "likely" in this context does not import a requirement that it be more probable than not that the mark has that effect.  The probability of deception or confusion must be finite and non-trivial. There must be a "real tangible danger of its occurring".

The date at which such deception or confusion should be considered is that of the filing of the present application - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 - here 19 March 1997.

Ms Drysdale, in her declaration, provides sales figures in relation to the use of the mark COMFOREL by the opponent.  She has stated that the opponent first commenced use of the mark in 1993 but has only included sales data from 1995.  Therefore, these figures are only cover sales for two years before the critical date - seemingly too short a period for a significant reputation to have been formed.  However, I have taken into consideration that the claimed retail outlets for the opponent's goods represent a wide range of the shops selling such goods in this country.  I note, however, that no supporting information was included in the evidence to support the mark's exposure at this range of outlets.  Additionally, the opponent has claimed that its mark has been advertised in national magazines, although no examples of any of the advertisements were exhibited in the evidence.  Notwithstanding this dearth of corroboration for the reputation claimed for the opponent's mark, it would seem paradoxical that the opponent's reported sales do not appear to be very high during the two year period under review, given what I believe to be the approximate cost of pillows and quilts and what must be a large Australian market for such goods.  I have also observed that the opponent's mark is almost always shown in the evidence to be used with its other marks DU PONT or DACRON, which would appear to dilute the significance of the opponent's claimed reputation in its COMFOREL mark.  That being the case, then I would have expected that some supporting declarations by those in the trade, attesting to the latter mark's independent renown, should have been included to support the opponent's claims.

Given all of the above, I find that the opponent is not successful on this ground of its opposition.

Section 55
This section reads:

55. 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.

Having due regard to the provisions of s.55, nothing has been done, either in the evidence or in the opponent's submissions, which has convinced me, as the delegate of the Registrar, that I should decide to do otherwise than to register the trade mark, the subject of this application.

Decision
I have found that the opponent has not succeeded on any of the grounds relied upon.  Accordingly, I dismiss the opposition and direct that the mark should proceed to registration, providing the appropriate fees have been paid.

Costs
Having been the successful party here, the applicant is entitled to its costs.  Consequently, I order that the opponent pay the applicant's costs in the matter, in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).  On application those costs will be taxed and allowed by an officer of the Trade Marks Office, appointed for that purpose.

Ian Forno
Hearing Officer

24 July 2000