Effem Foods Pty Ltd v Torrag Pty Ltd

[2002] ATMO 54

TRADE MARKS ACT 1995

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

Re:Opposition by Effem Foods Pty Ltd to registration of trade mark application 786044(42) - PETVETS, WITH CAT AND DOG DEVICE - filed in the name of Torrag Pty Ltd.

Background

Trade mark application 786044 was filed by Torrag Pty Ltd ("Torrag") on 19 February 1999 ("the priority date").  Registration is sought in class 42 of the International (Nice) Classification of Goods and Services (7^th edition, current at the priority date) in respect of "veterinary hospital, pet boarding" for the following trade mark.

The Trade Marks Office examined Torrag's application and advertised it as having been accepted for registration.  However, Effem Foods Pty Ltd ("Effem") has opposed registration.  Following the scheme of the regulations, the parties served and filed evidence to support their positions, as set out in the following table, and the opposition was set down for me to hear and decide under delegation from the Registrar of Trade Marks.  When the matter came on for hearing, Effem was represented by Rohan Singh, solicitor of the firm of Baker & McKenzie.  Geoff Davidson, patent attorney of Halford & Co, represented Torrag.

Evidence

Effem's evidence in support

Declaration by	Annexures
Duncan Hall	DH-1 to DH-8

Torrag's evidence in answer

Declaration by	Annexures
Margaret McLachlan	MM1 to MM16
John Thrift	JT1 to JT3
Ian Steep	IS1 to IS3

Effem's evidence in reply

Declaration by	Annexures
Duncan Hall ("Hall #2")
Kersti Seksel
Dr Joseph Andrew Sulyok
Dr Charles Gordon Heslop

Put simply, Effem is the manufacturer of a variety of pet foods.  As well as selling the ordinary sorts of dried and tinned dog and cat foods under the trade marks PAL and WHISKAS, it sells what appears to be a prestige ("professional") line of such foods under a trade mark that is sometimes referred to as the Waltham hand device.  This has been variously registered as follows:  

Trade Mark Number 553904  Trade Mark Number 669366

It also publishes and circulates, to veterinarians, the Waltham Focus magazine.  The Sulyok and Seksel declarations confirm this.  This journal is aimed at veterinarians, and contains information on pet health and nutrition.  It appears that Torrag has been sent copies of this journal, a quarterly publication, since at least June 1997, and stocks and sells to the public various pet foods bearing the Waltham hand mark.

Issues and arguments

Mr Singh relied on three grounds of opposition:

• S 44

• S 60

• S 42

The third ground is said to be enlivened only by an alleged breach of s 52 of the Trade Practices Act 1974.  This is said to be because the trade mark of Torrag would, in use, be misleading or deceptive, or likely to mislead or deceive, in view of the business conducted by Effem.

I will note that the services set out in trade mark registration 553904 include "kennelling of animals", "hospitals for sick animals" and "veterinary services".  It is quite clear, therefore, that the opponent has established one leg of s 44.

That being so, let me deal with this opposition by saying that all three grounds of opposition on which Effem relies therefore share a common strand.  This is said by Effem to be the deceptive similarity of the trade marks in question, as registered and/or used by Effem on one hand and as sought to be registered by Torrag on the other.  In my view, that strand fails, and cannot sustain the opposition under any of the headings.  I will now explain why this is so.

Deceptive similarity.

Mr Singh reminded me that s 10 provides a definition of this, a key concept in both s 44 and 60, and in s 42 as presently argued.  It provides:

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.

He relied on the statement of the issue under s 44 provided by Justice French in Registrar of Trade Marks v Woolworths 45 IPR 411.

(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.

From this, I note that the standard to be applied under s 10 in relation to sections 44 and 60 of the Trade Marks Act 1995 appears to be easier for an opponent to satisfy than is the standard under the Trade Practices Act 1974.  Under the latter, the conduct needs to be at least "likely to mislead or deceive".  Merely being likely to cause confusion is not, under that legislation, sufficient.  It follows that an opponent who fails to meet the s 10 threshold in relation to s 60 must fail also in relation to any alleged breach of the Trade Practices Act.

I adopt the definition of deceptive similarity set out in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415:

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 plaintiffs 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.

Mr Singh concentrated on the logo portion common to both Effem's marks and Torrag's.  His argument was that an applicant cannot avoid deceptive similarity if it takes the essential elements of another trader's mark and they are not transformed or subsumed in the whole.  I agree with this.  There was some debate at the hearing about the extent to which I can take note of one existing registration. Mr Singh argued that trade mark application filed by Torrag takes all the elements relied on by Effem, and arranges them the same way.  He made the assertion that that there are no registered marks in class 42 that share the features:

a) the silhouette of the head and neck of a stylised, plain, dark-coloured cat

b) superimposed over a silhouette of the head and neck of a stylised, plain, light-coloured dog

c) set against a plain shaped dark coloured background

d) in which both animals are looking towards the right.

Mr Davidson, for his part, said that if I was to have regard to Mr Singh's assertion, then I should also note the presence on the register of trade mark 868025. I set this trade mark out, but I give its existence no great weight, except insofar as it is an example of what appears to me to be a correct application of principle. 

While Mr Singh has a point about the detail elements of Torrag's mark, it does not carry the day.  I think that the existence of registration 868025 is a good example of how elements of one trade mark may safely consist of some that are in common with another mark, provided that they are safely defused and buried in a new composite.  Indeed, those latter words, to which Mr Davidson referred and which I used in relation to the matter of Stokely-Van Camp, Inc v Alexander Hutton [1999] ATMO 123, now need recasting in the light of the caution sounded by French J in Woolworths, supra:  no problem exists under s 44 unless the shared elements are seen to be sufficiently prominent and memorable and to be serving a trade mark function in the later application.

As to the distinguishable elements, Mr Singh argued, at the hearing, that the hand that appears in Effem's trade marks is not an essential element.  Similarly, he suggested that the word petVets would be seen by consumers as having a low degree of inherent ability to distinguish, leaving the weight on the graphic element as an identifier.

Mr Davidson pointed out that it was somewhat disingenuous for Effem to disclaim the significance of the hand element in its various trade marks.  He pointed to other variants that Effem has registered over time, with the hand as a common element in all of them.  He noted, tellingly, that in the Heslop, Sulyok and Seksel declarations, the trade mark is in fact referred to as the "Waltham hand device".  I agree with him that it contributes strongly to the story or theme of the Effem marks:  it is representative of the human element in pet-care.  Humans, not animals, are Effem's customers, and the hand, patting the heads in question, is quite significant, both visually and in memory.

Mr Singh, for his part, reminded me that "in most persons the eye is not an accurate recorder of visual detail and marks are remembered rather by general impression or by some significant detail than by any photographic recollection of the whole"[1].  I acknowledge the force of this but I think that it cannot be carried too far in a field where devices of dogs and cats are common to the trade.  This is something that Mr Davidson notes is commented on by D.R. Shanahan in Australian Law of Trade Marks and Passing Off.  Conversely, the author goes on to note the increased merit of features "sufficiently unusual and fanciful", and I would not wish to be seen as dismissive of the merits of Effem's trade mark as a whole.

[1] De Cordova v Vick Chemical Co (1951) 68 RPC 103 at 106

In his written submissions, Mr Singh set out the competing device elements side by side:

 

Were there nothing more to the comparison than this, perhaps the matter would be more debatable.  However, in the Torrag mark, the word petVets affects the comparison.  It is the subject of the gaze of the two animals.  To the extent that the contested device, as part of Torrag's mark, is memorable at all, this visual linking with the word element renders it memorable in very different terms to the Effem mark.  In the latter, the gaze of the pets is upwards, towards the hand that is an important element in that mark.  This difference holds true also when I give proper weight to variants of Effem's mark registered, and used, with the word Waltham beside the device.

This, in my view, reinforces the weight that would ordinarily be given to distinguishing words that appear in trade marks.  As Shanahan, supra, notes at p 178:

Where a trade mark combines a device with a word, customers will more naturally refer to the word when ordering the product.   Where... the verbal features can be readily distinguished, this may greatly reduce the risk of confusion through similarities in other features of the mark.

Accordingly, in terms of the test proposed in Woolworths, supra, I am not satisfied that the necessary level of deceptive similarity is present.  Accordingly, no ground of opposition has been established under sections 44, 60 or 42 as currently argued.

Conclusion

Having found that no ground of opposition has been established, the application is able to proceed to registration after 4 weeks from the date of this decision unless, within that time, a copy of a notice of appeal from this decision has been served on the Registrar of Trade Marks.  I direct that Effem pay the costs of Torrag in terms of the official scale.

Terry Williams

Hearing Officer

Trade Marks Hearings

28 June 2002