Emerson Electric Co v E Mishan & Sons, Inc

[2002] ATMO 45

TRADE MARKS ACT 1995

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

Re:Opposition by Emerson Electric Co. to registration of trade mark 609799(7) – EMSON (word) – in the name of E. Mishan & Sons, Inc.

Background

This issue is one of the few remaining that proceeds under the Trade Marks Act 1955 (‘the Act), via the transitional provisions of the Trade Marks Act 1995.  The issue arises out of the filing, on 23 August 1993, by E. Mishan & Sons, Inc., (‘Mishan’) of Fifth Avenue, New York, of application 609799 in Class 7 of the International (Nice) Classification of Goods and Services to register the word EMSON, in respect of goods that now read:

Class: 7 

Machines and machine tools as are included in this class, including: electric food processors; electric fruit and vegetable peelers; electric coffee grinders; electric knives; electric can openers; electric hand-held drills; electric mixing dehydrators as are included in this class; electric mixing machines as are included in this class; electric food mixers; electric scissors; electric clippers as are included in this class, including electric hair clippers; electric shears; electric hand-held mixers and mixing machines; electric hand-held blenders; electric food steamers as are included in this class; paper shredders as are included in this class; sewing machines of all kinds as are included in this class, including hand-held electric sewing machines; electric clothing steamers and irons as are included in this class, including ironing machines; electric sealing machines and machinery as are included in this class, including hand-held electric package sealing machines; ultrasonic pet training devices as are included in this class; and parts of and accessories for such goods as are included in this class

The application was accepted by a delegate of the Registrar of Trade Marks for registration and advertised as such in the Australian Official Journal of Trade Marks, on 23 February 1995.  As such, it is subject to the provisions of the Trade Marks Act 1955 owing to the provisions of subsection 291(2) of the Trade Marks Act 1995.

On 21 August 1995, after seeking and receiving an extension of time in which to do so, Emerson Electric Co. (‘Emerson’) of St Louis in the United States of America, filed Notice of Opposition (‘Notice’), under the provisions of section 49(1) of the Act, to the registration of the trade mark citing a wide range of grounds. Section 49(1) provides:

49. (1) A person may, within 3 months after the date of the advertisement of the acceptance of an application, or within such further period, not exceeding 3 months, as the Registrar, on application made to him within the first-mentioned period, allows, by notice in writing specifying the grounds of opposition and lodged at the Trade Marks Office, oppose the registration of the trade mark.

I heard the opposition as a delegate of the Registrar of Trade Marks on Tuesday, 30 April 2002. Brian Munday, of Spruson & Ferguson, represented Emerson, the opponent in these proceedings. Robert Kelson, of Callinan Lawrie, represented the applicant, Mishan. Both legal representatives appeared by teleconference. Of the grounds of opposition cited in the Notice, Mr Monday relied on those under subparagraph 28(a) and subsection 33(1) of the Act.

Evidence

The parties have served their evidence in accordance with the Act and regulations thereto; the evidence comprises:

Declarant	Referred to as	Date Made	Exhibits
Evidence in Support
Dennis J Green	Green	4 April 1997	1 – 10
Evidence in Answer
Edward I Mishan	Mishan	6 October 1998	EIM1- EIM6
Jeffrey Peter Winch	Winch	12 May 2000	JPW1
Evidence in Reply
Harley M Smith	Smith	17 August 2001	E1 – E3

Dennis Green is Vice President and Associate General Counsel of Emerson.  He had, at the time of making his declaration, held this position since 1993.  He avers that Emerson was founded in 1890 as a manufacturer of alternating current motors.  Since then, the range of goods that Emerson makes has grown.  Exhibit 1 to the Green declaration is an Emerson product overview, which shows a wide range of products, none of which fall within the ambit of the specification of goods of the opposed trade mark.  Moreover, I will interpose to state now that none of these goods evidences the Emerson trade mark in use.  In fact, the brochure shows that Emerson owns a number of companies, both in the USA and overseas from that country, each of whom use their own trade marks in relation to the goods that they produce.  For instance, on page 8 of Exhibit 1, what the brochure states to be an Emerson Specialty Motor, bears the trade mark DAYTON.

Emerson has a registration in Class 7 of its trade mark:

Number:  232967
Date:   2 October 1969

Goods:Motors and engines (not for land vehicles); machine tools, chucks; pipe and bolt threading machines; stands for machines; lubricators; pipe, drain and sewer cleaners; power-operated hand tools and cutting tools; knife sharpeners and can openers included in this class; hair clippers for other than personal use; power transmission apparatus including speed reducers, motor mounts and bases, couplings, sheaves, belts, sprockets, chains, gears, worms, take-up units, drive tighteners, idlers, pulleys, bushings, bearings, garbage disposers; and parts, assemblies and fittings for each of the foregoing

Endorsements:Registration of this trade mark shall give no right to the exclusive use of the surname EMERSON*

Trade Mark:               

Mr Green attests that Emerson sells goods in Class 7 under the Emerson trade mark in New South Wales, the Northern Territory, Queensland, South Australia Victoria and Western Australia and has done “since at least as early as” 2 October 1969.  I note that this date is the date of the first registration of an Emerson trade mark in Australia (A232967, above).  I suspect that this co-incidence in dates might arise from the fact that, as interstate use of a trade mark was necessary within the United States in order to secure registration of a trade mark at the USPTO, Mr Green has regarded registration of a trade mark in Australia as establishing use in this country.  It does not because use of a trade mark is not a precondition for its registration in Australia.  It is, I believe, an open question, in the absence of evidence that clearly establishes use of the trade mark at 2 October 1969, whether Emerson did, in fact, register its trade mark because it was using it in this country at that date.

Mr Green cites, as an example of the use of the Emerson trade mark, above, its use on under-sink waste disposal units.  He gives sales figures from the years 1994 to 1996; however, this period is after the date of application of this opposed trade mark.

Appended to the Green declaration are “representative excerpts from a number of product catalogues”.  I note that it is not claimed that these catalogues circulated in Australia; further, as the earliest date that can be ascribed to any of these excerpts is 1993, it is not obvious that that use of the trade mark on any of the products predates the application.  

In his evidence in answer, Mr Mishan says that he is Vice President of Mishan.  The opposed trade mark, he avers, is formed by taking, from within E Mishan & Sons, the initial letters of the founder’s name, and the word ‘son’ (as underscored) to create the word EMSON.  He avers that the trade mark had, at the time of making the declaration, been in use for 25 years.

Mr Mishan appends to his declaration a magazine article; the covers of product catalogues; product flyers and advertisements.  These show the trade mark EMSON in use, within the United States, on a range of goods which includes some within the specification of goods of this opposed application.  This use, he avers, is concurrent with Emerson’s trade mark in the United States and has not, to the best of his belief, led to any deception or confusion.  This declaration, and exhibits thereto, do not suggest that the EMSON trade mark had, by 1993, been used in Australia.

The declaration of Jeffrey Winch consists largely of criticisms of the evidence in support and submission in relation to the Mishan declaration; I weight it accordingly.

The Smith declaration, in reply, lists a very broad range of goods in Class 7 on which, it is stated, Emerson’s trade mark is used in Australia.  However, Mr Smith does not state when this use started; further, he exhibits in support of this claim two catalogues of products made by a company called RIGID, which company uses the trade mark RIGID within the catalogues and the Emerson trade mark does not appear to be used in relation to the goods.  There is a small reference to the Emerson Electric Company on the rear of the first of the catalogues and a use of the letter E from the above Emerson trade mark.  On the rear of the second catalogue, the word Emerson appears beside a logo that appears to be a rendition of a screw-gear.  Both of these uses are quite small and under a much larger rendition of the RIGID trade mark.  It is not clear to me that use of either of the foregoing is use of an Emerson trade mark on, or in physical relation to, the goods within the catalogues.  Rather, the use appears to be to identify Rigid as an Emerson subsidiary.  The catalogues seem to be from the years 2000 and 2001 which are subsequent to the relevant date.  Mr Smith also appends some receipts for goods allegedly sold in Australia under the Emerson trade mark; these receipts date from at least seven years after the relevant date of 23 August 1993 – the date on which the opposed application was made.  The receipts therefore have no relevance to these proceedings.

Observations

The evidence lodged to support the opposition does not support a conclusion that the Emerson trade mark had been used in Australia by 23 August 1993.  The material on which the opponent relies is either not evidence of use (such as the Australian registration on which Emerson relies), or evidences use of a different trade mark of a company which it owns; or it shows use of the Emerson trade mark after the relevant date. 

Emerson claims to have used its trade mark on a wide range of goods.  However, its extensive presentation of the use of other trade marks (which bear not even remote similarity to that on which it relies) by companies under its control as evidence of use of its own casts further doubt and uncertainty over the declarants’ statements concerning the scope of the use of Emerson’s trade mark.  It is thus impossible to gauge with any certainty what the scope of the use, if any, of Emerson’s trade mark was at the relevant date of 23 August 1993.  As the initial evidentiary onus in proceedings under subparagraph 28(a) is on an opponent (Emerson here), any further consideration of the opposition under that heading could serve no purpose and I dismiss the opposition in relation to section 28(a).

Similarly, as Mishan’s evidence does not establish use of the EMSON trade mark in Australia by the relevant date, the provisions of subsection 33(3), which deal with honest concurrent user, are not available to Mishan.

Section 33

Subsection 33(1) provides:

Identical marks

33. (1) Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, of goods of the same description as those goods or of services that are closely related to those goods, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.

Issues

There is no issue between the parties as to the earlier date of registration of the Emerson trade mark.  Additionally, the parties agreed at the hearing that the specifications of goods overlap and that the trade marks are not substantially identical.

Accordingly, the sole issue for my consideration is whether the trade marks are deceptively similar.

Deceptive Similarity

As Mr Munday pointed out in his submissions, this issue is under the provisions of the Trade Marks Act 1955 and there is no presumption of the registrability of a trade mark.  In fact, as observed in Eclipse Sleep Products Inc. v. The Registrar Of Trade Marks (1957) 99 CLR 300, at 313, by Dixon C.J, Williams and Kitto JJ

[an application for registration] at that stage is "in petitorio" and if the tribunal is left "in dubio" whether to grant the application or not the application should be refused : Eno v. Dunn (1890) 15 App Cas 252, at p 257. [Parenthetical material added]

Accordingly, if, after having considered the similarity of the trade marks, I am undecided as to whether they are, or are not, deceptively similar, the application should be refused.

There are three interrelated aspects to the consideration of deceptively similarity.  There is the comparison of the trade marks; the market context in which the trade marks are, or will be used; and, the issues of whether because of these factors the trade marks are deceptively similar in terms of the tests in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd [1997] 623 FCA (11 July 1997) per Heerey J:

·     The rights of the parties are to be determined as at the date of application for registration (here 23 August 1993): Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 594.

·     The onus is on the party seeking registration to satisfy the Court that there is no reasonable possibility of deception or confusion: Southern Cross at 594-5.

·     In order to defeat the application for registration it is not necessary for the opponent to establish that there is an actual probability of deception which will amount to a passing-off. While a mere possibility of confusion is not enough - for there must be a real, tangible danger of it occurring - it is sufficient that the result of the user of the mark will be that a substantial number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough that the ordinary person entertains a reasonable doubt: Southern Cross at 594-5, 608, The Kendall Co v Mulsyn Paint & Chemicals (1963) 109 CLR 300 at 305.

·     In considering the issue of deception all the surrounding circumstances must be taken into consideration. The factors to be considered include the circumstances in which the marks will be used, the circumstances in which the goods will be bought and sold and the character of the probable purchaser of the goods: Jafferjee v Scarlett at 120;

·     A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales: Southern Cross at 495. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived: Re Hack's Application (1940) 58 RPC 9 at 103-104.

·     It is not enough for the party seeking registration to negative the likelihood of confusion in relation to the actual trade carried on by the opponent at the time of the registration and to the manner in which the latter then uses his mark. The applicant must also take into account all legitimate uses which the opponent may reasonably make of his mark within the ambit of his registration: Reckitt & Colman (Australia) Ltd v Baden (1945) 70 CLR 84 at 94, Southern Cross at 608.

·     The question whether the use of a mark is likely to deceive or cause confusion is in the end a question of impression and common sense; it is a "jury question" in which the judge is entitled to give effect to his or her own opinion as to the likelihood of deception or confusion: Murray Goulburn Co-operative Ltd v New South Wales Dairy Corporation (1990) 24 FCR 370 at 377.

The considerations governing the comparison of trade marks are discussed in Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658, Dixon and McTiernan JJ described it as follows:

But, in the end, it becomes a question of fact for the Court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained.

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. 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, then similarities both of sound and of meaning play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.

Or, in the words of Windeyer J in The Shell Company 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 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.

Windeyer J added, at 416, that "[the] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone but, by the effect of that similarity in all the circumstances".

The trade marks of the parties have some similarities.  In both trade marks, the word opens with the syllable EM and ends in the syllable SON.  In both trade marks, the words are short and in the one shares most, and in the other all, letters with each other in the same order.

Balanced against this is the fact that the word EMERSON is a fairly common and recognisable surname; the word EMSON is, as Mr Munday observed, a comparatively rare surname and, I consider, not likely to be generally recognised as such.  Additionally, the word in one trade mark has two syllables and whereas the other has three.  In addition, the impact and importance of the stylised alphabetical letter ‘E‘ should not be overlooked in the comparison as it forms a large part of the opponent’s trade mark; of course, on the other hand, the impact of this element should not be overstressed as it is likely to be discounted in any verbal description of the trade mark or oral request for goods.

The expression used by Windeyer J, above, “in all of the circumstances” brings into consideration the trade context in which the goods are likely to be bought and sold.  Here, the specifications of goods encompass goods which in general are of moderate price and not, therefore, bought by the consumer without some consideration.  The goods are not of the same order of price as cars: LANCER Trade Mark Application [1987] RPC 303; neither are the goods of the nature where a purchase will be made casually: Re: Stuart Alexander And Co. (Interstate) Pty. Limited and Douwe Egberts Koninklijke Tabaksfabriek-Koffiebranderijen-Theehandel N.V. and Blenders Pty. Limited (1981) 53 FLR 307 No. G117 of 1981 [the 'Apothecary Jars' case].  Some of the goods, being complex tools comprehended in the expression “machines and machine tools” in the opposed specification of goods, will call for a degree of technical expertise of those involved in ordering or purchasing the goods.  If those persons buying such goods do not have any expertise, the process of purchasing the goods is likely to be protracted.  As these factors apply, it may be less likely that the trade marks be confused in relation to those goods: Re Application By Retec Ltd (1988) 12 IPR 413.

I do not consider the trade marks to be deceptively similar.  The relevant market place dictates, I believe, a certain caution and close inspection of any goods prior to purchase.  This circumspection will, I believe, extend to the trade marks which are used in relation to those goods.  The similarities between the trade marks are superficial and might give rise to deception and confusion if inspection and consideration of potential purchases in this market place was likely to be similarly superficial.  In such a situation, the issue would, in terms of Dunn’s case, above, be in dubio and the application should be refused.  However, as I have noted, both the price of some of the goods and both the price and the technical complexity of much of the balance of the goods appear to militate against superficial inspection and casual purchase.  The modes of sale of the goods also decrease the likelihood of deception.  One mode, that involving power tools and domestic aids, is usually across a counter with a sales assistant interposed between the purchaser and the goods – or, in a department store with the aid of a sales assistant.  The other mode, involving the more complex machinery contemplated in the specifications, appears apt to be via a specialist technical machinery supplier.  These sales channels decrease the likelihood of deception as the sale is subject to discussion and negotiation.  Additionally, as I have remarked, there is the likelihood that the Emerson trade mark will be recognised as a surname whereas the opposed trade mark will not.

Section 50 of the Act provides:

50. (1) The Registrar shall, after giving to the applicant and the opponent an opportunity of being heard, decide-

(a) to refuse to register the trade mark;

(b) to register the trade mark subject to such conditions or limitations as he thinks fit; or

(c) to register the trade mark without conditions or limitations.

(2) In determining the opposition the Registrar may take into account a ground of objection whether relied upon by the opponent or not.

The opposed trade mark may be registered if there is no appeal within four weeks of the date of this decision, and I dismiss the opposition.

Costs

Having been successful in the matter, Mishan may claim its costs.

Ian Thompson
Hearing Officer

27 May 2002