Esselte Meto International Produktions GmbH v Mita Industrial Co Ltd

[1999] ATMO 73

TRADE MARKS ACT 1955

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

Re:Opposition by ESSELTE METO INTERNATIONAL PRODUKTIONS GmbH to the registration of trade mark application number 543449, in Class 16, in the name of MITA INDUSTRIAL CO LTD for the trade mark MITA in stylised form.

Background
Application number 543449 was lodged on 3 October 1990, in the name MITA INDUSTRIAL CO LTD (the applicant).  The application was for the registration of the mark shown here and covered the statement of goods:

Copying machines for office use; paper and paper articles for copying and printing; office requisites, printed matter, books, brochures, service manuals and instructional and teaching materials; all other goods in class 16

Following examination, the application for the trade mark was accepted and advertised as such in the Australian Official Journal of Trade Marks of 17 June 1993.  Following an extension of time to do so, a notice of opposition to the trade mark’s registration was lodged by ESSELTE METO INTERNATIONAL PRODUKTIONS GmbH (the opponent), on 15 December 1993.

As provided for in the transitional provisions of Part 22 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to govern this opposition.  Accordingly, unless otherwise specified, any reference to "the Act" in this decision is a reference to the Trade Marks Act 1955.

The notice of opposition listed a number of grounds.  However, the only matters which were relied upon by the opponent's attorney at the hearing were the allegations under s.28, that the use of the trade mark would be likely to deceive or cause confusion; and under s.33, that the subject trade mark is deceptively similar to several prior registered trade marks owned by the opponent, in respect of the same goods, or goods of the same description.

Accordingly, those grounds are the subject of this decision and the reasons for it.

The Evidence
The evidence in support comprised a declaration by Robert Coldbeck, the National Sales and Marketing Manager of Esselte Meto Pty Ltd, the Australian subsidiary of the opponent.  Mr Coldbeck declared as to his knowledge of the opponent's METO trade marks which are used throughout Australia on a range of price marking guns, barcode printers and associated goods, and anti-shop theft systems, laser labels and tagging guns and pins.  He also gave details of the sales and advertising values of such goods bearing the mark.  Annexed to his application were brochures and advertising material showing use of the opponent's mark.

The applicant served evidence in answer, comprising a declaration by David Fitzpatrick, a partner of the applicant's attorney firm, Phillips Ormonde & Fitzpatrick, who declared that he did not believe that the opposed mark MITA, in stylised form, was either substantially identical or deceptively similar to the opponent's METO mark, either in block letters, or in logo form.  Mr Fitzpatrick further declared as to his knowledge of the various MITA marks registered by the applicant in Class 16 which, he said, coexisted with the opponent's registered METO marks in the same class on the Australian Register.  He said that he believed that the opponent could not establish any of the grounds of opposition and that costs should be awarded to his client.  Annexed to his declaration were copies of Trade Marks Office records showing details of the respective marks.

The opponent did not seek to serve any evidence in reply in the case.

The opponent requested a hearing in the matter and it came before me, as a delegate of the Registrar, in Sydney on 8 March 1999.  The opponent was represented by Mr Ken McInnes, of Baldwin Shelston Waters.  The applicant's attorneys did not advise the Registrar whether the applicant would be represented at the hearing and neither that party, nor a representative, attended on the day.

Submissions
Mr McInnes opened his submissions by saying that the opponent was not seeking to prevent registration of the applied for mark but was merely seeking a restriction on the goods presently sought to be covered by the application.  He said that both parties' trade marks had, in the past, successfully coexisted, on the Register and in the marketplace, for their own specific goods of interest.  However, given the applicant had now sought to widen the goods claimed, to include, "all other goods in class 16", then this meant that, given the reputation presently enjoyed by each party, then the words METO and MITA would be deceptively similar, if used on the same goods.  He said that the parties had recently come to an agreement that the applicant would delete the broad claim covering all of Class 16, and also the item, "office requisites", from its statement of goods, and also qualify the specification as, "all being for use with copying machines".  However, it had not done this, as at the date of the hearing.  He said that, because of this, the opponent had been forced to take the matter to a hearing to obtain the desired result - a restriction of the goods for which registration was presently sought.

Mr McInnes submitted that the principle of "imperfect recollection" would be relevant if the application proceeded with the presently broad statement of goods. This, he said, was because the two words METO and MITA, were deceptively similar, given they each had two syllables and were phonetically the same. He said that their concurrent use on the same goods in Class 16 would lead to deception and confusion as to whether they shared a common origin. He submitted that no one would expect that the present mark could be used on all of the goods in Class 16 and that, if the mark was permitted to proceed to registration with the wide range of goods now claimed, then the opponent would be forced to take action under s.92 of the Trade Marks Act 1995, for removal of the mark for goods on which it was not being used.  He asked the Registrar to exercise his discretion to restrict the goods to those clearly of interest to the applicant.

Mr McInnes closed his submissions by seeking costs in favour of the opponent.

As I have previously indicated, the applicant did not put forward any submissions on the matter for the Registrar's consideration.

Analysis
In considering my decision in this matter, I will only deal with the grounds which Mr McInnes relied upon in the making of his submissions.

Section 28 - Deception and confusion
The provisions of this section of the Act read as follows:

Scandalous and improper marks

28.      A mark:

(a) the use of which would be likely to deceive or cause confusion;
           (b) the use of which would be contrary to law;
           (c) which comprises or contains scandalous matter; or

(d) which would otherwise be not entitled to protection in a court of justice,

shall not be registered as a trade mark.

It would appear, from the opponent's evidence, that that party has enjoyed a wide reputation for its METO mark, for its particular goods in Australia, as at the relevant date.  In assessing that reputation, the relevant date is that of the filing of the opposed application - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

Mr McInnes did not claim that the marks in suit were substantially identical but did submit that they were deceptively similar, when used on the same or similar goods.  The tests for determining whether marks are deceptively similar are conveniently laid out in such cases as Australian Woollen Mills Ltd v F. S. Walton & Co Ltd (1937) 58 CLR 641. Additionally, Windeyer J, in Shell Co of Australia v Esso Standard Oil (Australia) Ltd, (1961) 109 CLR 407 said, at 414-415:

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.

Both the applicant's MITA mark, as shown on page one of this decision, and the opponent's METO marks comprise two syllables and have phonetic similarities.  However, at first glance, they would not appear to be deceptively similar.  Notwithstanding this, Mr McInnes has argued that purchasers, who had an impression or recollection of the opponent's mark because of the reputation it enjoyed for a particular set of goods, might be caused to wonder as to origin if they saw the applicant's mark used on the same goods.  Given that the applicant has not raised an argument to the contrary, I am willing to consider then whether, in this particular case, other factors, such as buyers' expectations, could contribute to the marks being considered sufficiently similar to be considered "deceptive".  Mr McInnes has said that the marks have previously coexisted, when used on each party's separate goods of interest.  A search of the Register reveals that, in the applicant's case, these goods appear to be, in the main, copying and printing machines and associated Class 16 goods, whereas the opponent seems to deal in a wide range of Class 16 goods, including labels, stationery, inks, office requisites, printed matter and like.  Mr McInnes has submitted that, for the present applicant to now claim "all…goods" in Class 16, would upset the status quo - given the common features in the marks.  It is accepted law that any risk of deception and confusion must extend to a substantial number of people likely to be concerned in the purchasing of the particular goods or services - Kendall Co v Mulsyn Paint and Chemicals (1963) 109 CLR 300.

Mr McInnes has also alleged that there had been an agreement between the parties to settle the matter, as yet unsigned by the applicant, where that party had agreed to restrict its goods to copying machine-related goods.  The applicant, by choosing not to attend the hearing, has not thrown any light on its side this claim.  Having considered Mr McInnes' unchallenged submissions in this regard, I am disposed to agree with him that a change in the balance of the goods claimed by both parties might be prejudicial to the opponent.  I think that this is because the competing marks are deceptively similar in the circumstances outlined under s.28.

I think that the doctrine of "imperfect recollection", as enunciated in Rysta Ltd's App'n (1943) 60 RPC 87, is applicable to the present situation, as it relates to the s.28 ground. I believe that it is possible the relevant public could carry away the impression, when confronted by the applicant's mark on the same goods as made by the opponent, that each of the marks was merely a variation of the other.

Having considered the above, I find that use of the mark covered by the present application would be likely to deceive or cause confusion whilst that mark covers the present statement of goods.  The opposition must therefore succeed in terms of s.28(a).

It was previously the practice of the Registrar to require that blameworthy conduct be shown, in addition to the likelihood of deception and confusion, for an opposition based upon s.28 to be successful.  This followed the High Court decision in New South Wales Dairy Corp v Murray Goulbourn Co- operative Co Ltd 18 IPR 385 (the Moo/Moove case) and the interpretation of that case, as laid out in the decision of Hearing Officer Homann in Titan Manufacturing Co v John Terrence Coyne 22 IPR 613, which inferred a conjunctive reading of s.28 was necessary.

However, a decision of the Full Federal Court, on appeal, in the case of Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd [1998] 1704 FCA (23 December 1998) (as yet unreported) has since issued.  There, the Full Court said that a disjunctive reading of s.28 was the correct approach when deciding oppositions to registration.  Therefore, conduct which is deemed to be "blameworthy" need not now be shown for success under the whole of s.28.

Given the combined effect of the foregoing, I find that the opponent is successful on this opposition ground.

Section 33 - Substantially identical or deceptively similar

Sub-section 33(1) reads:

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.

I have already found that the applicant's mark would be likely to deceive or cause confusion because, relative to the circumstances outlined under s.28, it is deceptively similar to trade marks owned by the opponent.  However, in relation to s.33 considerations, any comparison of the competing marks must be distinguished from the effects of reputation and other mitigating factors.  On this basis, I must compare the applicant's applied for mark, MITA, as shown on page one, with the opponent's prior registered marks.  I think that, in the present case under s.33, the appropriate comparison should be made with the opponent's Class 16 marks: registration number 205164, for the word METO in plain type, covering "labels"; and 297664 for the mark, covering:

Paper, cardboard, articles of paper or of cardboard (not included in other classes); printed matter, newspapers and periodicals, books; bookbinding material; photographs; stationery, adhesive materials (stationery); artists' materials, paint brushes; typewriters and office requisites (other than furniture); instructional and teaching material (other than apparatus); playing cards; (printers') type and cliches (stereotype); all said goods not including letterheads and envelopes.

There can be no doubt that the goods covered by the opponent's Class 16 registrations are the same as those for which registration is now sought, given the present claim for, "…all other goods in class 16".

Notwithstanding my earlier comments about other factors to be heeded, in terms of s.28, in relation to deception and confusion occurring as a result of deceptive similarity, the present consideration relates to the s.33 ground.  Here, I am not permitted to consider the effects of the opponent's reputation, which impinges on a determination under s.28.  Given this, I think that the respective trade marks, MITA and METO, either in plain type or in logo form, are different enough in appearance, spelling and sound to be distinguished.  Accordingly, I cannot agree that these two trade marks are sufficiently alike so as to justify a finding, under s.33, that they are deceptively similar.

I accordingly find that the opposition is not successful on this ground.

Onus on the applicant
It is the case that the onus is on the applicant to satisfy the Registrar that there is no reasonable probability of confusion - as per Kitto J in the Southern Cross decision, supra, at pp.594-5, and in Johnson and Johnson Australia Pty Ltd v Kalnin (1993) 26 IPR 435 at 439. Nonetheless, there is an evidentiary onus on the opponent to make a prima facie case for the applicant to answer. I believe that the opponent has done this convincingly enough to require the applicant to provide persuasive submissions in response. However, given that situation, the applicant chose not to make any submissions, either in writing or in person, at the hearing.

Conclusion
To summarise, I have found that the opponent has not been successful on the s.33 ground.  However, I have found that the opponent has prevailed in relation to the s.28 ground, that use of the mark on the wide range of goods covered by the class heading in Class 16 would be likely to deceive or cause confusion, given the opponent's reputation for its specific goods.  Accordingly, the opposition is, as a whole, successful.  However, as Mr McInnes submitted, the opponent is not seeking to prevent registration of the trade mark, merely to have the goods restricted to those of interest to the applicant.  I have indicated, in my comments relating to s.28, that I believe that the marks do now coexist for mutually exclusive statements of goods.  I am therefore of the opinion that a reasonable outcome could be achieved if the trade mark proceeded to registration for a statement of goods which allowed both sides to operate in commercial harmony.  Unfortunately, by choosing not to make submissions at the hearing, the applicant has not indicated to me what its goods of primary interest might be.  I am therefore restricted to what the opponent's attorney has told me was the already agreed statement of goods between the parties.  He said that this statement read:

Copying machines for office use, paper and paper articles for copying, printed matter, books, brochures, service manuals and instructional and teaching materials all being for use with copying machines

In consequence, given the Registrar's discretion under s.50 of the Act, I allow the applicant 21 days from the date of this decision to request an amendment of the statement of goods to that outlined above.

If the applicant complies with this condition, I find, subject to any appeal from this decision, that the application should proceed to registration for the amended statement of goods.  In the event that it does not agree to do so before the expiration of that time, I will issue a final decision refusing the application entirely.

Costs
In respect of costs, I find the following.  Should the applicant formally seek an amendment to the goods of its application as above, I think it is true to say that the outcome was a fair compromise.  In those circumstances, I am of the opinion that it would be proper for each party to bear their own costs.  Therefore, if the amendment to the statement of goods is requested by the date I have indicated, then this I so order.  However, if the applicant decides not to amend its statement of goods and I then issue my decision refusing the application, then the opponent will have been successful in its opposition.  Given that outcome, I would then order that the applicant would be responsible for the opponent's costs.

Ian Forno
Hearing Officer

23 July 1999