Fabio and Antoinette Baroni v Toys "R" Us, Inc

[1992] ATMO 69

Trade Marks Act 1955
Decision of a Delegate of the Registrar of Trade Marks

Re:Opposition by Toys "R" Us, Inc to the registration of application 474054 in the name of Fabio and Antoinette Baroni

Background
On 22.6.89, trade mark application 474054 was advertised accepted for registration.  The application is in the name of Fabio and Antoinette Baroni ("the applicants") and the goods specified in the application are "party and novelty items included in this class; decorations, toys and games, all being goods included in class 28; all other goods included in this class".  The trade mark the subject of the application, which was lodged on 7.10.87, is reproduced below, but for convenience I will call it the Parties R Us mark.

Registration of the application has been opposed, as provided for by sub-section 49(1) of the Trade Marks Act 1955, by Toys "R" Us ("the opponent"), on grounds which are generalised and which I will not recite at length as they were not fully pursued at the hearing. The opponent claims in general terms that: the mark is not distinctive, the application should be refused in any case as use of the applicant's mark would be likely to deceive, and that the application is deceptively similar to an earlier one held by the opponent, being application number 376289. That mark is for the combination TOYS "R" US, with the letter R being reversed.

After the evidence stages provided in the regulations the matter was set down for hearing on 2.4.92.  The opponent was represented by Mr Barry Hess of counsel, instructed by the attorney firm of Watermark, while the applicant was represented by Mr Leon Allen, a patent attorney of the attorney firm of Shelston Waters.  Having heard the parties I turn to the evidence.

Opponent's evidence
The opponent has relied on statutory declarations by Joseph Baczko, Glenn McLean, John Hunter and Paul Fields.  This evidence is said to support the proposition that the opponent's trade mark, which is in fact often used with the letter R reversed ("the reversed R mark") is well known world-wide.

The opponent's declarations have the central thrust that their marks are so well known to world travellers, and by sellers or wholesalers in the toy trade in Australia, that the use of the Parties R Us mark would cause deception or confusion amongst both those in the trade and (some of) their customers.

The opponent has also sought to show that it has a policy in the United States (and presumably elsewhere) of vigorously and successfully objecting to other trade marks ending in "R Us".  It argues on that basis that the applicant cannot rely on claims, arising from part of the applicant's own evidence, that other "R Us" business names or trade marks have coexisted (briefly) with those of the opponent .

Applicant's evidence.
Mr and Ms Baroni have made declarations attesting to the use of the Parties R Us mark on toy and novelty items.  There is also some reference to other R Us business names or trade marks in use both here and in the United States.

The applicants also rely on the declarations of eight sellers of party and novelty items.  Those declarations can be categorised as being to the effect that the traders associate the applicants' mark with party ware, and that either the traders are unaware of the opponent's marks and/or that they are unaware of any confusion between the opponent and goods under the the Parties R Us mark.

Decision
Section 24:  The opponent argues that the words "Parties R Us" contained in the mark are a direct reference to the character of the goods and that the mark as a whole, when so burdened, is not distinctive.  Mr Hess referred me to Shanahan's Australian Law of Trade Mark Law and Passing Off and to the case of Mark Foy's Ltd v Davies Coop and Co Ltd 95 CLR 190, on which the applicant also relied.  Shanahan quotes from that case, and notes the view of Dixon CJ at p 195 of the decision:

The test must lie in the probability of ordinary persons understanding the words, in their application to the goods, as describing or indicating or calling to mind either their nature or some attribute they possess.

I do not think that the applicants' mark is more than suggestive of any attribute of the goods.  There is an indirect indication that they come from a firm that knows a reasonably large amount about parties, or has a contribution to make to them, but that is all.  I dismiss the parts of the opposition which relate to that heading.

Section 28:  That section of the act provides that

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.

The opponent's counsel referred me to a number of cases aimed at establishing that reputation, which can arise either from trade use in this country, or simply from overseas trade or publicity coming to the knowledge of Australians, is the necessary precursor to any failing under section 28(a).  These cases included Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd 91 CLR 592 and Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 and Seven-Up Co v O.T. Ltd 75 CLR 203.

I will agree with this, but I must also agree with Mr Allen that there is not that degree of similarity between the marks that a problem will arise, even if the extent of the opponent's reputation in this country, as a result of overseas news, magazines and travel, was as substantial at the time of application as Mr Hess asserts.

Mr Hess concentrated on the common elements of the reversed R and the word "us", and argued that customers, particularly at the less informed (consumer) end of the market, armed only with a vague knowledge that the opponent was a large and famous trader, would infer some trade connection in view of the common elements in the two competing marks, particularly the reversed "R" when the opponent's mark was in use.  He also stressed that there was a possibility of outright mistake, especially when the two marks were used verbally.

Argument also focussed on the size (in relation to the final market) of the group among whom deception or confusion must be shown.  Mr Allen relied on Riviera Leisurewear v Hepworth 1987 AIPC 90-419 as showing that this group need not be "insignificant" if a failing under section 28(a) is to be avoided, and that a "significant number" of consumers would need to be open to deception or confusion before an opponent could sustain an objection under section 28.

However, I do not need to decide the matter at that level.  Here there is a case that is within the group described by Williams J in the case of Sym Choon and Co Ltd v Gordon Choon Nuts Ltd 80 CLR 65 at p 78 in the following terms:

The basic principle is that the proposed mark must be so unlike the rival mark that it is not reasonably probable that a purchaser who knows of the latter and has an imperfect recollection of it is likely to be confused.

I have not overlooked the reversal of the letter R in both R-Us marks, I simply do not give it, either on its own or in conjunction with the word "us", the decisive weight that Mr Hess urges.  It follows that very few consumers or retailers would be deceived or confused and that I must dismiss that aspect of the opposition.

Mr Hess also argued that the mark itself was inherently deceptive in relation to items not to do with parties.  However, having concluded that the counterpart of this argument, under section 24, fails, I do not see that mere cloudy references can stamp the applicants' mark as inherently either deceptive or likely to cause confusion.

I dismiss the aspects of the opposition which relate to section 28.

Section 33:  Section 33(1) of the act provides that:

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.

Mr Allen conceded that there is a direct overlap between the applicants' and opponent's goods, so the question is to be decided by the comparison of marks, judged in the light of the cases surveyed in Dial an Angel v Sagitaur Services 19 IPR 171 to which Mr Hess referred me. In that case, Wilcox J considered a wide range of cases, including Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd 86 CLR 536 (which was to the effect that that RAINMASTER and RAIN KING were not deceptively similar when used in relation to water spraying installations and their parts).

Wilcox J was able to conclude that a trade mark consisting of the words DIAL-AN-ANGEL was not deceptively similar to the words GUARDIAN ANGEL for the purposes of section 33, and I have come to the same conclusion in relation to the two marks in the present dispute.

As Lord Parker said in the matter of Application by Pianotist Co Ltd 23 RPC 774, and approved by the High Court in Cooper Engineering v Sigmund Pumps, supra,

You must take the two words.  You must judge of them, both by their look and by their sound.  You must consider the goods to which they are to be applied.  You must consider the nature and kind of customer who would be likely to buy those goods.  In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

Mr Hess argued that the "only" essential feature of the marks is the combination R Us, with the R reversed in both the applicants' and the opponent's marks.  An essential particular is one such that "the mark comes to be remembered by some feature in it which strikes the eye and fixes itself in the recollection", Saville Perfumery Ltd v June Perfect Ltd 58 RPC 147.

At the outset I do not think that this argument is correct, and I am not convinced that the "R Us" elements are weighty enough to render the two marks, as wholes and with regard to the non-distinctive nature of the words "toys" and "parties", deceptively similar.  Shanahan, supra, notes that the line of cases relying on a common essential particular is a counterpart of the "common idea" cases following on from Jafferjee v Scarlett 57 CLR 115. In the light of the findings in Cooper Engineering v Sigmund Pumps, supra, where the presence of a common idea was not found to be the absolute answer to the question now at issue, I do not accept that Mr Hess's submission is decisive. 

I note Mr Hess's submission that the first words in the competing marks are common to the trade and that the parties have agreed, as conditions of registration, that their respective registrations will give no right to the exclusive use of the words "parties" and "toys" respectively.  I do not, despite this, accept that the emphasis in either mark will be on the closing elements - the ones in common.  Once the proper weight is given to the initial differing elements and the marks compared as wholes in that light, I am satisfied that they can coexist if used in a normal and fair manner for any of the goods covered by the application.  It follows that the opposition fails in so far as it is based on section 33.

Conclusion
The opposition fails on all the grounds that were pursued, and I see no reason why the application should not proceed to registration.  I dismiss the opposition and award costs in accord with the scale to the applicant.

T. Williams

Hearing Officer

26 October 1992