Forty Winks Pty Ltd v Macuka Pty Ltd & C. Shu Chan Pty Ltd

[2001] ATMO 10

TRADE MARKS ACT 1995

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

Re:Opposition by Forty Winks Pty Ltd to registration of trade mark application 771800(42) - FORTY WINKS & Eye (device)- filed in the name of Macuka Pty Ltd & C. Shu Chan Pty Ltd.

Background

On 1 September 1998, (‘the relevant date’) C. Shu Chan Pty Ltd and Macuka Pty Ltd, of Ashfield in New South Wales, (‘the applicants’) filed application 771800 in Class 42 to register the trade mark appearing below in respect of “medical care for sleep and chest disorders”. 

 

Following examination of the application, it was accepted and advertised in the Australian Official Journal of Trade Marks on 7 January 1999.  On 2 March 1999, within the time allowed to do so, Forty Winks Pty Limited of Dingley in Victoria, (‘the opponent’) filed Notice of Opposition to the registration of the trade mark.

Evidence in support of the opposition, evidence in answer and evidence in reply was served and filed in accordance with the Trade Marks Act 1995 ('the Act') and regulations.  Neither party has requested a hearing and, accordingly, the issue has come to me to determine as a delegate of the Registrar of Trade Marks.

The opponent relies on written submissions filed by Davies Collison Cave, trade mark attorneys, of Melbourne.  The applicants have not filed submissions.

The submissions of the opponent focus on the applicants’ intent to use the trade mark, section 44 and section 60 of the Act. I will regard the other grounds mentioned in the Notice of Opposition as abandoned.

The evidence may be summarised thus:

Declarant	Declaration Known as:	Made	Exhibits
Rodger Buick Wilson	Wilson 1	15 Sep 1999	A – K
Chit Shu Chan	Chan	2 Dec 1999	A
Rodger Buick Wilson	Wilson 2	9 Jun 2000	A - E

The evidence shows that Dr Chan is a medical practitioner who specialises in the treatment of sleep disorders.  He is managing director of the applicants and is their principal specialist medical practitioner.  The applicants have four medical clinics, which are located at Liverpool, Penrith, Nowra and Ashfield, all in New South Wales.  These clinics provide medical and investigative services for patients with sleep and chest disorders.  Dr Chan holds the following qualifications: M.B. Ch. B. (Manchester), Fellow of the Royal Australasian College of Physicians, Ph.D. (Sydney) in Sleep Disorders, Fellow of the College of Chest Physicians (USA).

Dr Chan only sees patients who are referred to him by general practitioners and by other specialists.

Dr Chan states that the applicants have used the trade mark since 1998 to identify their medical clinics for the treatment of chest and sleep disorders.  More specifically, he says that the applicants have used the trade mark on their periodical newsletter which provides current information and research on sleep and chest disorders and other related diseases.  Additionally, the applicants have used the ‘eye’ portion of the trade mark on referral pads, envelopes and folders.

Dr Chan states that the expression ‘forty winks’ is a well-known colloquial term for ‘sleeping’ which is the intended result of the treatments that the applicants offer.

He avers that the applicants do not sell or deal with the goods that the opponent sells or deals with and do not intend to do so.  He says that he has not had any reports from patients or referring medical practitioners that they thought that the applicants’ medical centres are in any way related to the opponent’s operations.

The opponent is a large chain of retail stores that sell beds, mattresses, bedding, manchester and other goods for bedrooms.  There are some seventy FORTY WINKS stores throughout Australia – I understand that at least some of these stores are franchises.  Mr Wilson is the managing director of the opponent. 

Mr Wilson draws my attention to the details of the opponent’s Australian trade mark registrations.  I will detail these briefly:

Reg No:  601079
Priority date:              28 April 1993
Owner:  Forty Winks Pty Ltd

Goods/Services:         Beds, bed bases, bed heads, bedding (except linen), mattresses, furniture, divans, dressing tables, chests of drawers, chests (not of metal), sofa beds, mirrors

Trade Mark:               FORTY WINKS

Reg No:  601080
Priority date:              28 April 1993
Owner:  Forty Winks Pty Ltd
Goods/Services:         Bed linen, sheets, pillow cases, bed covers, quilts, quilt covers
Trade Mark:               FORTY WINKS

Reg No:  601081
Priority date:              28 April 1993
Owner:  Forty Winks Pty Ltd

Goods/Services:         Retailing of beds, bedroom furniture, mattresses, bed linen, bed covers and pillows

Trade Mark:               FORTY WINKS

Reg No:  601084
Priority date:              28 April 1993
Owner:  Forty Winks Pty Ltd

Goods/Services:         Retailing of beds, bedroom furniture, mattresses, bed linen, bed covers and pillows

Trade Mark:               FORTY WINKS & Stars Device

Reg No:  712288
Priority date:              5 July 1996
Owner:  Forty Winks Pty Ltd

Goods/Services:         Furniture including bedroom furniture; mirrors; goods of plastic, wood, cane, wicker, or substitutes for these materials included in this class; items of bedding included in this class

Textiles and textile goods not included in other classes; bed and table covers
Wholesaling, retailing, mail order and multi-media order of furniture including bedroom furniture, items of bedding, textile goods, bed and table covers, mirrors, goods made from plastic, wood, cane, wicker and substitutes therefore

Trade Mark:               THINK THINK FORTY WINKS

Reg No:  712289
Priority date:              5 July 1996
Owner:  Forty Winks Pty Ltd

Goods/Services:         Furniture including bedroom furniture; mirrors; goods of plastic, wood, cane, wicker, or substitutes for these materials included in this class; items of bedding included in this class

Textiles and textile goods not included in other classes; bed and table covers

Trade Mark:               FORTY WINKS Stars In Square; Moon Is Dot on letter ‘I’.

Reg No:  755601
Priority date:              20 February 1998
Owner:  Forty Winks Pty Ltd

Goods/Services:         Furniture including bedroom furniture; mirrors; goods of plastic, wood, cane, wicker, or substitutes for these materials included in this class; items of bedding included in this class

Textiles and textile goods not included in other classes; bed and table covers
Wholesaling, retailing, mail order and multi-media order of furniture including bedroom furniture, items of bedding, textile goods, bed and table covers, mirrors, goods made from plastic, wood, cane, wicker and substitutes therefore

Trade Mark:               WINK WINK FORTY WINKS

In addition to the trade marks appearing above, Mr Wilson attaches to his declaration an example of a trade mark used by his company in advertising:

The FORTY WINKS trade mark has been used by the opponent continuously in Australia since 1984 in relation to furniture, bedding and accessories and the wholesaling and retailing of those goods.  These goods range in price from $10 to $4,500.  Mr Wilson states the retail value of sales from the stores – confidentiality is claimed for these figures.  The value, at the date of application, was substantial.

The opponent also spends substantial sums on the advertisement and promotion of its goods and services – figures are given for these, along with examples of the television, catalogue and Internet promotions.

The Wilson declarations also detail the various goods within the range that the opponent sells which are made with particular physiological effects in mind; for example, beds for those with back or postural problems, allergies and so on.

The Wilson 2 declaration addresses the applicants’ claims to have used the trade mark.  Mr Wilson attaches the results of a private investigator’s report into the use of the trade mark that suggests the applicants have only used the trade mark in relation to the periodical newsletter that they produce.  Mr Wilson also introduces a wide-ranging selection of material to attempt to evidence a link between furniture, beddings and accessories and care for sleep and chest disorders.  This evidence is to address Dr Chan’s observation that, to the best of his knowledge, there are no businesses that provide medical services for sleep and chest disorders or related services in Australia which use the words FORTY WINKS as a trade mark.

Other

The colloquialism ‘forty winks’ has a meaning exemplified by the following definitions:

forty winks  coll  a short sleep, esp. during the day;  NAP  grandmother likes to have forty winks after her dinner || Its too hot for you in the afternoon,  you have a little snooze in the shade … you must have forty winks … (Peter Nicholls) Longman Dictionary of English Idioms. 

forty winks  a short nap  Brewers Dictionary of Phrase and Fable.

It is not obvious from the evidence why both the applicants and opponent should use, or wish to use, the expression FORTY WINKS in their trade marks when the idiom stresses the brevity of the sleep whereas their businesses are, presumably, the prolongation of it.  As mentioned above, Dr Chan states his belief that the colloquialism is a well-known term for ‘sleeping’ which is what he intends his patients to achieve after treatment in one of his clinics.

Hospital beds are classified within Class 20 of the International (Nice) Classification of Goods and Services.  Specialised beds with a therapeutical medical function or purpose are classified in Class 10.  Thus, from the generalised nature of the opponent’s specifications of goods, the opponent’s specifications of goods include hospital beds but do not include specialised beds with a therapeutical medical function since the opponent has no Class 10 registration.

Reasons

Section 44

This section of the Act allows:

44  Identical etc. trade marks

(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.

Note 1:For deceptively similar see section 10.

Note 2:For similar goods see subsection 14(1).

Note 3:For priority date see section 12.

(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)it is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1:For deceptively similar see section 10.

Note 2:For similar services see subsection 14(2).

Note 3:For priority date see section 12.

(3)If the Registrar in either case is satisfied:

(a)that there has been honest concurrent use of the 2 trade marks; or

(b)that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:For limitations see section 6.

(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a)beginning before the priority date for the registration of the other trade mark in respect of:

(i)the similar goods or closely related services; or

(ii)the similar services or closely related goods; and

(b)ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:For predecessor in title see section 6.

Note 3:For priority date see section 12.

French J observed in Registrar of Trade Marks v Woolworths [1999] FCA 1020, at para 39, that:

The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods.

The same logic applies in the context of the comparison here since the determination as to whether the trade marks are deceptively similar occurs in relation to any nexus that might exist between the services of the applicants and those of the opponent as well as the goods of the opponent and the services of the applicants.

The discussion will therefore first address whether the goods and services of the opponent are closely related to the services of the applicants.  The question of the similarity of the trade marks would follow, if I were to determine that the opponent’s goods or services were closely related to the services of the applicants.

I am to consider the specifications of goods and services at their widest: to adapt the dictum of Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101:

Assuming use by the opponent in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Hearing Officer satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration.

The word ‘medical’ within the applicants’ specification of services denotes:

Of, or pertaining to, or dealing with, the healing art, or the science of medicine, especially in the narrower sense; as the medical profession; medical services.

Websters Third New International Dictionary

Thus, the denotations of the word ‘medical’, when I consider them at their widest, as I am constrained to do by Smith Hayden, above, encompass a much wider field of endeavour than that only of registered general practitioners and specialists – it includes among its denotations the entire field of practical healing and alternative medicines.

In submissions, the opponent has brought to my attention a range of medical disorders, which might be addressed by purchase of a suitable bed and bedding.  These include dust mite allergies, sleeping disorders, chest and back problems and so on.  I note that, as discussed above under the heading Other, the opponent has no registration in Class 10 for medical therapeutical beds.

The assessment of the similarity of goods and services was discussed in the decision Re: Aussat (1993) 27 IPR 309 where, as delegate of the Registrar, I said:

I believe that the tests must lie in the adoption of criteria similar to those oft quoted from Re John Crowther & Sons (Milnsbridge) Ltd’s Appn (1948) 65 RPC 369 at 372 adopted by the High Court in Reckitt and Colman (Aust) Ltd v Boden (1945) 70 CLR 84 at 94. I believe that these criteria should include:

• are the services performed directly upon or by means of the goods? If so,

• are the goods and services generally regarded by the ordinary consumer as originating in, or being part of, the one industry or trade, or, a closely related trade or industry?

In consideration of the latter point some guide-lines might be suggested and I stress that these are not in any particular order of priority:

• are the goods and services of matching technical complexity?

• is the technical training of the people who make the goods or provide the services the same?

• do the people who make the goods or provide the services belong to the same unions or associations?

• are there personnel who are implicit in the provision of the service, or a necessary ancillary to the provision of it, who are viewed by the ordinary person as having the essential expertise in common to the provision of either the goods or services? (For example, in “vehicle hire services” and the goods “cars”, there are the ancillary personnel common to both, such as car detailers, mechanics, salespersons, credit checkers, and so on which give both the same flavour).

• do the goods usually have this service as a related service agreement or package? For instance, it would be most unusual for a person buying a very expensive piece of machinery not to enter some sort of service agreement. Conversely, are the goods usually offered as part of a service agreement?

• is the nature of the goods or the service such that they would cease to exist without each other, thus creating an expectation of a common source? (Such as “transportation services” and “vehicles”; or, “vehicle hire services” and “vehicles”; or “restaurant and take-away food services” and “food”).

• does the service consist of altering, matching and/or installing the goods to a customer’s or client’s requirements? (Such as “curtains and furnishings” and “the sewing of furnishings”). It must be observed that the person doing the service of sewing the furnishings is also exercising the same or very similar skills as were involved in mailing the curtains. Also, the installers of domestic and industrial equipment are often employed either directly or indirectly by the manufacturer.

• are the goods and services commonly offered by the one company or organisation? (For example, “retail sales” and the equivalent “goods”; or, “telephone communication services” and “telephones”).

• are the goods a necessary adjunct to a particular service or the only tangible result of it? (For example, “advertising services” and “directories”, or “publications”; or, “travel agency services” and “publications” ; or “telephone services” and “directories”).

This list of criteria is not exhaustive, neither, I think, is it necessary that all considerations be satisfied, nor do I think that any single criterion is of necessity conclusive although it may be. However, taken as a general guide, these criteria build up a picture of the total of the considerations involved in assessing what are closely related goods and services. In complex cases such as oppositions, the issue may only become clear on the provision of evidence that addresses factors such as those above.

In consideration of the above guidelines in relation to conventional medicine, I do not believe that the opponent’s beds and bedding goods are closely related to the services of medical care for sleep and chest disorders.  It is certainly arguable that some sleeping disorders could to some extent be ameliorated or rectified by purchase of an appropriate bed or bedding.  However, this is as far, I believe, that the nexus goes.  As explained by Kenny J in McCormick & Company Inc v McCormick [2000] FCA 1335

On the one hand, goods are not necessarily of the same description simply because they are sold for human consumption and in common trade channels: see, for example, In Re J & J Colman Ltd’s Application (1929) 46 RPC 126, where mustard and semolina were held not to be goods of the same description. See also G Wood, Son & Co Ltd v McVitty & Co Pty Ltd (1964) 34 AOJP 2601 and In Re Chan Li Chai Medical Factory (HK) Ltd’s Application (1990) 19 IPR 140 at 144. On the other hand, the expression “goods of the same description” is not construed restrictively and regard is paid to the commercial context in which the goods in question are bought and sold: see Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 546 and Dinning v New Balance Athletic Shoe Inc (1992) AIPC 38,719 at 38,725.

By analogy, goods and services are not closely related because some notional nexus (such as the ‘sleep’ or ‘beds’ nexus here) is perceived.  I have doubts as to whether the opposed services are rendered upon or by means of beds or bedding – it rather seems to me that the services directly address physiological or psychological needs of the patient – which may or may not include a specialised bed.  In respect of the subsidiary considerations suggested in Aussat, above, the following observations can be made.  The technical and trade background out of which these goods and services originate is totally different.  The training of doctors and of those who distribute, make or design beds is different.  The ancillary staff in each instance perform quite different functions: on the one hand one finds nurses, receptionists and possibly psychologists – on the other, there are designers, assemblers and distributors whose functions in no way match those of the former.  Similar observations apply to the balance of the tests suggested in Aussat.

In relation to practical healing, or alternative medicine, I am not satisfied that practitioners in those fields would be normally viewed by the public as being a trade source of goods of the type for which the opponent has registrations.  The tests in Crowther or Reckitt & Colman or Aussat, above, are means of gauging ordinary persons’ expectations that different particular goods might be put onto the market by the one trader.  While it is possible that a few practitioners of practical healing or alternative medicine might be a trade source of beds and bedding that they make and put onto the market, I do not think that this amounts to a likelihood and there is no public expectation that such might be the case.

In regard to the comparison of the applicants’ services to those of the opponent, parallel observations can be made.  On the one hand, there is the retail of beds and bedding; on the other are professional medical services to treat sleep and chest disorders.  There is a level of consultation involved in both services; however, the comparison is between the advice of a professional, with the implicit reliance, commercial disinterest and accountability that flows from the professional advice of a doctor; and, the advice of a sales assistant where, I believe, most people assume that any advice given is with the view to the sale of a product.  There is little expectation of a common origin of the advice or the service of which it forms a part.  In much the same way, a registered doctor, either in general or specialist practice might suggest a holiday or an exercise regime, but there is no basis for a public expectation that a doctor would then sell a particular holiday package or gymnasium service.

Similarly, the public readily distinguishes between the advice of an alternative or practical medicine practitioner and the advice of a sales person.  The commercial setting is quite different.

The opponent submits that the pattern of registrations on the register of trade marks suggests that there is an overlap in trade channels between the applicants’ services and the opponent’s goods and/or services.  My attention is drawn, in the written submissions, to a number of cross-class registrations in classes 10 (medical and surgical appliances), 20 (pillows) and 42 (medical and healthcare services) that are in evidence.  I do not accept this.  Again, this approach erroneously reduces the test to one of finding some thematic link or notional nexus.  Further, my experience tells me that a number of traders will register their trade marks in respect of goods they produce or services they perform and will also register their trade marks in classes of goods or services for goods or services in respect of which they do not use the trade mark but in respect of which they believe confusion or deception would arise if another person used the trade mark.  The fact that people so register their trade marks is neither proof of a trade channel nor proof of deception or confusion.  Many of the registrations the opponent draws to my attention are so generally stated that it is not certain what goods the trade marks are being used for or the type of healthcare services being offered.  Additionally, the surgical goods that the opponent draws to my attention appear to be considerably more technical, complicated and immediate to the medical or surgical profession than are the beds and bedding of the opponent.

The opponent also draws my attention to a number of Yellow Pages^® advertisements where some traders advertise both therapeutic and adjustable domestic bedding.  However, I do not believe that the opponent seriously suggests that these advertisers either hold themselves out to be registered medical practitioners or as practitioners in alternative medicine or practical healing.

French J, in Registrar of Trade Marks v Woolworths [1999] FCA 1020, at para 45, said of the presumption of registrability:

The position now is that the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

I am not satisfied that there is any likelihood of deception and confusion arising from any similarity of the applicants’ services to the opponent’s goods and services. The opponent has not, therefore, established its grounds in terms of section 44 of the Trade Marks Act 1995. 

I will defer my discussion of whether the trade marks are substantially identical or deceptively similar to my considerations in relation to section 60, below.

Section 59

This section of the Act provides:

59  Applicant not intending to use trade mark

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a)to use, or authorise the use of, the trade mark in Australia; or

(b)to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note:For applicant see section 6.

The opponent argues that the evidence, discussed above, shows that the applicants do not intend to use the trade mark for the services for which they have applied for registration.  The evidence suggests that the trade mark is currently being used by the applicants on a periodical newsletter.  I do not believe that the evidence demonstrates anything about the applicants’ intentions; it only shows what the applicants were doing at the time the investigator’s report was made.  There is a futurity implicit in the word ‘intention’ and the evidence does not address this.  However, if the evidence had been more pertinent, I would be unwilling to put strong reliance on the unsworn evidence of an investigator.

Section 60

This section of the Act provides:

Trade mark similar to trade mark that has acquired a reputation in Australia

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 firstmentioned trade mark would be likely to deceive or cause confusion.

The questions that arise from the above section are: whether the trade marks in question are substantially identical or deceptively similar; whether the opponent’s trade marks had acquired a reputation in Australia at 1 September 1998 (the priority date of the opposed application); and, whether because of the reputation of the opponent’s trade marks, the use of the applicants’ trade marks would deceive or cause confusion.

Further, there is no restriction on an opponent, within section 60, to rely only on its registered trade marks.

Substantial identity

In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, at 414, Windeyer J directs:

In considering whether marks are substantially identical, they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

In considering the applicants’ trade mark alongside the opponent’s registered trade marks, I think that the total impression that emerges is not one of identity.  The device component of the moon within the eye is absent from the opponent’s trade marks.  While it is true that the devices of stars, or the crescent moon as the dot over the letter ‘I’ in one of the opponent’s trade marks is thematically linked to the moon within the applicants’ trade mark, I do not believe that this is a sufficient factor to view these trade marks as being substantially identical.

However, as regards the opponent’s allegation that the opposed trade mark is substantially identical to its unregistered trade mark that it evidences use of, I agree that, in relation to this trade mark, after a side-by-side comparison, an impression of substantial identity emerges.  Although the placement of the device of the eye is shifted from the right to the left of the applicants’ trade mark; and, the eye in the applicants’ trade mark has a crescent moon within it, the resemblance between these two trade marks is striking.  I would hesitate to conclude that either the eye device or the words FORTY WINKS is the essential feature of the trade marks – both features are distinctive and memorable.  To my mind, the crescent moon within the applicant’s trade mark only becomes apparent on close inspection of the trade mark.  And the jagged line, which resembles an ECG printout, underlines the trade mark and is a subsidiary feature.

Deceptive Similarity

Concerning deceptive similarity, Australian Woollen Mills v. F.S. Walton & Co. Ltd (1937) 58 CLR 641 at 658, in a joint judgment, Dixon and McTiernan JJ stated:

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, their similarities both of sound and of meaning may 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.

Also, in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777), Lord Parker (then Parker J) said:

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. If, considering all those circumstances, you come to the conclusion that there will be a confusion -- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you may refuse the registration, or, rather, you must refuse the registration in that case.

I think that the applicants’ trade mark is deceptively similar to the opponent’s registered trade marks.  The words FORTY WINKS, which are distinctive and memorable, form the basis for how goods or services will be requested under the trade mark – it is not likely that the services of the applicants will be requested by reference to the eye or ECG printout potions of the trade marks.

Reputation

There is no doubt that the opponent’s trade mark has an extensive national reputation in Australia.  The evidence shows that, and experience tells me, the opponent’s television advertising and brochures are pervasive.  The amounts spent on advertising by the opponent are large – several of their television advertisements are in evidence.  The opponent’s annual turnover in relation to the trade mark in Australia is large and growing rapidly.  The evidence shows that this reputation of the trade mark is in relation to use on a broad range of bedroom goods and accessories.  I note that the ‘reputation’ of a trade mark may be gauged by reference to total sales figures and advertising expenditure but may not be strictly related to those and arise in different ways.  In McCormick & Company Inc v McCormick [2000] FCA 1335, Kenny J quoted from the hearing officer’s reasons in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 (“Hugo Boss”) at 436:

[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark.  The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation.  The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it.  The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

Here the opponent’s trade mark has both strong recognition through sales and advertising and is held in relatively high esteem.  From its evidence, I would assess the reputation of the opponent’s FORTY WINKS trade marks as containing perceptions of dependability, solidity and value for money.

Likely to deceive or cause confusion

In Woolworths, above at para 50, French J said:

In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

(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.

In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:

"...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

As I inferred, above, under the heading Other, I think that the opponent’s adoption and use of the trade mark FORTY WINKS is odd in the face of the dictionary definitions of the idiom which stress the brevity of the sleep implicit in the term.  The opponent’s adoption of the trade mark could be seen as being unusual as it would be the desire of most of the public to purchase beds and bedding that prolong the sleep state – not foreshorten it; or, to only nap as a consequence of their purchases.  Similarly, my personal reaction to the applicants’ services by reference to the trade mark under which they might be offered would not be one of confidence.  Dr Chan says in his declaration that, in his opinion, the idiom ‘forty winks’ denotes sleeping: in this he is mistaken – if he believes that a sound state of sleep is denoted. 

I am not certain how this dichotomy between the dictionary definitions of the words in the trade marks and the parties’ apparent belief of an alternate meaning and their usage of it might affect the perceptions of the public as regards factors for my consideration under section 60. There is no evidence as to whether the misperception is widespread; it is not obvious whether the misperception has arisen as a result of the reputation of the trade mark – and I have no submission on what the consequences of this would be; and, it is not stated in evidence whether the opponent was aware of the true meaning of the idiom at the time it adopted the trade mark.

As noted by Heerey J in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 at 501:

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 Corp (1990) 24 FCR 370; at 377; 16 IPR 289.

Notwithstanding the reputation of the trade mark, I do not, as a matter of common sense, believe that the applicants’ use of the trade mark would confuse or deceive.  Whether the services provided under the applicants’ trade mark are by a registered medical practitioner, or by a practitioner of natural or alternative medicine, it is difficult to see how deception or confusion could arise.  There is no evidence that such practitioners are usually licensed, sponsored or endorsed by bedding retailers such as the opponent and in my experience this does not happen.  I note that some optometrists often work in association with the retailers of spectacles but there is no suggestion here that practitioners who work in the area of sleep disorders usually work in association with bedding shops.  There is no evidence that such practitioners are a trade source of, or deal in, the goods of interest to the applicants and the retail of such goods is outside the ambit of the applicants’ specification of services. 

Consequently, I think that some people might, because of the reputation of the opponent's trade marks, note the similarity in the parties’ trade marks but it is unlikely that this would lead to a conclusion among those people that there is any kind of commercial connection.

Thus, the opponent has not established its grounds in terms of section 60 of the Act.

Decision

The opponent has not established its opposition under each of the grounds on which it was argued.  Accordingly, I dismiss the opposition and direct that the application may proceed to registration after the elapse of the appeal period from my decision if there has been no appeal filed and the applicants have paid the appropriate registration fees.

Costs

The applicants made no submission as to costs and I make no award.

Ian Thompson
Hearing Officer

6 February 2001