France Telecom SA v United Network Group Pty Ltd

[2002] ATMO 61

TRADE MARKS ACT 1995

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

Re:Opposition by France Telecom SA to registration of trade mark 832714(38) – V@CCESS Logo – in the name of United Network Group Pty Ltd. 

Background

In this matter, United Network Group Pty Ltd of South Yarra, Victoria, (‘UNG’) filed application on 26 April 2000 to register the trade mark appearing below (“the opposed trade mark”) in respect of the following services in Class 38 of the International (Nice) Classification of Goods and Services:

Telecommunication service; information and communication services including computer network facilities, electronic data interchange services, information retrieval services, electronic scanning, providing access to the Internet, information delivery services; communications by data via computer terminals and other message sending and receiving apparatus and devices, access and use of data via computer terminals for communication purposes and electronic mail

 

“The opposed trade mark”

The application was accepted for registration and advertised as such in the Australian Official Journal of Trade Marks on 24 August 2000.  On 23 February 2001, after seeking and receiving extension of time in which to do so, France Telecom SA (‘FTS’) served and filed Notice of Opposition.  The Notice cites various grounds of opposition but FTS only relied on those under section 44(2) of the Act in written submissions by Philip Kerr of Allens Arthur Robinson.

FTS has not served and filed evidence in support of the opposition and neither party has requested a hearing of the matter.  Section 55 of the Act provides:

55  Decision

Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

(a)       to refuse to register the trade mark; or

(b)       to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note:   For limitations see section 6.

As this issue is now to be decided, it has been forwarded to me as a delegate of the Registrar of Trade Marks for my decision.  For the sake of completeness, I find that FTS has not established the grounds which were not argued in submission.

Section 44(2)

Section 44(2) of the At provides:

(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.

There are three registered trade marks which FTS owns and relies on in its Notice.  These are:

Reg Number:              649439
Priority Date:             23 December 1994
Class:  9

Specification:             Telecommunication and television apparatus; telephone sets; telecommunication transmitting and receiving apparatus with access conditions; devices for the control of such machines using apparatus or systems emitting signals, especially meters and decoders; apparatus transmitting and/or receiving wire or radio waves, satellites.

Trade Mark:               VIACCESS

Reg Number:              649440

Priority Date:             23 December 1994

Class:38

Specification:             Telecommunication services; computing services; transmission teleservices of sounds, texts, data and images; communication and telecommunication services with access conditions broadcasting and reception of televised programmes; creation, operation and maintenance of networks operating these services

Trade Mark:               VIACCESS

Reg Number:              649441

Priority Date:             23 December 1994

Class:42

Specification:             Professional consultancy and establishment of plans unrelated to the conduct of business; computer programming; leasing access time to a computer database.

Trade Mark:               VIACCESS

The priority dates of the FTS registrations are earlier than that of the opposed application.  Accordingly, the following issues arise in terms of subsection 44(2) of the Act for my consideration:

·     Are the parties’ goods and services either similar or closely related?

·     Are the trade marks either substantially identical or deceptively similar?

The former of the ‘dot-points’, above, ought to be considered first.  In Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999), French J observed at paragraph 39:

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. Wilcox J at first instance in this case saw the questions as "conceptually distinct" but accepted that one could not be addressed in isolation from the second:

"The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive."

For the present, I will observe that there is obviously some degree of overlap between the FTS specifications in Classes 9 and 38 on the one hand and the UNG specification in Class 38 on the other as far as telecommunications services and equipment.

In its submissions, FTS argues that the above trade marks are substantially identical or, at the least, deceptively similar to the opposed trade mark. 

Concerning substantial identity Windeyer J said, in The Shell Co. of Australia Ltd. v. Esso Standard Oil (Australia) Ltd. (1963) 109 CLR 407, at 445:

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 features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106 . Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody (1945) 70 CLR 100 , per Latham C.J. (1945) 70 CLR, at pp 114, 115 , and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291 , per Jordan C.J. (1944) 44 SR (NSW), at p 298 , where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity, my opinion is that in each film there are one or more moments when the personified figure of the oil-drop appears in a form that is substantially identical with the registered mark. [Stress added].

FTS, in its submissions, cites Berlei Hestia Industries Ltd. v. Bali Co. Inc. (1973) 129 CLR 353 as an authority for the proposition that I could, via an aural comparison of the trade marks, find them to be substantially identical. I do not agree. The Court’s comments in Berlei are made within the context of a consideration of deception and confusion in terms of subparagraph 28(a) of the Trade Marks Act 1955 and do not appear to overturn the underscored test posited by Windeyer J in Shell, above.  Barwick CJ says in Berlei at 362:

The strength of the appellant's case is in the finding made by his Honour that the two marks are "phonetically alike" - the appellant's mark is commonly pronounced "Burley" and the respondent's mark is commonly pronounced "Barley".  The respondent's mark includes the expression "BRA" which is descriptive of the goods to which it is applied.  Its inclusion in the mark does not detract from the phonetic similarity between "BERLEI" and "BALI".  According to the appellant, so strong is the phonetic likeness that when the two marks are applied to the same class of goods there is every likelihood that confusion will arise in the minds of the public, if not on the part of those engaged in the relevant trade, as to the origin of the goods which the respondent's mark denotes.

These preceding comments appear to me to go, via the reference to ‘confusion’, more to the question of the deceptive similarity of the trade marks BERLEI and BALI-BRA rather than ‘substantial identity’.  Accordingly, I do not take into account whatever phonetic similarity the trade marks in question might allegedly have whilst considering the question of whether they are substantially identical.

In an ocular comparison of the words V@CCESS and VIACCESS, side by side, it is obvious that the two trade marks have visual differences.  The alphabetical letter ‘I’ is omitted from the opposed trade mark when compared to the trade mark VIACCESS.  The initial letter ‘V’ in the opposed trade mark has an elongated right ‘arm’ forming a bar over the balance of the word. 

But, the most obvious difference is the use of the symbol ‘@’ which has been used in accountancy since about 1550; and, in email addresses with the rise of the Internet, during the last half of the 1990s, as an address separator.  The most common name for the character ‘@’ in English is “commercial at”; it has also been identified in English as “fetch”, “snail” and “snabel”.  I will refer to this symbol as ‘snabel’ for the sake of clarity. 

I consider that the variance within the trade marks of the letter ‘I’, the elongated ‘V’ and the snabel is such that the trade marks do not share an identity.

Deceptive similarity is defined in section 10 of the Act:

10  Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

There are three aspects to the consideration of whether the trade marks are deceptively similar.  These are: the comparison of the trade marks; consideration of the trade context in which the trade marks will be used; and, whether, because of the foregoing considerations, the trade mark is likely to confuse or deceive in terms of the criteria adopted by French J in Woolworths, above, at paragraph 50:

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."   

Comparison

Certain rules of comparison were suggested by Parker J in in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777), where he 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.

FTS, in its written submissions, draws my attention to both the visual and oral similarities of the trade marks and submits that these lead to a conclusion that the trade marks are deceptively similar. 

Oral Similarities

FTS submits that, in determining whether trade marks are deceptively similar, I may take into account the sound of a word as well as its visual appearance:  Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641. Attention should also be paid to the first syllable or prefix as this part is often the most significant is differentiating between trade marks: London Lubricants (1920) Ltd's Appn (1925) 42 RPC 264.

I think there is considerable uncertainty about how the trade mark V@CCESS will be pronounced.  The use of the snabel in accountancy and email addresses to denote the word ‘at’ suggests that the symbol is being used as a rebus and the opposed trade mark could be pronounced ‘vat-cess’.  FTS, however, suggests that the snabel is being used as a letter ‘a’ and the opposed trade mark would be pronounced ‘vee-access’.  But, if the snabel is being used as a letter ‘a’, it appears to me that the pronunciation of the opposed trade mark could just as easily be ‘vac-cess’.

The services in respect of which the opposed trade mark is proposed to be registered include ‘telecommunication services’.  This suggests that the snabel is being used to symbolise the word ‘at’ and that the pronunciation should be ‘vat-cess’.  However, the ‘word’ ‘access’ is one which is common to trade marks in the telecommunications industry: it might also be perceived within the FTS trade mark.  This factor suggests that the word ‘access’ will be present in oral use of the trade mark and that it will be pronounced ‘vac-cess’ or ‘vee-access’.

In short, no single most likely pronunciation of the opposed trade mark obviously suggests itself.

Visual Similarities

On a very casual inspection of the trade marks, there are obviously similarities.  Both trade marks start with the same letter; both trade marks terminate with the word element CCESS.  However, counterbalancing these similarities is the appearance of the FTS trade mark as an apparent ‘portmanteau’ word, formed by the conjoining of the words VIA and ACCESS with the elision of a letter ‘A’.  Another strong visual difference is the presence of the snabel in the opposed trade mark.

Comment

Deceptive similarity is not to be considered by a simple process of adding up and balancing the similarities and differences of the trade marks.  Rather it is a process of considering the effect of the similarities and differences between the trade marks, and the import of any shared features, in the circumstances of the use of the trade marks.

Trade Circumstances

The overlap in the services of the parties is most obviously in respect of ‘telecommunication services’.  There will also be some overlap between the FTS specification in Class 9 and the UNG services in Class 38.  This is an area of trade of some complexity: while not all goods or services in the telecommunications industry are of great expense per se, it can be an area where large amounts are expended over time.  It is an area of trade, therefore, where both traders and customers are given to a degree of circumspection when purchasing goods or services.

The word ‘access’ is one which occurs with some frequency in the trade marks of traders in the telecommunications industry.  FTS argues that considerations in Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 apply and that because the trade marks look and sound alike I can take into account the commonality of the idea in the trade marks. However, there is another factor at work in instances where the shared feature of the trade marks lacks inherent distinctiveness or is of low capacity to distinguish, that is the one in Coca-Cola Co (Canada) Ltd v Pepsi-Cola Co (Canada) Ltd (1942) 59 RPC 127 which states that such shared features should not be given great weight in the comparison of trade marks.

Conclusion

In Woolworths, above, at paragraph 45, French J said:

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.

At paragraph 46, His Honour continued:

The question for the Registrar and the Court is not whether consumers might be confused (in the sense of wondering about common origin or connection) but whether there is a reasonable likelihood that they will be confused.

I regard the question of whether the trade marks VIACCESS and V@CCESS are deceptively similar as one which is very much on a knife’s edge.  There is, I consider, a possibility of confusion or deception, but I am not satisfied that there is a reasonable likelihood of deception or confusion.

The telecommunications industry is an area of commerce where goods or services are not casually or lightly purchased – as, for example, a packet of biscuits might be at a supermarket.  There is a possibility that the opposed trade mark might be pronounced ‘Vac-cess’ or ‘Vee-access’:  this sets against the probable pronunciation of the FTS trade mark as ‘Vi-access’.  The predominant area of similarity is in the final syllable which is of low inherent distinctiveness.  Further, the difficulty in arriving at the correct pronunciation of the opposed trade mark suggests the possibility that many people, instead of trying to pronounce the opposed trade mark, will describe it instead.  In short, any confusion that arises in the use of the trade mark V@CCESS appears likely to arise because of the inherent qualities of the trade mark itself, rather than an oral similarity to another trade mark.

Visually, there is, I believe, a much lower chance of any confusion or deception.  The primary impact of the opposed trade mark is the incongruity of the snabel and a indefiniteness of mind in what the correct pronunciation of the trade mark should be.  It is immediately apparent that the opposed trade mark looks to its genesis in accountancy or, more probably, the email side of the Internet.  The trade mark VIACCESS, is, on the other hand seemingly of a portmanteau origin and has its genesis in language.

Decision

As I am not satisfied that there is a reasonable likelihood of deception or confusion, FTS has not established this ground of opposition.  I direct that the application may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Ian Thompson
Hearing Officer

29 July 2002