Gabriel and Silvan Andrews v Sola-Tube Australia Pty Ltd

[1997] ATMO 79

TRADE MARKS ACT 1995

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

Re:Opposition by Sola-Tube Australia Pty. Ltd. to the registration of trade mark application number 681507 in the name of Gabriel and Silvana Andrews.

Background:
Trade mark application 681507 was filed under the now-repealed Trade Marks Act 1955.  After the commencement of the 1995 act it was accepted and advertised, in April 1996, for opposition purposes.  It was opposed under the later legislation, which governs such acceptances. 

The applicants are Gabriel and Silvana Andrews, trading as Aussie Home Makers.  I will refer to them simply as “the applicants” from this point.

The trade marks sought to be registered are a pair of marks which constitute a series of marks under s 51 of the Trade Marks Act 1995.  The marks are as follows:

and the goods specified in the application are “skylights for natural lighting, round, square and rectangle”.

Registration of the application is opposed by Sola-Tube Australia Pty. Ltd. (“the opponent”) on various grounds, as follows:-

(a)The opposed trade mark is not capable of distinguishing the applicant's goods in respect of which the opposed trade mark is sought to be registered from the goods or services of other persons.

(b)The use of the opposed trade mark would be contrary to law, and contrary to public interest.

(c)The use of the opposed trade mark would be likely to deceive or cause confusion.

(d)The opposed trade mark is substantially identical with, or deceptively similar to, one or more trade marks registered by Continuum Developments Pty. Limited in respect of similar goods or closely related services, including registrations Nos.  A510628 and 624687.  Solatube International Inc. is the beneficial owner of these registrations and, as Solatube International Inc. owns ninety percent of the shares of the Opponent, the Opponent is an authorized user of all trade marks owned by Solatube International Inc.

(e)The opposed trade mark is substantially identical with, or deceptively similar to, one or more trade marks registered by the Opponent in respect of similar goods or closely related services, including registrations Nos. 645553, 645555 and 645556.

(f)The applicant is not the owner of the opposed trade mark.

(g)The applicant does not intend to use or authorise use of the trade mark in Australia or to assign the trade mark to a body corporate for use by the body corporate in Australia in relation to all the goods specified in the application.

(h)The opposed trade mark is substantially identical with, or deceptively similar to, one or more trade marks that, before the priority date of the registration of the opposed trade mark in respect of its particular goods or services had acquired a reputation in Australia, and because of the reputation of that other trade mark the use of the opposed trade mark would be likely to deceive or cause confusion.

1. The opposed trade mark is not entitled to registration under the provisions of Section 44 of the Trade Marks Act.

(j)Registration of the opposed trade mark would prejudice the Opponent in the conduct of its business.

(k)By reason of the matters set forth in any one or more of the foregoing paragraphs, the Registrar in the exercise of his discretion ought to refuse registration of the opposed trade mark.

The opponent has served evidence in support of its opposition.  When the applicant failed to serve evidence in answer to the opposition, the opponent requested that a hearing be set down.  That was its right under regulation 5.14(2).  I conducted that hearing, under delegation from the Registrar of Trade Marks.

The applicants attempted to bring in and rely on, at the hearing itself, evidence in answer to the opposition.  This I refused to allow, on the grounds that there was no good reason for the lateness and that the introduction of the evidence would probably not have had a decisive effect on the outcome.

At the hearing, the applicants represented themselves, with Mr Andrews making the applicant’s submissions.  The opponent was represented by Martin Pollock, a patent attorney of the firm of Spruson and Ferguson.

Issues
Mr Pollock commenced his submissions by saying that the opponent would rely on nearly all of the grounds of opposition.  He did, however, concede that the allegedly conflicting marks in question were not substantially identical.  Having heard the opponent’s submissions I do not believe there is any substance to those issues which Mr Pollock did not address.  To the remaining three I turn in detail.

1.  Not capable of distinguishing.
The ground relied on by the opponent under this heading is based on s 41(2) of the 1995 act.  This provides that a trade mark that is incapable of distinguishing the applicant’s goods or services from the goods or services of others “must be rejected”.  However, under s 33, the onus is on the Registrar to accept an application unless he or she is satisfied that there are grounds for rejecting it.  Since what is now at issue is one of the grounds to be considered in deciding if an application is to be accepted, an analogous approach is called for.  I think the correct approach is to say that, unless I come to an established and reasonably held belief that the trade mark is not capable of distinguishing the applicant’s goods from those of other traders, the ground of rejection has not been established.  I could not, if that was so, hold that the ground of opposition had been established for the purposes of s 55, which establishes my ultimate authority to either register, or otherwise, the trade mark.

In that context, Mr Pollock submitted that the applicants' goods are skylights that incorporate a tube that is silver in colour.  The applicants did not dispute that silver coloured tubes, of aluminium or other material, are a common part of a skylight.

Mr Pollock argued from this that it was reasonable to suppose that other traders would want to use the term “silver tube” with no improper motive.  He reminded me that it was not unusual for traders to mis-spell words, and that SILVATUBE and SILVA-TUBE were plainly references to “silver tube”.

The scheme of the 1995 act requires me, and previously required the delegate who accepted the application, to look first of all at the extent to which the applicants’ trade mark is inherently adapted to distinguish their goods.  The inherent adaptation of the mark cannot change.  It is innate and must be carefully assessed without reference to the effects of use.

As Lord Parker stated in the case of W&G Du Cros Ltd's Appn, (1913) 30 RPC 660, and applied by Kitto J. in Clark Equipment Co v Registrar of Trade Marks, 111 CLR 511 (the MICHIGAN case):

The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend on whether other traders are likely, in the ordinary course of their business, and without any improper motive, to desire to use the same mark or some mark nearly resembling it, upon or in connection to their own goods.

I consider that the trade mark in question has sufficient inherent adaptation to be able to distinguish the applicants’ goods.  That is not to say that Mr Pollock was wrong in urging that I should consider the extent to which the trade mark contains an obvious mis-spelling of a description of a major component of the goods.  However, there is more to the mark than this. 

In the first instance, leaving aside the background device, the “descriptive” component is shown without any linking words.  The mark in question is not, for instance, “THE ONE WITH THE SILVA TUBE”.  To describe any skylight as “a silvertube skylight” is something which, while possible in the distorted language of advertising, is not an ordinary use of the language.

I have allowed for this question of grammar, for the mis-spelling and finally (to a limited degree) for the indefinable trade mark look that is conferred by the overall get-up.  Taking these together, I conclude that a conflict with another trader acting honestly and in the ordinary course of business is, while not impossible, decidedly not likely.  I therefore do not see why the trade mark should not distinguish the applicants’ goods.

I therefore dismiss the opposition as it arises under this heading.

2.  Deceptively similar to a registered trade mark
The actual provision on which Mr Pollock relies is as follows:

44.(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.

Section 10 defines deceptive similarity between one trade mark and another as existing when the one trade mark “so nearly resembles that other trade mark that it is likely to deceive or cause confusion”.  Likewise, s 14(1) states that goods are “similar” if they are either the same goods or goods of the same description.

Mr Pollock argued strongly that the applicants’ mark SILVATUBE is deceptively similar to SOLATUBE, registered as numbers 510628 and 624687.  The latter of these is a series and also includes the version SOLA-TUBE.  However, Mr Pollock did not pursue the question of conflict with that registration, which is for “Apparatus for lighting, heating, drying and ventilating”.

The earlier registration is certainly for goods of the same description as those for which the applicants seek registration.  Initially, therefore, the success of this ground of opposition turns on the question of deceptive similarity of the applicants’ and other trade marks.

Mr Pollock stressed that skylights may be purchased by the home-owner from a hardware store, without the benefit of skilled sales assistance.  He addressed the concepts of ordinary fair use of either mark in the normal circumstances of trade.  The established law on this question carries over from the 1955 act.  It requires me to assume fair use of one mark in the absence of the other, in a context of normal and reasonable human failings and perceptions.  I must allow for the probable reactions of ordinary consumers and traders, who perhaps encounter the applicants’ mark, SILVATUBE, having what the case law calls an imperfect recollection of the other mark, SOLATUBE.

He reminded me that:

Likelihood of confusion or deception .... is not disproved by placing two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both marks clearly before him .... It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail and that marks are remembered rather by general impressions or by some significant detail than any photographic recollection of the whole. 

Here he was relying on the application, by various Australian judges, of a principle enunciated by Lord Radcliffe in De Cordova v Vick Chemical Co., (1951) 68 RPC 103.  This was applied by Windeyer J in Shell Co (Australia) Ltd v Esso Standard Oil (Australia) Ltd 1961 109 CLR 407 at 415.

Mr Pollock fortified this by noting that many consumers will simply want a skylight.  They will pay more attention to the look of the goods than to the look of the trade mark.  But this must not be taken too far.  I agree that concentration on the look of the goods, rather than on the mark in question, will contribute to imperfect recollection.  However, the possibilities of confusion among people who bought a skylight without reference to the trade mark in the first place are not a factor which I may consider.

Mr Andrews argued that, while not all skylights had the trade mark printed on the actual skylight itself, it was always clearly written on packaging material, in-store leaflets, quotation documents and pamphlets.  He argued strongly that the differences that are obvious in a side-by-side comparison are going to be equally obvious in a hardware store.  He stressed that the element “silva” in the applicants’ mark actually comes from a shortening of his wife’s first name and that it is an element with very little in common with “solar”.  Also, he stressed the differing sounds of the first elements.  Here, I note that “silva” has a strong “va” sound, coming from the clearly voiced “v”, overall a little softer than the syllable “lar” in “solar”.

Mr Andrews, while not a trade mark practitioner, argued quite appropriately that there were, on the whole, strong practical reasons why the deception or confusion, for which Mr Pollock argued, would not arise. 

Though I see the common elements of the words “silva” and “solar”, being the first, third and last letters, I agree with Mr Andrews.  What turns the scales, in my view, is the ideas inherent in the two marks.  The element “sola” gives some sort of reference to a tube for sunlight, the other mark, SILVATUBE, gives an overall idea of a (somewhat oblique) reference to the appearance or construction of the goods. 

I think that, given the complexities of either buying and installing a skylight or obtaining quotes for such an installation, it would be an unusual case where the two marks were not distinguished.

In the alternative, Mr Pollock submitted that a buyer, noting the difference between SOLATUBE and SILVATUBE, might still be caused to wonder if the similarities of marks denoted a common trade source.  However, such wonderings are mere idle speculation.  No such consumer could be said to hold what Kitto J called, in Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd, (1954) 91 CLR 592, a “reasonable” doubt.

In short, I am satisfied that the trade marks are not deceptively similar.

The same conclusion applies to the remaining trade marks specified in the notice of opposition.  These, numbers 645553, 645555 and 645556, are for a device mark as follows:

and I reject outright the claim that they too are deceptively similar to the applicants’ mark.

3.  Deception or confusion
I note that the opponent’s evidence shows that the word SOLATUBE and the sun device shown immediately above have been used, together, by it as an authorised user of the registered trade marks in question.  Section 60 is relevant to this situation, and reads as follows:

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 first-mentioned trade mark would be likely to deceive or cause confusion.

I have allowed for the fact that the use of a sun device by the opponent with the word SOLATUBE adds to the similarities between the mark actually used by it and the one the applicants now seek to register.  However, I do not accept that the degree of resemblance of the applicants’ mark to that actually used by the opponent is such that deceptive similarity, again defined as per section 10, exists.

I do not take the risk of deception or confusion lightly and I have looked carefully at the material in the opponent’s evidence - brochures, fitting instructions, trade publications and the like.  In all of it, the element SOLA emerges, strongly and clearly, as a reference to the sun or to sunlight.  The device of a stylized sun, not prima facie unusual on such goods, does not overly affect the comparison. Nor does it particularly matter that, in its brochures, the opponent often renders the A in “sola” in a form more like an upside-down letter V, as follows:

Mr Pollock suggested that, in this form, the emphasis on the letter A added to the stress on one of the elements shared by the competing marks.  While the similarities in spelling between the marks do exist, they are theoretical rather than practical.  Whichever manner of rendering is used, the marks are simply not deceptively similar.

This ground also fails.

Conclusion
I find no substance in the opposition.  I direct that registration proceed and award costs, in accord with the official scale, to the applicants.

T. Williams

Hearing Officer.
17 December 1997