Gardenia Overseas Pty Ltd v The Garden Company Ltd
[1994] FCA 565
•22 AUGUST 1994
GARDENIA OVERSEAS PTE LIMITED v. THE GARDEN COMPANY LIMITED
No. NG285 of 1993
FED No. 565/94
Number of pages - 12
Trade Marks And Trade Names
(1994) AIPC 91-096
(1994) 29 IPR 485
COURT
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
LINDGREN J
CATCHWORDS
Trade Marks And Trade Names - Registered trade mark - opposition by proprietor of registered marks incorporating "GARDEN" to the registration of marks incorporating "GARDENIA" - resemblance so as to be likely to deceive or cause confusion - aural and visual comparisons.
Trade Marks Act 1955 ss 6(3), 33
Australian Woollen Mills Ltd v F. S. Walton and Co Ltd (1939) 58 CLR 641
Rysta Ltd's Application, (1943) 60 RPC 87
Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592
Dial-an-Angel Pty Ltd v Sagitaur Services Systems Pty Ltd (1990) 96 ALR 181
Re Lancer Trade Mark (1987) RPC 303
Johnson and Johnson v Kalnin (1993) 114 ALR 215
Wingate Marketing Pty Ltd v Levi Strauss and Co (1994) 121 ALR 191
Re Trade Mark Cameo (1974) 1 NZIPR 1
HEARING
SYDNEY, 8 August 1994
#DATE 22:8:1994
Mrs J E Stuckey-Clarke of counsel instructed by Corrs Chambers Westgarth appeared for the Applicant.
Mr D M Yates and Mr R Alkadamani of counsel instructed by Williams Niblett appeared for the Respondent.
ORDER
THE COURT:
1. ORDERS that the decision of the delegate of the Registrar of Trade Marks given on 16 April 1993 be set aside insofar as that decision relates to trade mark applications Nos. 516175, 516177 and 516178 in the name of Gardenia Overseas Pte Ltd;
2. ORDERS that the trade marks the subject of trade mark applications nos. 516175, 516177 and 516178 proceed to registration.
3. RESERVES the question of costs.
NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
JUDGE1
NATURE OF THESE PROCEEDINGS
LINDGREN J In these proceedings, the applicant appeals to the Court under section 51 of the Trade Marks Act 1955 ("the Act") from the decision of the delegate of the Registrar of Trade Marks under section 50 of the Act that registration of four trade marks be refused. The applicant seeks orders that the delegate's decision be set aside and that the four trade marks be registered.
BACKGROUND
2. The applicant is incorporated in Singapore. The respondent is incorporated in Hong Kong.
The four applications for registration were made to the Registrar on 3 August 1989. The respondent, as allowed for by section 49 of the Act, opposed the applications to the Registrar and contested the present appeal.
The applications sought registration in Part A of the Register in respect of "bread and bakery products" being goods included in Class No.30. It is convenient to note here that Class 30 is as follows:
"Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice".
The numbers of the applications and the trade marks to which they respectively referred were as follows:
(SCHEDULES OMITTED)
Application No. 516173
(Reproduced as Schedule 1)
Application No.516175
(Reproduced as Schedule 2)
Application No.516177
(Reproduced as Schedule 3)
Application No.516178
(Reproduced as Schedule 4)
At the time when the applicant made the four applications on 3 August 1989, the respondent was already registered under the Act as proprietor of the following trade mark in respect of "All goods in Class 30": trade mark Registered No. B 317, 436.
(Reproduced in Schedule 5)
The registration of that trade mark of the respondent's was subject to the following condition or limitation:
"(Registration of this trade mark shall give no right to the exclusive use of the device of a CHEF'S HEAD.)"
Further, at the time when the applicant made the four applications, there was pending an application by the respondent dated 19 December 1988 No.501725 for registration of the following trade mark in Part A of the Register in respect of "bread, pastry, biscuits, cakes, snack food products, non-medicated confectionery being goods included in Class No.30":
GARDEN CHICKEN THINS
(Reproduced as Schedule 6)
I was informed from the bar table, without objection, that this application was subsequently granted by registration of the trade mark in Part B of the Register.
On 16 April 1993 the Registrar decided to refuse all four of the applicant's applications.
Before me the only issue argued was an issue arising under sub-section 33(1) of the Act. That sub-section is as follows:
"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."
As I have said, at the date of the four applications, the respondent's trade mark No. B 317,436 was already "registered", and the trade mark which was subsequently registered as trade mark No. B 501,725 was "the subject of an application for registration." The respondent's registered trade marks are in respect of, inter alia, "bread and bakery products".
In terms of sub-section 33(1) the respondent did not rely upon "substantial identity", and so the scope of the debate before me was confined to the issue of "deceptive similarity". Sub-section 6(3) of the Act provides as follows:
"For the purposes of this Act, a trade mark shall be deemed to be deceptively similar to another trade mark if it so nearly resembles that other trade mark as to be likely to deceive or cause confusion."
The only issue argued before me was whether, in respect of each of the four trade marks of which registration was sought, that trade mark so nearly resembled one or other of the respondent's two trade marks, that the former was likely to deceive or cause confusion.
THE HEARING ON 8 AUGUST 1994
15. On the hearing Mrs J E Stuckey-Clarke of counsel appeared for the applicant and Mr D M Yates with Mr R Alkadamani of counsel appeared for the respondent.
The evidence before me was brief, and there was no cross-examination. The applicant led evidence directed to showing how bread and bakery products are presented to consumers in various supermarkets in suburbs of Sydney. The evidence took the form of photographs of packaged bread and bakery products on supermarket shelves. The photographs were taken over the period from 25 June 1993 to 1 July 1993. The photographs were said, by the applicant and the respondent respectively, to show that the labels on the packaging of such products are (by the applicant) and are not (by the respondent) always clearly visible to shoppers in the aisles.
The photographs suggested something of which I might have been entitled to take judicial notice or which is in any event obvious, namely that identical items of the same product line are shelved together but fall into various states of disarray depending, no doubt, on such factors as the effectiveness of the method of initial arrangement, the extent of "raking over" by customers, and the length of time between re-stackings by staff. The underlying integrity of the display of products suggests that even if the label on one item might not be visible, the label on at least one identical neighbour probably would be visible.
Evidence was also led by the applicant that there were 11 registered trade marks (other than its own) which included "GARDEN" as an independent word and two registered trade marks which included "GARDEN" as part of a larger word, and 27 registered trade marks (other than the respondent's own) which incorporated a chef or chef's hat device.
For its part, the respondent led evidence that its trade mark registered No. B 317,436 had been used in Australia at least since 1981 in relation to a range of biscuits and confectionery as demonstrated in product brochures and samples of wrappers which were in evidence before me; that that trade mark has been used throughout Australia; and that the goods in respect of which that registered trade mark is used are imported into Australia and sold wholesale by duly appointed distributors which "primarily direct the goods to the Asian food market via specialty Asian food shops". There was evidence of the Hong Kong and Australian dollar amounts of the wholesale sales of goods sold in Australia under the trade mark from 1985 to 1991 and of the estimated amounts of such sales for 1992. This evidence established that the respondent's registered trade mark has been used to a significant and generally increasing extent in such Asian food shops for at least some four years prior to the time of the making of the applicant's four applications.
There was no expert evidence directed to such issues as the effect of trade marks on the minds of consumers or more generally as to processes of human cognition and recollection.
SUBMISSIONS
21. Mrs Stuckey-Clarke submitted that the issue which I was called upon to decide was as follows:
"Assuming user by the respondent of its mark in a normal and fair manner on any of the goods covered by the registration of its mark, is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant also uses its mark, normally and fairly, in respect of goods covered by its proposed registration?"
She was paraphrasing the formulation of the issue of "deceptive similarity" arising under sub-section 33(1) which had been offered by Mr Yates as counsel in Johnson and Johnson v Kalnin (1993) 114 ALR 215 (Gummow J) ("Johnson and Johnson") at 220. Not surprisingly, Mr Yates agreed with that formulation of the issue. The "hypothetical normal and fair use" test is supported by authority: see Smith Hayden and Coy., Ld's Application (1946) 63 RPC 97 (Ch D) at 101; "Bali" Trade Mark (1969) RPC 472 (HL) at 496 (per Lord Upjohn); and see D. R. Shanahan, Australian Law of Trade Marks and Passing Off (2nd ed, Law Book Co, 1990) at 151-152.
In other respects too, counsel were agreed as to the general legal principles applicable to determine whether deceptive similarity exists. Many of these are to be found in the following passages in Pianotist Company Ld's Application (1906) 23 RPC 774 (Parker J) ("Pianotist"); Australian Woollen Mills Ltd v F S Walton and Co Ltd (1937) 58 CLR 641 ("Australian Woollen Mills"); and Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 ("Southern Cross").
"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.":
(Pianotist at 777 (described by the High Court as expressing "the proper approach" to the answer to the question of "resemblance so as to be likely to deceive" in Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 ("Cooper Engineering") at 538))
"(i) In all applications for registration of a trade mark, the onus is on the applicant to satisfy the Registrar (or the court) that there is no reasonable probability of confusion.
(ii) It is not necessary, in order to find that a trade mark offends against the section, to prove that there is an actual probability of deception leading to a passing-off. While a mere possibility of confusion is not enough--for there must be a real, tangible danger of its occurring...--it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
(iii) In considering the probability of deception, all the surrounding circumstances have to be taken into consideration. (This includes the circumstances in which the marks will be used, the circumstances in which the goods will be bought and sold, and the character of the probable purchasers of the goods:...)
(iv) In applications for registration, the rights of the parties are to be determined as at the date of the application.
(v) The onus must be discharged by the applicant in respect of all goods coming within the specification in the application (pursuant to s.32(2)) of the goods or class of goods in respect of which the registration is desired, and not only in respect of those goods on which he is proposing to use the mark immediately. And the onus is not discharged by proof only that a particular method of user will not give rise to confusion. The test is, what can the applicant do if he obtains registration?"
(Southern Cross per Kitto J at 594-5). Although the then equivalent of section 33 of the Act, namely section 25 of the Trade Marks Act 1905 was held to be inapplicable for reasons not presently relevant, in the passage quoted above Kitto J was addressing the expression "likely to deceive" in section 114 of the Act of 1905 and the expression "likely to deceive or cause confusion" in section 11 of the Trade Marks Act 1938 (Imp) (his Honour saw those two expressions as having the same effect), and the latter expression occurs in sub-section 6(3) of the Act.)
"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, then 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."
(Australian Woollen Mills, per Dixon and McTiernan JJ at 658).
It is useful to set out particular propositions which were common ground. Distilled from counsel's submissions and the authorities cited in them, though not always expressed in counsel's language, these were as follows:
1. The onus of satisfying the Court is borne by the applicant and if the question is left in doubt, the application must be refused (Jafferjee v Scarlett (1937) 57 CLR 115 ("Jafferjee") per Latham CJ at 119.9; Southern Cross at 594.9 per Kitto J; Cooper Engineering at 538);
2. What the applicant must satisfy the Court of is that there is no reasonable likelihood of deception or confusion: (Southern Cross, per Kitto J at 594.9);
3. The issue is not whether there has been or probably will be any deception leading to passing off (Southern Cross, per Kitto J at 595.1) or any contravention of s.52 of the Trade Practices Act 1974 (Johnson and Johnson at 220); (and see Wingate Marketing Pty Ltd v Levi Strauss and Co (1994) 121 ALR 191 ("Wingate Marketing") as to the distinction between a comparison of marks and a comparison of particular uses).
4. A mere possibility of confusion is not enough to preclude registration: there must be "a real, tangible danger" of its occurring (Southern Cross, per Kitto J at 595.2);
5. It suffices to preclude registration that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source and it is enough that "the ordinary person entertains a reasonable doubt" in this respect (Southern Cross, per Kitto J at 595.3);
6. In considering the probabilities, all the surrounding circumstances must be taken into account, including "circumstances in which the mark will be used, the circumstances in which the goods will be bought and sold, and the character of the probable purchasers of the goods" (Southern Cross, per Kitto J at 595.3 citing Jafferjee at 120);
7. The rights of the parties are to be determined as at the date of the application for registration (Southern Cross, per Kitto J at 595.5);
8. What must be considered are the respective marks in the context of the use which could properly be made of them (their "notional use") as distinct from merely a particular use which has in fact been made or a particular use which a party may have in mind (Southern Cross, per Kitto J at 595.6; Berlei Hestia Industries Ltd v Bali Co. Inc. (1973) 129 CLR 353 at 362; and see Wingate Marketing);
9. It is not sufficient merely to compare the two marks side by side, and an attempt must be made to estimate the effect or impression produced on and retained by customers and potential customers (Australian Woollen Mills at 658.3; The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 per Windeyer J at 415);
10. Any verbalization of a mark must be regarded, so that aural as well as visual impressions may be important (Australian Woollen Mills at 648; Cooper Engineering at 538; Johnson and Johnson at 439.3);
11. Due allowance must be made for bad or careless elocution and hearing and for "imperfect recollection" (Rysta Ltd's Application,
(1943) 60 RPC 87 (CA) (per Lord Greene MR) at 106.1, (per Luxmoore LJ) at 108.9; Reckitt and Colman (Australia) Ltd v Boden (1945) 70 CLR 84 per Latham CJ at 89, per Williams J at 98.2).
In relation to the application of the foregoing general principles to the facts of this case, counsel pointed to particular similarities and dissimilarities between the respondent's registered marks and those which the applicant sought to have registered, citing other cases in which similarities and dissimilarities of the same kinds had occurred. Little point would be served by my dealing with all the cases referred to, since each case turns on its own facts. As Dixon and McTiernan JJ said in Australian Woollen Mills,
"The main issue in the present case is never susceptible of much discussion. It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs" (at 659.1).
In similar vein, Parker J said in Pianotist,
"This is just one of those cases where it is perfectly possible that another mind, brought to bear on the subject, might take another view" (at 777).
Notwithstanding these cautionary statements, it is useful to note here some of the matters which were put.
(a) The applicant submitted, and the respondent disputed, that where two words are words in the English language as distinct from meaningless invented words, the weight to be given to the factor of "imperfect recollection" (see (11) above) is lessened. I accept this submission in its terms: the meaningfulness of a word is generally a factor in aid of recollection. But in the trade mark context the extent to which meaning aids recollection may depend on the existence and strength of any connection between the meaning and the nature of the goods with reference to which the mark is used (moreover, a particular invented word might be striking and leave a strong impression). Imperfect recollection is not automatically put out of account by the meaningfulness of a word comprised in a mark.
(b) The applicant submitted that as a general rule where words in two marks have dissimilar meanings, there will not be a finding of deceptive similarity, citing Thomas A Smith Ld's Application
(1913) 30 RPC 363. In that case Neville J found no deceptive similarity between the trade marks "Summit" and "Limit" in respect of collars and shirts. In that case, the first syllables of the two words were different whereas in the present case they are the same; the emphasis of pronunciation was upon those distinctive first syllables whereas in the present case it is upon the first syllable in "garden" and on the second syllable in "gardenia"; and one word was not comprised within the other whereas "garden" is comprised within the word "gardenia". Indeed, in that case, the only similarities were to be found in the sharing of the unemphasized final syllable and perhaps in one of their connotations ("the furthest extent").
For the same proposition the applicant also cited Re Trade Mark Cameo (1974) 1 NZIPR 1 in which the registered proprietor of the trade mark "CAMEL" accompanied by the device of a camel in respect of cigarettes applied for removal from the register of the respondent's trade mark "CAMEO" also in respect of cigarettes. The Assistant Commissioner of Trade Marks referred to the fact that the ideas to which the two words referred were completely different. He did not think that "the test of imperfect recollection" was useful in the case because "CAMEL" was an extremely well known trade mark in which the word was bound up with the obvious idea of the animal of the same name. Indeed, the "CAMEL" trade mark incorporated the device of a camel. In contrast, the evidence here does not permit me to find that the respondent's "GARDEN and chef's head device" trade mark or its "GARDEN CHICKEN THINS" trade mark is closely identified in the public mind with the idea of a garden. Nor is there any element in the four trade marks for which registration is sought suggesting a connection between the word "GARDENIA" and the idea of a tree, shrub or flower. There is, for example, no depiction of a garden in either of the respondent's registered marks and no depiction of a gardenia in any of the four marks which the applicant seeks to have registered.
(c) The applicant correctly emphasized that "garden" and "gardenia" are words in the English language with different meanings and that this is a factor which aids recollection of them. In referring to the phonetic and aural dissimilarities between the words "GARDEN" and "GARDENIA", the applicant referred to Re TORNADO Trade Mark
(1979) RPC 155 in which the registered proprietor of the trade mark "TORNA" with a device unsuccessfully opposed registration of "TORNADO" with a different device. As in the present case, the whole of the word ("TORNA") comprised in the registered mark was incorporated within the word ("TORNADO") within the mark sought to be registered. Moreover, the syllabic structure and pronunciative emphases of the respective words are generally similar to those which characterise "GARDEN" and "GARDENIA". "Torna" is the name of a small town in Czechoslovakia but otherwise denotes nothing, whereas the word "tornado" is a common English word. There was no similarity of the ideas conveyed by "Torna" and "Tornado" whereas there is some, albeit slight, relationship between at least one connotation of "GARDEN" (an area of trees, shrubs and flowers) and "GARDENIA" (a particular genus of tree, shrub and flower). It was, however, by reference to a visual comparison of the two marks that the Registrar found that there was no reasonable tangible danger of confusion occurring in the TORNADO case: the two devices bore no resemblance to one another.
4. The applicant pointed to the fact that "GARDEN" comprised two syllables whereas "GARDENIA" comprised three or four (depending on pronunciation of "ia"), and cited Re Lancer Trade Mark (1987) RPC 303 (CA) (per Fox LJ) at 324 to show that a difference in the number of syllables has been regarded as significant (the registered proprietor of "LANCIA" unsuccessfully opposed registration of "LANCER" on the ground of likely phonetic confusion). That a difference in the number of syllables has some significance was not, and could not be, contested by the respondent.
5. The applicant submitted that a common element in a registered trade mark and in one the subject of an application for registration does not necessarily compel a finding of deceptive similarity, citing: Dial-an-Angel Pty Ltd v Sagitaur Services Systems Pty Ltd (1990) 96 ALR 181 (Wilcox J) at 191-2 ("GUARDIAN ANGEL" not deceptively similar to registered mark
("DIAL-AN-ANGEL"); Re Trade Mark "Cameo" (1974) 1 NZIPR 1 ("CAMEO" not deceptively similar to registered mark "CAMEL" with device), and Re Happi-Nappi Trade Mark (1976) RPC 611 at 614 in which the common element "Napp" (itself the opponent's mark) did not prevent registration of "Happi-Nappi".
6. The respondent submitted that notwithstanding the inclusion of devices in the case of the two marks the subject of Applications Nos. 516173 and 516178, the "dominant" and "branding" element was the word "gardenia". I accept this submission in relation to the mark the subject of Application No.516173, the device of the chef and children figures holding bread being descriptive of the goods, and, as the evidence shows, devices of chefs and chefs' hats being common in Class 30 registrations. However, I do not accept that submission in relation to the device forming part of the mark the subject of Application No.516178, the device there being, in my view, of no less "branding" effect than the name "GARDENIA" in that mark.
7. The respondent referred me to Expanded Metal Co Ltd v Finn Blinds
(1986) AIPC 90-305 in which the registered proprietor of the trade mark "PERMA" successfully opposed registration of "PERMALUX". The Assistant Registrar of Trade Marks decided that the addition of "LUX" did not eliminate the prohibited "resemblance likely to deceive or cause confusion". However, unlike "GARDEN" and "GARDENIA", those words did not have meanings in ordinary English language.
8. The respondent referred me to R and C Products Pty Ltd v Bathox Bathsalts Pty Ltd (1991) 21 IPR 547 in which the registered proprietor of "LORELENE BATH TIME" successfully opposed registration of "BATHOX BATH TIME". The Assistant Registrar of Trade Marks decided that the words "bath time" were not merely descriptive, and had a capacity to distinguish the goods by establishing a connection between particular goods and a particular manufacturer, that is to say, of having "trade mark significance". The present case is distinguishable: although "GARDEN" and "GARDENIA" are both meaningful and non-descriptive, they are self contained words different in spelling, pronunciation and meaning.
REASONS
(a) "Resemblance" within sub-section 6(3) of the Act involves an assessment by the Court of the visual and aural impressions made by the two marks when compared, but the likelihood of deception or confusion referred to in that sub-section involves an assessment of what would be the probable visual and aural impressions on customers and potential customers which would arise if the marks were being used properly and within the scope of the registration, that is to say, it involves the concept of "notional normal and fair use."
(b) The notional normal and fair use to be considered here is principally use in relation to low cost high turnover goods on the shelves of self-service supermarkets and other self-service shops (I do not think that I should consider the outlets for goods bearing the "Garden" marks as limited to "specialty Asian food shops") and, to a lesser extent, in relation to goods sold over the counter or otherwise as a result of oral communication. It follows that the main impression to be considered is visual (Mars GB Ltd v Cadbury Ltd (1987) RPC 387 (Whitford J) at 395) though aural impression is not to be disregarded (cf television advertising of supermarket merchandise referred to by Gummow J in Johnson and Johnson at 219; counter sales; telephone orders; goods purchased by an agent pursuant to an oral request), and that sometimes the visual impression will be derived in haste and amidst distractions (cf Stuart Alexander and Co (Interstate) Pty Ltd v Blenders Pty Ltd (1981) 53 FLR 307 (Lockhart J) at 316.3).
(c) The word "GARDEN" has two syllables of which the first is short and emphasized, whereas the word "GARDENIA" has three or four syllables of which the second is long and emphasized. This is not, however, the end of the inquiry as to aural impression: just as the test of visual impression is not that of a side by side comparison, so the test of aural impression is not one of supposing that the two words are said one after the other.
(d) (i) The word "GARDEN" is an English word in everyday use, the meaning of which is familiar to virtually all users of language. The word "GARDENIA" is a botanical term which refers to a genus of trees and shrubs characterized by large fragrant wax-like, white or yellow flowers, and which is also part of the general language, although some people would not be familiar with it.
(ii) The strength of the impression left by a mark seen or heard depends on many factors including some relating to the mark itself, such as whether any word in the mark is meaningful (generally more easily remembered) or meaningless (generally less easily remembered).
(iii) As between meaningful words constituting or comprised within a trade mark, customers and potential customers can be expected to remember better those which have a meaning connected in some way with the goods with reference to which the mark is used, and notwithstanding a submission to the contrary by the applicant, I am of the opinion that most customers would not understand either "GARDEN" or "GARDENIA" as describing or indicating anything connected with the goods in question (such as a characteristic of biscuits or bakery products).
(iv) There is some, albeit slight, connection between the idea of a "garden" and that of a "gardenia" and this is an element of slight similarity to be taken into account.
(v) Taking into account (i) to (iv) above, I am of the opinion that whilst it is possible that a person having once seen or heard the word "GARDEN" or "GARDENIA" alone (for example, in the expressions "Garden biscuits" and "Gardenia biscuits"), upon seeing or hearing the other after the lapse of a period of time, would think erroneously that that was the one seen or heard earlier or at least wonder whether that was so, this would not be likely to occur and there is not a "real tangible risk" of its occurring (cf Southern Cross per Kitto J at 595.2).
(vi) Nor do I think that persons would be caused to wonder whether there was a connection or association between the business entities which used the respective words.
(e) There is some, albeit slight, connection between the respective ideas suggested by the words "garden" and "gardenia", but even "the fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive": Cooper Engineering, at 539. In Cooper Engineering the registered proprietor of the trade mark "Rain King" in respect of "spray nozzles, sprinklers and their parts" unsuccessfully opposed registration of the words "Rainmaster" in respect of "water spraying installations for horticultural or agricultural purposes and parts thereof." The words "King" and "master" were unlike in appearance and in sound, but conveyed the same idea of superiority or suitability. The words "garden" and "gardenia" do not convey the same idea although they are closer to one another in appearance and in sound (but see paragraph (d) above for my conclusions as to the visual and aural impacts of the words "garden" and "gardenia").
It is now necessary to consider, in turn, specifically the visual impressions created by the trade marks the subject of the four applications:
Application No. 516173
29. The word in this composite trade mark is in running script, the lower half of the letters being characterized by a vertical striping effect. It was suggested in submissions that the stylized flower above the letter "i" coupled with that vertical striping effect suggests an American flavour. The accompanying device includes stylized representations of the full bodies of a chef, and of male and female children, all three of whom are holding bread in their right hands (whereas the device in the respondent's registered trade mark No. B 317,436 is a stylized representation of a chef's face and hat only).
I am satisfied that the visual impressions derived from seeing the mark the subject of this application would be such that there would be a likelihood of deception or confusion when a person with that impression saw the entirety of the respondent's registered mark No. B 317,436, and vice versa.
Application No.516175
31. This mark is the bare word "GARDENIA" in bold print. Visually, it is distinct from the trade mark registered No. B 317,436, not only by reason of the differences between the two words, but also by reason of the inclusion in the latter of the stylized chef's face and hat and from the respondent's trade mark registered No. B 501,725 by the inclusion in the latter of the additional words "CHICKEN THINS".
I am satisfied that the visual impression derived from seeing the mark the subject of this application would be such as not to be likely to cause deception or confusion to a person who had seen either of the respondent's registered marks, and vice versa.
Application No.516177
33. This mark comprised "Gardenia" in a form identical to that the subject of Application No. 516173 referred to above, but without an accompanying device. The difference between this mark on the one hand and each of the respondent's registered marks Nos. B 317,436 and B 501,725 on the other hand is greater than the different between the applicant's mark the subject of Application No.516175 and either of the respondent's marks, to which difference I referred immediately above.
I am satisfied that the visual impression derived from seeing the mark the subject of this application would be such as not to be likely to cause deception or confusion to a person who had seen either of the respondent's registered marks, and vice versa.
Application No.516178
35. This mark has in common with that the subject of applications No.516173 and 516177 the form of the word "Gardenia". It also includes a partial bust of a man and, enclosing that partial bust, an oval "rim" on which appear the words "Uncle Slocumm's American Recipe". This device is forceful and creates a strong impression.
I am satisfied that the visual impression derived from seeing the mark the subject of this application would be such that there would not be a likelihood of deception or confusion of a person who had seen either of the respondent's registered marks, and vice versa.
CONCLUSION
37. It follows that the decision of the delegate of the Registrar should be set aside insofar as it relates to the marks the subject of applications Nos 516,175, 516,177 and 516,178. This means that the applicant succeeds in relation to three of the four marks which it has sought to have registered.
The formal orders which I make at this stage are as follows:
1. ORDER that the decision of the delegate of the Registrar of Trade Marks given on 16 April 1993 be set aside insofar as that decision relates to trade mark applications Nos. 516175, 516177 and 516178 in the name of Gardenia Overseas Pte Ltd;
2. ORDER that the trade marks the subject of trade mark applications nos. 516175, 516177 and 516178 proceed to registration.
3. RESERVE the question of costs.