General Electric Company v Galvin Engineering Pty Ltd

[2000] ATMO 129

TRADE MARKS ACT 1995

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

Re:Opposition by GENERAL ELECTRIC COMPANY to registration of trade mark applications 680732 & 680733(6 & 7) - G, WITH STYLISED LETTER E- filed in the name of GALVIN ENGINEERING PTY LTD.

Background

In this matter, Galvin Engineering Pty Ltd (Galvin) seeks to register the following trade mark

It has sought to register that mark for the following goods:

Application 680732, in class 6: Common metals and their alloys, metal building materials, iron mongery, small items of metal hardware, pipes and tubes of metal, goods of common metal not included in other classes

Application 680733, in class 7: Machines and machine tools; motors and engines, machine, coupling and transmission components.

Opposition proceedings

After examining them, the Trade Marks Office advertised the applications as having been accepted for registration.  General Electric Company (GE) opposes registration of these applications.

In support of its opposition, GE relies on and has served Galvin with, a copy of three declarations.  These are by:      

• Paul Blanket with exhibits PLB1 and 2.  Mr Blanket is a lecturer in advertising and promotions at the Graduate School of Management at Macquarie University.

• Henry J. Policinski with exhibits HJP1 to 5.  Mr Policinski is the Trademark Counsel for GE in the United States.

• Graham Raymond with exhibits GR-1 to GR-10.  Mr Raymond is the National Executive of General Electric International, Inc, an American company and a subsidiary of GE. 

Galvin answered this with its own evidence, a declaration by Paul Galvin with exhibits PG1 to 16.  Mr Galvin is the Director of Production and Research and Development at Galvin.

GE relied upon evidence in reply, viz declarations by Carmen Champion with annexures "A" and "B" and by Henry Policinski with exhibits A to H.  I have already mentioned Mr Policinski's qualifications, while Ms Champion was, at the time, a solicitor employed by GE's patent attorneys.

In due course the matter came on for hearing, at the request of GE.  At that hearing, Carmen Champion, now of counsel, and instructed by Spruson & Ferguson, patent attorneys, represented GE.  Ron Webb, also of counsel, instructed by Messrs Clayton Utz, solicitors, represented Galvin.

Issues and submissions

GE relies on three grounds, under sections 44, 58 and 60 of the Trade Marks Act 1995 ("the act"). It will be convenient to deal with the first and last of these together at the outset, as they share some common principles. My findings on those issues will then be directly relevant to the s 58 ground.

Deceptive or confusing trade marks?

Section 44(1) of the act stipulates that:

Identical etc. trade marks

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.

Note 1:  For deceptively similar see section 10. 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.

Note 2:  For similar goods see subsection 14(1). Without over-elaborating this matter, I will accept that some of Galvin's goods are "similar goods", and others are certainly the same goods, as those covered by GE registration 1504 in class 7.
Note 3:  For priority date see section 12.  The priority date for Galvin's trade marks is the filing date of the applications, 13 December 1995.  This is clearly later than GE's registration 1504, which dates back to 1906.

The mark on which GE relies for the purposes of these provisions is as follows:

 

For convenience, I will set out Galvin's trade mark again:

 

Setting the trade marks out this way is convenient, but fraught with risk. A side by side comparison is appropriate only to one of the two s 44 issues. That is the question of substantial identity. That concept was discussed by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil Aust Pty Ltd 1963 109 CLR 407 at 414. His Honour described the test in the following terms:

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.

This is, and always must be, a practical side-by-side comparison.

Ms Champion correctly pointed out that, in use, as the case law emphasises, customers and potential customers will not have the opportunity to compare the two marks in such a manner.  She stressed that, in her view, the essential feature of both marks was the letters GE.  She noted that Galvin's mark used a contemporary style of type face and embellishment, which she accepted was not the same as the "traditional" rendition of GE's mark.  However, she argued that the letter element was an essential feature of each.  In those circumstances, she said, the comparison side by side should be with the letter combination GE per se.  She relied for this on PB Foods v Molanda (2000) 47 IPR 47 at 53.

However, I do not think that this case is authority for any such a radical step.  True, in that case the trade marks CHILL and CHOC CHILL were found substantially identical.  The word CHOC was stated, by an endorsement of the application itself, to be intended to be varied "in accordance with the application of the mark to goods of other flavours comprised in the specification".  Moreover, the goods were all goods in class 29 including chocolate and other flavoured milks and other dairy products.  What other finding was to be expected?

Carr J, in that case, noted the approach of Hearing Officer Forno in Microcom Pty Ltd v Microcom Systems Inc (1998) 41 IPR 163 at 168. The judge noted that, in that case, the hearing officer compared MICROCOM with MICROCOM NETWORKING PROTOCOL and said:

… I do not think that the additional words “Networking Protocol” are sufficient to differentiate the applicant’s and opponent’s marks. Those two words are utterly descriptive for some of the goods covered and add nothing to the mark. This is, I think, analogous to the situation where, say, the trade mark RINSO was being compared with another mark RINSO WASHING POWDER.  Clearly, these marks are substantially the same. I think that any comparison [...] would lead to a conclusion that those marks are also substantially the same.

For all that both trade marks could be, to one degree or another, characterised as having at least the letter G in common, I must conclude that they are very far from substantially identical.

As to "deceptive similarity", I have already quoted the legislative definition of this.  Ms Champion drew my attention to a number of factors that, she said, argued for such a finding in the present instance.

• Both marks convey the same idea, that is, of the letter combination GE

• The other features of the mark are not so prominent as to displace the commonality of the letter combination GE.  These, she argues, are what "strikes the eye and fixes itself in the recollection".  Saville Perfumery Ltd v June Perfect Ltd (1941) 1b IPR 440

• Marks are remembered by general impression or by some significant detail rather than by any photographic recollection. de Cordova v Vick Chemical Co (1951) 1B IPR 496

• Consumers will refer to both marks by reference to the letter combination GE.  The manner of spoken description must be considered: Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658. Ms Champion noted here the relevance of exhibit PG12 and others to the Galvin declaration. She argued that the applicant wished its mark to be referred to as GE.

Ms Champion noted, too, that the importance of a verbal description had been highlighted in Application by Woodland and another 47 IPR 365. There, under the heading "deceptive similarity", Hearing Officer Thompson considered the potential confusion involving the trade mark BLUE HEELER - with a device that is clearly the head of a blue heeler dog, for beers. This was in the face of a device as follows, registered for hotel services:

Hearing Officer Thompson noted a most appropriate piece of case law, to which I will return at a later point:

In re Application by Pianotist Co Ltd  (1906) 1A IPR 379; at 380 Parker J stated the rules of comparison thus:

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.

He went on to say:

Both the cited trade mark and the applicant’s trade mark contain the words “Blue Heeler”. The blue heeler is, of course, well known and recollected by the Australian public as a breed of cattle dog. Within both trade marks in question, there is a picture of a cattle dog which can only go to reinforce this recollection. Also in common between the trade marks is the pictorial element of a glass of beer.

It is most likely, therefore, that the trade marks, in the normal course of the trade within which they will notionally be used, would be frequently used orally and be virtually indistinguishable from each other. The visual elements in common go to reinforcing the similarity of the trade marks. Thus, while the trade marks are not substantially identical, they must be viewed as being deceptively similar

As to the current matter, Ms Champion also noted that, in the course of examination, the TMO had considered that the marks were deceptively similar. An objection to the acceptance of the present application had been raised under s44 because of, inter alia, registration 1504. I think it is fair to note that, in response to this objection, Galvin opined, "The only similarities between the two trade marks are the common use of the letter G and even in this respect the font used is distinctly different". The examiner was convinced and the applications were subsequently accepted.

At the hearing, Mr Webb did not dispute the law relied on by GE, though he noted that, as recast by the 1995 legislation, there is no ground of rejection under s 44 unless the registrar is satisfied that an objection applies.

Mr Webb conceded that the TMO had indexed Galvin's trade mark by reference to the letters GE.  He stated, correctly, that this may have reflected inference, by an officer in the TMO, based on the name of the applicant.  That is a fair argument.  The TMO indexes marks on the principle that it is better that unlike marks are revealed than that the existence of like marks be concealed.  Inference and speculation play a role in such indexing.

As to the material in the Galvin declaration, and to which Ms Champion had referred, Mr Webb said that the reference to GE was only ever made in a context where it was clear that GE meant Galvin Engineering.  The reference to GE did not arise, he said, from the mark itself so much as because the applicant uses GE as an abbreviation of its own name.  This is a factor that I do not think should be allowed to contaminate the comparison of one trade mark with another for the purposes of testing for deceptive similarity.

Both trade marks are, as Mr Webb argued, strongly memorable as visual devices.  Any argument about the similarity of one with the other must hinge firstly on the extent to which Galvin's mark will be seen or recalled as containing the letter E.  It is impossible to say what percentage of people will see an E, and how many will see a flag device.  However, the first impression, at issue in cases as diverse as Jafferjee v Scarlett (1937) 57 CLR 115, and Dial an Angel v Sagitaur Services Systems Pty Ltd 1990 AIPC 90-687, is important. From that perspective, the competing marks would not, in my view, be easily confused.

In terms of the Pianotist case, supra, there are similarities between the marks.  I appreciate the caution in De Cordova v Vick Chemical Co (1951) 68 RPC 103 and reproduced at 1B IPR 496: trade marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of their constituent parts.

However, this matter is to be decided in the light of the Trade Marks Act 1995, not its predecessors.  It is no longer a case that, as it was put in Sym Choon & Co v Gordon Choon Nuts Ltd (1949) 80 CLR 65, the proposed mark must be, overall, so unlike the rival mark that it is not reasonably probable that there will be confusion in the event of imperfect recollection. The matter now is to be approached from the opposite direction. No ground of rejection exists, and no ground of opposition is established for the purposes of s 55, unless certain key findings can be made. As the matter was put in the Full Federal Court in Registrar of Trade Marks v Woolworths Limited 45 IPR 411 at 428:

(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.

I approach the matter in that light. My task is to balance the extent to which some people may see Galvin's mark as containing the letters GE, and the strength or otherwise of that perception, against the obvious visual differences. I find that the marks in suit are not deceptively similar. No ground is established under s 44.

This finding has some consequences in relation to s 60. That section provides that:

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

For the purposes of that section, so far as the opposition relates to the registered trade mark in the form I have already reproduced, there is a threshold question that I have already resolved against GE.  Galvin's mark is neither substantially identical nor deceptively similar to the trade mark registered by GE. 

Section 60, however, is cast in a way that recognises rights in unregistered trade marks as well as registered ones. In its evidence in support, GE asserts that it is the proprietor of the trade mark GE, being the letters in question rendered in ordinary upper case.

As a threshold question again, I should decide if the trade mark GE, being letters rendered plainly in upper case, is deceptively similar to that now sought to be registered by Galvin.  Ms Champion argued that I should note the reputation of the GE trade mark in answering this question.  However, this is incorrect, for reasons set out by Deputy Registrar Hardie in McDonald's Corporation v Steve M. Bowditch [1999] ATMO 104 (15 October 1999). Put simply, deceptive similarity is a question of fact, involving issues of perception, cognition and recall, one in which the opponent is not ordinarily entitled to rely on the strength of its reputation.

I will accept that the trade mark sought to be registered is deceptively similar to the letters GE simpliciter. That, however, still leaves the second leg of s 60 to be attended to, and it is here that GE's case fails.

GE's reputation exists, as Ms Champion argued, in relation to goods and services that are closely aligned to some of those specified in Galvin's applications.  Of course, there is no suggestion that GE makes, for example, plumbing fittings or other simple cast goods in class 6.  Overall, however, it is fairly clear that, in relation to other goods in class 6 and class 7, the General Electric Company is either a trader or would be expected to be a trader.  Here I note the issue of brand extension, as Mr Blanket calls it in his part of the evidence in support of the opposition. 

Brand extension is the reasonably well-known practice of taking a known mark and applying it to goods with which there is some actual or apparent nexus.  At least some of the goods specified in Galvin's application are likely to be thought to be parts of the fields in which GE trades.  Brand extension generally relies on the extension of a known mark to new goods.  Mr Blanket refers, for example, to the trade mark PORSCHE, well known for cars, and now licensed to another for use on sunglasses.

Mr Blanket notes that there are brand extensions that involve a change of the trade mark.  He refers to the extension of OMO, well known for laundry detergent powder, to OMOMATIC, a laundry detergent powder for front-loading automatic washing machines.  Again, he mentions WEEBOK, an extension of the well-known clothing mark REEBOK for use on a range of children's wear.  However, there is nothing in his evidence that suggests that it is common to make quite substantial changes to the form of a graphic trade mark for purposes of brand extension.

Mr Blanket gives his opinion that likely consumers of some of the goods covered by the applications in question would see Galvin's mark as a brand extension of the registered trade mark.  Mr Blanket couches his declaration carefully.  He asserts that it would "not be unreasonable for the target market to think that the Galvin Engineering GE trade mark is an update of the original General Electric GE logo trade mark."  He supports this by reciting the points of resemblance between the two marks.  However, his opinions are simply speculation, his own opinion on a matter that, in the end, is for my decision.  The evidence does not establish that anyone would infer a connection between GE and the relevant goods bearing Galvin's mark.  In the specifics of this case, Mr Blanket's assertions do not convince me. 

In use, as in this decision, GE is a shorthand abbreviation for the firm that is the opponent.  Clearly, from the evidence, the trade mark rights in the letters GE are very much bound up with the company name and with the rendition of GE that has so far been registered.  Without something more, something to point to the GE that is the General Electric Company, the use of the present trade mark by Galvin is not likely to deceive or cause confusion.  In the absence of that something, which would amount to passing off, I think that, given the protracted use of the registered form of the GE trade mark, it would be unlikely that any reasonable number of people would seriously consider that Galvin's mark was an updated version of the GE logo.

Ownership

Section 58 of the Act provides:

Applicant not owner of trade mark

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:  For applicant see section 6.

The word "owner", under the Trade Marks Act 1995 has the same meaning as the word "proprietor" under the Trade Marks Act 1955.  In Re Hicks’ Trade Mark (1897) 22 VLR 636; 3 ALR 75, Holroyd J said:

For the reasons given by us in the course of the argument, we think this application to expunge Hicks’s name from the register of trade marks as the proprietor of the word “Empress” as a trade mark applied to stoves ought to be granted. In order to substantiate his application to be placed on the register for this word he must have claimed to be the proprietor, and the word “proprietor” must be taken to mean the person entitled to the exclusive use of that name. If there is anyone else who would be interfered with by the registration of the word “Empress” in the exercise of a right which such person has already acquired to use the same word in application to the same kind of thing, then Hicks ought not to have been put on the register for that trade mark, and his name will be properly removed on the application of the person whose right of user was thereby disturbed.

The goods or services in question are thus specified in Hicks case as being the "same kind of thing" and the trade marks as "the same word".  In the present case, that must translate to "a substantially identical trade mark".  In Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 at 513, Gummow J, discussing the reasoning in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, said:

When the decision is understood in this way, it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice. The phrase “substantially identical” as it appears in s 62 (which is concerned with infringement) was discussed by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414. It requires a total impression of similarity to emerge from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible. There is, as Mr Shanahan points out in his work, p 158, real difficulty in assessing the broader notion of deceptive similarity in the absence of some notional user in Australia of the prior mark (something postulated by s 33) or prior public recognition built up by user: s 28 (a).

Applying these stipulations about the mark and the goods to the present matter, it is clear that no ground of opposition is established under this heading.  Even where there is a direct overlap between Galvin's goods and those of GE, the mark sought to be registered is simply not substantially identical to either GE's registered trade mark or to the mark GE per se.

Conclusion

The opponent, GE, has failed to establish any ground of opposition.  My decision is that the application should be registered.  I direct that the application may proceed to registration after 30 days from the date of this decision.  If the registrar has been served with a notice of appeal before that time, I direct that registration not occur until the appeal has been decided or discontinued.

As Galvin has been successful, I award it costs in accord with the official scale.  If necessary, on payment of the appropriate fee, those costs will be taxed, allowed and certified by an officer of the Trade Marks Office.

Terry Williams
Hearing Officer
5 December 2000