Geratetechnik v Actron Engineering Pty Ltd
[2018] ATMO 85
•31 May 2018
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Truma Geratetechnik GmbH & Co. KG to registration of trade mark application 1574560(11) – TRUMAX (stylised) - in the name of Actron Engineering Pty Ltd.
Delegate: | Katrina Brown |
Representation: | Opponent: Gary Nock of Cullens Patent & Trade Mark Attorneys Applicant: Michelle Cooper of Davies Collison Cave |
Decision: | 2018 ATMO 85 Trade Marks Act 1995 – s 52 opposition – s 44 pursued – ground not established – trade mark to proceed to registration. |
Background
This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) by Truma Geratetechnik GmbH & Co. KG (‘the Opponent’) to registration of the following trade mark:
Trade Mark No: | 1574560 |
Trade Mark: | (‘the Trade Mark’) |
Applicant: | Actron Engineering Pty Ltd (‘the Applicant’) |
Filing Date: | 14 August 2013 |
Specification: | Class 11: Apparatus for heating, cooling, refrigerating, ventilating and air filtering, air deodorising and air conditioning, including split system and reverse cycle air conditioning units, heat pumps and process heating/cooling units (‘Applicant’s Goods’) |
Endorsement: | Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied. |
The trade mark application was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 2 April 2015.
The Opponent filed a Notice of Intention to Oppose on 2 June 2015 followed by a Statement of Grounds and Particulars (‘SGP’) on 2 July 2015.
The Applicant filed a Notice of Intention to Defend on 19 October 2015.
In due course the parties filed evidence in support of the opposition and evidence in answer.
The matter came before me, a delegate of the Registrar of Trade Marks, in Canberra on 23 March 2018. Michelle Cooper of Davies Collison Cave made written and oral submissions on behalf of the Applicant. Gary Nock of Cullens Patent and Trade Mark Attorneys made written submissions on behalf of the Opponent prior to the hearing.
Grounds of opposition and onus
In the SGP, the Opponent nominated a sole ground of opposition under s 44 of the Act.
The Opponent bears the onus of establishing the ground of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].
[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 [132].
The date at which the rights of the parties are to be determined is 14 August 2013 being the filing date of the trade mark application, and in this matter the priority date for the purposes of s 44.
Evidence
For their evidence, the parties rely on the following declarations.
Evidence in support
Declaration of Gary William Nock (Cullens Patent and Trade Mark Attorneys) made on 18 January 2016 with Exhibits 1 and 2 (‘Nock Declaration’).
Evidence in answer
Declaration of Roseanne Mannion (Davies Collison Cave) made on 22 April 2016 with Exhibits A to C (‘Mannion Declaration’).
Section 44
Section 44 of the Act relevantly provides:
(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.
The Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, in respect of similar goods or closely related services.
In support of this ground of opposition the Opponent nominated the following two trade marks in the SGP (‘the Opponent’s Trade Marks’):
| Trade Mark No. | 1009686 |
| Trade Mark | TRUMATIC |
| Owner | Truma Geratetechnik GmbH & Co. KG |
| Priority Date | 30 May 2003 |
| Specification | Class 6: Conduits of metal for heating units, ventilating units and air conditioning units; valves or slides (except parts of engines) of metal
|
| Trade Mark No. | 1009710 |
| Trade Mark | TRUMA |
| Owner | Truma Geratetechnik GmbH & Co. KG |
| Priority Date | 30 May 2003 |
| Specification | Class 6: Conduits of metal for heating units, ventilating units and air conditioning units; valves or slides (except parts of engines) of metal
|
From the information set out above, it is evident that the Opponent’s Trade Marks are held in a name other than that of the Applicant and each has a priority date earlier than that of the Trade Mark.
The Applicant accepts that the Trade Mark and the Opponent’s Trade Marks both cover air conditioning units in class 11. For the sake of clarity, in the terms set out in s 14 of the Act and the relevant authorities, I consider that all of the Applicant’s goods are similar to the class 11 goods covered by the Opponent’s Trade Marks. Furthermore, I consider the Applicant’s goods to be closely related to the installation, maintenance and repair of heating, ventilating and air conditioning units covered by the class 37 specification of the Opponent’s registration 1009710. In this respect I refer to the following words of French J in Registrar of Trade Marks v Woolworths (‘Woolworths’):
The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance and repair of goods are likely to be treated as closely related to them.[3]
[3] [1999] FCA 1010 [38].
The remaining question to be answered under s 44(1) is whether the Trade Mark is substantially identical with, or deceptively similar to, either of the Opponent’s Trade Marks.
Substantially identical
The Opponent submits that the Trade Mark is substantially identical with its TRUMA trade mark.
The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):
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.[4]
[4] (1963) 109 CLR 407, 414.
The test for substantial identity involves a side by side comparison, as such I have reproduced the Trade Mark and the Opponent’s TRUMA trade mark below:
TRUMA
There is a notable point of difference between the trade marks, namely the letter ‘X’ at the end of the Trade Mark. This creates both visual and aural differences between the trade marks which are unlikely to go unnoticed on a side by side comparison. In my opinion, the Trade Mark is not substantially identical with the Opponent’s TRUMA trade mark.
My next consideration is whether the Trade Mark is deceptively similar to the Opponent’s TRUMA or TRUMATIC trade marks.
Deceptively similar
Section 10 of the Act defines a ‘deceptively similar’ trade mark as:
[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.
The concepts of ‘deceive’ and ‘cause confusion’ were explained in the New Zealand case of Pioneer Hi-Bred Co v Hyline Chicks Pty Ltd, where Richardson J said:
‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.[5]
[5] [1979] RPC 410, 423.
In determining the question of deceptive similarity all of the surrounding circumstances must be considered:
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…[6]
[6] Pianotist Co.’s Application (1906) 23 RPC 774, 777.
In Shell, Windeyer J provided the following insights on deceptive similarity:
The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.
Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[7]
[7] [1963] HCA 66 [13].
The Opponent’s submissions in relation to deceptive similarity concentrate on the similarity between the Trade Mark and the Opponent’s TRUMA trade mark. I will do likewise because if I am not satisfied that the Trade Mark is deceptively similar to the Opponent’s TRUMA trade mark, it is unlikely that I would reach a different conclusion in relation to the TRUMATIC trade mark.
The Opponent submits that the Trade Mark is deceptively similar to the Opponent’s TRUMA trade mark because:
the only difference in spelling of the opposed trade mark and trade mark number 1009710 is the inclusion of the letter “X” at the very end of the opposed trade mark. Otherwise, the spelling of the two trade marks is identical. Given the propensity of English speakers to slur the ending of words, this difference is not sufficient to avoid the conclusion that the opposed trade mark is deceptively similar to TRUMA.[8]
[8] Opponent’s hearing submissions 7 [16].
As pointed out by the Opponent and stated earlier in this decision, the trade marks differ only in one letter; namely the ‘X’ at the end of the Trade Mark. As the difference is at the end of the Trade Mark, the Opponent points me to the following observations of Sargant LJ in London Lubricants (1920) Ltd’s Application:
The tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison and, in my judgment, the first syllable of a word is, as a rule, far more important for the purpose of distinction.[9]
[9] (1925) 42 RPC 264, 279.
The tendency to slur the end of words was commented on in Tivo v Vivo International Corporation Pty Ltd. The court observed that:
The cases are not entirely consistent in relation to whether, and if so, which parts of words are more likely to be slurred, emphasised or misheard, and much depends on the particular circumstance of, and the evidence led in, individual cases.[10]
[10] [2012] FCA 252 [163].
It strikes me that it is extremely difficult to slur a syllable ending in ‘X’. Even if ‘X’ was not carefully articulated, its presence changes the sound of the ‘a’ that precedes it, from the second unstressed ‘a’ sound in the word ‘karma’ to the stressed ‘a’ as it is heard in the word ‘axe’. As such, there are aural differences between the trade marks.
The overall impression of the trade marks is also different. I agree with the Applicant that a consumer is likely to recall the Trade Mark as ‘TRU-MAX’, a combination of truncations of the words ‘true’ and ‘maximum’. This is reinforced by the graphical representation of the Trade Mark in which ‘TRU’ is depicted in a different shade and font to ‘MAX’. I find it highly unlikely that a consumer would recall the Trade Mark as ‘TRUMA-X’. In my opinion, ‘TRUMA’ is not a separately identifiable feature in the Trade Mark.
The likely impression consumers would form of the Opponent’s Trade Marks is that of invented words with no obvious connotation. The situation before me brings to mind the words of Davies J in the recent decision of Singtel Optus Pty Limited v Optum Inc:
whilst the words only differ in the last letters, both words are invented words with different connotations that do not create a deceptive resemblance of ideas.[11]
[11] [2018] FCA 575 [138].
Finally, the nature of the relevant market must also be considered. Broadly speaking, the relevant goods of interest to the parties are apparatus for heating, cooling, refrigerating, ventilating, air filtering and air conditioning. These goods are technical in nature and of some expense. In my opinion, they are likely to be bought after significant thought and consideration; this is not a case of a shopper in a supermarket aisle giving a perfunctory glance at a product before purchasing it.[12]
[12] Stuart Alexander & Co (Interstate) Pty Ltd v Blenders Pty Ltd [1981] FCA 152.
For the reasons above, I am satisfied that the Trade Mark is not deceptively similar to the Opponent’s TRUMA trade mark, nor is it deceptively similar to the Opponent’s TRUMATIC trade mark. The likelihood of deception or confusion is at worst a ‘mere possibility’, rather than a ‘real and tangible danger’.[13]
[13] Woolworths FCA 1010 [50].
The ground of opposition under s 44 of the Act has not been established.
Decision
Section 55(1) of the Act relevantly provides:
(1) Unless subsection (3) applies to the proceedings, 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.
The Opponent has not established the sole ground of opposition that it pressed.
Accordingly, trade mark application number 1574560 may proceed to registration one month from the date of this decision.
If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should be in accordance with the Court’s order or direction.
Costs
The parties sought costs. I see no reason to depart from the general rule that costs follow the event. Accordingly, I award costs against the Opponent in accordance with the amounts set out in Schedule 8 of the Trade Marks Regulations 1995.
Katrina Brown
Hearing Officer
Trade Mark Oppositions & Hearings
31 May 2018
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