Glaverbel v PPG Industries, Inc

[1991] ATMO 6

TRADE MARKS ACT 1955
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by PPG INDUSTRIES, INC. to Application 490269 and 490270 in the Name of GLAVERBEL

Applications Nos 490269 and 490270 are in the name of GLAVERBEL, a Belgian societe anonyme, of Chaussee de la Hulpe 166, Watermael-Boitsfort (1170 Brussels), Belgium (referred to herein as "the applicant").  The applications, for registration of the word SOLARBEL, were advertised accepted in the Official Journal of 8 August 1989 in respect of the following specifications of goods in International Classes 19 and 21 respectively:

1. All glass goods (including tempered, convex, silvered or assembled glass goods, especially in the form of insulating glass or sheet glass), having semi-reflective properties, including coloured glass, all being intended for building purposes and all being goods included in this class; and all other goods included in this class.

1. All glass goods (including tempered, convex, silvered or assembled glass goods, especially in the form of insulating glass or sheet glass), having semi-reflective properties, including coloured glass, none of the foregoing goods being included in other classes, and all the foregoing goods being intended for industrial use; glass for vehicle windows in this class; and all other goods in this class.        

   Notices of opposition to both applications were lodged on 8 November 1989 by PPG INDUSTRIES, INC., a corporation organized and existing under the laws of the State

of Pennsylvania, One PPG Place, Pittsburgh in the State of Pennsylvania, 15272, United States of America (referred to as
"the opponent").  The grounds of opposition are identical in both cases and are stated as follows:

(a)By reason of the reputation and rights acquired by the opponent, the use of the opposed trade mark by the applicant in relation to the goods in respect of which registration is sought would be misleading or confusing and an infraction of the opponent's said rights.

(b)Use or registration of the opposed trade mark by the applicant would be contrary to law or morality and/or contrary to public interest.

(c)The opposed trade mark would be disentitled to protection in a Court of Justice.

(d)The applicant is not the proprietor of the opposed trade mark.

(e)The opposed trade mark is not distinctive of the applicant's goods.

(f)The registration or use of the opposed trade mark is likely to cause deception or confusion by reason of its close resemblance to one or more trade marks of the opponent used for the same or similar goods or description of goods.

(g)The applicant did not at the date of the application have an intention to use the mark in respect of all the goods referred to in the application.

(h)Registration of the opposed trade mark would prejudice the opponent in the conduct of its business.

(i)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.

Evidence in support of the opposition was served on the applicant on 8 February 1990.  It comprised a statutory declaration by Patricia Lorraine Kennedy, a legal practitioner of the firm of Spruson & Ferguson, together with Exhibits A and B.  The applicant's evidence in answer was served on the opponent on 8 May 1990.  It consisted of a declaration by Kerry Moore Chrysiliou, a partner in the firm of Chrysiliou Moore Chrysiliou together with Exhibit KMC1.  The opponent notified the Office that it did not intend to reply to this evidence but did not request the setting down of a hearing of the matter.  Subsequently the applicant requested a hearing and the matter came on before me in Sydney on 30 October 1990.  The applicant was represented by Ms Kerry Moore Chrysiliou while no appearance was entered on behalf of the opponent.
         Ms Moore Chrysiliou began by submitting that there was no evidence or argument on behalf of the opponent to support any of the allegations in the notices of opposition.  The only evidence in support of the opposition was the Kennedy declaration which simply recited that the opponent was the registered proprietor of two trade marks details of which were exhibited to the declaration as Exhibits A and B.  Those two registrations are B187958 and B221121 for the trade marks SOLARBRONZE and SOLARBAN respectively.  The former is registered in respect of "flat glass" in Class 21 and the latter in respect of "glass for buildings" in Class 19.  Both registrations are in the name of the opponent.  Ms Moore Chrysiliou submitted that as there was no evidence as to the reputation of the opponent in relation to the two registered marks the provisions of s.28 of the Act had no application.  The only possible basis of objection to the registration of the applicant's mark was therefore in terms of s.33 of the Act.  She conceded that the goods of the opponent's marks and those of the applications were the same or at least of the same description but argued that the marks themselves were not substantially identical or deceptively similar.  She stressed that the opponent's marks were not associated with each other and consequently were not considered deceptively similar, and that there was just as much difference, if not more, between those marks and the applicant's as between themselves.  The marks were clearly not substantially identical when compared side by side noting their similarities and differences as one is required to do : Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 414-15 per Windeyer J. The test for whether they were deceptively similar was the familiar one as stated by Parker J. in Pianotist Co's Application (1906) 23 RPC.  The effect of imperfect recollection had also to be taken into account : Rysta Ltd's Appn (1943) 60 RPC 87,108. Ms Moore Chrysiliou pointed out that no objection had been raised by the examiner on the basis of the opponent's registered marks, that the word SOLAR was descriptive and was common to the trade in the goods in question and that therefore the opponents were not therefore entitled to a monopoly in words containing the word. In this regard she drew my attention to her statutory declaration for the applicant in which she listed a number of registered trade marks in Classes 19 and 20 which commenced with SOL-, SOLA-, or SOLAR. Such words included SOLALITE, SOLAFLUTE, SOLASEAL, SOLAGLAS and SOLAGRO all registered in respect of glass or products of glass. Many other traders, she argued, have been allowed to register words containing the descriptive element SOLA- or SOLAR-. Furthermore, the suffixes BAN and BRONZE of the opponent's marks were words with dictionary meanings which conveyed definite ideas (BAN to prevent solar rays, BRONZE a common colour for tinted glass) whereas the word BEL, although similar to the dictionary word BELL, had no meaning unless it were the French for "beautiful". The opponent's marks were coined words, therefore, but were allowed registration only in Part B because of their descriptive significance while the applicant's mark was an invented word and was accepted for registration in Part A. All three marks evoked quite different ideas and therefore would not be confused because of the effect of imperfect recollection. Moreover, it was well established that where words contained a common element more importance should be given to the differentiating elements of the word : BISMAG case [1932] 2 AOJP 1297.
         In the absence of any evidence to substantiate the claims made in the notice of opposition or any submissions on behalf of the opponent I accept Ms Moore Chrysiliou's submission that the only ground of opposition possible is that under s.33 on the basis of the opponent's two registered marks.  There is no question but that the respective sets of goods are the same or at least of the same description.  On the appropriate tests there is also no doubt in my mind that the marks are not substantially identical when the differences between them are taken into account.  I also consider that the marks are not deceptively similar for all the reasons advanced by Ms Moore Chrysiliou.  I therefore find that the opposition fails and direct that, subject to any appeal against this decision, the applicant's mark proceed to registration.
         The applicant having succeeded in these proceedings is entitled to its costs in respect of both oppositions and I so award them.

(M.A. HOMANN)
Hearing Officer
14 January 1991