Grater Seven Pty Limited v Sizzler Restaurants International, Inc

[1996] ATMO 26

TRADE MARKS ACT 1955

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

Re:     Opposition by SIZZLER RESTAURANTS INTERNATIONAL, INC. to the registration of Trade Mark application number 577569 in the name of
           GRATER SEVEN PTY LIMITED

This matter concerns the registration of the trade mark MEXICANA SIZZLERS.  An application to register the mark was lodged on 1st May 1992 by Grater Seven Pty Ltd (the applicant).  Acceptance of the mark was advertised in the Official Journal of Trade Marks on 19th August 1993 in respect of “corn chips made from stone ground corn” in class 30.

Registration of the mark was opposed by Sizzler Restaurants International, Inc (the opponent) by lodging a notice of opposition on 18th November, 1993, under the provisions of section 49 of the Act.  The notice contains general grounds of opposition of which the following were pursued at the hearing: that the applicant is neither the author nor the proprietor of the mark; that the applicant’s mark is substantially identical or deceptively similar to the opponent’s registered marks and that, by reason of the reputation and rights in the opponent’s trade marks, the use of the applicant’s mark is likely to deceive or cause confusion, and that the subject mark would be disentitled to protection in a court of justice.

The evidence

Following a number of successful extension of time periods, the evidence in support of the opposition was lodged on 16th September 1994.  In turn, the applicant lodged its evidence in answer on 14th November 1994.

In the evidence in support comprising a statutory declaration, dated 1st September 1994, with exhibits A, B and C, by Ross Alexander Dewar, a director of Sizzler Australia Pty Ltd, the declarant states that his company is the registered user of a number of opponent’s registered trade marks.  He has been employed in the company since the year 1985 and has occupied his present position as a director of finance since 1987.  Two of the opponent’s registrations are Nos 414008 for the mark SIZZLER and 239948 for the mark SIZZLER and a device, both registered in class 30 for broad specifications of goods.  The first Sizzler Restaurant was opened in Australia in July 1985, under the authority and licence of the opponent, and by 1st May 1992 there were 65 Sizzler Restaurants trading in Australia.  Having briefly described the nature of the Sizzler Restaurants, Mr Dewar explains that the restaurant offers an “All you can eat” salad/food bar which includes savoury nibbles, including corn chips.  It is also the practice at the restaurants to serve plates of appetizers, which include corn chips and dips, to patrons who are queueing to purchase food at the front counter, or when there is a considerable wait to be seated.  In addition, the restaurants occasionally promote a “nachos” dish which contains corn chips.  Mr Dewar has attached to his declaration some promotional posters under exhibit A.  Additional examples of promotional material are exhibited under B, and further samples of items featuring the mark in use are shown in an exhibit marked C. 

Since a number of meals and other foods available at the restaurants represent a particular style and are named after a geographical region which correlates with the predominant flavour of the meal or food, Mr Dewar is concerned that the existence of the mark MEXICANA SIZZLERS may cause the public to wonder whether it is a name of food available at a Sizzler Restaurant, or is in some way related to its food items.  The value of the Sizzler Restaurants and food provided had increased to hundreds of millions of dollars by the beginning of 1992.  Thousands of dollars were expended on advertising and promotion each year from the year ending April 1986 to 1991 which amount increased; by May 1992 around 8 million dollars per annum were spent for this purpose.  The popularity of the restaurants is evidenced by the huge amounts of food sold, for example, in 1992 approximately 15 million customers ate at the restaurants.  Mr Dewar expresses the view that, as a result of the operation of the Sizzler Restaurants in Australia and the advertising and promotional activity, by 1990 the SIZZLER mark had acquired a substantial reputation amongst the public, and that the mark has become one of the best known in its field.  Furthermore, from his experience in the restaurant and food trade, he believes that registration or use of the applicant’s mark is likely to lead to deception and confusion in that many people will wonder whether MEXICANA SIZZLERS is the name of a particular type of corn chip or other food available from the Sizzler Restaurants.    

Spiro Stamoulis whose statutory declaration, dated 9th November 1994, and exhibits A, B and C form the evidence in answer, is the managing director of the applicant company.  The mark MEXICANA SIZZLERS, he says, has been used for approximately three years (at the time of the declaration) commencing in or about October 1991.  It is used throughout Australia.  The reason for its adoption was the first product - a spicy chilli-flavoured corn chip; given the nature of the product it was decided to adopt a Mexican theme.  The wholesale sales of the product total approximately $700,000.00 per annum*.  The advertising expenditure amounts to $32,000.00 per annum, and exhibit A shows an example of the advertising.  Affixed to the declaration under exhibit B are copies of the mark used on packaging of the product until October 1994.  Exhibit C holds a copy of the new packaging adopted from November, 1994.

* According to a copy of a declaration by Daniel Stuart Pearce, a solicitor of Holding Redlich, solicitors for the applicant, which was tendered at the hearing to provide a more specific figure, the approximate sales of the applicant’s corn chips amounted to $2,135,000.00 to the end of December 1994.    

Mr Stamoulis expresses the opinion that the alleged conflicting marks would not cause confusion for the following reasons: the applicant’s mark is represented on packaging of the product in a different manner from the way in which the opponent uses its SIZZLER mark in relation to restaurants, the applicant’s product is available for sale in supermarkets, and, as far as he is aware, Sizzler Restaurants do not sell their food in plastic packaging.  Additionally, the applicant’s mark also has acquired a substantial reputation. 

A hearing on the matter was held in Canberra on 1st September 1995.  The opponent was represented by Mr Andros Chrysiliou, solicitor of Chrysiliou Moore Martin, patent and trade mark attorneys of Sydney.  Mr Bruce Caine of Counsel appeared for the applicant.               

Submissions
Having first briefly discussed the evidence in support, Mr Chrysiliou stated that the opponent wished to make it clear from the outset that there were two aspects of the present opposition.  Firstly, whether the applicant’s mark was objectionable under the terms of s 33 of the Act; and if so, then that was the end of the matter.  Secondly, should it be found that it was not objectionable under s 33, whether the evidence provided a basis for the reversal of such a finding.  However, before considering those grounds, it was proposed to make submissions in relation to the proprietorship question. 

In Rolewa Rentals v Champagne Moet 5 IPR 171, the hearing officer had observed at p 175 that, from the course or decisions it was clear that, in order to sustain a valid claim to proprietorship it was essential that no other person shall have acquired a prior right to use of the mark in Australia for the same goods, or goods of the same description. The hearing officer continued that in the case in suit the prior use by the licensees in respect of “the same kind of thing” was fatal to the applicant’s claim to proprietorship. It was the opponent’s submission, Mr Chrysiliou said, that use of the mark SIZZLER, as demonstrated in Mr Dewar’s declaration, and which was in essence for “the same kind of thing” for which the applicant was now seeking registration, was at the very least the equivalent of the use which was contemplated by Williams J in the Seven Up Co v O T Ltd (1947) 75 CLR 203 at p 211. Mr Dewar had declared to usage of the SIZZLER trade mark in relation to, amongst other goods, corn chips, such use predating any use by the applicant or the date of this application. Referring to Thai Gypsum v Waring and Gillow 29 IPR 99, where it was held that a trade mark need not be used on the goods but it was sufficient if it was used in connection with the goods, Mr Chrysiliou submitted that a trade mark need only be used as a banner under which goods were sold to amount to trade mark use and to support a claim to proprietorship. He then referred to Daimer Industries Pty Ltd v Kabushiki Kaisha Daimaru 27 IPR 124 where the hearing officer had referred to a twofold trade mark use: references to printed or other visual representations of the mark, and reference of the mark in physical or other relation to the goods. In Australian Law of Trade Marks and Passing Off, second edition, by D R Shanahan, use on invoices and advertisements had been pointed out as trade mark use.  A trade mark could also be used both in respect of a service and goods as considered in “Visa” Trade Mark [1985] RPC 323. The oppponent’s evidence, he submitted, indicated use of the SIZZLER mark in respect of food, including corn chips, as well as restaurant services prior to the date of this application. The mark had been used as a trade mark on signs where the goods were sold and services rendered. It had also been used on advertisements and menus or price lists, which were recognised in Daimer v Daimaru as trade mark use. 

In the present case, Mr Chrysiliou submitted, the applicant was seeking to register the essential feature of the opponent’s trade mark, as evidenced in annexures A and B of Mr Stamoulis’ declaration where the word SIZZLERS was given prominence, and in one of the examples it was the only mark used on the corn chip packaging.  The applicant had thus adopted the opponent’s trade mark for which the opponent had already established proprietorship by virtue of its use and prior registration for food items, such as corn chips.  In support, Mr Chrysiliou referred to Sundream Pty Ltd v Hartland Investments Pty Ltd 13 IPR 302, “Volatilite” Trade Mark 1921 AOJP 608 and Tibaldi Small Goods Product Co Appn 1936 AOJP 78.

Turning to the test of comparison of marks under s 33 of the Act, Mr Chrysiliou pointed out that such a test was to be carried out on the basis that each of the marks in question will be assumed to be used in a normal and fair manner for all the goods or services covered by the registration or application in question.  There was, however, one important exception relating to the manner of use of the applicant’s trade mark.  If the evidence indicated that the applicant had adopted a particular manner of use, then such use could not be ignored when considering the question of similarity of the marks.  It was also difficult for the applicant to deny that such manner of use was not a normal and fair “notional use of the mark for the purposes of comparison”.  In that regard, Mr Chrysiliou relied on Smith Hayden & Co Ltd’s Appn (1946) 63 RPC 97, “Grundig” Trade Mark [1968] RPC 89, “Players” Trade Mark [1965] RPC 363, Dundas’ Appn (1955) 72 RPC 151 and Sym Choon & Co Ltd v Gordon Choon Nuts Ltd (1949) 80 CLR 65. He also cited Polaroid Corp v N Sole Pty Ltd [1981] 1 NSWLR 491, where both s 62 and s 33 were applied in deciding similar considerations.

Mr Chrysiliou emphasized that consideration of use of the marks in normal and fair manner for corn chips made from stone ground corn was more limited because use could relate to use by both parties in respect of such products sold to or for use in restaurants. 

Applying the criteria in relation to substantially identical or deceptively similar marks enunciated by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at pp 414-415, Mr Chrysiliou concluded that the applicant’s and the opponent’s marks were substantially identical in view of four factors: the disclaimed word MEXICANA in the applicant’s mark indicated that the word SIZZLERS was the essential feature of the applicant’s mark - Taw Manufacturing Co v Notek Engineering Co 68 RPC 271 at p 273 - which was a plural form of the opponent’s mark; MEXICANA was an adjectival word in relation to food indicating a particular flavour or style or variation; the manner of use of the applicant’s mark as illustrated in the applicant’s evidence; and, in light of the opponent’s evidence and, given the opponent’s registered marks, such as WESTERN SIZZLER, and the variety of foods sold under the SIZZLER mark, the public might assume some connection between the variation of the SIZZLER mark and the opponent in relation to a particular style of food.

Concerning deceptive similarity of the marks, Mr Chrysiliou submitted that a much broader test was involved where such factors were to be taken into account as imperfect recollection, whether the applicant’s mark could be taken as a variation of the opponent’s mark, or as relationship with products coming from the opponent.  In this regard, he relied on John Fitton & Co Ltd’s Appn (1949) 66 RPC 110, John Lysaght Ltd v Reid Bros and Russell Pty Ltd [1907] VLR 432, Arendsen’s Appn (1932) 2 AOJP 433, Aherns Ltd’s Appn (1932) 2 AOJP 167, Austin Rover Group Ltd v Rovercraft Ltd (1987) IPD 10087, Olin Corp v Pacemaker Pool Supplies (1984) AIPC 93-216 and Colgate Palmolive Ltd v Pattron [1987] RPC 635. He also referred to Seven-Up Co v Bubble Up Co Inc (1987) 9 IPR 259, where, although the mark BUBBLE UP and various devices were found not likely to be confused with the opponent’s mark UP, the mark was nevertheless refused because it contained the word UP as a prominent and distinct feature.

Commenting on the applicant’s evidence, Mr Chrysiliou remarked that Mr Stamoulis’ declaration was silent on use of the mark between the time of its adoption in 1983 and first use in 1991 and the inclusion of the word SIZZLERS in the mark.  Furthermore, the extent of use and advertising appeared to support the mark MEXICANA CORN CHIPS since 1983, as evidenced in clause 8 and annexure A of Mr Stamoulis’ declaration. 

By referring to Hermes v E T Swift Pty Ltd 2 IPR 432, he concluded that the applicant had failed in its onus of satisfying the Registrar that its application should be accepted for registration.

In opening the submissions on behalf of the applicant, Mr Caine commented on Mr Stamoulis’ declaration, pointing out that there was no evidence of any attempt to pass off the goods of the opponent.  As to the applicant’s choice of the word SIZZLERS in the applicant’s mark, he suggested it had originated from the process of lightly toasting and cooking the corn chips shaped from corn paste in high quality polyunsaturated vegetable oil, as described in exhibit A.  He noted the endorsements of the applicant’s name, including its trading style, address and telephone number on copies of the product packages which indicated there was absolutely no suggestion of the opponent, opponent’s authorised distributor or opponent’s licensee.  In exhibit B, the word MEXICANA appeared in the most prominent place on the package on top right in the centre.  The Mexican theme was made clearer in exhibit C, where on the back of the package on the bottom right a Mexican hat was depicted with the words MEXICANA SIZZLERS. 

Examining the evidence in support, Mr Caine first expressed the opinion that Mr Dewar, being a director of finance may not be in a position to give evidence on marketing matters.  In relation to the most pertinent mark of the opponent’s registration No 414008, Mr Caine argued that the registration did not embrace “corn chips”, nor did the mark of registration No 239948.  In referring to the nature of a Sizzler Restaurant, Mr Dewar described the style as “with predominant steak, seafood and salad theme”, but not corn chips.  Concerning food purchases at the restaurant, he said, neither the opponent’s evidence nor its submissions suggested that such purchases included take-away food.  He observed that Mr Dewar had used the present tense when referring to savoury nibbles, including corn chips, which did not explain the position at the date of this application.  He questioned the opponent’s allegation concerning use of the mark in relation to the relevant goods; the goods were not sold in packaging; the only use, he said, would be on signs, printed matter and advertisements.  However, Mr Dewar’s reference to television advertisements did not conclusively establish that the advertisements were for corn chips.  Furthermore, the fact that the “nachos” dish also included corn chips could not be taken to be use of the mark on or in relation to the relevant class of goods.  On inspecting the exhibits A, B and C, he concluded that there was no reference to corn chips in the course of trade.

Mr Caine submitted that Mr Dewar without marketing experience was not qualified to express an opinion that the existence of the mark MEXICANA SIZZLERS could be responsible for members of the public believing that it was a name of food available at a Sizzler Restaurant.  Similarly, he criticized Mr Dewar’s conclusions on deception or confusion of the marks, which lacked any foundation or evidence for Mr Dewar’s opinion.

Turning to the submissions on each of the areas Mr Chrysiliou had raised in relation to the notice of opposition, he first addressed the question of s 28, which, he said, was also extended to s 33.  He reminded me that the relevant date was the lodgment date of this application - Southern Cross Refrigeration Co v Toowoomba Foundry Pty Ltd (1954) CLR 592 - and, with reference to that case as well as the Titan Manufacturing Co Pty Ltd v Coyne (1991) AIPC 90-808, particularly the test employed in Smith Hayden case, supra, continued to discuss the relevant tests applicable in relation to s 28.  Importantly, he said, the present case was not one where notional use assumed great significance because the applicant was not seeking registration for a broad class of goods.  In the present case, the applicant’s evidence completely mirrored the class of goods in respect of which registration was being sought.  There was no suggestion that the opponent had established reputation for providing proprietary food stuffs, i.e. food stuffs sourced from the opponent.  The opponent must undoubtedly buy corn chips in some sort of packaged way, but there was no evidence on that aspect.  It was also important to recognize that the marks concerned were not the same.  The applicant’s goods would be sold in packages and would never be sold in loose form in a restaurant environment.  From these observations he concluded that deception and confusion were simply not possible even on the basis of notional use. 

In relation to s 28 in particular, he emphasized the opponent’s lack of evidence of any actual confusion of the marks, although the marks had co-existed in the market place since 1991.  The opponent had provided no evidence on how it purchased its corn chips, how and when they were packaged, and whether anyone had been misled at any stage.  Most importantly, despite having had 15 million customers in 1992 and, presumably, the same number at the time of Mr Dewar’s declaration, there was no shred of consumer evidence to show any confusion whatsoever.  Consequently, the applicant’s mark did not offend against the provisions of para 28(a).

Acknowledging that, in light of the Titan v Coyne decision, supra, the opponent would need to establish applicant’s blameworthy conduct to succeed on the ground of s 28, Mr Caine submitted that there had been no attempt to pass off the applicant’s products for those of the opponent; the coincidental adoption of the name MEXICANA SIZZLERS was not enough to constitute improper conduct by the applicant. 

Moving on to considerations in relation to the s 33 ground, Mr Caine said that much of what he had already stated also applied to that section.  Relying on the Shell v Esso case, supra, for criteria on substantially identical or deceptively similar marks, Mr Caine believed that, in view of their aural and phonetic differences, the marks were not substantially identical. 

In discussing the aspect of deceptive similarity, Mr Caine referred to pages 170 and 152 of Shanahan’s Australian Law of Trade Marks, supra, reminding me that the applicant’s actual and notional use was the same.  From the texts he further drew the conclusion that, by parity of reasoning, if the evidence showed that the opponent had in fact adopted a particular manner of use, namely, as a restaurateur, it would not be a normal, fair and notional use to turn around and say that he might, in the future, sell packaged corn chips.  If it did so, it would have to step outside its entire business operations that had been set up since 1985.  There was no evidence that suggested it would engage in, nor had it engaged in, external sales of any packaged goods at any time.  On that basis, what he had said about section 28 in the context of deception and confusion applied here. 

On the issue of proprietorship under s 40, Mr Caine submitted that, from the text Australian Law of Trade Marks, pp 157-158, where the author discusses non-identical claims to proprietorship, it emerged that the parties must be claiming proprietorship rights in substantially the same mark, which was not the case in the present proceedings.  

Following Mr Caine’s submissions, Mr Chrysiliou proceeded to clarify some matters raised by Mr Caine.  He said that, given Mr Dewar’s experience, it could be reasonably assumed that he was as experienced in the restaurant and food trade as one would expect a director to be.  He further remarked that the type of evidence that was presented at the Registry level, was not what one would normally produce in a court.  As far as being criticized on the absence of evidence on precisely when the opponent commenced operating the style of the Sizzler Restaurant described by Mr Dewar, Mr Chrysiliou explained that Mr Dewar did not state anywhere that the particular style had been altered.  With reference to the discussion on notional use, he further stressed that, if the applicant’s mark was registered, there was nothing to limit the applicant from selling its chips in bulk containers in restaurants or in restaurant style packaging.

Decision
Proprietorship - s 40
It has been established that, in order to pursue a valid claim to proprietorship, it is essential that no one else has acquired a prior right, through use, of the mark in Australia.  In Re Hicks’ Trade Mark (1897) 22 VLR 636 Holroyd J stated at p 640:

“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 the 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 have been put on the Register for that trade mark.”

This principle has been approved in a number of High Court cases: Blackadder v Good Roads Machinery Co Inc (1926) 38 CLR 332; Seven Up v O T, supra, Shell Co (Aust) Ltd v Rohm and Haas Co (1949) 78 CLR 601; Re Registered Trade Mark “Yanx”; Ex parte Amalgamated Tobacco Corp Ltd (1951) CLR 199.

As explained by D R Shanahan in Australian Law of Trade Marks, supra, under the head “Non-identical claims to proprietorship”, pp 157-159, a question arises as to whether the opponent and the applicant must be claiming substantially the same right to proprietorship.  In considering this question, the author concludes that, in order to raise a prior use claim under sub-section 40(1), the parties must be claiming proprietorship of the same or substantially the same mark.  The author’s views have recently been affirmed by Gummow J in Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) AIPC 91-049 at p 38,114:

“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 proprietoship 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 The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1961-1963) 109 C.L.R. 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.”

See also Karu Pty Ltd v Jose (1994) AIPC 91-101, p 38,636.

The marks of the opponent’s registrations Nos 239948 and 414008 are:
  No 239948

No 414008  SIZZLER

Viewing these marks in light of the test on substantially identical marks enunciated by Windeyer J in Shell v Esso, supra, at p 414:

“[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”,

in the former, I observe the grotesque devices of a bull, cow and calf and the prominently rendered word SIZZLER in bold upper case letters which occupy approximately the same portion in the mark as the group of animals, while the applicant’s mark solely consists of the words MEXICANA SIZZLERS.  While none of the elements comprising the marks are identical, what could be seen to be the distinct features, the words SIZZLER and SIZZLERS, respectively, differ in the terminating letter “S” in the applicant’s mark.  The group of animals in the opponent’s mark and the word MEXICANA in the applicant’s mark, however, create sufficiently dissimilar overall impression for the marks to be easily distinguishable. 

Closer resemblance is apparent between the opponent’s latter mark SIZZLER and MEXICANA SIZZLERS where the differences lie in the word MEXICANA and the plural form of “Sizzler”.  For the purposes of comparison, however, the word MEXICANA cannot be ignored, even if it is disclaimed on the registration as a non-distinctive word indicating a particular style or flavour of food, as suggested by Mr Chrysiliou (see “Granada” Trade Mark [1979] RPC 303). This additional word in the applicant’s mark is responsible for leaving a total impression in one’s mind of a mark which, when the marks are inspected in close proximity, by no stretch of imagination could be regarded as identical or substantially the same mark as that of opponent’s registration 414008.

In view of the legal principles and my observations, as discussed, it is clear that the opponent has not succeeded in relation to the ground of opposition based on proprietorship. 

Sections 28 and 33
The most common tests to be applied in relation to sections 28 and 33 are those outlined by Evershed J in Smith Hayden, supra, where his Honour compared the tests under sections 11 and 12 of the Trade Marks Act 1938 (UK), which correspond to sections 28 and 33 of Trade Marks Act 1955. By paraphrasing and adopting his Honour’s words from p 101 of this case to the present situation:

“The questions for my decision ... have been formulated, and I think accurately formulated, as follows:

(a) (under s 28) “Having regard to the reputation acquired by the name SIZZLER, is the court satisfied that the mark applied for, if used in a normal or fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons?”;

“(b) (under s 33) “Assuming user by the opponent of its marks SIZZLER with a device of a group of animals and SIZZLER in a normal and fair manner for any of the goods covered by the registrations of those marks ... is the Registrar 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 MEXICANA SIZZLERS normally and fairly in respect of any goods covered by its proposed registration?”

Concerning the matter of s 28, first in relation to para (a), whether the applicant’s mark would be likely to deceive or cause confusion, having regard to the opponent’s evidence, I concede that the opponent had acquired a substantial reputation in Australia for the mark SIZZLER in respect of restaurants and food which includes corn chips, at the lodgment date of the present application, 1st May 1992 (Southern Cross v Toowoomba Foundry, supra).  Even though the opponent has not established that persons have actually been deceived by the existence of the applicant’s mark, and the opponent is under no obligation to do so - see Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147 at p 174 - I believe that use of the applicant’s mark is likely to lead a substantial number of persons to “wonder whether it might not be the case that the two products come from the same source” (Southern Cross v Toowoomba Foundry, supra).  My view is reinforced by the evidence which shows use of the opponent’s mark SIZZLER in combination with a name of a geographical region suggesting a particular flavour or style of the food, such as “Malibu Chicken” or “Western Sizzler Steak”, noted from copies of the Sizzler Restaurant Menus exhibited as C of Mr Dewar’s declaration.  It does not appear to be inconceivable that persons encountering a mark MEXICANA SIZZLERS could assume that the corn chips bearing that mark were flavoured with ingredients associated with Mexico and originated from the opponent company.  I do not think many persons purchasing corn chips are likely to inspect closely the packages to ascertain the name of the company supplying the product, its address and telephone number.      

Taking further the matter in relation to s 28, i.e. to para (d), to consider the question of “blameworthy conduct” caused by the applicant in light of a Practice Note published by the Office in the Official Journal of Trade Marks of 12th September 1991 following the decision of the High Court in New South Wales Dairy Corporation v Murray Goulburn Co-operative Ltd 171 CLR 363, I have noted Mr Caine’s explanation of the applicant’s reasons for adopting its mark, particularly the word SIZZLERS. In the absence of any evidence that the applicant has been guilty of any wrongful conduct, I am unable to draw any conclusions on this matter. This issue was not pursued by the opponent.

Having considered the relevant submissions and the evidence, I find that, although use of the applicant’s mark could be responsible for deception or confusion with the opponent’s SIZZLER mark, no improper conduct on the part of the applicant has been established by the opponent, hence the opponent’s grounds of opposition in respect of s 28 must fail. 

Concerning the provisions of s 33, I have already concluded that the marks in question are not substantially identical.  I now turn to deciding the issue of deceptive similarity of the opponent’s marks of registrations Nos 239948 and 414008. 

Contrary to Mr Caine’s submissions, these marks are registered in respect of the same goods as those for which the present applicant is seeking registration of its mark, i.e. “corn chips” would be embraced in the description “preparations made from cereals” in the specification of goods of the former, while the phrase “all other goods” in class 30 include those goods in the latter registration.    

Sub-section 6(3) defines a deceptively similar mark as one which is likely to deceive or cause confusion.  In Australian Woollen Mills Ltd v Walton Co Ltd (1937) 58 CLR 641, Dixon and McTiernan JJ outlined the criteria for determining deceptive similarity of marks at p 658 as:

“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 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.”

Being mindful of the words of Lord Radcliffe in de Cordova v Vick Chemical Co (1951) 68 RPC 103 where he said at p 106 that “in most persons the eye is not an accurate recorder of visual detail and marks are remembered rather by general impression or some significant detail than by any photographic recollection of the whole”, and the “doctrine of imperfect recollection”, discussed in Rysta Ltd’s Appn (1943) 60 RPC 87 and Aristoc Ltd v Rysta Ltd (1945) 62 RPC 65, I think the marks under consideration are deceptively similar. As said previously, in the applicant’s mark the word of the opponent’s mark SIZZLER of registration 414008 assumes an additional letter “S”, which is its plural form. This minor difference in combination with the adjectival form MEXICANA merely describing a certain flavour or style would not, in my opinion, create a permanent impression in one’s mind so as to remove any likelihood of the mark not being confused with the opponent’s SIZZLER mark, or vice versa. Similar observations can be made in regard to the mark of registration 239948 where the prominent element SIZZLER is more likely to be borne in mind than the device of the animals, particularly as a means whereby the mark may be verbally identified. Furthermore, in view of the elements comprising the marks, as observed earlier, there exists a strong possibility that members of the public could confuse the marks, assuming relationship and common origin (see John Fitton, supra), or the prospective purchasers are likely to interpret the applicant’s mark as conveying the idea that the applicant’s product possessed a different characteristic than the product they had known in the past (see Arendsen’s Appn, supra), as has been argued by Mr Chrysiliou. 

In considering the likelihood of deception or confusion of the marks in question, I have noted the applicant’s submissions that its product was sold in packaged form in supermarkets, grocery stores and health food outlets, but that it would not be offered for sale in restaurants.  However, in the absence of any restrictions as to the mode of use of the corn chips in the present application there does not appear to be any reason why the applicant could not undertake to sell its corn chips to restaurants, packaged or otherwise.   

Consequently, in my opinion, registration of the applicant’s mark would offend against the provisions of s 33. 

Conclusion
I have found that the opposition has failed on all grounds of opposition except the ground based on section 33. 

In light of the submissions, however, it appears that the conflict could be resolved to enable the applicant’s mark to co-exist on the Register with the marks of the opponent’s registrations if the applicant were to amend the specification of goods to “packaged corn chips made from stone ground corn and not for sale in restaurants”.  I allow the applicant two months from the date of this decision to seek the proposed amendment.  In the event of the applicant not agreeing to the amendment, I will be obliged to refuse registration of the applicant’s mark. 

Concerning the matter of costs, I reserve my decision until the fate of the application is finally determined. 

Michael Homann
Hearing Officer

29th April 1996