Greenbelt Pacific Pty Limited v Craig Somers and Paul Fountain

[1998] ATMO 46

TRADE MARKS ACT 1995

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

RE:Opposition by CRAIG SOMERS and PAUL FOUNTAIN to the registration of trade mark application 680261 in the name of GREENBELT PACIFIC PTY LIMITED.

Background

On 11 December 1995, Greenbelt Pacific Pty Limited (the applicant) filed the above numbered application for the word and numeral mark PLANET 2000 in respect of "sunglasses" in Class 9. The application was accepted on a first examiner's report. Acceptance was advertised in the Official Journal of Trade Marks of 21 November 1996.

Craig Somers and Paul Fountain (the opponents) filed a joint Notice of Opposition on 21 February 1997. The grounds, under the Trade Marks Act 1995, on which opposition is based are stated to be: (1) Section 58 - the applicant is not the owner of the trade mark, and (2) Section 60 - use of the trade mark is likely to deceive or cause confusion.

The Evidence

The evidence in support of the Notice of Opposition was served by 23 June 1997 and consists of a Statutory Declaration jointly declared on 18 June 1997 with exhibits “A” to “C” from Mr. Craig Somers and Mr. Paul Fountain - (the Somers-Fountain declaration). The exhibits consisted of:

A a copy of a letter to Craig Somers dated 14 October 1994 from Toni Black, the National Manager of the Australian Design Awards, in relation to an invitation to attend the 1994 Australian Design Awards and an offer to exhibit the opponents' "Planet Sports 2000" sunglasses.

B        a photograph of a display of "Planet" sunglasses.

C        a case for holding sunglasses bearing the trade mark "Planet".

The evidence in answer was fully served by 23 September 1997 and consists of two Statutory Declarations jointly declared by Michael Guthrie and Mary Guthrie (the first and second Guthrie declarations). I note that a copy only of the first Guthrie declaration was submitted. I will comment further on this matter in the Discussion section. The first Guthrie declaration was made on 28 August 1997 and contained exhibits “A” and “B”, whilst the second Guthrie declaration was declared on 16 September 1997. Exhibits "A" and "B" attached to the first Guthrie declaration consisted of:

A swing tickets bearing the trade mark "Planet 2000" with a planet device for which the description of goods is "sunglasses".

Ba blank standard invoice from Greenbelt Pacific Pty Limited indicating that one line of their eyewear bears the mark PLANET 2000.

No evidence in reply was served

Ultimately, the matter has been referred to me as a delegate of the Registrar for a decision on the written record by use of material held in this Office.

Discussion

There were two separate grounds raised by the opponents in the notice of opposition. These were under sections 58 and 60 of the Act.

Before considering the matters relevant to this opposition I must comment on the first Guthrie declaration. A copy only of this document was filed. Regulation 5.9(2) clearly sets out the necessity for any evidence in answer filed with this Office to be original material rather than copies. For this reason I am only prepared to give this material the weight of a supporting written submission rather than evidence in the matter. However, very little, if anything at all turns on this factor.

(a) Section 58 - Ownership

The first ground raised in the notice claimed that the applicant is not the owner of the trade mark in terms of section 58 of the Act. This ground of opposition derives directly from s.27 of the Act that reads, in part at s-s. 27(1):

A person may apply for the registration of a trade mark in respect of goods and/or services if:
(a) the person claims to be the owner of the trade mark;

On the issue of ownership of a trade mark, McGarvie J. said in the case of Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413:

The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there: Re Registered Trade Mark YANX, Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 203; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603; Moorgate Tobacco Co Ltd v Philip Morris Ltd (No2) 59 ALJR 77 at 83.

….

In considering who, within s.40(1) of the Act, was at the time of Settef’s application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia: The Shell Co. of Australia Ltd v Rohm & Haas Co (1949) 78 CLR 601 at 625 and 627.

The reference to s.40(1) here is, of course, in relation to the repealed Act. The provision was, however, carried over to s.27 of the present legislation as I have quoted above.

Further to this discussion, as established in Re Hicks' Trade Mark (1897) 22 VLR 636, to succeed in such a ground of opposition, the opponents would need to show that they have used their trade mark on "the same kind of thing" prior to the applicant filing its application. Additionally, they would need to show that their trade mark is either identical or substantially identical to the mark applied for in the present application. The final requirement has been clearly set out in Carnival Cruise Lines, Inc. v Sitmar Cruises Ltd (1994) AIPC 91-049 and Karu Pty Ltd v Jose (1994) AIPC 91-101.

From the above material, it is apparent that, the first user within Australia, for the relevant goods and prior to the date of application, becomes the owner at common law. In the present circumstances, the opponents claim, in their declared evidence, continuous use of their PLANET trade mark from sometime around May or June of 1994. The applicant, on the other hand, made application for the PLANET 2000 mark on 8 December 1995. (In addition the applicant also claims use of the mark, in the evidence in answer, from December 1995.) The applicant has claimed "sunglasses" as the specified goods for the application and the opponents have shown use on the same articles in their evidence. The remaining test to be made under s.58 is whether the mark used by the opponents is substantially identical with the applicant's mark.

In Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd., 109 C.L.R. 407, at page 414, Windeyer J said:

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....

The present application is for the word and numeral PLANET 2000 in normal uppercase lettering. The opponents have presented evidence showing that they have used their trade mark in the form shown below:

However, the appearance is still as an uppercase word and the impression to the general public is simply the word PLANET with some minor stylisation from standard upper case lettering. This word is, I believe, substantially identical with the word PLANET in normal uppercase lettering. However, the applicant's mark is not PLANET solus. It is the word and numeral PLANET 2000. Despite the fact that the numeral 2000 adds little inherent adaptation to distinguish the goods of the applicant from those of other traders, the marks PLANET and PLANET 2000, when placed side by side, have a clearly identifiable difference.

From a consideration of the words of Windeyer J. above, I find that the opponents' mark stylised PLANET trade mark and the applicant's PLANET 2000 are not substantially identical.

Clearly the opponents have used their PLANET trade mark prior to any use by the applicant of their PLANET 2000 mark and also prior to the filing of the present application by the applicant. The goods of interest for both parties are "sunglasses".

Thus, although two of the three tests have been found to support the opponents' position under section 58, I find that the opponent is not successful under this ground because the applicant's trade mark is neither identical nor substantially identical with that used by the opponents.

(b) Section  60 - Prior Reputation of a similar mark in Australia

The second ground relied upon introduces opposition in terms of section 60 of the Act, that use of the trade mark by the applicant would be likely to deceive or cause confusion because of the prior reputation acquired by the opponents in using a similar trade mark.

The relevant enquiries to be made encompass two major areas. Firstly, are the trade marks of the applicant and the opponents either substantially identical or deceptively similar? Secondly, would use in a fair and reasonable manner of the mark applied for by the applicant lead to deception or confusion of the general public in the face of the reputation of the opponents' trade mark? Of course, relevant to this test is the actual reputation gained by the opponents in the use of their mark.

In order to succeed with this ground of opposition, the opponents are first obliged to provide evidence of some reputation in use of their trade mark. Such evidence would normally include the amount of use, shown in dollar terms, of sales in connection with the trade mark and the value of advertising using the trade marks. Many other factors could assist in showing that a reputation has been established prior to the date of the present application.

As I indicated in the above discussion dealing with section 58, use by the opponents of their PLANET trade mark predated the present application by some 17 or 18 months. In the above discussion, I also indicated that I did not believe that the marks were identical or substantially identical. However, for the purposes of section 60 it is not necessary for the marks to be substantially identical. All that is required to support the opposition is for the marks to be shown to be deceptively similar. The test for deceptive similarity is outlined in Australian Woollen Mills Ltd v F. S. Walton & Co. Ltd. (1937) 58 CLR 641 at 658 as follows.

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, their 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.

For a consideration of the principles involved for deceptive similarity of trade marks, where one trade mark is encompassed within another, as is the present case, almost all of the tests listed above must be considered. No single general principle can determine whether or not the trade marks are deceptively similar.

I believe that in the present circumstances, the ordinary purchaser would believe that the applicant's PLANET 2000 mark and the opponents' PLANET mark, both used on sunglasses, were simply variations on the PLANET theme. Many traders use variations on a "housemark" in relation to their goods in modern marketing so that prospective purchasers will readily identify the trade source. In my view, the trade marks PLANET and PLANET 2000 are deceptively similar.

I now turn to the question of the reputation gained by the opponents in use of their PLANET trade mark. The matters for consideration, when deciding the magnitude of any reputation in an opposition proceeding, have been summarised by Evershed J. in Smith Hayden & Co Ltd's Application (1946) 63 RPC 97. This opposition, under the U. K. Act of 1938, involved the owners of registered marks, "Hovis" (a used trade mark) and "Ovi" (an unused trade mark), unsuccessfully opposing the registration of "Ovax" for similar goods. In that decision, Evershed J. said at 101:

The questions for my decision … have been formulated, and I think accurately formulated, as follows:
(a) (under s.11) "Having regard to the reputation acquired by the name 'Hovis', is the court satisfied that the mark applied for, if used in a normal and 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"?

The reputation of the opponents' mark is indicated by only two items in the evidence. These are, firstly, the fifth item in the Somers-Fountain declaration indicating that the mark has been in continuous use since 1994 with sales of approximately $35 000 in 1996 (my emphasis). The second item is Exhibit A attached to the above declaration, which is a copy of an invitation to Mr Craig Somers to attend the 1994 Australian Design Awards and exhibit the opponents "Planet Sports 2000" sunglasses.

Section 60 of the Act reads in part:

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 …. had acquired a reputation in Australia, …

Thus, section 60 clearly indicates that the reputation of the mark of an opponent must be judged as at the application date of the opposed mark. I note that the present application was lodged on 11 December 1995. The opponents' sales figures of approximately $35 000 are given for 1996. No details of sales are given prior to that time.

In the present instance, no evidence exists to enable me to take the 1996 figures for the opponents' sales and extrapolate back to 1995 and 1994 to assess the level of the opponents' reputation. Thus, I find that the sales figures presented are not helpful to establish any degree of reputation for the opponent prior to the present filing date.

The other item in the evidence indicating reputation for the opponents is the letter dated 14 October 1994 to Mr. Craig Somers from Ms. Toni Black, the National Manager of the Australian Design Awards. Although this letter states "… your 'Planet Sports 2000' - sports sunglasses are in the running for a prestigious 1994 Australian Design Award" no indication is made in the evidence concerning the tangible benefits of winning such an award in terms of an enhanced reputation for the winner. It would appear that the opponents' participation in the awards served as a showcase for their goods, but no details were given as to the extent of exposure of their trade mark which could lead to the degree of reputation necessary to succeed in this opposition under s.60. In addition, no claim has been made that the opponents did win the award. From the only evidence before me it appears that the opponents entered the competition to win the award but no indication is given concerning the outcome.

Thus, I do not believe that the level of reputation established for the opponents by means of these items can be said to approach the requirement established in Smith Hayden & Co. Ltd's Application (supra). That case indicated that, to gain registration, it would need to be shown that use of the applicant's mark "will not be reasonably likely to cause deception and confusion amongst a substantial number of persons". I am of the opinion that very little deception or confusion could occur if the applicant uses its mark in a fair and reasonable manner. I believe that the opponents have only established a low level of reputation in the use of their PLANET trade mark, being insufficient to displace the applicant's claim for registration.

From the above discussion I find that the ground under section 60 has not been established and opposition on this ground also fails.

Conclusion

From the foregoing, I have found that the opposition fails on both grounds indicated in the notice of opposition under s.58 and s.60. Therefore, as a delegate of the Registrar, and subject to an appeal from this decision, I dismiss this opposition. I award costs to the applicant.

Don Nancarrow
Senior Examiner
28 September 1998.