GWC Electronics Pty Limited v Coin Acceptors Inc

[1998] ATMO 15

TRADE MARKS ACT 1995

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

RE:Opposition by COIN ACCEPTORS, INC. to the registration of trade mark application 703427 in the name of GWC ELECTRONICS PTY LIMITED.

Background

On 29 February 1996, GWC Electronics Pty Limited (the applicant) filed the above numbered application in respect of “coin operated machines”, being goods included in Class 9. The application proceeded to acceptance and was duly advertised as accepted in the Official Journal of Trade Marks of 2 January 1997.

The composite word and device trade mark, as depicted on the application form, is shown below:

A notice of opposition was filed on 1 April 1997 by Coin Acceptors, Inc. (the opponent). The grounds, under the Trade Marks Act 1995, on which opposition is based, are stated to be: (1) Section 41 - that the trade mark is not capable of distinguishing the applicant’s goods from those of other traders, (2) Section 42 - that use of the trade mark would be contrary to law, (3) and (4) Section 44 - that use of the trade mark is likely to deceive or cause confusion and (5) Section 60 - that the trade mark is similar to a trade mark that has a prior reputation in Australia and that its use would deceive or cause confusion.

The Evidence

The evidence in support of the notice of opposition was served by 30 September 1997 and consists of two Statutory Declarations. The first declaration (the Boylan declaration) dated 21 July 1997 is from Peter Michael Boylan, a private business owner, who has been associated with the vending machine industry for 30 years. The second declaration (the Bessell declaration) dated 31 July 1997 is from Ronald Bessell, the Managing Director of the Australian branch of the opponent. Attached to Mr. Bessell’s declaration are annexures “RB-1” to “RB-11”, which show examples of the opponent’s trade marks in use.

The Boylan declaration indicates that the declarant, from his long experience in the field, is only aware of two competitors for “coin handling devices” and that one of these is the opponent. Additionally, he is of the opinion that use of any trade mark with a prefix of COIN- would be likely to lead persons familiar with the COINCO mark to believe the goods were from Coin Acceptors, Inc. The Bessell declaration details the history of the COINCO mark, particularly since the branch office of Coin Acceptors, Inc. was set up in Australia in 1980. The declaration also details the market share the company enjoys through the COINCO mark, presents in its attachments examples of the mark in use, and also offers Mr. Bessell’s opinion concerning why deception and confusion is likely to occur if the applicant achieves registration of its mark. No evidence in answer has been submitted by the trade mark applicant. However, in a letter to this Office dated 10 October, 1997 from Mr. Grant Collins, the applicant made written submissions supporting its case. I am prepared to give this weight as a submission but not as evidence.

Following the dispatch of standard notices to each party which offered the opportunity to be heard in the matter, the opponent’s attorney Mr. Geoffrey Levy of Griffith Hack, Melbourne, made a submission in writing. Both parties waived their right to be heard in favour of a decision on the written record and the matter has been directed to me for decision as a delegate of the Registrar.

As I have now had the opportunity to consider all of the evidence and written arguments submitted, the following summary may assist in the discussion below. It appears that the opponent, has sold coin-handling devices using the trade mark COINCO from as early as 1980 in Australia. From 1969, various distributors had imported the goods for re-sale under the COINCO mark but, in 1980, the opponent established its own Australian branch office to promote, market and sell the goods. From 13 May 1981, the opponent has had a registration, number 360155, for the mark COINCO in class 9 covering coin-handling devices. Such devices are discrete units inserted into coin operated vending machines to accept coins and give change. The present application was made on 29 February 1996. The opponent has since filed another application, number 714620, on 8 August 1996 for the trade mark COINCO GLOBAL, also in class 9, for a specification of “vending machines and bill validators”.

Discussion

There were five grounds raised by the opponent in the notice of opposition. The evidence did not support the first two grounds dealing with sections 41 and 42 of the Act but concentrated on the grounds involving sections 44 and 60.

Neither of the former grounds were developed by the opponent and I find in favour of the trade mark applicant in respect of these grounds.

The third ground relied upon by the opponent, under s.44 of the Act, claimed that the application should be rejected because of a conflict with their earlier registered mark, COINCO, numbered 360155.

In order for opposition to succeed on this ground, three factors must be shown. These are:
(1) that the trade marks are either substantially identical or deceptively similar,
(2) that the opponent’s trade mark has the earlier priority date, and
(3) that the goods of both trade marks are similar.

The second and third of these requirements demand little intellectual effort to reach a conclusion. The date of application of the opponent’s mark 360155 was 13 May 1981, whilst the present application was made on 29 February 1996. In respect of the similarity of goods, I note that the opponent’s goods, being coin-handling devices, may form part of the applicant’s saleable items, being coin operated machines. The factors I must consider from established tests stem from cases decided in the courts, namely, JohnCrowther & Sons Ltd’s Application 65 R.P.C. 369 at 372, and Jellinek’s Application 63 R.P.C. 59 (the PANDA case). These are the nature of the goods, the uses thereof, the trade channels through which they are bought and sold, the characteristics of the goods, their origin, their purpose, whether they are usually produced by the one and the same manufacturer, and whether those engaged in their manufacture and distribution are regarded as belonging to the same trade. Having weighed all of these factors, I am of the opinion that as one good could be a part or fitting of the other, the goods have sufficient nexus to be considered similar.

The remaining factor to be determined, for this ground of opposition to be successful, is whether or not the trade marks are either substantially identical or deceptively similar.

The opponent’s attorney argued that the dominant idea in both the applicant’s and the opponent’s marks is embodied in the prefix COIN-. He said that the suffixes add little to the overall idea conveyed by the two marks. He further argued that the impression based on the imperfect recollection by a person of the trade mark COINCO, would be likely to give rise to deception or confusion in that person’s mind when presented with the mark COINTECH on similar goods. He claimed that analogies of deceptive similarity could be found between the findings for MY MELODY DREAMS and MY MELODY (Re Application by Eau de Cologne- & Parfumerie-Fabrik Glockengasse No 4711 Gegenuber der Pferdepost von Ferd Mulhens 17 IPR 540)and for MOTHER DEAR and MOTHERCARE (Mothercare U. K. Ltdv. Serry (A’asia) Pty Ltd 21 IPR 469).

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....

A comparison of the opponent’s mark COINCO with the present application for the composite mark, which contains the word COINTECH, leads to a recognition that differences between the marks are clearly identifiable. Not only is there a difference between the suffix endings of -CO and -TECH but the word in the present application is contained within a device. Thus, I do not find the marks to be substantially identical.

On the question of deceptive similarity I must first turn to the tests described in Australian Woollen Mills Ltd. v. F. S. Walton & Co. Ltd. (1937) 58 CLR 641 at 658:

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.

Further to this comparison, I turn to the words of Lord Radcliffe in de Cordova v. Vick Chemical Co. 68 R.P.C. 103 at page 106 where he stated:

The likelihood of confusion or deception .... is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him .... It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.

These tests encompass the so-called “doctrine of imperfect recollection”. I believe that the general visual recollection of the present trade mark would be the COINTECH mark with a device of a COIN whilst the opponent’s trade mark, being a word mark, would be recalled as COINCO.

Where one of the trade marks has been seen on the goods, I do not consider that it would be so imperfectly remembered as to be confused with the other visually. This is particularly so when one contains the device element of a coin viewed from an angle and the word AUSTRALIA, in addition to the word COINTECH, whilst the other is for the word mark COINCO only. One mark contains eight letters and the other six, and only the first four are common. I must also add here that the common letters COIN- have some descriptive connotation in respect of the goods, either for the “coin operated machines” or the “coin handling devices”. In this, the prefix must, to some extent, be considered common to the trade. I consider that only persons exercising “exceptional carelessness or stupidity” could visually confuse the marks COINCO and COINTECH with device, in relation to the goods indicated above.

Spoken description, however, is another issue. I believe that reference in normal speech, to the present application would be by the word COINTECH, or possibly in some circumstances by COINTECH AUSTRALIA. The opponent’s mark would, of course, be referred to as COINCO. Neither word has a direct dictionary meaning, being coined words, but neither suffix is totally devoid of meaning, and many persons might ascribe some understanding to the coined words. CO, of course, is a recognised abbreviation for “company” and so COINCO could conceivably be remembered as the “coin company” trade mark in the minds of some. Similarly, as TECH has meanings involving recognised abbreviations for “technical” and “technology”, COINTECH could be remembered as having reference to “coin technology” or that the goods were technically superior in some way, in their operation in relation to the coin mechanism.

Despite the common “tendency of persons using the English language to slur the termination of words”, as observed in London Lubricants (1920) Ltd’s Application 42 R.P.C. 264 at 279, I cannot accept that COINCO and COINTECH could be so confused. To some extent, both words have a suffix which is pronounced with a definite sound, -CO with the CO as sounded in the first two letters of “coconut” and -TECH as sounded with the harsh “tek” pronunciation in the prefixes of “technical” or “technology”. I believe that it would be “drawing a very long-bow” to claim confusion could occur between the spoken words COINCO and COINTECH from this consideration.

I also note that the annexures “RB-1” to “RB-11” show examples of the opponent’s COINCO mark in use. The depictions show the prefix COIN- in black lettering (or, in some cases, white lettering on a black background) whilst the suffix -CO is shown in red lettering. This actual use of the mark in the market-place further assists in differentiating it from the applied for mark, by drawing attention to the possibility that the opponent’s mark could consist of a conjoining of two words COIN and CO. A person interpreting the opponent’s mark in this way would be more likely to pronounce the suffix -CO in a clearer manner rather than by any tendency to slur the end of the word. Thus, the examples of the mark in use support the differences between the opponent’s mark and the present mark, rather than add any emphasis to possible deception or confusion.

In his written submissions, Mr. Levy commented that the findings of deceptive similarity for MY MELODY DREAMS and MY MELODY and for MOTHER DEAR and MOTHERCARE, both supra, are analogous to the present case. I disagree. I believe that these cases are clearly differentiated from the present case for the following reasons. Firstly, MY MELODY is wholly contained within MY MELODY DREAMS, a factor clearly not present for the comparison of COINCO and COINTECH. Secondly, the phonetic similarities of MOTHER DEAR and MOTHERCARE are relatively more pronounced than in the present comparison.

From the foregoing, I find that the subject mark is not deceptively similar to the opponent’s COINCO trade mark.

Because I have found that the trade marks are not substantially identical, nor deceptively similar, it follows that the opposition is not successful in terms of s.44 of the Act due to the prior registration of the opponent’s mark 360155.

The other trade mark relied upon in its opposition under s.44 is in respect of application number 714620 for the trade mark COINCO GLOBAL. In this instance, however, the present application was filed on 29 February 1996 whereas 714620 was filed on 8 August 1996. Therefore, the present application has the earlier priority date. On this basis, I find that the opposition fails in terms of s.44 of the Act. I also note in passing that the present application was not raised during examination as a barrier to the acceptance of 714620 under s.44.

The fifth and final ground of opposition introduced the concept of the consideration of the prior reputation of the opponent’s mark COINCO (360155) in terms of Section 60 of the Act. This is that, because of use by the opponent, use of the trade mark COINTECH by the applicant would be likely to deceive or cause confusion.

In his written submissions on behalf of the opponent, Mr. Levy has indicated that because s.28(a) of the Trade Marks Act 1955 was the forerunner of s.60 of the 1995 Act, and since s.28(a) did not specifically require deceptive similarity between trade marks to be shown as a necessary condition, then nor should it be required for s.60. He also argued that the basic requirement to be tested under s.60 was that the use of the applied for mark would be likely to deceive or cause confusion by reason of the reputation enjoyed by the first mark. This, he said, was apart from any test of deceptive similarity of marks as required under s.44 of the present Act. I cannot agree with this conclusion for the following reasons.

Section 60 of the present Act reads:

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.

A reading of s.60(b) immediately directs attention to the words “because of the reputation of that other trade mark”. Which other trade mark? The only logical answer to this question is the “other trade mark” referred to in s.60(a) which is linked to paragraph (b) by the word “and”. Clearly, from the material in that paragraph, the “other trade mark” must be shown to be either substantially identical with, or deceptively similar to, the present mark for s.60 to support the opponent’s argument.

The attorney argued that s.60 should not take into consideration a requirement of deceptive similarity between the applied for mark and the mark with prior reputation, as would be required under s.44. However, the actual tests not required under s.60 which are required under s.44, involve similar goods or closely related services, and the priority date of the second mark - that is, the mark with a prior reputation may be an unregistered trade mark.

Notwithstanding this, the tests involving substantial identity or deceptive similarity are certainly required under s.60. As I have already found that COINCO and COINTECH are not deceptively similar, under s.44 above, I also find that the opposition is not successful on this ground. Having thus found, I do not intend to pursue the other leg of the requirement of s.60 involving the obligation on the opponent to provide evidence of some prior reputation in use of the trade mark COINCO.

Conclusion

From the foregoing, I have found that the opponent has not succeeded on any of the five grounds relied upon in the notice of opposition. Accordingly, as the delegate of the Registrar, I now dismiss this opposition, and subject to any appeal from this decision, the application may now proceed to registration.

Don Nancarrow
Senior Examiner

21 April, 1998.