H & R Johnson Tiles Limited v Duramax, Inc
[1999] ATMO 119
•25 November 1999
TRADE MARKS ACT 1955
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS, WITH REASONS
Re:Duramax, Inc and applications 610932 and 610933 to register the word JOHNSONITE in Classes 19 and 27 and opposition thereto by H & R Johnson Tiles Limited.
Background
On 6 September 1993, Duramax, Inc., (the applicant), an Ohio Corporation of the United States of America filed applications 610932 and 610933 to register the trade mark JOHNSONITE in respect of:
Class 19
Construction materials comprising vinyl or rubber stair nosings, cove base and cove base end strips (not of metal), stair treads (not of metal), stringer material (not of metal) and edging strips, bumper guards and suspension pads in this class
Class 27
Rubber floor coverings and rubber landing mats
(hereinafter 'the specified goods')
Following examination of the applications, they were advertised as accepted on 16 March 1995 - thus, as provided by section 241 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to govern this application.
On 13 September 1995, after seeking (and receiving) an extension of time in which to do so, notice of opposition was filed by H & R Johnson Tiles Limited (the opponent) of the United Kingdom.
Evidence in support of the opposition, evidence in answer, evidence in reply, further evidence and evidence in reply were filed and served as allowed by the Act and regulations.
I heard the issue, as a delegate of the Registrar of Trade Marks, in Sydney on 15 October 1999. Mr Stephen Burley of Counsel represented the opponent and Ms Carmen Champion of Counsel represented the applicant.
The evidence
The evidence in this issue has particular and immediate bearing on the way both arms of my decision turn out. I am therefore obliged to catalogue, discuss, critique (where necessary) and analyse the evidence at some length.
The evidence in support of the opposition comprises a statutory declaration by Martin Keith Payne, (the Payne 1 declaration) with three exhibits.
The Payne 1 declaration
Mr Payne states that he is finance director of the opponent. He avers that the trade mark JOHNSON (the opponent's trade mark) has been used in the United Kingdom by the opponent since 1901. The opponent's trade mark is its house mark and is often referred to as JOHNSON or JOHNSON TILES.
The opponent's trade mark is used in relation to ceramic tiles including floor and stair tiles, and related products and has been used in Australia since at least 1924. The declarant then gives yearly turnover figures for the years 1989 to 1993 that run into many millions of dollars per year.
Mr Payne provides a copy of a registration certificate (Exhibit 1) showing the opponent is registered proprietor of Australian trade mark registration number 588913 JOHNSON covering ceramic tiles.
Mr Payne then states his opinion that the goods of these applications and those encompassed by the opponent's registration are the same and similar goods and that confusion is likely to occur through the similarity of the opponent's trade mark to the trade mark of the applicant.
The declarant then refers to literature appended to his declaration (Exhibit 2) which illustrates some of the opponent's product range which includes tiles for floors and stairways and fittings therefor including step treads, edgings and drainage channels.
Exhibit 3 to the Payne declaration is some literature obtained from the USA depicting the JOHNSONITE product range of the applicant. It shows rubber floor tiles, rubber stair treads, risers, wall bases, stair nosings, edgings and so on.
The evidence in answer consists of a statutory declaration by Raymond T Warner (the Warner 1 declaration).
The Warner 1 declaration
The declarant is Vice President of the applicant. Mr Warner explains that the applicant is the successor to a company previously known as The Johnson Rubber Company (hereinafter 'JRC'). The company was founded in 1895 and has since conducted business continuously. Although the name of the corporation was changed to Duramax, Inc, there is still a division called JRC and another division called Johnsonite.
I digress to note that other evidence shows that the applicant was founded in 1895 as Udal-Shellito Company and became JRC in 1937. The impression that one might receive from Mr Warner's statement, that the Johnson Rubber Company had traded as such since 1895, would thus not have been accurately formed.
The Johnsonite division, says Mr Warner, makes a variety of products for flooring systems. These include vinyl and rubber tiles and sheet floor coverings, vinyl and rubber stair nosings, underfloor suspension pads, bumper guards, cove bases and cove base end strips, stair treads, stringer material and edgings strips, rubber landing mats, caulking compounds and the like.
These products are sold in the United States, Canada and Mexico. And the trade mark has been used on these goods within the United States since 1954.
The trade mark JOHNSONITE has been registered in the United States under trade mark registration number 867337 which was filed on 10 March 1967 and registered on 1 April 1969 (Exhibit RTW.1). The trade mark JOHNSONITE, avers Mr Warner, is also registered in Brazil, the Benelux countries, Canada, France, Germany, Italy, Japan, South Korea, Morocco and Mexico - all for vinyl and rubber tiles such as are used in flooring systems. This latter claim is unsupported by exhibits and I weight it accordingly.
The declarant goes on to state that goods bearing the trade mark JOHNSONITE have been exported to Australia since at least February 1989. Exhibit RTW.2 to this declaration is a photocopy of an invoice dated 27 February 1989 made to G Knowles Pty Limited of Perth, Western Australia. The invoice number identifies, avers Mr Warner, a white long-toe wall base - a strip which is connected to the base of a wall having an extending toe which projects outwardly from the wall near its base.
I will digress from this declaration at this stage and observe that the invoice is from the Johnson Rubber Company Flooring Division (hereinafter JRCFD). It is not clear from the declaration when this entity ceased existence and the Johnsonite Division came into being - or, indeed, whether this inference of succession is correct. The trade mark which allegedly appeared on the goods is not mentioned on the invoice.
Mr Warner then attests that, while goods bearing the trade mark JOHNSONITE have been sold in Australia, details as to levels of sales are not held by the applicant and the applicant uses outside distributors who distribute the product to various places including Australia. The applicant, says the declarant, does not deal directly with the customers to whom the outside distributors sell their products.
I again digress to admit to some confusion on the point Mr Warner is making. His latter statement appears to be at odds with the previously mentioned invoice that appears to be tendered directly to an Australian company by a division of the applicant. Or might this possibly suggest that JRCFD (who presented the invoice) is thus not connected with the applicant despite the similarity in names? Or is it possible the declarant is stating, somewhat circuitously, that the applicant does not have access to the records of its own divisions who undertake the distribution of their product? This, however, would lead to the conclusion that the applicant views its own divisions as being 'outside distributors' and flies in the face of the fact that, despite these seeming contradictions, the applicant has somehow presented as evidence one of the invoices that it (by the logic of its own statement) can't have.
Returning to Mr Warner's declaration, he continues by averring that the applicant does sell goods aimed at the domestic market but the majority of goods sold under the trade mark JOHNSONITE are used in commercial flooring. The specifiers of products from the marketplace are often architects and buyers who are professional and are well aware of the JOHNSONITE trade mark and the goods sold under it by the applicant. The applicant has never made ceramic tiles and has no intention of making them in the future
I must again digress to note my further confusion as to what the declarant is stating. I had understood from Mr Warner's prior statements that the goods were made and sold by the Johnsonite Division - if this is so, his statement that the bulk of goods sold by Duramax are for the commercial market appears to lack clarity or relevance. What appear to be more relevant questions are whether the goods made by the Johnsonite Division are for the commercial market and whether the Johnsonite Division might make ceramic tiles.
Next, Mr Warner states that the opponent applied to the United States Patent & Trademark Office (hereinafter USPTO) on 30 March 1993 to register its trade mark JOHNSON for ceramic tiles and was registered on 16 August 1994 as US registration 1849924 (Exhibit RTW.3). In order to secure registration of the trade mark, the opponent filed a Declaration attesting to the use of the trade mark JOHNSON within the United States since at least 1950 - a photocopy of this Declaration is within the file history of the registration (Exhibit RTW.4).
Mr Warner says that despite the long co-existence of the trade marks JOHNSON and JOHNSONITE in the United States marketplace, he is not aware of any instances of confusion between the goods of the applicant and the opponent.
In conclusion, Mr Warner avers that the gross worldwide sales of goods sold under the trade mark JOHNSONITE for the years 1994 to 1996 total some $150 million (US). As Exhibit RTW.5, Mr Warner attaches product brochures of the flooring goods sold under the trade mark JOHNSONITE for the years 1993, 1995 and 1997.
I will mention here that the product brochures give United States and Canadian addresses for the applicant and details of how to order goods for customers within the United States or Canada. The brochures do not give order or contact details for customers elsewhere in the world. I would conclude from this that either the applicant does business solely within North America - particularly, within the United States and Canada, or that the applicant only does business sporadically with the rest of the world, or that it has other brochures which are not in evidence.
The evidence in reply comprises statutory declarations by Mr Leon Fink, (the Fink declaration), Richard Jonathon Travers Ellis (the Ellis 1 declaration), George Theodore Pappas (the Pappas declaration), Ian Brumby (the Brumby 1 declaration), Melissa Louise Anthony (the Anthony declaration) and a further declaration by Richard Jonathon Travers Ellis (the Ellis 2 declaration).
The Fink Declaration
Mr Fink is a qualified practising architect who has been associated with the building industry in Australia for 30 years. He says his duties as an architect involve purchasing building products on behalf of his clients, or specifying the use of particular products on the plans he prepares. Mr Fink states his familiarity with a wide range of building products and finishes and the trade marks these are sold under. The products involve the specified goods.
This declarant next avers as to his knowledge of the opponent's JOHNSON trade mark which he has associated with the ceramic floor and wall tiles of the opponent for a period of twenty years.
Mr Fink is not aware of any other company or companies which use the trade mark JOHNSON on the same or similar products as ceramic tiles and has no knowledge of the trade mark JOHNSONITE in Australia used on the goods as applied for on the application. The declarant concludes by giving his opinion that, given his awareness of the JOHNSON trade mark, if he found the JOHNSONITE trade mark used on the specified goods, he would think it likely that there was some connection between the JOHNSON and JOHNSONITE products and that, therefore, the use of the JOHNSONITE trade mark will lead to confusion in the marketplace.
The Ellis 1 Declaration
Mr Ellis is a patent attorney who is a consultant to Baldwin Shelston Waters of Sydney. His first declaration attests to the copy attachment to his declaration being the declaration of David Walker, the original being lost within the postal system.
The Walker Declaration
Mr Walker has been a qualified architect at the firm of Walker & Yerondais Pty Ltd for ten years and has been associated with the building industry of twenty years. He states that he is responsible for the selection of fixtures, finishes and colour schemes for designs produced. This involves the specification of products, amongst which occur the specified goods.
Mr Walker states his familiarity with the JOHNSON trade mark used by the opponent and his awareness of it over a period of some twenty years.
The declarant says that he is not aware of any other company using the trade mark JOHNSON on ceramic tiles or similar products and that, further, he is not aware of any use of the trade mark JOHNSONITE on the specified goods in Australia.
In conclusion, Mr Walker states his opinion that, given his awareness of the JOHNSON trade mark, if he found the JOHNSONITE trade mark used on the specified goods, he would think it likely that there was some connection between the JOHNSON and JOHNSONITE products and that, therefore, the use of the JOHNSONITE trade mark will lead to confusion in the marketplace.
The Pappas Declaration
Mr Pappas is the Finance Director of Johnson Tiles Pty Ltd (hereinafter JTPL). It is unstated in the Pappas declaration what the relationship of JTPL to the opponent is but, contextually, it appears that the opponent is 'parent' of JTPL.
Mr Pappas states that he has known of the opponent's trade mark being used on tiles in Australia for twenty years. He is not aware of use of the trade mark JOHNSON on tiles other than by JTPL or its principal, the opponent. In particular, he avers, he has not encountered use of the trade mark JOHNSONITE on floor coverings or similar goods, and, if he did, he should assume that such goods were either connected with JTPL or the opponent. This declarant then states his opinion that any customers of JTPL [and presumably the opponent] who encountered the opposed trade mark would also reach the conclusion that such floor coverings were connected with JTPL or the opponent.
Drawing my attention to the use of the opponent's trade marks JOHNSON and JOHNSON TILES, Mr Pappas appends a Johnson Tiles catalogue to his declaration along with a list of distributors. (Exhibits GTP1 and GTP2).
Before moving on to the next declaration, I observe that the catalogue shows JTPL has representative offices for each of the Australian mainland States with Tasmania and the territories being looked after from other States. The list of distributors is very large and reflects an Australia-wide distribution.
The Brumby 1 Declaration
Ian Brumby, in his first declaration, says that he is a Registered Architect with a Batchelor of Science in Architecture, Batchelor of Architecture (Hons) and Graduate Diploma in Urban Estate Management. He owns and operates an architectural practice known as Brumby Associates Architects, of Annandale.
Mr Brumby lists his extensive experience in the architectural field and explains that his main responsibilities in the firms where he has worked is in the specification and documentation of a broad range of commercial, industrial, educational, health, community and multi-residential projects where a detailed knowledge of the correct use and specification of building materials and products was essential.
This declarant says that he has worked as the principal of Brumby Associates since 1992 and the practice focuses on the design, documentation and specification of commercial and residential projects. To this end, Mr Brumby uses a products database of over 5000 records and subscribes to Natspec, the largest supplier of specification material in New South Wales. Mr Brumby says he has a strong understanding of building products available due to the importance of this knowledge in a small architectural practice.
In further explanation, Mr Brumby states that, because architects are frequently responsible for the selection of project materials and finishes (and specify them by brand name), architects are frequently a significant contact point for sales representatives. They are a major trade channel through which such goods are sold to project purchasing officers for major projects.
Next, Mr Brumby says that he is aware of Johnson Tiles made by JTPL. He says he has been shown copies of these opposed applications (Exhibit A) and that he has no knowledge of the brand name JOHNSONITE in Australia in relation to flooring or other building products.
The first time he saw a JOHNSONITE catalogue was on making this declaration and he is not aware of goods being distributed in Australia under the trade mark.
While acknowledging ceramic tiles are not included in the specified goods, Mr Brumby says that he thinks that such tiles and the specified goods are related goods because they are used interchangeably in some areas of building projects. After giving some examples of such areas, Mr Brumby states his belief that this would be particularly so in residential homes, nursing homes, schools, golf clubs and gyms. Certain trade outlets retail both tiles and rubber flooring materials (he gives an example) and some kitchen suppliers also handle both ceramic and rubber tiles. Mr Brumby draws my attention to the fact that some department stores such as Harvey Norman handle a wide variety of floor finishes and states his belief that it is a likelihood that some of the wholesalers and retailers of JTPL tiles would also sell the specified goods. In the last of his reasons for thinking that it is likely that the goods in question will be seen as being related, Mr Brumby notes that there is a general trend for the manufacturers of building materials to offer a diverse range of goods. Large companies such as CSR, Boral or James Hardie handle a diverse range of building products. This leads to an expectation that at least some manufacturers of ceramic tiles would also make and distribute the specified goods.
Next, Mr Brumby comments on the etymology of the word JOHNSONITE. I take these comments as being directed to his own understanding of the trade marks and an explanation of why he would see the trade marks as being related. These comments are, of course, his opinion - they carry little weight apart from being an explanation of why he would see the trade marks as related.
Finally, Mr Brumby recounts a search that he performed on an Internet building-materials data-base called TASLIB searching for words with the prefix JOHNS. Of the twelve records that he found, two were those of the opponent's trade mark and none was that of the applicant's.
The Anthony Declaration
Ms Anthony is a paralegal employed by Baldwin Shelston Waters. Her declaration details several conversations she had over the telephone with salespersons at various branches of a major supplier of floor coverings. The first was with a gentleman identified as David at a place called Browns Plains in Queensland. He confirmed that the store sells both ceramic and rubber tiles and accessories. The second conversation was with the same gentleman who sent brochures of the ceramic and rubber tiles sold at the store (Exhibit A).
The third conversation was with an unidentified female at a town called Gatton who confirmed the store sold ceramic and rubber tiles and supplied the firm's Internet address from which Ms Anthony obtained a list of all stores of this chain (Exhibit B).
The fourth conversation was with Kerry at the store's head office who was asked if all stores sold ceramic and rubber tiles. Kerry brought a gentleman called Sid to the phone who stated that those stores that did not stock rubber tiles could obtain them.
The Ellis 2 Declaration
The Ellis 2 declaration puts into evidence Exhibit RJTE 1, a declaration by Keith Payne (the Payne 2 declaration which relates primarily to proceedings under the United Kingdom Trade Marks Act in oppositions to registration) and Exhibit RJTE 2, an investigator's report.
The Payne 2 Declaration
Mr Payne refers to an earlier declaration of his own and a declaration of Raymond T Warner (evidence in the United Kingdom proceedings but which appear to be analogues of the Payne 1 and Warner declarations in these proceedings).
Mr Payne adverts to a passage in the UK declaration of Mr Payne (in that declaration it appears in paragraph 9 but in the Australian analogue it appears in paragraph 12) which relates to the United States marketplace:
British
… there has never been one instance of confusion in the market place of which I am aware between any products bearing the name JOHNSONITE or the Johnson Rubber Company with the trade mark owned by H & R Johnson Tiles Limited
Australian
Despite the long co-existence of the trade marks JOHNSON and JOHNSONITE, there has never been one instance of confusion in the marketplace of which I am aware between any products bearing the name JOHNSONITE or The Johnson Rubber Company with the different goods, namely ceramic tiles, bearing the trade mark JOHNSON owned by H & R Johnson Tiles Limited.
Mr Payne states that the lack of confusion between the applicant's goods and those of the opponent is not surprising in view of the fact that the current marketplace overlap is confined to the United States and Canada and the specialty of the opponent's goods within those markets. Mr Payne goes on to explain that the opponent is the only manufacturer in the world to produce 'encaustic tiles'. Encaustic tiles were a popular form of decoration during the nineteenth century and were used to decorate the insides of many public buildings. These tiles often bear intricate designs and are comparatively expensive to produce (Exhibit MPK 1). The opponent retains many of the original designs for these tiles and 'reproduces' encaustic tiles for the refurbishment of public buildings including those in the United States and Canada. The declarant states that the opponent has supplied encaustic tiles to replace existing damaged tiles in the Smithsonian Institute, the Capitol Building and in the Provincial Parliamentary Building in Quebec. Most of the sales of tiles in the United States by the opponent have been, says Mr Payne, in relation to encaustic tiles.
I will digress here to note that I am uncertain as to what the word 'most' denotes in this context - it could mean that nearly all the sales have been of encaustic tiles, or, alternatively, that greater than half of the sales have been of encaustic tiles.
Mr Payne goes on to contrast the United States marketplace with that of the United Kingdom (and by analogue that of Australia) in which countries the sales of encaustic tiles form a very slight fraction of the total tile sales of the opponent. In these marketplaces the opponent sells into the domestic and public/institutional marketplaces where they would be in direct contact with the rubber tiles and accessories of the applicant.
Mr Payne goes on to outline some of the history of the opponent which replicates that which I have already detailed, above, from the Payne 1 declaration. He then specifies the worldwide sales and advertising figures for the opponent - these figures are very substantial.
After further statements that are uniquely couched in terms of the United Kingdom proceedings and unrelated to these proceedings, Mr Payne refers to the Warner declaration submitted to the Australian Registrar of Trade Marks. He draws attention to Mr Warner's statement that:
While Duramax does sell goods aimed at the domestic market, the majority of goods sold under the trade mark JOHNSONITE are used in the commercial flooring industry.
I have already noted, above, my own reservations about this statement. Mr Payne says the fact that the applicant's goods are rubber and vinyl floor coverings makes them difficult to lay and, thus, are more likely to be sold to builders and professional layers and therefore directly compete with the opponent's goods in the public and institutional building construction industries. Mr Payne then lists various companies who produce a range of rubber and vinyl flooring products similar to those of the applicant with whom the opponent direct competes in the marketplace. He further mentions some tension between ceramic tile manufacturers and a rubber tile maker over interpretation of hygiene rules or standards and the subsequent claimed benefits over rubber (as opposed to ceramic) tiles within the UK.
The balance of the Payne 2 declaration appears to be either relevant only to the proceedings within the UK, or sufficiently covered elsewhere in evidence, or to be opinion about the likelihood and sources of confusion between the trade marks.
The Investigator's Report
The investigator's report does not appear to have a signature and the identity of the person who has prepared the report is not apparent. I weight it accordingly. The report originates from an English company called Farncombe International Limited
It details investigations during 1998 into whether the opposed trade mark has been used in England. In their background research into the applicant, the investigators found that the applicant company was founded in 1895 [the report says 1985 but I take this as a transposition of numbers] as the Udal-Shellito Company and became Johnson Rubber in 1937. Duramax was formed in 1981 with Johnsonite as one of its divisions.
Dealings between the investigators and a United States customer services officer (CSO) of the applicant were by telephone and facsimile letter and were under a pretext. In brief, the investigators state (and they exhibit evidence to their statement which tends to support these conclusions) that during the course of their dealings with the CSO they established:
the applicant has no United Kingdom distributor
there had been one small sale of goods in the United Kingdom
the CSO stated that there had been no sale to Australia
international sales were handled at Johnsonite headquarters in Idaho
[This statement tends to conflict with that of Mr Warner who stated that international sales were by distributors and that there had been sales in Australia.]
The further evidence consists of statutory declarations by Joanne Christine Martin (the Martin declaration) and two statements by Raymond T Warner (the Warner 2 and 3 declarations).
The Martin Declaration
Ms Martin is a solicitor in the employ of FB Rice & Co - the legal representatives of the applicant. Ms Martin attaches to her declaration the results of a search she did on the Australian Yellow Pages® database - this is to try and counter the evidence in the Brumby declaration where the declarant had referred to the TASLIB database and a search he had performed on it.
The exhibit is a listing of entries in the Yellow Pages® with the prefix JON- or JOHN. I do not believe that much is to be gained from a detailed analysis of these. Most appear to be irrelevant - they are for people whose forename or surname incorporates these word elements, such as John S Park or GP Meiklejohn or Dominic Johns. Some are listed as cork merchants or parquet sanders and polishers, some as carpet retailers. It is difficult to assess whether some of the entries are for the makers, suppliers, wholesalers, retailers or layers of the specified goods. Many appear to be listings for the opponent's Australian outlets. Accordingly, the relevance of this evidence seems to be quite low.
As my decision turns out, I do not consider that much turns on this aspect of the evidence.
The Warner 2 Declaration
This declaration does not appear to have been properly executed, having been witnessed by a person who is unidentified and untitled and is thus not apparently a person qualified to witness statutory declarations as is allowed by regulation 63 of the Trade Marks Act 1955. It appears that I must regard the statement as being unsworn and weight it accordingly.
Mr Warner again draws my attention to the range of rubber flooring materials produced by the applicant's Johnsonite Division.
He next mentions the differences between rubber and ceramic flooring materials and appends a list of differences between Johnsonite rubber or vinyl tiles and ceramic tiles. While most of the differences listed here are technical ones, I note Mr Warner claims one of the differences is that, on the one hand, Johnsonite Rubber/Vinyl floor tiles can only be purchased through a distributor/wholesaler in Australia whereas ceramic tiles, on the other hand, can typically be purchased by a retail dealer directly from a manufacturer.
Mr Warner states that the applicant, through its division Johnsonite, presently markets its product through a wholesale distributor, but its future plans entail targeting specific retail audiences. The marketing plan of Johnsonite is set out in a paper, dated 21 June 1999, called "Johnsonite Marketing" and is Annexure RTW4 to the statement. This annexure is a one page A4 sheet on company letterhead, apparently off a word processor, and is, I presume, a precis of another larger marketing plan. My experience tells me that marketing plans are generally more complex documents than is this paper and that, therefore, it is likely the marketing plan here is a synopsis prepared for this issue. The plan mentions the fact that Johnsonite has shipped and invoiced goods to G Knowles Pty Limited of Osborne Park in Western Australia. This unsworn claim is not supported by evidence - there is evidence in the form of an invoice that somebody who I have identified as JRCFD (but whose relationship with either Johnsonite or the applicant is unclear) invoiced Knowles in 1989. The person invoicing the goods was thus not Johnsonite and was neither, as was claimed in the Warner 1 declaration, the applicant.
The balance of this 'declaration' comprises reference to various products of the Johnsonite Division, supported by product brochures in annexures RTW5 through RTW13.
The Warner 3 declaration
A further improperly executed declaration by Mr Warner (the Warner 3 declaration) immediately follows the Warner 2 declaration. This too has been witnessed by a person who is unidentified and untitled and is thus not apparently a person qualified to witness statutory declarations as is allowed by regulation 63 of the Trade Marks Act 1955. It appears that I must regard this statement also as being unsworn and weight it accordingly.
The statement attaches some product of the Johnsonite division of the applicant and some ceramic tiles for my comparison.
I turn next to the further evidence in reply. This comprises a further statutory declaration by Ian Brumby (the Brumby 2 declaration) and a statutory declaration by Andrew Scott Lockhart.
The Brumby 2 Declaration
Mr Brumby is, as I have previously noted, the principal of his own architectural practice. He supplements his prior declaration by addressing some of the issues raised in the Warner 2 and 3 declarations. The declarant states that the goods in question are often used interchangeably and addresses some of the technical differences in application of the goods raised in the Warner 2 declaration. For example, where Mr Warner had claimed that ceramic tiles are slippery whereas rubber tiles are not, Mr Brumby observes that ceramic tiles are available with low slip coefficients and can be provided with a non-slip surface texture.
Mr Brumby then recapitulates his observations (made in the Brumby 1 declaration, above) about the conclusions he would make if he encountered the JOHNSONITE trade mark as a result of a data-base search. He further comments that, just as he would think that a "Sydneyite" is a person from Sydney, so would he conclude a JOHNSONITE flooring product is a product from the company that manufactures JOHNSON tiles.
The Lockhart Declaration
Mr Lockhart is a legal practitioner employed by Baldwin Shelston Waters, patent attorneys, who have the carriage of this opposition for the opponent. Mr Lockhart refers to the Martin and Warner 2 and 3 declarations.
This declarant then says that he had further discussions with Mr Brumby about the Brumby 2 declaration on or about 30 August 1999.
In particular, Mr Brumby and Mr Lockhart discussed the types of data-base which would be used by architects to source information about building products in Australia and was referred to the home page of the Royal Australian Institute of Architects homepage on the Internet ( at exhibits ASL1, ASL2 and ASL3 to this declaration are the homepage, background information on the 'product selector' search engine and details of the search carried out. Briefly, the search - under the prefix JOHNS - brought up references only to the opponent in this issue and to a manufacturer of wrought iron balustrades.
Next Mr Lockhart located the home page of Architecture Media ( Mr Lockhart attaches exhibits ASL4, ASL5 and ASL 6 to his declaration which are copies of the home page, and the results of a search of the online Architectural Product News magazine - firstly for the word JOHNSON and, secondly, for the word JOHNSONITE. In short, in the former search the result was that the only tile manufacturer referenced is the opponent; in the latter search the applicant or its products were not found.
Then Mr Lockhart turned his attention to the TASLIB database referred to in the Brumby declaration. The results of his search were very similar to those in the paragraph immediately preceding this one in these reasons.
Finally, Mr Lockhart attaches a copy of the homepage of the applicant located on the Internet ( The information given on this page confirms the applicant was founded as the Udall-Shellito Company in 1895, became the Ohio Pail Company in 1898, became Johnson Rubber in 1937 and that the applicant was formed in 1981 with Johnsonite being now one of its divisions.
Analysis
Broadly speaking, I find the evidence lodged in support of the opposition is more specific than is the applicant's evidence in support of its application. The generality of the applicant's evidence in support of its position leads me to suspect that the vagueness paints a picture which (while not untrue) is rosier than the situation actually is.
In particular, the declaration and unsworn statements of Mr Warner lend themselves to this type of analysis. His declarations are, in places, very specific and, in others, quite general or vague. His claim that goods bearing the trade mark JOHNSONITE have been exported to Australia by the applicant (or by the Johnsonite division in his later statement) since at least 1989 appear to relate to one sale in 1989. The sale was by JRCFD whose relationship with either the applicant or the Johnsonite Division is unclear.
Mr Warner was also vague as to details of levels of sales in Australia because of the use by his corporation of outside distributors. However, there is no corroborating evidence of this distributorship - indeed the applicant's own evidence in the form of ordering details on its product brochures suggests that sales have been almost totally confined to within North America where they are handled by his own corporation. The one invoice in evidence which is from JRCFD (if this is part of the applicant corporation) supports the view that the applicant occasionally sells its own goods overseas. The opponent's investigator's report (which is unsworn and unsigned and therefore not of great weight) lends some credence to this view.
There is an absence of mention of the applicant's trade mark from the data-bases tendered in evidence by the applicant. This does (while the evidence was intending to demonstrate something else) give weight to the view that the impression one might receive from the applicant's statements, (that sales to Australia had been ongoing), is erroneously formed.
Given the specificity of the applicant's evidence concerning the Johnsonite Division product, I believe that if the details of its claimed distributorship were available, it would have been given in evidence in the same way as was the opponent's.
The large "worldwide sales" claimed by Mr Warner thus appear to be confined to within North America. While not at all untrue, these generalised claims do, as I have noted, paint a picture that is rosier than the situation actually is.
The submissions.
Mr Burley, for the opponent, opened his address of the issues with an outline of the background of this matter, as did Ms Champion. Apart from the grounds of opposition, the background is as discussed above, and I will treat the grounds of opposition as they appear below.
Section 33
Both Ms Champion and Mr Burley addressed the usual tests (which I will address below under the heading 'reasons') of substantial identity, deceptive similarity and 'goods of the same description'. Whereas Mr Burley argued the similarities between the trade marks, and stressed the derivative nature of the word JOHNSONITE and the similarity of the goods, Ms Champion concentrated her focus on the differences between the goods. Drawing my attention to appropriate precedent and evidence, Ms Champion argued that none of the goods are of the same description because of the skills of the usual purchasers, the uses to which the goods are put, the behavioural and proprietary characteristics of the goods, the specialised nature of the goods, and the facts that the goods are not inexpensive and they are not purchased in haste. On the other hand, Mr Burley stressed the propositions that the goods come onto the market through similar trade channels, often are selected from computer data-bases - using similar searches, are available in the same retail outlets, are used interchangeably, are or may be produced by the one manufacturer, are likely to be advertised in close proximity, as in telephone directories, and may be used for the same purposes.
Section 28(a)
Mr Burley drew my attention to the relevant tests in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 at 501-2 and to the comments of the Full Bench of the Federal Court in the appeal that flowed from it: Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd [1998] FCA 1704 (23 December 1998)
Ms Champion submitted the appropriate tests lie in Re Application by Smith Hayden & Co Ltd (1946) 63 RPC 97; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; Jafferjee v Scarlett (1937) 57 CLR 115; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 42 ALR 1; and, Shachihata Industrial Co Ltd v Magic Marker Corp (1984) 3 IPR 519.
Ms Champion further argued, as regards the evidence, I should put no weight on the statements in declarations put in by the opponent that the declarants would assume a connection between the applicant and opponent because of the similarities of the trade marks. She submitted that the statement of an opponent as to the ultimate fact in issue, the likelihood of deception and confusion is to be of little probative value: Jafferjee, at 120-1; Nuts Chocoladefabriek Bv v Cadbury Ltd (1985) 5 IPR 77; and, Re Bayer Products Ltd’s Application (1947) 64 RPC 125.
Further, Ms Champion posited, it is appropriate to consider the approach adopted by the Courts in determining whether conduct is misleading or deceptive, in particular:
· the consequences of the applicant's conduct which must be the actual or likely deception of consumers
· if the resultant state of mind is not the consequence of the conduct of the applicant, then that conduct does not contravene
· if the consumers belief arises from a pre-existing erroneous belief, such as that the opponent has a monopoly in trade marks commencing with the surname JOHNSON, then that erroneous belief interrupts the necessary causal connection: McWilliams Wines Pty Ltd v McDonalds System of Australia Pty Ltd (1980) 33 ALR 394; Parkdale, supra, at 198, 209 and 225.
Discussion and Reasons
Section 33
Insofar as it is relevant to these reasons, section 33 of the Trade Marks Act 1995 provides:
Identical marks
33. (1) Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, of goods of the same description as those goods or of services that are closely related to those goods, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.
There is no dispute as to the facts that the opponent's registration has an earlier date, and the goods are not the same goods. Thus, there are three questions for me to consider: firstly, whether the trade marks in question are substantially identical; secondly, whether those trade marks are deceptively similar; and, thirdly, whether the specified goods are goods of the same description. The first two of these questions and the third are inter-related - in the words of French J in Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999), at para 40:
In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services.
Goods of the same description
As observed by French J of the Trade Marks Act 1995 in Woolworths, supra, at para 39:
The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as "conceptually distinct" but accepted that one could not be addressed in isolation from the second …
The same logic applies to the structure of subsection 33(1) of the Trade Marks Act 1955; accordingly, it is appropriate I consider the third of these questions first.
The background to the tests as to what do constitute 'goods of the same description' and how these tests have evolved and are applied is explained by Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ in Southern Cross, supra:
The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods: see Re Australian Wine Importers Ltd (1889) 41 Ch D 278 at 291; Reckitt & Colman (Aust) Ltd v Boden (1945) 70 CLR 84 per Latham CJ at 90. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in Re Jellinek’s Application (1946) 63 RPC 59; 1A IPR 393. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s case the assistant comptroller elaborated on the observations of Romer J in the following manner.
In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application Romer J classified these various factors under three heads, viz the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasised that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description”.
Re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369 at 372.
Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Aust) Ltd v Boden, supra, at 94 when he said:
What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments.
The evidence shows that it is not customary for the specified goods and ceramic tiles to be made by the same person or company, although there is a suggestion in the Brumby 1 declaration to the effect that the declarant might expect this because of the diversified nature of some of the large suppliers of building materials today.
The nature of the goods is quite different. Ceramic goods and those made of rubber are quite different and, as far as technology has currently developed, it would be difficult to think of them otherwise.
However, the purpose of the goods is very similar, if not, to all intents, identical. Both the specified goods within Class 19 and ceramic tiles are, the evidence shows, used interchangeably for floor, wall, stair, and etc coverings. I believe that the list of technical differences annexed to the Warner 2 declaration demonstrates that, in fact, it is most likely that the specified goods within Class 19 and ceramic tiles are complementary in their usage, based on demands of the required performance criteria and outcomes expected. Far from reinforcing the differences between the goods, these characteristics stress the commonality of usage and purpose. It is apparent that virtually every specialised rubber tile or accessory (as exemplified in the annexures to the Warner 1, 2 and 3 declarations) is met by a ceramic equivalent in the examples annexed to the Payne declaration.
Further, it is apparent that the respective goods come onto the market through the same wholesale houses and retail stores. It would seem that G Knowles Pty Limited of Perth, Western Australia, to who JRCFD (states the Warner 1 declaration) sent an invoice for 'white long-toe wall base', is one such wholesaler. It is unlikely they confine their commercial activities to the specified goods. There is evidence in the Brumby 1 and Anthony declarations that retailers commonly stock both the specified goods in Class 19 and ceramic tiles. It is also worthy of note that the specified goods and those of the opponent would be expected to be listed within the same architectural data-bases and would be found within the same searches of those data-bases as mentioned in the Brumby 1 and 2, and the Lockhart declarations.
In all cases, in both the domestic or industrial or architectural areas, the customers for both sets of goods would appear to be identical.
It further appears that those undertaking to lay, or install the goods would be the same tradespeople, using much the same skills and qualifications.
I have stated that it appears the goods are not commonly made by the same manufacturer. As noted in the quote from John Crowther, supra, no single consideration is conclusive in itself. Neither I think is it necessary that all of the criteria be satisfied - the tests are, ultimately, an attempt to gauge whether the person purchasing the goods will view the trade source as being the same.
In relation to the specified goods within Class 19, I consider them to be goods of the same description as ceramic tiles. As concerns the specified goods within Class 27, I do not regard them as being goods of the same description as ceramic tiles.
Substantially Identical
The classic test for substantial identity is that set out by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414–15:
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 comparing the trade marks JOHNSON and JOHNSONITE, I believe that they are not substantially identical. The Oxford English Dictionary gives some definitions and examples of uses of the 'suffix' -ITE:
-ite, suffix1,
corresponding to F. -ite, L. -€Žta (-€ŽteŽs), ad. Gr. -·*sg|, forming adjs. and ns. (of adj. origin) with the sense ‘(one) connected with or belonging to’, ‘a member of’, Its fem. form is -´si| (-itis). Both the masc. and fem. forms were extensively used in forming technical names of natural products, diseases, etc. Used to form the names of some saccharine substances, glucoses, and other organic compounds, as dambonite, dulciteerythrite, inosite, isodulcite, mannite, melampyrite, pinite, quercite, sorbite, chiefly f. the names of plants; also of explosives, as cordite, dynamite, herculite, melinite; and of commercial products, as ebonite, vulcanite, etc.
Thus, the 'suffix' -ITE does, I consider, immediately suggest that the latter trade mark is derived from the word JOHNSON - but, with this being so, it seems to follow that the latter cannot be identical to the former. It does not appear to stand well that one thing and another, which is derived from it in this way, and so clearly states so, could be said to be identical to each other.
Deceptive Similarity
The tests for deceptive similarity were also stated by Windeyer J in Shell, supra at 415:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. 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 television exhibitions.
Or, in the words of Dixon and McTiernan JJ, in Australian Woollen Mills Ltd v FS 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 descriptions 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, then 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.”
The specified goods are, in the main, rubber floor tiles and accessories and other rubber flooring products and sheets. The goods of the opponent are ceramic tiles. The evidence shows that the consumers for these goods are both professional architects (who specify the goods from data-bases which they use) and more general consumers through retail outlets. Experience tells me the more usual approach with these retail outlets is for customers without any experience in the flooring industry to select tiles with the understanding that they will be laid for the selector by a tradesperson.
The evidence supports the view that goods of the same type as those specified and ceramic tiles are both commonly available through the same retail outlets. Doubtless, if the applicant's goods were to be imported into Australia in any meaningful quantity, these goods, and the trade mark used in relation to them, would appear on data-bases of the types specified in the evidence.
Certain rules of the comparison of trade marks were suggested by Lord Parker (then Parker J) in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777), where he said:
You must take the two words. You must judge of them, both by their look and by their sound. 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 of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion — that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods — then you may refuse the registration, or, rather, you must refuse the registration in that case.
The mark JOHNSONITE does, as I have noted, immediately suggest an origin in, or derivation from, the surname JOHNSON. After close consideration of the similarity of the goods, which I have found to be of the same description, I believe the reaction of the customer who was acquainted with the ceramic tiles bearing the trade mark JOHNSON, would believe that the trade mark JOHNSONITE was used by the opponent to differentiate the specified goods from its ceramic tiles. The similarity in marks and the strongly derivative nature of the mark JOHNSONITE would lead customers to believe that the specified goods had a similar quality and were, at the very least, sold under the aegis of the opponent. The trade marks are therefore deceptively similar.
It follows that, in relation to application 610932(19), the opposition under subsection 33(1) is successful as the goods are of the same description and the marks are deceptively similar. In relation to 610933(27), the goods are not of the same description and the opposition under this section is not successful.
Section 28(a)
In Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd [1998] FCA 1704 the Full Bench of the Federal Court ruled that section 28 of the Trade Marks Act 1955 is to be read disjunctively as relates to issues such as this. Thus, as far as is relevant to this issue, section 28 of the Act reads:
Scandalous and improper marks
28. A mark-
(a) the use of which would be likely to deceive or cause confusion;
shall not be registered as a trade mark.
In Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd [1997] 623 FCA, overturned on appeal but not on these issues, Heerey J summarised the tests under section 28(a) - those as to whether use of a trade mark would confuse or deceive - thus:
(i) The opponent bears the initial onus of establishing a reputation in its mark sufficient to found an objection under s 28: Arthur Fairest Limited's Application (1951) 68 RPC 197.
(ii) However, once this onus is discharged the burden shifts to the party seeking registration: Enno v Dunn (1890) 15 App Cas 252 at 261, Jafferjee v Scarlett at 119.
(iii) The rights of the parties are to be determined as at the date of application for registration (here 27 July 1989): Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 594.
(iv) The onus is on the party seeking registration to satisfy the Court that there is no reasonable possibility of deception or confusion: Southern Cross at 594-5.
(v) In order to defeat the application for registration it is not necessary for the opponent to establish that there is an actual probability of deception which will amount to a passing-off. While a mere possibility of confusion is not enough - for there must be a real, tangible danger of it occurring - it is sufficient that the result of the user of the mark will be that a substantial number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough that the ordinary person entertains a reasonable doubt: Southern Cross at 594-5, 608, The Kendall Co v Mulsyn Paint & Chemicals (1963) 109 CLR 300 at 305.
(vi) In considering the issue of deception all the surrounding circumstances must be taken into consideration. The factors to be considered include the circumstances in which the marks will be used, the circumstances in which the goods will be bought and sold and the character of the probable purchaser of the goods: Jafferjee v Scarlett at 120;
(vii) A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales: Southern Cross at 495. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived: Re Hack's Application (1940) 58 RPC 9 at 103-104.
(viii) It is not enough for the party seeking registration to negative the likelihood of confusion in relation to the actual trade carried on by the opponent at the time of the registration and to the manner in which the latter then uses his mark. The applicant must also take into account all legitimate uses which the opponent may reasonably make of his mark within the ambit of his registration: Reckitt & Colman (Australia) Ltd v Baden (1945) 70 CLR 84 at 94, Southern Cross at 608.
(ix) The question whether the use of a mark is likely to deceive or cause confusion is in the end a question of impression and common sense; it is a "jury question" in which the judge is entitled to give effect to his or her own opinion as to the likelihood of deception or confusion: Murray Goulburn Co-operative Ltd v New South Wales Dairy Corporation (1990) 24 FCR 370 at 377.
For ease of reference, my discussion follows the order of Heerey J's list, above.
The opponent has shown it has its own extensive distributorship and a large network of retail outlets that sell their tiles throughout Australia. The range of ceramic tiles it makes is very wide and appears to be well publicised through colour brochures. There is no doubt the opponent has sufficiently demonstrated its reputation to discharge the initial onus on it in this regard: Arthur Fairest, supra.
In order to discharge the onus now on it, the applicant has drawn my attention to the use of the opponent's trade mark within the United States, and the statement lodged by the opponent at the USPTO attesting to it long use of the trade mark JOHNSON TILES within the USA (concurrent with the applicant's use of the trade mark JOHNSONITE) without complaint of confusion or deception. The opponent has countered this by stating its use of the trade mark JOHNSON TILES within the USA and Canada is mostly limited to encaustic tiles which are so specialised any prospect of confusion or deception is minimal. Commonsense tells me that this latter is a sensible explanation, combined with the fact the opponent's encaustic tiles are used in the restoration of old buildings where one would not normally expect rubber flooring tiles or sheets. The goods therefore exist in distinct areas of the marketplace within the USA and the ensuing lack of any confusion is thus not surprising. It does not appear that the same situation would be likely to exist in Australia where the specified goods and those of the opponent are, or would be, commonly available through the same wholesale or retail outlets and used in areas which might be adjacent to each other: Enno, supra, Jafferje, supra.
The registration date of the opponent's trade mark is 21 October 1992. The date of application for both of these applications is 6 September 1993. However, while the applicant has hinted at ongoing sales in Australia since 1989, I have found it appears JRCFD, whose relationship with the applicant is unclear, shipped just one consignment to a wholesaler in Perth in 1989. There is no evidence of any shipment of goods bearing the mark by the applicant since 1989. Again, the lack of report of confusion or deception is, in these circumstances, to be expected: Southern Cross, supra.
The arguments and evidence put forward by the applicant that there is no reasonable possibility of deception or confusion are not convincing in relation to the entire range of goods for which registration is sought. The opponent has demonstrated its reputation in its evidence - particularly amongst architects, three of who have made declarations to that effect. The weight of the Fink, Walker and Brumby 1 and 2 declarations that the declarants would see the goods bearing the mark JOHNSONITE as being connected with JTPL, or its principal, the opponent, while not conclusive, provides confirmation of a conclusion that such people would find the applicant's mark deceptive or confusing. I note that Ms Champion objected to this evidence; however, there is one recognised exception to the acceptability of evidence as to the likelihood of deception and confusion. Lord Evershed stated it in George Ballantine & Son v Ballantyne Stewart & Co [1959] RPC 273 at 280:
It is no doubt true … that the question whether a mark is likely to cause confusion or lead to deception is the question for the court’s decisions, and accordingly that it is not legitimate for a witness to state or suggest, by way of evidence, expressed in general terms, the answer which it is the court’s duty to give. But it is, in my opinion, going too far to say that a witness expert in the trade which is involved in the proceedings before the court, may not legitimately say, in giving his evidence, that according to his experience of how the business in which he is and has been concerned is conducted, traders or customers will adopt certain characteristics or practices; though the weight to be attached to such evidence must always be a matter for the court.
A similar view was expressed by Lord Diplock in Re “GE” Trade Mark [1973] RPC 297 at 321–2:
My Lords, where goods are of a kind which are not normally sold to the general public for consumption for domestic use but are sold in a specialised market consisting of persons engaged in a particular trade, evidence of persons accustomed to dealing in that market as to the likelihood of deception or confusion is essential. A judge, though he must use his common sense in assessing the credibility and probative value of that evidence is not entitled to supplement any deficiency in evidence of this kind by giving effect to his own subjective view as to whether he himself would be likely to be deceived or confused. In the instant case this would apply to the large industrial electrical machinery … But where goods are sold to the general public for consumption or domestic use, the question whether such buyers would be likely to be deceived or confused by the use of the trade mark is a “jury question” … The judge’s approach to the question should be the same as that of the jury. He, too, would be a potential buyer of the goods. He should, of course, be alert to the danger of allowing his own idiosyncratic knowledge or temperament to influence his decision, but the whole of his training in the practice of the law should have accustomed him to this, and this should provide the safety which in the case of a jury is provided by their number.
The architects who have put in declarations are, in effect, a specialised market for the goods in question. Their evidence about how their market operates and the likelihood of deception and confusion within that market is therefore relevant.
As regards the general consumer, purchasing from retail stores, I must draw my own conclusions from the evidence. My personal experience tells me that such emporia have examples of floor and wall tiles set out with the batch or pattern names of the tiles and trade marks of the makers shown in close proximity to the displays. Knowing of the JOHNSON trade mark and seeing the JOHNSONITE trade mark adjacent or in the same area, the reaction that the trade marks are related ones from the same trade source is, I believe automatic: Southern Cross, supra; The Kendall Co, supra.
It necessarily follows that I must conclude that substantial numbers of people, when seeing, or knowing of, the two products, and their trade marks, would have either a belief, or be caused to wonder, that the products shared a common trade source. Knowing of the JOHNSON trade mark used on ceramic tiles, it is a natural mental step to assume that the derivative mark JOHNSONITE, on the specified goods, would, at the very least, be made under the aegis or licence of the opponent. Another source of this belief or wonder is the likelihood that customers will see the specified goods sold under the JOHNSONITE trade mark as a logical product for ceramics manufacturers to sell, under their aegis, since it is logical that a manufacturer market two products which compete, or complement each other, due to their interchangeability.
In relation to the specified goods, I do not believe that it is enough for the opponent to say, in effect, that the goods are often specified by professionals and those people should know of the difference in trade source. Leaving aside the import of the opponent's architects' declarations, it is probable that architects, knowing of the reputation of the opponent's trade mark, might actually be more susceptible to confusion or deception.
Neither is it sufficient for the applicant to point to one of its sales through a wholesaler, and then at the opponent's representative office and retailer network arrangements, and to argue that the goods at issue (apart from those specified by architects) go onto the market in different ways. The applicant is obliged to take into account all uses the opponent might legitimately make of its mark. This includes the possibility of the opponent selling through the same wholesale houses as does the applicant: Reckitt & Colman, supra; Southern Cross, supra.
As regards the submissions by Ms Champion that go to the conduct of the applicant, these submissions appear to be directed to sections 51 or 52 of the Trade Practices Act 1974 and I take no account of them.
Taking these factors into account, I believe the opponent has established that the use by the applicant of its trade marks would be likely to deceive or cause confusion and, further, that the applicant has not successfully discharge the onus now on it to show its use of the trade mark on the specified goods would not deceive or cause confusion. Accordingly, the opposition under section 28(a) succeeds in relation to both applications.
Decision
The opposition succeeds under subsection 33(1) in relation to application 610932 and also succeeds under subparagraph 28(a) in relation to applications 610932 and 610933. Accordingly, subject to any appeal from my decision, I refuse to register the applications.
Costs
Having been successful, the opponent is entitled to its costs, should it so claim, to be taxed at the official scale.
Ian Thompson
Hearing Officer
25 November 1999
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