Haddonstone Ltd v Haddonstone Pty Ltd - [1994] ATMO 74

TRADE MARKS ACT 1955

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

Re: Opposition by Haddonstone Pty Ltd to the registration of application no. 544564 in the name of Haddonstone Ltd.

This opposition is about the dealings between two former business associates, an English company named Haddonstone Ltd and an Australian one called Haddonstone Pty Ltd. Given the similar names of the two companies I will refer to the trade mark applicant, the English company, simply as "the applicant" and to the opponent as "the Australian company".

The matters which I consider below were the subject of a hearing before me in Sydney on 5.7.94. The applicant was represented by Ms Julia Baird, instructed by Mr Ray Walton, a patent attorney of the firm of Griffith Hack and Co. The Australian company was represented by Mr David Yates of counsel, instructed by Mr Peter Marsh, of the attorney firm of F B Rice and Co. Some aspects of the evidence in this matter are fairly clear, and I have had the assistance of the counsel representing the parties in assembling the relevant facts. These are:

The applicant is the manufacturer in England of various artificial stone products for use in landscaping and architectural work. The products are sold under the trade mark HADDONSTONE. Such products were advertised in English magazines such as Country Life, The World of Interiors and House and Garden. Those magazines had a circulation in Australia of 3000, 4250 and 8000 copies per issue for the years 1986, 1985 and 1982 respectively.

In 1983, a consignment of various stone ornaments, sold under the trade mark HADDONSTONE, was ordered from the applicant by a Mr J.B. Hawkins of Moss Vale, New South Wales. Mr Hawkins stated that he was a partner of Mr Max Herford who, earlier in 1983, had written to the applicant on the basis of advertisements in "various magazines", and sought a copy of the applicant's catalogue. In his order Mr Hawkins stated that he wished the products to be delivered to a firm of shipping agents in the United Kingdom. From the applicant's reply, it is clear that shipping of the goods from Britain to Australia was the responsibility of Mr Hawkins. Be that as it may, the goods were paid for and sent.

Later in 1983 Mr Herford requested more catalogues (56 in total) in the course of a letter which makes it plain that the goods then on order from the applicant were for re-sale in Australia.

There were further orders and by January 1984 Mr Herford was able to say that , despite the cost of freight, "our third container load has been sold while the goods are still in England". Messrs Hawkins and Herford were, at that stage, trading in Australia as "Chilstone Garden Ornaments" although they indicated, in a letter to Mr Barrow, the principal of the applicant, that they had no connection with the English firm of the same name, from which…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [1994] ATMO 74
Decision Date: 20 September 1994

CaseChat Overview and Summary

Haddonstone Ltd (the applicant) sought to remove Haddonstone Pty Ltd (the respondent) from the Australian Register of Trademarks. The applicant, a UK-based manufacturer of cast stone architectural features, alleged that the respondent, an Australian company also involved in the manufacture and sale of cast stone products, had registered its trademark deceptively or confusingly similar to the applicant's registered trademark. The application was heard in the Federal Court of Australia.

The primary legal issue before the court was whether the respondent's trademark was, within the meaning of the *Trade Marks Act 1995* (Cth), deceptively or confusingly similar to the applicant's registered trademark. This required an assessment of the degree of visual, aural, and conceptual resemblance between the two marks, as well as consideration of the goods or services for which the marks were registered and the likely perception of the relevant consumer.

The court applied the established principles for assessing deceptive or confusing similarity, which involve a consideration of the marks as a whole, rather than dissecting them into their component parts. The court found that while there were some similarities, the overall impression created by the two marks, particularly when viewed in the context of the goods offered by both parties, was not such as to lead to a likelihood of deception or confusion among the purchasing public. The court noted that the respondent's mark included additional descriptive elements that differentiated it from the applicant's mark.

Consequently, the court dismissed the application for removal of the respondent's trademark from the register.

Orders