Hameon Pty Ltd v Makris Enterprises Pty Ltd

[2001] ATMO 108

TRADE MARKS ACT 1995

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

Re:Opposition by Hameon Pty Ltd to registration of trade mark application 809927 (37, 42) – SCOOTERS & Device- filed in the name of Makris Enterprises Pty Ltd.

Background

This matter arises out of the filing, on 11 October 1999, (‘the priority date’) by Makris Enterprises Pty Ltd (‘Makris’) of an application to register the trade mark appearing below in respect of the following services in Classes 37 and 42 of the International (Nice) Classification of Goods and Services:

Class: 37 

Vehicle cleaning and polishing services; hand vehicle wash services; vehicle valet services; drive-in vehicle wash services

Class: 42 

Cafes including car wash cafes; cafeterias, coffee shops and lounges; restaurant and take away services; providing food and beverages

Following examination, the application was accepted for registration and advertised as such in the Australian Official Journal of Trade Marks on 27 July 2000.  On 13 September 2000, within the time allowed to do so, Hameon Pty Limited, (‘Hameon’) filed Notice of Opposition (‘the Notice’) to the registration of the trade mark.

For clarity, I paraphrase the grounds of opposition cited in the Notice as follows:

1. The opposed trade mark is not a sign which is capable of distinguishing the applicant’s services from those of other traders

2. Because of the reputation of Hameon trade mark RED SCOOTER, use of the opposed trade mark by Makris would deceive or cause confusion

3. The trade mark was wrongly accepted under the provisions of section 44(3) and should only have been accepted subject to other conditions or limitations.

4. Other such grounds as the Registrar or Courts see fit.

I note that Hameon in its Notice refers to the goods of Makris – I have read this reference as being a reference to the above-listed services of Makris. I further note that the application was not, as is inferred in ground 3, accepted under the provisions of subsection 44(3). As it is not obvious to what else ground 3 could refer, I will not address this ground in these reasons and now find that Hameon has not, in terms of section 55, below, of the Trade Marks Act 1995, (‘the Act’) established this ground.

Hameon filed its evidence in support of the application and Makris filed its evidence in answer as provided in the regulations. However, neither party has requested to be heard or filed written submissions in relation to the matter. Accordingly, the issue has come to me, as a delegate of the Registrar of Trade Marks, to decide in terms of section 55 of the Act which provides:

55  Decision

Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

(a)to refuse to register the trade mark; or

(b)       to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note:For limitations see section 6.

The Evidence

The evidence in support of the opposition comprises a statutory declaration by Eammon Hamilton who is a director of Hameon.  The evidence in answer is a statutory declaration by Elias Makris who is a director of the opponent.

The exhibits to Mr Hamilton’s declaration suggest that Hameon is owner of a function centre called RED SCOOTER – it is not expressly stated in either the declaration or in the exhibits attached to it that this is so.  This centre, which commenced operations in 1996 under the RED SCOOTER trade mark, is in a converted warehouse in either St Kilda East or Balaclava, in Melbourne – both suburbs are nominated in the evidence.  My understanding of the evidence is that the function centre operated as an ‘underground’ venue without the requisite permits or approvals from the local council or government departments at this time.  In 1997, complaints from local residents forced the closure of the function centre whilst requisite approvals were sought from, inter alia, council and the liquor licensing board.  I gather from the material that the approvals necessary to an officially sanctioned re-opening were not forthcoming and Hameon appealed the refusals.  In December 1998, the approvals issued and, shortly, after the function centre re-opened under the trade mark RED SCOOTER.

There are various advertisements and articles exhibited to Mr Hamilton’s declaration – it is difficult to assess if all of the articles are freely written or whether some might be ‘advertorials’.  Further, where the dates are given on this material, they are within the year 2000.  Other material in the way of brochures, diaries, fliers or invitations for past functions, a cap and a t-shirt are included as exhibits to the declaration.  However, it is impossible to assign publication or production dates to much of this material, some of the balance is dated in the years 2000 or 2001 and I can only find one invitation or flier, for a New Years Eve Party in 1998, (shortly after the re-opening) which obviously predates 11 October 1999, the priority date of this application.  There is a considerable amount of Internet material exhibited to Mr Hamilton’s declaration published on the website however, it is not stated when this material was published or how many visits the site might have had.

Turning to the applicant’s evidence in answer, Mr Makris avers that he is a director of Makris, the applicant, of Ryde, New South Wales.  Mr Makris says that he has been in the motor service industry for 16 years.  He says that he had an idea to provide carwash and café services to the public – I gather that customers can partake of refreshments whilst their vehicles are being cleaned.  In arriving at the opposed trade mark, Mr Makris thought of the word and the graphic of the car is drawn by his graphic designer.  It is clear from Mr Makris’ declaration that the trade mark is in use but it is not clear when this use started.

Mr Makris provides letterhead, business cards, stickers, pamphlets and so on, which shows the opposed trade mark in use.  The use is by a licensee, Christy Smits Enterprises Pty Ltd of Carlingford in New South Wales.

Section 41

Section 41 provides for the assessment of the capability of trade marks to distinguish the designated goods or services of one trader from the goods or services of other persons.  The initial step is provided for, in terms of subsection 41(3):

(3)     In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

The classic statement of the test involved is that of Kitto J in Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 at 514:

[T]he question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

In his declaration, Mr Hamilton states his opinion that, “The [opposed] mark denotes a vehicle or a means of transportation.  It is common for traders of these type of vehicles to use this name.  The mark is a descriptive term and is not capable of distinguishing the trade mark from the goods in question.”  While the proposition is not necessarily accuratele I believe that the opponent’s contention is clear; it is that the word SCOOTERS, within the opposed trade mark, is used in respect of a type of motorised vehicle and that because of this, the trade mark is not capable of distinguishing the applicant’s carwash and café services from the similar carwash and café services of other traders.

I note that the word SCOOTER(S) has two denotations – that of a two wheeled children’s toy which is propelled by foot and, also, that of a motor vehicle with two small wheels.  These motor scooters normally have an engine of small capacity, and, while sold in Australia, are generally most popular as a form of urban transport in Europe.  It is the latter denotation which, I understand, the opponent alleges that the word SCOOTERS lacks capability to distinguish the applicant’s services from those of other traders.

I do not agree with the opponent’s proposition for the following reasons.

The word SCOOTERS constitutes one element of the applicant’s trade mark.  It is a mistake, I consider, to seize upon an element within a trade mark and, having supposed that element to lack inherent distinctiveness, to conclude that the trade mark as a whole also lacks inherent distinctiveness.  The assessment must apply to the trade mark as a whole.  In this regard, while the graphic element in the trade mark is a representation of a motor vehicle, part of the overall assessment of a trade mark containing such a representation must be with reference to whether other traders would need to use such a representation, and combination, without improper motive.  I note that the representation of the car in the trade mark approaches that of cartoon.  In such instances, where the graphic representation of an item common to the trade is (or approaches) the grotesque, I believe that it is understood that the rights that the applicant seeks, as far as they might extend to the grotesque representation of the item, are not in the item but the way in which it is represented within the trade mark.  While other traders providing carwash and café services might well need to use the representation of a car in respect of their similar services, the probability of them needing to use the same, somewhat idiosyncratic, representation as that in the opposed trade mark must be assessed as being non-existent.  It therefore follows that, whatever the denotation of the word SCOOTERS, the word element may therefore be ‘carried’ by the graphic element and the trade mark assessed as having sufficient adaptation to distinguish to be registrable. 

The other reason that I do not agree with the opponent is that I believe that the word SCOOTERS is not one that other traders would need to use in respect of their similar carwash and café services.  While it is true that scooters are motor vehicles, they are not ones which are normally washed by commercial carwashes.  Further, in the normal course of trade, the word SCOOTERS is not one which I would expect a trader operating a carwash and café to need to use, in respect of those services.  As may be concluded from the judgment of French J in Registrar Of Trade Marks v Woolworths [1999] FCA 1020, the assessment of the registrability of trade marks should be in the light of commercial reality and with the normal course of trade in mind. While it is possible that an individual might wish to have a scooter washed at a carwash, I do not regard this as a normal commercial occurrence at carwashes, or, that it be normal that a carwash would tout for such business.

Viewed as a whole, the trade mark, via its juxtaposition of the word SCOOTERS with the representation of a sports car, has a degree of incongruity which further adds to any assessment of its inherent capacity to distinguish the services of the applicant from those of other traders.

As a result, I conclude that the trade mark is inherently adapted to distinguish the services of the applicant from those of other traders and Hameon, the opponent, has not, in terms of section 55 of the Act, established this ground of its opposition.

Section 60

Section 60 of the Act provides:

60  Trade mark similar to trade mark that has acquired a reputation in Australia

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.

Note 1:For deceptively similar see section 10.

Note 2:For priority date see section 12.

Sections 10 and 12, mentioned in the notes to section 60, provide:

10  Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

12  Definition of priority date

The priority date for the registration of a trade mark in respect of particular goods or services is:

(a)if the trade mark is registered—the date of registration of the trade mark in respect of those goods or services; or

(b)if the registration of the trade mark is being sought—the day that would be the date of registration of the trade mark in respect of those goods or services if the trade mark were registered.

The priority date of the opposed application is that on which it was filed, 11 October 1999. The questions that arise in the application of section 60 are: the reputation of the opponent’s trade mark; whether the trade marks are substantially identical or deceptively similar and, if so, if because of the reputation of the opponent’s trade mark, the use of the applicant’s trade mark would be likely to deceive or cause confusion.

In section 60, the word ‘reputation’ is taken to refer to ‘the recognition of the Hameon trade mark by the public generally’: McCormick & Company Inc v McCormick [2000] FCA 1335 per Kenny J at paragraph 81.

I do not consider that there is sufficient or appropriate evidence before me to assess the reputation of the opponent.  The opponent has not provided details of turnover, amounts spent on advertising, how many customers it has had or any other substantive details on which, or from which, the reputation of its trade mark could be assessed or inferred.  Much of the material exhibited to Mr Hamilton’s declaration is obviously from dates after the priority date of the application and it is impossible to ascribe publication dates to most of the balance of the opponent’s evidence.  I think that it is true to say that from 1995 to 1998 the function centre was, in essence, ‘underground’, operating as it was without approvals and, as such, its reputation could not have been established ‘among the public generally’ during that period and that the trade mark RED SCOOTER might only have been known, maybe, amongst a clique of Melbourne’s society.  There is scarcity of material in evidence which relates to the period from December 1998, when the function centre re-opened, to 11 October 1999, when the application was filed. 

Thus, Hameon has not established, as it must do in terms of section 55, above, the reputation of the trade mark RED SCOOTER that goes to section 60 and the opposition must fail on this ground.

For the sake of completeness, and should I be wrong in the above assessment, I add that I do not consider that the trade marks at issue meet the minimum requirement under section 60 that they be deceptively similar. Deceptive similarity is, in the words of Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F S Walton and Co Ltd (1937) 58 CLR 641 at 658, to be assessed in the following terms:

"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, 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. Evidence of actual cases of deception, if forthcoming, is of great weight.

The impression given by the Hameon trade mark is that of a particular scooter which is coloured red.  The impression given by the Makris trade mark is not received, I consider with reference to scooters in particular but via allusion to a visual incongruity – that is, the absurdity of the word SCOOTERS alongside the visual image of a sports car.  In short, in the opposed trade mark, the word SCOOTERS does not appear to refer to the eponymous two wheeled vehicles but appears, rather, to operate almost as a nickname.  On this basis, there is no likelihood for any mistaken belief or recollection that the two trade marks at issue are the same.

Decision

The opponent has not established its grounds under either section 41 or section 60. I do not consider that, in terms of ground 4 of the Notice, the evidence filed by Hameon goes to any other available ground of opposition. I therefore direct that the application may, subject to payment of the appropriate fees and if no appeal is filed against this decision within the requisite period, proceed to registration.

Costs

The applicant has requested, and is entitled to, its costs at scale in this matter which I award against Hameon.

Ian Thompson
Hearing Officer

4 November 2001