Hansa Metallwerke AG v Hans, Inc

[2000] ATMO 126

TRADE MARKS ACT 1995

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

Re:Opposition by Hansa Metallwerke AG to registration of to registration of trade mark application 709696(11) – HANS – filed in the name of Hans, Inc.

Background

This matter arises out of the filing, on 31 May 1996, of an application by Hans, Inc. (the applicant) of Korea, to register the trade mark appearing below in Class 11 in respect of:

Apparatus for water supply and sanitary purposes including sinks.

The specification of goods has subsequently been amended, at the applicant’s request, to “sinks”.

The application was accepted and advertised as such in the Australian Official Journal of Trade Marks of 15 May 1997.  On 14 August 1997, within the time allowed to do so, Hansa Metallwerke AG, (the opponent) of Germany, filed Notice of Opposition to the registration of the trade mark.  The relevant grounds will emerge from the discussion of the issues in my Reasons, below.

Evidence in support of the opposition, evidence in answer and evidence in reply was duly served and filed by the parties to these proceedings.

The issue came to me to be heard as a Delegate of the Registrar of Trade Marks in Melbourne on 11 October 2000.  Ben Fitzpatrick of Counsel, instructed by Griffith Hack of Melbourne appeared for the applicant and Fiona Symons of Davies Collison Cave of Melbourne represented the opponent.

This evidence is summarised in the table below:

Declarant	Declaration Known as:	Made	Exhibits
Evidence in Support:
Rolf Wälde	Wälde	02 Mar 1998	A – C
Evidence in Anwer:
Young-Il Yang	Yang	07 May 1998	YIY-1
Evidence in Reply:
Johannes Haupt	Haupt	16 Sep 1999
Jacqueline Moutsias	Moutsias	22 Oct 1999	A – E
Douglas R Watson	Watson	19 Apr 2000	DRW-1

The opponent is a manufacturer of stainless steel taps, faucets, shower fittings and thermostats.  It has sold these goods in Australia under the trade mark HANSA since 1978 – figures of sales in Australia in the Wälde declaration for the years from 1985 are given and are, considering the nature of the goods, quite respectable.  The opponent estimates that its goods currently occupy 30^% of the market.  The figures have dipped occasionally but, where they have, I would infer that these possibly reflect the cyclic nature of the Australian building industry.

The opponent’s goods are, from the evidence, top of the range, of very high quality, and are what I would designate as being in the ‘designer’ category of goods.  Several of the opponent’s catalogues are in evidence and, although printed overseas, have the local agent’s name and contact details inserted. 

The goods are promoted through advertisements in trade journals and retail magazines, promotion at exhibitions, and in architectural catalogues, retail showroom displays and commercial projects sample displays.  As well as 86 registrations of its trade mark throughout the world, the opponent has a registration of its trade mark in Australia – brief details of this registration are:

Reg No:  317248
Priority date:              13 April 1978
Owner:  Hansa Metallwerke AG

Goods/Services:         (Class 11).  Taps, mixing valves, thermostatic mixing valves, shower fittings, filters and fittings for air-conditioning and refrigeration, being goods included in this class

Trade Mark:               HANSA

The applicant is a Korean manufacturer of stainless steel sinks – these are exclusively, it would appear, for kitchen use.  A catalogue in evidence shows that the applicant makes a wide variety of these sinks and that they would be characterised as being for domestic use, of upmarket appearance, with one and two bowls, with vegetable drainers, inset tableware drainers and so on.  The applicant has sold its goods under the trade mark HANS in Australia since 1995.  Its sales in the Australian market since 1995 appear to have been very modest with maybe an average of about 150-200 sinks being sold in Australia each year since use started.  The goods are distributed in Australia through an agent who has offices nationwide.  Since 1997, the goods have been promoted at Home Shows in Sydney, the ACT, Melbourne and Brisbane – I would infer from the evidence that these promotions have been at a single Home Show in each location.  The applicant claims to have advertised in Better Homes and Gardens [sic] and various home renovation publications but these advertisements are not in evidence, neither are the publication dates of the advertisements in these magazines given.

Mr Yang, in his declaration, says that he is not aware of any confusion between his company’s sinks and the goods of the opponent occurring. 

In 1999, Davies Collison Cave, who act for the opponent, instructed Moutsias Management Services of Melbourne to investigate whether it is usual for taps, including bathroom taps, to be sold through the same retail outlets and whether it is usual for sinks and taps to be made by the one manufacturer.  To this end, the investigator made inquiries of at least some 16 retail distributors.  The results of this investigation and the manner of its presentation in the evidence were the subject of some detailed criticism by Mr Fitzpatrick at the hearing and I will discuss them later in my reasons.

Presumably to make good the anticipated criticisms of the Moutsias declaration, the Watson declaration attests to the awareness of the declarant, who is Secretary of the Plumbing Merchants Association, of certain features of the plumbing trade which the Moutsias declaration purports to show.  These features are:

§  The same retailers regularly stock and sell both taps and sinks.

§  Due to consolidation, the same manufacturer, or subsidiaries of the same manufacturer, regularly make both taps and sinks.

The submissions

Ms Symons formally abandoned all other heads of opposition other than those under section 44 and 60 at the start of her submissions.  She also confirmed that she had advised the applicant of this course of action prior to the hearing.  Although this advice to the applicant was not necessary, it does make the applicant’s task in preparing for the hearing much easier and I commend her for this.

In relation to section 44, Ms Symons drew my attention to the provisions of sections 44 and 10 of the Act and the details of registration 317248, above.  Ms Symons then led me through the tests in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 4O7 and Pianotist Co Ltd's Appn (1906) 23 RPC 774. She stressed that I should consider that, in speech, the emphasis is on the first part of words – London Lubricants (1920) Ltd's Appn (1925) 42 RPC 264 – and that people have a natural tendency to slur their speech - Aristoc Ltd v Rysta Ltd (1945) 62 RPC 65.

Ms Symons then made a detailed comparison of her client’s trade mark with that of the applicant and referred to the observations of Gummow J. in Johnson & Johnson v Kalnin & Anor 26 IPR 435 that, "fine details such as different typefaces are likely to be overlooked by those to whom these marks will be addressed in trade". She said that negligible distinctiveness is added to the trade mark by the underlining of the word HANS in the applicant's trade mark as this also constitutes such a "fine detail" which would be overlooked by consumers because this device element is a mere embellishment. The inclusion of the final "A" in the trade mark the subject of Registration No.317248 is unlikely, she said, to have the effect of sufficiently distinguishing it from the opposed trade mark such that consumers would be unlikely to be deceived or confused by their concurrent use and registration. The letter "A" is such a common letter that its capacity to distinguish a trade mark must be considered to be very low. Moreover, she noted that, as the additional letter "A" is the last letter in the mark, it is possible that when goods in packaging to which the mark has been applied are stacked on shelves, the last letter may be obscured, thus exacerbating the risk of confusion.

Ms Symons drew my attention to the fact that her client’s trade mark is registered in block capitals and it is possible that the parties could wish to represent their trade marks in a similar way.  She then referred to the so-called ‘doctrine of imperfect recollection’ – per Rysta, above at 108, and said that the likelihood of confusion is further enhanced by the nature of the goods to which the marks relate. Ms Symons submitted that, the respective goods of the parties are very similar in nature and must clearly be used in conjunction with one another. The goods are likely to be purchased by consumers who are in the process of renovating or building their kitchen, bathroom or laundry. Such purchases are made rarely and the majority of consumers do not have the opportunity to become familiar with the wide range of brands available. Rather, she suggested, the average consumer is likely to visit a large number of shops offering for sale such goods. In these circumstances, she submitted, the likelihood is high that a consumer seeing a HANS product in one shop and a HANSA branded product in another would be confused as to their common origin.

Ms Symons then made submissions concerning the question of whether the goods of the parties are similar goods in terms of the Act.  She adverted to the tests in Jellinek’s Application, (1946) 63 RPC 59 as expanded by the Assistant Controller in Beck Koller & Companies Application (1947) 64 RPC 76 and mentioned with approval by the High Court in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592. Ms Symons emphasised that, when the tests in these cases are applied to the goods in question and due consideration is given to the evidence, the goods should be found to be goods of the same description.

Next, Ms Symons drew to my attention to the decision of the New Zealand Patent Office in Re Trade Mark Regency (1977) 1 NZIPR 132 in which Assistant Commissioner Martin considered the question of whether "taps and faucets" are goods of the same description as "sinks, urinals and shower trays".  The Assistant Commissioner found that they were.

Ms Symons finished her argument by addressing the provisions of section 60.  However, in response, Mr Fitzpatrick did not appear to seriously question the reputation of the opponent.  He drew my attention to Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 (“Hugo Boss”) where I said at 436:

[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark.  The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation.  The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it.  The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

This passage was quoted with approval by Kenny J in McCormick & Company Inc v McCormick [2000] FCA 1335. Mr Fitzpatrick submitted that there is no evidence, such as independent declarations from the trade or the public, to indicate that the opponent has the requisite reputation to satisfy the requirements of section 60.

In relation to section 44 and the issue of deceptive similarity, Mr Fitzpatrick also drew my attention to the tests in Shell v Esso, above, and to that addressed by Dixon and McTiernan JJ in Australian Woollen Mills Ltd V. F.S Walton & Co Ltd (1937) 58 CLR 641 at 658. He then referred to me the statutory definition of the words ‘deceptively similar,’ at section 10 of the Act and submitted that, in view of the maxim in Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd (1954) 91 CLR 529 at 594-5 per Kitto 3 that there must be a “real tangible danger" of deception or confusion occurring, there could be no confusion or deception vis-vis the trade marks at issue.  Mr Fitzpatrick also submitted that in Australian Woollen Mills, above, the question relating to deceptive similarity was posed by the court as:

whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained.

This statement was quoted with approval by the full Federal Court in Registrar of Trade Marks v Woolworths [1999] FCA 1020 where French J stated:

… the question for the Registrar and the Court is not whether consumers might be confused (in the sense of wondering about common origin or connection) but whether there is a reasonable likelihood that they will be confused.

Mr Fitzpatrick drew my attention to Lord Parker’s words in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777 and to those of Wilcox J. in SAP Australia Pty Ltd vSapiant Australia Pty Ltd (1999) FCA 1027, and argued that one critical feature of the surrounding circumstances which must be considered is the nature of the goods upon which the respective marks are applied. Mr Fitzpatrick submitted that:

§  The goods are expensive and rarely purchased

§  They are purchased after careful consideration

The differences in the trade marks allow them to be distinguished on this careful inspection, said Mr Fitzpatrick.  The addition of the second syllable '-SA’ in the HANSA mark results in the emphasis in pronunciation of the mark being in the last syllable ‘-SA’.  This, he said, clearly distinguishes the mark from the HANS mark.  Mr Fitzpatrick drew my attention to Maker's Appn (1986) R.P.D. 9002 - where "Cande" was not found deceptively similar to "Candide" on the basis of the later mark having the emphasis on the last syllable ‘-dide’ . Moreover, Mr Fitzpatrick suggested that the addition of the syllable ‘-SA’ results in the letter ‘S’ having a hard sound. In contrast, the letter ‘S’ in the trade mark HANS, would have a soft sound, equivalent to the letter ‘Z’.

It is also quite likely that the inclusion of the second syllable ‘-SA’ would affect the pronunciation of the first letter ‘A’ in the respective marks, said Mr Fitzpatrick. The trade mark "ANS will be pronounced with an open ‘A’, as in the common German name of HANS. In contrast, the first A in HANSA, would be quite likely to be pronounced with a hard ‘A’, as in the word ANT.

Mr Fitzpatrick then drew my attention to the fact that the marks are also distinguished by the fact that HANS is also a very well known German Christian name, whereas HANSA has no known meaning in the English language as in Deeko Australia Pty Ltd v Decor Corp. Pty Ltd (1988) AIPC 90-479.

Mr Fitzpatrick then turned to the nature of the goods themselves and argued that the evidence filed by the opponent establishes that the manufacturers of sinks do not manufacture tap ware, or any of the goods covered by the opponent's trade mark registration.  He submitted that the evidence of Ms Moutsias, particularly relating to the telephone survey evidence, is fundamentally flawed, and should not be relied on.

To an extent, I agree with Mr Fitzpatrick about the survey.  Jacqueline Moutsias is an investigator employed by Moutsias Management Services Pty Ltd.  Appended to her declaration is her organisation’s report to Fiona Symons, of Davies Collison Cave, who acts in this matter for the opponent.  Somebody whose surname appears to be Walker has signed this report, yet the signature block in the report is that of Michael Moutsias.  However, in her declaration Ms Moutsias refers to “the results of my investigations.”  There is therefore doubt about the provenance of the declaration. 

There are a number of retail advertisements attached to the declaration – these show that national and locally based retailers stock and sell the goods contained within the specifications of the parties in close association with each other.  Other material attached to the Moutsias declaration looks at the manufacture of such goods.  An Olivéri catalogue shows that that firm makes kitchen and laundry sinks, and exhibits taps attached to those sinks within the publication, but I think that this is only for illustrative purposes as, while accessories for the sinks are shown separately in the catalogue, taps are not.  Similarly, a catalogue from Novelli tapware, shows kitchen and bathroom taps, shower fittings and a wide variety of bathroom accessories and fittings and show these in association with sinks and basins – however, I do not believe that the basins are a part of the Novelli range exhibited in the catalogue.  Two catalogues from Tapware Industries show only bathroom taps.  Dorf Clark Manufacturing Ltd is a division of GWA International Ltd and its catalogue shows that it makes kitchen and laundry sinks (although the laundry sinks are not exhibited in this catalogue).  Dorf Clark Industries is also a division of GWA Industries Ltd and its catalogue shows a wide selection of kitchen, laundry and bathroom taps. 

The emphasis in the evidence is very strongly on stainless steel sinks, basins and tubs.  However, it is apparent in the evidence, and this conforms with my own experience, that manufacturers (such as that of the CAROMA brand) of acrylic analogues of the goods of the parties customarily make both for bathrooms.

Ms Moutsias concludes in her declaration that the material she gathered shows that tapware and sinks are both made by the German manufacturer Blanco AG.  Mr Fitzpatrick was sharply critical of this evidence and, while I agree with him about the evidence and the conclusions that Ms Moutsias draws from it, my own experience is that the manufacturer Blanco does make both stainless steel taps and sinks.

Mr Fitzpatrick submitted that he fact that the respective goods are both sold in stores such as Bunnings must be accorded little, if any, weight in determining whether their respective goods are of the same description. The reason for this is that such stores sell a huge variety of goods ranging from barbeques and furniture through to toilet seats. In light of the huge range of goods offered in stores such as this, the fact that respective goods are both offered for sale in this store is of minimal significance in assessing whether they are goods of the same description. Similarly, the fact that the respective goods may be both sold in plumbing supply stores, is also of minimal significance, given that such stores would retail goods ranging from tools, such as screwdrivers and Philips head, through to lighting products, toilet seats and a range of other products unrelated to either taps or sinks.

Mr Fitzpatrick continued by drawing my attention to the tests applied by Kenny J. in McCormick & Company Inc. v. McCormick [2000] FCA 1335 (15 September, 2000), from decisions such as Re: Jellineck’s Appn (1946) 63 RPC 59, at 70-72; Re: John Crowther & Sons (Milnsbridge) Ltd's Appn (1948) 65 RPC 369 and Southern Cross Refrigerating Co v. Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

Reasons

Inasmuch as it is relevant to these proceedings, section 44 of the Act provides:

44  Identical etc. trade marks

(1)       Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

(a)       the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i)        a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)       a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)       the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1:         For deceptively similar see section 10.

Note 2:         For similar goods see subsection 14(1).

Note 3:         For priority date see section 12.

Therefore, the issues under this heading which I should consider are whether the:

§  trade marks are substantially identical with, or deceptively similar to, each other

§  goods in question are similar goods

§  priority date of the opponent’s registration is earlier than that of this application

Priority Date

The priority date of the opponent’s registration is 13 April 1978.  The priority date of this application is 31 May 1996.  The opponent’s trade mark thus has the earlier priority date.

Similar Goods

Section 14 of the Act provides, inter alia:

14  Definition of similar goods and similar services

(1)     For the purposes of this Act, goods are similar to other goods:

(a)       if they are the same as the other goods; or

(b)       if they are of the same description as that of the other goods.

It was not suggested at the hearing that the goods of the parties are the same goods so I will consider if the goods are goods of the same description.

The concept of ‘goods of the same description’ was recently considered by Kenny J in McCormick, above, at para 17. She said:

Whether the relevant goods are of the same description is essentially a question of fact.

The authorities establish that there are three principal factors to be considered in this regard.  They are:  (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold.  As to the last-mentioned matter, it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade:  see In Re Jellinek’s Application (1946) 63 RPC 59 at 70-72; In Re John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 (“Crowther’s Application”) at 372; In Re Frank George Whiting’s Application (1952) 69 RPC 219 at 221; and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 94. As the High Court stated in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 606-607:

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 In re The Australian Wine Importers Ltd (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84, at p 90 per Latham CJ. 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 In re Jellinek’s Application (1946) 63 RPC 59. 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 emphasized 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”’:  In re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 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’ (1945) 70 CLR, at p 94.

On the one hand, goods are not necessarily of the same description simply because they are sold for human consumption and in common trade channels: see, for example, In Re J & J Colman Ltd’s Application (1929) 46 RPC 126, where mustard and semolina were held not to be goods of the same description. See also G Wood, Son & Co Ltd v McVitty & Co Pty Ltd (1964) 34 AOJP 2601 and In Re Chan Li Chai Medical Factory (HK) Ltd’s Application (1990) 19 IPR 140 at 144. On the other hand, the expression “goods of the same description” is not construed restrictively and regard is paid to the commercial context in which the goods in question are bought and sold: see Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 546 and Dinning v New Balance Athletic Shoe Inc (1992) AIPC 38,719 at 38,725.

The goods in question here are ‘sinks’ on the one hand and ‘taps, mixing valves, thermostatic mixing valves, shower fittings, filters and fittings for air-conditioning and refrigeration, being goods included in this class’ on the other.  Since the application stands or falls on the question of whether the goods ‘sinks’ and ‘taps’ are goods of the same description, I will concentrate on these goods.

In Re Smith Hayden and Co's Application (1946) 63 RPC 97 at 101.8 the test was posited:

Assuming a use by the proprietor of each of the cited trade marks in a normal and fair manner in respect of any of the goods and services covered by those registrations, is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration (the respondent to this application) also uses its mark normally and fairly in respect of services covered by the proposed registration.

However, as noted by French J in Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999):

So far as this passage, reflected in oral submissions, suggests that an applicant must satisfy the Registrar or the Court that there will be no reasonable likelihood of deception and confusion it does not represent the law as it stands under the 1995 Act. The position now is that the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

However, the basic tenet in Smith Hayden, above, remains true: - I am to consider the goods of the parties at their widest.  While the evidence and argument before me focussed very strongly on what the goods of the parties actually are, what I am to consider is the specifications of goods as applied for or registered.  That is, when I read the word ‘sinks’ in a specification of goods, I am not to consider those sinks as being made only of stainless steel – I am also to consider them as being of earthenware, porcelain, vitreous or acrylic materials.  I must adopt a similar approach with ‘taps’.

A sink is ‘a fixed basin, especially in a kitchen, made of stone, earthenware, metal etc., used for washing’.  A basin is a ‘round container open and wide at the top with sides sloping inwards towards the bottom or base, especially one in which liquids are stored or mixed.  A washbasin or sink.’[1]  As the terms ‘sink’ and ‘basin’ are defined in terms of each other, resort to a distinction between the terms ‘sink’ and ‘basin’ in order to set apart the goods of kitchen, laundry and bathroom sink and basin manufacturers would be contrived.  Further, it is unlikely that the public consciously makes such distinctions.

[1] Source: Collins Dictionary.

I think that the evidence, and my own experience, tells me that it is not uncommon for the same manufacturer to make sinks and taps.  This is very true of bathroom ware, where acrylic and porcelain taps are sold to match basins or sinks in the same material, but is also true of kitchen taps and sinks. 

If the question is further restricted to the question of stainless steel taps and sinks, it would appear to me, although this was not in evidence, that, in manufacture, the former item is cast and milled, while the latter is pressed, However, many steel works both cast and press their metals and I do not believe that if this were an issue, it is determinative to these proceedings. In the Lyons Case [1959] RPC 120, at page 123, Lord Evershed said:

We accept that the position of manufacturer is not a major consideration in deciding whether goods are of the same description.

I note that the evidence supports the contention that manufacturers such as GWA Industries Ltd arrange for the manufacture of stainless steel taps and sinks through their own internal divisions.  I think that to focus on the fact that these divisions are different corporate entities within GWA Industries Ltd is an artificial distinction – I am satisfied that the public who might buy the goods of such a company makes no such distinction.  I note that as far as GWA Industries Ltd is concerned, these particular products bear differing trade marks – however, this does not alter the fact that these products have, to all intents and purposes, a common trade source.  As I have previously indicated, my own experience tells me that Blanco makes both stainless steel taps and sinks.

These products (whether of stainless steel or acrylic material) come onto the market through the same trade channels and are usually bought at the same time for a closely related common purpose.  They are bought by the same class of customer, at retail outlets where they are almost invariably displayed together.  The products are usually selected by the public to match or coordinate with each other.  Plumbers install them both.

I am satisfied that, as far as the question of ‘taps’ and ‘sinks’ is concerned, the goods of the parties are goods of the same description.

Substantially identical or deceptively similar trade marks?

It was not argued by Ms Symons that the trade marks were substantially identical, I therefore will consider the question of whether the trade marks are deceptively similar.

On the question of deceptive similarity, Windeyer J in Shell, above, (at 415) said:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is the 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 impression that such persons would get from the defendant's television exhibitions.

In Australian Woollen Mills Ltd v F.S Walton & Co Ltd, above, their Honours said:

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 the 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, similarities both of sound and of meaning may play an important part. 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.

Moreover, in Pianotist, above, Parker J, as he then was, 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.

Further, as a prerequisite to any possible determination that the words HANS and HANSA are deceptively similar in the context of these goods and the circumstances of their trade, I must be satisfied that there is a reasonable likelihood of deception or confusion before denying acceptance of the application for registration, per Woolworths, above.

I disagree with Mr Fitzpatrick’s analysis of the word HANSA vis-à-vis the word HANS.  I believe that seeing the word HANSA as being a combination of the syllables HAN and SA is not how the ordinary person will view the word.  The denotation of the word HANS is well known to most Australians.  It is a common German male forename.  I believe that it is so well known that it is how both words will be remembered and how the word HANSA will be seen as being coined. 

I will note that the word 'hansa' does have a signification in English as being the name of a group of North German traders who formed the Hanseatic League and dominated economic activity in their region in the 13^th to 15^th centuries. The word 'hansa' is closely related to the English word 'hanse' which, according to the Oxford English Dictionary signifies:

a. OF. hanse, and med.L. hansa, a. OHG. (and Goth.) hansa (= OE. hós) military troop, band, company, MHG. hanse fellowship, association, merchants' guild.

The early examples of this word relating to England occur in Latin charters and other documents, and in the L. form hansa, the precise sense of which, e.g. in the phrase 'gilda mercatoria et (or cum) hansa', is often difficult to determine. See the discussion of the word in Gross, The Gild Merchant I. Appendix C. The following two main senses may be distinguished, but the order of their appearance in Eng. is not clear.]

1. A company or guild of merchants in former times; an association of merchants trading with foreign parts; the merchant guild of a town; also, the privileges and monopolies possessed by it; sometimes, app., the guild-hall or 'hanse-house'.

The Old Manse was the Fellowship of the London Merchants which had a monopoly of the foreign trade of London since Norman times; the New Hanse was the company. of Merchant Adventurers first incorporated in 1497, which received charters from Henry VII in 1505 and Elizabeth in 1566.

However, I consider it most unlikely that the public would be aware of this denotation of the word HANSA and view it in this light.  The legal representatives of the parties at the hearing were not aware of any signification of the word HANSA.

The goods of the parties are commonly marketed together.  It is unusual to see the goods displayed apart from each other in retail outlets.  I find some support for this observation in the brochures supplied to me by the parties where sinks or basins commonly have taps displayed with them and vice versa.  I note too that the public, when buying goods such as these, is anxious to match them – the goods are usually bought in the context of building, purchasing or renovating a house.  Thus the relative expense of the goods may in this context not seem to be high, but the purchasers will be visiting showrooms, display centres and so on to make many purchases – the fine detail of many of the trade marks they are exposed to at this time may not be immediately remembered.

In Woolworths, above, French J restated the tests for deceptive similarity which stem from Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; he said:

(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

(iv) The rights of the parties are to be determined as at the date of the application.

(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:

...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.

In John Fitton & Co Ltd's Appn (1949) 66 RPC 110, at 113,where, in considering the trade mark EASYJEST in face of the registered trade mark JEST, the Assistant Comptroller said that no limitation was to be placed "upon the nature of the confusion or deception so envisaged, whether it be visual or phonetic confusion of the marks themselves, or what is termed contextual confusion, or deception as to the trade provenance of the goods".

I am satisfied that the trade marks are deceptively similar for the reason that it is unlikely that the small difference in the trade marks would be recalled unless the purchaser was quite familiar with both products.  Such familiarity is unlikely as the items are, contextually, not of high expense and are likely to be purchased on only one occasion.  The trade marks are very likely to be misrecalled for each other.  An incidental illustration of this is the fact that in writing this decision I have had to refer to the file and my notes repeatedly to check which trade mark belongs to either party.  I am further satisfied that, if the fine detail of the differences in the trade marks is recalled by the purchaser, he or she will see the goods as being related – the sinks being made to coordinate with the taps, or vice versa.  Thus, the deception would be as to the trade provenance of the goods, as per John Fitton, above.

Section 60

Section 60 of the Act provides:

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

60. The registration of a trade mark in respect of particular goods or services

may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

(b) because of the reputation of that other trade mark, the use of the first mentioned trade mark would be likely to deceive or cause confusion.

I have already found that the trade marks are deceptively similar.  I note Mr Fitzpatrick’s comment’s concerning my remarks in Hugo Boss, above.  However, I believe that the passage says, in effect, as regards evidence of reputation of a trade mark, that reputation arises (and thus could be evidenced) in different ways.  It could be a bald recital of sales and advertising figures which speak for themselves or it could involve trade and customer declarations, declarations from experts in their fields and so on.  Or it could include market surveys.  Or such evidence could be a combination of the above options.

In this instance, the evidence put in by the opponent speaks for itself.  I do have some scepticism about its claim to have 30^% of the market.  The particular market is not specified nor is the total value of the market stated.  However, notwithstanding this, the opponent’s sales figures are very respectable.  The goods of the opponent are in the designer end of the market where reputations are relied on.

I find that the opponent has made out its case in terms of section 60 and that 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

Decision

I have found the priority date of the opponent’s registration to be earlier than that of this application, the trade marks to be deceptively similar and the goods to be of the same description.  I have also found that because of the reputation of the opponent’s trade mark, the use of the applicant’s trade mark would confuse or deceive.

I therefore refuse to register this application in terms of sections 60 and 44 or the Act

Costs

Having been successful, the opponent is entitled to its cost, which I award against the applicant.

Ian Thompson
Hearing Officer

27 November 2000