Harness Pty Ltd v Riggio Tobacco Corporation Limited

[1998] ATMO 62

TRADE MARKS ACT 1995

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

Re:Opposition by RIGGIO TOBACCO CORPORATION LIMITED to registration of trade mark application number 714563 in the name of HARNESS PTY LTD in Class 34

Background

Application number 714563 was filed on 7 August 1996 in the name HARNESS PTY LTD (the applicant).  The application was for the registration of the mark, as shown below, and covered the statement of goods, "Tobacco, smokers articles, matches" in Class 34.

Following examination, the application for the trade mark was advertised as accepted in the Australian Official Journal of Trade Marks of 17 October 1996.  A notice of opposition to the trade mark’s registration was filed by RIGGIO TOBACCO CORPORATION LIMITED (the opponent), on 14 April 1997.  The notice of opposition listed a number of grounds.  However, the only matters which were relied on at the hearing were the allegations that the trade mark was deceptively similar to a prior registered trade mark owned by the opponent for the same goods or those of the same description; that the use of the trade mark would be likely to lead to deception and confusion because it was similar to the opponent's trade mark which had acquired a reputation in Australia; and that the Registrar's discretion should be exercised in favour of the opponent to registration.  Accordingly, those grounds are the subject of this decision and the reasons for it.

Both sides requested a hearing in the matter and it came before me, as a delegate of the Registrar, in Sydney on 14 October 1998.  The opponent was represented by Mr Trevor Stevens of Davies Collison Cave.  Appearing for the applicant was the applicant's Company Secretary, Mr Malcolm Ayoub and a Director, Mr David Jury.

The Evidence
The evidence in support included a declaration by David George, the Corporate Affairs Manager of Rothmans of Pall Mall (Australia) Ltd, an exclusive licensee in this country of the opponent, who gave details of the opponent's registrations of its own mark, WINFIELD.  He further detailed the revenue and history of that mark.  A number of declarations from people in the trade, who declared as to their belief that the subject mark was confusingly similar to the opponent's WINFIELD mark, completed the evidence in support.

The evidence in answer included a declaration by David Jury, who expounded on what he saw were the differences between the marks in question and his belief that they would not be confused with each other.  Also included in the evidence were several declarations from people in the trade who supported this view.

The evidence in reply comprised another declaration by David George, who commented on the alleged differences between the marks which were mentioned in the evidence in answer.

Submissions
In relation to the ground that the mark was deceptively similar to the opponent's prior registered mark, Mr Stevens submitted that the case here was similar to that considered in Johnson and Johnson Australia Pty Ltd v Kalnin (1993) 26 IPR 435, where the application for the mark BAND IT failed in the face of the registered mark BAND-AID. He said that, in the present case, the applicant had applied for a mark, which included the word WINLIFE, which was, at the very least, deceptively similar to the registered WINFIELD marks owned by the opponent, in particular, number 369487 in Class 34 for "Cigarettes". He submitted that those goods were the same, or of the same description as the present statement of goods. He said that other factors, which had been raised by the applicant in the evidence in answer - such as the different packaging of the respective parties' goods - was irrelevant. The only issue to be addressed was the comparison between the opponent's mark, WINFIELD and the mark applied for.

He said that the general legal principles applicable to the consideration of deceptive similarity were to be found in the cases of Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641 and Pianotist Co's App'n (1906) 23 RPC 774, and that these criteria should be judged in the light of the notional use of both of the marks on all of the goods contained in their specifications - see Smith Hayden & Co Ltd's Appn (1946) 63 RPC 97.

Mr Stevens then made comprehensive submissions in relation to a comparison of marks, including the surrounding circumstances of the use of the respective marks.  These were the manner of sale of tobacco products and the strict regulation of the advertising of such goods; the visual and phonetic similarities between the two marks, including the importance of similar aural characteristics when considering cigarette marks - given that such goods needed to be verbally requested; the shared letters and number of syllables in the respective marks; the importance of the first syllable when comparing marks; and the meaning or idea behind the marks.  He also referred to the so-called "doctrine of imperfect recollection" as being an important factor in any comparison.

On the ground that the trade mark was similar to the opponent's trade mark which had already acquired a reputation in Australia, Mr Stevens said that the evidence clearly showed that the opponent had a very substantial reputation in the trade mark WINFIELD.  This reputation was sufficient to cause a significant number of persons to wonder if WINLIFE cigarettes came from the same source.  This, he said, was the situation considered in the case of Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592. He said that it was enough that ordinary persons entertained a reasonable doubt as to the respective goods origin, given the obvious similarities between the marks.

He closed his submissions by seeking costs in the matter in favour of the opponent.

Before making any submissions in answer, Mr Ayoub inquired about the possibility of negotiation between the parties to resolve the dispute.  However, Mr Stevens said that he had no instructions to negotiate with the applicant and the matter proceeded.

Mr Ayoub said that he agreed that the WINFIELD mark was a household name and that, because of this, it would not be confused in the market place with the word WINLIFE.  He said further that the added feature of a double boomerang, or sideways W device, further served to differentiate the marks.  He also made submissions with respect to what he said was the vastly different manner of use of the competing marks on their respective goods.  These included the different appearance of the competing marks, the differing colours used on the packaging and the much higher nicotine levels of the applicant's goods.  He said that the general impression was one of a vast difference between the two parties' trade marks.

He said that no sales or advertising of the goods covered by the WINLIFE mark had so far taken place and that, therefore, no deception or confusion could have occurred.  He said that this was a different matter to the kind considered in the BAND-AID/BAND IT case, supra, because, unlike that case, the present marks were totally different to each other.  He said that all smokers, by law, must be over 18 years old and that, therefore, they made their own choices with respect to the selection of goods.  He said that if a customer requested a particular brand over the counter and was given another, then this amounted to fraud by the seller.  This, he said, had nothing to do with the owners of the respective trade marks.

Mr Ayoub concluded by saying that, if marks like PANASONIC and PALSONIC, and also TECHNICS and TEAC could coexist, then the present application, WINLIFE, which also included the major feature of two boomerangs, and the opponent's mark, WINFIELD, could both be registered.

Analysis
With respect to the ground alleging that the applicant's mark is deceptively similar to the opponent's registration, sub-section 44(1), reads:
Section 44 - substantially identical or deceptively similar trade mark

44.(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:

1. a trade mark registered by another person in respect of similar goods or closely related services; or

1. 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.

There is no doubt that the goods of both parties are similar.  Both are tobacco products.  Therefore, the sole issue to be decided here is whether the marks are deceptively similar.  Section 10 of the Act defines a trade mark as being deceptively similar to another trade mark if it so nearly resembles that mark that it is likely to deceive or cause confusion.  To determine this, the marks should not be placed side by side but consideration should be given to any common impression carried away from the two marks.  I refer here to the judgment in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd (1937) 58 CLR 641, where Dixon and McTiernan JJ. said:

In deciding this question, the marks ought not, of course, to be compared side by side.  An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought.  The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.  The effect of spoken description must be considered.  If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part.  The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.  Evidence of actual cases of deception, if forthcoming, is of great weight.

The present mark comprises the word WINLIFE and crossed boomerangs, or a sideways W device.  I believe that it is a critical factor that tobacco products must, by law, either be requested orally at the point of sale, or be bought from machines in licensed premises.  Therefore, it is reasonable to infer that any request for cigarettes and the like would be by the name included on a packet and not by a description of any device included on it.  Therefore, I am of the opinion that the memorable portion of the applicant's mark which would be carried away is the word WINLIFE.  The opponent's mark comprises the word WINFIELD and its cigarettes would be requested by that name when its goods were purchased.  Both marks share the common prefix WIN-, but have the respective suffixes -LIFE and -FIELD.  These suffixes share four letters with the exception of the letter D.

In Rysta Ltd.'s Appn. (1943) 60 RPC 87 Luxmoore, L.J. expounded the test known as "imperfect recollection" where at page 108 he stated:

It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused.  Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable pronounced with the clarity to be expected from a teacher of elocution.  The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description but also of the shop assistant ministering to the person's wants.

The reference, in the Rysta case, to service by a shop assistant is usually less relevant in these days of self-service stores but, in the case of tobacco products, it is an important factor, given the laws pertaining to their sale.  Thus the words of Sargent LJ in the case of London Lubricants (1920) Ltd's Application 42 RPC 264, become particularly relevant, where he said, "the first syllable of a word is, as a rule, far the most important for the purpose of distinction." He found this way because of a generally perceived tendency for people using the English language, to slur the ends of words. This would be particularly relevant given that most requests for cigarettes would be made over a bar or counter in noisy hotel or club bars, or at the counters or checkouts of busy convenience stores or supermarkets. A request for a packet of WINLFE or WINFIELD could be misunderstood in such circumstances, with the WIN- portion of the marks being the only part properly heard. The additional material in the present mark is significant but, as I have said, it is the word in the disputed marks which would be remembered by those purchasing the respective goods. In any case, the "boomerang" device could equally be inferred to be a sideways W - a letter common to both marks. Mr Ayoub argued that the different packaging and nicotine levels of the goods bearing the respective marks were important, but these factors are not a consideration when comparing the marks themselves.

It is worth noting here, with respect to Mr Ayoub's submissions on coexisting marks, that while the marks TECHNICS and TEAC are both on the Register for similar goods, PANASONIC is a registered mark but PALSONIC is not.  It is obviously the case that each application for registration must be judged on its own merits and so it is in the present instance.

In this case, I believe that the applicant's mark is deceptively similar to that of the opponent for similar goods and I accordingly find that the opposition is successful on this ground.

Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia
This section reads:

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 opponent's and applicant's marks are deceptively similar.  Therefore, the validity of this ground of opposition depends on whether the reputation acquired by the opponent's mark in Australia before the filing date of the present application is such that use of the allegedly conflicting mark would be likely to deceive or confuse potential customers.  In assessing the question of that reputation, the relevant date is the date of filing of the present application - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

From the evidence and my own knowledge, I am aware that the opponent has enjoyed a considerable reputation for its WINFIELD mark for some considerable time.  Mr Ayoub argued that this high renown would, in fact, mean that no one would be deceived or confused because they would not believe that the WINLIFE mark had any relationship to the opponent's mark.  On his part, Mr Stevens submitted that it was sufficient that a great number of smokers would be caused to wonder as to whether the marks shared a common origin.  I am inclined to the latter view.  It is accepted law that the risk of deception and confusion must extend to a substantial number of people likely to be concerned in the purchasing of the particular goods or services - Kendall Co v Mulsyn Paint and Chemicals (1963) 109 CLR 300. It is obvious from the evidence that a sizeable proportion of the Australian smoking public buy WINFIELD cigarettes. Therefore the potential number of people who might be deceived or confused is quite significant.

I think that the situation here is close to that considered by Kitto J in the Southern Cross decision, supra. There he held, at pp.594-5 that, in all applications for registration, the onus is on the applicant to satisfy the Registrar that there is no reasonable probability of confusion. He also found that it is not necessary, in order to find that a trade mark offends against the section, to prove that there is an actual probability of deception leading to passing off. Additionally, a mere possibility of confusion is not enough, there must be a real, tangible danger of its occurring. I think that it is the case here that the marks are deceptively similar, and having regard to the opponents' reputation in the word WINFIELD as at the relevant date, a substantial number of smokers would at least be caused to wonder whether the goods had a common origin, or whether the source of these goods had a connection in the course of trade. Therefore, I believe that the use of the subject trade mark would be likely to deceive or cause confusion

Accordingly, I must find that the opponent has also been successful on this ground of its opposition.

Conclusion
Given the foregoing, I find that the opponent has been successful on both of the grounds relied upon at the hearing.  Accordingly, I can see no reason why the Registrar's discretion should be exercised in favour of the applicant for registration.  I therefore find, subject to any appeal from this decision, that the opposition is successful as a whole and I refuse to register the trade mark, the subject of this application.

Costs
In respect of costs, I can see no reason why costs in the matter should not follow the result.  Accordingly, I order that the applicant pay the opponent's costs, in accordance with the official scale.

Ian Forno
Hearing Officer

4 December 1998