Harvey Norman Retailing Pty Ltd v Domain Furniture Pty Ltd

[2006] ATMO 22

TRADE MARKS ACT 1995

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

Re:Opposition by Harvey Norman Retailing Pty Ltd to registration of trade mark application 914959(35) - DOMAIN LIVING & DEVICE - filed in the name of Domain Furniture Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent: Eric Ziehlke of  Chrysiliou Law

Applicant: Ben Fitzpatrick of counsel, instructed by Davies Collison Cave

Decision:

1. Section 52 opposition. Grounds of opposition under ss44 and 60 not established -registration allowed

2. Costs awarded against opponent

Background

1. The applicant, Domain Furniture Pty Ltd, applied to register the following trade mark:

Application Number:	914959
Priority date:	31 May 2002
Goods:	Class  35  Retail and wholesale of bedding, furniture and homewares
Trade Mark:
Advertised:	3 October 2002

1. The opponent, Harvey Norman Retailing Pty Ltd, filed notice of opposition to the trade mark's registration on 18 November 2002.  That notice listed effectively all of the available grounds of opposition provided in the Trade Marks Act 1995 ("the Act"). However, at the hearing the opponent only relied on the grounds under sections 44 and 60 of the Act; I formally dismiss the remaining grounds.

2. Evidence in support, evidence in answer, evidence in reply and applicant’s further evidence were duly served and filed in accordance with the Act and regulations thereto.

3. The matter came to a hearing before me, as a delegate of the Registrar of Trade Marks, in Canberra on 22 November 2005. Mr Eric Ziehlke of Chrysiliou Law, solicitors, represented the opponent. Mr Ben Fitzpatrick of counsel, instructed by Davies Collison Cave, Attorneys, represented the applicant.

Evidence

1. Details of the evidence is shown in the following table:

Declarant	Date declared	Exhibits	Known As
Evidence in Support
Raymond John Skippen	13.08.04	RJS-1 to RJS-9	First Skippen
Evidence in Answer
Paul Andrew Thompson	15.07.04	PAT-1 to PAT-21	First Thompson
Alan Spalding	15.07.04	AS-1 & AS-2	Spalding
Nick Garnham	12.08.04	NG-1 & NG-2	Garnham
Karin Jane Gardiner	13.08.04	KJG-1 & KJG-2	Gardiner
John Faull	16.08.04	JF-1 & JF-2	Faull
Bob Tunbridge	13.08.04	BT-1 & BT-2	Tunbridge
Gary Thomas	16.08.04	GT-1 & GT-2	Thomas
Sally Foreman	15.09.04	SF-1 to SF-3	Foreman
Evidence in Reply
Raymond John Skippen	16.12.04	Second Skippen
Raymond John Skippen	11.02.05	RS-1	Third Skippen
Michael Davy	11.02.05	Davy
Eric James Ziehlke	15.02.05	EJZ-1	Ziehlke
Scott Lindsay	16.03.05	Lindsay
Phillip Meehan	16.03.05	Phillip Meehan
Donna Meehan	6.04.05	Donna Meehan
Allan Robert Hobill Fabry	12.04.05	Fabry
Theo Lamaris	11.05.05	Lamaris
Further Evidence	(Applicant’s)
Paul Andrew Thompson	10.08.05	PAT-1	Second Thompson

1. I note that Mr Skippen is the finance director of the opponent, and that Mr Thompson is a director of the applicant.

2. I shall not detail in evidence at this stage, but rather refer to it as appropriate during the grounds of opposition.

Grounds of Opposition

1. To establish an opposition under either section 44 or 60 and opponent must, inter alia, establish that the trade marks in question are, at least, deceptively similar. In this case the opponent cited its word mark 792525 domayne with a priority date of 28 April 1999 and registered in respect of the following services in class 35:

   Retail, wholesale, distribution and other services in this class relating to furniture, electrical appliances, hardware, home improvement goods, floor coverings, textiles,     garden appliances, hand tools, electrical equipment, computers, computer accessories, computer parts, computer software, recording discs, apparatus for recording,     transmission or reproduction of sound, data or images, apparatus for lighting, heating, steam generating, cooking, refrigerating and ventilating, other household appliances     and baby nursery equipment including services relating to the presentation and display for sale of the aforementioned goods and provision of advice to purchasers; retailing through franchise operations

2. The opponent did not assert that the marks were substantially identical, rather than that they were deceptively similar.

3. Both parties’ representatives agree that in undertaking the comparison for deceptive similarity to regard should be had to criteria referred to by Parker J. in Pianotist Co.'s Application (1906) 23 RPC 774 at 777, and the tests enunciated by Dixon CJ and McTiernan J in Australian Woollen Mills  Limited v F. S. Walton and Co  Limited (1937) 58 CLR 641 at 648. I do not need to repeat them here.

4. The approach of the opponent was to compare its word mark domayne with the two words of domain living in the applicant's device mark.  The opponent stressed the aural similarity between its mark with the first word of the applicant's mark and submitted that the second word of the applicant's mark is a directly descriptive term in relation to the specified services and therefore can be disregarded for comparison purposes.

5. The opponent also referred to the Lamaris, Fabry, Phillip Meehan, Donna Meehan and Davy declarations.  Each declarant is a retail or supplier in the furniture industry, and each essentially expressed the view that the words domain living and domayne are likely to be confused because the words domain and domayne sound the same verbally and that the additional word living in the name domain living can be disregarded as describing the type of retail services offered.

6. On the other hand, the applicant submitted that the applicant's mark should be considered as a whole composite mark comprising two words domain and living presented in the stylised manner.  It was submitted that the words are part of a co- joined logo.  It was submitted that it is the words together, and the visual effect of the domain living trade mark as a logo, which create a composite mark consisting of two known words.

7. The applicant submitted that the impression conveyed to consumers is gleaned from a unique combination of the words comprising the domain living logo.  The word “domain” in the mark is used to describe the type of living, while the words used together conjure up the idea of high-quality living.  The word “domain” acts as an adjective, describing the type of living.  The word “living” therefore has a significant impact on the recollection of the domain living logo.

8. Conversely, according to counsel for the applicant, the word domayne is an invented word.  The impression is carried away and retained by consumers when viewing the domain living logo, and then the opponent's trademark are therefore wholly different.

9. Both parties compared the visual impact and the aural impact on of competing trade marks, while fitting their versions of the factual matrix to the established judicial tests.

10. Counsel for the applicant pointed out that while the opponent had provided declarations from persons in the industry who spoke of the potential confusion, there was no evidence of actual confusion provided.

11. Having considered the evidence and submissions, I am not satisfied that there is a reasonable likelihood of deception or confusion amongst a substantial number of persons if the applicant uses its mark.

12. I agree with the applicant that its mark should be considered as a whole composite mark. 

13. The evidence suggests to me that both parties will predominantly use their respective trade marks on signage on, and in, their retail and wholesale premises and on advertising and publicity literature.  This being the case, the visual aspect of the competing marks is quite important. 

14. I note that the applicant's trade mark comprises two actual words, which while having a descriptive comment about them provides a certain amount of distinctive field to the mark.  The opponent's mark on the other hand is an invented word, albeit aurally similar or identical to the applicant's first word of the trademark, which is visually striking and memorable.

15. In assessing the marks in question, I observe that the situation is somewhat similar to that regarding comparison of the word vogue with eurovogue in Conde Nast Publications Pty Ltd v Virginia Taylor [1998] 864 FCA per Burchett J:

    At the same time, it should be borne in mind that "vogue" is neither a made-up word nor a word wholly without any direct application, in the ordinary use of language, to the goods in question. A trader is not entitled to monopolize such a word, denying its use entirely to other traders. Deceptive or confusing use is barred by the applicant's registration, but the Court should be careful not to shut out inappropriately other traders from the fair use of         the language in ways that will not in reality deceive or confuse.

16. The word 'domain', based as it is on (or derived from) the Latin word 'domus' for 'home', obviously has some facility in relation to the services of interest and the trade marks employ different methods of expressing this common idea: Sports Cafe Ltd v Registrar of Trade Marks [1998] 1614 FCA . 

17. The Foreman declaration provided evidence of numerous trade marks featuring the word ‘domain’ on the Register in classes 20, 35 and 42, such classes broadly relating to ‘home wares’.  While it true to say that the state of the Register should not necessarily constrain a delegate of the Registrar from determining whether or not a mark should be registered, the state of the Register can be relevant in assessing whether or not marks are deceptively similar.

18. As regards section 60, I also note from evidence in support of the opposition that the opponent's trade mark is invariably rendered thus: D^OMAYNE, with the first and last letters larger than those in between, which latter letters are underlined. The differences are, a fortiori, greater and in practice even less likely to deceive or confuse.

19. The manifold differences between the marks, particularly in visual style, are likely to overcome any in perfect recollection of potential buyers of furniture.  Such potential purchasers are unlikely to confuse the premises of the respective parties.

20. Consequently I dismiss both grounds of opposition.

Conclusion

1. The opponent has not made out any of its grounds of opposition, thus the opposition fails.

2. The trade mark application may then proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

1. The applicant sought its costs.  The general rule in awarding costs is that costs are usually awarded against the unsuccessful party, unless there is some conduct on the part of the successful party that would justify a departure from the general rule.

2. I see no reason why costs should not follow the general rule. I award costs against the opponent and direct that the opponent pay the costs of the applicant in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

Jock McDonagh

Hearing Officer

Trade Marks Hearings

28 February 2006