Henkel KgaA v Sanostra Enterprises Pty Ltd

[2005] ATMO 65

TRADE MARKS ACT 1995

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

Re:Opposition by Henkel KGaA to registration of trade mark application 984284(16),(28),(41) KidSmart and 984628(16),(25),(28),(41) KidStart, both proceeding in the name of Sanostra Enterprises Pty Ltd.

Delegate:

Ian Thompson

Representation:

Opponent

James Maxwell of Peter Maxwell & Associates.

Applicant

Did not appear, unrepresented.

Decision:

1. Sections 44 and 58 – trade marks neither substantially identical nor deceptively similar – oppositions not established.

Background

1.    Sanostra Enterprises Pty Ltd ('the applicant') of Strathfield, NSW, has filed two applications to register trade marks, current details of which are:

App No:  984284

Filing Date:  4 January 2002

Acceptance Date:  25 July 2002

Goods:Class: 16 Stationery; instructional and teaching materials (except apparatus); but excluding computer manuals and instructional material in relation to computing

Class: 28 Games, toys and playthings; gymnastic and sporting articles not included in other classes

Class: 41 Seminars, pre-schools, child-care and kindergartens; entertainment; sporting and cultural activities; exhibitions

Trade Mark:  KidSmart

App No:  984628

Filing Date:  4 January 2002

Acceptance Date:  25 July 2002

Goods:Class: 16 Stationery; instructional and teaching materials (except apparatus); but excluding computer manuals and instructional material in relation to computing

Class: 25 Clothing, footwear, headwear; all the foregoing in this class

Class: 28 Games, toys and playthings; gymnastic and sporting articles not included in other classes

Class: 41 Seminars, pre-schools, child-care and kindergartens; entertainment; sporting and cultural activities; exhibitions

Trade Mark:  KidStart

2. On 19 August 2004 Henkel KGaA ('the opponent') of Dusseldorf, Germany, filed Notices of Opposition (‘the Notices’) to the registrations of the trade marks. The Notices are ‘broad spectrum’ and cite the grounds under sections 44 and 58 of the Trade Marks Act 1995 (‘the Act’), which were pursued at hearing.

3.    Evidence in support was served and filed – there is no evidence in answer. 

4.    A hearing was held before me, as a delegate of the Registrar of Trade Marks, in Melbourne, on Tuesday 18 July 2005.  James Maxwell of Peter Maxwell & Associates represented the opponent.  The applicant did not appear at the hearing or put in writing submissions.

Evidence

5.    The evidence comprises a statutory declaration by Mr Simon Terrell who is divisional manager of Henkel Australia Pty Limited and states that he is qualified to attest on the opponent’s behalf.  Relevantly, the evidence purports to show that the opponent has had use of the trade mark KidsArt on goods which might be characterized as children’s art supplies (in Class 16) since October 2003 and has trade mark registrations which include the term, or word, KidsArt in the forms shown below:

Any common law use of the word KidsArt in the opponent’s evidence has the word PRITT in close association with it.

Reasons

1. The opponent’s prospects of success in this opposition stand or fall on the question of whether the opponent’s trade marks, above, (or any common law use made of the trade mark KidsArt) is or are substantially identical with or deceptively similar to the opposed trade marks enlisted in paragraph one of this decision.

2. The standard that I am to apply in coming to a decision is that most recently adopted by the Court in Kowa Company Ltd v N V Organon [2005] FCA 1282 at 138:

   I do not think that the decision in Registrar of Trademarks v Woolworth[1]s is ambiguous. French J said that there is a presumption of registrability; that Jafferje[2]e no longer is relevant; that the Court must apply the same legal criteria as the Registrar; that because of the obligation imposed by s 33 the application must be accepted unless the Court is satisfied that the application has not been made in accordance with the Act or there are grounds for rejecting it; and that the decision to reject must be made upon positive satisfaction that the ground has been made out.

   Both Registrar of Trademarks v Woolworths and Lomas[3] stand for the proposition that the Court as well as the Registrar should approach the question of registration with the presumption of registrability in mind and when on appeal to this Court the Court should consider whether the trade mark should clearly not be registered.

   I think I am bound to follow Woolworths and Lomas, and I should as a matter of comity follow Torpedoe[4]s because it has been followed by other judges of this Court.

   Therefore, I would proceed on the basis that the onus lies on the respondent to establish the grounds of opposition it relies upon and that I should not uphold those grounds unless I am satisfied that the trade mark should clearly not be registered.

   [1] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365

   [2] Jafferjee v Scarlett (1937) 57 CLR 115

   [3] Lomas v Winton Shire Council [2002] FCAFC 413

   [4] Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd (2003) 204 ALR 90

3. In determining whether two marks are ‘substantially identical’ they must ‘be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison’: The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414 per Windeyer J.

4. It is quite obvious that the opponent’s registered trade marks have either a device element or other words present in the trade marks as used and registered.  In use at common law, the word PRITT appears in close association with the word KidsArt. 

5. Further, there are obvious differences between (on the one hand) the word KidSmart or the words KidStart, and KidsArt on the other.  The three words bring quite different things to mind and there is the problem which I will again advert to, below, that the conjoined expression KidsArt appears to me to be a direct statement of the intended purpose of the opponent’s goods.

6. Suffice to say at this juncture that the opponent’s trade marks are not substantially identical to the opposed trade marks and the opponent has not clearly established the section 58 ground of opposition.

7. As also stated by Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415, as concerns deceptive similarity:

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

8. The market and other contexts are to be considered.  Lord Parker (then Parker J) in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, 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. If, considering all those circumstances, you come to the conclusion that there will be a confusion -- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you may refuse the registration, or, rather, you must refuse the registration in that case.

9. It appears clear to me that the opponent’s trade marks have been registered as composite trade marks in which the principle in Diamond T. Motor Co's Appn (1921) 38 RPC 373 (Ch.D.). has been applied to allow acceptance. That is – the word KidsArt lacks inherent capacity to distinguish the opponent’s goods, these being kid’s art supplies, but the opponent’s trade marks, considered as wholes, have been found to have the capacity to distinguish the opponent’s goods.

10. As such, in any comparison of the parties trade marks, the component KidsArt, should be subject to some form of ‘discounting’ as it would be an error to impute full rights in that term: Coca Cola Co of Canada v Pepsi Cola Co of Canada (1940) 59 RPC 127.

11. Further, the shared word KID between the parties’ trade marks, being the apparent intended market for both parties’ goods, should be subject to the same form of discounting.  That is, it cannot be ignored in the comparison but the assessment should take place with the knowledge that ‘kids’ or children are the intended market of the goods.

12. Further, while the ‘prefixes’ within the trade marks are all the same word, the ‘suffixes’ are all different words with diverse meanings, albeit they sound similar. An argument that there is only one letter different between trade marks thus must be approached with some caution – especially here, where, as I have observed, the prefix merely denotes the market for the goods.  There is, after all only one letter different in the words CROW, CHOW and COW but they each bring quite different things to mind and are unlikely to be confused for each other.

13. Accordingly, in answer to the putative question as to whether the trade marks incorporating the word KidsArt on the one hand and KidSmart and KidStart on the other, would (in terms of section 10 of the Act) confuse or deceive (in respect of the nominated goods) and that the latter two trade marks should thus because of the alleged deceptive similarities of the words ‘Art’ versus ‘Smart’ and ‘Start’ as suffixes (where the prefix denotes only the market), ‘clearly not be registered’? The answer could hardly be in the affirmative bearing the other differences in the trade marks and the inherent qualities of the opponent’s indium KidsArt within its trade marks in mind.

    Viewed in such a way, I think that it is most unlikely that the trade marks could confuse or deceive and hence they are not deceptively similar.

    The opponent has not established its ground under section 44 of the Act.

    Decision

    19. Section 55 of the Act provides:

    55. 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.

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

    Ian Thompson

    Hearing Officer

    Trade Marks Hearings

    7 November 2005