Himalaya Global Holdings Ltd

[2012] ATMO 8

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1362229(5) - GASEX- in the name of Himalaya Global Holdings Ltd.

Delegate:	Iain Thompson
Representation:	Applicant: Cathryn Warburton of Acacia Law
Decision:	2012 ATMO 8 Section 33 proceedings – s44: similar goods – trade marks deceptively similar – phonetic identity of trade marks – application rejected.

Background

1. This decision under section 33 of the Trade Marks Act 1995 (‘the Act’) concerns a ground for rejection of a trade mark application which has been recited by a trade mark examiner.  Details of the application appear below:

   Application No:           1362229
   Priority Date:               19 May 2010

   Goods:Class 5:  Pharmaceutical substances; dietetic substances for medical use

   Trade Mark:                GASEX

2. The ground for rejection is stated by the examiner of trade marks to exist under subsection 44(1) of the Act because of the trade mark registration which is detailed below:

   Application No:           1235041
   Priority Date:               15 April 2008

   Goods:Class 5:  Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use; food for babies; plasters, materials for dressings; material for stopping teeth; dental wax; disinfectants; preparations for destroying vermin, fungicides, herbicides

   Trade Mark:                GAS-X

   Endorsement:               Provisions of subsection 41(5) applied.

3. The examiner has issued three reports which have not resiled from the ground for rejection, alleging (inter alia) the deceptive similarity of the trade marks.  Consequently, ‘the applicant’, Himalaya Global Holdings Ltd, requested to be heard.

4. As a delegate of the Registrar of Trade Marks, I heard the applicant’s submission by teleconference in Canberra on 14 December 2011.  Ms Cathryn Warburton of Acacia Law represented the applicant.

   The Submissions

5. Ms Warburton presented oral submissions and also a written summary thereof which I reproduce below:

   The onus is on IPAU to demonstrate that the [trade marks are] deceptively similar. This is because section 33 of the TMA embodies a “presumption of registrability”: see Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365.

   When considering deceptive similarity, it must be assumed that the trade marks will be put to a normal and fair use: see Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353.

   All surrounding circumstances must 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: see Registrar of Trade Marks v Woolworths Ltd (supra).

   In Deeko Australia Pty Ltd v Decor Corp Pty Ltd (1988) 11 IPR 531, the court ruled that two marks were not deceptively similar because they were “two quite different words: one an ordinary part of the English language ... the other an apparently meaningless, invented word.”

   In Starr Partners Py Ltd v Dev Prem Pty Ltd (2007) 71 IPR 459 it was held that phonetic similarity between two marks did not necessarily mean that they would be deceptively similar, so long as the marks are usually not asked for by name (they may be identified in some other way, i.e. through written advertisements etc).

   SUBSTANTIVE SUBMISSIONS

   The Applicant submits that its GASEX mark is not deceptively similar to the GAS-X mark cited by [the examiner].

   Relevant Goods

   Firstly, the Applicant notes that its trade mark is specified for use on pharmaceutical/dietetic products. These are not products which consumers choose lightly. On the contrary, a consumer will typically be extremely discerning when choosing medical products, since their own health is dependent on making a correct choice.

   The purchasers of the goods which [the trade mark] GASEX is specified for are therefore likely to pay a very high level of attention when choosing them.

   The Applicant submits that this makes it unlikely for a consumer to be confused or deceived into believing that [the trade marks] GASEX and GAS-X refer to the same trader.

   Differences In The Marks

   The two marks GASEX and GAS-X convey very different general impressions. With GAS-X, it seems that the main component is GAS, while the –X is ‘tacked on’. GASEX, meanwhile, has no clear components; the whole word strikes us as important rather than having a “main component” like GAS-X. The way the two marks strike the viewer is therefore rather different.

   [The trade mark] GAS-X also has the unusual distinctive feature of a dash between the S and X. [The trade mark] GASEX lacks such a feature. Because the dash is so prominent and so recognizable, consumers will have no difficulty telling them apart visually.

   Deeko Australia v Decor (supra) ruled that if one mark is an English word and the other is meaningless and invented, they are not deceptively similar.

   This is essentially the case here. As noted above, the main component of [the trade mark] GAS-X is [the word] “GAS”; the viewer will likely imagine that the “-X” denotes some subtype of this gas. The main feature and idea of [the trade mark] GAS-X is therefore the English word “gas”. [The trade mark] GASEX, however, is a meaningless invented word; the viewer does not really perceive the word “gas” within the mark because, although it contains two syllables, these syllables run together to form one continuous sound.

   As a result, the criteria laid down in Deeko are met. One mark is a meaningless, invented word (GASEX). The main component of the other mark (GAS-X) is an ordinary English word (signifying “gas of “x” type”). The Applicant therefore submits that its mark is entitled to registration under the precedent laid down in Deeko.

   There is also the question of phonetic similarity. Admittedly, GASEX and GAS-X will be pronounced in similar ways by consumers. But this does not preclude registration of the mark. In Starr Partners (supra) it was decided that the registration of phonetically identical marks may be permissible if the products were not usually asked for by name.

   This is the case here. Pharmaceutical/dietetic products are typically identified visually by consumers on the shelves of pharmacies; consumers do not usually ask the pharmacist verbally for the product. The only instance in which consumers tend to verbally ask a pharmacist for a certain product is with prescription medication, and in this case the consumer is unable to choose one product over another because legally they can only obtain what they have been prescribed. The verbal request is therefore overridden by the contents of the written prescription. There is thus no possibility of deception or confusion with prescription medication. As a result, there is little possibility of confusion in either instance.

   In light of these reasons, the Applicant contends that IPAU cannot discharge its onus of proving that the mark is deceptively similar.

   Discussion

6. Subsection 44(1) of the Act provides:

   Identical etc. trade marks

   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:

   (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.

7. I note that the applicant has not adduced any evidence of use of its trade mark and that the provisions of subsections 44(3) and 44(4) are therefore not relevant to this application.

8. As the potentially conflicting trade mark has both an earlier priority date and similar goods to those of this application, the sole issue for me to decide is whether the trade marks are deceptively similar.

9. Before I do this, however, I will record that there is good argument that the trade marks GASEX and GAS-X are substantially identical.

10. Substantial identity is to be gauged according to the tests in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 (‘Shell’) where Windeyer J said at paragraph 12:

    In considering whether marks are substantially identical they should, I think, 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 identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity …

11. The appearance and phonetic identity of the trade marks GASEX and GAS-X is such that the elision of the alphabetical letter ‘E’ and its replacement with a hyphen is, in my consideration, de minimis.  The differences between the trade marks in both appearance and, particularly, sound is so trifling that to all intents they appear to be the same trade mark which conveys the identical meaning, particularly in the context of carminative or anti-flatulence preparations (which are the apparent goods of interest): Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901; (2003) 132 FCR 326; (2003) 204 ALR 90; (2003) 59 IPR 318; [2003] AIPC 91-919 per Bennett J at 58:[1]

    The respondent, relying on Shell, submitted that the comparison may only be visual and that aural similarity, while relevant in considering deceptive similarity, is not relevant in determining whether two marks are substantially identical. I find nothing in s 44 of the Act that draws this distinction. ‘Identical’ is relevantly defined as `corresponding exactly in nature, appearance, manner, etc’ (Macquarie Dictionary, revised third edition). While Windeyer J in Shell compared the visual and not the aural features, that was in the context of the marks there under consideration and does not assist Enterprises in precluding consideration of the aural characteristics. The requirement of substantial identity recognises that the identity is not absolute but, as is clear from Shell, the question involves a consideration of the essential elements of the mark, the matters that are ‘exactly similar in everything that matters for all relevant purposes’ (Ex parte O’Sullivan; re Craig (1944) 44 SR (NSW) 291 at 298). It is not limited to appearance. In considering the total impression, both the visual and aural aspects are relevant. Further I note that s 7(2) of the Act specifically provides that aural representation is a use of the mark.

    [1] See also E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; [2010] AIPC 92-381; (2010) 86 IPR 224; (2010) 84 ALJR 352.

12. Deceptive similarity is to be assessed according to the tests set out in Shell at paragraph 13:

    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. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two  marks  side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the  marks  clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that  marks  are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106 . And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 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” (1937) 58 CLR, at p 658.

13. The comparison is to take place in the context of the goods in question.  This contextual comparison was stressed in In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, above, where 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.

14. The standard which is applied to the test is that specified in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at paragraph 50 by French J who said:

    In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

    (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] HCA 43; (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.”

15. And, I am to consider the question of deceptive similarity within the extent of the uses of the registered trade mark and this trade mark to which the owners of the trade marks may put them: Woolworths at 88:

    The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration.

16. The comparison of the trade marks which has been suggested by Ms Warburton depends to a large extent on having the trade marks side by side for a detailed comparison and a somewhat abstruse semantic analysis which is unlikely to be foremost in the minds of potential purchasers when selecting goods from the shelves of chemists, supermarkets or health-food stores, requesting the goods over the counters, or asking for assistance in locating the goods sold under either of the trade marks.  Additionally, while Ms Warburton builds on the small difference which exists between the trade marks, it is the likely effect of the similarity which I am to consider.  Accordingly, much of Ms Warburton’s submission is not persuasive.

17. The trade marks start with the same syllable and share both the same idea and sound: In the Matter of London Lubricants (1920) Limited’s Application to Register a Trade Mark (1925) 42 RPC 264 at 279, by Sargant LJ:

    “But the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.”

18. And, while commonality of idea is not of itself fatal in this regard,[2] the sound and appearance of the trade marks is to all intents identical.

    [2] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; (1952) 86 CLR 536 but contrast with Jafferjee v Scarlett [1937] HCA 36; (1937) 57 CLR 115.

19. I further consider that it is unrealistic to suppose that a potential purchaser will note the minor difference in the appearance of the trade marks and distinguish between them on this basis.  It is notorious that trade marks are not perfectly remembered.  This issue was discussed in Crazy Ron’s Communications Pty Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196; (2004) 209 ALR 1; (2004) 61 IPR 212; [2004] AIPC 92-015 where Moore, Sackville and Emmett JJ explained:

    For example, in Aristoc Ltd v Rysta Ltd [1945] AC 68, the House of Lords held that the respondents were not entitled to register ‘Rysta’ as a trade mark in respect of stockings in the face of the appellants’ ‘Aristocrat’ registered mark for the same goods. Viscount Maugham (with whom Lords Thankerton and Wright agreed) adopted (at 86) the reasoning in the dissenting judgment of Luxmoore LJ in the Court of Appeal: Rysta Ltd’s Application (1943) 60 RPC 87. Luxmoore LJ said (at 108-109):

    ‘The answer to the question whether the sound of one word resembles too nearly the sound of another so as bring the former within the limits of s 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. 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 assistance ministering to that person’s wants.’

    Viscount Maugham accepted Luxmoore LJ’s view that there was a tendency to slur a word beginning with ‘a’ and that the similarity between the pronunciation of ‘Rysta’ and ‘Ristoc’ was fairly obvious. Aristoc v Rysta thus recognises that the concept of imperfect recollection may be applied to the pronunciation of a particular word included in a trade mark.

1. Or, to paraphrase Lord Simonds in the appeal in the House of Lords: Aristoc Ltd. v. Rysta Ltd. (1945) AC 68 at 104:

   Take the hypothetical case of a person (whether as a salesperson or as a customer) who has heard of GAS-X preparations but not of GASEX preparations and who seeks, or responds to a request for, GAS-X preparations.  In such a case is there a likelihood that the person will select or alight upon goods sold under the trade mark GASEX?

2. In my consideration the answer to that question has to be ‘yes’.

3. The trade marks in question are deceptively similar.

   Decision

4. Section 33 of the Act provides:

   Application accepted or rejected

   33.(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:

   (a) the application has not been made in accordance with this Act; or
   (b) there are grounds for rejecting it.

   Note:  For the grounds on which an application may be rejected see Division 2.

   (2) The Registrar may accept the application subject to conditions or limitations.

   Note:  For limitations see section 6.

   (3) If the Registrar is satisfied that:

   (a) the application has not been made in accordance with this Act; or
   (b) there are grounds for rejecting it;

   the Registrar must reject the application.

   (4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.

   Note:  For applicant see section 6.

5. I reject application 1362229.

   Iain Thompson
   Hearing Officer
   Trade Marks Hearings
   31 January 2012