Huntleigh Technology PLC v Bedshed Franchising Pty Ltd

[2008] ATMO 50

TRADE MARKS ACT 1995

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

Re:Opposition by Huntleigh Technology PLC to registration of trade mark application 1095705(20) - CONTOUR - filed in the name of Bedshed Franchising Pty Ltd.

Delegate:

Ian Thompson

Representation:

Opponent: Kelvin Lord of Lord Company

Applicant: Did not appear or file written submissions

Decision:

2008 ATMO 50

Section 52 opposition – section 44 – similarity of trade marks. Trade marks not deceptively similar, opposition not established.

Background

1. In this matter, Bedshed Franchising Pty Ltd, of Osborne Park, Western Australia, (‘the applicant’) has applied to register a trade mark, current details of which appear below:

Appn No:  1095705

Priority date:  24 January 2006

Goods/Services:              Class: 20 Beds - mattress and base

Trade Mark:  

1. The application was examined and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 18 May 2006.  On 16 August 2006, Huntleigh Technology PLC of Luton, Bedfordshire, United Kingdom, (‘the opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the trade mark.

2. The Notice recites the following grounds:

   1)        The opposed trade mark is not capable of distinguishing the goods and/or services in respect of which the opposed trade mark is sought to be registered from the goods or services of other persons.

   2)        The use of the opposed trade mark would be contrary to law.

   3)        The use of the opposed trade mark would be likely to deceive or cause confusion.

   4)        The opposed trade mark is substantially identical with, or deceptively similar to, one or more trade marks registered by the opponent in respect of similar or closely related goods/services.

   5)        The applicant is not the owner of the opposed trade mark.

   6)        The applicant does not intend to use or authorise use of the trade mark in Australia or to assign the trade mark to a body corporate for use by the body corporate in Australia in relation to all the goods and specified in the application.

   7) The opposed trade mark is substantially identical with, or deceptively similar to, one or more trade marks that, before the priority date of the registration of the opposed trade mark in respect of its particular goods or services had acquired a reputation in Australia, and because of the reputation of that other trade mark the use of the opposed trade mark would be likely to deceive or cause confusion.

   8)        The opposed trade mark contains or consists of a sign that is a geographical indication for goods originating in a country or region or locality other than that in which the goods originated.

   9) The application or a document filed in support of the application for the opposed trade mark was amended contrary to the Act.

3. Of the above grounds, the opponent relied at a hearing on those at subparagraphs 4 and 7 corresponding to sections 44 and 60 of the Trade Marks Act 1995 (‘the Act’).

4. The hearing was before me as a delegate of the Registrar of Trade Marks in Perth on 19 July 2007.  Kelvin Lord, of Lord Company, represented the opponent.  The applicant did not appear or put in written submissions.

5. At the hearing, Mr Lord drew my attention to statutory declarations by himself and David Henry, Quality and Regulatory Director of Huntleigh Healthcare Pty Ltd (‘HHPL’) of O'Connor, Western Australia. 

6. Mr Henry explains HHPL is a subsidiary of the opponent.  He says that HHPL first imported into Australia a CONTOURA bed manufactured by the opponent in 1999.  Sales of CONTOURA beds in Australia by HHPL commenced in 2000.  The CONTOURA bed is part of a range of beds and accessories designed to meet the specific needs of caregivers.  The CONTOURA range comprises the following components.

   ·     The C1080 is designed to be used on larger patients who require Bariatric care. This bed has a Safe Working load of 500kg and incorporates an integral weighing system and specifically designed side rails for patient safety.

   ·     The C1000 is the same as the C1080 but without the integral weighing system.

   ·     The C880 is the flagship of the CONTOURA range and is aimed at patients whose clinical condition poses a moving and handling risk. These beds are generally used in intensive care units.

   ·     The C480/460/430 range is a general purpose bed that can be used in high dependency areas or in general wards. The C480 has a Safe Working Load of 267kg which gives it the ability to be used on larger patients.

   ·     The C380 is a cost-effective alternative to the higher specification C480 and is designed more as a general ward bed.

   ·     The CONTOURA Birth bed is specifically designed to cope with the varied demands that occur through all the different stages of child birth.

   ·     CONTOURA Accessories are designed to complement the diverse range of beds to assist both the patient and care giver during the recovery process.

7. The total value of goods sold under the CONTOURA trade mark in Australia by HHPL since the date of first use up to the making of Mr Henry’s declaration is well in excess of ten million dollars.

8. The sales of the beds bearing the CONTURA trade mark before the priority date of the opposed application were in the region of six million dollars.

9. Mr Henry avers the CONTOURA bed range has been sold in all States and Territories of Australia.  Advertisements have appeared in various Australian trade publications including Hospital & Healthcare, Private Hospital and Healthcare.

10. Mr Henry further deposes that the CONTOURA 480 and 380 beds are listed on the New South Wales and South Australian State Government bed contracts as accepted models and therefore the CONTOURA bed is known throughout all government hospitals within these States. 

11. Mr Henry also states the CONTOURA trade mark is currently associated with hospital bed/health care products and accessories and has gained a very good reputation within the industry.  With a market shift toward home care bed gaining momentum in the coming years, HHPL feels that using the CONTOURA trade mark could extend to an Aged Care/Home Care type adjustable bed that would be marketed and distributed through retail outlets.

12. Mr Lord’s declaration brings into evidence details of the opponent’s trade mark registration, which are:

Reg No:               942483

Priority date:  05 February 2003

Goods/Services:              Class: 20 Hospital beds

Trade Mark:  CONTOURA

Discussion and Decision

1. The opponent’s trade mark registration is earlier than the filing date of this opposed application and the goods involved are of the same description, if not the same goods.

2. Further, on the basis of the evidence, which is undisputed by the applicant, it would appear that the opponent’s trade mark had a reputation in Australia at the filing date.

3. According, in terms of section 44 and 60, the nub of the opposition lies in the question of whether the trade marks involved are deceptively similar. If the trade marks are not deceptively similar, the application may (if there is no appeal filed) proceed to registration. If I find that the trade marks are deceptively similar, I must refuse the registration of the opposed trade mark.

4. The onus is on the opponent to establish its grounds of opposition on the balance of probabilities.

5. The principles of the assessment of deceptively similarity are conveniently set out by French J in Registrar of Trade Marks v Woolworths [1999] FCA 1020 at paragraph 50:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (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."

6. As to the comparison of the trade mark in question, the Full Bench of the Federal Court said, in C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539 at paragraph 40:

   There is no room for doubt, in general terms, about the test to be applied. In Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641 at 658, Dixon and McTiernan JJ described it as follows:

   "But, in the end, it becomes a question of fact for the Court to decide 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.

   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, then similarities both of sound and of meaning 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."

   Equally well known is the following passage from the judgment of Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1961] HCA 75; (1961) 109 CLR 407 at 415:

   "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."

   Windeyer J added, at 416, that "[the] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone but, by the effect of that similarity in all the circumstances".

7. Further, I am to consider the all of the circumstances in which the goods are bought and sold.  In In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777), Parker J 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.

8. The opponent has pointed to the very obvious similarities between the word CONTOUR within the opposed trade and the word CONTOURA which comprises its trade mark and cites this as a source of possible confusion between the trade marks.

9. The word ‘contour’ in relation to the goods has some sort of descriptive flavor – at the very least it is suggestive of a bed fitting itself to the shape of the user’s body.

10. Words with such a descriptive flavour were discussed by Burchett J in Conde Nast Publications Pty Ltd v Virginia Taylor [1998] FCA 864:

    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.

11. Although there may be an idea behind the trade marks which is similar, this has, as I have observed, a descriptive flavour and an analogy here also exists with the trade marks involved in Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; (1952) 86 CLR 536. There the High Court observed:

    The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive. As Lord Parker said in the passage cited, you must consider the nature and kind of customer who would be likely to buy the goods. A purchaser of spray nozzles and sprinklers would not be likely to be lacking in discernment. He would not be in a hurry to buy. He would not be likely to pay any attention to the presence of a common word like rain in the combination. That prefix already appears in other trademarks for goods of the same description sold on the Australian market such as Rainwell, Rainmaker, Rain Queen, and Rainbow.

12. Further, the goods are of some expense and are not ones which are bought casually from the shelves in supermarkets.  They are bought in specialist stores, often with the assistance of a sales person – see, for example LANCER Trade Mark Application [1987] RPC 303, (trade marks LANCER and LANCIA) where it was observed that the more expensive an item to be purchased, the greater the care that was usually exercised in the purchase by ordinary people. Conversely, with inexpensive items, the less time and attention the ordinary person gives to consideration of the purchase.

13. I am not satisfied that the trade marks of the parties are deceptively similar – accordingly the opponent has not established its opposition.

14. Section 55 of the Act provides:

    55Decision

    (1)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.

    (2)Without limiting subsection (1), if the application was opposed on the ground specified in paragraph 62(a) (that the application, or a document filed in support of the application, was amended contrary to this Act), the Registrar may revoke the acceptance of the application and examine the application again under section 31.

    Note:For examine and this Act see section 6.

15. As observed, the opponent has not established its opposition to the registration of the trade mark.

16. The trade mark application may 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.

Ian Thompson

Hearing Officer

Trade Marks Hearings

26 June 2008