ICI Plc v Toyo Ink Mfg Co Ltd

[2002] ATMO 117

TRADE MARKS ACT 1995

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

Re:Opposition by ICI PLC to registration of trade mark application 768476 – i&i logo- filed in the name of Toyo Ink Mfg Co Ltd.

Background

Trade mark application 768476 consists of the letters and character i&i, rendered as shown below.  It was filed on 24 July 1998 by Toyo Ink Mfg Co Ltd (“TIM”) and seeks registration of the trade mark for “Paints, dyestuffs, pigments, printing inks, colorants, toner for electrophotography,” in class 2 of the International (Nice) Classification of Goods and Services.

 

Registration of the trade mark is opposed by ICI PLC (“ICI”). Prior to the hearing of the matter, the grounds of opposition were restricted to those under sections 41, 44 and 60 of the Trade Marks Act 1995 (“the Act”). 

Evidence in support of the opposition and evidence in answer thereto has been served and filed by the parties and I heard the matter as a delegate of the Registrar of Trade Marks in Canberra on 20 June 2002.  Ben Fitzpatrick of counsel represented ICI.  Gerard Skelly of Spruson & Ferguson represented TIM.

The Evidence

There are three declarations in evidence.  One, in support of the opposition, is by Walter Paul Johnson, Group Trade Mark Counsel of ICI and Patents and Trade Marks Manager for ICI Paints.  The two declarations in answer to the opposition are from Yoshio Usui and Jeff Coffield who are, respectively, Managing Director of TIM and Business Manager of Swift and Company Limited.

For the purposes of the limited heads of opposition of these proceedings, the evidence can be summarized as showing:

Johnston Declaration

ICI has two registrations in respect of paints with priority dates earlier than that of this opposed application, these being registration 727643, for the letters ICI, and registration 476718, for the trade mark that appears below (‘the roundel trade mark’).

 

ICI has had extensive use of the roundel trade mark in Australia in relation to paints, in conjunction with other trade marks, such as Dulux, Glidden, Hammerite or Cuprinol.

ICI have expended large amounts of advertising in relation to its roundel trade mark, in association with those other trade marks and its roundel trade mark has a reputation in Australia in relation to paints.

Yoshio Usui

The opposed trade mark has been used in Australia since 1993 in relation to offset inks and pigments for paints and TIM intends to use the trade mark in relation to paints and toner in Australia in the near future.  There have, to the declarant’s knowledge, been no instances of confusion between it and the opponent’s roundel trade mark.

Jeff Coffield

Mr Coffield states his opinion that the products made by the parties are different and that, furthermore, the trade marks are different in appearance and sound.

Issues and Decision

Section 41

Section 41 and its structure are extensively discussed and analyzed by Branson J in Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 (the Oregon case). The opposed trade mark was accepted for registration without objection by the examiner. As observed by Hearing Officer Murray in Abbott Laboratories v Perkin Elmer Corporation (unpublished), which was similarly accepted without any demur by the examiner:

This indicates that, in the examiner's opinion, the mark satisfied the threshold test set in section 41 for capacity to distinguish. The marks were considered on their face to be capable of distinguishing the applicant's goods, in terms of subsection 41(3), with no further enquiry required by the delegate of the Registrar.

However, subsection 41(4) provides that the Registrar may apply further tests for capacity to distinguish, if he or she is unable to decide the question under subsection 41(3). For example, the Registrar may decide that the trade mark is only to some extent inherently adapted to distinguish.  In this case, he or she may consider, under the provisions of paragraph 41(5)(a), the effect of that reduced level of inherent adaptability to distinguish, combined with:

·the use, or intended use, of the trade mark by the applicant;

·any other circumstances;

in order to determine whether the trade mark does or will distinguish the designated goods or services as being those of the applicant.

Alternatively, the Registrar may find that the trade mark is not, to any extent, inherently adapted to distinguish the designated goods. Then he or she must take the trade mark to be not capable of distinguishing those goods, unless the trade mark qualifies under the following provision of paragraph 41(6)(a):

If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons.

Submissions

Mr Fitzpatrick, for ICI, submitted:

The mark the subject of the opposed application consists of the two letters 'i' and 'i' separated only by an ampersand. In light of the long recognised tendency of traders to use letters or initials in the course of their activities, such a mark has a very low level of inherent distinctiveness. The applicant therefore has a significant onus to show acquired distinctiveness through use in relation to the claimed goods. Registrar of Trade Marks v W. and G du Cros Ltd (1913) 30 RPC 660 and Ford-Werke A.G's Appn (1955) 72 RPC 191.

In Effem Foods Pty Ltd v Marks and Spencer PLC [1999] ATMO 88, the Registrar's delegate was required to consider the inherent distinctiveness of the mark "M&S' pursuant to the provisions of s. 41 of the Act. At page 6 of the decision, the Delegate stated:

Since there is a general tendency by persons to use letters, or initials, in the course of their trading activities, including use in relation to goods or services, an applicant, who seeks registration of a trade mark consisting of letters, bears a heavy onus in proving that such a mark distinguishes is goods from those of other traders - Registrar of Trade Marks v W. and G du Cros Ltd (1913) 30 RPC 660 and Ford-Werke A.G's Appn (1955) 72 RPC 191. This is particularly so when the letters are presented in plain type, without embellishment, as in the present case, where the mark consists of two upper case letters joined by a common place ampersand.

In response, Mr Skelly submitted:

· Under section 41(2) the Registrar must reject an application if the trade mark is not capable of distinguishing the relevant goods.

· Under section 41(3) the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish.

In this regard, it is relevant to consider the likelihood of others thinking of i & i and legitimately wanting to use this combination in connection with similar goods in any manner which would infringe (Clark Equipment Co v. Registrar of Trade Marks (1964) 111 CLR 511).

In Effem Foods Pty Ltd v. Marks and Spencer Plc (30 August 1999) the Registrar’s delegate, Mrs Vija Zars, was of the opinion that M & S (ie two upper case letters joined by a commonplace ampersand) possessed some degree, albeit small, of inherent adaptation to distinguish.

The Applicant’s mark in the present case contains the letter “i” repeated, each rendered in lower case and separated by an ampersand.

In Analyses Conseils Informations ACI v. Iguassu (No. 16) Pty Limited and A1 Gray Nominees Pty Limited (17 January 2001) the Registrar’s delegate, Mr Don Nancarrow, when assessing the inherent adaptation to distinguish of a composite mark containing the numeral 4 in combination with the letters “d” considered it relevant that the letter “d” was rendered in lower case with the appearance of being italicised.  

Discussion

In terms of section 41(3), it is a relevant consideration that the alphabetical letters ‘i’ in the opposed trade mark are rendered in lower case. The principle that grew out of cases like Du Cros and Ford-Werke, above, did so because of the common practice of traders affixing the initial letters of their names to the goods in which they traded.  This practice was seen as a right – much as was the freedom of traders to, for instance, indicate the nature, place of origin or composition of their goods without peril of an action for infringement of a registered trade mark.

Thus, trade marks consisting of two initial alphabetical letters, or two such letters separated by an ampersand, fall at the first step in terms of subsection 41(3) as they are not capable of distinguishing the goods.  (They do, however, as observed by Hearing Officer Zars, above, have a marginal amount of inherent capacity to distinguish).

However, the opposed trade mark contains the lowercase letter ‘i’, whereas conventional wisdom suggests that uppercase is more likely to be used for initials. Additionally, the comparative sizes of the letters and the ampersand move the opposed trade mark somewhat further from what might be perceived as being an obvious presentation of the initial letters of a trader’s name or traders' names. Neither factor in itself is particularly striking but the trade mark must be viewed as a whole. As such, this composite does not present itself as the initial letters of a name (or names) and is not likely to be perceived as such. In terms of section 41(3), the trade mark is sufficiently inherently adapted to distinguish the designated goods from the goods or services of other persons.

ICI have not filed evidence of any other way in which the opposed trade mark might lack inherent distinctiveness.  I do not consider that ICI has established this ground of opposition.

Section 44

Section 44 of the Act provides, as far as is relevant to these proceedings:

44  Identical etc. trade marks

(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.

Submissions

The goods covered by the ICI registrations 476718 and 727643 are essentially the same goods as those in respect of which registration is opposed and the priority date of those registrations are earlier than that of the opposed application.  Further, Mr Fitzpatrick did not argue that the trade marks are substantially identical.  The sole issue to be decided is whether I am satisfied that the trade marks are deceptively similar.  Both parties referred me to much the same case-law concerning deceptive similarity; this being:

·     Shell Co. of Australia Ltd v. Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407

·     Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd (1954) 91 C.L.R. 592, at 594, 595

·     London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264

·     De Cordova v. Vick Chemical Co. (1951) RPC 271

·     Pianotist (1906) 23 RPC 774, 777 per Parker L.J.

·     Australian Woollen Mills Ltd v. F S Walton & Co. Ltd (1937) 58 CLR 641, 658 per Dixon & McTiernan J.J.

·     CA Henschke & Co. v. Rosemount Estates Pty Ltd [2000] FCA 1539 (31 October 2000).

Discussion

Deceptive similarity is defined by section 10 of the Act:

10  Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

The comparison between the trade marks is one of impression and is not to be carried out with the trade marks side by side.

Mr Fitzpatrick argued that the main feature of the trade marks is the letter ‘I’ – it being the first and last letter of each trade mark and the feature that is likely to be remembered, carried away and recalled.  However, I consider that there are limitations to this line of reasoning.  The trade marks in question are a clear example of these limitations:  the features that Mr Fitzpatrick refers to are minor elements – the letters ‘i’ or ‘I’ - which are not in themselves particularly memorable and are parts of trade marks that gain their identity from the totality of letters or symbols within them.

Viewed in this manner, any separation out of the elements of the trade marks in order to identify them as being ‘essential elements’ is artificial and inappropriate. 

Mr Fitzpatrick argued at the hearing that the reputation of the ICI trade marks should be taken into account in my assessment.  He referred me to C.A. Henschke v. Rosemount Estates Pty Ltd [2000] FCA1539 (31 October 2000), Coca–Cola Company v All-Fect Distributions Ltd (1999) FCR 107) and Registrar of Trade Marks v. Woolworths Ltd (1999) 45 IPR 411, as examples of where reputation had been taken into account by the Courts in their assessment of deceptive similarity.

In Henschke, the Court said at paragraph 52:

Woolworths was not an infringement case and, of course, the notoriety taken into account was not any notoriety attaching to marks already registered (or marks applications for which had been lodged before the Woolworths application); the notoriety attached to an element of the mark for registration of which Woolworths had applied. Nevertheless, in our view, Woolworths suggests a proposition for which the cases on which the appellants rely may be taken as authority. It is that, in assessing the nature of a consumer's imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration.

In my discussion of the evidence I have accepted that the ICI roundel trade mark has a reputation in relation to paints – it occurs on every can of paint sold by the authorized user of the trade mark.  However, I am not satisfied that it is notorious and I note that:

• the trade mark ICI without the roundel either does not occur on the product or is so minor that it is not discernable in the evidence. 

• the roundel, which has a border and two wavy lines across its lower half, is an essential feature of the roundel trade mark and must affect any consumer’s recollection of the trade mark. 

Accordingly, if this aspect of reputation is relied on by ICI as it affects recollection, imperfect or otherwise, the roundel trade mark is the relevant trade mark and is very unlikely to be recalled by consumers without the graphical elements also being recalled.

Accordingly, the trade marks of the parties are not, in my estimation, deceptively similar.  On the one hand there is a trade mark comprised solely of letters rendered in uppercase (with or without the roundel device); on the other hand, the trade mark has the letters in lowercase, interrupted by an ampersand that is disproportionately small in relation to the letters.  These factors leave me with an overall impression of dissimilarity and it is unlikely that a person with a memory of the ICI trade marks will, upon seeing the i&i trade mark, be confused or deceived.

Accordingly, ICI has not established its ground under section 44.

Section 60

Section 60 relies on ICI establishing, at the threshold, that the trade marks in question are at least deceptively similar if not substantially identical. I have found that the trade marks of the parties are not deceptively similar. Hence ICI cannot establish its ground under section 60.

Conclusion

ICI has not established the grounds of opposition on which it relied.  Unless the Registrar is notified, within four weeks of the date of this decision, of an appeal, the trade mark may be registered.  If notice is received by the Registrar within the time allowed, the application should remaining pending until the appeal has been determined or abandoned.

Costs

Both parties requested that costs follow the outcome and I order that ICI pay TIM’s costs according to the scale in the regulations.

Terry Williams

Hearing Officer

Trade Marks Hearings

17 December 2002