Industrial Control Software Limited v Ampcontrol Pty Limited

[2000] ATMO 19

TRADE MARKS ACT 1995

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

Re:Opposition by Industrial Control Software Limited to registration of trade mark application number 756486 - IMAC - in the name of Ampcontrol Pty Limited.

Background

Ampcontrol Pty Limited (the applicant) filed the above numbered application, for the word IMAC, on 5 March 1998 in respect of goods in class 9 and services in class 37. The application was accepted on a second examination report after modification of the specification claimed in both classes. At acceptance, the specification read 'electronic apparatus used for data acquisition, transmission, control and display', for goods in class 9, and 'installation, maintenance and repair of electronic apparatus used for data acquisition, transmission, control and display' for services in class 37.

Acceptance of the application was advertised in the Australian Official Journal of Trade Marks (the Journal) of 9 July 1998. Industrial Control Software Limited (the opponent) filed a notice of opposition on 9 October 1998 listing grounds under s. 57 involving s.41, s.42(b), s.44 and s.43, and also grounds under s.58, s.59 and s.60. The opponent filed and served its evidence in support by 13 July 1999. The applicant chose not to serve any evidence in the matter. Neither party requested to be heard and so the matter has been directed to me, as a delegate of the Registrar, for a decision based on the material held in this Office.

The Evidence

The opponent's evidence in support of its opposition consists of a single declaration from Brian Gregory Raynor with attachments BGR-1 to BGR-6 inclusive (the Raynor declaration). The declaration is dated 28 June 1999. Mr Raynor is a director of Advanced Project Solutions Pty Limited, the exclusive Australian distributor for the present opponent in respect of computer software packages.

The evidence indicates that the opponent uses the mark iMAC in relation to a computer software package, associated firmware and software modules. The package itself is described as a printer replacement/alarm management system used as a printer replacement in (primarily) industrial control rooms. The mark has been used from approximately December 1994. Sales figures in the Australian market from 1995 onwards, and overseas sales figures and registrations, provide evidence concerning the extent of use of the mark.

Submissions

The legal representatives for the opponent, Griffith Hack Patent and Trade Mark Attorneys, of Perth, filed written submissions on behalf of the opponent on 7 January 2000. These submissions provided argument that the opponent is the owner of the mark and directed me to a consideration of s.58 of the Act. The opponent claims use of the mark in relation to 'management software and firmware associated therewith for data logging and generation of screen-based alarm/event/report displays'. In its written submissions, the opponent also presents a suggestion for possible co-existence of the conflicting interests, by means of a restriction of the applicant's claim of the goods in the application. The opponent also requested costs in the matter.

Discussion

Although the notice of opposition listed grounds under seven sections of the Act, only that under s.58 was directly argued in the opponent's submissions. As some of the evidence could arguably support a ground under s.60, I also intend to consider that ground in these reasons. The other grounds listed in the notice, under s.41, s.42(b), s.43, s.44 and s.59, find no support in either the evidence served, or in the written submissions. Correspondingly, I find that the opponent is not successful in terms of those five grounds.

(a) Section 58 - Applicant not owner of trade mark

The relevant legislation reads:

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

The principles surrounding the issue of ownership under s.58 of the Act have not changed from the same consideration under s.40 of the Trade Marks Act 1955. The present position at law is that ownership of a trade mark for the purposes of s.58, is found either by first use of the mark in the Australian market, in connection with the relevant goods or services, or by the making of an application for registration, whichever is the earlier. These principles[1] are well established in relation to s.40 of the repealed Act.

[1] Shell Co (Aust) Ltd v Rohm & Haas Co (1948) 78 CLR 601

The applicant, having filed no evidence of use, lays claim to ownership by means of its application filed on 5 March 1998. To overturn this claim, the opponent would need to show an earlier use of the trade mark or one virtually identical to it. Further, in terms of s.58, the opponent would need to demonstrate use on 'the same kind of thing', as required by the test in Re Hicks' Trade Mark (1897) 22 VLR 636 as per Holroyd J.

The present application is in respect of the word IMAC in normal upper-case (or block) lettering. The opponent has provided evidence to show use of the trade mark iMAC from approximately December 1994.

In evaluating substantially identical trade marks Windeyer J in Shell Co. (Aust.) Ltd v EssoStandard Oil (Aust.) Ltd (1961) 109 CLR 407 stated at 414:

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.

For the purposes of s.58 the marks should be identical or virtually identical. A variation in upper-case lettering and lower-case lettering between the respective marks, as occurs here, is not sufficient, in my opinion, to override the fact that in every other particular the words are identical. The difference in case makes no difference to the spelling, the meaning or the pronunciation of these marks.

Applying the above test from Shell, supra, and comparing the marks side by side, I find that the two trade marks, IMAC and iMAC, are substantially identical.

Thus, I find that the opponent has used a virtually identical mark, in the course of trade in Australia, from a date prior to the filing date of the present application. The remaining test to be made is whether the opponent has used its mark 'on the same kind of thing' as the goods or services of the present application.

The application claims 'electronic apparatus used for data acquisition, transmission, control and display', for goods in class 9. The opponent has sold 'management software and firmware associated therewith for data logging and generation of screen-based alarm/event/report displays'.

'Firmware' is defined in the Oxford English Dictionary (2^nd Edition) as being a word used in computing and meaning 'a permanent form of software built into certain kinds of computer'. This, I believe, places firmware as being an item that could be said to have aspects of either 'computer software' or 'computer hardware'. Firmware, being a permanent, built-in feature to a computer could be considered as part of that hardware - that is, part of the apparatus. Both the electronic wares claimed in the application and those dealt with by the opponent embrace software and firmware designed to collect, collate, manipulate and display data. As part of the goods claimed by the opponent may, from the wording of the respective specifications, form part of the goods claimed by the applicant I find that within both sets of goods there are at least some that qualify as being 'the same kind of thing'.

From the foregoing, I find that the opponent has successfully addressed all of the relevant tests established under legal precedent in relation to s.58, in relation to the specification claimed by the applicant for its class 9 goods. As such, the opponent is successful in terms of this section of the Act.

I also note, however, that the applicant claims class 37 services concerning 'installation, maintenance and repair of electronic apparatus used for data acquisition, transmission, control and display'. Under s.58 the competing claims by the applicant and the opponent must be in respect of 'the same kind of thing' for the opposition to succeed. The applicant's class 37 services are not challenged[2], in terms of s.58, by the opponent's class 9 goods of computer software and firmware on which it has shown use of the mark iMAC.

[2] See Australian Law of Trade Marks and Passing Off (2^nd Ed.) by D. R. Shanahan p158-9.

(b) Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

As I mentioned above, this section was only presented by the opponent in the evidence and written submissions as a peripheral consideration. However, for the sake of completeness I intend to cover the issue.

The legislation reads:

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

In relation to the discussion under s.58, I have already found that the applicant's IMAC mark and the opponent's iMAC mark are substantially identical. The evidence also shows that the opponent has used its mark from approximately December 1994 in respect of management software and associated firmware and software modules.

To enable the operation of s.60, I am now required to assess the level of reputation acquired by the opponent in the mark iMAC and the degree of deception and confusion that could, therefore, result. This assessment is necessary in order to arrive at a conclusion based on the test outlined in Re Smith Hayden & Co Ltd's Application (1946) 63 RPC 97. The relevant passage in the words of Evershed J at 101 reads:

Having regard to the reputation acquired by the [opponent's mark], is the Court satisfied that the mark applied for, if used in a normal and fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons.

Prior to the present application date of 5 March 1998, the opponent only provides figures in the evidence for two years use in Australia. The use shown in sales is relatively small and the advertising budget also quite low. The opponent has declared much greater use in various overseas jurisdictions. It may be the case that the limited use in Australia has established some reputation in light of which, use by the applicant, of its trade mark IMAC, could possibly give rise to a measure of deception or confusion. But, given the very limited evidence of reputation acquired by the opponent's use of iMAC, I do not consider that there exists a reasonable likelihood that any substantial number of people will be either confused or deceived.

I, therefore, find that this ground of opposition is not proved.

Conclusion

The opponent has provided a suggestion, in its written submissions, for a restriction of the applicant's goods in the event that the opponent is successful in its opposition. The suggestion involves restricting the rights afforded by the registration of the trade mark application by an exclusion of any goods in respect of which the opposition succeeds. I have found the opposition to be successful under s.58 in relation to the opponent's class 9 goods. Such a finding precludes ownership of the mark for goods that are the 'same kind of thing' as per Hicks' Trade Mark, supra. While such conflicting goods exist in the application, it may not proceed.

In a notional sense, all of the goods within the applicant's present class 9 claim could fall within such a boundary as being 'the same kind of thing' as the goods shown in the evidence to be sold by the opponent. I simply have no evidence or information before me on which to base a possible restriction of the applicant's class 9 goods to overcome the difficulty. The opponent's suggestion, while perhaps a magnanimous gesture, may, or may not, remove the problem. On that basis, I am not prepared to apply it.

From the foregoing, I have found that the opposition is successful in terms of the ground under s.58 of the Act, in relation to the specification claimed in class 9 by the applicant, but not successful concerning the class 37 services of the application. I have also found that the opposition does not succeed under s.60. All other grounds listed in the notice of opposition were neither argued by the opponent nor supported by the evidence.

If the applicant advises me in writing, within twenty-eight days of the date of this decision, that it wishes to delete the class 9 claim from this application, then subject to payment of the registration fee, the application may proceed to registration in respect of the class 37 services claimed.

If, however, the applicant does not seek such a deletion, then I will issue a final decision refusing to register the trade mark.

Costs

As the opposition has been successful in respect of the class 9 goods of the application but not successful in respect of the class 37 services, both parties could be said to be partially victorious. I, therefore, direct that both parties should bear their own costs in the matter.

Don Nancarrow
Acting Hearing Officer

3 March 2000

Moorgate Tobacco Co Ltd v Philip Morris Ltd (No. 2) 156 CLR 414 (or 3 IPR 545)