Intel Corporation v Magnatex International Pty Ltd
[1998] ATMO 20
•13 May 1998
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Opposition by INTEL CORPORATION to Application 711008 in the Name of MAGNATEX INTERNATIONAL PTY LTD
The application
Magnatex International Pty Ltd, an Australian company, (“the applicant”) filed an application on 19 June 1996 to register the trade mark
in respect of the following goods
| Class Number | Goods |
| 4 | Oils and Lubricants |
| 21 | Plastic products eg household buckets, plant holders |
Opposition
The application was advertised accepted on 17 October 1996 and on 17 January 1997 notice of opposition to the registration of the trade mark was given by Intel Corporation, a United States Corporation (“Intel”) on the grounds that
· the applicant is not the owner of the trade mark;
· the applicant does not intend to use the mark, or authorise the use of the mark, in Australia (or to assign the trade mark to a body corporate);
· the trade mark is not capable of distinguishing the applicant’s goods from those of other persons;
· the use of the trade mark will be likely to deceive or cause confusion contrary to ss 43 and 60 of the Act;
· the use of the trade mark is contrary to law;
· because of the reputation of the opponent in its trade mark the use of the trade mark by the applicant would be likely to lead to deception or confusion;
· registration of the trade mark is prohibited by s44 of the Act;
· registration ought to be refused in exercise of the Registrar’s discretion;
The evidence
The evidence in support of the opposition consists of a declaration of Peter Detkin, Director of Litigation of Intel Corporation, together with Exhibits PD-1 to PD-12. No evidence in answer was served by the applicant and on 17 March 1998 a request was received from Davies Collison Cave, patent attorneys for the opponent, for a hearing of the matter. A hearing was set down for 7 May 1998. Both the applicant and the opponent, through its attorneys, made written submissions in support of their positions.
Discussion
Intel is the registered owner of the following trade marks:
| Number | Trade Mark | Goods/Services |
| 592243 | PENTIUM | Computer hardware, namely microprocessors in class 9 |
| 661689 | PENTIUM PROCESSOR | Computer hardware, namely microprocessors |
| 682083 | PENTIUM MMX | Microprocessors and integrated circuit chips |
The burden of the applicant’s submissions with regard to those registrations is that the goods for which it seeks registration are not “similar goods” in terms of s44 of the Act which so far as is relevant requires that:
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.
I think there can be no doubt but that the applicant’s adopted trade mark is substantially identical with, or, at the least, deceptively similar to, Intel’s registered trade marks so that sub-para 44(1)(a)(i) is satisfied. Also, it is quite clear that Intel’s registered marks have priority over the applicant’s application, being registered as from dates between 1992 and 1995. There remains the question, therefore, whether the goods are similar. It seems to me that the expression “similar goods” is not materially different from the term used in the repealed Trade Marks Act 1955, “goods of the same description”. In the Southern Cross case (1954) 91 CLR 592, at 606, the High Court of Australia cited with approval the following passage from the decision of the Assistant-Comptroller in In re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, 372 which in turn was following the words of the decision of the Assistant-Comptroller in In the Matter of an Application by Beck, Koller & Company (England) Limited for the Registration of a Trade Mark 64 RPC 76:
In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application (63 RPC 59), Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself.
On any one of those criteria I think it is clear that the goods of the application and those of Intel’s registered trade marks are not “similar goods”. It follows that there is no ground for refusal of the application under s44 of the Act.
section 60
Having decided that there is no ground for refusal of the application under s44 of the Act on the ground that the respective goods are quite different I must go further and consider the ground of objection under s60 of the Act which is as follows:
Trade mark similar to trade mark that has acquired a reputation in Australia
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.
The evidence shows, and I think I am entitled to take notice of the fact, that Intel’s trade mark PENTIUM is a well-known trade mark in relation to microprocessor chips. However, para (b) of the section requires furthermore that because of that reputation the use of the applicant’s trade mark “would be likely to deceive or cause confusion”. The test of that likelihood was set out long ago by Evershed J. in Smith Hayden & Co Ltd's Application (1946) 63 RPC 97, in which he compared the tests under ss.11 and 12 of the Trade Marks Act 1938 (UK), which corresponded to ss.28 and 33 of the Trade Marks Act 1955 (Cth). I paraphrase that part of His Honour’s judgment as follows:
The questions for my decision ... have been formulated, and I think accurately formulated, as follows:
(a) (Under s.28) Having regard to the reputation acquired by the name PENTIUM, is the Registrar satisfied that the mark applied for, if used in a normal or 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?;
(b) (Under s.33) Assuming user by the opponent of its mark PENTIUM in a normal and fair manner for any of the goods covered by the registration of that mark ... is the Registrar satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant also uses its mark PENTIUM 2000 and device normally and fairly in respect of any goods covered by their proposed registration?
Section 33 of the 1955 Act corresponds to s44 of the current Act which I have already considered. The test under s60 corresponds more nearly with the test under the old s28 except for the superimposed test of blameworthy conduct. However, the basic consideration is still the likelihood of deception and confusion on the part of a substantial number of persons. In view of the very great differences in the nature of the goods specified in the application and the registered trade marks I cannot find that there is such a likelihood. The word “pentium” in itself seems to be devoid of meaning except for the suggestion of “five”, being the fifth in succession in a series of Intel’s products. But that does not mean that other persons should be debarred from using the word in quite dissimilar contexts.
ownership of the trade mark
Section 58 of the Act provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
On the subject of proprietorship, which for all material purposes is the same as ownership, McGarvie J. said in the case of Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402:
The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there: Re Registered Trade Mark YANX; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 203; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603; Moorgate Tobacco Co Ltd v Philip Morris Ltd(No 2) 59 ALJR 77 at 83.
...
In considering who, within s.40(1) of the Act, was at the time of Settef's application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia: The Shell Co of Australia Ltd v Rohm & Haas (1949) 78 CLR 601 at 625 and 627.
In other words, the first user of the mark in Australia (for relevant goods and prior to the date of application) becomes the owner at common law. That ownership, however, is limited to "the same kind of thing", as stated by Holroyd J in Hicks’ Trade Mark (1897) 22 VLR 636. Any small amount of use will suffice, but the effect of the act relied on to constitute use must be the creation, in the minds of those concerned, of an impression that goods of a particular trader are being offered for sale, in Australia, under the trade mark. This has been affirmed in later cases such as in Seven Up Co v O.T. Ltd (1947) 75 CLR 203. Although Intel has demonstrated to my satisfaction that it was the first user of the trade mark in Australia in respect of microprocessor chips, I cannot find that they are “the same kind of thing” as the lubricating oils and the other goods specified in the applicant’s application.
intention to use the trade mark
The attorneys for Intel submitted that where no evidence of use is lodged by an applicant information such as that disclosed in Corporate Affairs Office records may establish a sufficient doubt as to the intention of the applicant with respect to the use of the trade mark for the opposition to succeed on the ground of the applicant’s intention to use the trade mark. They referred to the provisions of s59 of the Act:
Applicant not intending to use trade mark
59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a)to use, or authorise the use of, the trade mark in Australia; or
(b)to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application
and to cases such as Michael Sharwood & Partners Pty Ltd & Ors v Fuddruckers Inc (1989) 15 IPR 188; Nicholas Vida Pty Ltd v American High Inc (1989) 16 IPR 425 and Daimaru Pty Ltd v Kabushiki Kaisha Daimaru (1990) 19 IPR 129.
In support they also referred me to Ducker's Trade Mark 45 RPC 397, where it was said, at 402:
I agree that the goods need not be in being at the moment, and that there is futurity indicated in the definition; but the mark is to be a mark which is to be definitely used or in respect of which there is a resolve to use it in the immediate future upon or in connection with goods. I think that the words "proposed to be used" mean a real intention to use, not a mere problematical intention, not an uncertain or indeterminate possibility, but a resolve or settled purpose which has been reached at the time when the mark is to be registered.
The applicant's stated intention to use the mark, they said, fell far short of the "resolve and settled purpose" there stipulated. The fact that there had been no demonstrated use of the mark led to an inference that there was no intention to use the mark on the goods. The applicant could have produced evidence to show that it had used the mark but had chosen not to do so. Such lack of evidence was relevant to the issue whether the applicant had the requisite intention to use the trade mark.: Dom Perignon Trade Mark 1985 AIPC 90-238 and Fuddruckers Trade Mark (1989) AIPC 90-596. Although the making of a trade mark application is to be regarded as prima facie evidence of intention to use: Aston v Harlee Manufacturing Company 1960 103 CLR 391, it is only prima facie evidence. In the Fuddruckers case the opponent had rebutted the prima facie evidence of intention to use and the onus had therefore shifted to the applicant to justify registration: Dunn's Trade Mark (1890) 7 RPC 311 at 315 - 316.
In support of the above submission the attorneys submitted records from the Australian Securities Commission (“ASC”) showing that the applicant company’s principal activity is that of importer/exporter and that its registered office was recorded as “4th Floor, 55 York St, Sydney NSW”. From this it could be inferred, they argued, that the applicant did not have the capacity to use the trade mark in respect of the specified goods, having no manufacturing premises which would enable it to produce the goods.
The law to be applied in the present case is as stated in Aston v Harlee (supra). In that case Fullagar J. referred to the words of Dixon J, as he then was, in the earlier case of Shell Co. of Australia Ltd v Rohm and Haas Co. (1949) 78 CLR 601, at 625:
"[I]t is clear enough from the course of legislation and of decision that an application to register a trade mark so far unused must, equally with a trade mark the title to which depends on prior user, be founded on proprietorship. The basis of a claim to proprietorship in a trade mark so far unused has been found in the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and the applying for registration.
His Honour said: "authorship ... involves the origination or first adoption of the word or design as and for a trade mark." (at 628)
In Paintmaster Products v Lewis Berger & Sons (1925) 25 AOJP 1915 the Registrar expressed the view that an applicant might properly elect to delay use pending the outcome of the application for registration. In that case it was said (at 1921) that:
The first of the three real issues which the opponent has raised against the applicants' mark with which I propose to deal relates to the fact that the applicants can claim no user for their proposed trade mark.
It is true that the applicants do not make any claim to have ever used "Paintmaster" as a trade mark for paints and varnishes, but the fact remains that application 106,606 has been made. While there is a definite onus on the applicants to show that their mark should proceed to registration, the lodging of an application for registration of a trade mark gives an inchoate right to its exclusive use. (Shell Company of Australia Limited v Rohm and Haas and Company Limited (Ditrene case), 78 CLR 601).
I think that the applicants have shown that they have an honest intention to use their trade mark and that the fact that they have not yet used the mark (although a period of four years has passed since they lodged their application) does not in my opinion establish that they have been dilatory in exploiting their inchoate rights. In his evidence before what is well‑known as the Herschell Committee, Edmund Johnson showed that many applicants prefer not to use a mark practically in trade until it is registered. When I take into account the applicants' claim that they intended to use the mark on new types of paints and varnishes and that much time and preparation would be involved in ensuring that their venture would be successfully effected on the scale an enterprise of their kind would launch, I am satisfied that their rights arising from the fact of the lodgement of their application cannot be extinguished at this stage on the grounds that they have shown no intention to use the mark. The applicants obviously trade on a grand scale. There is every reason to accept their claims that they are actually preparing to place new types of paints and varnishes on the market and that those goods will bear "Paintmaster" as their trade mark if their application is registered.
There are a number of cases in which registration has been refused or a mark expunged on the ground that the applicant or registered proprietor had no bona fide intention to use the mark. These are Re Registered Trade Marks of John Batt & Co 15 RPC 534; In the Matter of Ducker's Trade Mark 45 RPC 397; Rolewa Rentals Pty Ltd v Champagne Moet et Chandon (1985) AIPC 90 - 238 and Sharwood v Fuddruckers 15 IPR 188. In all of these cases, there was clear evidence that the proprietor of a registered mark or the applicant for registration could not have had a bona fide intention to use the mark either because they had trafficked in the marks or because they did not have the capacity in a business sense to carry out such an intention or because the application for registration was merely speculative. In each case the application was refused or the mark expunged in respect of all of the goods or services. It is not appropriate in opposition proceedings for the Registrar to instigate an investigation in detail of the use or intention to use in respect of each and every item which might be covered in the applicant's specification and the lodgment of the application and the applicant's statement of use or intention to use must on the principles explained in Aston v Harlee be accepted as prima facie evidence of the relevant use or intention to use. The onus must be on the opponent to lead evidence showing a lack of intention or incapacity to use the mark for the relevant goods. Australia.
The evidence before me as to the nature of the applicant’s business activities and its registered office I consider insufficient to discharge the onus on the opponent to prove absence of intention to use the trade mark applied for. No evidence as to these matters was led by the applicant. At the same time I must also say that there was no obligation on the applicant to do so. Failure on the part of the applicant to establish affirmatively its capacity or intention to use the mark is in no sense evidence of a lack of such capacity or intention. It is common ground that the onus was on the opponent to make out a prima facie case of lack of bona fides. This must be so in view of the words of Fullagar J. in Aston v Harlee (supra), at 401:
"There is another element mention by Dixon J in the Shell Co's case*, which is stated as essential to the proprietorship of an unused trade mark. That element is the intention of the applicant for registration to use it upon or in connexion with goods. As to this I need only say that I do not regard his Honour as meaning that an applicant is required, in order to obtain registration, to establish affirmatively that he intends to use it. There is nothing in the Act or the Regulations which requires him to state such an intention at the time of application, and the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent, or the person aggrieved, of proving the absence of intention. Again, I do not think that "intention" in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time. A manufacturer of (say) confectionery would, I should suppose, be entitled to register three trade marks in relation to confectionery, though he intended only to use two of them and had not made up his mind as to which two he would use. If he in fact does not use any of them for the period specified in s 72, the mark or marks may be expunged under that section. On the other hand, a manufacturer of confectionery, who had no intention of ever manufacturing motor cars, might be held disentitled to register a mark in relation to motor cars: the effect of In re Registered Trade Marks of John Batt & Co.+, is I think, correctly stated in the first paragraph of the headnote to the report of the case before Romer J and the Court of Appeal."
* (1949) 78 CLR 627
+ (1898) 2 Ch 432; 1899 AC 428
(The statement referred to from Batt's case reads: "A Trade Mark cannot properly be registered for goods in which the Applicant does not deal or intend to deal.") Whether this is a case of a manufacturer of confectionery attempting to register a mark in respect of motor cars I have no means of knowing given the lack of evidence from the applicant. Nevertheless, in my opinion the opponent has not discharged the onus on it of displacing the prima facie evidence of the applicant's intention to use the mark. I would only add that I cannot think the Registrar is called upon in opposition proceedings to institute an enquiry as to the intention of any applicant with respect to each and every item of goods or services included in one of the prescribed classes.
If it can be shown that the mark has not been used on certain goods within the specified period the proper course is to take proceedings for the removal of the mark from the Register under the non-use provisions of the Act. I also cannot accept the argument that the applicant's statement of use is of extremely low probative value because on all the relevant authority the onus was not on the applicant to prove anything. In Fullagar J.'s words in Aston v Harlee (supra) the applicant is not required to "establish affirmatively" that he intends to use the mark. On the contrary, the onus is on the opponent to prove the lack of such an intention.
The only other ground relied on by the opponent in its written submissions was s43 of the Act:
Trade mark likely to deceive or cause confusion
43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
In my opinion this section of the Act must be taken to refer to some meaning inherent in the trade mark itself which would cause deception or confusion. I can find no such meaning in the word “pentium” or in the other elements of the applicant’s trade mark which in relation to the specified goods could have such an effect. I therefore reject that ground of opposition.
Decision
On the grounds relied on by Intel in this opposition my decision is as follows:
(i) that there is nothing to displace the applicant’s claim to the ownership of the trade mark in respect of the goods specified in its application;
(ii) that Intel has not discharged the onus on it of showing that the applicant does not intend to use, or authorise the use of, the trade mark applied for;
(iii) that the use of the trade mark would not be likely to cause confusion or deception contrary to sections 43 and 60 of the Trade Marks Act 1995
(iv) that there is no ground for rejection of the trade mark under s44 of the Act.
Conclusion
I have found that the opponent Intel has not succeeded on any of the grounds claimed in its notice of opposition or in its submissions to me. Therefore I find in favour of the applicant and award costs against Intel. Failing any appeal against this decision I therefore direct that the trade mark should be registered in the name of Magnatex International Pty Ltd
Michael Homann
Hearing Officer
13 May 1998
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