International Consolidated Business Pty Ltd v Multix Pty Ltd

[2005] ATMO 26

TRADE MARKS ACT 1995

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

Re:Opposition by International Consolidated Business Pty Ltd to registration of trade mark application 920477(16) - MULTIX QUICK ZIP - filed in the name of Multix Pty Ltd.

Delegate:	Terry Williams
Representation:	Opponent: Robert Strickland, patent attorney, Griffith Hack & Co Applicant: Russell Waters, patent attorney, Phillips Ormonde & Fitzpatrick
Decision:	S 52 opposition, CLICKZIP not deceptively similar to MULTIX QUICK ZIP.  Application to proceed to registration.

Background

1. Multix Pty Ltd (Multix) has applied for the registration of its trade mark MULTIX QUICK ZIP, rendered in plain block letters, trade mark number 920477, for “plastic bags, plastic films for wrapping”.  The present matter involves opposition, by International Consolidated Business Pty Ltd (Consolidated), owner and user of the trade mark CLICKZIP, to the registration of the application in question.

2. Consolidated’s opposition is based on grounds under sections 44 and 60 of the Trade Marks Act 1995.  At the heart of both of these, Consolidated relies on the alleged deceptive similarity of its mark, as registered and as used, to the one that Multix seeks to register.  In support of its opposition, Consolidated has relied on evidence in support, being declarations by Phillip Withers, the managing director of Consolidated, and by Anne Makrigiorgos, patent attorney.  The latter declaration has a single annexure, a report by Dr Duncan Markham, an expert in phonetics and pronunciation. 

3. I was assigned to hear the parties.  At the hearing, Russell Waters, patent attorney, appeared for Multix.  Robert Strickland, patent attorney, represented Consolidated.

   Decision - Deceptive Similarity

4. Mr Strickland opened the case for Consolidated by noting the relevant issue was one of deceptive similarity, which s 10 defines as follows:

   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.

5. He directed me to the evidence in support of the opposition, particularly the report by Dr Markham, the substance of which is at the heart of the opposition.  Leaving aside the more technical aspects, Dr Markham’s report, with my own note added, is to the effect that:

   “The two terms (which his report specifies as “QUICK ZIP” and “CLICK ZIP”) are not semantically distinct enough (with regard to the product they denote) for a listener to be able to reliably resolve any ambiguity in the perception of the speech signal.” 

6. This is said to be because “ambiguities” in the aural perception of the two words cannot be resolved by context.  The ambiguities relate to the similarities of the sounds of the terms in question.  In the phonetic alphabet, the sounds would be written [kwik] and [klik] respectively, with some uncertainty about the voicing of the [l] sound.  Dr Markham does not express an opinion on this likelihood, but concludes that it “is not regarded as significant”.  Given that the two variants are the two [l] sounds heard at the beginning and end of the word little, I fully agree with him.

7. Dr Markham goes on to explain the concept of contextual resolution in his report.  To put the matter simply, if two words are “structurally similar”, they are open to auditory confusion but this may be resolved by context.  I take this to mean that, since a man in cricket whites is unlikely to be referring to a “cricket pat”, a hearer is guided to take the words spoken as being “cricket bat”.  However, where trade marks are concerned, such contextual help is much more limited.  Dr Markham asserts that “as both ‘quick’ and ‘click’ are plausible first elements of a term ‘?-ZIP’, confusability is highly likely”.  I note, however, that there is no evidence that Dr Markham was informed that the element MULTIX was part of one of the trade marks under comparison.

8. By and large, I have not found a great deal of help in Dr Markham’s report.  While I am sure that expert evidence can shed light on difficult issues such as the likely pronunciation of invented words, all that has been achieved here is to explain the obvious.  Mr Waters noted the criticism of such evidence made by Wilcox J in Companhia Souza Crux Industria, E Comerico v Rothmans of Pall Mall (Australia) Ltd[1]

   [1] 41 IPR 497 at 504

9. Mr Strickland, for his part, was dismissive of the role of MULTIX in the comparison.  He noted the arguments Mr Withers puts in his declaration, about the phonetic closeness of the elements “quick” and “click”.  He further noted the case of Beecham Group PLC v Colgate-Palmolive Pty Ltd [2004] FCA 1335 (the Macleans case). There, the applicant, the proprietor of the MACLEANS trade mark, was able to obtain an injunction preventing the use of COLGATE MAXCLEAN. The relevant principles for comparison of marks are conveniently set out in that case. Mr Strickland noted that at para 34, Tamberlin J, in granting relief, said “the prominent use of the word COLGATE cannot, in my view, be taken to completely dispel the prospect of this erroneous impression (that there was some relationship between Colgate and MACLEANS)”.

10. For Multix, Mr Waters noted that the case in question should be taken cautiously.  While he did not dispute that the cases traversed by Tamberlin J were appropriate to my purposes, he noted that infringement was an action directed to the actual conduct shown or proposed by the respondent.  In that case, the word COLGATE was depicted in smaller, or at least less emphasized, letters than was MAXCLEAN, thereby justifying Tamberlin J’s conclusion that “the prominent use of the word ‘Colgate’ cannot, in my view, be taken to completely dispel the prospect of this erroneous assumption”.

11. Mr Waters noted that, in the present matter, the elements “quick zip” and “click zip” would be seen to be descriptive.  He noted that the concept of a plastic bag with a zip-style closure was familiar to consumers.  That there should be two trade marks incorporating the word zip was not surprising, he said, when the term zip-lock appears in the Oxford English Dictionary, albeit with an acknowledgement of proprietorial rights.  Mr Waters argued that, because of the descriptive burdens of the words zip, quick and click, the trade mark element that would carry most weight was MULTIX, for instance as when the goods were being sought by a consumer asking directions of a store employee.  This, he argued, was because a request for “quick zip bags” was open to being seen as a request for a bag of the zip-closure type, not necessarily a MULTIX product.

12. I do not find this later claim entirely convincing.  There is nothing in the evidence or the arguments of either party that would suggest that “‘quick’ zip” is, or is likely to be seen to be, an ordinary and purely descriptive term.  However, I agree with his main point, which is that those elements, “quick zip” and “clickzip”, quite clearly have a strong quasi-descriptive flavour and thus the element MULTIX will carry real weight.

13. Such a claim is counter to the concerns of Consolidated, as Mr Strickland noted.  Mr Withers, the managing director of Consolidated, argues that the “house mark” MULTIX is likely to be omitted in requests for these goods, simply for convenient shortening and “given that house brands tend to have a wide range of different products”.  By this, he means that a person asking for “some Multix bags” might notionally be offered anything from garbage bags to freezer bags, not necessarily with zip closures, and would thus be more inclined to abbreviate the trade mark to QUICK ZIP.  Mr Strickland did not explain why this degree of abbreviation was appropriate in the face of the argument raised by Mr Waters.

14. It is, of course, for the opponent to establish a ground of opposition.  In approaching the matter, I do indeed take the Macleans case, supra, with caution.  In that case, the judge clearly noted that the MAXCLEAN trade mark was a new mark looking to edge into a field where MACLEANS was well known.  There was also evidence that Colgate’s staff “were targeting” the trade mark MACLEANS when MAXCLEAN was developed.  Finally, the grant of injunctive relief does not establish a finding of deceptive similarity.  Rather, the balance of convenience was weighed with a finding that there was a serious issue to be tried, one that was not to be described as “so weak or fanciful or lacking in substance as to weigh against the grant of injunctive relief”.

15. I therefore approach the matter from first principles, allowing for an appropriate degree of imperfect recollection and for the fact that these goods are not the sort that would attract a great deal of scrutiny at the time of purchase.  Conversely, these are products that are bought primarily at self-serve grocery stores and the phonetic confusion with which Dr Markham was concerned will not be a major factor in the vast majority of such purchases. 

16. At another level, I agree with Mr Waters that click zips and quick zips, whatever their trade mark import, are distinguishable by the reference they make.  “Click” is a reference to the snap sound made by a plastic bag closure.  “Quick” on the other hand, is a word without that specific and apposite reference.  A person who is aware of Consolidated’s products and who seeks them by reference to trade marks is unlikely to be deceived on encountering what is clearly a MULTIX product.  As Mr Waters put it, the overriding idea of MULTIX QUICK ZIP is “here is a Multix product”.  

17. Even so, Mr Waters was over-extending the reference to the importance of the first element made at 7.115 of Shanahan’s Australian Law of Trade Marks and Passing Off, third edition.  The authors there note that there are also precedents for other conclusions.  On balance, this case has elements that somewhat resemble those in Registrar of Trade Marks v Woolworths Ltd[2].  In that case, the competing marks were METRO and WOOLWORTHS METRO.  Obviously, regard was had in that case to the ubiquitous nature of the word WOOLWORTHS, a factor absent from the present matter.  However, the case is a solid reinforcement of Mr Waters’ principal tenet, which is that the presence of MULTIX in what is actually quite a complex comparison and balancing, cannot simply be ignored.  On appeal, the Full Court of the Federal Court noted the finding of Wilcox J:

    Although I take Ms Baird’s point about imperfect recollection, I cannot accept that viewers of the mark would overlook or forget that it refers to “Woolworths metro'’, not merely “metro'’. The word that is unique to this mark, as against each of the cited marks, constitutes a major feature of it. Applying the Australian Woollen Mills[3] test, the impression or recollection of the subject mark a viewer would carry away and retain is quite different from that which he or she would retain in respect of any of the cited marks.

    [2] 45 IPR 411

    [3] Australian Woollen Mills Ltd v F S Walton (1937) 58 CLR 641 at 658. This test was also noted in the Macleans case, supra.

18. I think that, in this balancing, I should also be aware of the public policy concern that Farwell LJ noted in relation to the trade mark ORLWOOLA[4].  “The court is careful not to interfere with other persons’ rights further than is necessary for the protection of the claimant and not to allow any claimant to obtain a monopoly further than is consistent with reason and fair dealing”.  It appears from the argument put to me that certain aspects of Multix’s actual packaging and use[5] may be of particular concern to Consolidated.  However, the specifics of that are not germane to the broad comparison of one mark with another.  It would be up to Multix, in making ordinary and fair use of the rights to be gained by registration, to avoid getting too close to the actual get-up used by Consolidated. 

    [4] (1909) 26 RPC 850 at 860

    [5] Withers declaration, annexure 20

19. Within that limit, I do not think that I can put so little weight on the element MULTIX in the present matter and so much on the prospect of aural confusion of the words QUICK ZIP and CLICKZIP as to allow a finding of deceptive similarity. Accordingly, I do not find that this key element, requisite to the opponent’s case under both s 44 and s 60, is established. It follows that the opposition fails outright.

    Conclusion

20. 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.

21. I also order that the opponent, Consolidated, pay the costs of Multix to the limit set in the official scale.

    Terry Williams
    Hearing Officer
    Trade Marks Hearings
    27 May 2005