Jae Hwan Kim v Wilson Sporting Goods Company

[1999] ATMO 18

TRADE MARKS ACT 1995

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

RE:Opposition by WILSON SPORTING GOODS COMPANY to the registration of trade mark application number 708344 in the name of JAE HWAN KIM.

Background

On 13 May 1996, Jae Hwan Kim (the applicant) filed the above numbered application in respect of, "Watches, clocks, and other time pieces, and their parts, including wrist watches, pocket watches, alarm clocks, table clocks, electric time pieces, electronic time pieces, automobile time pieces, stop watches, watchdials, watch springs, watch glasses, watch bands, watch chains, and measuring watches" in Class 14, for the composite word and device trade mark as represented below.

The application was accepted on a first examiner's report. Acceptance was advertised in the Official Journal of Trade Marks of 20 February 1997.

After requesting an extension of time in which to do so, Wilson Sporting Goods Company (the opponent) filed a notice of opposition on 19 August 1997.

The grounds, under the Trade Marks Act 1995, on which opposition was said to be based were specified in terms of s.41, s.42(b), s.44, s.58, s.59, s.60, s.42(a), s.43, s.62(b), s.62(a), s.61(1), s.39(2)(a) and s.39(2)(b).

The evidence in support was filed and served by 19 February 1998. The applicant served no evidence in answer. The opponent presented supporting written submissions to this Office on 5 October 1998. As neither party requested to be heard in the matter it was directed to me, as a delegate of the Registrar, for a decision on the written material held in the Trade Marks Office.

The Evidence

The evidence in support of the notice of opposition consisted of a Statutory Declaration declared on 9 February 1998, with exhibits “MMO-1” and “MMO-2” attached, from Melinda Mary Oborne (the Oborne declaration). The declaration detailed information concerning the reputation of the opponent's trade mark in terms of the range of goods sold, the value of sales, the length of time over which the mark has been used, the advertising expenditure, the range of advertising undertaken and the list of trade mark registrations in various jurisdictions. The exhibits attached consisted of:

MMO-1 a list of the opponent's principal Australian customers.

MMO-2         a sample of advertising and promotional material.

Submissions

The written submissions presented by the opponent specifically state that the opponent wishes to rely on three of the grounds listed in the notice of opposition, those under s.42(b), s.44 and s.60 of the Act. I will refer to relevant passages from these submissions, as appropriate, in the discussion under each of these sections.

Discussion

The written submissions only explicitly supported three of the grounds listed in the notice of opposition. However, as the other grounds initially mentioned have not specifically been withdrawn, I intend to briefly consider one of those grounds also.

I note that the opponent initially requested to be heard in this matter. Later this request was withdrawn in favour of written submissions, and a request that the Registrar decide the matter on the basis of the written record. In those written submissions, a request was made for the Registrar to take into consideration a declaration from Michael Curnow filed in respect of a second, independent opposition to the registration of this trade mark.

I do not intend to take any note of the Curnow declaration in deciding this opposition matter, as it was not properly served as evidence in relation to the present opposition. I do not consider that it is material before me to assist in making this decision. Had I taken the Curnow declaration into consideration, I believe that the applicant would be denied natural justice in not being able to respond to the matter. Although the applicant has chosen not to file or serve any evidence in answer in this matter, this may not have been the case if the Curnow declaration had been properly served as part of the evidence in support of the opposition.

Material to be considered for a decision based on the written record does produce some limitations in comparison to material that can be presented at a hearing where the other party has opportunity to respond. The Curnow declaration will, of course, be considered in relation to the other opposition matter on this mark when the time comes for it to be decided.

There were 13 separate grounds raised by the opponents in the notice of opposition. The grounds under s.41, s.59, s.42(a), s.43, s.62(b), s.62(a), s.61(1), s.39(2)(a) and s.39(2)(b) of the Act were not supported by any material in the evidence or in the supporting written submissions and, therefore, I find that the opposition fails on these grounds.

Although no supporting argument was submitted concerning the ground in terms of s.58, there exist references in the submissions which implicitly involve that section and I intend to consider that ground. The remaining grounds detailed in the notice of opposition, those under s.42(b), s.44 and s.60, are also fully discussed.

(a) Section 58

The relevant section in the Act for this discussion 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.

In addition, s.58 bears a close relationship to s.27(1)(a) for this analysis. The paragraph at s.27(1)(a) reads as follows:

27.(1) A person may apply for the registration of a trade mark in respect of goods and/or services if:
(a) the person claims to be the owner of the trade mark; and …

In essence, the combination of these sections produces the following result. If the opponent successfully proves that the applicant is not the owner of the mark, in terms of s.58, then the applicant is not entitled to make the application in terms of s.27.

On the issue of ownership of a trade mark, McGarvie J. said in the case of Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413:

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 (No2) (1984) 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 Co (1949) 78 CLR 601 at 625 and 627.

The reference to s.40(1) here is, of course, in relation to the repealed Act, the Trade MarksAct 1955. The provision was, however, carried over to s.27(1)(a) of the present legislation, as I have quoted above.

Further to this discussion, as established in Re Hicks' Trade Mark (1897) 22 VLR 636, to succeed in such a ground of opposition, the opponents would need to show that they have used their trade mark on "the same kind of thing" prior to the applicant filing its application. Additionally, they would need to show that their trade mark is either identical or substantially identical to the mark applied for in the present application. This final requirement has been clearly set out in Carnival Cruise Lines, Inc. v Sitmar Cruises Ltd (1994) AIPC 91-049 and Karu Pty Ltd v Jose (1994) AIPC 91-101.

From the above material, it is apparent that the first user within Australia, for the relevant goods and prior to the date of application, becomes the owner at common law. The remaining test to be made under s.58 is whether the mark used by the opponents is substantially identical with the applicant's mark.

Turning to the accepted test for marks to be substantially identical, in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd., 109 CLR 407, at page 414, Windeyer J said:

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....

The present application is for the words WIMBLEDON WATCH - CLOCK COMPANY and the letter W, together with the device of a TENNIS RACQUET, as depicted on page one of this decision. The opponent's mark consists of the letter W as shown below:

The similarity between the applicant's mark and opponent's marks revolves around the scripted letter W above. It is the entire mark of the opponent. The same letter is also shown on the head of the tennis racquet in the applicant's mark. Because the size of the printing font for the letter W is smaller than the size of the font for the word WIMBLEDON and the letter W is depicted across the strings of the racquet, care must be taken to recognise that it is, in fact, the same letter. The differences between the marks are obvious. The applicant's mark contains the words WIMBLEDON WATCH - CLOCK COMPANY and the TENNIS RACQUET device in addition to the opponent's letter W.

I believe that "the total impression of resemblance or dissimilarity that emerges from the comparison" as per the test outlined by Windeyer J. above is clearly in favour of dissimilarity of the marks. Thus I believe that the marks are not substantially identical.

On this basis, it is not necessary to consider the other tests, viz., first use of the mark in Australia and it being used "on the same kind of thing". I find that the opposition is not successful in terms of s.58 because the marks are not identical or substantially identical.

(b) Sub-section 42(b)

Section 42 deals with grounds for rejecting an application where the trade mark is scandalous or contrary to law. Specifically the relevant sub-section reads:

42. An application for the registration of a trade mark must be rejected if:
…
(b) its use would be contrary to law.

The opponent alleged, in its written submissions, that the applicant has breached the opponent's copyright in the letter W script. Such an assessment is beyond the competence of the Registrar of Trade Marks. If, however, the opponent could point to a decision by a court regarding such a breach of copyright it would be possible that the Registrar could apply s.42(b) in favour of the opponent. The present information and evidence falls short of such a finding for this forum. Thus, I find that the opposition in terms of s.42(b) is not successful.

(c) Section 44

The relevant legislation concerning this ground of opposition reads as follows:

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

….

(b) the priority date for the registration of the applicant's 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.

To succeed with opposition action under s.44, in the present instance, the opponent would need to show that it had an earlier registration for a trade mark which is either substantially identical or deceptively similar to the applicant's mark and registered for similar goods to the present application.

The earlier registrations on which the opponent seeks to rely are numbered 320807 in class 28 and 643321 in class 25 with lodgement dates of 8 August 1978 and 14 October 1994, respectively. These two trade marks are identical and a representation is as shown above in the part of this decision dealing with s.58.

There is no question that both of the opponent's registrations pre-date the present application, which was filed on 13 May 1996. As already discussed under s.58, I do not consider that the applicant's and the opponent's trade marks are substantially identical. I now turn to the question of whether the marks are deceptively similar.

The opponent had submitted that the test for deceptive similarity is the impression based on an imperfect recollection when the marks are not side by side. Two citations from decided cases were presented to support this contention. The first of these is in the case of Rysta Limited's Application (1943) 60 RPC 87 where Luxmoore LJ held at 108 that:

It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.

The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants.

The other reference in the opponent's submissions, involving the test for deceptively similar trade marks, was that outlined in Australian Woollen Mills Ltd v F. S. Walton & Co. Ltd. (1937) 58 CLR 641 at 658 as follows.

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, their similarities both of sound and of meaning may 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.

In my opinion, the effect or impression of the opponent's mark would be a lower case letter W with a small amount of stylisation. The letter has a scripted appearance that produces the appearance of lower rather than upper casing. The general impression left by the applicant's mark on the mind of the potential customer, I believe, would be the WIMBLEDON word mark, in conjunction with a device of a TENNIS RACQUET and a letter W. The other words in the mark, namely, WATCH-CLOCK COMPANY would not, I believe, be seen so much as part of the trade mark as a description of the applicant's business interests. In the total mark the size of the letter W on the tennis racquet head allows little opportunity to consider the letter in detail. It may not even be accurately recalled as a letter W, or if it is, then it may not be seen as anything more than as reinforcing the first letter of the word WIMBLEDON. For even a possibility of confusion between these marks, I believe that the observer of the applicant's mark would require rather keen eyesight to recognise that the lower case letter W on the head of the tennis racquet in the mark looked the same as the opponent's mark.

Other tests, in relation to deceptive similarity, set out in Australian Woollen Mills (supra) raise issues such as the spoken description of the marks or similarity in sound or meaning. The opponent's mark is simply a letter W. The applicant's mark, however, would have a description that could encompass both the word WIMBLEDON and the TENNIS RACQUET device. It is difficult to imagine how any confusion could exist in a spoken description or by similarity in sound or meaning.

In general, I believe that a strong case exists for deceptive similarity between two trade marks where one mark is entirely subsumed within another, especially so where both marks are simply words. However, this is not the case here. The present application is a composite trade mark consisting of words, a letter and a device. The actual identification of the subsumed mark is arguable in view of the relative space it occupies in the present mark. The subsumed letter W is found on the head of a tennis racquet that, itself only occupies a fraction of the overall mark.

The opponent also argued that no limitation should be placed on the nature of the deception or confusion. The submission included a comment that, "even in cases where there is little likelihood of the two marks being directly confused either visually or phonetically, if the marks are used on identical goods then there may be a likelihood that a substantial number of persons would assume that the two sets of goods sold under the marks emanate from the same trade source". The opponent's W mark is for goods in classes 25 and 28 whereas the present application is for goods in class 14. These are not identical goods. Thus, the submission above breaks down and the possibility of deception or confusion is correspondingly reduced.

Having considered the standard tests for deceptively similar marks I find that the applicant's mark and opponent's marks are not deceptively similar.

Thus, having found that the trade marks, alleged by the opponent to be in conflict, are neither substantially identical nor deceptively similar to the applicant's trade mark, I find that the opposition based on s.44 does not succeed.

I am not required to consider the other leg of s.44 to find in favour of the applicant. This test, concerning the similarity of the applicant's goods and the opponent's goods, is now academic but, for the sake of completeness, I will briefly comment on the issue.

The standard tests for similar goods from Re:Jellinek's Application (1946) 63 RPC 59 involve the nature of the goods, the uses of the goods and the trade channels through which they are bought and sold. I believe that the nature and uses of the class 14 goods differ markedly from the opponent's goods in classes 25 and 28. Some of the trade channels may arguably have a link but not, in my opinion, a strong one.

The parallel tests for similar goods from Re: An Application by John Crowther & Sons (Milnsbridge) Limited (1948) 65 RPC 369 divides the tests more finely. This listing involves 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.

I do not believe that the applicant's goods and the opponent's goods have the same nature and characteristics, the same origin, the same purpose or accept that they form part of the same trade. The other tests in the above list also only have arguable links between the different sets of goods and in some cases these are quite tenuous. Overall, I consider the number of factors in this list showing support for the goods not to be similar far outweighs the number of factors showing support for the goods to be similar.

Accordingly, I do not consider that similarity in goods exists. I do not believe that the applicant's "watches, clocks, and other time pieces, and their parts" could be considered as goods similar to the opponent's "tennis racquets, tennis balls, golf clubs, golf bags, basketballs and baseball mitts" or similar to "athletic and sporting clothing, footwear and headgear".

As I have found that the applicant's goods and the opponent's goods are not similar, this further supports the applicant's position in relation to s.44.

(d) Section 60

The remaining ground argued by the opponent falls under s.60 of the Act.

Section 60 of the Act reads in part:

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 …. had acquired a reputation in Australia,…
(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.

Having found that the applicant's mark and the opponent's marks are not substantially identical or deceptively similar (see s.44 above) I find that the opposition in terms of s.60 is also not successful.

In this instance, it is not necessary for me to determine the level of the opponent's reputation. I note, however, that the opponent's reputation seems to reside in sporting goods and clothing and even if I had found that the marks were deceptively similar, it would be unlikely that a significant proportion of the relevant public would be deceived or confused. Reputation aside, the opponent's W mark is not, I believe, sufficiently similar to the present mark to cause any deception or confusion when used on the goods for which registration is sought.

Conclusion

From the foregoing, I have found that the opposition fails on all grounds claimed in the notice of opposition. Therefore, as a delegate of the Registrar, and subject to an appeal from this decision, I dismiss this opposition.

Don Nancarrow

Acting Hearing Officer

9 March 1999