JY Tulloch & Sons Pty Ltd v Turloch Pty Ltd

[2004] ATMO 39

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by JY Tullock & Sons Pty Ltd to registration of trade mark application 914215(29)(33) and 929818(29)(33) TUrloch and Turloch & Cross of Cong Device filed in the name of Turloch Pty Ltd.

Delegate:

Ian Thompson

Representation:

Opponent
James Omond Omond & Co.
Applicant
Celia Cumming and Bill Ladas of Freehills Carter Smith Beadle.

Decision:

1. Section 52 Opposition; deceptive similarity – opposition not established.

2. Costs ordered against opponent.

Background

1. Turloch Pty Ltd ('the applicant') of Perth, Western Australia, has filed application to register  trade marks, current details of which are:

   App No:  914215
   Filing Date:  27 May 2002
   Acceptance Date:                   26 September 2002

   Goods:Class 29: Jellies, jams and preserves; preserved, dried and cooked fruits and vegetables

   Class: 33 Alcoholic beverages (except beer)

   Trade Mark:  TURLOCH

   Appn Number  929818
   Priority date:  8 October 2002
   Acceptance date:                   1 May 2003

   Goods:Class 29: Jellies, jams and preserves; preserved, dried and cooked fruits and vegetables

   Class: 33 Alcoholic beverages (except beer)

   Trade Mark:  

   Endorsements: It is a condition of registration that when used in respect of wines, the trade mark will only be used in respect of wines originating (as defined in the Australian Wine and Brandy Corporation Act 1980) in the area in which the geographical indication MOUNT BARKER is registered and that the use is in accord with the Australian Wine and Brandy Corporation Act 1980.

   It is a condition of registration that when used in respect of alcoholic beverages other than wines, the trade mark will only be used in respect of alcoholic beverages other than wines produced in the MOUNT BARKER area.
   When the trade mark is used for items in the specification of goods other than merlot wines, the word MERLOT in the trade mark will be changed to accord with those other items.

2. On 20 December 2002 and 29 July 2003, JY Tulloch & Sons Pty Ltd ('the opponent') of Newcastle, New South Wales, filed Notices of Opposition (‘ the Notices’) to the registrations of the trade marks.  The Notices cite, inter alia, most of the available grounds under Trade Marks Act 1995 (‘the Act’

3. Evidence in support was served and filed; as was evidence in answer and further evidence as allowed by the Act and Regulations thereto. 

4. A hearing was held before me, as a delegate of the Registrar of Trade Marks, in Melbourne, on Wednesday 9 June 2004.  James Omond, of Omond & Co represented the opponent; Celia Cumming and Bill Ladas of Freehills Carter Smith Beadle represented the applicant.  Directors of the applicant also attended the hearing.

   Evidence

5. The evidence comprises the following declarations:

Declarant	Position Known as	Date Made	Exhibits
Evidence in Support
James Lyall Omond	Solicitor for Opponent Omond 1	22 April 2003	JLO-1 – JLO-8
James Lyall Omond	Solicitor for Opponent Omond 2	20 May 2003	JLO-9 – JLO-31
Applicant’s Further Evidence
Terence William Hogan	Director of Applicant Hogan	30 January 2004	TWH-1 – TWH-4
Opponent’s Further Evidence
James Lyall Omond	Solicitor for Opponent Omond 3	2 April 2004	JLO-32 – JLO-37

1. The evidence shows that the opponent’s vineyard business was started in 1895.  The opponent is sucessor in title to a business that first used the trade mark TULLOCH in relation to wines in 1952.  Sales under the TULLOCH trade mark are respectable and I would assess that the opponent’s trade mark has a reputation within Australia.  The opponent’s claims to the use and reputation of its trade mark TULLOCH are well supported with materials appended to Omond 2.

2. The opponent has a number of registrations of the trade mark TULLOCH, the most relevant of which is:

   Reg Number  341357
   Priority date:  18 May 1979
   Goods/Services:  Class: 33  wines
   Trade Mark:  TULLOCH

3. Mr Terence William Hogan, for the applicant, deposes that the opposed trade mark TURLOCH is the Irish Gaelic version of his forename Terence, or Terry, the full Gaelic version of his name being Turlock Liam Hogan.  The word ‘Turloch’ is pronounced TER, to rhyme with ‘sir’ and LOCK as it is normally pronounced. A number of Mr Hogan’s friends call him TURLOCH.

4. The wine made by Mr Hogan under the trade mark TURLOCH won a silver award in a prominent wine show.

5. Omond 3 includes some more material on the forename Terence and its Irish Gaelic equivalents.  Another equivalent is the forename ‘Traolach’ and the opponent observes that the applicant has filed application to register this word as a trade mark.  Mr Omond’s 3^rd declaration also draws my attention to a mention of the TRAOLACH trade mark in an Internet wines magazine.

   Comment

6. It might be possible to infer that the trade mark TURLOCH has been used by the applicant – there are labels in evidence and it has won a prize in a wine show in 2003.  However, there are no details of when the opposed trade mark was first used, the volume of use, or the area within which it has been used.  It is mentioned in PB Foods Limited v Malanda Dairyfoods Limited 1999 FCA 1602, 47 IPR 47 by Carr J that use of a challenged trade mark after the priority date might be considered for the purposes of honest concurrent user – however, the evidence of the use of the opposed trade mark here is not sufficiently probative or of such volume for this approach to be taken.

7. It is not clear that the entry of the wine under the trade mark into a wine show is use of the trade mark in trade that would qualify it for consideration under the provisions of section 44(4) and the date of the wine show is, in any event, after the priority dates of the opposed applications.  

8. Thus, the use of the applicant’s trade mark which is evidenced, does not, in my opinion, qualify the applicant’s trade mark for consideration in terms of either of the honest concurrent user provisions of section 44 of the Act.

   Issues

9. At the hearing, Mr Omond focussed his submissions on section 44 and submitted that if the ground under section 44 were established, I should also (because of the reputation of the opponent’s trade mark) find that the opponent has established its opposition under section 60 of the Act.  And, furthermore, if I were to find that the trade marks are substantially identical in my discussion of section 44, Mr Omond submitted that the opponent would also estabish its opposition under section 58 in relation to the opponent’s goods in Class 33. 

10. The opponent has established that it has both reputation and registration of its TULLOCH trade mark before the priority date of the opposed application.  Sections 44 and 60 refer (inter alia) to either the substantial identity or the deceptive similarity of the parties’ trade marks in order that the grounds be established.  For a ground under section 58 to be established, the trade marks in question should be, as a minimum, substantially identical.  I will therefore discuss the question of whether the trade marks are substantially identical or deceptively similar, then make my decisions in relation to each of the sections. And, I will focus on the opponent’s registration 341357 and its use of the trade mark TULLOCH on its own as if this is substantially identical or deceptively similar to either or both of the opposed trade marks, the opponent has established its opposition.

11. And, I will mention now that while Celia Cumming submitted that the applicant has a defence under section 122 of the Act in relation to “the use of its name, Turloch”, this does not form a part of my considerations, below, as the applicant’s name is Turloch Pty Ltd, not ‘Turloch’ which is the indicia in question.  Otherwise, there are no rights via a business name registration, per se: Lone Star Steakhouse & Saloon v Zurcas [2000] FCA 29.

    Similarity

12. Substantial identity is to be assessed on a side by side comparison of the trade marks TULLOCH and TURLOCH – it is an objective test: Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at pages 414-415.

13. The trade marks in question are not, in my estimation, substantially identical.  They look different – they present to me as being two similar, but different, proper nouns.

14. The question of deceptive similarity is more complex. Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd, supra, at page 658 say:

    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.

15. And similarly, in the words Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415:

    On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions.

16. Windeyer J added, at 416, that "[the] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone but, by the effect of that similarity in all the circumstances".

17. The reference to ‘all of the circumstances’ brings into my considerations, the context in which the trade marks will be used – the trade in which the trade marks appear, or will appear to the public.  Stated another way, Lord Parker (then Parker J) in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, said:

    You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion -- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you may refuse the registration, or, rather, you must refuse the registration in that case.

18. Further, I am to assume that the applicant will use its trade mark fairly and normally within the scope of its specification of goods: Re Smith Hayden and Co's Application (1946) 63 RPC 97 at 101.8:

    Assuming a use by the proprietor of each of the cited trade marks in a normal and fair manner in respect of any of the goods and services covered by those registrations, is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration (the respondent to this application) also uses its mark normally and fairly in respect of services covered by the proposed registration.

19. As far as this latter test is formulated, I should also remember that French J said in Registrar of Trade Marks v. Woolworths [1999] FCA 1020 at paragraph 45:

    So far as this passage, reflected in oral submissions, suggests that an applicant must satisfy the Registrar or the Court that there will be no reasonable likelihood of deception and confusion it does not represent the law as it stands under the 1995 Act. The position now is that the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

20. The trade marks of the parties have their origins in Irish and Scots Gaelic.  In Scots Gaelic, the word ‘tulach’ denotes a ‘hillock, knoll or mound’.  The word ‘Turloch’ denotes ‘a small stream’, or ‘ground which is covered with water in winter, but dry in summer’.[1]  There is evidence, also, that the word ‘Turloch’ is an Irish Gaelic equivalent of the name ‘Terence’.

    [1] Dwelly’s Illustrated Gaelic to English Dictionary  1988 Gairm Publications Glasgow

21. Most Australians will, of course, be unaware of the antecedents of either of the words ‘tulloch’ or ‘turloch’ but might, via the more or less familiar word ‘loch’, (the final syllable of the trade marks) recognise both words as having a Gaelic origin.

22. It is probable that the first syllable in each word will be pronounced in different ways.  It appears to me likely that the opening syllable of the word ‘tulloch’ will be pronounced the same as in the English word ‘cull’.  I agree with the applicant that the vowel in opening syllable of the opposed trade mark will be pronounced the same as is the vowel in the word ‘sir’.  I think that these words are quite obviously different from each other as they are spoken.

23. It is probable, then, that any potential source of deception or confusion is more likely to stem from the similarity of the printed trade mark TURLOCH to the opponent’s trade mark, rather than from the similarity of the spoken words.

24. Looking at the printed words, there is one letter different this being the third letter in each trade mark.  This is in no way determinative as to deceptive similarity, of course.  There is, for instance, only one letter difference between the words ‘bolting’ and ‘belting’ or ‘small’ and ‘shall’ yet the words obviously have little similarity to each other. 

25. The words are, for Australians, completely arbitrary in relation to the goods.  Hence, while it might be relevant in some matters that the trade marks make reference to a geographical feature[2] in a particular trade, while that is ultimately true here, it is not apparent to the purchasers of the goods.

    [2] C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539 (31 October 2000)

26. Mr Omond drew my attention to Aristoc Ltd v Rysta Ltd (1945) 60 RPC 87 at 108, quoted in the Trade Mark Office Examiner Manual:

    The answer to the question of whether the sound of one word resembles too nearly the sound of another...must nearly always depend on the first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived. 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.

27. At the hearing, Mr Omond brought wine lists in the evidence to my attention where names of wines had been misspelled.  His point being that the public might see the applicant’s trade mark as being a misspelling of the opponent’s trade mark.  However, instances in evidence appear to me to be either the result of ignorance or reflections of cultural origins of the restaurateurs rather than being a practice – I should not base my decision on what minorities or the illiterate in the market might do, or perceive.  The decision should be based on what is the norm and how ordinary people act and behave. 

28. Additionally, Mr Omond submitted that the restaurant trade employs casual labour who are unlikely to be well acquainted with the wines on a wine list; however, this observation might be countered by observing that the hospitality trade has been increasingly viewed as a career for which technical and tertiary training is given.

29. Additionally, as I remarked, above, when discussing the deceptive similarity of the trade marks, the trade marks strongly suggest to me that they are proper nouns, that is, the names of places or people, albeit different places or different people.

30. Set against this is, as I have said, the obvious similarities of the trade marks.

31. This question is therefore a difficult one.  In Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999), at paragraph 50, French J said:

    In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

    (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

    (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

32. In the end, I am not convinced that there is a real and tangible danger of deception or confusion occurring, although I can appreciate both the opponent’s and applicant’s views expressed at the hearing.

33. As Celia Cumming observed in her submissions, in London Lubricants (1920) Ltd's Application, (1925) 42 RPC 264 (CASTROL/ TRIPCASTROID), it was observed that in assessing the similarity of words, emphasis is put on the start of the words, so that the opening letters or syllable is of importance in the comparison. Here, the opening syllable of the trade marks in question looks and sounds different. This factor does, I consider, tend to counterbalance the obvious similarity between the trade marks and leave the question of whether that similarity is a deceptive similarity somewhat in the balance.

1. I do not think that to the ordinary person, the trade marks will appear to be different versions of the same name, such as Johnston and Johnstone or MacKenzie and McKenzie between which confusion is, perhaps, inevitable.

2. This leaves the question of whether the similarity of the trade marks is a deceptive similarity as being moot.

3. In terms of section 55 of the Act, it is for the opponent to establish its opposition.  At paragraph 24, above, I quote French J in Woolworths.  He said, “the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion”.  Although French J referred to the provisions of section 33 of the Act, the same presumption of registrability is present in section 55.

4. And in Blount Inc v Registrar of Trade Marks (1988) 40 IPR 498 at 504, Branson J observed:

   Where the Act requires the Registrar to be "satisfied" of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

5. Accordingly, if I am not satisfied that the use of the opposed trade mark would be likely to deceive or confuse, the opponent has not established its opposition.

6. As the opponent has not established that the trade marks are substantially identical or deceptively similar, the opponent has not established its opposition in terms of sections 44, 58 or 60 of the Act.

   Decision

7. Section 55 of the Act provides:

   55. Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

   (a) to refuse to register the trade mark; or
   (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:  For limitations see section 6.

8. The opposition has not been established on the grounds that it was argued and, for completeness, I note that the other grounds mentioned on the Notice have also not been established.

9. Subject to the opponent notifying the Registrar of an appeal against my decision within one month of the date of this decision, the application may proceed to registration.  If such appeal is notified and not withdrawn, the application should be dealt with as the Court directs.

   Costs

10. Both applicant and opponent sought their costs should they be successful in these proceedings.  Costs may follow the event and I order costs against the opponent at the official scale.

    Ian Thompson
    Hearing Officer
    Trade Marks Hearings
    5 July 2004