Kabushiki Kaisha Chandeal v Chantelle
[1996] ATMO 61
•3 December 1996
TRADE MARKS ACT 1955
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re: Opposition by Chantelle to registration of trade mark application number 603571(25) in the name of Kabushiki Kaisha Chandeal
The transitional provisions of Part 22 of the Trade Marks Act 1995 provide that the terms of the Trade Marks Act 1955 continue to govern this opposition. Accordingly, unless otherwise specified, any reference to the Act in this decision is a reference to the Trade Marks Act 1955.
The application
Trade mark application number 603571 is the word CHANDEAL represented in the following format.
This application is lodged in the name of Kabushiki Kaisha Chandeal, a corporation located at 4-25, Ohmiya-Cho 3-Chome, Nara, Japan. The application has been accepted for all goods in class 25. The statement of goods nominates:-
All goods in this class, including trousers; skirts; blouses; sweaters; jackets; jumpers; suits; coats; overcoats; shirts; pants; furs; underclothing; lingerie; brassieres; belts; caps; ear muffs; gloves; lace boots; neckties; scarfs(sic); suspenders; girdles.
The opposition
A company by the name of Chantelle, of 41 Rue Greneta, Paris, France, opposes this application. It opposes on a number of grounds but the evidence and argument only go to the section 33 question of whether the application trade mark is substantially identical with, or deceptively similar to, the opponent’s two registered trade marks 167043(25) and 623238(25). Both of these marks comprise the word chantelle. Each trade marks is registered in respect of
Girdles, brassieres, articles of underclothing and swim-suits (being articles of clothing); all being knitted or made wholly or principally of knitted materials; and stockings.
In accordance with the provisions of Part VII of the Trade Marks Regulations in force under the 1955 Trade Marks Act, the opponent served and lodged evidence to support its opposition and the applicant served and lodged evidence in answer. There is no evidence in reply. The matter then came to a hearing before me in Melbourne on 13 September 1996. The opponent was represented by Ms C.J.Harris of Watermark. The applicant was represented by Mr R.J.Strickland of Griffith Hack & Co. Watermark and Griffith Hack & Co are both patent and trade mark attorneys firms in Melbourne.
The evidence
The opponent’s evidence comprises ten statutory declarations.
First is a declaration by Douglas Steele of Camberwell Victoria. Mr Steele is the owner and managing director of Dickory Dock (Aust) Pty Ltd and his company is the Australian agent for the opponent.
Second is a declaration by Jacques Monmarson of Santeny, France. Mr Monmarson has been the opponent’s export manager since 1989.
Third are eight trade declarations from persons involved in Australian lingerie retail businesses. The declarations are by Lara Passerini of North Balwyn, and Pamela Joy Shah of Lower Templestowe, both in Victoria; Lynette Rose Papagiannis of Flagstaff Hill, and Karen Rachel Halliwell of Hyde Park, both in South Australia; Joan Lomax of Paddington, New South Wales; Shirley Mackintosh of Rapid Creek, Northern Territory; Gabrielle O'Connor of Nedlands, Western Australia; and Judith Anne Richards of Prospect, Tasmania. All declarants are either proprietors or part owners of lingerie retail outlets.
The applicant’s evidence is a single declaration. It is by Robert James Strickland, the applicant’s patent and trade mark attorney.
The submissions
Ms Harris’ submissions essentially hang on a comparison of chandeal and chantelle, on the established character of the opponent’s business, and on the effect of imperfect recollection on prospective purchasers.
She commenced by drawing my attention to the opponent’s use of its trade mark. This use is set down in the Steele and Monmarson declarations. The opponent commenced business in France in 1939 and in 1982 began selling chantelle lingerie in Australia. Sales have gradually increased and currently some 2000 garments are sold in this country each year. chantelle lingerie is sold in all States, both through large retailers such as Myers, and through single outlet retailers. Mr Steele says that the opponent’s lingerie is aimed at the middle to upper segment of the market with garments costing some two to five times as much as an equivalent item at the low cost end of the market. chantelle goods, he claims, account for ten to twenty percent of the ‘exclusive undergarment market’ and are purchased by a clientele who demand high quality products and who are prepared to pay for that quality.
In relation to the declarations from the eight retailers, Ms Harris drew my attention to the fact that each of them expresses the view that, in light of the reputation achieved by the trade mark chantelle for high priced underwear, use of the trade mark chandeal would be likely to lead to confusion if it were to be used in relation to lingerie. Five of them go further and think that this would also be the case if chandeal were to be used in relation to outergarments. Ms Papagiannis says
3. I believe that if undergarments were available in the Australian market place bearing the trade mark chandeal, consumers would be confused into thinking that they were sourced from chantelle
4. I also believe that if outergarments bearing the trade mark chandeal were available in the Australian market place, consumers would be confused into believing that such products were sourced from chantelle
Ms Mackintosh, O’Connor, Halliwell and Richards express the same opinions.
Against this background, Ms Harris argues there is good reason to refuse the trade mark chandeal on grounds that it is both substantially identical and deceptively similar to the opponent’s trade marks chantelle. In terms of section 33 of the Act, she points out that the application goods overlap with the goods of the two chantelle registrations. This point is not in dispute, and the section 33 ground hangs, she says, on whether or not the words chandeal and chantelle are substantially identical or deceptively similar.
Addressing the issue of similarity, Ms Harris points to the likeness between the words chandeal and chantelle. Both commence with the prefix chan-. The ‘d’ which follows in chandeal, and the ‘t’ which follows in chantelle, are both hard sounds which when spoken are easily confused. Both second syllables contain an ‘e’ and an ‘l’. Ms Harris refers me to the principle that the first syllable of a word is, as a rule, more important for the purposes of distinguishing[1], and comments that here they are identical. Then she reminds me that the doctrine of imperfect recollection warns against the danger of trying to differentiate trade marks merely on the basis of a meticulous comparison of words letter by letter[2]. Overall, Ms Harris submits, the corresponding features in chandeal and chantelle draw the two trade marks very closely together with regard both to their pronunciation, and their appearance. She says I should therefore hold that these trade marks are substantially identical and deceptively similar.
[1] London Lubricants Ltd’s Application (1925) 42 RPC 264
[2] Rysta Ltd’s Application (1943) 60 RPC 87
Ms Harris finally refers me back to the evidence, and particularly to the evidence from the eight retailers. Five of these declarants state their opinion that use of chandeal in relation to outerclothing as well as underclothing would lead to confusion. Ms Harris adds to this point her submission that as the opponent uses its trade mark chantelle solely on luxury goods, confusion with a mark used on budget goods would bring harm to the opponent’s trade.
Mr Strickland’s submissions are confined to arguing that the opponent’s trade mark chantelle is neither substantially identical nor deceptively similar to the subject trade mark chandeal. He prefaces his argument by mentioning that there is no evidence of any confusion but acknowledges the applicant is not able to rely on this fact because it has not yet used the trade mark chandeal in Australia. He says the applicant’s case rests on three points. These are:
that chan- is a prefix which is common to many trade marks in class 25;
ii) that a significant difference between the words chandeal and chantelle is that chandeal is an invented word and chantelle is not; and
iii) that chantelle has a meaning in a foreign language, and chandeal has not.
In support of these points, Mr Strickland refers me to his declaration. In it he states that he commissioned a search of the records of the Trade Marks Office to find trade marks in class 25 which commenced with the prefixchan-. The search revealed 19 registered trade marks, and 6 pending applications. He holds these up as evidence that chan- is a prefix which is commonly used in the clothing trade. It is worth quoting this list in full. As per paragraph 3 of the Strickland declaration, it runs as follows:
| REGISTRATIONS 122296 CHANEL | 534391 MOET & CHANDON APPLICATIONS 627623 CHUNGA CHANGA AUSTRALIA |
I make the observation here that, in comparing words where the common feature is a suffix or a prefix, it is relevant to understand the significance of that element, and it may well be, as Mr Strickland would have me find, that such an element is commonly used within the trade. As Mr Strickland did remind me, the fact that perma is commonly employed in the description of blinds, resulted in a finding that perma and permatrace were not deceptively similar trade marks[3]. Similarly, neither rhinegolde nor rinerose was found to be too close to rhinesdale because, in respect of wine, Rhine is considered to be common to the trade[4].
[3] Hommes v Finn Blinds (1987) AIPC 90-454
[4] Penfolds Wines (N.Z.) v Leo Buring Pty Ltd (1983) 3 IPR 233
Against this background, Mr Strickland takes up the opponent’s point of the demonstrated high cost of garments sold under its trade mark chantelle, and he points to findings which show that where the purchase of goods involves a substantial outlay, greater care is likely to be exercised[5] and consequently, differences in trade marks which may otherwise have been overlooked will not escape notice. The opponent’s focus on the luxury end of the market is thus likely, says Mr Strickland, to engender careful decision making, and this, combined with the fact that chan-, the common feature of the trade marks, has trade relevance, will avoid any confusion.
[5] ‘Lancia” Trade Mark [1987] RPC 303
In relation to his second point, Mr Strickland refers me to exhibit RJS3 of his declaration. This is from A Dictionary of First Names[6] and shows the following entry
[6] Hanks and Hodges, Oxford University Press, Oxford, New York, 1990
Chantal(f.) French, also sometimes found in the English-speaking world; bestowed in honour of St. Jane Frances ....
Variants: English Chantale; Chantelle (influenced by the feminine diminutive suffix -elle)
This entry, he says, bears out his claim that whereas chandeal is an invented word, chantelle is known to be a given name. On the basis that one word has a meaning and the other none, trade marks have been found not to be deceptively similar[7].
[7] Deeko Australia Pty Ltd v Decor Corp Pty Ltd (1988) AIPC 90-479
Mr Strickland’s third point is that, in contradistinction to chandeal, chantelle has a foreign meaning. This meaning he says, is as a given name.
Mr Strickland did not call into question any of the opponent’s evidence. Nor did he challenge the competence of the eight retailers or the soundness of their opinions.
The Decision
The matter I am called to decide is whether, by reason of the opponent’s trade mark registrations 167043 and 623238, this trade mark application is in breach of section 33 of the Trade Marks Act 1955. Section 33, so far as it is relevant, reads:
Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, or goods of the same description as those goods or of services that are closely related to those goods, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second mentioned trade mark.
623238 has a registration date in February 1994 which is later than June 1993, the prospective date of registration for the application trade mark. It does not, therefore, constitute a ground for a section 33 objection. 167043, however, has a registration date in 1961 - over 30 years earlier than the subject application - and does fall to be considered as a section 33 objection.
As I have said, it is common ground that the application goods and those of 167043 overlap. In respect of the section 33 ground therefore, I agree with Ms Harris that I must simply decide whether the subject trade mark chandeal and the word chantelle are substantially identical or deceptively similar.
Substantial identity requires a side by side comparison of the marks[8]. Comparing chandeal and chantelle in this way, it is perfectly clear that they are not identical. On little more than a cursory glance it is apparent that the two words look different, are spelt differently, will be said differently and do not mean the same thing. These differences are sufficient to easily distinguish one word from the other. Accordingly, I find that they are not substantially identical.
[8] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at 414 - 415
Deceptive similarity, as per section 6 of the Act, requires consideration of whether the marks so nearly resemble each other as to be likely to deceive or cause confusion. It is now well established that this involves a much wider enquiry than the tests for substantial identity. As per the directives of Dixon and McTiernan JJ .[9]
[9] Australian Woollen Mills Ltd v F.S.Walton & Co Ltd (1937) 58 CLR 641 at 658
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 ... is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark .. 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, then 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.
Against these criteria, I turn to Ms Harris’ submissions. Her argument in essence is that the words chandeal and chantelle are sufficiently close to cause confusion, particularly in terms of imperfect recollection. This, I note, is what Justice Dixon and Justice McTiernan refer to as the impression or recollection which is carried away and retained. Adopting words from their judgement, imperfect recollection, is the basis for a mistaken belief that chandeal is the trade mark chantelle.
Ms Harris’ submissions have highlighted the fact that chantelle has had considerable use in Australia and that that use has all been in respect of expensive underwear. The trade mark has been publicised through advertising, particularly through in-store displays, window displays, newspaper advertisements and radio advertisements[10]. Against this background I am to consider the likely purchaser, and the possibility of that person confusing the two marks. The goods of the respective marks are goods which women in the mass will be involved in purchasing. Women in the mass must therefore afford the standard. Are members of this group, who have knowledge of the trade mark chantelle, likely to be confused if they are presented with the trade mark chandeal? This necessarily includes purchasers who may have seen or heard advertisements for chantelle, or may have heard praise of the chantelle garments.
[10] Steele declaration, paragraphs 8 and 9
Mr Strickland submits that there would be no deception or confusion between the marks. He says that purchasers will recognise the trade function of the prefix chan- and distinguish between chandeal and chantelle on the basis of the difference between their second syllables, on the difference in the meanings of the words and on the basis that chantelle has a foreign meaning. I will take these points in order.
The findings in Hommes v Finn Blinds [11] and Penfolds Wines (N.Z.) v Leo Buring Pty Ltd[12] (supra) both involved a prefix with a meaning in the trade. Perma is a prefix indicating permanent. Rhine is a reference to the River Rhine. There is no evidence that chan- performs a descriptive function in relation to goods in general or to clothing in particular. The marks which Mr Strickland exhibits in his declaration certainly include the prefix chan- but this seems to me to be nothing more than an illustration that a number of trade marks in class 25 commence with the same four letters. Six of the marks contain the word chanel, two contain the word channel, and eight contain the word change. There is no evidence before me to show that the first syllable in these three words has any trade meaning - in fact there is no evidence at all as to what, in terms of trade description, it could possibly mean. channel and change are perfectly ordinary English words, and I can have regard to the fact that to my own knowledge, the prefix in these words has no significance so far as the clothing market is concerned. In short, Mr Strickland has not shown that this prefix has any trade significance, and I find that his first argument fails.
[11] (1987) AIPC 90-454
[12] (1983) 3 IPR 233
Mr Strickland’s second point is that the purchasing public will distinguish between the chandeal and chantelle through the meaning that attaches to chantelle. I agree that there is a meaning in chantelle and that there is none in chandeal. However, chantelle is not a commonly used given name, and I do not accept that its meaning is either so well known or obvious that it will off-set the likelihood of a mistaken impression derived from imperfect recollection.
Mr Strickland’s last point, that deception and confusion will be avoided through chantelle’s foreign meaning is even less persuasive that his second. If few people are aware of the English usage of the word, it is likely that fewer people will be aware of its foreign use. Certainly, no evidence has been provided to the contrary. Furthermore, the claim for a foreign meaning is not supported by Mr Strickland’s own evidence. The quotation he supplies from the Oxford Dictionary of First Names defines Chantelle as an English variant of the French name Chantal. I am thus left to wonder whether chantelle has a foreign meaning, French or otherwise.
Mr Strickland’s has referred me to the ‘Lancia’ trade mark[13] on the point that careful forethought is exercised in the purchase of expensive goods and militates against deception and confusion. As he points out, on the opponent’s evidence, its goods are expensive luxury items and I agree that they would be bought with some care. However, the application goods are not confined in any way to a specialist range or to expensive goods. On the contrary, the statement of goods comprehends clothing of a general kind. I must consider the terms of section 33 in light of notional use of the applicants trade mark[14] in respect of the full scope of these goods. Many clothing items (including underwear) are not purchased with the special care unless they are specialist or luxury garments, and therefore I do not accept that the directives of the Lancia case apply. I find I can give no weight to Mr Strickland’s argument that purchasers of goods bearing the chandeal trade mark will avoid deception and confusion through exercising the care expected in purchasing expensive goods.
[13] ‘Lancia” Trade Mark [1987] RPC 303
[14] In the matter of John Fitton & Company Limited's application (1949) 66 RPC 110
Turning back then to Ms Harris’ submissions, I agree with her submissions that there is a significant similarity between the words chandeal and chantelle. On the basis of spelling, appearance and phonetics the words have much in common, and there is but little in their meanings to distinguish between them. Compared visually, and side by side, I think there is sufficient difference to hold that the marks may be distinguished from each other, but I do not think that this will be the case where one mark is considered with the other mark in mind. I consider that verbally, particularly in the wake of radio advertising or other vocal recommendation for chantelle, the similarities between the two words are sufficient to produce confusion and deception. Further, as a consequence of the opponent’s advertising, and mindful both of the circumstances of the trade and of the wide cross section which constitutes the purchasing public, it seems to me that the similarity of the words is likely to cause confusion through an imperfect recollection of general encounters with the chantelle trade mark. In coming to this point of view I have taken some slight account of the opinions of the eight retailers whom I regard as have some standing as expert witnesses.
I agree with Ms Harris’ submissions that use of the application mark on the nominated goods may well cause purchasers mistakenly to believe that in buying a chandeal item, they are acquiring a chantelle garment which is marketed and known for superior quality.
In sum, I find that chandeal is deceptively similar to the opponent’s trade mark chantelle registered under 167043, and that the opposition succeeds.
Consequently, I refuse trade mark application number 603571.
The opposition has succeeded, and accordingly I award costs to Chantelle.
Helen R. Hardie
Deputy Registrar
3 December 1996
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