Karen Lee

[2016] ATMO 19

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1633800 (9) –- in the name of Karen Lee.

Delegate:

Bianca Irgang

Representation:

Applicant: David Shoolman of Ascot Martin

Decision:

2016 ATMO 19

Ex parte - S33 – section 44 ground for rejection – Marks are deceptively similar – consideration of subsections 44(3)(a) and (b) – no evidence provided and no other circumstances made out – application rejected.

Background

1.     This matter is an ex parte proceeding involving the application for registration of the following trade mark under the Trade Marks Act 1995 (‘the Act’):

Trade Mark No: 1633800

Trade Mark:  (‘the Trade Mark’)

Filing Date: 10 July 2014

Applicant: Karen Lee

Specification of Goods:

Class 9: Casings made from light metal for carrying electrical devices; Components comprising glass bushings for electrical devices; Components for electrical devices; Electrical devices for data information display; Electrical devices for security purposes (other than for vehicles); Electrical devices for storage of data; Electrical devices for the switching of data; Electrical devices for the switching of messages; Electrical devices for transmission of data; Timers for switching on electrical devices at pre-programmed times; Computer software downloaded from the internet; Data recorded electronically from the internet; Apparatus for controlling cameras; Apparatus for controlling computer programmes; Apparatus for controlling lighting; Apparatus for controlling the input of data; Apparatus for controlling the operation of machines (computer); Apparatus for controlling the operation of machines (electric); Apparatus for controlling the operation of machines (electronic); Apparatus for controlling the operation of machines (remote); Apparatus for controlling the output of data; Apparatus for controlling the processing of data; Apparatus for controlling the storage of data; Apparatus for controlling the supply of electrical current; Apparatus for lighting control; Apparatus for personnel entry control; Apparatus for programming electronic control apparatus; Apparatus for the control of electric current; Electrical control panels; Electrical control panels for burglar alarm systems; Electrical control panels for fire alarm systems; Electrical control panels for smoke alarm systems; Electrical control units for electrical appliances; Electrical control units for lighting installations; Electrical controllers for controlling the speed of motors; Electrical controlling apparatus for motors; Electrical controls; Electrical digital control apparatus; Electrical remote control apparatus; Remote controllers; Remote controls

2. The application was examined under as required by section 31 of the Act and a ground for rejection was raised under section 44. The examiner’s first report provided:

Your trade mark is identical to or closely resembles trade mark number 836535. This trade mark has an earlier priority date and is for the same or similar goods or services.

Your trade mark closely resembles the earlier trade mark because the letters HAS are a principal feature of both trade marks.

AND

The goods are similar because both trade marks have claimed software/computer programs. You have also claimed many goods that are the same or similar to the conflicting trade mark’s claim for computers.

3.     The details of the conflicting registration are as follows:

Trade Mark No: 836535

Trade Mark:  (‘the cited trade mark registration’)

Filing Date:  26 May 2000

Applicant: HAS Solutions Pty Limited

Specification of Goods:

Class 9: Computers, computer programs, computer software

4.     The applicant was then given the option of providing evidence of prior or honest concurrent use or other circumstances to overcome the grounds for rejection. The applicant’s legal representative responded by submitting that the Trade Mark was prima facie capable of distinguishing the applicant’s services and was not deceptively similar to trade mark 836535.

5.     A total of three adverse examination reports were issued to the applicant in relation to the present application. In response, the applicant provided submissions which the examiner did not consider sufficient to overcome the objection. As part of the third adverse trade mark examination report the examiner wrote that unless the applicant was able to produce evidence or other circumstances in support of the application she would initiate the rejection process against the application. As an alternative, the applicant was reminded that it had the right to request a hearing.

6.     The applicant requested a hearing on the matter via written submissions which I was given to decide as a delegate of the Registrar of Trade Marks. David Shoolman of Ascot Martin prepared the written submissions accompanied by attachments 1 to 3 on behalf of the applicant.

The Law

7. Section 33 of the Act provides:

33  Application accepted or rejected

(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it.

Note:For this Act see section 6.

(2)The Registrar may accept the application subject to conditions or limitations.

Note:For limitations see section 6.

(3)If the Registrar is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it;

the Registrar must reject the application.

Note:For this Act see section 6.

(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note:For applicant see section 6.

Presumption of Registrability

8. Mr Shoolman argues that the presumption of registrability which arises under subsection 33(1) of the Act is particularly relevant for this matter. He has relied on the authority of Registrar of Trade Marks v Woolworths Limited[1] where French J stated:

‘The mandatory language of s 33 and the legislative policy which informs it also suggest that the acceptance state is not the time for the kind of detailed adversarial examination of the application that might emerge from a contested opposition.’

[1] (1999) 45 IPR 411; (1999) AIPC 91-499 [34].

9. The legislation is expressed in terms which make it clear that there is to be a presumption of registrability when an application for registration is being examined by the Registrar. The effect of the presumption is that if there is any doubt about whether a trade mark should be registered, that doubt should be resolved in favour of the applicant, rather than against it. Therefore, by virtue of subsection 33(1) of the Act, the Registrar must accept an application unless satisfied that there are grounds for rejecting it. The grounds for rejecting a mark are well established and if the Registrar holds, on balance, that one of these grounds constitutes a reason for rejection, the provisions of subsection 33(3) come into operation.

10. Subsection 33(3) of the Act sets down the basis for rejecting an application. The subsection prescribes that if the Registrar is satisfied either that the application is not in accordance with the Act, or that there are grounds for rejection, the application must be rejected. This subsection adopts mandatory language. As a consequence, should I as a delegate of the Registrar decide that a valid section 44(1) ground for rejection exists and the applicant is not able to overcome the objection under the provisions of subsections 44(3) or 44(4), I must then reject the application as directed by subsection 33(3).

Discussion

11. The applicant requested a hearing in order to argue that the section 44 ground for rejection against its trade mark application was not appropriate since the trade marks were not deceptively similar and that the examiner erred in maintaining the section 44 ground for rejection because she did not appropriately consider and address all of the applicant’s submissions.

12.   My considerations in making a decision on this matter do not include critiquing whether or not the examiner individually addressed each case raised by the applicant in its submissions. However, in response to the applicant’s detailed submissions of the cases the examiner did not expressly address and comment on in her reports, I say now that it is not necessary to refer to all material put before the decision maker and I refer to Applicant WAEE v Minister for Immigration & Multicultural & Indigenous Affairs[2]:

It is plainly not necessary for the Tribunal to refer to every piece of evidence and every contention made by an applicant in its written reasons. It may be that some evidence is irrelevant to the criteria and some contentions misconceived. Moreover, there is a distinction between the Tribunal failing to advert to evidence which, if accepted, might have led it to make a different finding of fact (cf Minister for Immigration and Multicultural Affairs v Yusuf (2001) 206 CLR 323 at [87]-[97]) and a failure by the Tribunal to address a contention which, if accepted, might establish that the applicant had a well-founded fear of persecution for a Convention reason. The Tribunal is not a court. It is an administrative body operating in an environment which requires the expeditious determination of a high volume of applications. Each of the applications it decides is, of course, of great importance. Some of its decisions may literally be life and death decisions for the applicant. Nevertheless, it is an administrative body and not a court and its reasons are not to be scrutinised `with an eye keenly attuned to error'. Nor is it necessarily required to provide reasons of the kind that might be expected of a court of law.

[2] [2003] FCAFC 184; 75 ALD 630 [46]

13.   Nor does a failure to individually address each case indicate that the examiner ‘has reached a state of being “satisfied” as contemplated by section 33(1) without proper foundation and therefore that such a state of mind is contrary to natural justice and cannot be in accordance with the intended meaning of section 33(1)’ as asserted by the applicant.

14. My considerations in this matter are whether or not I am satisfied there is a ground for rejection in regards to the Trade Mark. In saying that I turn to section 44 of the Act which relevantly provides:

44Identical etc. trade marks

(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.

Note 1:       For deceptively similarsee section 10.

Note 2:       For similar goodssee subsection 14(1).

Note 3:       For priority datesee section 12.

Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

15.   The cited trade mark registration has an earlier priority date than the Trade Mark and its broad claim for computers, computer programs and computer software in class 9 are the same or at least of the same description as some of those goods claimed in class 9 by the Trade Mark. This is because a computer is defined in the Oxford Dictionary as:

Computer: noun An electronic device which is capable of receiving information (data) in a particular form and of performing a sequence of operations in accordance with a predetermined but variable set of procedural instruction (program) to produce a result in the form of information or signals.

16.   ‘Computers’ is therefore a broad claim that covers a range of the applicant’s claimed goods including:

Electrical devices for data information display; electrical devices for the switching of data; electrical devices for the switching of messages; Apparatus for controlling the input of data; Apparatus for controlling the operation of machines (electric); Apparatus for controlling the operation of machine (electronic); Apparatus for controlling the operation of machines (remote)

17.   I am satisfied that the respective goods claims of the Trade Mark and the cited trade mark registration covers similar goods and that the suggested amendments by the applicant (contained in attachment 1 to the submissions) do not overcome the overlap in goods. Therefore, the key issue to be decided by me is whether the applicant’s HAS trade mark is substantially identical with or deceptively similar to the cited H A S SOLUTIONS trade mark.

Comparison of the trade marks

18.   It is obvious that the applicant’s HAS trade mark is not substantially identical with the cited HAS SOLUTIONS trade mark registration according to the side-by-side test set out by Windeyer J. (at first instance) in The Shell Company (Australia) Limited v Esso Standard Oil (Australia) Limited[3]. The cited trade mark registration includes the additional word SOLUTIONS along with slightly stylized ‘electronic circuit network’ lines which provide a clear visual difference from the Trade Mark.

[3] (1961) 109 CLR 407 [414]

19. On the other hand, deceptive similarity is defined by section 10 of the Act. The determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have recalling the cited trade mark, to the impression they would get from the Trade Mark.[4] The probability of deception must be finite and non-trivial.[5]

[4] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, Windeyer J [415]

[5] Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411; (1999) AIPC 91-499, French J [43]

20.   According to the authorities[6] any consideration of whether trade marks are deceptively similar must take into account that consumers may have an imperfect recollection of a trade mark. As a general principle one needs to estimate the impression consumers are likely to form of each trade mark as a whole. Confusion may result if a trade mark incorporates the distinguishing features of another’s trade mark. The test to determine whether trade marks are ‘deceptively similar’ is set out in The Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited[7] where Windeyer J. stated:

‘The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … 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 impression that such persons would get from the defendant’s [trade mark]’

[6] Clark v Sharp (1898) 15 RPC 141, [146]; Re Application by the Pianotist Co Ltd (1906) 23 RPC 774; Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641; Aristoc Ltd v Rysta Ltd (1943) 60 RPC 87; Cordova v Vick Chemical Co (1951) 68 RPC 103; Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536; Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411

[7] (1961) 109 CLR 407 [415]

21.   His Honour 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.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.’

22.   Mr Shoolman argued at length that the trade marks in question are not deceptively similar, drawing on a number of the established authorities for the purpose of making the comparison. In light of the applicant’s previous comments about a decision maker not referring to all case law provided, I will follow the guidance of Windeyer J in Re Bali Brassiere Co Inc's Registered Trade Mark and Berlei Limited's Application[8] where he stated:

Cases were cited to me from passages in judgments dealing with marks held to be, or held not to be, by reason of similarities, deceptive or confusing. I have read these cases, and others. I do not think I need discuss them. The governing principles are not in dispute; and little is to be gained by the quotation of enunciations and elaborations of them in other cases. The difficulty is always in their application to the facts of the case in hand.

[8] [1968] HCA 72; (1968) 118 CLR 128 [139]

23.   The thrust of Mr Shoolman’s arguments against the respective trade marks being deceptively similar may be summarized as:

·The addition of the word SOLUTIONS and unusual stylization in the cited trade mark registration and the importance of giving due weight to these points of dissimilarity;

·The ‘futuristic stylization’ of the applicant’s Trade Mark;

·The respective ‘ideas’ of the trade marks

24.   Despite those submissions, whilst I accept that there are differences between the respective trade marks, I am satisfied that they are deceptively similar.

25.   The cited trade mark registration does contain some ‘electronic circuit device’ stylization together with the addition of the word SOLUTIONS. I also note that the cited trade mark registration is structured with the term H A S along the top of the trade mark in a large, bolded font with a space between each letter. The word SOLUTIONS is beneath it, offset slightly to the right in a smaller, non-bolded font.

26.   The Trade Mark is the word HAS depicted in what Mr Shoolman emphasizes is a futuristic font which gives viewers an impression of the Trade Mark as being futuristic and unusual. To emphasize that the font is considered futuristic, Mr Shoolman provided annexure 3 to his written submissions which contains a print out from of various fonts classified as ‘sci fi’ which are identical/very similar to the font used by the applicant for its Trade Mark.

27. In comparing the trade marks in terms of section 44, the term HAS is the common element in both of the trade mark representations and is the only word in the Trade Mark. It is likely that the Trade Mark will be referred to by the prominent aural and visual element ‘HAS’ by consumers without reference to the stylization.

28. With this observation in mind, I note the applicant’s submission that the structure of the trade mark has a grammatical meaning and that the word SOLUTIONS has a dictionary meaning and is therefore distinctive and not to be discounted or minimized when comparing the respective trade marks for the purpose of section 44. I agree that in coming to a decision regarding deceptive similarity it is important that the trade marks are considered in their entirety – ‘it is the whole of the mark as used or intended to be used which is the subject of the comparison with the registered mark.’[9]

[9] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).

29.   I do not believe that the SOLUTIONS element of the cited trade mark registration, or the meaning which can been attributed to HAS SOLUTIONS should be disregarded but at the same time I hold the view that consideration must be given as to whether it is likely that deception or confusion could occur through ‘contextual confusion’ whereby the common element in each of the respective trade marks may induce traders and the public to believe that the marks emanate from the same trade source.[10]

[10] John Fitton & Co. Ltd’s Application (1949) 66 RPC 110, per Assistant-Comptroller Chisholm at 113.

30.   The principal of conceptual confusion is summed up in John Fitton & Co. Ltd’s Application[11] where Mr S. E. Chisholm, the Assistant-Comptroller, commented:

‘With reference to the nature of the confusion alleged the evidence furnished on behalf of the Opponents by their trade declarants is direction not so much towards showing that the two marks ‘Jests’ and ‘Easyjests’ might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element ‘Jest’ in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from the one and same trade source.’

[11] 66 RPC 113

31.   Therefore, it needs to be determined whether a prospective purchaser, although aware that the respective trade marks are different, may still be caused to wonder whether they are the property of the same entity. To hold such a belief requires that the respective trade marks are seen to have some sort of relationship – that the Trade Mark would be seen as related to the cited trade mark registration because of a commonality that has been produced by a mutual feature.

32.   It is worth noting that the first element of a trade mark is the most important for aural comparison.[12] Given the structure of the cited trade mark registration places emphasis on the term H A S which is positioned in bolded and larger font in prominent position at the top of the cited trade mark registration, I consider it probable that consumers who know of the cited trade mark registration upon seeing goods bearing the applicant’s Trade Mark are likely to believe that the goods come from the same trade source or are related to the goods bearing the cited trade mark registration. Particularly since the ‘sci fi font’ of the Trade Mark and the ‘electronic circuit network’ device stylization in the cited trade mark registration both convey to potential consumers a ‘futuristic idea’ which increases the impression of similarity between the trade marks. It is common practice among traders to adopt a trade mark and then modify it in some way when offering new, related products or different product lines. The public is familiar with this practice and knows that, while the marks are not identical, they do denote related products offered by the same trader.

[12] London Lubricant’s (1920) Ltd’s Appn (1925) 42 RPC 264 (at 279).

33.   I am satisfied that the applicant’s Trade Mark is deceptively similar to the cited trade mark registration. The applicant has not been able to provide any evidence of use before the filing date so that the provisions of subsection 44(3)(a) and 44(4) are not applicable. Nor am I satisfied that there are other circumstances which might be said to apply make it proper to accept this trade mark for registration. The applicant has simply not provided sufficient reasons for the present application to be accepted under the provisions of subsection 44(3)(b). Accordingly, I do not find it proper in the circumstances to apply the provisions of subsection 44(3)(b) to the applicant’s trade mark in this matter.

Decision

34. Section 33 of the Act relevantly provides:

33Application accepted or rejected

(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it.

Note:For this Act see section 6.

(2)The Registrar may accept the application subject to conditions or limitations.

Note:For limitations see section 6.

(3)If the Registrar is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it;

the Registrar must reject the application.

Note:For this Act see section 6.

(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note:For applicant see section 6.

35.   I am satisfied there is ground for rejecting trade mark application no. 1633800 and I hereby reject it.

Bianca Irgang

Hearing Officer

Trade Marks Hearings & Opposition

24 March 2016