La Francaise d'Horlogerie v Krementz & Co

[1992] ATMO 75

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by KREMENTZ & CO to the registration of Trade Mark application number 495301 in the name of LA FRANCAISE D'HORLOGERIE

On 25 January 1990, trade mark application 495301 was advertised accepted for registration.  The applicant, La Francaise D'Horlogerie sought registration of the mark KAMATZ in class 14 in respect of "all goods included in this class".  As allowed by sub-section 49(1), registration has been opposed.  The opponent, Krementz & Co, relied on various grounds of opposition, not all of which were pursued at the hearing.  As allowed by the regulations, the opponent lodged its evidence in support, but the applicant did not serve any evidence in answer.  A hearing was set down for 20 October 1992 in Sydney.  The opponent was represented by Mr Peter Maxwell, patent attorney, of Peter Maxwell & Associates.  The applicant was not represented and made no submissions.

Grounds, evidence and submissions
At the hearing, the thrust of Mr Maxwell submissions indicated that the opposition was based primarily on section 33 and to a much lesser extent on section 28 and sub-section 6(1).  The opponent's mark KREMENTZ is registered in respect of "rolled gold plate or white metal jewellery".  In support of its case the opponent lodged, as evidence, a statutory declaration by Joseph Wagner, secretary of the opponent company.  He stated that the goods had been sold in Australia since 1977.  The goods were supplied to nearly 400 retail jewellery and department stores by an Australian distributor.  Sales figures averaged $41,700 p.a. for the period 1984 to 1989.  No advertising figures were presented but a significant quantity of varied advertising material was annexed to the declaration.  Mr Wagner pointed to the similarities between the two marks in terms of the presence of the letters K, M and TZ, pronunciation, and the fact that neither word had a meaning.  He pointed to the fact that when the applicant's mark was used on watch dials the small size of the letters made it easier for purchasers to misread KAMATZ for KREMENTZ.  Mr Wagner stated that the mark KAMATZ had been successfully opposed in the United States after citing the similarities between the marks described above.  The decision formed an annexure to the declaration.

At the hearing, Mr Maxwell pointed out that the applicant's mark had also been successfully opposed in the United Kingdom and he tendered a copy of the decision (as yet unpublished) for my information.  In his submissions regarding the substantial identity or deceptive similarity of the marks, Mr Maxwell reasserted the points made by Mr Wagner.  He submitted that there were strong visual similarities between the marks because both started with K, ended in TZ and had M in the middle.  He also submitted that the marks were phonetically similar because the letter 'e' in KREMENTZ would be pronounced with the phonetic short 'e' as in 'gem' or 'met' and that the letter 'a' in KAMATZ would be pronounced with the phonetic short 'a' as in 'camel' or 'camera'.  He also pointed out that the marks created the same general impression: Jafferjee v Scarlett 57 CLR 115, and that marks are remembered by the impression they make rather than by their precise details: Cordova v Vick Chemical Company 68 RPC 103. Since the marks had no apparent meanings and no different meanings could be attached to them the possibility of confusion was very much greater: Bailey (William) (Birmingham) Ltd's Appn 52 RPC 136.

Mr Maxwell submitted that the goods were of the same description.  The opponent's mark was used on jewellery, and the applicant was seeking registration in respect of all goods in class 14 which encompassed jewellery.  If the marks appeared on small items such as jewellery they would not be easy to read and the likelihood of deception and confusion occurring would be increased.
Mr Maxwell submitted that section 28 was also contravened since there was a tangible danger of confusion: Southern Cross Refigerating Co. v Toowoomba Foundry Pty Ltd 91 C.L.R. 592. Mr Maxwell submitted that the failure of the applicant to provide evidence of use of the mark in Australia suggested that there was a lack of bone fide intention to use the mark. Sub-section 6(1) of the Act states that a mark must be proposed to be used, and it was held in Imperial Group Limited v Phillip Morris and Company Limited 1980 FSR 146 that the proposed use must be bone fide commercial use.

Decision
I will deal in turn with the three grounds of opposition that were pursued.

Section 33
Since the applicant is seeking registration of its mark for all goods in class 14 and such a specification encompasses the opponent's goods, rolled gold plate or white metal jewellery, there is no question that the goods of the applicant are the same, or of the same description, as those of the opponent.  The opponent's mark KREMENTZ has been registered since 13 May 1929.  The applicant lodged its application on 13 September 1988.  In the absence of evidence to the contrary, the opponent's mark has the earlier priority date.  Therefore, the question I have to decide under this section is whether the two marks are substantially identical or deceptively similar.

Substantial identity is to be judged by a side by side comparison of the marks: Shell Co. (Aust.) Ltd v. Esso Standard Oil (Aust.) Ltd (1961) 109 CLR 407 at 414-15. I am satisfied that the marks are not substantially identical and I do not think it was suggested they were. They both have the consonants K, M, T and Z similarly located in the marks, but the opponent's mark contains additional consonants and different vowels. When the two marks are compared in detail side by side they present quite a different appearance.

Deceptive similarity is defined by sub-section 6(3).  In determining whether the applicant's mark so nearly resembles the opponent's mark as to be likely to deceive or cause confusion, the test to be applied can be stated by adapting the words of the Privy Council in the "Solavoid" Trade Mark [1977] RPC 1 at 2, which in turn derive from the questions posed by Evershed J in Smith Hayden & Co Ltd's Application (1946) 63 RPC 97: "(Under s 33(1)) assuming use by the applicant of its trade mark KAMATZ in a normal and fair manner for all goods in class 14 (which includes jewellery), is the Registrar satisfied that there would be reasonable likelihood of deception or confusion among a substantial number of persons if KREMENTZ was used in a normal and fair manner for rolled gold plate or white metal jewellery?"

Mr Maxwell referred me to the well known passage of Parker J in Pianotist Co. Ltd's Application (1906) 23 RPC 774 at 777 as the classic test to be applied in comparing two trade marks. The two words have to be judged on their look and their sound and all the surrounding circumstances considered. Both marks, since they appear to be invented words, are susceptible to a variety of pronunciations. I think that even if the vowels were pronounced as Mr Maxwell suggested they might be, quite different and distinct sounds would result. However, when items of jewellery are bought, I believe purchases would be more likely to be made after a visual assessment of the goods rather than on a verbal request by brand name. Therefore the sound of the words would be of less importance in this context than their appearance.

In deciding the matter of deceptive similarity the marks should not be compared side by side but on the recollection of the impression the marks may have made: Shell Co. (Aust.) Ltd v. Esso Standard Oil (Aust.) Ltd supra.  If the marks are clearly rendered, I believe there is some visual similarity. Having regard for the presence and placement of the same consonants, allowing for imperfect recollection and for the fact that the words have no apparent meanings to assist in differentiating them, I believe there is the potential for deception and confusion to occur.  However, if the marks are rendered in such a way as makes them difficult to read, as on small items of jewellery, then the use and similar location of the consonants K, M, T and Z in the marks would result in the marks creating the same visual impression. In these circumstances, I believe that deception or confusion would be even more likely to occur.

Therefore, I believe there is the potential for deception or confusion to occur and I find the opponent succeeds on this ground of opposition.  I note the opponent's oppositions in the United States and the United Kingdom were successful on very simliar grounds.

Section 28
I have found that use of the applicant's mark would lead to deception and confusion in relation to section 33.  It follows, therefore, that the mark also comes within paragraph 28(a).  It also follows that, as the mark offends against the provisions of section 33, it would not be entitled to protection in a court of justice so that paragraph 28(d) is also satisfied.  The mark is thus disbarred from registration by the provisions of section 28: Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA 12 IPR 321; New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Limited 18 IPR 385.

Use/ Intention to use
The only indication as to use of the mark KAMATZ by the applicant is to be found in the statement of use in accordance with regulation 8, which states that the mark is now used or presently intended to be use in respect of the goods specified in the application.  This statement, as Mr Maxwell pointed out, is not supported by any evidence.  However, lack of evidence as to the applicant's bone fide commercial use or intention to use the mark does not establish that there is no intention to use the mark or even that there is no actual commercial use of the mark by the applicant: Aston v Harlee Manufacturing Co. (1960) 103 CLR 391 at 401. The opponent did not substantiate its claims in regard and in these proceedings the onus, which the opponent has failed to discharge, is on the opponent to make a case for the lack of bone fides.
Conclusion
I have found that the applicant's mark offends against the provisions of both sections 33 and 28 and is not therefore qualified for registration.  It follows that the opposition is successful and that, subject to any appeal from this decision, the application for registration of the mark is refused.  I award costs to the opponent.

Linda Sullivan
Acting Hearing Officer

27 November 1992