Lam Soon Oil and Soap Mfg (S) Pty Ltd, Re

[1992] ATMO 71

Trade Marks Act 1955
Decision of a Delegate of the Registrar of Trade Marks

Re:Trade Mark Application 521325 in the name of Lam Soon Oil and Soap Mfg (S) Pty Ltd.

Trade mark application 521325 is in the name of Lam Soon Oil and Soap Mfg (S) Pty Ltd ("the applicant") and the goods specified in the application are "all goods in class 29 including vegetable oils".  Material lodged by the applicant's solicitor makes it clear that the goods with which the applicant is primarily concerned are edible oils and fats, shortening, margarine, and tinned or bottled beans, peas, mushrooms, soups, sauces, jam and peanut butter.  The trade mark is as shown below.

On examination, a prior registrations was cited and maintained as a ground of objection under section 33 of the Act.  That section provides, at 33(1), that:

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, of goods of the same description as 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.

Section 6(3) of the Act provides that a trade mark will be deemed to be deceptively similar to another trade mark if it so nearly resembles the other as to be likely to deceive or cause confusion.

The registration said to block the application is in the name of Hastings Co-Operative Ltd ("the cited proprietor").  It is in respect of the word DAISY, as number 2454, registered for "meat, poultry and game; meat extracts, preserved, dried and cooked fruits and vegetables; jellies, jams; eggs, milk, butter and other dairy products; edible oils and fats; preserves, pickles, bacon, hams, cheese, lard". (Bacon, hams, butter, cheese, eggs and lard are limited to the States of New South Wales, Victoria, South Australia, Queensland and Tasmania).

The applicant's solicitors have waived the right to a hearing and asked that the matter be decided on the written record.

There is a direct overlap between the goods of particular interest to the applicant and those of the cited mark, and nothing to suggest that this overlap can be overcome by negotiation and restriction of the claims of either party.  I therefore turn to the question of deceptive similarity between the applicant's mark and the cited mark.

That question is to be judged in the light of the cases surveyed in Dial an Angel v Sagitaur Services 19 IPR 171. From these the correct approach to the present circumstances is as per Lord Parker, in the matter of Application by Pianotist Co Ltd 23 RPC 774, approved by the High Court in Cooper Engineering v Sigmund Pumps, 86 CLR 536:

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.

Looked at in those terms it is inconceivable that there will not be widespread deception or confusion if the applicant's mark is used in this country in respect of goods covered by their application, including, inter alia, their goods of interest.  The obvious differences between competing marks pale into insignificance under the sheer weight of overall similarity.  The word DAISY is the entire of the cited mark, makes up a distinctive essential particular of the applicant's, and is not safely merged into any new entity. 

The applicant's solicitor wrote to the cited proprietor and asked if it would have any objection to the applicant obtaining registration.  The cited proprietor has consented to a concurrent registration in respect of edible oils and fats and cooked fruits and vegetables, but will not surrender its own registered rights in relation to those goods.

The objection is not so borderline in terms of similarity of goods or of marks that the consent of the cited proprietor might tip the scales (Shanahan's Australian Law of Trade Marks and Passing Off at page 153).

Therefore, while I do not find the marks to be substantially identical, I find that the applicant's trade mark is deceptively similar to one the subject of a registration of earlier date and made in respect of the same goods.  Section 33 stands as a block to its registration.

There is no suggestion that the applicant had, before the date of the present application, made the sort of extensive and honest concurrent use of its mark that might justify acceptance of the application under the provisions of section 34(1).  The factors to be considered under those provisions are further analysed in Shanahan, supra, at pages 202 to 207.

Failing this, there is no evidence before me which would allow the applicant to show use before either the date of first use by the original proprietor or of the making of the original application by that proprietor  The terms of section 34(2), however, are such that an applicant, to succeed there, must show use before both of those dates.

Application 521325 has failed under section 33(1) and is not saved by section 34.  I therefore refuse the application.

T. Williams

Hearing Officer

30 October 1992