Le Cravatte Di Pancaldi Srl v Camiceria Pancaldi and B. Srl

[1994] ATMO 99

Trade Marks Act 1955
Decision of a Delegate of the Registrar of Trade Marks,
with Reasons

Re:      Opposition by Camiceria Pancaldi and B. srl to the registration of applications 493209 and 493210 in the name Le Cravatte Di Pancaldi srl.

Background

On 6.6.91 and 30.5.91, respectively, the above trade mark applications were advertised accepted for registration.  The applications are in the name of Le Cravatte Di Pancaldi srl ("the applicant").  The trade mark the subject of the two applications, which were lodged on 15.8.88, is the words VITALIANO PANCALDI with a chevron device, as below. 

In view of the descriptive word "Italy" in the mark, the applicant has consented to an endorsement which reads:  "It is a condition of registration that the mark will only be used on goods made in Italy".

The applications relate to all goods in classes 9 and 18.  The former of these classes contains a wide variety of good, which can be briefly described as being scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images.  Class 18 on the other hand contains a less diverse range of goods, loosely described as luggage and leathergoods.  However, it will be convenient to speak of the applications as if they were one unless there is some matter to which the differing goods are relevant.

Registration of the applications has been opposed, as provided for by sub-section 49(1) of the Trade Marks Act 1955, by Camiceria Pancaldi and B. srl ("the opponent"), on grounds which are generalised and which I will not recite at length. As argued at the hearing the matters come down to three. The opponent claims that the applicant is not the proprietor of the mark in view of a lack of intention to use the mark on all of the goods specified and, secondly, that the application should be refused in any case because of the applicant's conduct or otherwise and because use of the applicant's mark would be likely to deceive. Finally, it claims that, under the terms of section 33 of the Act, the applications are blocked by a registration of the opponent's own trade mark.

The opponent has served evidence in support of its opposition and, there being no evidence in answer, the matter was set down for hearing on 29.8.94.  The opponent was represented by Mr Gerard Skelly, a patent attorney of the attorney firm of Spruson and Ferguson.  The applicant was represented by Mr Peter Smith, a patent attorney of the firm of Smith Shelston Beadle, patent attorneys. 

Having heard the parties, I turn to the evidence, which I have assessed on its merits in the light of the submissions of both sides.

This evidence is not expansive:  it consists of a single declaration which asserts that the opponent's goods have been sold under the trade mark PANCALDI AND B since 1967.  The goods bearing that trade mark have not been stated, except that invoices for 1987 are part of the declaration.  Other than those invoices there is no indication of the extent of sales.  In 1987 the only sales in evidence involved some 120 kilograms of shirts and blouses.

Decision:
Opponent's prior registration:
That registration is relevant only if I consider that any of the goods to which it relates are "goods of the same description" (per s33 of the Act) as those covered by either application.  The opponent's attorney relied on Darwin's application (1946) 63 RPC 1, John Crowther and Sons' application (1948) 65 RPC 369 and Jellinek's application (1946) 63 RPC 59, and reminded me that the matter must be looked at from a commercial viewpoint. He also noted that purchasers are aware of licensing and would expect the goods in question to come from the same ultimate source.

The application in class 9 covers all goods in that class including, inter alia, protective gloves, knee pads, clothing for protection against accidents and fire, electrically heated socks, swimming belts and reflective disks for garments.  In Mr Skelly's view these have an obvious overlap with clothing but I do not accept this.  While the class 9 goods nominated by Mr Skelly are able to be worn, the commercial reality of the situation is that they are almost inevitably come from different sources and are sold by different outlets, for different purposes.  While the practice of the Office was varied somewhat in Dinning v New Balance Athletic Shoe Inc, (1992) AIPC 90-931, this should not be taken too far. The circumstances found to span the gap between sports clothing and sporting footwear cannot be imputed to exist in other trades without convincing evidence.

Similarly, I do not accept that any clothing items in class 25 are goods of the same description as the leathergoods in class 18.  Mr Skelly did note that the latter class includes goods such as straps for skates, shoulder belts, leather linings for shoes and leather thongs and straps.  Class 25 includes leather clothing and leather neck ties, though not leather shoe laces, which fall in class 26.  Aside from the fact that the class 25 items are made from animal hides they have very little in common with any of the goods referred to by Mr Skelly.  Their natures, uses and, on the face of it, trade channels are different.  At most, a leather tie and a leather thong are ribbon-like in shape, but they are neither bought for similar uses nor sold side by side.  The opponent has not shown in evidence that they come through any common trade sources higher up in the chain of distribution, and it is not likely, on the face of it, that they should normally do so.

My conclusion is consistent with the Practice Note in the Australian Official Journal of Trade Marks of 9 and 16 April 1992, where the overlap between clothing in general and harnesses, saddlery and whips, in particular, was considered.  The practice note dealt with, specifically, riding boots and jodhpurs in class 25, and noted that even where there were common trade outlets or suppliers, this was more than outweighed by the overall difference in natures and uses.

Beyond this, I do not accept Mr Skelly's argument that the opponent's registered trade mark is deceptively similar to the applicant's.  The opponent's mark is the words PANCALDI & B, in a somewhat ornate font.  The opponent's argument, briefly stated, hinges on the assumption that there is enough similarity of an essential feature or features in the competing trade marks, such that potential buyers would infer a common trade source or some sort of common connection between "the two Pancaldi trade marks", as Mr Skelly referred to them.  It is true that, as Mr Skelly noted, "Pancaldi" is a christian name as well as being a rare surname:  four instances on a search of the Australian consolidated electoral rolls.  As a surname, it is so rare that on present practice it would be judged prima facie distinctive.  None the less, the overall differences between the marks do not invite the sort of confusion noted in Olin v Pacemaker Pool Supplies (1984) 4 IPR 526.

In that case, the hearing officer noted that there can be a deceptive or confusing resemblance between marks where a common essential particular is taken as the trade indicator, even though there are obvious differences between trade marks.  That is something of which I take due note, but I am not convinced that it would apply here.  The marks in suit are, as wholes, sufficiently different.  The differences will be likely to outweigh any possible resemblance as "two Pancaldi marks" and the chance of such confusion is also reduced because the goods in question are different.  Such differences in nature and intended use will cause buyers to be more careful in making an inference that the mere presence of the word Pancaldi in two very different trade marks may denote a common trade source.

Deception or confusion
I have already said that I am not convinced by the argument that the applicant's and opponent's marks are deceptively similar.  When I add to this the fact that the opponent has shown little or no reputation in its PANCALDI AND B trade mark, I find that there will be no reasonable possibility of deception or confusion brought about by the use of the applicant's mark in the face of such reputation as the opponent's mark may have in the market.

Therefore, while s 28 of the Trade Marks Act may, in certain circumstances, proscribe the registration of a trade mark "the use of which would be likely to deceive or cause confusion", the simple fact is that such an outcome is not at all likely in this case.

Intention to use
Mr Skelly noted the very wide scope of goods in class 9, and I agree with him that, prima facie, it is difficult to accept that any trader could seriously intend to use a trade mark in respect of as diverse a range of goods as linear accelerators, swimming goggles, adding machines and fire boats.

However, this is not a matter where I am to decide on the prima facie case alone.  The applicant has made a statement under regulation 8(1).  It has stated, in documents which formed part of the basis on which the applications were accepted, that:  "the mark forming the subject of this application is used or is intended to be used by the applicant company in relation to the goods specified in the application".

Such a statement is of a form which the Registrar has accepted for many years although the wording is not quite in compliance with the wording of regulation 8(1), which provides (emphasis added) that:

8. (1) An applicant for the registration of a trade mark in respect of two or more different goods, or all the goods included in one of the prescribed classes of goods, shall furnish in support of his application a written statement indicating that the applicant uses or proposes to use presently the trade mark in relation to all the goods specified in the application or the goods included in the class of goods specified in the application.

This reference to a present intention is in accord with established case law:  proprietorship of a mark so far unused in this country is based entirely on the making of an application, backed up by authorship of the mark and an intention to use it in trade (Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 398-9. Hunter Douglas Australia Pty Ltd v Perma Blinds (1969) 122 CLR 49 at 58 and Ritz Hotel Ltd v Charles of the Ritz (1988), 12 IPR 417 at 463 - 464, show that the test applied for the removal of an unused trade mark from the register is to be assimilated into this, with the effect that the intention must be a "real resolve, intention and purpose", though not necessarily an immediate intention.

The Macquarie Dictionary defines "presently" to mean "in a little while or soon, at this time, currently".  The statement made by the applicant, lacking the key word "presently", is thus more open ended than that envisaged by regulation 8, but not significantly so; there is an elasticity about the concept of "in a little while".

Accordingly, the applicant's form of the statement is acceptable.  It is one which the Office has accepted for many years, and I would not like to suggest that the present application would be defective if it is registered on the basis of such a statement rather than the one set out in the Regulations.  It would, conversely, be extreme to ask all applicants to assert that they do intend to use the mark immediately on such a wide range of goods.  The immediacy of their intentions is presumably proportional to the width of the claim made, and where the statement of goods is very wide it is understandable that applicants, while having a real resolve, intention and purpose to use the mark broadly, would not wish to imply that such broad use will commence at once right across the range.  As McLelland J noted in Ritz, supra, an applicant need not necessarily have an intention to use "immediately or within any limited time."  An applicant can avoid making such an implication by using the wording which the present applicant has done and nothing more need be asked of it.

The opponent has not produced any evidence that there is anything lacking in the applicant's intention to use, and, per Aston v Harlee, supra, at 401, it is not for me, in the lack of such evidence, to conduct an enquiry into the matter.  Such a finding is consistent with the decision in Titan Manufacturing Co v John Coyne (1991) 22 IPR 613, in relation to a claimed intention to use in respect of all goods in class 6.

That being so, the opponent has failed on all three of the grounds which it has pursued.  I therefore dismiss the oppositions and direct that the applications proceed to registration.  I award costs to the applicant.

T.E Williams
Hearing Officer

23 December 1994