LG Electronics Inc. v BSH Bosch Und Siemens Hausgerate GmbH

[2012] ATMO 68

TRADE MARKS ACT 1995

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

Re:Opposition by LG Electronics Inc. to registration of trade mark application 1286394 (7) - COMPRESSOR TECHNOLOGY with fan device - filed in the name of BSH Bosch und Siemens Hausgerate GmbH.

Delegate:

Bianca Irgang

Representation:

Opponent: Mr Mark Williams of Allens Arthur Robinson Patent and Trade Mark Attorneys

Applicant: Mr Russell Waters of Phillips Ormonde Fitzpatrick

Decision:

2012 ATMO 68

s.52 opposition – s.41 trade mark capable of distinguishing - s.44 trade mark not deceptively similar to the opponent’s trade mark – s. 42 and 60 opponent establishes market presence but failed to demonstrate the there was likely to be any deception or confusion in the marketplace – no ground of opposition established.

Background

1. BSH Bosch und Siemens Hausgerate GmbH (‘the applicant’) filed application number 1286394 on 20 February 2009 in class 7 of the International Classification of Goods and Services. Details of the application are set out below.

Trade mark:  

Trade mark application:              1286394

Filing Date:  20 February 2009

Convention details:  24 November 2008

007 420 151

European Community

Specification:  Class 7: Electric household and kitchen machines and apparatus (included in this class), in particular electric kitchen machines and apparatus, including mincing machines, mixing and kneading machines, fruit pressing machines, juice extractors, juice centrifuges, grinders, slicing machines, electric motor-driven tools, electric can openers, knife sharpeners as well as machines and devices for the preparation of beverages and/or food; pumps for dispensing cooled beverages, for use in combination with appliances for cooling of beverages; electric waste disposal units, namely waste masticators and compressors; dishwashers; electric machines and appliances for treating laundry and clothing, including washing machines, spin driers, laundry presses, ironing machines (included in this class); electric cleaning apparatus for household use, including window cleaning devices and shoe cleaning devices, vacuum cleaners; wet and dry vacuum cleaners; parts for the aforementioned goods, included in this class; in particular hoses, pipes, dust filters and dust filter bags, all for vacuum cleaners

1. LG Electronics Inc. (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to the registration of the application on 26 June 2009. Thereafter the parties served and filed evidence as allowed by the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

2. I heard the matter in Melbourne as a delegate of the Registrar of Trade Marks on 8 March 2012. Mr Mark Williams of Allens Arthur Robinson Patent and Trade Mark Attorneys represented the opponent. The applicant was represented by Mr Russell Waters of Phillips Ormonde Fitzpatrick.

Grounds of Opposition

1. The Notice nominated most of the grounds of opposition available under The Trade Marks Act 1995 (‘the Act’). The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

   [2] [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

2. At the hearing the opponent advised that it was not formally withdrawing any of the grounds of opposition listed in the Notice but that it would provide submissions only on those grounds under sections 41, 42(b), 44 and 60 of the Act. None of the evidence served and filed by the opponent appears to go to the other grounds in the Notice and for the sake of completeness I find that these grounds have not been established.

3. Therefore, the grounds remaining for my consideration are those under sections 41, 42(b), 44 and 60 of the Act. Should the opponent establish one ground of opposition in relation to all of the applicant’s goods and services specification, there is no requirement for the other ground of opposition to be considered.

Evidence

1. The evidence of the parties consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Mark Andrew Williams[3]	Trade Mark Attorney at Allens Arthur Robinson Patent and Trade Mark Attorneys	21 April 2010	MAW-1 to MAW-10
Mark Andrew Williams[4]	Trade Mark Attorney at Allens Arthur Robinson Patent and Trade Mark Attorneys	20 July 2010	MAW-11 to MAW-19
Evidence in Answer
Ursula Brink	Managing Trade Mark Counsel for BSH Bosh und Siemens Hausgeraete GmbH	8 April 2011	1 to 9
Russell John Waters	Principal of Phillips Ormonde Fitzpatrick	19 July 2011	RJW-1 to RJW-3
Evidence in Reply
Mark Andrew Williams[5]	Trade Mark Attorney at Allens Arthur Robinson Patent and Trade Mark Attorneys	3 October 2011	MAW-21 to MAW-25

[3] For ease of reference throughout the decision this statutory declaration will be referred to as Williams#1.

[4] This statutory declaration will be referred to as Williams #2

[5] This statutory declaration will be referred to as Williams #3

Section 41: Trade mark not distinguishing applicant’s goods or services

1. Section 41 of the Act deals with a trade mark’s capacity to distinguish an applicant’s goods or services. It provides a scheme for the assessment of the capacity of a trade mark to distinguish the goods or services of one trader from the similar goods or services of another trader. However, as for any other ground of opposition the onus is on the opponent to make its case under section 41. The opponent must establish that the trade mark is not capable of distinguishing the goods in question. If the trade mark is found to lack inherent capacity to distinguish, section 41 also provides a scheme for the assessment of whether the trade mark has acquired capacity to distinguish the goods through its use in trade.

2. Justice Branson sets out an understanding of the structure of section 41 of the Act in Blount Inc v Registrar of Trade Marks[6] with the words:

   [6] [1998] 440 FCA (1 May 1998), 40 IPR 498 at 504

   Subsections (3) - (6) of s 41 of the Act are designed to control the process by which the registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services). If the trade mark is not so capable, the application for its registration must be rejected: s 41(2). Subsection (3) requires the Registrar first to "take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons". Having taken such matter into account, it is theoretically open to the registrar to conclude:

   (a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

   (b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or

   (c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

   The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish: s 41(2) and (3). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

   If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) "unable to decide the question". That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

   If the Registrar reaches conclusion (b) above, then the provisions of paras (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application: s 33(1). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).

If the Registrar reaches conclusion (c) above, then the provisions of paras (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparas (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application: s 33(1). If the Registrar, having considered the combined effect of the matter listed in subparas (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application.

1. The question of whether a trade mark has the inherent adaptation to distinguish goods from those of other traders was considered by Justice Kitto in F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537 at 555:

   The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.

2. The applicant’s trade mark consists of the expression ‘Compressor Technology’ and the device of a fan set above the top of the words. The attorney for the opponent argued that the applicant’s trade mark is not capable of distinguishing the applicant’s goods. The opponent submitted that the various elements separately lack an inherent capacity to distinguish the goods separately and, crucially, also when considered as they appear in the applicant’s composite trade mark.

3. The applicant argued, inter alia, that the opponent’s arguments should be rejected because IP Australia has already accepted the application. However, the fact that a trade mark application has been accepted at the examination stage does not necessarily mean that it will be registered. Section 41 of the Act is a ground of opposition as well as a ground for rejection and French J said in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020 (1999) 45 IPR 411 at [34]:

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

4. However, the same legal tests and criteria apply to section 41 at the opposition stage.

5. It is accepted law that an assessment of a trade mark’s capacity to distinguish requires a consideration of the trade mark as a whole. This principle was articulated by Lawrence J in Diamond T Motor Car Co’s Application (1921) 38 RPC 373 at 380:

   In order to ascertain whether the Applicants’ trade mark is a registrable trade mark, the sole question to be determined is whether it is adapted to distinguish the vehicles of the Applicants from those of other manufacturers, and in determining this question it is, in my judgment, immaterial to consider whether any of its component parts are or are not registrable by themselves… (Emphasis added)

6. In the case of Clement et Cie’s Trade Mark (1899) 16 RPC 611 at 618 (‘Clement’), Romer LJ said that his judgment should not give rise to any idea:

   [T]hat it would sanction the registration of words which themselves would not constitute a proper trade mark, merely because some flourishes were colourably put around them to try and make out a distinctive label – a compound label – when in fact what was really sought to be registered and intended to be registered were the words alone. 

7. I am of the view that the expression “Compressor Technology” is one that other traders would ordinarily desire to use in relation to goods which contain compressors, however, I am not convinced that the addition of the fan device is a mere embellishment or a stylistic flourish to the trade mark. The fan does not depict a compressor and I agree with the applicant’s statement: “[W]hilst a fan may form part of a compressor, a stylized representation of a fan does not depict a compressor, any more than a stylized representation of a radiator fan could be considered a depiction of an automobile.”

8. It is a moot point whether the fan device is registrable as a trade mark by itself, but I am not convinced that it lacks any inherent adaptation to distinguish the services. However, the trade mark applicant is not claiming rights in the expression “Compressor Technology” or a device of a fan but rather in the particular combination of both those elements in the one trade mark. While it may be the case that either of those elements by themselves would lack inherent adaption to distinguish, that is not the consideration before me. The trade mark must be considered as a whole, both visually and aurally. On such a consideration, I am satisfied that the Applicant’s trade mark is inherently capable of distinguishing the designated services under section 41(3) of the Act. The ground of opposition under section 41 has not been established on the balance of probabilities.

Section 44 - Identical etc. trade marks:

1. Section 44 of the Act relevantly provides:

1. Identical etc. trade marks

(1)Subject to subsections (3) and (4), and 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)…; 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.

1. To establish its opposition in terms section 44 of the Act the opponent must show all of the following:

Øa trade mark (or trade marks), either registered or pending registration, in the name of a person other than the present holder, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;

Øthe trade mark(s) in the name of the other person must be in respect of similar goods or closely related services; and

Øthe priority date of the trade mark(s) of the other person is (are) earlier than the priority date of the Applicant’s trade mark.

1. The opponent has specified one trade mark registration in support of the section 44 ground of opposition. Details of this registration are as follows:

Trade mark:  KOMPRESSOR

Trade mark application:              1158792

Filing Date:  30 January 2007

Specification:  Class 7: Electric washing machines; electric vacuum cleaners; automatic dishwashers for household purposes; electric mixers for household purposes; DC generators

Class 11:Gas ranges; kitchen ranges (ovens); air conditioners; electric refrigerators; microwave oven  ranges; electric fans; air purifying apparatus and machines; electric toasters; humidifiers; torches for lighting; electric laundry dryers

Endorsement:   The applicant has advised that a translation of the GERMAN word KOMPRESSOR appearing in the trade mark is COMPRESSOR.

1. The opponent is the registered owner of the above trade mark which has an earlier priority date to that of the applicant’s trade mark. The trade mark registration covers similar class 7 goods to the goods of the applicant – in fact, some items are identical. The key issue to be decided is the applicant’s trade mark COMPRESSOR TECHNOLOGY with fan device is either substantially identical or deceptively similar to the opponent’s KOMPRESSOR trade mark.

2. It is clear the applicant’s trade mark is not substantially identical with the opponent’s trade mark according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd[7]. There exists the additional word and graphic device as well as the difference of spelling in the applicant’s trade mark which acts as a clear visual difference from the opponent’s trade mark registration.

   [7] (1963) 109 CLR 407 at 414

3. According to the authorities[8] 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. Similarities in ideas are also a possible source of confusion although the fact that the trade marks have similar ideas is not conclusive in itself: Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd[9] where the High Court stated:

   "But it is obvious that trademarks, especially word marks, could be quite unlike and yet convey the same idea of the superiority or some particular suitability of an article for the work it was intended to do. To refuse an application for registration on this ground would be to give the proprietor of a registered trademark a complete monopoly of all words conveying the same idea as his trademark. The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive. As Lord Parker said in the passage cited, you must consider the nature and kind of customer who would be likely to buy the goods."

   [8] Clark v Sharp (1898) 15 RPC 141 at 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

   [9] [1952] HCA 15; (1952) 86 CLR 536.

1. Justice French in Registrar of Trade Marks v Woolworths Ltd[10] observed in relation to the expression “likely to deceive or cause confusion”:

   … The use of the word “likely” in this context does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a “real tangible danger of its occurring” …

   [10] supra

2. The concepts ‘deceive’ and ‘cause confusion’ were considered in Pioneer Hi-Bred  Corn  Co v Hy-Line Chicks Pty Ltd[11] where it was stated :

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.

   [11] (1979) RPC 410 at 423

3. The decisive question is whether the use of the mark COMPRESSOR TECHNOLOGY and fan device for the goods in classe 7 given the previous registration for KOMPRESSOR for goods in class 7 would result in a tangible danger of confusion or deception. I do not believe it would. In coming to this decision it is important that trade marks are considered in their entirety – ‘it is the whole mark as used which is the subject of the comparison with the registered mark.’[12]

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

4. In comparing the trade marks it becomes apparent that the word COMPRESSOR in the applicant’s trade mark is a phonetic equivalent with the word KOMPRESSOR. While the words are spelt differently and have visual differences, the sound of the letters ‘C’ in the opponent’s mark and the letter ‘K’ in the applicant’s trade mark going to be pronounced in the same way by the general monolingual Australian customer[13]. The opponent has argued that, since the marks are pronounced similarly and convey the same idea, consumers with knowledge of the opponent’s trade mark would erroneously purchase the applicant’s goods on a mistaken belief that goods sold under the applicant’s trade mark were the opponent’s goods. However, I am not persuaded by this line of reasoning.

   [13] Re Application by the Pianotist Co Ltd  (1906) 1A IPR 379

5. The nature of the goods in question and the usual manner in which they are sold is particularly relevant to determining whether there is a tangible danger of deception or confusion arising. While deception or confusion may arise when trade marks are used either visually or aurally, aural deception is unlikely to occur with goods which are generally inspected before purchase, such as the goods claimed in class 7. The likelihood of visual deception is also reduced as the goods are ‘likely to be subjected to a careful visual examination by any intending purchaser’.[14] I am not satisfied there is a real tangible danger of these respective trade marks being confused in the marketplace when applied to the applicant’s goods in class 7 and the opponent’s goods.

   [14] Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505, per Burchett J at 510

6. Therefore, the opponent has not established the ground of opposition under section 44.

Section 60 - Reputation in Australia

1. Section 60 of the Act provides:

1. Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

1. To establish the ground of opposition under section 60, the opponent must demonstrate:

ØThat, at the priority date of the opposed application, another trade mark had acquired a reputation in Australia; and

ØThat because of the reputation of the second trade mark, use of the applicant’s trade mark would be likely to deceive or cause confusion.

1. Unlike section 44 of the Act, section 60 does not require that the goods upon which the opponent uses its trade mark be similar to the goods of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. It is now for me to determine whether the opponent has acquired a reputation in Australia for its KOMPRESSOR trade mark which is such that use of the opposed COMPRESSOR TECHNOLOGY trade mark would be likely to deceive or cause confusion. This is more than merely indicating prior use, the opponent’s trade mark needs to be “associated in the minds of the Australian public”[15].

   [15] Seven Up Co v OT Ltd (1947) 75 CLR 203 at 211

2. In relation to reputation Kenny J states in McCormick & Co Inc. v McCormick, 51 IPR 102, at 128:

In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

At 129 Kenny J continues:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product:…

1. Confidential exhibit MAW-19 accompanying Williams #2 contains a table of sales figures by calendar year for the period from 2007 until 2010 which demonstrates extensive and increasing sales of the opponent’s products bearing the KOMPRESSOR trade mark in Australia. Exhibit MAW-20 contains an extensive list of the opponent’s suppliers which includes some major Australian retailers. A number of advertisements and leaflets have also been provided by the opponent in support of its claims of extensive advertising through product stickers (exhibit MAW-11), swing tags (exhibit MAW-12), product packaging (exhibit MAW-13) and point-of-sale materials (exhibit MAW-14 to 17).

2. In Williams #1 Mr Williams states that there are also numerous websites which have advertised the opponent’s KOMPRESSOR goods (exhibits MAW-5 to 10). A number of these websites examples demonstrate that the opponent’s KOMPRESSOR goods are currently being advertised on the websites and not that they have been advertised since 2007. However, there is evidence that the opponent has been using its KOMPRESSOR trade mark on vacuum cleaners since 2007 (exhibit MAW-1).

3. It is clear from the evidence that the opponent has engaged in a reasonable level of advertising which has resulted in growing sales as the years have progressed. It is also clear that the opponent has been using its KOMPRESSOR trade mark for a period of time which predates the opposed trade mark’s priority date. I am satisfied that within the Australian marketplace specific to the opponent’s goods –the opponent does have a reputation in its KOMPRESSOR trade mark for vacuum cleaners. However it needs to be determined if, given this reputation in Australia, use of the opposed trade mark would be likely to deceive or cause confusion.

4. In my consideration of the likelihood of confusion or deception, I am not to be influenced by the evidence of how the applicant uses its trade mark. I am to consider any of the modes of business that would be within the scope of the registration, should it be granted in the terms presently sought. In respect of the likelihood of the applicant’s trade mark use resulting in confusion, I consider the comments by Stephen J in Hornsby Building Information Centre Pty Limited v Sydney Building Information Centre Limited[16] to be particularly apt.  His Honour said:-

   [16] [1978] HCA 11; (1978) 140 CLR 216 at 229-230

   There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small difference in a competitor's trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946)63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words - `So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.' The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe. … Given that a name is no more than merely descriptive of a particular type of business, its use by others who carry on that same type of business does not deceive or mislead as to the nature of the business described.

5. Both parties have demonstrated use of their trade marks within the same market in Australia, however, considering the evidence put forward by the opponent and that its use only relates to vacuum cleaners, I am not satisfied that the opponent has established such a large reputation that it is likely the average consumer would become confused and be caused to wonder whether there was a connection between the opponent’s goods and those goods of the applicant bearing the COMPRESSOR TECHNOLOGY trade mark. Particularly since the trade mark is two words and incorporates a fan device. The aural and visual differences all sufficiently differentiate the applicant’s trade mark from the opponent’s single word KOMPRESSOR trade mark.

6. Additionally, there is no evidence before me of actual confusion in the marketplace in relation to the origin of the applicant’s and opponent’s respective goods provided under the respective trade marks. I am not satisfied that applicant’s use of its COMPRESSOR TECHNOLOGY trade mark will result in any significant degree of deception. The opponent has not established the section 60 ground of opposition.

Section 42(b) – Contrary to law

1. Section 42 of the Act provides:

1. Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   (a)…

   (b)Its use would be contrary to law.

1. The opponent submits that the applicant’s use of the COMPRESSOR TECHNOLOGY trade mark would prima facie breach Section 18 of Schedule 2 to the Competition and Consumer Act 2010 (Cth). For reasons consistent with those discussed in sections 44 and 60 I do not accept this argument. The opponent is also unsuccessful on this ground.

Decision

1. Subsection 55(1) of the Act provides:

   Decision

   55 (1). Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

   (a) to refuse to register the trade mark; or
   (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:  For limitations see section 6.

2. The opponent has not established any of the grounds of opposition. The trade mark application may proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration of the trade mark shall not occur until the appeal has been discontinued or registration is ordered by the courts.

Costs

1. Both parties made a claim for costs. As there is nothing before me suggesting that costs should not follow the general rule, I award costs against the opponent in accord with Schedule 8 of the Trade Mark Regulations 1995.

Bianca Irgang

Hearing Officer

Trade Marks Hearings

15 August 2012