Major League Baseball Properties Inc v New South Wales Rugby League Ltd

[2000] ATMO 87

TRADE MARKS ACT 1995

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

Re:Opposition by Medicraft Australia Ltd to registration of trade mark application 728894(3)(5)(29) and (30) - MEDICRAFT- filed in the name of Mega Products Ltd.

Background

In this issue Mega Products Ltd ('Mega'), of Bangkok in Thailand, filed application on 3 March 1997 ('the relevant date') for registration of the trade mark:

 

The goods for which registration is sought are:

Class 3

Essential oils, flavourings and essences for humans and animals; capsules including soft gel capsules containing essential oils, flavourings and essences for humans and animals; oils for cleaning and cosmetic purposes; perfumes and scents.

Class 5

Pharmaceutical and veterinary preparations and dietetic substances adapted for medical use for humans and animals including capsules and soft gel capsules containing herbal preparations, health and nutritional supplements and tablets for medicinal and pharmaceutical purposes in this class.

Class 29

Capsules including soft gel capsules containing edible oils, fats and other foodstuffs for humans in this class.

Class 30

Capsules including soft gel capsules containing foodstuffs, flavouring and essences for foodstuffs for humans in this class

On 8 October 1997 the application was accepted for registration and advertised as such on 23 October 1997 in the Australian Official Journal of Trade Marks.  On 23 January 1998, within the time allowed to do so, Medicraft Australia Ltd ('Medicraft') filed notice of opposition to the registration of the trade mark.  The relevant grounds of opposition will emerge sufficiently from these reasons.  On 22 January 1999, after seeking and receiving extensions of time in which to do so, Medicraft filed evidence in support of the opposition.  On 20 July 1999, Mega filed its evidence in answer after also seeking and receiving extensions of time; and, on 19 October 1999, Medicraft filed evidence in reply.

The issue came on to be heard by me in Canberra as a delegate of the registrar of trade marks.  David Yates of Counsel appeared for Medicraft, instructed by Spruson & Ferguson of Sydney.  Glenn McGowan of Counsel appeared for Mega, instructed by Garland Hawthorn Brahe of Melbourne.

Before giving my reasons, I will discuss the evidence.

The Evidence

The evidence is this matter may be summarised thus:

Declarant	Made	Exhibits
Catherine Schoen	21 Jan 1999	CS-1
Peter Denes Giesser	7 Jan 1999	PDG-1 to PDG-35
John William Farley	20 Jul 1999	JWF-1 to JWF-10
Beverley Ann Stevenson	20 Jul 1999	BAS-1 to BAS-2
Khajaque Kortian	10 Oct 1999	KK-1 to KK-2
Catherine Schoen	19 Oct 1999	CS-1

The evidence shows that Medicraft was incorporated in 1986 and is a subsidiary of Metpro Sydney Metal Products Pty Ltd ('Metpro').  In 1977, Metpro registered the trade mark MEDICRAFT (word) in respect of goods in Class 10 and, from 1977 to 1986, manufactured and distributed in Australia a range of surgical and medical instruments under the trade mark.  The goods included stethoscopes, insulin injectors, ear syringes and laryngoscopes.  During the period 1980 to 1986, Metpro made and distributed hospital beds and, they say, other hospital furniture under the trade mark MEDICRAFT.

Following the incorporation of Medicraft, that business acquired the MEDICRAFT trade mark and business name from Metpro and used the trade mark in relation to the hospital and surgical dressing trolleys, ward furniture, wardrobes, lockers and beds that they manufactured and distributed.  For the sake of simplicity, I will refer to these goods as 'the Medicraft products'.  It is my understanding from the evidence that manufacture of the surgical instruments and apparatus ceased in 1986.

Medicraft is now one of Australia's major manufacturers and distributors of hospital and health-care furniture with an annual turnover of some $10 million.  The Medicraft products are extensively advertised in a range of magazines, which have wide circulation in the health-care industry, as well as in brochures and catalogues, which are also circulated widely in the industry.  The Medicraft products are also promoted at conferences and exhibitions in Australia, as well as those Indonesia, Singapore, Malaysia, Hong Kong and China.  Commonwealth and New South Wales government ministers have been associated with some of these overseas exhibitions and/or trade delegations.

Medicraft have also sponsored a number of community events such as events at horseraces, "the Variety Club Bash" (a car rally for charity) and golf days for health-care and medical workers.

Medicraft is listed in a number of prominent heath-care and medical directories, has a presence on the Internet, distributes a range of merchandise (such as t-shirts, caps, pens and note pads), has been featured in newspapers and on television, and spends between $100,000 and $200,000 on advertising and promotion each year.

Since 1994, some three years prior to the relevant date, Medicraft has sold its hospital beds, mattresses and tables for home-care use although it is not clear how many.  Medicraft has made some effort to establish an outlet through pharmacies but it is not clear how successful this was by the relevant date.

Mega has offices in Bangkok, Vietnam, Myanmar and Cambodia.  Mega markets a range of alternative medicines including health food, vitamins, dietary supplements, herbal medicine and natural cosmetics. Mega has sold such goods in Singapore, Sri Lanka, Vietnam, Myanmar, Mauritius and Kenya.

Mega and its parent Medicap Ltd have used the trade mark 'since the early 1980s', and have registered the trade mark in Thailand, and subsequently elsewhere, since 1988.  Several applications for registration of the trade mark are currently pending in countries around Asia.

Mega Products (Australia) Pty Ltd (Mega AS) is a subsidiary of Mega.  Mega AS has received a Certificate from the Commonwealth Department of Health and Community Services enabling them to sell a specified range of vitamins, essential oils and extracts in Australia.

Medicraft has known of this application since at least 23 January 1998 when it lodged notice of opposition to the registration of the application.  On 17 April 1998, a Mr Dhawan, who is a principal of Mega, approached Mr Giesser a principal of Medicraft.  Mr Dhawan and Mr Giesser discussed the possibility of Medicraft licensing use of its trade mark to Mega for payment of royalties and in consideration of various other conditions.  Medicraft declined the offer.  Mr Giesser suggests Mr Dhawan stated that Medicraft's MEDICRAFT trade mark was well known in South East Asia.  Various pieces of correspondence concerning this meeting are appended to the Medicraft evidence.  Although Medicraft presents this meeting and its reported content as evidence of bad faith on the part of Mega, I make no such thing of it.  The approach came after Medicraft filed notice of opposition, which strongly suggests that the approach was an attempt at settlement.  Mega had apparently been using the MEDICRAFTS trade mark in South East Asia (apart from Australia) for over ten years by the time of the meeting.  The fact that Mega had been using the trade mark for this period of time strongly suggests that there was no bad faith motive in approaching Medicraft.

Other evidence before me concerns the goods the public might expect normally to be sold through pharmacies and chemists and whether pharmacists would have heard of Medicraft's trade mark.  Both parties conducted mini-surveys of these establishments. 

Finally, there are two letters appended to the Kortian declaration that I should mention.  One of these letters is written by Mr Kortian, who is a solicitor in the employ of Spruson & Ferguson.  He wrote to the solicitors for Mega, stating, inter alia:

"Our client has relied on your client's representation in the above fax dated 20 April 1998 that it will "opt out or just use another name" if it was not possible to obtain licence from our client and our client has sought to avoid unnecessary costs associated with the above opposition proceedings in the expectation that your client will withdraw the above application as implicitly indicated."

However, the letter from Mr Dhawan is mis-recalled by Mr Kortian.  In the letter to Mr Giesser of Medicraft, which is also in evidence, Mr Dhawan writes that Mega "may opt out or just use another name …" [Stress added]  This correspondence has been put in as evidence of bad faith and, in terms of section 59, to show a lack of intention to use the trade mark.  I do not agree that the evidence supports either of these suggestions.  I have already discussed the issue of bad faith and will discuss the issue of 'intention to use' immediately below, under the heading Reasons. 

Reasons

I will first discuss the opposition concerning Mega's intention, or lack of it, to use the trade mark.  Other heads of objection involve sections 44, 58 and 60.

Intention to Use

Section 59 of the Act provides:

Applicant not intending to use trade mark

59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or

(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note:  For applicant see section 6.

In Ducker’s Trade Mark (1928) 45 RPC 397 at 402, Lord Hanworth said:

“I agree that the goods need not be in being at the moment, and that there is futurity indicated in the definition; but the mark is to be a mark which is to be definitely used or in respect of which there is a resolve to use it in the immediate future upon or in connection with the goods.  I think that the words ‘proposed to be used’ mean a real intention to use, not a mere problematical intention, not an uncertain or indeterminate possibility, but a resolve or settled purpose which has been reached at the time when the mark is to be registered.”

In The Ritz Hotel Ltd v Charles of the Ritz Ltd and Another (1988) 12 IPR 417 at 464, McLelland J said, after discussing Ducker's Case, and others which concern this topic:

In my opinion, the correct view is that an unused mark is not “proposed to be used” by an applicant for registration unless that applicant has, at the time of the application, a real and definite intention to use the mark publicly in Australia as a trade mark, although not necessarily immediately or within any limited time.  [Stress added]

While the words emphasised refer to the filing date, the principle aso applies to section 59.  Likewise, in the words of Fullagar J in Aston v Harlee Manufacturing Co (1966) 103 CLR 391, at 401:

There is another element mentioned by Dixon J in the Shell Co’s case (1949) 78 CLR 627, which is stated as essential to the proprietorship of an unused trade mark. That element is the intention of the applicant for registration to use it upon or in connexion with goods. As to this I need only say that I do not regard his Honour as meaning that an applicant is required, in order to obtain registration, to establish affirmatively that he intends to use it. There is nothing in the Act or the Regulations which requires him to state such an intention at the time of application, and the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent, or the person aggrieved, of proving the absence of intention. Again, I do not think that ‘intention’ in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time. A manufacturer of (say) confectionery would, I should suppose, be entitled to register three trade marks in relation to confectionery, though he intended only to use two of them and had not made up his mind as to which two he would use. If he in fact does not use any of them for the period specified in s 72, the mark or marks may be expunged under that section. On the other hand, a manufacturer of confectionery, who had no intention of ever manufacturing motor cars, might be held disentitled to register a mark in relation to motor cars: the effect of Re Registered Trade Marks of John Batt & Co [1898] 2 Ch 432;; [1899] AC 428, is I think, correctly stated in the first paragraph of the headnote to the report of the case before Romer J and the Court of Appeal.” (The statement referred to from Batt’s case reads: “A trade mark cannot properly be registered for goods in which the applicant does not deal or intend to deal.”) Whether this is a case of a manufacturer of confectionery attempting to register a mark in respect of motor cars I have no means of knowing given the lack of evidence. Nevertheless, in my opinion the opponent has not discharged the onus on it of displacing the prima facie evidence of the applicant’s intention to use the mark. I would only add, in accepting Mr Mansfield’s submission, that I cannot think the registrar is called upon in opposition proceedings to institute an inquiry as to the intention of any applicant with respect to each and every item of goods or services included in one of the prescribed classes. [Stress added]

Section 59 is couched in the present tense.  It is thus for Medicraft to show that, at the time of filing the application and/or subsequently, Mega did not have an intention to use the trade mark.  It is apparent that the goods in respect of which Mega seeks to register the trade mark are ones in which they trade and have done so elsewhere in the world under this trade mark.  The evidence comprising Mr Dhawan's letter, which he sent well later than the date of filing, by its wording, falls short of establishing this because of the use of the word 'may'.  This does not, I believe, establish the absence of intention to use the trade mark by Mega.

The opposition under section 59 is therefore dismissed.

Section 44

Section 44 of the Act provides:

Identical etc. trade marks

44.(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 similar see section 10.

Note 2:  For similar goods see subsection 14(1).

Note 3:  For priority date see section 12.

As there appears to be no dispute concerning the earlier priority date of the Medicraft registrations, what remains for me to consider is whether the trade marks involved are substantially identical or deceptively similar; and, whether the goods in question are similar goods.  Details of the Medicraft registrations are:

Reg Number: 312868
Owner:  Medicraft
Priority Date:  04 December 1977
Goods:           Surgical instruments and all other goods included in this class (5)
Trade Mark:    MEDICRAFT

Reg Number: 603135
Owner:  Medicraft
Priority Date:  25 June 1993

Goods:Furniture, mattresses, spring mattresses, pillows and beds, including hospital beds; parts and fittings in this class for all the aforesaid goods (20)

Trade Mark:    MEDICRAFT

In Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411, French J, at para 45, observed:

It was put in his written submission that the test be applied in considering likely deception or confusion may be stated as in Re Smith Hayden and Co's Application (1946) 63 RPC 97 at 101.8:

"Assuming a use by the proprietor of each of the cited trade marks in a normal and fair manner in respect of any of the goods and services covered by those registrations, is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration (the respondent to this application) also uses its mark normally and fairly in respect of services covered by the proposed registration."

So far as this passage, reflected in oral submissions, suggests that an applicant must satisfy the Registrar or the Court that there will be no reasonable likelihood of deception and confusion it does not represent the law as it stands under the 1995 Act. The position now is that the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

Also in Woolworths, supra, French J observed, at para 40:

In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant's marks would be likely to deceive or to cause confusion.

I think that, in this instance, it is open for me to find that, given the lack of similarity of the relevant goods, I could not be satisfied, no matter the degree of resemblance between the trade marks concerned, that the use of the applicant's trade mark would be likely to deceive or cause confusion.

The expression 'similar goods' is defined by subsection 14(1) of the Act:

Definition of similar goods and similar services

14.(1) For the purposes of this Act, goods are similar to other goods:

(a)       if they are the same as the other goods; or

(b)       if they are of the same description as that of the other goods.

The expression 'goods of the same description' has been the subject of considerable judicial comment.  In Southern Cross Refrigerating Co v Toowomba Foundry Pty Ltd (1954) 91 CLR 592, the Court said, at 606:

The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods: see Re Australian Wine Importers Ltd (1889) 41 Ch D 278 at 291; Reckitt & Colman (Aust) Ltd v Boden (1945) 70 CLR 84 per Latham CJ at 90. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in Re Jellinek’s Application (1946) 63 RPC 59; 1A IPR 393. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s case the assistant comptroller elaborated on the observations of Romer J in the following manner.

In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application Romer J classified these various factors under three heads, viz the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasised that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description”.

Re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369 at 372.

Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Aust) Ltd v Boden, supra, at 94 when he said:

What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments.

The Mega products might be best characterised as being ‘alternative’ health foods, vitamins and health supplements.  In consideration of the questions listed as factors to be considered in the cases, above, I do not believe that the Medicraft goods, which can be characterised as being hospital furniture and surgical equipment and apparatus, and those of Mega, are usually:

¨   Made by the same person, trade or organisation

¨   Distributed through the same trade channels

¨   Of the same nature or character

¨   Sold over the same counter

¨   Sold through the same shop

¨   Sold for the same purpose, or

¨   To the same customer

Experience tells me that hospital beds and such medical furniture are not usually sold through pharmacies - I am unaware of ever having encountered such a situation.  It would be highly unusual for surgical instruments and the like to be sold through pharmacies.  And, should this very occasionally occur, I am certain that the overall differences in the natures of the goods, their display, location and mode of sale within these shops along with the character of the likely purchasers, mitigate against any possibility that they are 'goods of the same description.'  I acknowledge that the goods in question could conceivably be promoted at the same shows or exhibitions of health related products.  However, this is not and cannot be determinative of this issue, for, if it were, it could lead to some very unusual results; for example, 'caravans' might be found to be goods of the same description as 'barbeques' or 'spas' because the goods in question had been exhibited at the same home or leisure show.

On the above analysis, I consider that the goods are not of the same description.  Accordingly, whatever the similarities between the trade marks, I am not satisfied there is any reasonable likelihood of deception or confusion.  Therefore, there is no ground for rejecting registration of the trade mark under this section.  The opposition fails in relation to section 44 of the Act.

Section 58

Section 58 of the Act provides:

Applicant not owner of trade mark

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:  For applicant see section 6.

The word 'owner', under the Trade Marks Act 1995 has the same meaning as the word 'proprietor' under the Trade Marks Act 1955.  In Re Hicks’ Trade Mark (1897) 22 VLR 636; 3 ALR 75, Holroyd J said during submissions:

A person cannot be properly registered unless he is the proprietor. Proprietor is the person who at the moment he makes application to be registered is entitled to the exclusive use of the name, whether he then or before publicly adopted it. A man cannot be said to have adopted a name if someone else has done so before him. Section 19 merely says that the act of applying is to be deemed equivalent to public user. No one could otherwise be entitled to registration as proprietor unless he had publicly used the trade name before. The section does not affect the fact that another person used the name first. The difficulty here is that although Hicks may have by virtue of his application publicly used the name, someone else publicly used it before him.

And in his judgement he said:

For the reasons given by us in the course of the argument, we think this application to expunge Hicks’s name from the register of trade marks as the proprietor of the word “Empress” as a trade mark applied to stoves ought to be granted. In order to substantiate his application to be placed on the register for this word he must have claimed to be the proprietor, and the word “proprietor” must be taken to mean the person entitled to the exclusive use of that name. If there is anyone else who would be interfered with by the registration of the word “Empress” in the exercise of a right which such person has already acquired to use the same word in application to the same kind of thing, then Hicks ought not to have been put on the register for that trade mark, and his name will be properly removed on the application of the person whose right of user was thereby disturbed.

The goods or services in question are thus specified in Hicks case as being the 'same kind of thing' and the trade mark as 'the same word'.  The expression 'the same word' means, in essence, 'a substantially identical trade mark'.  In Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 at 513, Gummow J, discussing the reasoning in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, said:

“When the decision is understood in this way, it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice. The phrase “substantially identical” as it appears in s 62 (which is concerned with infringement) was discussed by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414. It requires a total impression of similarity to emerge from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible. There is, as Mr Shanahan points out in his work, p 158, real difficulty in assessing the broader notion of deceptive similarity in the absence of some notional user in Australia of the prior mark (something postulated by s 33) or prior public recognition built up by user: s 28 (a).

It is apparent that the trade marks in question in this issue are not, when compared side by side, substantially identical; neither are the goods the 'same kind of thing'.  I think that the expression 'the same kind of thing' calls for a much closer relationship between the goods than an ability to categorise them as both being used in the area of human health.  On the one hand we have goods which are usually made of steel or enamel-ware; on the other hand the goods are mainly for oral ingestion for medicinal or therapeutic effect.

The opposition under section 58 must be dismissed.

Section 60

Section 60 of the Act provides:

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

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

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

To paraphrase the explanation by the Registrar's Delegate, Mr Nancarrow, in Somers and Another v Greenbelt Pacific Pty Ltd (1998) 42 IPR 587:

[This] ground relied upon introduces opposition in terms of s 60 of the Act, that use of the trade mark by [Mega] would be likely to deceive or cause confusion because of the prior reputation acquired by [Medicraft] in using [a] similar trade mark[s].

The relevant inquiries to be made encompass two major areas.  First, are the trade marks of the [Mega] and [Medicraft] either substantially identical or deceptively similar?  Secondly, would use in a fair and reasonable manner of the mark applied for by [Mega] lead to deception or confusion of the general public in the face of the reputation of the [Medicraft] trade mark?  Of course, relevant to this test is the actual reputation gained by [Medicraft] in the use of their mark.

In order to succeed with this ground of opposition, [Medicraft] are first obliged to provide evidence of some reputation in use of their trade mark.  Such evidence would normally include the amount of use, shown in dollar terms, of sales in connection with the trade mark and the value of advertising using the trade marks.  Many other factors could assist in showing that a reputation has been established prior to the date of the present application. [Parenthetical material altered]

In Hugo Boss v Jackson International Trading Company Kurt D. Bruhl Gesellschaft m.b.H. & Co. KG, (1999) 47 IPR 423, at 436, I noted:

I think that it is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark.  The quantum of sales, advertising and promotion contributes to the 'recognition' component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the 'esteem' component of the reputation as do the public events and other trader's marks with which owner of the trade marks in question choses to associate the trade marks via sponsorships, cross-promotions, 'contra deals' and so forth. 

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it.  The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

The public perception of how a trade mark is being used, developed and exploited by its owner also constitutes a part of that reputation.  An analogy exists with Canon Kabushiki Kaisha v Brook and Anor (1996) 69 FCR 401, where Canon's evidence did not show extensive brand extension, as opposed to Twentieth Century Fox Film Corporation v The South Australian Brewery Co Ltd (1996) 66 FCR 451 (the Duff beer case) where Fox films was able to show that part of its reputation was in intensive brand extension.

There is no doubt that Medicraft’s MEDICRAFT trade mark has a considerable reputation in its field in Australia.  However, the evidence strongly suggests that the reputation of the trade mark lies only in its field and only in relation to hospital beds and medical and hospital furniture.  (Medicraft or its predecessor ceased the manufacture of surgical and medical equipment some 14 years ago).  I note that Medicraft has promoted itself to the public via golf and horse-racing 'days', as well as by brochures and advertisements in trade journals.  But it appears that this is only, in the main, to health workers and probably only to those already acquainted with its goods and reputation.  The evidence does not suggest that Medicraft practices brand extension, or that those in Medicraft's line of business practice brand extension, or that the public might expect this of them.

I consider that the evidence shows that the true situation as far as Medicraft's trade mark reputation is concerned can be posited thus.  Medicraft has a reputation as a manufacturer of very good quality hospital beds and medical or hospital furniture.  This is Medicraft's area of expertise and what the trade mark is seen to denote.  I think that most members of the relevant public would see the reputation of the trade mark as calling to mind the rather solid image of the company that remains an entrepreneur only in its own field and, of course, also calling to mind the goods the trade mark in relation to which the trade mark is used.

Concerning deceptive similarity, French J said in Woolworths, supra, at IPR 427:

In  Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594–5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

(iv) The rights of the parties are to be determined as at the date of the application.

(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

In respect of the last proposition, Mason J observed in  Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353; at 362; 1 ALR 443; at 450:

… the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.

I believe that, as regards the ‘character of the probable acquirers of the goods’ (referred to in the above quotation of Woolworths) are concerned, I am contemplating two relatively distinct portions of the public.  On the one hand  probable purchasers of Mega'a goods are likely to be those who avail themselves of ‘alternative’ health foods, vitamins and health supplements; on the other hand, Medicraft’s probable purchasers are those who are likely to buy hospital beds and medical or hospital furniture.  Mega’s goods sold under its trade mark are, in the main, likely to be sold through supermarkets, health food stores and pharmacies.  While Medicraft has attempted to show that it is likely that their goods may be sold through pharmacies, I am very sceptical of the proposition that, if they were, the probable purchasers, aware of the strong reputation of the trade mark of the MEDICRAFT trade mark in relation to hospital beds and medical or hospital furniture, would be confused or deceived by the presence of the Mega trade mark used in relation to the goods for which registration is sought.

Thus I do not believe that there is a real and tangible danger of deception or confusion occurring.  There is no real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

Accordingly, I dismiss the opposition in terms of section 60.

Decision

Medicraft has not been successful in making out a case for its opposition on any of the grounds under which it was argued.  I therefore dismiss the opposition in its entirety.  I direct that the application may proceed to registration after 30 days from the date of this decision, on payment of the appropriate fees. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

As Mega have been successful in this opposition, they are entitled to their costs which I award against Medicraft.

Ian Thompson
Hearing Officer

4 August 2000