Microcom Pty Ltd v Microcom Systems Inc

[1998] ATMO 2

TRADE MARKS ACT 1995

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

Re:Opposition by MICROCOM PTY LTD to registration of trade mark application numbers 523355 and 523656 in the name of MICROCOM SYSTEMS, INC.

Background
Application numbers 523355 and 523656 were filed on 16 November 1989 and 21 November 1989, respectively, in the name of Microcom Systems, Inc. (the applicant).  The applications were for the registration of the words MICROCOM and MICROCOM NETWORKING PROTOCOL, respectively, and the respective statements of goods in class 9:

Computer modems, computer software in this class and computer hardware, (523355),

and

Computer modems; computer programs and instruction manuals for use therewith; none of the aforesaid being for use in the printing industry, (523656).

The trade marks were advertised as accepted in the Australian Official Journal of Trade Marks of 28 March 1996 (523355) and 2 May 1996 (523656), respectively.  The provisions of the Trade Marks Act 1995 therefore apply to the present oppositions.

Notices of opposition to the trade marks’ registration were filed by Microcom Pty Ltd (the opponent) on 17 June 1996.  The notices of opposition listed a number of grounds, only some of which were pursued by the opponent at the hearing.  These were under s.58, that the applicant was not the owner of the trade marks, and also under s.59, that the applicant did not use or intend to use the trade marks in Australia.  The final ground listed in the notice of opposition was stated to be, “such other grounds as the Registrar of Trade Marks or the court, on appeal, may see fit to allow.”  At the hearing, the opponent’s Counsel, Mr Kevin O’Toole, of Kevin James O’Toole & Associates, made submissions relating to s.60, that the applied for trade marks were similar to a trade mark owned by the opponent which had acquired a reputation in Australia.  I consider that the term in the notice of opposition, “such other grounds...” is broad enough to encompass the s.60 ground.

The applicant’s attorney, Mr Andrew Wiseman of Allen Allen & Helmsley, did not appear at the hearing but relied instead upon written submissions.  There he said that no evidence had been directed to the final general ground, nor any particularisation as to what other grounds were relied upon.  He concluded, therefore, that the opposition under this ground should fail.  However, I am of the opinion that some of the opponent’s evidence in support went towards establishing whatever reputation the opponent’s trade mark had in the industry at the critical time.  Consequently, the applicant should have been aware of this.  It then had the opportunity to respond to this evidence in its evidence in answer and also in its submissions at the hearing.  Accordingly, I am also prepared to consider the s.60 ground in deciding the matter.

I have attempted here to briefly summarise both sides’ arguments as they relate to the matter.

The service and filing of the evidence in support and answer in the matter was completed by 17 June 1997.  There was no evidence in reply.  The opponent requested a hearing in the matter and it came before me, as a delegate of the Registrar, in Sydney.

Evidence
Evidence in Support
In his statutory declaration dated 16 September 1996, which comprised the opponent’s evidence in support, Thomas Michael Kenny, a Director of the opponent, gave a history of his company, the derivation and history of the word MICROCOM as used by himself and that entity, the history of the opposition mounted by his company against the registration of the present trade marks, and instances of alleged confusion regarding the origin of the word in the industry.  Annexed to his application were copies of newspaper and trade magazine reports referring to products developed by his company, examples of letterheads, stick-on labels, brochures, equipment orders, agreements, stationery, and miscellaneous correspondence, all incorporating the use of the word MICROCOM by the opponent.

Evidence in Answer
In a statutory declaration dated 17 June 1997, forming part of the applicant’s evidence in answer, Robert James Gibbs, Country Manager for Australia and New Zealand of the applicant, said that his company had sold goods in Australia since before 1989.  He said that he had been unable to obtain copies of records since before 1989 but that he would attempt to do so before the hearing.  [The material foreshadowed was not included in the evidence.]  Exhibited to his declaration were some pages containing rows of figures said to be a spreadsheet in US dollars showing sales of the applicant’s products in Australia since 1989, invoices said to be samples in identical form of invoices from the applicant to two of its Australian customers, a sample of the applicant’s packaging, extracts from trade magazines regarding use of one of the applicant’s products entitled CARBON COPY, and brochures illustrating use of the mark MICROCOM.

In her statutory declaration dated 17 June 1997, which completed the evidence in answer, Suzanne Robyn Van Wynen, the Operations Manager for Banksia Technology Pty Limited, said she worked for over a ten year period for a company called Sourceware which supplied computer software to large computer retailers.  She said that Sourceware bought a product entitled CARBON COPY from the applicant for re-sale in Australia from 1985 onwards.  She said that, after 1990, Sourceware purchased and sold some other of the applicant’s goods bearing the MICROCOM mark.  Exhibited to her declaration was a “Sales and Marketing Update” dated May 1985, which included a price list showing sales of the applicant’s CARBON COPY product, and a sample of packaging said to be typical of that used in 1991 by the applicant on that product.

Submissions
Mr O’Toole, in his submissions on behalf of the opponent, went through the chronology of events which led to the present hearing.  He discussed the opponent’s evidence, saying that it showed that the opponent’s principal had invented the name MICROCOM in 1986, and that the opponent and its predecessor had continually used the mark commercially since then.  He said that the opponent had established a considerable reputation in the relevant market, in respect of goods in Class 9 sold by the opponent and that this use pre-dated the present application dates of 16 and 21 November 1989.

He then went through the applicant’s evidence, commenting on what he said were deficiencies and inconsistencies in the Van Wynen and Gibbs declarations.  He said that, in the Van Wynen declaration, these included instances where the dates of alleged price updates were post application and contradictory, where the subject trade marks were not even mentioned in some of the supporting material, and where there were serious inconsistencies in claimed sales figures with those quoted in the Gibbs declaration.  Mr O’Toole alleged that the Gibbs declaration was deficient in that the declarant said that others were better placed than he was to give evidence.  Other deficiencies included that, because of his very short time with the applicant at the time of the declaration, his statements were unreliable and yet his was the declaration submitted; because the applicant’s 1994 annual report relied upon to show use gave no details of its activities in Australia other that it had only opened a sales office in Sydney in 1994; because Mr Gibbs had said that he would supply sales details prior to 1989 before the hearing and had not done so; because much of the material annexed to the declaration postdated filing, was American in origin and did not refer to Australia; and because much of the sales details given referred to marketing of goods under the mark CARBON COPY and not to the present trade marks.

Mr O’Toole said that the applicant’s evidence failed to establish any commercial activity by the applicant, or any use of the subject trade marks in Australia at any time prior to filing, or thereafter, which might constitute a claim to proprietorship of those marks.  He referred for support here on the words Dixon J in Shell Company (Australia) Limited v Rohm and Haas Co (1949) 78 CLR 601 at 627 which related to the basis of a claim to proprietorship. He said that this contrasted with the widespread public use by the opponent of the word MICROCOM on a range of goods which fell in Class 9. He further submitted that the applicant had not shown that it had, at the time of application, made any public use of its trade marks in Australia such as to establish a connection in the course of trade between those trade marks and the applicant - Moorgate Tobacco Co Ltd v Philip Morris Ltd (1984) 156 CLR 414.

In his written submissions, Mr Wiseman said that the applicant’s parent company had commenced manufacture of high speed modem technology in the early 1980s and, in 1982, had introduced the now industry standard “Microcom Networking Protocol” which allowed high speed data transfer.  He said that the Microcom group had exported to Australia in excess of $11 million worth of goods.  One example of these goods was the CARBON COPY product referred to in the Gibbs declaration and other evidence.  He said that the packaging for this product also featured the trade mark MICROCOM as a house brand.  He said that after 1990, a wide range of goods were sold in Australia bearing the applicant’s MICROCOM mark.

Mr Wiseman said that the opponent’s evidence did not discharge its evidential burden of establishing that the applicant was not the proprietor of the trade marks, or that the opponent was the proprietor of either trade mark.  He said that the opponent’s use of the word MICROCOM as a trade mark was limited to a specific range of goods which were not covered by the present specification of goods in either application.

Mr Wiseman made other submissions related to one of the original grounds, that the use of the marks by the applicant would be contrary to law, but I will not summarise them here as Mr O’Toole did not pursue that ground at the hearing.  However, Mr Wiseman did submit that the applicant’s prior use and greater reputation, allegedly shown in the Gibbs and Van Wynen declarations, meant that any culpable use was that of the opponent.  He said that, in any event, some degree of deception and confusion would be tolerated under the Act, citing the provisions of s.23 - Limitation on rights if similar trade marks etc. registered by different persons.

He said that more appropriate submissions on the part of the opponent might be (directed) towards applying for registration of its own mark on the basis of honest concurrent user, assuming the requirements under s.44 were satisfied.

Discussion

Section 58 reads as follows:

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.

The term “owner” in the Trade Marks Act 1995 equates to that of “proprietor” as referred to in the Trade Marks Act 1955 - see p.2 of the Readers Guide to the 1995 Act.

The starting point then must be to consider the nature of the claim made by an applicant for registration under s27 of the Act which reads, as far as is relevant:

27.(1) A person may apply for the registration of a trade mark in respect of goods       and/or services if:

(a) the person claims to be the owner of the trade mark; and

(b) one of the following applies:

1. the person is using or intends to use the trade mark in relation to the goods and/or services;

   ...

The basis of a claim to proprietorship (ownership) of a trade mark was explained by McGarvie J who said in Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413:

The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there: Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 203; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603; Moorgate Tobacco Co Ltd v Philip Morris Ltd(No 2) 59 ALJR 77 at 83.
 ...
In considering who, within s.40(1) of the Act, was at the time of Settef's application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia: The Shell Co of Australia Ltd v Rohm & Haas (1949) 78 CLR 601 at 625 and 627.

In other words, the first user of the mark in Australia (for relevant goods and prior to the date of application) becomes the owner at common law.  That ownership, however, is limited to "the same kind of thing", as per Holroyd J in Hick's Trade Mark (1897) 22 VLR 636. Any small amount of use will suffice, but the effect of the act relied on to constitute use must be the creation, in the minds of those concerned, of an impression that goods of a particular trader are being offered for sale, in Australia, under the trade mark.

I am concerned, in deciding the issue of ownership, with whether the marks are identical or so similar as to be virtually the same mark - The Kendall Co v Mulsyn Paint and Chemicals 109 CLR 300; and Tavefar Pty Ltd v Life Savers (Australasia) Ltd 12 IPR 159. The marks should be, at the very least, substantially identical. That phrase was discussed by Windeyer J in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 at 414. It requires a total impression of similarity to emerge from a comparison between the two marks.

In the case of application number 523355, for the mark MICROCOM, the statement of goods reads, “Computer modems, computer software in this class and computer hardware”, in class 9.  In respect of number 523656, the mark MICROCOM NETWORKING PROTOCOL, the statement of goods reads: “Computer modems; computer programs and instruction manuals for use therewith; none of the aforesaid being for use in the printing industry”, also in class 9.

The opponent’s trade mark is the word MICROCOM, solus.  It has been used, according to the evidence submitted by the opponent in support of its opposition, on a small but increasing range of computer hardware and software since 1986 and certainly well before the present marks were applied for in November 1989.  This evidence of use included newspaper articles, correspondence, purchase orders and company records.

It is obvious that the opponent’s trade mark and that covered by application number 523355 are identical.  Both comprise the word MICROCOM.  Additionally, in the case of application number 523656, I do not think that the additional words NETWORKING PROTOCOL are sufficient to differentiate the applicant’s and opponent’s marks.  Those two words are utterly descriptive for some of the goods covered and add nothing to the mark.  This is, I think, analogous to the situation where, say, the trade mark RINSO was being compared with another mark RINSO WASHING POWDER.  Clearly, these marks are substantially the same.  I think that any comparison between the present opponent’s mark and that covered by number 523656, would lead to a conclusion that those marks are also substantially the same.

With respect to any comparison of the goods covered by each party’s marks, I believe that both sets comprise computer hardware and software, would be used and purchased by the same class of people, and would be sold through similar outlets.  I am therefore of the opinion that the opponent’s goods and the statement of goods covered by both applications can be regarded as, "the same kind of thing", as per Holroyd J in Hick's case, supra.

Despite Mr Wiseman’s assertions to the contrary, I feel that the evidence in answer, attempting to establish first use of the subject trade marks by the applicant, has many flaws and is very imprecise.  Mr Gibbs had only been employed by the applicant since 1 April 1997 when he made his declaration, dated 23 May 1997, in support of an application for an extension of time to file evidence in answer, and to which he had referred to in his declaration of 17 June 1997.  Although he said in the April declaration that he was making it from the books and records of the applicant, his personal knowledge of events must have been minimal at best.  He went on to say that another person, Mr Greg Pearson, was “...the only person with overall knowledge and responsibility...for the intellectual property of the Applicant.  As such he is the person most appropriate to co-ordinate the evidence in answer...in relation to the current opposition proceedings”.  Despite this admission, Mr Gibbs’ declaration of 17 June 1997 was the main piece of evidence relied on by the applicant in answer to the opposition.  All of this leads me to believe that Mr Gibbs’ information may not be as comprehensive or accurate as it could be and I am inclined to give it less weight than I would otherwise have done.

Mr Gibbs also said in his declaration, dated 17 June 1997, that he had been unable to obtain copies of records of sales by the applicant prior to 1989 but was attempting to do so before the hearing.  This material was not produced.  An Annual Report of the applicant, said to show the applicant’s activities in Australia, is dated 1994 and the only entry on Australia is in a message to shareholders.  There it was said that the company had opened a sales office in Sydney, although when this was done was not stated.  Additionally, copies of spreadsheets attached to Mr Gibbs declaration, allegedly showing sales in Australia, contain meaningless rows of figures.  Nowhere in the declaration is any attempt made to explain the relevance of the data, or whether the MICROCOM mark was used on all of the goods.  However, Mr Wiseman submitted that the spreadsheets indicated US$11 million worth of sales of the applicant’s products, in this country, from 1989 to 1996.

Also exhibited to the declaration were what were referred to as “sample” invoices from the applicant to its Australian customers.  These were said to have been printed from the computer records of the applicant and were what “..would have been issued on the dates referred to...”.  There was no explanation as to why the original documents had not been filed.  In any event, the earliest date shown on this material was 30 December 1989 - after the filing date of the subject applications.  The other material annexed to Mr Gibbs declaration, said to show use in Australia, is US in origin and is dated 1991 or later.

Ms Van Wynen, in her declaration, said that the applicant’s product CARBON COPY was sold by her then company from 1985.  A “Sales and Marketing Update” dated May 1985, exhibited to her declaration, covers price lists dated May 1986 and August 1986.  However, I could not find a mention of the mark MICROCOM anywhere in the material, although CARBON COPY is listed once.  Also exhibited to her declaration was a sample of the applicant’s packaging for a CARBON COPY remote control, which does include the word MICROCOM.  However, this material is marked “©...1991” - although Ms Van Wynen said that it was typical of the packaging used before that time.

I find that, in total, the applicant’s evidence, intended to show use of the mark MICROCOM earlier than the filing date, falls short of being convincing.  The applicant may, or may not, have sold its own MICROCOM goods in this country in the 1980s but I cannot ascertain one way or the other on the material presently before me.  Notwithstanding the foregoing, nowhere in either of the Gibbs or Van Wynen declarations is a claim made of earlier use than the filing date of the mark MICROCOM NETWORKING PROTOCOL.  I must therefore conclude that the earliest dates which the applicant can rely on in respect of either of the marks is 16 November 1989 and 21 November 1989, respectively.  However, as I have previously said, I believe that the opponent first used its own mark MICROCOM since at least 1987 on its computing related goods.  It is therefore the first user and therefore the owner at common law of that trade mark for those goods.

Accordingly, I find that the opponent is successful in relation to this ground of opposition, that the applicant is not the owner of the present trade marks for the goods applied for.

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.

Mr O’Toole said that there was no evidence that the applicant intended, at the date of application or thereafter, to use the trade marks or assign them to a body corporate in Australia.  I think it is the case, from the evidence, that the applicant has used its MICROCOM trade mark in Australia, at least after the date of application.  The evidence does not show anything about use of the mark MICROCOM NETWORKING PROTOCOL.  Paragraph 4.3 of Part 46 of The Trade Marks Office Draft Manual of Practice and Procedure succinctly expresses the Registrar’s approach in this matter.  It reads:

Registration may be opposed on the ground that the applicant does not intend to use the trade mark

This ground is provided for in section 59 of the Act.  The applicant, by applying for the trade mark, has also made the claim that at that time, he or she is using, or intends to use, the trade mark on the nominated goods or services (see paragraph 27(1)(b)).  It follows that the Registrar, by accepting the application for a trade Mark under section 33, is prima facie satisfied that there existed such and intention to use the trade mark, on those goods and services.  For an opposition to be successful on this ground, the Registrar must be convinced that the applicant did not have an intention to use the trade mark as at the date of opposition.

The opponent has not done anything to show the applicant’s intentions were other than to use its marks as at the date of opposition and I therefore must find that the opposition does not succeed under this section.

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.

In applications for registration, the rights of the parties in this respect are to be determined as at the date of application- here 16 November 1989 and 21 November 1989, respectively - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595. As I have already said, in relation to the s.58 ground, evidence intended to show any use of the applicant’s marks earlier than the filing date is not convincing. I must therefore conclude that there was negligible reputation, if any, for the opponent’s trade marks in the relevant market as at the application dates. On the other hand, I think that the opponent had established a small but growing reputation for its trade mark MICROCOM in class 9 goods as at the critical dates. Therefore, use of the mark MICROCOM by the applicant on class 9 goods would probably have caused persons who knew of the opponent’s mark to wonder as to the source of those goods. The words NETWORKING PROTOCOL are a common term in the computer field, meaning a set of specifications and software controls that manage communication in a network. Therefore, the use of the combination of them with the word MICROCOM, as a trade mark, would do little to dispel the confusion in the public’s mind as to the origin of the goods on which the mark is used. Mr Kenny, in his declaration, did allege some confusion in the trade in 1995, but this is not substantiated and is after the relevant date. However, I do not see this as fatal to the opponent’s case in the present instance.

Consequently, I am of the opinion that, because of the opponent’s small but valid reputation as at the relevant date for its own trade mark for computer hardware and software, then the use of either the presently applied for trade marks by the applicant would have been likely to lead to deception and confusion.  I therefore find that the opposition is successful as it is based on this ground.

Conclusion
I have found that the opponent has been successful in its opposition to both applications on all of the grounds relied upon at the hearing, with the exception of that under s.59, that the applicant did not intend, as at the date of the notice of opposition, to use or authorise the use of the trade mark in Australia..  It follows that the opposition as a whole is successful and I therefore refuse to register the trade marks, the subject of application numbers 523355 and 523656.  I can see no reason why costs should not follow the result and I therefore award costs in the matter to the opponent.

Ian Forno
Hearing Officer

23 January 1998