Microsoft Corporation v Matthew James Kruger

[2004] ATMO 59

TRADE MARKS ACT 1995

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

Re:Opposition by Microsoft Corporation to registration of trade mark application 916764, 928259, 928261 & 929077(25, 28) - X KEEHOLE EXPLORER AND DEVICE, X DEVICE - filed in the name of Matthew James Kruger.

Delegate:

Jock McDonagh

Representation:

Opponent  Trevor Stevens of Davies Collison Cave, Attorneys
Applicant  No representation or appearance

Decision:

1. Section 52 opposition, s44 ground established, application refused

2.   Costs awarded against applicant

Background

1. Matthew James Kruger, (“the applicant”) has filed application to register the following trade mark:

Application Number:	916764
Priority date:	19 June 2002
Goods:	Class 25  Clothing, footwear and headgear
Trade Mark:
Advertised:	17 July 2003
Application Number:	928259
Priority date:	25 September 2002
Goods:	Class 42  Design and development of computer hardware and software
Trade Mark:
Advertised:	1 May 2003
Application Number:	928261
Priority date:	25 September 2002
Goods:	Class 28  Games and playthings, sporting articles
Trade Mark:
Advertised:	20 March 2003
Application Number:	929077
Priority date:	2 October 2002
Goods:	Class 42  Design of computer hardware and software
Trade Mark:
Advertised:	1 May 2003

1. On 5 June 2003, Microsoft Corporation, a Washington USA corporation, (“the opponent”) filed a notice of opposition to application 928261 pursuant to section 52 of the Trade Marks Act 1995 (“the Act”). The opponent likewise filed notice of opposition on 24 July 2004 to applications 928259 and 929077, and on 14 October 2003 filed notice of opposition to application 916764.

2. Although the notices effectively pleaded all of the available grounds of opposition provided in the Act, the opponent primarily relied on section 44 of the Act. The opponent also placed secondary reliance upon sections 42, 43, 59 and 60 in the event that the section 44 ground was not upheld.

3. The conflicting mark relied upon for the section 44 ground is as follows:

Application Number:

867766

Priority date:

13 September 2000

Goods:

Class  9   Video game player machines for use with televisions and computers; electronic devices, namely computer hardware for accessing global computer and communication networks; computer hardware and peripherals; computer keyboards; computer and video game joysticks and game controllers; computer game pads and controllers; computer peripherals, namely computer mice and other pointing devices; computer software for playing video games and computer games and for accessing and browsing global computer and communication networks; computer software for compressing and decompressing data and video images, word text editing, and for composing, transmitting and receiving email; operating system software programs and utility programs for use with the above referenced machines; user manuals therefor sold as a unit therewith

Class16  Printed matter and publications, namely magazines, books, newsletters, manuals and journals in the fields of video and computer game industries, general video game and computer game information, and video and computer game hardware, software and related accessories; trading cards

Class 25  Shirts, vests, sweatshirts, sweaters, sweatpants, shorts, jackets, caps, bathrobes, night shirts, suspenders, coats, sweaters, sweatbands, scarves, gloves, mittens, socks, ties, visors, wrist bands, and pyjamas

Class 28  Toys, games and sporting goods, namely, playground balls,     sport balls, basketballs, action skill games, board games,     card games, golf balls, golf ball markers, tennis balls, baseballs, rubber action balls, rubber sports balls, and rubber playing balls, squeezable balls used to relieve stress, kites, plushtoys, soft sculptured toys, dolls,     action figures, bags for carrying sports equipment, namely,     golf, basketball, baseball and tennis equipment, flying disc     toys, yo-yos, jigsaw puzzles, manipulative puzzles and     construction toys

Class  35  Arranging and conducting trade exhibitions, trade shows and trade events relating to the video game and computer game industries, and featuring general video game and computer game information, and video and computer game hardware, software and related accessories; providing consumer information on the video game and computer game industries, general video game consumer information, and providing consumer information on computer games, video games and related products

Class 38  Electronic message services for use in connection with interactive games played over computer networks and global communications networks

Class  41  Entertainment services, namely providing interactive multiplayer game services for games played over computer networks and global communications networks; providing computer games and video games that can be accessed, played and downloaded over computer networks and global communications networks; and providing entertainment information on the video game and computer game industries, general video game entertainment information, and providing entertainment information on computer games, video games and related products

Class 42  Chat services for use in connection with interactive games played over computer networks and global communications networks

Trade Mark:

1. The matter came before me as a delegate of the Registrar of Trade Marks for hearing in Sydney on 19 July 2004. The opponent was represented by Mr Trevor Stevens of Davies Collison Cave of Sydney. The applicant was not represented at the hearing.

   Evidence

2. The only evidence filed and served was evidence in support filed and served by the opponent. It comprised three declarations, virtually identical in content save as to references to the application opposed and date of execution. The details of the declarations are as follows:

Opposed Application(s)	Declared by	Date of declaration	Exhibits
916768	Marshall C. Phelps Assistant Secretary	21.01.2004	A to F
928259 929077	Marshall C. Phelps Assistant Secretary	03.02.2004	A to F
928261	Marshall C. Phelps Assistant Secretary	02.12.2003	A to F

Ground 1: Section 44 - Deceptive Similarity

1. Section 44, in so far as it is relevant, reads:

   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.

   (2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

   (a) it is substantially identical with, or deceptively similar to:

   (i) a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii) a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1: For deceptively similar see section 10.

   Note 2:  For similar services see subsection 14(2).
   Note 3:  For priority date see section 12.

2. The opponent's trade mark has a priority date of 13 September 2000, which is earlier than the applicant's trade mark.

3. The matters for determination are therefore:

   (a)whether the applicant's mark is deceptively similar to the opponent's registered trade mark in that it so nearly resembles that mark that it is likely to deceive or cause confusion (Section 10); and

   (b)whether the opponent's trade mark is registered in respect of similar goods or closely related services to 916764 and 928261, or in respect of similar services or closely related goods to 928259 and 929077.

4. The opponent submitted that the goods under applications 916764 and 928261 were identical to those under the opponent’s registration 867766.  It was further submitted that the services under applications 928259 and 929077 were closely related to the opponent’s goods in class 9 under registration 867766.

5. The opponent cited the standard authorities for determining substantial identity and deceptive similarity, to which I shall refer later.  It was pointed out that the opponent’s trade mark and the dominant element of the applicant’s marks comprised the following features:

   ·A star comprising two “arms” and two “legs”

   ·The “arms noticeably shorter than the legs”

   ·Each “arm” and “leg” shaded or rendered to present a particular perspective

6. The opponent suggested that the two star devices were substantially identical; however, conceded that the additional features on the applicants marks could avoid substantial identity but not deceptive similarity.

7. As to the likelihood to deceive, the opponent pointed to the wide consumer base of the opponent’s goods ranging from children to discerning adults and to the notional user of the applicant’s marks in relation to a wide range of goods and goods and services specified.  It was submitted that there was a likelihood of confusion in the marketplace.

8. The proper comparison for substantial identity is side by side, having regard to the essential feature of the registered mark and the total impression of resemblance or dissimilarity, as described in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, per Windeyer J, at 414.

9. Applying this test, I am not satisfied that the applicant’s marks are substantially identical.  As conceded by the opponent, the keyhole device added as a “head” to the star, and the text tend to distinguish the opposing marks in a side by side comparison.

10. The tests for deceptive similarity lie in the words of Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd, supra:

    The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.  Therefore the comparison is the familiar one of trade mark law.  It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions.  To quote Lord Radcliffe again (de Cordova v Vick Chemical Co (1951) 68 RPC 103; at 106; 1B IPR 496; at 499):

    The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him…It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.

    And in Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658, Dixon and McTiernan JJ said:

    In deciding this question, the marks ought not, of course, to be compared side by side.  An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought.  The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.

11. The High Court in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 said that deceptive similarity is established if:

    [t]here is a real risk that the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products came from the same source.

12. Applying these tests, I am satisfied that the star device feature is the element that is likely to be remembered by potential customers.  I am persuaded that there is a tangible risk that a number of people will be caused to wonder whether the two products came from the same source.

13. I am satisfied that the applicant’s marks are deceptively similar to the opponent’s registration 867766.  Consequently this ground of opposition has been made out.

14. At the hearing, the attorney for the opponent submitted that if I should conclude that the section 44 ground were made out, then the opponent considered that no account be taken of the further submissions n respect of the secondary grounds. Therefore, I accede to this submission and make no findings in respect of the remaining grounds.

    Decision

15. The opponent has established a ground of opposition on which it relied so that the opposition as a whole has been successful. Pursuant to section 55 of the Act, I refuse to register Application numbers 916764, 928259, 928261 and 929077.

    Costs

16. The opponent has sought its costs in this matter. As the opponent has been successful in its opposition, I award costs against the applicant and direct that the applicant pay the costs of the opponent in accordance with the official scale.

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    27 October 2004