Mitchell International, Inc v National Auto Glass Supplies (Australia) Pty Ltd

[2004] ATMO 54

TRADE MARKS ACT 1995

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

Re:Opposition by Mitchell International, Inc to registration of trade mark application 878388(12, 37) - NAGS - filed in the name of National Auto Glass Supplies (Australia) Pty Ltd.

Delegate:

Mary Skivington

Representation:

Opponent: Trevor Stevens of Davies Collison Cave, Patent and Trade Mark Attorneys.

Applicant: Julia Baird of counsel, instructed by Deacons.

Decision:

Section 52 opposition – ground under section 60 established. Registration refused.

Background

1.     National Auto Glass Supplies (Australia) Pty Ltd, (‘the applicant’), filed trade mark application number 878388, on 6 June 2001. The applicant seeks registration for the trade mark shown below.

2.     Acceptance of the trade mark was advertised in the Australian Official Journal of Trade Marks on 18 October 2001, for the following goods and services in classes 12 and 37 respectively:

Windshields, windscreens and glass products in this class, (12)

Installation, repair and servicing of vehicle windscreens and glass products, (37).

3.     Mitchell International, Inc, ('the opponent'), filed a notice of opposition to registration of the trade mark, on 7 January 2002. The evidence in support, in answer and in reply was duly served and filed by the respective parties. On 6 June 2003, two days after service of the evidence in reply the applicant applied under the provisions of regulation 5.15(1)(b) of the Trade Mark Regulations 1995, ('the regulations'), for an extension of the period for service of further evidence in order to file further evidence. This was opposed but subsequently granted further to a decision issued on 24 November 2003. The applicant filed and served further evidence and the evidentiary phase of the process was completed on 9 February 2004 when the opponent filed and served further evidence in response to the applicant’s further evidence.

4.     Both parties applied to be heard and as a delegate of the Registrar of Trade Marks I heard the matter, in Sydney, on 21 July 2004. The opponent was represented by Mr Trevor Stevens of Davies Collison Cave, Patent and Trade Mark Attorneys. The applicant was represented by Ms Julia Baird, of counsel, instructed by Deacons.

The evidence

5.     The evidence filed in these proceedings comprises statutory declarations with exhibits as detailed below.

Evidence in support

Date	Declarant	Exhibits
4 June 2002	Ms Catherine Howard, Vice President of Mitchell International, Inc. (Howard (1))	A - H

Evidence in answer

Date	Declarant	Exhibits
29 October 2002	Ms Maggie Yeung Lo a Director and Financial Controller of National Auto Glass Supplies (Australia) Pty Ltd.(Lo(1))	MYL-1 to MYL-9

Evidence in reply

Date	Declarant	Exhibits
2 May 2003	Ms Catherine Howard, Vice President of Mitchell International, Inc. (Howard (2))	CH(2)-1 to CH(2)-4
25 May 2003	Mr Glen Kingston Bishop, owner and Managing Director of several New Zealand companies whose business is automotive glass.	GKB-1 to GKB-23
3 June 2003	Ms Jean Westhead, Export/Import Manager of Protector-Glass Industries Pty Ltd.	JW-1

Applicant’s further evidence

Date	Declarant	Exhibits
22 December 2003	Mr Harvey Ouyang, employee of the applicant.	None
23 December 2003	Ms Maggie Yeung Lo, a Director and Financial Controller of National Auto Glass Supplies (Australia) Pty Ltd. (Lo (2))	ML(2)-1 and ML(2)-2
24 December 2003	Mr Allan Locke, owner of a business trading as Allan Locke Windscreens.	None

Opponent’s further evidence

Date	Declarant	Exhibits
23 January 2004	Ms Catherine Howard, Vice President of Mitchell International, Inc.(Howard (3))	None
9 February 2004	Mr Sven James Moller, Director Sveglass International Pty Ltd.	SJM-1

Howard(1)

6.     Ms Howard declares that her company provides information and services related to automobile glass and that an integral part of the company’s services is the production of catalogues and calculators to assist in effective and accurate glass replacement, within the automotive industry. The goods provided under the NAGS trade mark include a software package which includes auto and flat glass point of sale software, look-up guides or catalogues and an electronic database catalogue that includes NAGS part numbers, prices, labour times, vehicle and part information and information about mouldings, adhesives, hardware and related parts. Ms Howard avers that the trade mark NAGS was first used in Australia in 1957 in respect of patterns for cutting auto glass. Exhibit F includes a photocopy of the cover of the NAGS           1997 Domestic Car Glass Parts catalogue circulated through its principal Australian agent, Sveglass International Pty Ltd. Exhibit G is a selection of invoices dated from August 1998 to March 2002 for catalogues and calculators and manuals. Ms Howard declares that her company’s predecessors in title began using the words National Auto Glass Specifications in 1928 and these words gave rise to the acronym NAGS which was first used as a trade mark in 1951. Ms Howard claims that the NAGS numbering system used by her company’s predecessors was adopted as the industry standard to identify glass.

Lo (1)

7.     Ms Lo declares that her company has referred to itself as NAGS since it was incorporated in March 1998. She declares that the applicant is an importer and distributor in Australia and other countries in the Pacific region, of automotive glass components, manufactured by FYG Glass in China. Ms Lo attests to the decision to name the company National Auto Glass Supplies (Australia) Pty Ltd being made by herself, Harvey Ouyang, a director of the company at that time and John Che the applicant’s accountant and further attests that at that time none of them was aware of the opponent’s existence. Ms Lo claims that the NAGS is an acronym formed from the initial letters of the applicant’s name and was adopted as a trade mark for convenience. Exhibits MYL-1 to MYL-9 show the trade mark in use on invoices, letterhead paper, street signage, packaging, delivery trucks and merchandise such as t-shirts and diaries. Additionally, Ms Lo declares, that the applicant advertises in business telephone directories in Sydney, Melbourne and Brisbane. Annual sales figures, provided by Ms Lo in her first declaration indicate they have more than trebled over the years 1998 to 2002. However I think they must be treated with a degree of caution  as the sales figures for 1998 to 2003 provided as exhibit ML(2)-2 to the second Lo declaration are in part significantly different. The applicant, declares Ms Lo, conducted a telephone poll of thirty-one customers to assess the likelihood of confusion between the applicant’s and the opponent’s trade marks and this would appear to be the basis upon which Ms Lo claims that there is no evidence to show that there has been any confusion between them. However the poll was not objective and its results have little probative worth.

Howard (2)

8.  Ms Howard’s declaration in reply questions the verity of Ms Lo’s claim that none of those responsible for determining the name of the applicant were aware at the time the name was decided upon, of the existence of the opponent. Her reason for this is to be found in a statutory declaration, Exhibit CH(2)-2, made by Carl Christian Moller in relation to other proceedings. Mr Moller declares that he was the managing director of the applicant from its formation in March 1998 until September 2001. He reports that he has been aware of NAGS part numbers for automotive glass since the 1970’s. Ms Howard declares her belief that it is most unlikely that the managing director of the applicant did not make known to Ms Lo and Messrs Ouyang and Che his knowledge of the opponent and the opponent’s trade mark. Ms Howard rebuts Ms Lo’s claim that there has been no confusion between the trade marks. Exhibit CH(2)-3 is a copy of a fax sent to Robin Pruitt, of the opponent company, on 2 July 2001, by Jean Westhead of  Protector-Glass Industries Pty Ltd in Queensland, in which she referred to the state of  confusion in the market caused by the applicant’s use of its trade mark. This exhibit also includes promotional correspondence from Mr Moller as Managing Director of the applicant, to prospective customers, in which he states,

Our company is familiar with NAGS International Foreign Catalog’s (sic) and auto glass part number system …..

Bishop

9.     Mr Bishop declares that he has had business connections with the automotive glass industry in New Zealand and Australia since the 1960s, firstly as a car restorer and then as a member of the industry itself. He declares that the industry is a relatively narrow one and that in addition to his two wholesale businesses in New Zealand, there are only four other wholesalers of automotive glass in New Zealand. Mr Bishop claims close connections with the industry in Australia as until about 2000, 90% of automotive glass in New Zealand was imported from Australia. Mr Bishop declares that he received his first NAGS catalogue in 1969. Exhibits GKB-1 to GKB-16 comprise copies of the front pages of NAGS catalogues for various years from 1957 to 2001 obtained from a number of different suppliers including, latterly, Sveglass International Pty Ltd in Sydney. He notes, however, that the catalogues come from the United States and are not easy to obtain. Mr Bishop declares that he first became aware of the applicant via an introductory letter from Mr Carl Moller, then Managing Director of the applicant. Mr Bishop declares that subsequently he had some brief business dealings with the applicant. Mr Bishop declares that use of the trade mark NAGS by the applicant has ‘caused a great deal of confusion in the industry.’ 

Westhead

10.   Ms Westhead declares that Protector-Glass Industries Pty Ltd, (PGI), is an after-market manufacturer and distributor of automotive windshields in the Australian domestic market where it has an extensive distribution network. Ms Westhead reports that for a number of years, to assist customers to identify the correct screen required, the PGI catalogues contained reference to various numbers including the PGI code, the Australian Autoglass code, (AA code) and the NAGS code. She declares that the NAGS code was taken directly from the National Auto Glass Specifications catalogue of the opponent. Ms Westhead declares that her company no longer includes reference to NAGS numbers because of the confusion created when the applicant began using its trade mark NAGS in respect of its numbering system.

Ouyang

11.   Mr Ouyang declares that since its inception he has been involved in the operation of the applicant and that he, Maggie Lo and John Che chose the company name. He declares that he had no knowledge of the opponent at that time and that Mr Carl Moller the Managing Director, did not inform him of the opponent’s existence prior to incorporation of the applicant.

Lo (2)

12.   In this declaration Ms Lo again states that she, Harvey Ouyang and John Che chose the company name without any knowledge of the existence of the opponent and further declares that Mr Carl Moller, did not inform her of the opponent’s existence prior to incorporation of the applicant.

Locke

13.   Mr Locke declares that he is as a fitter of automotive windscreens in a business that he has owned for approximately twenty-eight years. He reports that he usually orders automotive glass over the telephone by reference either to the code in the supplier’s catalogue for the make and model of the vehicle concerned or just by reference to the make and model of the vehicle. Mr Locke declares that he has heard of the phrase National Auto Glass Specification but does not recall the context in which he first heard the phrase. He declares that he is not aware of the acronym, NAGS, being used in respect of these words. He reports that he is aware of the applicant’s trade mark and its business. He avers that he is not aware of any confusion in the automotive glass fitting and replacement trade between the applicant’s and the opponent’s trade marks.

Howard (3)

14.   Ms Howard declares her belief that it is unlikely that the applicant adopted its company name and trade mark without prior knowledge of the opponent and its trade mark NAGS. She reports that the automotive glass replacement industry is a specialised industry and for wholesale and import purposes the number of suppliers is relatively small. She declares that given the opponent has been in the business for many years and has traded worldwide under the trade mark NAGS it would be surprising if any person trading in the importation and distribution of automotive glass did not have some knowledge of the opponent and its trade mark NAGS. Ms Howard also notes that Ms Lo declares that NAGS is an acronym for the applicant name, however, Ms Howard contends that the acronym for the applicant’s name would be NAGSA and not NAGS.

Sven James Moller

15.   Mr Moller declares that his company’s business includes automotive glass replacement services, particularly, windscreens for motor vehicles. He declares that he has been aware of National Auto Glass Specifications, now Mitchell International, Inc and their trade mark NAGS since 1984. Mr Moller declares that during 1997 his company distributed the opponent’s 70^th anniversary catalogue entitled NAGS 1997 DOMESTIC CAR GLASS PARTS.

Grounds of opposition

16.   At the hearing the opponent relied on grounds of opposition under the provisions of sections 58 and 60. The remaining grounds were not pressed so for the sake of completeness I now find that they have not been established.

Submissions and the law

Section 58

17.   Section 58 of the Act provides that registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. In order to establish a ground of opposition under section 58 the opponent must establish that it was the first user of a substantially identical trade mark for goods or services that are the same or closely related.

18.   At the hearing Mr Stevens submitted that for the purposes of asserting ownership of a trade mark it was useful to consider the following from Trade Mark Law in Australia, Elkington Hall and Kell at page 77:

The battle therefore is between the party who was first to file and an opponent who claims to have been first to use. In such cases the first user prevails. But this ground of opposition is tightly confined. The use must have been commercial use, as a trade mark of the very mark applied for or one extremely close to it, and for the goods or services of application  or ‘the same kind of thing’.

19.   The priority date of the application is 6 June 2001 but the applicant’s first use of its trade mark preceded that date. Ms Lo declares in her first declaration that the applicant began trading on 26 May 1998 and from the date it began trading it referred to itself as NAGS, however the first evidence of use of the trade mark is to be found in Exhibit MYL2 which is an invoice dated 31 August 1998.

20.   Ms Howard declares that the opponent’s first use of its trade mark in Australia began in or about 1957 when patterns for cutting auto glass were first exported to Australia however the first evidence of use in Australia is to be found in Exhibit F which includes a copy of the cover page of a catalogue entitled NAGS 1997 DOMESTIC CAR GLASS PARTS and showing the distributor as Sveglass International Pty Ltd, a Sydney business. Exhibit G in the same declaration comprises a number of NAGS invoices from the opponent to Australian companies between the years 1998 to 2002. The first two of these are dated 23 August 1998 and are made out to Protector-Glass Industries Pty Ltd in Queensland and Sveglass International Pty Ltd in Sydney. I find that the evidence demonstrates that the opponent was the first user in Australia of the trade mark NAGS.

21.   Mr Stevens referred to the tests for  determining if  trade marks are ‘extremely close’ or substantially identical defined by  Windeyer J in Shell Co of Australia v Esso Standard Oil, (1963) 109 CLR 407, at page 414 where he said ,

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

22.   Mr Stevens submitted that the degree of stylisation of the applicant’s trade mark is slight and does not detract from the fact that the essential feature of the applicant’s trade mark is the word NAGS. He noted that the applicant in its evidence identifies the trade mark as the acronym NAGS. Mr Stevens referred me to Austrac Holdings Pty Ltd v Asseta, (2002) 59 IPR 551, where the Registrar’s Delegate said that ‘it is apparent from the cases that the trade marks may be non-identical and yet for the purposes of the Act be considered to share an identity.’

23.   Ms Baird applied the same tests set down in Shell, above, and contended that the trade marks are neither substantially identical nor deceptively similar. She noted that the criteria for determining deceptive similarity are to be found in authorities such as, Australian Woollen Mills Limited v F S Walton & Co Limited, (1937) 58 CLR 641, Pianotist Co’s Application, (1906) 23 RPC 774, Cooper Engineering Pty Limited v Sigmund Pumps Limited, (1952) 86 CLR 536, Shell, above, and Aldi Stores Ltd Partnership v Frito-Lay Trading Co GmbH, (2002) 54 IPR 344.

24.   Ms Baird submitted that while the opponent’s trade mark is the word NAGS in plain type the applicant’s trade mark is a striking device in which the highly stylised letters N, A, G and S are boxed and in which the word ‘nags’ does not ‘leap’ out of the mark as the flow of the letters may be read vertically, horizontally or diagonally.

25.   In English it is normal to read from left to right and from the top to the bottom so that the only reasonable order of reading of the letters that form the trade mark is N-A-G-S, and since they form a well known word, I consider that consumers will naturally recall and refer to them by that word.

26.   Photographic exhibits show the applied for mark is frequently used with the words ‘National Auto Glass Supplies’ (plus the word ‘AUSTRALIA’ or ‘AUST’), in fairly close proximity so consumers could be left in no doubt as to the order of the letters that form the acronym.

27.   The Macquarie Dictionary lists the word ‘nag’ as a noun meaning:

a small horse, or pony, especially for riding; Colloquial a horse; an old or inferior horse.

or as a verb meaning:

to torment by persistent fault-finding, complaints, or importunities.

28.   Given these definitions NAGS is a most unusual choice for a trade mark, one that by its very incongruity is likely to fix itself in the mind and to be easily recalled. Phonetically the marks are identical and visually while the arrangement of the letters in each mark is different the marks clearly share the same essential feature and share a common identity. The border and the stylisation of the letters in the applicant’s trade mark is indeed slight and not sufficient for me to find that the trade marks are other than substantially identical.

29.   It remains for me to determine if the goods and services in respect of which the two trade marks are used are the ‘same kind of thing’. Ms Baird submitted that there has been no such use. The opponent’s goods are catalogues and software which list the part numbers for replacement glass in motor vehicles. The applicant’s goods are glass products namely windshields, windscreens and glass products in class 12 and its services in class 37 are the installation, repair and servicing of vehicle windscreens and glass products.

30.   Mr Stevens submitted that any trade in the applicant’s goods and services is conducted by reference to windscreen specifications and part numbers and therefore the opponent’s trade mark has been used ‘in relation to’ windscreens and ‘in relation to’ services related to windscreens and thus it follows that the opponent has used its trade mark in relation to the same kind of goods and services as those specified in the subject application. I think it is undoubtedly true that the opponent’s goods are an integral part of the trade in glass vehicle parts and their installation but that is not sufficient to make them ‘the same kind of thing’. The components of a motor vehicle comprise many individual parts and systems with distinctly different natures and functions, and which are integral to the performance of the motor vehicle but which cannot be described as ‘the same kind of thing’. For example ignition systems, braking, transmission and exhaust systems are all different in nature and the uses to which they are put. I think it is even less arguable that the opponent’s goods are the ‘same kind of thing’. The opponent uses its mark in relation to paper catalogues and software. The opponent uses its mark in relation to auto glass and services for installing auto glass. While the opponent’s paper catalogues and software are essential reference materials used in the trade their natures and the uses to which they are put are quite different from the glass products themselves or the services of installing glass. I find that the relevant goods and services are not the same  and in consequence the ground of opposition under section 58 has not been established.

Section 60

31.   In order to satisfy the ground of opposition under section 60 of the Act, the opponent must establish that the applied for trade mark, NAGS, is substantially identical with or deceptively similar to another trade mark that had acquired a reputation in Australia before 6 June 2001, the priority date of the applied for trade mark, and because of that reputation, use by the applicant of its trade mark, would be likely to deceive or cause confusion. Section 60 does not require the relevant goods or services to be the same or closely related nor does it require the trade mark on which the opponent relies to be registered or the subject of an application for registration.

32.   I have already found that the respective trade marks are substantially identical so that I must now consider if the reputation of the opponent’s trade mark before the priority date of the subject application was such that consumers would be likely to be deceived or confused if the applicant were to use its trade mark.

33.   The opponent’s goods are reference materials for use by suppliers of glass to the automotive glass industry. Mr Stevens argued that prior to the relevant date the opponent had acquired the requisite reputation in Australia. In support of this he referred to the history of the NAGS trade mark, the opponent’s website, in operation since 1996 and to the sales in Australia before the priority date. He also noted that in the applicant’s poll of thirty-one of its own customers seven of them confirmed an awareness of the opponent. Mr Stevens submitted that it was significant that in this specialist industry, attestations as to their knowledge of the opponent, by Ms Westhead and Messrs Locke, Bishop, Carl Moller and Sven Moller are significant.

34.   Ms Baird did not agree and submitted that the opponent’s reputation in Australia is extremely narrow and limited so that use by the applicant of its trade mark is not likely to lead to customer deception and confusion, that its goods are directed to the American market and collected in Australia by a few aficionados such as those in the care restoration business, that sales in Australia are low and that the opponent has been unable to point to any instances of confusion.

35.   It is not in dispute that there are only a limited number of suppliers and wholesalers of automotive glass so that the industry may be aptly described as narrowly based  or specialist in nature. Nor is it in dispute that part numbers are the means by which individual items are identified and that there are a number of systems in use in Australia including the opponent’s system which trades under the trade mark NAGS.

36.   Carl Moller has attested to his knowledge of the NAGS system since the 1970’s, when he entered the industry. The fact that in his capacity as Managing Director of the applicant he referred to the NAGS system in promotional letters indicates to me that he regards the NAGS system as a well known standard in the industry.

37.   Mr Bishop declares that he became aware of the opponent’s trade mark in 1969 when he began restoring a 1959 Cadillac Coupe de Ville. Since 1989 he has run his own wholesale and retail automotive glass businesses in New Zealand and that on most days he has reason to consult one or more NAGS catalogues. He declares that he has always maintained close connections with suppliers, wholesalers and retailers in Australia. Indeed from 1993 to 2002, in connection with his business, he maintained a home in Australia, where he lived for about three weeks every eight weeks. Mr Bishop declares that in his experience many windscreen businesses in Australia have NAGS catalogues.

38.   Ms Jean Westhead, wrote a letter to the opponent on 2 July 2001, concerning the applicant’s entry to the industry in 1998, which states in part,

Your own company’s part numbers were already well established here in Australia and were widely used to identify glass. Protector-Glass had up until then  incorporated your part numbers into our catalogue as an added means of identification to assist our customers….When National Auto Glass entered the market we now had two ‘NAGS’ numbers. What was once a very reliable identification system now became confused….

39.   I think it is particularly significant that the opponent’s NAGS numbering codes were used in PGI’s catalogues, (Exhibit JW-1), as it is strong evidence that NAGS codes are recognised as an industry standard.

40.   Mr Sven Moller declares that he has been aware of the opponent since 1984 and Mr Locke attests to a knowledge of the opponent. Almost a quarter of the thirty-one customers polled by the applicant indicated an awareness of the opponent.

41.   Sales figures provided for the years 1994 to 2000, for the opponent’s catalogues, are low, however, given that the industry is narrowly based this is not altogether surprising. The paucity in sales is balanced by the duration of use in a niche market in Australia which began when the opponent’s trade mark was used in respect of patterns for cutting auto glass that were first  imported into Australia in 1957 or thereabouts.

42.   Mr Bishop has declared that use of the applicant’s trade mark has caused ‘a great deal of confusion in the industry.’ Ms Westhead has declared that because of the confusion caused by the applicant’s use of its trade mark PGI was caused to change its catalogues. I am satisfied that the opponent has established a reputation in the industry and that because of that reputation consumers are likely to be deceived and confused by use of the applicant’s trade mark. This ground of opposition is established.

Decision

43.   The opponent has been successful in establishing its ground of opposition under the provisions of section 60 of the Act. Therefore pursuant to the provisions of section 55 of the Act and subject to a successful appeal from my decision, I refuse to register trade mark application number 878388.

Costs

44. Both parties sought their costs. I see no reason why costs should not follow the general rule that costs are usually awarded against the unsuccessful party. I award costs against the applicant and order that the applicant pay the costs of the opponent in accordance with the official scale set down in Schedule 8 of the Trade Marks Regulations 1995.

Mary Skivington

Hearing Officer

Trade Marks Hearings

14 October 2004