Mobil Oil Corporation v Dynam Nominees Pty Ltd

[1999] ATMO 99

TRADE MARKS ACT 1995

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

Re:Opposition by Mobil Oil Corporation to the registration of trade mark applications number 722606 in the name of Dynam Nominees Pty Ltd.

Background:
After examination, the Trade Marks Office advertised application 722606 as having been accepted for registration.  The applicant is Dynam Nominees Pty Ltd, which I will refer to simply as “the applicant” from this point.

The mark in question is:

Registration is sought in class 35 in respect of "accounting, management, financial and taxation services"

Mobil Oil Corporation ("the opponent") opposed registration of the applications on various grounds.  The opposition process has followed the course set out in the regulations and both sides served evidence to support their positions.  The opposition came on for hearing and decision by me, as a delegate of the Registrar of Trade Marks.

At that hearing, Keith Anderson, the Principal Executive Director of the applicant, made telephone submissions on the applicant's behalf.  Malcolm Bell, a patent attorney of the attorney firm of Phillips, Ormonde and Fitzpatrick, appeared for the opponent.

Evidence
Opponent's evidence
The opponent relied on evidence in support, the declarations of:

• Malcolm Royal, a patent attorney, and

• Derek Leong, the Managing Counsel and Company Secretary of the opponent,

In reply to the declaration of the applicant, it also relied on the declaration of Michael O'Donnell, a trade mark paralegal employed by the opponent's attorneys.

Mr Royal's declaration serves to bring into evidence the declarations of two other people.  Mr Hugh Hubbard is a lecturer in marketing.  In 1994 he made a declaration, which the opponent has already used in the earlier matter of the examination and acceptance of some of its own applications for registration.  Sometimes the declaration is framed in terms that do not match the specific questions posed by the Trade Marks Act 1995 and some of it is simple statements of personal opinion.  His evidence is that the trade mark MOBIL is well-recognised for various goods and services.  That trade mark, MOBIL, at least on the face of it, plays very little part in the present opposition, though it is a theme of the applicant's arguments, to which I will come later. 

Also forming part of Mr Royal's declaration is the 1991 declaration of Mr Sanguinetti, the Assistant General Counsel and Company Secretary of Mobil Oil Australia, a company wholly owned by the opponent.  Mr Sanguinetti gives details of the sale of MOBIL goods and services through MOBIL outlets.  In the period 1970-1980 these totalled more than 5 thousand million dollars.  There were, in 1980, over 1500 MOBIL outlets Australia-wide.  As to promotion, advertising expenditure has been in excess of a million dollars per year for most of the years from 1970 up to and including 1980.

Suffice it to say that the evidence confirms what would otherwise be obvious to any resident of this country, that the owner of the MOBIL trade mark is well known to the public, principally for the operation of service stations, many of which have convenience stores attached to them.

Mr Leong, the other principal declarant on whom the opponent relies, refers to relevant registrations, number 327772 and 3277793, in the name of the opponent.  The trade mark in question is:

That trade mark is registered for the following services:

• In class 35, registration 327793, for:

  Advertising and business services, being accounting, hire of advertising hoardings, media advertising, theatre advertising, bill-posting, business management and supervision, business management consultation, business information, business research, commercial information offices, cost price analysis, employment agencies, compilation of statistical information, management of commercial and industrial enterprises, hire of office machinery, and equipment, issuing of publicity matter, preparing of wage packets, display arranging, all being services included in this class
  
  

• and in class 36, registration 327772, for

  Insurance and financial services, being accident insurance, banking, insurance brokers, capital investment, organising of charity collections, advice regarding credit, financial transactions, financing, insurance, leasing of real estate, including leasing of service stations, investing of wealth - all being services included in this class

Much of Mr Leong's declaration goes to establishing the strength and extent of the opponent's reputation. It is quite significant, for reasons that I will come to below, that he states:

Mobil Oil Corporation has been committed to creating and maintaining a strong corporate image and identity.  To this end, it requires all of Mobil's products and facilities to be generally uniform in appearance.  The uniformity contributes to the public awareness of Mobil Oil Corporation, its products and services and its trade marks. 

Mr Leong goes on to declare to some of the financial services provided by the opponent.  These include those of the Flying Horse Credit Union, which is open to all employees of the opponent and its affiliated companies.  It is also open to the family, friends and associates of such people, to all Mobil account holders and, since April 1998, to employees of ACI Pilkington.  There were, in April 1998, 4,200 members of this credit union.  Mr Leong notes that the opponent provides a credit card facility, MOBILCARD, primarily issued to fleet users.

Applicant's evidence
The applicant, for its part, relies on the declaration of Keith Anderson, the Principal Executive Director of the applicant.  Mr Anderson devotes much of his declaration to countering the declared opinions of the opponent's declarants.  He states that the trade mark in question was derived by his company, in 1993, to link with the "true psyche" of the business.  This was to be symbolised by reference to "the Greek myth of the birth and deeds of the mighty stallion known as Pegasus".

Mr Anderson also declares that there has, to his knowledge, never been a single instance of a member of the public suggesting a connection between the opponent and either the applicant or its services.

He notes that the trade mark of a Pegasus device is used by a range of traders.  He supports this by reference to a search of Telstra's electronic Yellow Pages and other electronic references.  However, those traders operate in diverse fields.  Without going into the matter in detail, it is clear from the opponent's evidence in reply that there are no other trade marks registered in class 35, the class for advertising and business services, that include a device of Pegasus. 

Much of the rest of Mr Anderson's declaration is given over to argument.  With this in mind, I will come to the arguments as they bear on two sections of the act, ss 44(2) and 60, on which the opponent now grounds the opposition.

Decision on the issues
Section 44(2)
This provides:

(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: a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
Note 2:  For similar services see subsection 14(2): services are similar to other services if they are the same as the other services; or if they are of the same description as that of the other services.
Note 3:  For priority date see section 12.  In the present case, the applicant's priority date is not earlier than that of the opponent's registration.

It is common ground that the services specified in the opponent's registration number 327793 directly overlap those for which the applicant seeks registration.  The application will therefore stand or fall on a comparison with the mark the subject of that registration.

Mr Bell did not allege that the competing marks were substantially identical.  As he approached the case, the issue is one of deceptive similarity.  He argued, quite correctly, that what is relevant is the impression that will be made on a person who encounters the previously unknown mark in the absence of the known one.  As Shanahan notes at p 152 of Australian Law of Trade Marks and Passing Off, the context is one of notional or hypothetical use of the applicant's mark for any relevant services, having regard to the opponent's right to use its trade mark for any goods covered by its registration.  Any fair and reasonable possibilities open to either side must be considered.

As to the relevant standard, Mr Bell noted cases as diverse as Saville Perfumery Ltd v June Perfect 58 RPC 147 and Dial-an-Angel Pty Ltd v Saggitaur Services Systems Pty Ltd 19 IPR 171. He noted the differences in competing marks in the latter case, and in the present case also. However, as Mr Bell approached the matter, the device of Pegasus was a common essential feature of the competing marks, making deception or confusion inevitable.

In Dial-an-Angel, Wilcox J considered the importance of common features and their balance with distinguishable features.  He noted a proposition of long standing: "a man infringes the mark of another if he seizes upon some essential feature of the plaintiff's mark".  Wilcox J qualified this as follows:

Perhaps that statement should be read subject to a qualification that the similarity of an essential feature may be negated by another feature which tellingly distinguishes the two marks.  But this will ordinarily be difficult, for the reasons spelled out in Jafferjee. [Jafferjee v Scarlett (1937) 57 CLR 115]

In that context, Mr Bell referred me to my own decision, under the 1955 act, of the present opponent's opposition to the registration of applications 617735 and 617736.  There, too, another trader was using a trade mark with a very prominent device of Pegasus but, again, with equally prominent other particulars.  Mr Bell referred to and relied on the precedent cases that I have already referred to and, in addition: Taw Manufacturing Co v Notek Engineering Co Limited (1951) 63 RPC 271, Danish Bacon's application (1934) 51 RPC 148 and Sym Choon & Co v Gordon Choon Nuts Limited (1949) 80 CLR 65.

He noted that, in the earlier opposition, I had referred to and relied on the latter case for the proposition that:

The basic principle is that the proposed mark must be so unlike the rival mark that it is not reasonably probable that a purchaser who knows of the latter and has an imperfect recollection of it is likely to be confused.

That is an accurate refection of matters under the 1955 act, but I will return, in what follows, to the question of the onus under the 1995 legislation.

Mr Anderson, for his part, emphasised the history of the mark.  It was intended to be a Pegasus trade mark, he argued.  He pointed out that it was "almost impossible" to separate the device of a winged horse from the name Pegasus.  The question he put to me was "what would people of ordinary memory associate with our mark?"  With this in mind, he drew my attention to the differences between the marks: the rendition of the wings, their different attachment to the bodies of the horses, the different postures of the two horses.

It was reasonable, he said, to say that this mark was directed to people who were looking for accounting and similar services.  Such people would give particular weight to the words in the mark.  The mark, given the weight that would be put on the words, was clearly not a mark that any reasonable person would think was being used by the opponent.  The winged horse was there merely as an adjunct to the word PEGASUS.

In this submission, he was very close to the line subsequently taken by the Full Federal Court in Registrar of Trade Marks v Woolworths [1999] FCA 1020, the WOOLWORTHS METRO case. In that decision are several things of relevance to the application of s 44 under the 1995 Act.

Firstly, all three judges conclude that the presumption of registrability under s 33 applies to the operation of s 44.  Under the 1955 act, the onus was on the applicant to establish registrability.  Under the current legislation, an application may not be rejected prior to acceptance unless the registrar is properly satisfied that there will be a reasonable likelihood of deception or confusion.  At paragraphs 49-50, French and Tamberlin JJ note:

… The judgment of the likelihood of deception or confusion is a very practical one and what has long been accepted as the proper approach to making that judgment was set out in Australian Woollen Mills Ltd. [Australian Woollen Mills v F.S. Walton & Co Ltd, (1937) 58 CLR 641] It requires assessment of the effect of the challenged mark upon the minds of potential customers. Impression or recollection taken away from the point at which the challenged mark is observed will be the basis of any belief about a connection between the new and the old marks. The effect of spoken description must be considered. What confusion or deception may be expected is to be based upon the behaviour of ordinary people. As potential buyers of goods they are not to be credited with high perception or habitual caution. Exceptional carelessness or stupidity may be disregarded. The question ultimately is not susceptible of much discussion:

"It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs." (659)

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.

The reversal of onus does not, in itself, shift the borders of registrability.  What it does do, however, is establish that the registrar, or the court, must now approach the border from the other direction.  This means that the issue is approached with a view to acceptance unless the registrar or the court is satisfied that rejection is proper.  Also, a true borderline case, where such satisfaction cannot be arrived at, must now be accepted. 

In opposition matters, the responsibility is already on an opponent to make out a ground of opposition before there is any onus on an applicant.  There must, in effect, be a case from the opponent before there needs to be an answer from the applicant.  I approach the matter in those terms.

Further into the decision, the judges shed some light on what has previously been considered to be the completely hypothetical and notional nature of this comparison.  At para 61:

Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, as is the present case, it would be artificial to separate out the physical features of the mark from the viewer's perception of them. For in the end the question of resemblance is about how the mark is perceived. In the instant case the visual impact of the name "Woolworths" cannot be assessed without a recognition of its notorious familiarity to consumers.

I have not had the benefit of the any submissions on matters arising from this case, as it had not been decided at the time of the hearing.  Accordingly, I approach this issue with some hesitancy.  Clearly, the judges were talking about perceptions that go beyond mere reputation.  They were talking about the effects of knowledge of what a trader is, what it does and how it conducts its business.  Making such an assessment places a new responsibility on the registrar.  It seems to me that this responsibility may well produce outcomes that differ from what would be expected if notional use was postulated, as it has been in the past, uncomplicated by such perceptions and foreknowledge. 

I believe that Mr Anderson was inviting me to approach the matter with recognition of the "notorious familiarity" of the opponent's flying horse device to consumers.  Were I to do so, I would have to accept the following propositions, which are the logic that underpins his argument:

• the opponent's business, under the trade marks MOBIL and the flying horse device, is well known

• those two marks, as used by the opponent, are invariably linked, in fact and in memory.

• the typical person seeking accounting or financial services, who encounters the applicant's mark will, because of these things, immediately note that the applicant's business is PEGASUS, not MOBIL

and that therefore no deception or confusion can result.

However, the simple fact is that, in respect of any actual trade in accounting and related fields, the opponent's device mark is a virtual unknown.  I note that, in the context of its MOBIL business, the opponent does operate the FLYING HORSE credit union.  However, that use is very minor.  It certainly does not endow the flying horse device, in relation to the applicant's services, with the notoriety or renown to which the Federal Court has referred. 

Equally, some of the applicant's evidence shows that the MOBIL trade mark is not always used with the device of a flying horse.  So, as Mr Bell argued, the link between the device and the word MOBIL is not immutable.  However, the ins and outs of that usage are almost entirely removed from accounting and related professions.  Whatever the links between a particular Pegasus device and the word MOBIL at the local service station, they do not intrude on the coexistence of two accounting or similar businesses.  There, one business is to be conducted by the applicant under the present device with the words PEGASUS IC CERTIFIED PRACTICING ACCOUNTANTS, the other conducted by another party under a device that is just as clearly a Pegasus.

The presence of the words PEGASUS IC CERTIFIED PRACTICING ACCOUNTANTS is simply not enough to "tellingly distinguish" the applicant's mark from the device that is the entire of the prior registration.  For all that, to careful inspection, the two devices are not the same, they are simply too close.  I find that, despite Mr Anderson's arguments, there is the required level of deceptive similarity between the two.  I therefore find the ground under s 44 to be established.

Section 60
In brief terms, this provision allows an opponent to rely on the reputation, at the priority date, in a trade mark that, in the light of the reputation, is deceptively similar or substantially identical to that of the applicant.  To establish such a ground, the opponent would have to satisfy me that the use of the applicant's mark, in all the circumstances, would be likely to deceive or cause confusion.

I have already commented on the lack of any link between the opponent's main business and the services in question.  In view of what I have already said, and given the evidence of the parties, I find that such a ground has not been established.

Conclusion
I find that the opponent has established a ground of opposition under s 44.  In terms of s 55, I believe my proper course is to refuse to register the application.  I award costs in accord with the scale to the opponent.  If necessary, on payment of the fee, those costs will be taxed, allowed and certified by an officer of the Trade Marks Office.

T. Williams
Hearing Officer
30 September 1999.