Mobil Oil Corporation v Sharp Kabushiki Kaisha Also Trading as Sharp Corporation

[2000] ATMO 128

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 application number 745979 in the name of Sharp Kabushiki Kaisha, also trading as Sharp Corporation, for the trade mark comprising the word MOBILON in Class 9.

Background
Application number 745979 was filed on 9 October 1997 in the name of Sharp Kabushiki Kaisha, also trading as Sharp Corporation (the applicant).  The application was for the registration of the word trade mark MOBILON and covered a wide range of goods in Class 9.  At the hearing set down to decide the matter, the applicant formally requested that the statement of goods be restricted.  Following the hearing, I carried out that amendment and the statement of goods now reads, "Electronic organisers and software for use therewith".

Following examination, the trade mark was advertised as accepted in the Australian Official Journal of Trade Marks of 19 February 1998.  Notice of opposition to the trade mark’s registration was filed by Mobil Oil Corporation (the opponent), on 19 May 1998.  Following the service of evidence in support and answer by the respective parties, the opponent requested a hearing in the matter and it came before me, as a delegate of the Registrar, in Canberra.  Representing the opponent at the hearing was Mr Malcolm Bell of Phillips Ormonde & Fitzpatrick.  Appearing for the applicant was Mr Trevor Stevens of Davies Collison Cave.

The notice of opposition listed a wide range of grounds but at the hearing, the opponent's attorney advised that he would be primarily making submissions in relation to the grounds under ss.44 and 60.

The Evidence
The evidence in support comprises a declaration and exhibits by Derek Leong, the Managing Counsel and Company Secretary of Mobil Oil Australia Limited, a wholly owned subsidiary of the opponent.  Mr Leong gives a history of the opponent company, and the use and reputation of its MOBIL trade mark.  Although he does state that the principal products marketed and sold by reference to the mark have been petroleum products, he does also say that it has been used on a wide range of products.  He lists the Australian registrations of that mark in Class 9.  He discusses the advertising and promotion of the opponent's goods and services under the MOBIL trade mark.  He also describes the exposure of the mark as "vast and extensive", in general advertising , and also in its sponsorship of the arts and of sporting events.  He attaches a great number of exhibits to his declaration, including an annual report, status reports of various trade mark registrations, copies of advertisements, product information and promotional material, in-house publications on the mark's role in the opponent's "trade dress", credit scheme material, revenue and promotional statistics, and photographs of the opponent's involvement in sporting events.

The applicant's evidence in answer comprises a declaration and exhibits by Rohan Singh a solicitor employed by Davies Collison Cave, the applicant's patent attorney.  Mr Singh states that he had caused searches to be conducted of Australian and international Trade Mark Offices data-bases, in relation to the MOBIL and MOBILON trade marks in Class 9.  He annexes copies of those searches to his declaration.

There is no evidence in reply in the matter.

Submissions
Both Mr Bell, for the opponent, and Mr Stevens, for the applicant made quite comprehensive submissions in relation to the ss.44 and 60 grounds relied upon in the notice of opposition.  I will not repeat them in detail here.  However I will refer briefly to any points made where I consider it would be relevant in explaining my decision.

Ms Bell's main arguments centred around the proposition that the applicant's trade mark MOBILON is at least deceptively similar to the opponent's mark MOBIL.  In relation to this claim, he referred to such cases as Shell Co (Australia) Ltd v Esso Standard Oil (Australia) Ltd, (1963) 109 CLR 407 and Pianotist Co's App'n (1906) 23 RPC 774. He made further reference, in relation to this argument, to the Office decision, Applications by Mobil 32 IPR 535.

With regard to the opposition ground under s.44, Mr Bell cited the opponent's registered MOBIL marks for goods in Class 9.  He submitted that the present mark is comprised of the same word with the addition of the suffix -ON.  He said that it was important that the applicant's mark did not include the word element MOBILE, to which the opponent did not have any objections, but did contain the made-up word MOBIL.  He submitted that it could appear to purchasers that the applicant's mark was one of a "family" of marks used by the opponent - especially given the large number of registrations, shown in the evidence to be owned by the opponent, which included the word MOBIL as a prefix and which covered a wide range of goods and services.  He referred here for support here to John Fitton & Co Ltd's Appn (1949) 66 RPC 110,and also to McDonald's Corporation v Macri Fruit Distributors Pty Ltd [2000] ATMO 37, He emphasised that the word MOBIL was, on its own, meaningless in relation to Class 9, and that the "idea" conveyed by both marks in question here was the same.

In relation to the s.60 ground of opposition, Mr Bell pointed to the Leong declaration which, he maintained, was evidence of the extensive reputation of the opponents MOBIL mark in Australia for many years for a wide range of goods and services - particularly petroleum products.  He said further that the opponent had already satisfied the Registrar that there was an extensive reputation for its MOBIL mark in Australia, in order for it to obtain a defensive registration for that mark in Class 9.  He said that this had been because the Registrar had agreed that any use of that word on other goods or services would be taken to indicate a connection between them and the opponent.  He said that all of this went towards showing that there was a wide recognition of that mark by the general public and that any use by the applicant of its own deceptively similar mark would therefore be likely to deceive or confuse.

Mr Bell said that the opponent sought its costs if it was the successful party here.  However, he also submitted that, because the opponent had been unaware of the applicant's intention to restrict the goods sought to be covered by the registration until the hearing, then it should have its costs paid no matter what the outcome of the present proceedings.

In relation to the s.44 ground, Mr Stevens referred to the Federal Court decision, Registrar of Trade Marks v WoolworthsLtd (1999) 45 IPR 411, saying that it was clear from that case that there was an onus on the Registrar to accept a mark unless there was good reason not to do so. He said that the opponent had alleged that such a reason existed under s.44. However, he said, it was up to that party to convincingly show that the present mark was deceptively similar to the opponent's registrations and that it would lead to deception or confusion if registered.

Mr Stevens outlined the applicant's version of the derivation of the mark, saying that it was a classic portmanteau word, being a telescoping of the two dictionary words, MOBILE and ON - with the dropping of the letter E.  He said that these words had been derived from the applicant's specific goods of interest - electronic organisers and software - which were, by their nature, were mobile [MOBIL(E)], and were utilised on the move [ON].  He said that the marks in dispute here differed visually and phonetically because the word MOBILON had three syllables and MOBIL had two, that the former mark had more letters than the latter, and also that the applied for mark had the quite different suffix -LON.

Mr Stevens said that all of the surrounding circumstances needed to be considered in coming to a decision on such a ground, including that that there had to be a real danger of deception or confusion occurring amongst a significant number of people, that the word element MOBIL was common in Class 9, that the goods were not cheap and more care would be taken in their purchase, and that the retail outlets of the two parties were quite distinct.  He also said that, in the case of Mobil Oil Corporation v Registrar of Trade Marks 1 IPR 366, Justice King had said that the word MOBIL could be seen as a disguised or mistaken rendition of MOBILE.  Mr Stevens also submitted that there were "other circumstances", as contemplated in s.44(3), which included some of those just listed, which made it proper for the Registrar to accept the present application in the face of the opponent's prior registrations.

On the s.60 ground of opposition, Mr Stevens said that the evidence clearly showed that the opponent's reputation in its MOBIL mark was linked to petroleum products and associated services and, given that, the applicant's use of its mark for the present goods would not be deceptive or confusing.  He said that, when the criteria, as listed in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495, were considered, it was clear that a s.60 ground was not valid in the present case.

He closed his submissions by seeking an award of costs in the applicant's favour.

Analysis
I can find no support, either in the evidence or in the opponent's submissions for those grounds in the notice of opposition based on ss.41, 42, 43, 58, 59 and 62. Thus, in relation to those grounds, I find the opposition has not been successful.  Accordingly, I will only refer here to the grounds which Mr Bell pursued at he hearing - those under ss.44 and 60.

Section 44
Substantially identical or deceptively similar trade marks
The relevant part of s.44 reads as follows:

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.

In relation to this ground, the opponent has said that the subject trade mark is at least deceptively similar to five prior registered trade marks owned by it comprising the word MOBIL and for allegedly the same or similar goods in Class 9.  These registrations and the goods covered are:

102393 - Batteries and accumulators for internal combustion engines and batteries for flashlight and torches.
296110 - All goods in the class including dispensing pumps for petrol, electrical apparatus and instruments, radios including car radios, batteries and accumulators for internal combustion engines and batteries for flashlights and torches, excluding vacuum cleaners.
397171 - All goods in this class, including portable radio receivers but excluding land mobile and maritime radio telephones, base radio and telephone apparatus and instruments, portable telephone apparatus and instruments, two-way communication apparatus, paging receivers, voice scramblers and data terminals for use in vehicles or together with radio telephones.
436922 - All goods in this class, but excluding goods which incorporate their own means of movement and which are normally characterised by having such means of movement.
567218 -defensive registration- Batteries for motor vehicles; petrol pumps; diagnostic apparatus in this class for motor vehicles.

In deciding whether or not competing trade marks are deceptively similar in relation to each other, the tests are conveniently laid out in such cases as Australian Woollen Mills Ltd v F. S. Walton & Co Ltd (1937) 58 CLR 641. and Shell v Esso, supra, where, in the latter case, Windeyer J said, at 415:

(in relation to deceptively similarity)   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.

Section 10 of the Act defines a trade mark as being deceptively similar to another trade mark if it so nearly resembles that mark that it is likely to deceive or cause confusion.  Consideration should also be given to a normal person's impression based on a recollection of the opponent's marks.  In this regard, Luxmoore, L.J. expounded the test referred to as the doctrine of "imperfect recollection" in Rysta Ltd.'s Appn. (1943) 60 RPC 87. It is obvious that the opponent's trade mark here is totally contained within the subject mark. However, that alone is not fatal to an application, as many decisions of the Registrar have found.

Mr Stevens has argued that the mark, while it is an invented word, was derived from a combination of the words MOBILE and ON and that then it would be inferred as such by purchasers.  He further said that, given the letter E was dropped when those words were "telescoped", then the final suffix would be perceived as -LON.  However, I cannot agree that this would be the normal inference of the origin of the word MOBILON.  That word would, in my estimation, be seen as a combination of the words MOBIL and ON, - not MOBI and LON.  There are more letters and syllables in the applicant's mark than the marks relied on by the opponent but I think that, given the natural break in the subject mark, then the inference would be drawn that the suffix -ON was merely an addition to the word MOBIL.  I consider it important that the latter word is not found in the usual dictionaries, that its appearance is different from the word MOBILE and that those words would be pronounced differently by a substantial section of Australian speakers.  I think that very few Australians, if confronted with the present trade mark, would infer or articulate the subject mark as MOBILE-ON but instead would be inclined to say MOBIL-ON.  It is true that Justice King, in Mobil v the Registrar, supra, found that the word MOBIL, simpliciter, was not an invented word and that it might be seen as being related in some way to the word MOBILE.  However, I must agree here with Mr Bell that the matter under consideration by Justice King involved the registrability of the word MOBIL in relation to Class 28 goods - a class for which the word MOBILE is clearly descriptive of some goods - and that that decision has no bearing on a case of the comparison of the deceptive similarity of marks.

As Mr Stevens submitted, in cases such as this, where I am required to determine whether or not trade marks are deceptively similar, I am permitted to consider all of the surrounding circumstances of their use.  This approach was endorsed by the High Court in Cooper Engineering Co Pty. Ltd. v. Sigmund Pumps Ltd 86 CLR 536 when citing with approval Parker J. in Pianotist Co. Ltd.'s Appn 23 RPC 774. I have considered Mr Stevens' various claims in this regard but I cannot agree that the word MOBIL is common in relation to Class 9 marks.  There are ten trade marks in that class on the Register which include that element, i.e. MOBIL and not MOBILE.  Six of these are owned by the opponent and the remaining four are sufficiently different to the opponent's mark to not be relied upon as precedent here.  Given the number of the opponent's registrations for MOBIL in Class 9, I think that it is quite likely that a sizeable number of those in the relevant market would regard the word MOBILON as being part of a family of trade marks owned by the opponent - something that is not the case.  I believe that such deception or confusion would occur 'amongst a substantial number of persons', as per the proposition in Smith Hayden & Co Ltd's Appn (1946) 63 RPC 97, at 101. The present circumstance, in my opinion, is one where there is a 'real tangible danger of deception or confusion occurring', as set out in the tests laid down in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, at 495 and more recently re-iterated by Justice French in Registrar v Woolworths, supra, at 428. With respect to Mr Stevens' other claims about the relatively high cost of the subject goods and the differing retail outlets for both parties' goods, I think that these are elements which are likely to have a decreasing relevance over time.

Given all of the above considerations, I find that the applicant's trade mark is deceptively similar to the marks already registered by the opponent.

Having so found, I now turn to determine whether the goods of the parties can be regarded as similar.  As I have already said, Mr Stevens asked that the wide range of goods in Class 9 of this application be restricted to electronic organisers and associated software.  This, he said was to reflect those goods of particular interest to the applicant and for which it had achieved trade mark registration overseas.  However, some of the opponent's registrations for the word MOBIL cover "all goods" in Class 9, with some exclusions unrelated to those goods covered by this application, - viz. numbers 296110, 397171 and 436922.  Therefore, there can be no doubt that the goods of both parties are the same, even allowing for the narrow range of goods now sought to be covered.

Given all of the above, I find that the opponent is successful on this ground of its opposition.

Section 60
Trade mark similar to trade mark that has acquired a reputation in Australia
This section reads:

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.

I have already said that I believe that the applicant's and opponent's marks are deceptively similar.  Given this, I now turn to determine the extent of the opponent's reputation in its mark and whether that will lead to deception or confusion.

There is no change in the law from the Trade Marks Act 1955 that there is an evidentiary onus on the opponent, in the first instance, to establish the extent of its reputation for its mark in Australia - re Heerey J., when referring to s.28 of that Act, in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 at 501. The opponent would have needed to establish that that reputation was sufficient amongst a substantial number of persons, as at the critical date of the filing of the present application - as per Southern Cross, supra, so that deception or confusion was bound to occur amongst a substantial number of people, likely to be concerned in the purchasing of the particular goods, because of the use of the applicant's mark - The Kendall Company v Mulsyn Paint and Chemicals (1963) 109 CLR 300.

I am in no doubt from the evidence, and from my own knowledge, that the opponent has a very considerable reputation in Australia in relation to petroleum related products and associated services.  The opponent has achieved massive sales of such goods and services in this country, and its marks have been widely advertised and promoted in the media and through sporting events, promotion of the arts and the like.  I believe that the opponent has shown in the evidence that it has, in recent years, widened its business interests to include the sales of non-petroleum products, such as hats, clothes and personal items, and also financial and credit facilities.  However, I must agree here with Mr Stevens that the context of the opponent's reputation is as a petroleum producer.  Despite the expansion of it's commercial interests, I am not convinced by the opponent's evidence that this reputation had widened sufficiently, as at the relevant date, so that purchasers might have been sufficiently caused to wonder as to the origin of the applicant's electronic organisers and software.  It is possible that some members of the public might have been deceived or confused but I doubt that this would extend to a "substantial number" of people as per the precedent cases.

Accordingly, I find that the opponent has failed on this leg of its opposition.

Conclusion
I have found that the opposition has been successful on the ground based on s.44, because the subject trade mark is deceptively similar to prior registered marks owned by the opponent in respect of similar goods.  However, I have not found in favour of the opponent on the s.60 ground because, although the applicant's mark is deceptively similar to a mark used by the opponent for which it had acquired a reputation in Australia, that reputation was not such that use of the applicant's trade mark would be likely to deceive or cause confusion.  I have also found that there has not been a case established in relation to the other grounds listed in the notice of opposition and I do not find in favour of the opponent there.

Notwithstanding, that the opponent has only succeeded on one of the grounds of the notice of opposition, it follows that the opposition as a whole has been successful.  Accordingly, I refuse to register the trade mark, the subject of this application.

Costs
Having been successful, in this matter the opponent is entitled to its costs.  Thus, I award costs against the applicant, in accordance with the Official scale.

Ian Forno
Hearing Officer

30 November 2000