Moldflow Corporation v Advanced Moulding Technologies Pty Ltd

[2008] ATMO 15

TRADE MARKS ACT 1995

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

IN THE MATTER of Australian Trade Mark Application No. 1029641(7, 40, 42) for the trade mark MOULDFORM (logo) in the name of ADVANCED MOULDING TECHNOLOGIES PTY LTD and an Opposition to Registration by MOLDFLOW CORPORATION

Delegate:

Debrett Lyons

Representation:

Opponent: John McCormack of Griffith Hack

Applicant:  No appearance

Decision:

2008 ATMO 15

s. 52 opposition: s. 41 not established since trade mark distinctive in fact; s. 58 not established since opponent found not to be the owner of a substantially identical trade mark;  ss 44 and 60 not established since trade marks not deceptively similar. Opposition not established. Opponent to pay applicant’s costs

Background

1. Advanced Moulding Technologies Pty Ltd (‘the applicant’) filed an application to register a trade mark, the current details of which appear below:

   Application number:  1029641

   Filing date:  15 November 2004

   Goods/ services

   specifications:  Class: 7 Machines and machine tools including moulding, shaping and forming machines and machine tools and dies; other parts and accessories for moulding, shaping and forming machines and machine tools in this class

   Class: 40 Moulding, shaping, forming and machining services including plastic moulding, shaping, forming and machining services

   Class: 42 Design of moulding, shaping, forming and machining apparatus, installations, tools and dies; research, engineering, technical and consulting services relating to moulding, shaping, forming and machining including plastics moulding, shaping, forming and machining

   Trade mark:             (‘the trade mark’)

2. The application was accepted for possible registration but on 7 July 2005, Moldflow Corporation (‘the opponent’), filed a Notice of Opposition under section 52 of the Trade Mark Act 1995 (‘the Act’), objecting to the registration of the trade mark.

3. The opponent served and filed evidence in accordance with the Trade Mark Regulations 1995.  The opponent’s evidence in support of the opposition comprised the statutory declarations of:

   §  John David McCormack dated 6 April 2006 and Annexures A – E;

   §  John David McCormack dated 6 July 2006 and Annexures 1.

4. The applicant did not serve any evidence in answer.

5. This opposition was set down before me, a delegate of the Registrar of Trade Marks, for a Hearing on 17 September 2007, in Melbourne.  The opponent was represented by John McCormack, Patent Attorney with Griffith Hack.  The applicant made written submissions but did not appear.

6. The Notice of Opposition listed additional grounds of opposition under the Act, however, at the Hearing Mr McCormack indicated that he would only press sections 41, 44, 58 and 60.  I treat the remaining grounds as having been abandoned.

   Submissions and Reasoning

   Section 41

7. Section 41 of the Act[1] provides a scheme for the assessment of the inherent capacity of a trade mark to distinguish the goods of one trade from the similar goods of another trader.  If the trade mark is found to lack inherent capacity to distinguish, section 41 also provides a scheme for the assessment of whether the trade mark has acquired capacity to distinguish the goods through its use in trade.[2]

   [1] Section 41(2) states:   An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered ( designated goods or services ) from the goods or services of other persons.

   [2]  Blount Inc v Registrar of Trade Marks [1998] 440 FCA

8. In Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 at 514, Kitto J put the test under the 1955 Act[3] as follows:

   "[T]he question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it."

   [3] Applied by Branson J in Blount Inc v Registrar  of Trade Marks [1998] FCA 440.

9. Other traders are not likely to need to use the opposed trade mark in respect of their similar goods or services.  Whatever might be said of the level of distinctiveness of the word element of the trade mark, it is evident to me that the trade mark as a whole has sufficient inherent distinctiveness to enable the goods and services of the applicant to be distinguished from the similar goods and services of other traders.

10. I can find no support for the opponent’s section 41 ground of opposition and I decide that it fails.

11. The remaining grounds of opposition depend on the rights of the opponent.  The opponent is the proprietor of the following trade mark registrations:

Trade Mark No:

369,688

Trade Mark:

Priority Date:

22 December 1981

Services :

Class: 42 Computer aided plastic part and mould design services

Trade Mark No:

369,689

Priority Date:

22 December 1981

Trade Mark:

Goods :

Class: 9 Computer programs recorded on tapes, cards or discs

Trade Mark No:

1,004,379

Trade Mark:

MOLDFLOW

Priority Date:

31 May 2004

Goods / Services :

Class: 9 Computer software including computer operating programs, recorded computer programs, computer programs recorded in any form, particularly computer software and programs relating to engineering services, research services, chemistry, testing of materials, industrial design, particularly computer aided part and mould design for making plastic parts and moulds from polymers and polymeric materials, data acquisition systems, computer systems, computers, computer hardware, computer software and process control technologies for use in connection with hot runner process control systems; computer hardware, computer software and process control technologies for use in connection with the plastics injection molding industry, material testing instruments and machines, parts, components and accessories for the preceding goods in this class

Class: 42 Scientific and technological services being chemical research, chemistry, testing for physical properties of materials, material testing services including physical testing services and testing for physical properties, predictive moulding analysis services, computer aided engineering services, computer programming services, calibration services, chemical analysis services, computer software design and related services, industrial design services, engineering services, technical research services, computer aided part and mould design services including but not limited to computer aided plastic part and mould design services, particularly of polymers and polymeric materials, management consulting services for plastics industrial designs or of articles made from plastics materials, consulting services in this class being in the field of flow analysis, design verification, speciality process analysis and general plastics flow analysis, consulting services relating to the aforesaid services

Endorsement

  Provisions of paragraph 44(3)(b) applied

(‘the registrations’)

1. The degree of similarity of the trade mark of the application to the trade marks of the registrations is central to the opponent’s grounds of opposition under sections 44, 58 and 60.  The first question in terms of the Act is whether the trade marks are substantially identical to each other.

2. In The Shell Co. of Australia Ltd. v. Esso Standard Oil (Australia) Ltd. [1961] HCA 75; (1963) 109 CLR 407 Windeyer J said at paragraph 12 of his judgment:

   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. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106 . Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody (1945) 70 CLR 100 , per Latham C.J. (1945) 70 CLR, at pp 114, 115 , and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291 , per Jordan C.J. (1944) 44 SR (NSW), at p 298 , where the meaning of the expression was considered.

3. In my opinion, applying that test, it is plain that the trade mark is not substantially identical to either the opponent’s word or logo-style trade mark.

   Section 58

   Section 58 of the Act provides:

   58  Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

   Note:   For applicant see section 6.

4. A pre-requisite of section 58 is that the opponent’s trade mark be substantially identical to the applicant’s trade mark (Carnival  Cruise  Lines Inc. v Sitmar Cruises  Limited (1994) AIPC 91-049; (1994) 120 ALR 495). I have not found that to be the case and so the opponent cannot establish its section 58 ground of opposition. That ground therefore fails.

   Sections 44 and 60

5. Whether in terms of the Act the trade marks are deceptively similar will determine the outcome of both remaining grounds of opposition.  The comparison of the trade marks to assess deceptive similarity was discussed by the Full Bench of the Federal Court in C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539 at paragraph 40, as follows:

   There is no room for doubt, in general terms, about the test to be applied. In Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658, Dixon and McTiernan JJ described it as follows:

   "But, in the end, it becomes a question of fact for the Court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained.

   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. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight."

   Equally well known is the following passage from the judgment of Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415:

   "On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. 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."

   Windeyer J added, at 416, that "[the] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone but, by the effect of that similarity in all the circumstances". Thus, for instance, although the present Trade Marks Act contains no analogue of s 66 of the Trade Marks Act 1955 (Cth), it is still true that questions of deceptive similarity must be considered against the background of the usages in the particular trade.

6. The comparison is to take into account the circumstances of trade, and all of the surrounding circumstances in the comparison: In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777), Parker J said:

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion -- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you may refuse the registration, or, rather, you must refuse the registration in that case.

7. Both parties made submissions regarding the nature of the respective goods and services.  Distinctions of a kind can be drawn, however, it is not clear to me that the potential purchasers of the goods or users of the relevant services would be so sharply delineated.  Whether those customers might intersect or not seems to me to be subordinate to other factors.  I would characterise the likely customers of both parties as engineers or other professionals in search of very specific products or services.  In my estimation those people would be astute to small differences in trade marks, especially where a common element is descriptive as in the case of the word “mould”, or its alternative in spelling but not meaning, “mold” (Coca-Cola  Co. ( Canada ) Ltd. -v- Pepsi- Cola  Co. ( Canada ) Ltd. (1942) 59 RPC 127 particularly Lord Russell at p134). I think that the two suffixed words “-form” and “-flow” have quite separate meanings in the relevant industry and would be enough to alert the likely purchaser to the fact that they were looking at different traders’ goods or services. Coupled to that is the logo element of the applicant’s trade mark which further distinguishes it from the opponent’s word mark registration and completely distinguishes it from the opponent’s logo-style trade mark.

8. On balance, I find that the trade marks are not deceptively similar and so the opponent is unable to satisfy either ground of opposition under section 44 or 60 which both require a finding of at least deceptive similarity between the respective trade marks.

   Decision

9. Section 55 of the Act provides:

   55 Decision

   Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:For limitations see section 6.

10. The opposition fails since no ground of opposition has been established.  I therefore direct that the application be registered one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

    Costs

11. I order that the opponent pay the applicant’s costs according to the official scale.

    Debrett Lyons

    Hearing Officer

    Trade Marks Hearings

    7 February 2008