Montblanc-Simplo GmbH v Sepia Products Inc

[2000] ATMO 121

TRADE MARKS ACT 1995

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

Re:Opposition by Montblanc-Simplo GmbH to registration of trade mark application 665383(16) - FLOWER DEVICE - filed in the name of Sepia Products Inc.

Background

In this issue, Sepia Products, Inc (Sepia) filed application on 30 June 1995 (the priority date) to register the trade mark appearing below in respect of goods which, after amendment in the course of examination, now read:

Class: 16 

Writing instruments and parts and accessories thereof, including pens, ball pens, rolling pens, pencils, sign pens, mechanical pencils, fluorescent marker pens, marker pens, drawing pencils, ink cartridges, ink suckers, pen sections, pen nibs, nibs, pen refills, inks.

Following examination, the application was accepted and advertised as such on the Australian Official Journal of Trade Marks on 22 August 1996.  On 22 November 1996, within the time allowed to do so, Montblanc-Simplo GmbH, (Montblanc) filed Notice of Opposition to the registration of the trade mark.  The parties filed their evidence in support, evidence in answer and evidence in reply as prescribed by the Act and regulations.

The issue duly came to me, as a delegate of the Registrar of Trade Marks to be heard.  However, the opponent relied on written submissions and the applicant neither appeared nor put in written submissions.

The written submissions are from Brett Lewis, solicitor, of Davies & Collison and I will address these during the course of these reasons.

The evidence from both parties is comprehensive and I summarise the declarations as below.

Declarant	Declaration Known as:	Made	Exhibits
Brett Lewis	Lewis 1	22 January 1998	A - E
Ian Brennand	Brennand/Claus	16 March 1998	A - D
Hinrich Claus	Brennand/Claus	16 March 1998	A - D
Geoffrey Arndtheim	Arndtheim	22 April 1998
Sydney Grolman	Grolman	27 March 1998
Michael Lin	Lin	13 May 1999	ML1 – ML7
Robert Fairweather	Fairweather	11 January 2000	RF-1 – RF-7
Brett Lewis	Lewis 2	9 May 2000	BL-1 – BL-3
Brett Lewis	Lewis 3	21 July 2000	BL- 1 – BL-3

I will note that the Brennand/Claus declaration is a joint declaration, made and executed by these gentlemen who declare jointly and execute jointly.

The evidence shows that the parties to this issue are manufacturers of writing implements.  Montblanc, of Hamburg in Germany, was established in 1908 as the Simplo-Filler Pen Company and adopted its trade mark in around 1911.  The trade mark, it is said, is derived from the silhouette of Mont Blanc.  Montblanc makes up-market fountain pens, propelling pencils and ball-point pens.  Sepia of San-Chung in Taipei, adopted the instant trade mark in 1990 and makes middle-of-the-market fountain pens, propelling pencils and ball-point pens.

The Lewis 1 declaration attests to several of the Montblanc trade mark registrations in Australia.  Typical of these, and most pertinent to this issue are:

Reg No:         195590
Priority Date:  28 June 1965

Goods:All kinds of goods for writing, drawing, painting and modelling, including office equipment (excluding office furniture), teaching material, pens, fountain pens, retractable turning and pressing mechanical and non mechanical pencils and pens, pen holder stands, desk stands and desk sets, ball pens and ball pen refills, pen ink, duplicating ink, ink refills, nibs,

Trade Mark:

Reg No:         479060

Priority Date   30 December 1987

GoodsWriting instruments, pouches for writing instruments, gift cases for writing instruments, desk sets, ink and refills,stationery

Trade Mark:

Reg No:         540410
Priority Date:  16 August 1990

Goods:Jewellery and imitation jewellery; precious stones; horological and chronometric instruments; articles made of precious metal or coated therewith; and all other goods in this class,.

Trade Mark:   (Series)

The Brennand/Claus declaration states that the above trade marks have been used in Australia since at least 1965.  The goods sold under those trade mark have been extensively advertised – total advertising and promotional expenditure have averaged at around a third of a million and sales of the goods have been in the order of 8,500 pens per year during the years 1992 to 1997.  These goods generally sold within the range $160 to $500 during these years.  Some of Montblanc’s “elite” range sells within the bracket of $1,000 to $25,000.  Generally, the Montblanc logo is referred to as the ‘star’ logo within the evidence.

This evidence shows that the trade mark is used by Montblanc with the logo portion of the trade mark on the top of the pen casing or cap near the pocket clip and the word MONTBLANC on the barrel of the pen.

Montblanc has obtained registrations of its trade marks in many countries, including, Argentina, Benelux, Congo, Zaire, Ghana, Egypt, France, Germany, Greece, Hungary, India, Iran, Iraq, Israel, Italy, Liechtenstein, Monaco, Morocco, Namibia, North Korea, Norway, Pakistan, Portugal, Romania, San Marino, South Africa, Slovenia, Switzerland, Spain, Sweden, Switzerland, Syria, Taiwan, Thailand, Tunisia, Uruguay, USA, Vietnam, Venezuela and Yugoslavia. 

The Lewis 2 declaration brings into evidence a decision of the High Court in the United Kingdom: Montblanc-Simplo GmbH v Sepia Products, Inc HC 1999 No. 2146 and HC 1999 No. 617.  I will return to this decision later in my reasons.

The Fairweather declaration is by the proprietor of Taft’s The Pen People who has owned the business for 21 years.  He states that, in his opinion, the trade marks are deceptively similar to each other and he further comments that he believes that confusion would occur among customers if pens bearing the Sepia logo were offered for sale in Australia.

Mr Lin states that the logo adopted by his company is based on the plum flower which is the national flower of Taiwan, Sepia’s home country.  Mr Lin says that it is quite common for Taiwanese companies to use representations of the plum flower to identify the business as being associated with Taiwan.  The goods sold under the trade mark have been extensively advertised throughout South East Asia and many photocopies of these advertisements are included in the evidence.  These are all foreign language advertisements and do not have English translations – their probative value is accordingly much lower than if these documents had been provided with translations as specified in the regulations to the Act.  The writing instruments made by Sepia have been promoted at trade shows within South East Asia and in Paraguay, Birmingham and Milan.

The evidence shows that the Sepia trade mark is used on the tops of the pen cases or caps near the clips and the word GENIUS is used on the barrel.

Mr Lin observes that the plum flower trade mark has been registered in France, Germany, Italy, North Korea, Slovenia, Taiwan, Thailand, USA and Vietnam where Montblanc’s trade mark has also been registered.  I gather from this that there are inferences that the trade marks were not considered to be deceptively similar in those countries and that Montblanc either did not oppose registration in those countries or, if they did oppose registration, it was unsuccessful.

Mr Lin attaches to his declaration a list of flower and star shaped trade marks which are registered in Australia in Class 16 for goods which include ‘stationery’.  Also attached are similar searches conducted within the United Kingdom, German, European and International registers.  The searches show that the flowers and stars are relatively common motifs within the trade – but not so common that they would fall into the category of being ‘common to the trade’.

The Grounds

Although the Notice of Opposition canvassed a broad range of grounds, the arguments in the written submissions are more restricted and address Ground 4 (sections 43 and 60), Ground 5 (that the use of the trade mark would be contrary to law), Ground 6 (given the reputation the opponent has in the trade mark and trade marks incorporating that trade mark, the use of the applicant's trade mark in relation to the applicant's goods is likely to mislead or deceive and pass off the goods as being those of or associated with the opponent,) Ground 7 ( section 44), Ground 9 (the registration of the trade mark ought to be refused in the exercise of the Registrar's discretion, by reason of the conduct of the applicant and/or the nature of the trade mark and/or its use).

However, for convenience and brevity in this decision, I will concentrate in this decision on sections 44 and 60.

I will note prior to giving my reasons that Sepia, in its declaration by Mr Lin, argued that the fact that the examiner had accepted this application in the face of the Montblanc registrations was a factor to be posted in its favour within these considerations.  I disagree.  The purpose of proceedings such as these is to bring into consideration evidence which is extraneous to the examination process.  Evidence such as peculiarities of trade in the nominated goods or services; circumstances of how the trade marks are used in trade; the particular public that avails itself of the services or buys the goods; and any other information which is not immediately obvious to a person who is not already familiar with the trade in the nominated goods or services.  This evidence could also show the history of dealings between the parties.  Such information is not available to the examiner whose consideration of any conflict with pre-existing registrations is prima facie.  The examiner does not usually have such evidence at hand and is not expected to have it.  Further, such an approach as that implicitly suggested by Mr Lin would effectively reduce proceedings such as these to a nullity.

Reasons

Inasmuch as it is relevant to these proceedings, section 44 of the Act provides:

44  Identical etc. trade marks

(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.

Section 60 of the Act provides:

60  Trade mark similar to trade mark that has acquired a reputation in Australia

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.

Note 1:         For deceptively similar see section 10.

Note 2:         For priority date see section 12.

Both sections 44 and 60 have in common within subparagraph (a) of each section the provision that the trade mark under consideration be rejected or opposed on the basis that it is ‘substantially identical with, or deceptively similar to, a trade mark’ that either has an earlier priority date, or has a reputation at the priority date, such that the use of the trade mark under consideration would be likely to deceive or cause confusion.  It is not argued by Mr Lewis that the trade marks are substantially identical but he does make comprehensive submissions that the Sepia trade marks are deceptively similar to his client’s trade marks.

While Sepia has not made any formal submissions concerning the reputation of Montblanc, such reputation appears to be tacitly acknowledged by Mr Lin in his declaration.  He says that he is aware of the Montblanc trade mark.  However, I believe that the Montblanc trade mark is very well-known.  The sales figures in evidence are very high for writing implements of such expense.  I note too that very strong images of, and associations with, prestige, exclusivity and collectability are attached to the Montblanc goods. 

The words ‘deceptively similar,’ used within sections 60 and 44, above, is defined by section 10 of the Act which provides:

10  Definition of deceptively similar

For the purposes of this Act, 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.

The test for deceptive similarity is that of the comparison of the trade marks, not side by side but as the trade marks are recollected and recalled.  In Australian Woollen Mills v. F.S. Walton & Co. Ltd (1937) 58 CLR 641 at 658, in a joint judgement, Dixon and McTiernan JJ stated:

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, their similarities both of sound and of meaning may 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.

Further, some rules for the comparison of trade marks were suggested by Lord Parker, or Parker J as he the was in Pianotist Co.'s Appn (1906) 23 RPC 774 at 778:

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.

Further, as regards my deliberations in regard to the opposition in terms of section 44, I am to consider the specifications of the parties at their widest – having due consideration as to the use Sepia can put its trade mark to if registration is allowed.  In Re Smith Hayden and Co's Application (1946) 63 RPC 97 at 101.8 the test was posited:

Assuming a use by the proprietor of each of the cited trade marks in a normal and fair manner in respect of any of the goods and services covered by those registrations, is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration (the respondent to this application) also uses its mark normally and fairly in respect of services covered by the proposed registration.

However, as noted by French J in Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999):

So far as this passage, reflected in oral submissions, suggests that an applicant must satisfy the Registrar or the Court that there will be no reasonable likelihood of deception and confusion it does not represent the law as it stands under the 1995 Act. The position now is that the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

But, the basic tenet in Smith Hayden, above, remains true: I am therefore to consider the situation which would arise from the premise that either or both parties may  sell writing implements which are inexpensive as well as middle and top of the market and are such as could be sold at any newsagency, stationer’s or, indeed, petrol station.

My own experience tells me, and the evidence confirms, that it is relatively common for the manufacturers of writing implements to place at least part of their trade mark on the tops of the caps of pens, adjacent to the clips.  Certainly both of the parties here do that.  The device portion of the trade marks is placed on the tip of the cap and the word is placed on the barrel of the implement.  In Sepia’s evidence there are records of many registrations that are strongly suggestive of such a practice.

It might be argued that under such circumstances there are very few device trade marks that would conveniently fit within the confines of the cap of writing implements in this manner.  Accordingly, the public should be used to distinguishing between the trade marks of the various manufacturers on this basis.  Reflection, however, reveals that there are numerous devices which might adapt themselves to be used to denote the origin of writing implements in this way.

I will also note now that I am aware it is common practice within newsagents or stationers to stack bundles of writing implements for display in vertical or horizontal containers so that only the cap of the implement, adjacent to the pocket-clip can be seen.

In Woolworths, above, French J restated the tests for deceptive similarity which stem from Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; he said:

(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.

In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:

...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.

The likelihood of deception may arise out of one trade mark being imperfectly remembered for another.  In Rysta Ltd's Trade Mark Appn (1943) 60 RPC 87 at 108 Luxmoore L.J. observed:

It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused.  Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable pronounced with the clarity to be expected from a teacher of elocution.  The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description but also of the shop assistant ministering to that person's wants.

Further, in Jafferjee v Scarlett (1937) 57 CLR 115 at 121-2 Latham CJ quotes from Lord Herschall's Committee's report at 121-2:

Two marks, when placed side by side, may exhibit many and varied differences, yet the main idea left on the mind by both may be the same; so that a person acquainted with the mark first registered, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. Take, for example, a mark representing a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football. It would be too much to expect that persons dealing with trade marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing.

I believe that although the trade marks are, according to the evidence, derived in completely different ways, they do, when in use, exhibit striking resemblances.  I note that the word portion of each trade mark is not immediately apparent to the purchaser when displayed  for sale in the manner I have outlined above.  Indeed, when Montblanc’s registrations of its device, solus, are considered, there is no additional benefit of the word MONTBLANC to aid in distinguishing the trade marks from each other.  The part of the trade mark which strikes the eye of the public on first inspecting the goods is the device on the top of the cap of the writing implement.  I note that in the comparison of these trade marks Boggis J stated in of Montblanc-Simplo GmbH v. Sepia Products Inc, above:

My findings are these:

(1) Sepia's sign is similar to Montblanc's mark.  There are only two differences, Montblanc has six bumps round its circumference as against Sepia's five, and Sepia has a coloured dot in the centre.  In my judgement, the two trade marks are very similar indeed.

(2) The goods concerned are identical.  They may be in different parts of the market but they are identical.

(3) Montblanc's mark is distinctive and has a reputation built up over many years…

(4) Because of the similarity of the sign and the mark and because the goods concerned are identical and because Montblanc's mark is distinctive, there does exist the likelihood of confusion on the part of the public ..

His Honour’s comments were given in the context of an infringement case, and some of the Law that he applied derives from the European Court of Justice.  However, I may make adjustments and discount his comments concerning reputation in the context of my considerations under section 44.  These comments are, in the context of the opposition under section 60, made as relates to the market place in the United Kingdom; however, given the reputation of Montblanc’s trade marks in Australia, they are applicable to this issue.

I agree that the trade marks are deceptively similar and (in terms of section 44) I am satisfied that there was a reasonable likelihood of deception or confusion if the relevant specifications of goods are considered at their widest.

In relation to section 60, the criterion as regards the specifications of goods is wider; however, I note that the specifications are, to all intents, identical.  I have noted that Montblanc’s trade marks have a very strong reputation in Australia and, because of that reputation, I am satisfied that the use of the Sepia trade mark would be likely to deceive or cause confusion

Decision

The opposition is successful in terms of sections 44 and 60 and I reject application 665383.

Costs

Costs will follow the event and I award Montblanc its cost against Sepia.

Ian Thompson
Hearing Officer

8 November 2000