National Distillers and Chemicals v Emery Chemicals Pty Ltd

[1996] ATMO 56

TRADE MARKS ACT 1955

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

Re:      Trade mark application 410876, EMERY, in the name of National Distillers and Chemical Corporation and opposition by Emery Chemicals Pty Limited

National Distillers and Chemical Corporation, a Virginian company located in New York  (hereafter referred to as National Distillers) applied to register the trade mark EMERY on 27 June 1984. This mark was accepted for registration in respect of chemicals used in industry. Acceptance was advertised in the Australian Official Journal of Trade Marks of 18 February 1988. 

Emery Chemicals Pty Limited, a New South Wales company of St Peters (hereafter referred to as Emery Chemicals) opposed this application. It lodged a notice of opposition on 15 August 1988 claiming various grounds under ss24, 28, 33 and 40 of the Trade Marks Act 1955. Scheduled to the notice of opposition is a list of eleven trade marks which Emery Chemicals claims are substantially identical and/or deceptively similar to the trade mark emery and which therefore constitute grounds for an objection under section 33.

Following this notice, Emery Chemicals lodged a succession of requests to extend the time allowed  for serving evidence to support its opposition. The statutory time, which is extendable, is 3 months (reg 43).  There were seven extensions each of three months, one of two months and one of one.  In sum, together with the initial statutory three months, this amounted to a total of 27 months.  In spite of the protracted time, Emery Chemicals did not file any evidence.  Moreover, in the subsequent three months which (per reg 44) is the time for the applicant  to serve evidence in answer, National Distillers did not serve evidence and did not request any additional time to allow it to do so. 

These circumstances brought on the provisions of regulation 49 and accordingly, in June 1991 the Registrar notified the parties that a hearing could be requested.  Time, however, ran on and neither side responded.  The application had by then been pending for some seven years, and the Registrar scheduled the opposition for hearing.  Both parties then pleaded for this opposition to be taken off the hearing list.  They said that negotiations were well under way and, with agreement to an amendment of goods, the opposition would be withdrawn.   With variations, this position has continued to the present.  The Registrar has repeatedly pointed to the time lapse and urged that matters be concluded. The parties repeatedly assured the Registrar that genuine negotiations were in train and on the point of finalisation. These negotiations, however, were apparently persistently dogged by a variety of adversities including:

- that the agents were overseas,
- that matters were ‘resolved in principle’ but waited final approval
- that international settlements were causing delays
- that the lengthy chains of communication were causing difficulties
- that the Deed of Settlement was mislaid
- that the Deed of Settlement was misfiled
- that Emery Chemicals was assigning its interest
- that Emery Chemicals’ assignee was changing its name
- that changed circumstances brought on further lengthy discussions
- that countersigning of the Deed of Settlement had not been achieved
- that company structural changes brought on another bout of delays
- that the Deed of Settlement  had to be revised

In August 1995, with the application now pending for some 11 years, the Registrar notified both parties that it was not in the public interest for the opposition to continue. They were allowed 21 days to provide reason why a delegate should not determine the opposition. Emery Chemicals then submitted a Deed of Settlement with assurances from its agent, H.R.Hodgkinson & Co, that settlement was being diligently and actively pursued. The agent pleaded for matters to be held over for another three months.  The Registrar agreed.  The three months ended with nothing further from either side. In April 1996 the parties were on a further 21 days notice that, unless very good reason, was put forward in declaratory form, the opposition would be scheduled for hearing.  The opposition was then listed for June 1996.  This hearing, on application from both parties, was deferred to July 1996 and finally to October 1996. In August 1996 both sides were advised that the October hearing would go ahead. Subsequent requests from both sides for further delays were rejected and the parties were advised that the Registrar declined consent to any further delay. 

On 14 October 1996, the hearing was conducted before me in Sydney.  The opponent, Emery Chemicals was not represented and made no submissions. The applicant, National Distillers, was represented at the hearing by Mr Brett Connor of Carter Smith and Beadle, patent and trade mark attorneys of Melbourne.  He attended by way of a telephone hook-up.

The Trade Marks Act1995

As of 1 January 1996 the Trade Marks Act 1995 came into force. Section 241 of that Act provides that applications which were accepted prior to 1 January 1996 are to proceed in accordance with the Trade Marks Act 1955.  This opposition therefore continues to be governed by the provisions of Part VI of the repealed Act.

Submissions

Mr Connor’s submissions were brief.  He said that with the exception of Ground (j), none of the grounds in the Notice of Opposition was supported.  Ground (j) says:

That the opposed trade mark is substantially identical with or deceptively similar to trade marks of which the opponent is proprietor as shown in Schedule A hereto.

Schedule A quotes 11 trade marks. Three of these marks have lapsed and two have been refused. Of the remaining six, four were lodged in 1988 (four years after the subject application) and do not fall within the ambit of section 33. The one mark that is live and predates the subject application is 292672(2). This trade mark is now registered in the name of Emery & Toby Coatings Pty Limited. It consists of the word emer-clad and is registered for

Coatings, particularly coatings for building components and including coatings applicable by spray, brush, roller or otherwise for the purpose of forming flexible membrane coatings or other types of coatings for the purpose of anti-corrosive protection, weather resistant and weather proofing of surfaces.

Mr Connor submitted that the trade mark emer-clad was neither substantially identical nor deceptively similar to  emery, and that emer-clad goods were not the same goods, or goods of the same description as the emery  goods. 

Consideration of the section 33 ground

Ground (j) is an argument that a section 33 objection exists. Under the provisions of the section two questions, broadly, determine the issue. First is whether the trade mark emer-clad is substantially identical or deceptively similar to emery.  Second, and in the event of at least one positive finding on the first question, the next question is whether the subject goods and those in the emer-clad registration are the same goods or are goods of the same description.

emery and emer-clad are clearly different in appearance, sound and meaning and according to the standard test[1] are not substantially identical.  

[1]  Shell Co. Australia Ltd v Esso Standard Oil (Aust.) Ltd (1963) 109 CLR 407

The tests for deceptive similarity are wider[2] and include the test for imperfect recollection.  The question, in this case, hangs on a comparison of the word emery  and the element emer, as it appears in the trade mark emer-clad.  emery  is a well known word meaning a granular mineral substance used for grinding or polishing - The Macquarie Dictionary. In addition, emery is a reasonably common surname and to many people will have surnomial connotations.  Emer, on the other hand, does not appear in The Macquarie Dictionary.  It is listed in Websters Third New International Dictionary as an abbreviation for emergency and it is a rare surname which appears seven times in the current Australian electoral roll count.  On this evidence, in the Australian context,  and for purchasers of class 2 coating materials, I think it unlikely that emer, particularly as it appears in the trade mark emer-clad, will be read as an abbreviation for emergency. Again I think it is not likely to be read as a surname, or an abbreviation of the surname Emery.  It seems to me that emer will be perceived as an invented element.  In sum I do not think that, even in circumstances of imperfect recollection, emer-clad is likely to be confused with the word emery.  On these considerations I am satisfied that the trade mark emery is not deceptively similar to the trade mark emer-clad.

[2] Pianotist Co.’s Application (1906) 23 RPC 774

I am aware that evidence of the meaning of emer was not encompassed in the Notice of Opposition, but the provisions of s50(2) entitle me to take them into account.

Having found that the words emery and emer-clad are neither substantially identical nor deceptively similar, it is not necessary for me to go to the question of the goods.  For the sake of completeness, however, but without comprehensively applying the tests identified in the case law[3],  I will make the following comments. Chemicals used in industry, on the one hand, and the membrane and anti-corrosive coatings comprehended under the emer-clad registration, do not appear to be the same things, or of the same nature.  They are not generally to be used for the same purposes.  Nor do they seem likely to be sold through the same trade channels. Emery Chemicals have put forward no evidence to the contrary, and I am therefore left with the view that the respective statements of goods should not be held to be the same goods or goods of the same description.

[3] Jellinek’s Application (1946) 63 RPC 59

I have found then that emery is neither substantially identical nor deceptively similar to trade mark registration number 292672. On this finding the opposition ground that trade mark 292672 constitutes an objection under the terms of s33, fails.

Decision

I agree with Mr Connor that, with the except for Ground (j), the opposition grounds amount to no more than unsubstantiated allegations. 

I find that Ground (j) does not stand up as a reason to hold that trade mark application 410876 fails under the provisions of section 33.

I therefore dismiss the opposition and direct that, subject to any appeal, application 410876 should proceed to registration.

Costs

Mr Connor did not apply for costs.  I would comment, however, that taking into account the history of this application, and the apparent co-operation between the parties which has been such a feature of this opposition, I do not think it appropriate to make any award of costs.  Had there been an application I would have rejected it.

Helen R. Hardie
Deputy Registrar

1 November 1996