Network Asia Pte Ltd, Re

[1993] ATMO 72

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Application number 535770 to register a trade mark in the name of Network Asia Pte Ltd

On 7 July 1990, the above named applicant, of Martin Road, Singapore, applied in Class 25 to register the trade mark BODS and device that appears below in respect of "Casual clothing for men women and children."

The examiner's report objected, inter alia, that the mark was objectionable in terms of sub-section 33(1) because it is deceptively similar to registrations 484251 and 487373, both in class 25.

Subsequent to the third adverse examiner's report, the applicant requested to be heard in the issue and was represented at a hearing on 30 July 1990 before me in Perth by Kelvin Lord, of Kelvin Lord and Company, Patent and Trade Mark Attorneys of Perth.

The details of the registrations that have been specified as bars to the acceptance of this application are:

A484251LE-BODZ                   Mens, Childrens, womens clothing and sportswear

A487373HOT BODS                All goods in this class including clothing, footwear and headgear.

Sub-Section 33(1) reads

Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, [...] by another person in respect of the same goods , of goods of the same description as those goods [...], unless the date of registration  of the first-mentioned trade mark is, or will be, earlier than the date of the second-mentioned trade mark.

As the goods are the same goods and the marks are not substantially identical, the question that remains is whether the marks here are deceptively similar in terms of sub-section 33(1), above.

Deceptive similarity   This is to be assessed not by a detailed side by side comparison of the marks but by an estimate of the impression and recollection which the marks will induce in the mind of the customer.  The rules, or guide-lines, for comparing marks were considered by Dixon and McTiernan JJ. in Australian Woollen Mills Ltd v. F. S. Walton & Co. Ltd., (1939) 58 CLR 641, at 658:

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 [...]  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 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.

A slightly differing approach was taken by Parker J. in Pianotist Co's Appn (1906) 23 RPC 774, at 777:

You must take the two words.  You must judge 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 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.

I believe that the applicant's mark will be known as the BODS mark.  BODS is the only readily identifiable feature in the mark; and, it is the only feature for which a word or name is immediately identifiable.

The major feature in the marks that have been cited against this one is the word BODS, or the phonetic equivalent, BODZ.  The word is the major, or only, distinctive feature in the marks that have been cited as being bars to the registration of this mark.  To view the marks differently would leave oneself in the position of seeing no grounds under which the earlier marks could have been accepted.  Whilst this is so, I am concerned that a person on requesting the applicant's goods by name will be presented with goods that are sold under either cited mark.  The applicant, via its legal representatives at the hearing of the issue, was unable to reassure me that this was not so.  The agent placed reliance on Mars GB Ltd v Cadbury Ltd. [1987] RPC 387, and stated that clothing is increasingly sold through self-service chain-stores. I would readily agree that this is so: however, I am bound to consider that the goods sold under the prior marks and the goods sold under this mark might be sold through any type of retail establishment from the most humble to the most salubrious.  I have no information before me on how the applicant's goods are, in fact sold.  I have no information as to how the goods under the prior registrations are sold and must assume that they are to be sold in several like manners: Smith Hayden & Co. Ltd's Appn. (1946) 63 RPC 97.

The applicant, as per Dunn's case (1890) 7 RPC 311, is in petitorio and bears the onus of demonstrating affirmatively that the use of its mark will not confuse or deceive.  This it has not done to my satisfaction.  Accordingly, the application must be refused.

The fact that there are two earlier registrations has been, in itself, presented by Mr Lord as a reason for accepting this application.  I told Mr Lord at the hearing that I believed that it was possible to reconcile the acceptances of the two earlier marks.  If it was not possible to reconcile those acceptances and the latter one had been an error, I can see no reason for accepting this application: it would merely be compounding whatever mistakes might already have been made.

In his submissions, Mr Lord placed much stress on the fact that there have been two prior acceptances of marks incorporating the word BODS, or its phonetic equivalent.  Mr Lord drew my attention to a Canadian Administrative Law Decision, Canadian Parking Equipment Limited v Registrar of Trade-marks Court No. T-1627-85.  In this decision, apparently, several acceptances had been made of marks that were particularly non-distinctive.  The applicant's mark had been rejected because of its non-distinctiveness, but no attempt had been made, despite the applicant's request, to reconcile those acceptances with the rejection of its mark.

I must observe, with the very greatest of respect to Mr Lord, that the circumstances here are quite different and it is difficult, even were the Registrar's comments in Rozenfeld (Lazanis) Pty Ltd Appn (1941) 11 AOJP 1047 to be somehow reconciled with this piece of foreign law, to see how two conflicting trade marks in terms of section 33 of the Australian Act can be equated with any great certitude to the Canadian equivalent of either of sections 24 or 25 and through that to their administrative law.

I therefore refuse to register application 535770.

Ian Thompson
Senior Examiner
Trade Marks Hearings

20 August 1993