New Tel Communications Pty Ltd v New Tel Limited (Formerly Transom International Limited)

[2002] ATMO 48

TRADE MARKS ACT 1995

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

Re:      Opposition by New Tel Communications Pty Ltd to registration of trade mark applications 796143, 796144(9, 38) - NEW TEL - filed in the name of Transcom International Limited (now New Tel Limited).

Background

Trade mark application number 796143 is an application to register the words new tel for the following goods and services:

Class 9Computers; computer peripheral devices; computer software (recorded); data processing apparatus; telephone switching systems including for land line and wireless communications; telephone apparatus; telephone wires

Class 38Cellular telephone communications; communications by computer terminals; communications by fiber optic networks; communications by telephone; electronic mail; information about telecommunication; message sending; paging services (radio, telephone or other means of electronic communication); satellite transmission, telephone services

Trade mark application number 796144 is an application to register the device as shown below for the same goods and services:

The applications were filed on 2 June 1999 ("the relevant date") by Transcom International Limited of Herdsman Western Australia ("the applicant"). 796143 and 796144 were duly examined and, on 13 January 2000, the Registrar advertised, in the Australian Official Journal of Trade Marks, that he accepted these trade marks for registration.

On 13 March 2000, in accordance with Part 5 of the Trade Marks Act 1995 ("the Act"), New Tel Communications Pty Ltd, of Sydney New South Wales ("the opponent") filed opposition to the registration of 796143 and 796144. The Notice of Opposition listed nine grounds of opposition. However, seven of these grounds were neither supported by the evidence nor argued by the opponent. Thus, I find those grounds have not been established. The remaining grounds are those under sections 58 and 60.

The opponent served on the applicant, and filed with the Trade Marks Office, evidence in support of the opposition.

There is no evidence in answer from the applicant. By letter dated 6 March 2002, the firm of attorneys acting for the applicant advised the Registrar that the applicant's name has changed to New Tel Limited.

Neither party has requested to be heard in this matter. Accordingly, the matter has come to me as a delegate of the Registrar of Trade Marks to decide on the material held on the file.

The Evidence

The evidence in support of the opposition comprises a statutory declaration by George Frederick Larcher, Director for the opponent, dated 12 September 2000, and a statutory declaration by Terence John Wenban, operations co-ordinator for the opponent, dated 11 September 2000.

Mr Larcher states that he has been a director of the opponent since 2 April 1996. His evidence includes the following relevant facts:

• The opponent company conducts the business of sale and service of telecommunications and communications equipment;

• The opponent first used its mark (shown below and which I shall refer to as the "globe mark") at its opening of a showroom in York Street Sydney on 1 July 1998:

• Since 1 July 1998, the opponent has used its mark at the entrance to its showroom; on its letterhead, business cards, advertising brochures, and other stationery and signage;

• The mark has been used in the opponent's advertising in the 1999 and 2000 Sydney Yellow Pages;

• The mark has been used extensively on advertising and promotional material for the opponent;

• Account executives and telemarketers made presentations and forwarded literature, both displaying the mark, extensively since August 1998;

• The opponent's turnover in Australia (comprising sales of products and services) since July 1998 has been:

• 1 July 1998 to 30 June 1999 - $1,080,000

• 1 July 1999 to 30 June 2000 - $1,152,430

• The opponent's advertising expenditure in Australia since July 1998 has been:

• 1 July 1998 to 30 June 1999 - $31,516

• 1 July 1999 to 30 June 2000 - $40,343

• The opponent has received substantial amounts of telephone calls and electronic mail from people confusing the opponent with the applicant.

Mr Wenban's declaration states that since he commenced employment with the opponent on 17 January 2000 his duties have included receiving and responding to telephone and electronic mail inquiries from members of the public. During that time he states that he has received an average of eight telephone calls and 15 pieces of electronic mail per business day from people inquiring or complaining about the applicant's products or services.

The Section 58 Ground

Section 58 of the Act states:

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

Ownership of a trade mark may be established by showing who had first use in Australia of the same trade mark, or of a substantially identical trade mark, in respect of "the same kind of thing", before the priority date of the application: Re Hicks' Trade Mark[1]; Carnival Cruise Lines Inc v Sitmar Cruises Ltd[2]. In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd[3], Windeyer J states:

[1] (1897) 22 VLR 636

[2] (1994) 31 IPR 375 at 391 ("Carnival Cruises")

[3] (1963) 109 CLR 407, at 414

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 feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

In considering the applicants’ trade marks alongside the opponent’s registered trade mark, I think that the total impression that emerges is one of substantial identity.

Registration 796143, new tel, is a simple word mark. The opponent's globe mark is a composite mark comprising the words new tel highlighted in a bold font and superimposed over the word communications together with the device of a globe. On a side by side comparison these two marks clearly share the essential feature of the words new tel. The difference, a globe device, is simply a commonly used background device.

Registration 796144 is a composite word and device mark. The mark comprises the word "New", in a sans serif font, followed by the word "Tel", having a grotesque "e", superimposed on a dark rectangle, which has a contrasting curved device. Below this are the words "new communications now". This device is visually different to the opponent's globe mark comprising the words "New Tel" in a bold font with serifs above the word "communications", all surmounted on a globe with meridians. I note that the evidence tendered in these proceedings shows the new tel word element of the globe mark clearly dominating the remaining elements. As I have mentioned earlier, the globe device is simply a commonly used background element. The competing device marks, too, shared the essential feature of the words new tel. Additionally however they both also share a similar sub-title of "communications". This sub-title is essentially descriptive in nature and can be discounted for comparison purposes. Overall, the differences in the device elements of the competing marks are merely colourable.

While the contested marks are neither literally identical nor visually identical, it is clear from the dicta of Gummow J in Carnival Cruises, supra, at 391, that this is not required. What is required is a total impression of similarity to emerge from a comparison between the contested marks and, in a real sense, for a claim to proprietorship of one mark to extend to the other(s). I am satisfied that the contested marks satisfy these criteria. In my opinion each of the marks could properly be characterised as "the new tel mark". The first party to use the new tel mark can rightly claim to be the proprietor.

The evidence shows that the opponent has been using its mark since 1 July 1998. There is no evidence that the applicant has used its marks before the relevant date. Therefore, I am satisfied that the opponent has demonstrated first use of the new tel mark.

The second limb of this ground is that the contested marks be "in application to the same kind of thing". I am satisfied that the evidence does not suggest any particular difference in the character or quality of the goods and services provided by the respective parties.

I am satisfied that the section 58 ground is made out.

The Section 60 Ground

Section 60 of the Act provides:

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.

Accordingly, to satisfy section 60, the opponent has the burden of establishing the following elements:

1. a pre-existing trade mark;

2. substantial identity or deceptive similarity between the applied for trade mark and the pre-existing trade mark;

3. the acquisition, by the priority date, of a reputation in Australia by the pre-existing trade mark; and

4. a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

Under section 60, the opponent may rely on a trade mark which is not registered, but which has been used at common law. To establish such use, it must show that it has been used as a "badge of origin" - as confirmed by Gummow J in Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd[4], where at 25 he says:

[4] (1991) 21 IPR 1

[t]he primary function of a trade mark registered in Part A or B of the Register is that of distinguishing the commercial origin of goods or services sold under the mark.  The registered mark serves to indicate, if not the actual origin of the goods or services, nor their quality as such, the origin of that quality in a particular business, whether known or unknown by name.

As mentioned above, the opponent's company has been selling and providing service of telecommunications and communications equipment since 1996, and has used the globe mark in its showroom, on its stationery since 1998, in the Sydney Yellow Pages since 1999 and has incorporated it in its advertising. It has been used to indicate the commercial origin of goods and services. The opponent's evidence demonstrates to my satisfaction that its mark has been used as a trade mark since July 1998.

I have already determined that the opponent's mark and the application mark are substantially identical. It is not necessary to determine whether or not they are deceptively similar.

The next question in respect of the section 60 ground, however, is whether the opponent has shown a sufficient reputation in its trade mark to satisfy the requirements of subsection 60 (b), such that the reputation is wide enough that deception and confusion is likely. On a careful assessment of the supporting material, I am not satisfied that the opponent has adduced sufficient evidence to establish that it has acquired a reputation in Australia before the relevant date.

In the period from first use of the mark (1 July 1998) to the relevant date (2 June 1999), the evidence shows turnover of approximately one million dollars, advertising expenditure of approximately $30,000, and a marketing campaign. While this information is relevant to the issue, when one considers the short period of time that the globe mark has been in existence it does not go far enough to demonstrate requisite reputation. I am not satisfied that the evidence establishes reputation in the globe mark.

The factors I have considered in reaching this conclusion are as follows:

• The short period of time that the globe mark has been in existence: less than a year

• The turnover is significant, but sales alone do not show that a reputation exists.

• The evidence does not show the sales volume, or what proportion of sales was made under or by reference to the globe mark. Nor is there evidence about the effect of advertising upon consumers, for example consumer surveys.

• The Yellow Pages referred to show that the parties exist side by side on the same page of this directory, and the similarity in names in conjunction with their co-location is likely to have contributed to the frequent confusion referred to by Mr Larcher.

Having found that there was not sufficient acquisition of reputation, it is not necessary to examine the likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

In the circumstances, I am not satisfied that the opponent has made out its section 60 ground.

Conclusion

I have decided that the section 58 ground of opposition has been established in relation to both applications. Accordingly, in accordance with section 55 of the Act, I refuse to register the application marks. I make no order as to costs.

Jock McDonagh
Hearing Officer
31 May 2002