Newport Electronics, Inc v Newport Scientific Pty Ltd

[2000] ATMO 110

TRADE MARKS ACT 1995

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

Re:Opposition by Newport Electronics, Inc to registration of trade mark application 730886(9) - Newport Scientific & Device- filed in the name of Newport Scientific Pty Limited.

Background

This issue arises out of the filing, on 25 March 1997, by Newport Scientific Pty Limited, Warriewood, New South Wales, ('the applicant'), of an application to register the trade mark appearing below in respect of the goods appearing thereunder:

 

('the trade mark')

Class: 9  

Analysis equipment

Following examination of the application, it was accepted and advertised in the Australian Official Journal of Trade Marks on 16 July 1998 with the two following endorsements:

Provisions of subsection 41(5) applied.

Provisions of subsection 44(4) applied.

The former endorsement arises out of an examiner's objection to the geographical nature of the word NEWPORT and was not the subject of submission during the hearing.  The latter endorsement arose from another objection by the examiner based on the provisions of section 44 and pre-existing registration 626126 in the name of Newport Electronics, Inc., details of which occur later in these reasons.  As I will discuss in more detail below, subsection 44(4) provides an exception to the provisions of subsections 44(1) and (2) by permitting registration of a trade mark where use of that trade mark predates the priority date of the registered trade mark cited as a bar to registration of that trade mark under the provisions of subsections (1) or (2).

On 15 October 1998, within the time provided to do so, Newport Electronics, Inc, ('the opponent') filed notice of opposition to the registration of the trade mark.  The grounds of opposition, which were argued at the hearing, will become apparent within my reasons below.

This matter was the subject of a hearing before me as a delegate of the Registrar of Trade Marks in Canberra on 14 August 2000.  Mr Christian Schieber of Watermark, Patent and Trade Mark Attorneys represented the applicant.  Mr Ben Fitzpatrick of Counsel, instructed by Mrs Florence McFarlane of Freehills Carter Smith Beadle, represented the opponent.  Prior to giving my reasons, I will discuss the grounds and the evidence.

The Grounds

The grounds argued at the hearing were under section 44 and 58.  The section 58 ground was formally abandoned at the hearing when I advised Mr Fitzpatrick that I did not consider the trade marks to be substantially identical.

The evidence

The evidence I am to consider may be summarised thus:

Declarant	Referred to as	Date Made	Exhibits
Rodney Booth	Booth (Examination)	2 June 1998	A to I
Ralph S Michel	Michel 1	8 January 1999	1 to 8
Rodney Booth	Booth	11 June 1999	RB-1 to RB-8
Ian Leslie Batey	Batey	13 May 1999	CSIRO 1 & CSIRO-2
Graham John McMaster	McMaster	10 May 1999	BRI-1 & BRI-2
Ralph S Michal	Michael 2	12 November 1999	RSM-1
Christian Schieber	Schieber	3 July 2000	CJS-1 & CJS-2
Florence McFarlane	McFarlane	31 July 2000	FM-1

The Booth (examination) declaration was presented in support of the application, prior to acceptance.  Both parties referred to this declaration in their submissions.  Also, I will mention here that the 'declaration' of Florence McFarlance is unsigned.  Curiously, however, a Mr David Gibson witnessed the execution of her signature (which does not appear).  The exhibit to the McFarlane 'declaration' is a photocopy of a deposition filed in proceedings between these parties in the United States Patent and Trademark Office (USPTO) before the Trade Mark Trial and Appeal Board (TMTAB).  The deponent is a Mr Michael Buskirk.  I will refer to this deposition as 'Buskirk' but, in view of the informal nature of the McFarlane declaration, I am not inclined to weight it as fully as I do the other declarations.

The evidence shows that the applicant makes equipment for assessing the physical properties of, and enzymic composition of, or activities in, foods.  Although it is never expressly stated in the evidence, I gather that the applicant uses the trade mark as a house mark and uses the words RAPID VISCO as a product trade mark or brand.  As well as the RAPID VISCO product, the applicant has made a grain soundness analyser (GSA); but it is not clear from the evidence whether the applicant still makes that product - indeed, it might be inferred that production of the product ceased before the applicant was incorporated in 1986.

The evidence led by the applicant appears to be poorly organised and contains statements which, on their faces, conflict with each other.  For example, the applicant states in both the Booth (examination) and Booth declarations that it was incorporated in 1986.  It also states that since 24 February 1986 the trade mark has been continuously used in relation to analysis equipment.  However, the applicant provides a picture of a GSA bearing the trade mark made in 1985, and further confuses the picture by stating in the Booth (examination) declaration that it had no sales for the year 1985/86 (or 1986/87).  This in turn conflicts with the later Booth declaration, which states that the applicant sold six units in 1986/87. 

I am not sure whether this lack of clarity in the applicant's statements stems from a simple failure to realise that use of the trade mark dates from the first use of the trade mark, not the date of the applicant's incorporation.  This could explain some of the applicant's apparent confusion; however, it could not explain why it states in one declaration that it sold six units in 1986/87 whilst in the other declaration it says that it sold no goods that year.

Further, this lack of clarity suggests that I should exercise some caution in my assessment of the balance of the applicant's statements.

It would seem that, whatever the early trading history of the applicant is, it has grown from those relatively modest beginnings.  It is now a medium sized concern which is selling its food analysis equipment not only in Australia but also overseas in countries such as the US, the UK, Germany, France, Italy and Thailand where they are used by major food producers, flour millers, universities and research institutes.  The applicant's turnover is confidential but was, at the priority date, respectable rather than significant.

The Batey and McMaster declarations are, respectively, made by a CSIRO scientist and a CEO of an analytical services company.  They are in very similar form; however, this was not the subject of comment by Mr Fitzpatrick at the hearing, but I am not inclined to weight them as I would if they were more obviously independent.  The declarants attest to their knowledge of the applicant's product and trade mark and their lack of knowledge of analysis equipment made by the opponent.

The Booth declarations, collectively, state that the applicant was unaware of the opponent's trade mark at the time the applicant's trade mark was adopted.  The applicant only became aware of the opponent's trade mark when its patent and trade mark attorneys conducted a registrability search prior to the filing of this application.  The applicant states that it adopted this trade mark because the business started at an address at Newport Beach in Sydney and because the word NEWPORT had an international flavour.

The opponent manufactures various panel and hand-held meters, data loggers, sensors and controllers each of which has a large range of applications.  The opponent started making electronic instrumentation in 1965 and subsequently first used its trade mark in Australia in 1983.  Considering the nature of the opponent's goods, sales levels in Australia have been very modest.  Those figures which have been supplied to me show a marked decline from a level that could be categorised as salary level in 1993 to a subsistence level in 1997. 

The opponent is the owner in Australia of registered trade mark 626126, brief details of which are:

Reg Number:   626126
Owner:  Newport Electronics, Inc.
Priority Date:  28 March 1994

Goods:Electronic apparatus industrially and/or scientifically employed for measuring, metering, gauging, counting, checking, calculating, calibrating, detecting, identifying, monitoring, recording, tracing, timing, testing, indicating, analyzing, weighing, displaying, datalogging, sensing or controlling variable parameters such as temperature, pressure, force, load, vibration, electrical conductivity, liquid level, acidity, humidity, strain and flow as well as computer controlled measuring, timing and display apparatus and software, parts and fittings for use with the foregoing intended for science or industry

(Thereafter follows a detailed three page listing of the specific goods for which the trade mark is registered and which goods fit within the general headings, above.)

Trade Mark:   

The nub of the Buskirk deposition before the USPTO TMTAB is that the opponent sells its equipment to the food processing industry.

Reasons

As Mr Scheiber argued that the trade marks in question are not subject to the provisions of section 44, I will discuss the issue as it relates to that section in full.

Section 44 provides:

Identical etc. trade marks

44.(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.

(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

(a) it is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar services or closely related goods; or

(ii) a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1: For deceptively similar see section 10.

Note 2:  For similar services see subsection 14(2).

Note 3:  For priority date see section 12.

(3) If the Registrar in either case is satisfied:

(a) that there has been honest concurrent use of the 2 trade marks; or

(b) that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:  For limitations see section 6.

(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

(a) beginning before the priority date for the registration of the other trade mark in respect of:

(i) the similar goods or closely related services; or

(ii) the similar services or closely related goods; and

(b) ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1:  An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:  For predecessor in title see section 6.

Note 3:  For priority date see section 12.

The relevant subsections of section 44 are, here, subsections (1) and (4) as only goods are involved and since the applicant is relying on the exception provided by the latter subsection.

In terms of subsection 44(1), there are a number of questions that I should consider.  These are:

¨Whether the priority date of the opponent's trade mark is earlier than that of the applicant's.

¨Whether the goods of the application and the opponent's registration are the same or closely related.

¨Whether the trade marks are substantially identical or deceptively similar

Priority Date

In respect of the initial question, I note that the priority date of registration 626126 on which the opponent relies is 28 March 1994.  The priority date of this application is 25 March 1997.  The registration on which the opponent relies thus has an earlier priority date than that of the applicant.

The Goods

Mr Schrieber argued at some length that the goods of the applicant and those of the opponent are neither the same or closely related goods.  He drew my attention to the applicant's specification of goods which is "analysis equipment" as against the metering, data-logging, measuring, etc nature of the opponent's goods.  Mr Fitzpatrick argued to the contrary and drew my attention to the test in Re Application by Smith Hayden & Co Ltd (1946) 63 RPC 97 at 101.

The term similar goods is defined within subsection 14(1) which provides:

Definition of similar goods and similar services

14.(1) For the purposes of this Act, goods are similar to other goods:

(a)       if they are the same as the other goods; or

(b)       if they are of the same description as that of the other goods.

The term 'analysis', within the sense in which it appears it might be used in the applicant's specification of goods, is defined in the Oxford English Dictionary thus:

1. The resolution or breaking up of anything complex into its various simple elements, the opposite process to synthesis; the exact determination of the elements or components of anything complex (with or without their physical separation).

3. Chem. The resolution of a chemical compound into its proximate or ultimate elements; the determination of the elements of which it is composed; or, in the case of a substance of known composition, such as water, of the foreign substances which it may contain.

When the analysis determines only what the elements are, it is qualitative; when it determines the quantity of each present, it is quantitative; the latter is gravimetrical or volumetrical according as the weights or the volumes of the elements are measured.

The term, 'analysis equipment', while not seeming to be grammatically correct in the context of the above definitions, thus apparently encompasses such individual goods of the opponent as (for example) ph meters, accelerometers or data-loggers.  But also, because the word 'analysis' may denote measurement or resolution of a number of parameters, the term embraces any number of the opponent's goods when they are used in conjunction, or tandem, which they are obviously meant to be.

Beyond this, there are further goods within the opponent's daunting specification which are seemingly 'goods of the same description' as 'analysis equipment'.  Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ in Southern Cross Refrigerating Co v Toowomba Foundry Pty Ltd (1954) 91 CLR 592 , said:

The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods: see Re Australian Wine Importers Ltd (1889) 41 Ch D 278 at 291; Reckitt & Colman (Aust) Ltd v Boden (1945) 70 CLR 84 per Latham CJ at 90. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in Re Jellinek’s Application (1946) 63 RPC 59; 1A IPR 393. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s case the assistant comptroller elaborated on the observations of Romer J in the following manner.

In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application Romer J classified these various factors under three heads, viz the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasised that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description”.

I do not wish to conduct an exhaustive analysis of the opponent's specification of goods in the light of the above test.  However, when the nature of the (I quote) "measuring, metering, gauging, counting, checking, calculating, calibrating, detecting, identifying, monitoring, recording, tracing, timing, testing, indicating, analysing, weighing, displaying, data-logging, sensing or controlling" characteristics of the opponent's goods are considered, it would seem that if they are not the same goods as 'analysis equipment' they are most certainly of the same description.

The trade marks

At the hearing of this issue, I indicated to Messrs Schrieber and Fitzpatrick that that I did not consider the trade marks in question to be substantially identical and that I would confirm my reasons for this in these written reasons.

The classic test of what constitutes substantial identity is that set out by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414–15:

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 …

When the two trade marks in question are placed side by side, there are many differences; indeed, the only thing in common between them is that they both contain the word NEWPORT.

 

Apart from the commonality of the word NEWPORT, the trade marks above, are, when compared side-by-side, visually distinct and there is no common identity.

As regards deceptive similarity, in The Shell Co, above, at 415, Windeyer J said:

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. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v.F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "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" (1937) 58 CLR, at p 658.

Further, Lord Parker (then Parker J) in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777), suggested some guidelines for the comparison of trade marks. He 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.

Mr Schriever, for the applicant argued that the trade marks both have a geographic tinge and that this element of the trade mark could, accordingly, be discounted - effectively, the principle in Mond Staffordshire Refinery Co Ltd v Harlem (1929) 41 CLR 475 at 477; Coca-Cola Co (Canada) Ltd v Pepsi-Cola Co (Canada) Ltd (1942) 59 RPC 127 applies.

Further, Mr Schrieber submitted that the goods are of a specialist nature, are expensive and likely to be bought by people with technical knowledge.  Thus, the canons in LANCER Trade Mark Application [1987] RPC 303; and Re Application By Retec Ltd (1988) 12 IPR 413 hold true.

I agree with Mr Scrieber to a limited degree as to the nature of the word NEWPORT but disagree with him as to the nature of the goods.  The word NEWPORT is geographical but it is neither a prominent geographic location nor have I been shown that any of the places which are called NEWPORT in the world is a source of the goods which are here in question.  The geographical impact of the word is thus, I believe, not strong.  It is not a word which other traders in a place called NEWPORT would immediately need to use to indicate the source of their goods or services.

The applicant's and opponent's specifications of goods must be read at their widest and I must consider what the applicant might do within the limits of its specification of goods should it achieve registration.  In Re Application by Smith Hayden & Co Ltd (1946) 63 RPC 97 at 101, it was said:

… assuming user by the opponents of their trade marks in a normal and fair manner for any of the goods covered by the registration of their trade marks, am I satisfied that there will be no likelihood of deception or confusion among a substantial number of persons if the applicants also use their trade mark normally and fairly in respect of any goods covered by their proposed registration.

In Registrar Of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 French J said of the above 'notional user' test (applicable under section 12 of the UK Act, section 33 of the 1955 Act and section 44 of the 1995 Act) in Smith Hayden, supra:

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.

The specification of goods, 'analysis equipment' does, I believe, include some very inexpensive pieces of equipment such as could be bought at any electronics retailer.  Therefore, I do not think that the principles in Lancer, or Retec, above, apply.

I consider that the impression I get from the two trade marks is of the dominant word NEWPORT with a device of some sort on the left side of the word.  I believe that this is how the trade marks will be remembered and recalled by a person when he or she goes to purchase goods carrying the trade mark.  I also note that the word NEWPORT is how the goods will be requested during the process of a purchase.

Section 10 of the Act defines the term deceptively similar, used within subsection 44(1):

Definition of deceptively similar

10. 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.

In Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411, at 428, French J said of deceptive similarity:

[050] In  Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594–5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

(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 Bali Co Inc (1973) 129 CLR 353; at 362; 1 ALR 443; at 450:

… 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.

I am satisfied in the light of my prior discussion and the above tests that the trade marks in question are deceptively similar.

As I have found that the trade marks are deceptively similar, the opponent's trade mark has the earlier priority date and the goods to the same or closely related, the applicant's trade mark is not registrable in terms of subsection 44(1).

Subsection 44(4)

Subsection 44(4) provides an exception to subsection 44(1) where the owner of an application can show continuous use from a date prior to the priority date of the conflicting registration to the date on which the application was filed.  The priority date of the conflicting application is 28 March 1994; the priority date of this application is 25 March 1997.  The applicant therefore needs to show use from at least 27 March 1994 to 25 March 1997.

Mr Fitzpatrick was critical of the applicant's evidence that it had used the trade mark continuously within the requisite period.  However, I think that, in this forum, it is appropriate to look at the evidence of each party as a whole.  For instance, the criticisms that Mr Fitzpatrick had of the applicant's evidence were, I believe, equally true of the opponent's evidence in its attempts to establish its opposition in terms of section 58 of the Act.

The applicant has provided a long list of its customers, which are Australia-wide and overseas. Given the specialised market for its goods, and given the yearly sales figures which are provided both in the number of units sold, and the dollar value of sales each year, I am satisfied that the use of the trade mark has been continuous.

Mr Fitzpatrick also argued that I have a residual discretion to refuse the trade mark which arises out of the use of the word 'may' in subsection 44(4).  Mr Fitzpatrick pointed to the opponent's first use of its trade mark in Australia and the potential for confusion or deception arising from the concurrent use of the trade marks.  Mr Fitzpatrick also returned to his theme concerning the evidentiary onus on the applicant - this, I think, I have already addressed sufficiently, above.  Mr Fitzpatrick did not point to any other reason why I should exercise my discretion this way.

I believe that the word 'may' within the section allows for the operation of other provisions of the Act under which an application could be rejected or successfully opposed.  In this way, the Registrar is not bound to register a trade mark which should have otherwise been rejected.  I further consider that the use of the word 'may' allows a discretion to the Registrar to give a direction to an applicant in order that the potential for deception or confusion, which must of necessity arise, can be minimised.  In short, it allows me to take the course which I will adopt in my decision.

The term 'analysis equipment' in the applicant's specification of goods is too broad and includes many goods on which the applicant has not shown that it has had any use at all.  The Booth (examination) declaration is exceptionally vague and it is only from the attachments to the declaration that one might gather that the equipment produced by the applicant is exclusively made to analyse the physical, chemical and biological properties of food.  In the face of a prior trade mark which the applicant knew would most certainly be cited as conflicting, and in the face of a probable opposition, such breadth and non-specificity in the specification of goods is quite puzzling.

Decision

The opponent has been successful in its opposition to the extent that the applicant has not used its trade mark in respect of all of the goods claimed in the specification.  It is inappropriate in terms of section 44(4) to permit registration of a trade mark in respect of conflicting goods where no use in relation to those goods has been shown.  Accordingly I must refuse the application.

However, I direct that the application may proceed to registration after 30 days from the date of this decision, on payment of the appropriate fees and subject to the amendment of the goods to read:

Equipment for the analysis of the physical, chemical, biochemical and biological properties of raw and processed foods.

If the Registrar has been served with a notice of appeal before the elapse of thirty days, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

The opponent, having been successful, is entitled to its costs, which I award against the applicant..

Ian Thompson
Hearing Officer

14 October 2000