Omega Ltd) v Mark Robinson

[2011] ATMO 48

TRADE MARKS ACT 1995

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

Re:Opposition by Omega SA (Omega AG; Omega Ltd) to registration of trade mark application 1210786(28) - OMEGABEE - filed in the name of Mark Robinson & Brenda Robinson.

Delegate:

Alison Windsor

Representation:

Opponent:  Peter Hallett of Watermark Patent and Trade Mark Attorneys

Applicants:  Mark Robinson and Brenda Robinson

Decision:

2011 ATMO 48

S52 opposition:  grounds pursued under ss 44, 59 and 60 - no ground established - application to proceed to registration – costs awarded against opponent.

Background

1. Mark Robinson and Brenda Robinson (‘the applicants’) applied to register a trade mark, current details of which are shown below:

Application number:  1210786

Filing date:  18 November 2007

Goods/class:  Class 28:  Games, toys and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Trade mark:  OMEGABEE

1. The application was examined as required by section 31 of the Trade Marks Act 1995 (‘the Act’) and, after minor amendment to the goods claim, was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 15 May 2008.

2. After being granted an extension of time for the purpose, Omega SA[1] (‘the opponent’) filed a notice of opposition (‘the Notice’) to registration of the trade mark. The Notice is couched in the broadest possible terms claiming all grounds for opposition provided by the Act.

   [1] Omega SA (a French rendering of the company name) is also known as Omega AG when rendered in German and Omega Ltd in English.  The three versions of the company name reflect that there are three languages spoken in Switzerland where Omega is based.

3. The service and filing of evidence in support and answer as provided for by the Trade Mark Regulations 1995 (‘the Regulations’) followed in due course.  The opponent’s application for an extension of time to serve evidence in reply was refused and on 22 February 2011 the opponent requested that the opposition be heard.

4. As a delegate of the Registrar of Trade Marks, I heard the parties in Melbourne on 3 May 2011.  The opponent was represented by Peter Hallett of Watermark Patent and Trade Mark Attorneys.  Mark and Brenda Robinson appeared on their own behalf.

Evidence

1. The evidence provided consists of the following declarations:

Evidence in support

• Peter Stierli, made 31 March 2010, with Exhibits JCM-1 to JCM-14
• Peter Leonard Hallett, made 9 March 2010, with Exhibits PLH-1 to PLH-2

Evidence in answer

• Mark Robinson, made 4 September 2010, with Exhibit OB-1

Grounds for opposition pursued and onus

1. Despite having nominated on the Notice all possible grounds provided by the Act, at the hearing the opponent only pursued those grounds of opposition under sections 44, 59 and 60 of the Act. For completeness, I decide that the grounds nominated on the Notice but not pursued at the hearing have not been established.

2. The onus is on the opponent to establish a ground for opposition in order to succeed.  The standard of proof is the balance of probabilities.[2]

   [2] Pfizer Products Inc v Karam (2006) 70 IPR 599, per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 82 IPR 13 at [22] to [26].

Discussion and Reasons

1. At the hearing Mr Hallett discussed the opponent’s chosen grounds in numerical order and I will do the same here. The first ground for consideration is that under section 44 of the Act.

Section 44 – identical etc. trade marks

1. Section 44 of the Act relevantly provides:

   Section 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.

   Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

2. The opponent submitted that the application trade mark is deceptively similar to each of three trade marks, relevant details of which are shown below:

Trade mark No & Owner	Priority date & Status	Trade Mark	Goods claim
556245 (Omega SA)	21 May 1991 (Registered)[3]	Class 28 - Skis and boards for water and snow sports; board games and toys
749932 (Brosnan Golf Pty Ltd)	1 December 1997 (Registered)	OMEGA	Class 28 – golf clubs, golf balls
1171274 (Opel Eisenach GmbH)	12 April 2006 (Under examination – deferred)	OMEGA	Class 28:  Games, toys, model cars, slot cars and parts thereof

[3] Mr Hallett noted that the applicants have applied to have this registration removed for non-use.  I agree with his comment that this fact is irrelevant for the purposes of the current opposition.

1. All three trade marks have earlier priority dates than that of the application, and there is no question that their specifications contain similar goods to those which the applicants are claiming. However, the provisions of section 44 are not fully met unless the trade marks under consideration are substantially identical or deceptively similar.

2. The matter of substantial identity was not pursued, and I am satisfied that this approach is appropriate. The opponent submitted that the application trade mark is deceptively similar to the three trade marks which it had identified. Section 10 of the Act states that a trade mark is deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

3. The opponent submitted the following in respect of its argument that the respective trade marks are deceptively similar and therefore likely to cause confusion:

   The test to be applied under section 44 (Regulation 4.15A) involves an assessment of the likelihood of confusion having regard to the notional fair and normal use of the prior mark and the mark under consideration - e.g Coca Cola v All-Fect Distributors Ltd (1999) [96 FCR 107]. For present purposes, the extent to which the Opponent has used its mark in respect of class 28 goods is not relevant, as the test requires a hypothetical assessment of how the marks might fairly be used for all of the relevant goods.

   It is well established that for the purposes of comparison, greater weight should be given to distinctive material, and the presence of non-distinctive material should be discounted. 

   The essential (or only) feature of each of the Prior Marks is the word OMEGA.  The mark OMEGA is highly distinctive – it has no descriptive or other significance in connection with the relevant goods. 

   On the other hand, the word BEE is not particularly distinctive, particularly in connection with games and playthings.  The essential element of the mark OMEGABEE is the word OMEGA.  The word OMEGA completely retains its identity in the mark OMEGABEE, and is easily recognised both visually and aurally.

   It is common for brand owners to use a particular brand as an “umbrella” brand, with a range of “sub brands” directed to particular products.  It is submitted that the Applicants’ marks might well be seen as sub brands of OMEGA.   For example, it is submitted that a person familiar with an OMEGA range of toys would view the mark OMEGABEE as sub brand for a particular type or range of OMEGA toy. 

   Further, the word BEE is pronounced as a single letter – the mark is essentially OMEGA B.  Aurally the relevant marks differ by only a single letter. 

   For these reasons, it is submitted that the relevant marks are deceptively similar.

4. The applicants, as is to be expected, did not agree with these submissions.  Their submissions in respect of a comparison of the trade marks can be summarised as follows:

   • The word ‘Omega’ means the letter ‘O’.
   • The word ‘Omega’ by itself is a descriptive word meaning Omega nutrients or Polyunsaturated Fatty Acids such as Omega 3, Omega 3 DHA, Omega 3 EPA, …

• The word OMEGABEE is a word invented by the applicants with no meaning.

  • The applicants’ mark consists of an invented word formed by the combination of words which consumers would not expect to see used in relation to the goods of other traders and which other traders could not legitimately require to use in relation to their goods.
  • The opponent’s reliance on a claim that OMEGABEE is essentially the word ‘Omega’ plus the letter ‘B’ is wrong both aurally and visually.
  • The applicants have already registered OMEGABEE for a variety of goods in different classes, namely classes 30, 41, 16 and 25.  All of the five applications concerned proceeded to acceptance without substantive objection, and none of them was opposed.

1. I find the applicants’ submissions more persuasive, despite their brevity and the difficulties I had in extracting them from the rather disorganised (though detailed) materials they provided for the hearing. 

2. The opponent has relied on the contention that the trade mark OMEGABEE is obviously the word ‘omega’ with the addition of a spelled out letter ‘B’, and that it will be seen as such by the purchasing public.  The contention that the essential feature of the applicants’ trade mark is the word ‘omega’ does not, to my mind, stand up to close scrutiny.  I might see things differently if there were some kind of break in the trade mark, such as a hyphen, a space or an initial capitalisation of the word ‘bee’, which clearly separated ‘omega’ from ‘bee’.  However, the trade mark OMEGABEE has no break of any kind and the word ‘omega’ is subsumed into what appears to be an invented word, a matter which the applicants have contended.

3. The test for deceptive similarity is set out in the Shell decision[4]: 

   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.

   [4] Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 414-415 per Windeyer J

4. More recently, in the Woolworths Metro[5] case, French J restated the matters to be considered when assessing deceptive similarity:

   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 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.”

   [5] Woolworths Limited v Registrar of Trade Marks (1999) 45 IPR 411

5. Taking account of the test articulated in the Shell case (as earlier referred to at paragraph 13) as well as French J’s more recent comments, I see no real, tangible danger of deception or confusion between the applicants’ trade mark and that of opponent or those of the two other cited proprietors. I can see no real likelihood of the relevant buying public visualizing the applicants’ trade mark as a sub-brand or extension of the opponent’s class 28 goods, or indeed of the other registered proprietors’ class 28 goods. The trade marks do not meet the criteria for deceptive similarity, and therefore the ground for opposition pursuant to section 44 has not been established.

Section 59 – applicant not intending to use trade mark

1. Section 59 provides:

   Section 59. Applicant not intending to use trade mark

   The registration of a trade mark may be opposed on the ground that the applicant does not intend: 

   (a) to use, or authorise the use of, the trade mark in Australia; or

   (b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services specified in the application. 

2. The opponent’s submissions in respect of this ground for opposition are brief so I now quote them in full:

   The Applicants have filed some 86 applications for marks containing the word OMEGA.  These applications cover a vast range of products and services, and it seems highly improbably that the Applicants have a genuine intention to use the mark OMEGABEE in respect of the diverse range of products and services covered by those 86 applications.

   It has previously been determined by the Trade Marks Office that a multiplicity of filings combined with an absence of clear evidence of use is sufficient to shift the onus to the applicant to provide its intention to use the marks – see for example Beecham Group PLC v Colgate-Palmolive Company [2001] ATMO 119 (29 November 2001).

   The opponent has squarely raised the issue of the Applicants’ intention to use the mark in its Notice of opposition.  It is submitted that the onus is on the Applicants to establish their genuine intention to use [the] mark OMEGABEE in respect of the broad range of goods covered by their application, but they have not done so.  There is no evidence whatsoever of any capacity on the part of the Applicants to manufacture market or sell that vast range of products.  It is highly improbably that they have such capacity. 

   Accordingly, the opponent submits that the application should be rejected under section 59.

3. It is appropriate to point out here that the applicants have not applied for a ‘vast range of products’ in respect of the OMEGABEE application under consideration, and that it is application 1210786 only which is under consideration in this decision.  Neither do they have 86 applications for OMEGABEE itself, despite the comment in the first paragraph of the submissions above.  (I make the assumption that that comment is not necessarily what the opponent meant to say.)  That aside, one of the questions to be considered is whether the opponent has shifted the onus onto the applicants to establish their intentions as to use of the trade mark. 

4. It is generally acknowledged that the filing of an application to register a trade mark is prima facie evidence of an intention to use it in respect of the goods and services nominated:  Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 401. The intention must exist at the filing date, rather than at the time of filing the notice of opposition: Television Food Network, G.P. v Food Channel Network Pty Ltd (No 2) [2009] 80 IPR 314 at [95] – [106]. This has been affirmed by the Full Federal Court, on appeal, in Food Channel Network Pty Ltd v Television Food Network GP [2010] 86 IPR 437 at [74].

5. The opponent submitted that it had put the applicant on notice that its intentions with regard to use of the trade mark were in question by articulating the section 59 ground for opposition in the Notice. Therefore, it said, the onus of establishing their intention to use the trade mark has shifted to the applicants. Justice Jacobson, in Health World Ltd v Shin-Sun Australia Pty Ltd and Others (2008) 75 IPR 478 stated:

   However, there is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence, a finding of lack of intention may be made: Philip Morris Products SA v Sean Ngu [2002] ATMO 96; Tommy Hilfiger Licensing Inc v Tan (2002) 60 IPR 137; Shanahan at [11.110].

   The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark. (Emphasis added.)

6. Mere nomination of the section 59 ground for opposition in the Notice is not sufficient to shift the onus from the opponent to the applicant. There needs to be convincing prima facie evidence adduced by the opponent to support the contention that the intention to use which is inherent in section 27 of the Act was not present at the time the application was filed.

7. The Hallett declaration, at paragraph 15, states that Watermark instructed an investigator to undertake enquiries into the applicants’ use of the trade mark OMEGABEE, as well as into other trade marks containing or comprising the word ‘Omega’.  He states that the investigations revealed use of the term ‘The OMEGABEES’ on a website to identify three plush toys, as well as a children’s book titled ‘The OMEGABEES Activity Book’.  Mr Hallett says that the investigation did not reveal any use of the trade mark OMEGABEE, or any proposed use of the trade mark, in respect of sporting products, games or other class 28 products in general.

8. The investigation of a single website is scarcely a thorough investigation of the state of play in any marketplace, and to my mind it falls far short of providing convincing prima facie evidence of a lack of intention to use a trade mark on a range of goods.  I am not satisfied that the evidence which the opponent has provided clearly impugns the applicants’ intentions at the time they filed their trade mark application.  There is therefore no case for the applicants to answer in respect of their intentions, and this ground for opposition is thus not established.

Section 60 – trade mark similar to one with a reputation in Australia

1. Section 60 provides the following:

   Section 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) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, 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.

2. The Stierli declaration provides the opponent’s evidence in support of its claimed reputation in Australia.  Briefly, it provides the following information in support of its claims:

   • The opponent is the owner of more than 40 Australian trade mark applications and registrations for trade marks containing or comprising the word OMEGA or the Ω symbol, the earliest having been filed in 1908.
   • The opponent has been involved in sports and sports timekeeping for more than 100 years, including timekeeping for events such as the Olympic Games for many years as well as the America’s Cup in 2002 and 2003.
   • The opponent is involved in international golf competitions as both a tour and tournament sponsor as well as an official timekeeper.
   • It serves as the official timekeeper at the world’s highest-profile swimming events and has been responsible for the development of important equipment used to time competitive swimming.
   • The first direct sales of products bearing the OMEGA trade mark occurred in Australia in 1908.  It has numerous watch collections such as Constellation, Speedmaster, Seamaster and De Ville. 
   • The opponent regularly promotes its OMEGA branded products by appointing famous athletes and actors as ambassadors for the brand.
   • Sales for the OMEGA SEAMASTER products sold in Australia are significant in both quantity and monetary value.

3. Mr Stierli also gives his opinion that use of the applicants’ OMEGABEE trade mark in respect of the goods claimed in class 28 will cause a significant risk of an assumption of a connection with the opponent‘s goods, particularly in light of the opponent’s history of using other brands in conjunction with the word ‘Omega’ and the opponent’s claimed strong sporting associations.    

4. On the basis of the evidence provided, I have no doubt that the opponent has a very strong reputation in the Australian market in respect of wrist watches, and possibly in respect of sporting stop-watches as well.  In order for the opponent to establish this ground for opposition the reputation needs to be such that I can be satisfied that any use by the applicants of the word OMEGABEE on the goods which it has claimed will be likely to cause deception or confusion. 

5. However, I am not satisfied that the opponent’s reputation is such that it flows over into the area of goods other than timepieces themselves.  In particular, I am not satisfied that there is any likelihood at all of the applicants’ OMEGABEE trade mark, when used on any of the goods which it has claimed, being confused with the opponent.  This ground of opposition has thus not been established. 

Decision

1. The opponent has not established any of the grounds of opposition which it pursued.  The application may therefore proceed to registration after one month from the date of this decision.  If the Registrar is notified of an appeal from this decision before that time, registration shall not proceed until the appeal is discontinued, or in the case of orders issuing from the Court, the application will be subject to those orders.

Costs

1. Both parties have requested their costs.  The applicant has been successful and I award costs against the opponent according to the official scale set out in Schedule 8 to the Regulations.

Alison Windsor

Hearing Officer

Trade Marks Hearings

9 June 2011