Omega SA (Omega AG) (Omega Ltd) v Guru Denim Inc

[2014] ATMO 62

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 1416182 (14) –- filed in the name of Guru Denim Inc.

Delegate:

Bianca Irgang

Representation:

Opponent: Peter Hallet of Watermark

Applicant: Gary Nock of Cullens

Decision:

2014 ATMO 62
Opposition under section 52 of the Trade Marks Act 1995 – Sections 42(b), 44, 58, and 60 pressed – no ground established .

Background

1.Guru Denim Inc. (‘the applicant’) filed a trade mark application on 24 March 2011 in class 14 of the International Classification of Goods and Services. Relevant details of the application are set out below.

Trade Mark:  

Trade Mark Application:     1416182

Filing Date:  24 March 2011

Specification:  Class 14: Jewellery; bracelets, pins, rings, earrings, necklaces, charms, brooches, cufflinks, amulets, tie-pins and tie-clips; imitation jewellery; craft kits for jewellery construction; ornaments in this class, hat ornaments, ornamental pins; buckles of precious metal; badges of precious metal; precious stones; watches, clocks, alarm clocks, sun dials and other horological and chronometric instruments, and parts of and fittings and accessories for the aforesaid goods; key rings and fobs in this class; precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; boxes, baskets, cases, containers, holders and trays, all of precious metal, included in this class; presentation cases and containers especially adapted for presentation and display of souvenirs, jewellery, clocks, watches and other ornamental items; writing instruments of precious metal; souvenir items included in this class; trinkets; purses in this class; figurines, statues, statuettes and busts of precious metal; works of art of precious metal; medallions; medals; coins; tokens; holders, boxes and cases, all of precious metal, for cigars, cigarettes or matches; ashtrays, of precious metal, for smokers; dining ware, tableware, servingware and kitchen ware in this class; tea services, tea caddies, tea infusers, tea strainers, teapots, coffee services and coffeepots (non-electric), all being of precious metal; household utensils of precious metal; vases of precious metal; napkin holders, napkin rings, coasters and place mats, all being of precious metal; candlesticks, candelabra, candle rings and candle extinguishers, all being of precious metal

2.The application was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 14 July 2011. Omega SA (Omega AG) (Omega Ltd) (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to the registration of the trade mark on 12 January 2012. Thereafter the opponent and applicant served and filed evidence as provided for by the Trade Mark Regulations 1995 (‘the Regulations’).

3.I heard the matter in Canberra on 16 April 2014 as a delegate of the Registrar of Trade Marks. Mr Peter Hallet of Watermark represented the opponent. Mr Gary Nock of Cullens appeared for the applicant.

Grounds of Opposition

4.The Notice nominated most of the grounds of opposition available under the Trade Marks Act 1995 (‘the Act’). The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of the ‘balance of probabilities’[1]. His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

[1] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

[2] [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

5.Prior to the hearing the opponent advised that it would press and provide submissions only on the grounds under sections 42(b), 44, 58 and 60 of the Act. None of the evidence served and filed by the opponent appears to go to the other grounds in the Notice and for the sake of completeness I find that those grounds have not been established.

6.Therefore, the grounds remaining for my consideration are those under sections 42(b), 44, 58 and 60 of the Act. Should the opponent establish one ground of opposition in relation to all of the applicant’s specification of goods, there is no requirement for the other grounds of opposition to be considered.

Evidence

7.The evidence consists of the following statutory declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Sean Emmet McGuire[3]	Trade Mark Attorney with Watermark Patent and Trade Mark Attorneys	6.07.12	SEM-1
Evidence in Answer
Angela Dahlke	Trade Mark Attorney with Cullens Patent and Trade Mark Attorneys	11.07.13	AD-1 to AD-30
Evidence in Reply
Roanne Karla De Menezes	Trade Mark Attorney with Watermark Patent and Trade Mark Attorneys	23.10.13	RDM-1 to RDM-2
Megan Parker	Managing Director of The Swatch Group (Australia) Pty Ltd	11.12.13	MP-1 to MP-3

[3] For ease of reference throughout the decision this declaration shall be referred to as the McGuire declaration.

Discussion

Section 44 ground

8.Only s 44(1) of the Act is relevant in this case and this is reproduced below:

(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.

1. To establish section 44 (1) of the Act the opponent must show all of the following:

   Øa trade mark (or trade marks), either registered or pending registration, in the name of a person other than the applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;

   Øthe trade mark(s) in the name of the other person must be in respect of similar goods or closely related services; and

   Øthe priority date(s) of the trade mark(s) of the other person is (are) earlier than the priority date of the applicant’s trade mark.

2. The opponent has specified a number of trade mark registrations in support of the section 44(1). Details of these registrations are as follows:

Number	Trade Mark	Classes
5458	14
38940	14
159947	14
556241	18
556242	21
556244	25
556245	28
556246	3
862558	35
906058	9
959137	14
977000	9
1054423	35
1084724	41
1090385	35, 36
1141610	3
1141611	3
1179227	3
1203521	18
1203522	25
1230604	18
1250717	3
1250718	28
1250719	16
1253025	25
1286826	37
1293714	9
1375814	35, 38
1379641	42
1417310	14
1459763*	14
1459796*	14

11.I note all of the above trade marks are owned by the opponent and all are currently registered. Except registrations 1459763 and 1459796 (marked with a *) all have earlier priority dates than the opposed application. The goods of registrations 5458, 38940, 159947, 959135 and 1417310 are similar to those of the opposed application. The key issues to be decided are if the applicant’s trade mark   (the ‘U device’) is substantially identical with or deceptively similar to those registration which are depicted below:

Opponent’s trade marks

Applicant’s trade mark

959137               1417310

159947              5458

38940

12.It is clear the applicant’s trade mark is not substantially identical with the opponent’s trade marks when compared side-by-side according to the test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd[4].

[4] (1963) 109 CLR 407 at 414

13.The opponent has submitted that even though some of its registrations contain the word OMEGA in addition to the omega symbol, that does not substantially affect the identity of those trade marks as the symbol is merely an illustration of the word and vice versa. It cites E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15 where it was stated:

“The addition of the device to the registered trade mark is not a feature which separately distinguishes the goods or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade mark with the device be reference to the word BAREFOOT. The device is an illustration of the word. The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity of the trade mark in the word alone. So much is recognised by the terms of s 7(1), which speak of additions or alterations which “do not substantially affect the identity of the trade mark”. Except for a situation of honest concurrent use, another trader is likely to be precluded from registering the device alone while the registered trade mark remains on the Register. The device is an addition to the registered trade mark that does not substantially affect its identity. Accordingly the use of the registered trade mark with the device constitutes use of the registered trade mark in accordance with s 7(1).”

14.I am in agreement with the opponent that this is the case with respect to trade marks no. 5458, 38940 and 1379641 where the word OMEGA only serves to emphasise the symbol is an OMEGA symbol. However, the applicant’s trade mark is not the Omega symbol and a side-by-side comparison reveals the clear differences between the opponent’s trade mark and the applicant’s stylized ‘U device’ trade mark. I find the respective trade marks are not substantially identical.

15.Deceptive similarity is, however, defined by section 10 of the Act. The determination of deceptive similarity requires a comparison of the impression which persons of ordinary intelligence and memory would have upon recalling the opponent’s trade mark, to the impression that they would form from the applicant’s trade mark[5]. The likelihood of deception must be finite and non-trivial[6] and the trade marks are not to be considered side by side.

[5] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, per Windeyer J at 415 ‘Shell’

[6] Registrar of Trade Marks v Woolworths Limited 45 IPR 411, per French J at [43]

16.According to the authorities[7] any consideration of whether trade marks are deceptively similar must take into account that consumers may have an imperfect recollection of a trade mark. As a general principle one needs to estimate the impression consumers are likely to form of each trade mark as a whole. Confusion may result if a trade mark incorporates the distinguishing features of another’s trade mark. Similarities in ideas are also a possible source of confusion although the fact that the trade marks have similar ideas is not conclusive in itself: see Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd[8] where the High Court stated:

"But it is obvious that trademarks, especially word marks, could be quite unlike and yet convey the same idea of the superiority or some particular suitability of an article for the work it was intended to do. To refuse an application for registration on this ground would be to give the proprietor of a registered trademark a complete monopoly of all words conveying the same idea as his trademark. The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive. As Lord Parker said in the passage cited, you must consider the nature and kind of customer who would be likely to buy the goods."

[7] Clark v Sharp (1898) 15 RPC 141 at 146; Re Application by the Pianotist Co Ltd (1906) 23 RPC 774; Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641; Aristoc Ltd v Rysta Ltd (1943) 60 RPC 87; Cordova v Vick Chemical Co (1951) 68 RPC 103; Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536; Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411

[8] [1952] HCA 15; (1952) 86 CLR 536.

17.Justice French in Registrar of Trade Marks v Woolworths Ltd[9] observed in relation to the expression “likely to deceive or cause confusion”:

… The use of the word “likely” in this context does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a “real tangible danger of its occurring” …

[9] supra

18.The concepts ‘deceive’ and ‘cause confusion’ were considered in Pioneer Hi-Bred  Corn  Co v Hy-Line Chicks Pty Ltd[10] where it was stated :

‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.

[10] (1979) RPC 410 at 423

19.The impressions that the respective trade marks give is quite different and I do not believe that the use of the applicant’s U device trade mark for the goods in class 14 given the previous registration for the opponent’s OMEGA trade marks for goods in class 14 and services in class 42 would result in a tangible danger of confusion or deception. In coming to this decision it is important that trade marks are considered in their entirety – ‘it is the whole mark which is the subject of the comparison with the registered mark[11]’.

[11] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).

20.The opponent has argued that the applicant’s U device trade mark is deceptively similar to the opponent’s OMEGA trade mark due to the fact that both trade marks share a oval/circular shape with flaring edges. While I do agree that the respective symbols have a central curve, that is where all similarities end.       

21.In comparing the trade marks is becomes apparent that there are significant differences between the trade marks and even if the applicant’s trade mark is also considered from a different view point, namely upside down.

Applicant’s trade mark

 - This is a ‘U device’

 - This is an arch

22.The symbol used by the opponent is the well known symbol for the last letter of the Greek alphabet, Omega. It is circular in shape which is further emphasized by the opponent’s use of the word OMEGA in its trade mark. The letter “O” in the word OMEGA is very similarly shaped to the Omega symbol. Even taking into consideration the possibility that the applicant’s trade mark when used on a watch face may be seen upside down, it is clearly not the omega symbol. It is not a symbol representative of anything I am aware of. Instead, on the correct orientation it resembles a stylized letter U. The curvature of the inner portion of the device is distinctly oblong which terminates at the top with the edges of the device flaring downwards and out at what appears to be a sharp 45 degree angle.

23.The opponent has referred to the well established principal that trade marks may be regarded as deceptively similar for the purposes of section 44 “even if the confusion is unlikely to persist up to the point of, and contribute to, inducing sale”[12].  However, I am not persuaded by this line of reasoning.

[12] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, per Dodd-Streeton J at [105].

24.The nature of the goods in question and the usual manner in which they are sold is particularly relevant to determining whether there is a tangible danger of deception or confusion arising. Goods such as jewellery and watches are ‘likely to be subjected to a careful visual examination by any intending purchaser’[13]. I am not satisfied there is a real tangible danger of these respective trade marks being confused in the marketplace when applied to the applicant’s goods in class 14 and the opponent’s goods.

[13] Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505, per Burchett J at 510

25.Therefore, the opponent has not established the ground of opposition under section 44.

Section 58

26.The opponent’s evidence does not demonstrate any use of a trade mark which differs from its trade marks already discussed in relation to the section 44(1) ground. Given my finding that none of those trade marks are substantially identical with the applicant’s trade mark it follows that the opponent also fails to establish its section 58 ground of opposition[14].

[14] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd 31 IPR 375 (1994) 120 ALR 495

Section 60

27.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)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.

Note: For priority date see section 12

28.  In McCormick & Co Inc v McCormick (‘McCormick’)[15] Kenny J discussed the meaning of “reputation”:

[15] [2000] FCA 1335; (2000) 51 IPR 102, at [81] – [82].

What is intended by the word “reputation” in section 60? The word is defined in The Macquarie Dictionary as follows:

reputation…1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute…2. favourable repute; good name…3. A favourable and publicly recognised name or standing for merit, achievement, etc…4. The estimation or name of being, having done, etc, something specified.

Compare The Oxford English Dictionary. In s60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

and Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee[16] said that the reputation required to be demonstrated was:

[16] [2000] FCA 1587; (2000) 50 IPR1 albeit in relation to subparagraph 28(a) of the Trade Marks Act 1955 which, in the circumstances of that matter, required reputation to be established.

one of which a significant number of persons were aware…What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

29.  It is for me to determine therefore whether the opponent has established that before 24 March 2011 its trade mark(s) were recognized by the public generally, or at least by a significant number of persons in the market for jewellery and watches, and whether because of that reputation the use by the applicant of its trade mark on the designated goods would be likely to deceive or cause confusion.

30.The McGuire declaration outlines the general history of the opponent which the declarant obtained by reading through the opponent’s website Mr McGuire goes on to state that the opponent’s parent company, The Swatch Group, is one of the leading manufacturers of finished watches in the world and that the 2011 Annual Report states that it employs over 28 000 people with gross sales exceeding 7 billion Swiss francs. However, the evidence to support Mr McGuire’s assertions is sadly lacking and limited to a single exhibit (exhibit SEM-1) which contains an incomplete list of the opponent’s registered trade marks on the Register. While I may infer from exhibit SEM-1 that the opponent has been in business since 1908 given that it has a trade mark registration dating from 1908, there is nothing to indicate that the opponent has actively been trading in Australia since that time. Nor has the opponent provided a break down of its advertising figures or annual sales which relate to Australia.

31.The declaration of Megan Parker (‘the Parker declaration’) goes some way towards corroborating the assertions of Mr McGuire. Ms Parker is the Managing Director of The Swatch Group (Australia) and has held that position since 2009. During this period, Ms Parker has acted as the Brand Manager for Omega, Rado and Longines. Ms Parker states that the opponent’s OMEGA symbol trade mark is used on various components of the watches it sells in Australia including the dial, crown, case back, plexi-glass, leather/rubber straps and bracelets, the rotor of the movement, silicon balance within the movement and the tope-side and under-side of the buckle/clasp. Exhibit MR-1 accompanying her declaration contains photographs of the opponent’s OMEGA symbol trade mark being used on the various components of the opponent’s watches. However, none of these photographs are dated. Nor are any of the photographs of the opponent’s OMEGA branded jewellery in exhibit MR-2 dated.

32.The only example of the opponent advertising its goods in Australia is located in exhibit RDM-2 accompanying the declaration of Roanne Karla De Menezes. This advertisement features the opponent’s OMEGA branded watch and is from a September 2013 issue of Chadstone’s free promotional magazine entitled “Fashion Capital”. This advertisement occurred after the priority date of the opposed trade mark so is of no assistance in determining trade mark reputation at the priority date.

33.The evidence provided by the opponent falls far short of demonstrating a reputation for its trade marks within Australia as at the priority date of the opposed trade mark. The opponent has made a lot of assertions but has failed to support these assertions. I find the opponent has not established the ground of opposition under section 60.

Section 42

34.Section 42 of the Act provides:

An application for the registration of a trade mark must be rejected if:
                 (a) the trade mark contains or consists of scandalous matter; or
                 (b) its use would be contrary to law.

35.The opponent’s attorney submitted that use of the applicant’s trade mark for the relevant goods would breach Sections 18 and 29 of the Australia Consumer Law (being Schedule 2 to the Competition and Consumer Act 2010) which proscribe misleading or deceptive conduct or the making of false or misleading representations.

36.As I have found that the use of the opposed trade mark is not, at a minimum, likely to “confuse” under section 44(1), it follows that use is not, on the stricter test posited by Australian Consumer Law, likely to mislead or deceive, not do I believe use would amount to a false representation in terms of section 29. I thus find that the opponent has not established it ground of opposition under section 42(b).

Decision

37.At the priority date of the opposed application subsection 55(1) of the Act provided:

Decision

55 (1). Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note:  For limitations see section 6.

38.The opponent has not established any of the grounds of opposition. The trade mark application may proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration of the trade mark shall not occur until the appeal has been discontinued or registration is ordered by the courts.

Costs

39.Both parties made a claim for costs. As there is nothing before me suggesting that costs should not follow the general rule, I award costs against the opponent in accord with Schedule 8 of the Trade Mark Regulations 1995.

Bianca Irgang
Hearing Officer
Trade Marks Hearings
8 July 2014