Omega SA (Omega AG)(Omega Ltd) v Mark Robinson and Brenda Robinson

[2013] ATMO 47

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 1384633(41) - OMEGACHEF - filed in the name of Mark Robinson and Brenda Robinson.

Delegate:

Jock McDonagh

Representation:

Opponent: Sean McGuire of Watermark, Patent & Trade Marks Attorneys

Applicant: No appearance.

Decision:

2013 ATMO 47

Section 52 opposition to registration – ss 44 and 60 grounds pursued - s44 ground of opposition partially established – Applicants given opportunity to delete relevant services –– no award of costs

Background

1. This matter is an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark filed by Mark Robinson and Brenda Robinson (‘the Applicant’) details of which appear below:

Appn No.	1384633
Priority Date	21 September 2010
Trade Mark	OMEGACHEF
Services	Class 41: Education; providing of training; demonstrations and teaching demonstrations; entertainment; sporting and cultural activities and events; amusement entertainment and shows (“the designated services”)

1. The application was examined in compliance with section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 17 February 2011.

2. On 9 May 2011, OMEGA SA (OMEGA AG)(OMEGA LTD) (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the Trade Mark. The Notice is couched in broad terms and includes the grounds under sections 44 and 60 of the Act, which were relied upon by the Opponent at a hearing of the matter. For the sake of completeness I find that the grounds in the Notice other than those relied upon by the Opponent at the hearing have not been established and note that any ground of opposition may be relied upon should my decision be appealed to the Court where the matter will be considered de novo.

3. The following evidence was filed in accordance with the Act:

Evidence in Support

• Declaration by Peter Leonard Hallett (“Hallett”), Registered Trade marks Attorney of WATERMARK Patent and Trade Mark Attorneys, dated 9 November 2011 and including Exhibits PLH-1 to PLH-3

Evidence in Answer

• Declaration by Mark Robinson (“Robinson”), Applicant, dated 16 January 2012 and including Exhibit OC-1

1. I heard the matter as delegate of the Registrar of Trade Marks on 21 March 2013 in Melbourne. Sean McGuire of WATERMARK Patent and Trade Mark Attorneys, appeared for the Opponent. The Applicant did not appear at the hearing. However, the Applicant relied on filed written submissions.

Standard of Proof

1. The relevant standard of proof required of the Opponent is the ordinary civil standard based on the balance of probabilities.[1]

   [1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40], NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32], Allergan, Inc v Di Giacomo (2011) 94 IPR 541 per Stone J at [11] to [12], Nexans S.A. v. Nex 1 Technologies Co. Ltd [2012] FCA 180 (2 March 2011) per Murphy J at [9], Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (2012) 94 IPR 551 per Dodds-Streeton J at [13].

2. To succeed in its opposition the Opponent bears the onus of establishing at least one of the grounds pressed. As will become apparent, I have only found it necessary to address the section 44 ground in this decision and this is discussed below.

Discussion and Reasons

1. Before I discuss the reasons for decision, I should make a general comment regarding the evidence and submissions of the Applicant. The general theme of both evidence and submissions can be summarized as follows:

• Only the Applicant uses the mark OMEGACHEF for any goods or services in Australia.

• There are many OMEGA trade marks on the Register owned by parties other than the Opponent

• The Applicant has registrations for OMEGA based trade marks in class 41 (1223593 OMEGAMATH, 1210787 OMEGABEE, 1210788 PLANETOMEGA)

• The Applicant uses the OMEGACHEF trade mark for all of its goods and services.

• Trade channels are not the same as those of the Opponent.

• The Applicant has the business name “Omegachef” registered with ASIC.

1. Largely the Applicant’s evidence and submissions were largely unhelpful, however, as mentioned earlier, the onus is on the Opponent to establish a relevant ground of opposition.

2. 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

   (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 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 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 goods see subsection 14(2).

   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 Applicant’s trade mark is deceptively similar to the following trade mark that it owns, relevant details of which is shown below:

Appn No.	1084724 (International Registration 865357)
Priority Date	24 August 2005
Trade Mark	(“the cited trade mark”)
Services	Class 41: Timekeeping of sports events; organization of sports and cultural events

1. The cited trade mark has an earlier priority date than that of the application.

2. Section 14(2) of the Act defines that, services are similar to other services if they are the same as the other services, or if they are of the same description as that of the other services.

3. Mr McGuire submitted that there was no doubt that the services of the application were of the same description to the opponent’s services. He submitted also that “entertainment; amusement entertainment and shows” are the same as sporting and cultural events, especially since sports and cultural events are considered as entertainment and amusement.

4. Mr McGuire also pointed to popular cooking shows, such as Masterchef and My Kitchen Rules, which fall into the category of entertainment, sporting competition and cultural events. Such shows also involve time limits and a “race against the clock”.

5. He did not contend that the Opponent’s services were the same as education; providing of training; demonstrations and teaching demonstrations; however, he did suggest narrowing the statement of these services to those arguably supported by the Applicant’s evidence. He helpfully suggested inserting a reference to educating/training/demonstrating to “children about food and cooking, and expressly excluding “timekeeping”.

6. I generally concur with this approach, although I do not consider it necessary to limit the remaining services to children, and will make the necessary directions later in this decision.

7. The matter of substantial identity was not pursued, and I agree that the marks are not substantially identical. The opponent submitted that the application trade mark is deceptively similar to the cited trade mark. Section 10 of the Act states that 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.

8. The test for deceptive similarity is set out in the Shell decision[2]: 

   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.

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

9. In the Woolworths Metro[3] 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.”

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

10. Mr McGuire referred to the above authorities and also invited me to consider a number of previous decisions made by Delegates of the Registrar of Trade marks in which the Applicant’s OMEGACHEF trade mark applications were found to be deceptively similar to OMEGA registrations owned by the Opponent. The decisions are:

• Omega SA (Omega AG)(Omega LTD) v  Mark Robinson, Brenda Robinson [2011] ATMO 58 (1 July 2011)

• Omega SA v  Mark Robinson and Brenda Robinson [2011] ATMO 114 (16 November 2011)

• Omega SA (Omega AG)(Omega LTD) v  Mark Robinson and Brenda Robinson [2011] ATMO123 (13 December 2011)

1. These decisions referred to the above judicial authorities, to support the following principles:

• The test to be applied 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.

• The test requires a hypothetical assessment of how the mark might fairly be used for all the designated services

• 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 to some extent be discounted.

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

• The essential feature of the Applicant’s mark is the word ‘omega’. Although combined with the word ‘chef’, ‘omega’ carries the weight of the trade mark identity due to its inherent distinctiveness and the relative descriptiveness of the word ‘chef’ in services involving food and cooking.

• The Applicant’s OMEGACHEF mark is likely to be seen as an extension of the OMEGA brand applied to services that are of interest to, or cater to the needs of, chefs and cooks.

1. I accept and adopt the reasoning of the previous decisions and apply them in this matter in respect of “entertainment; sporting and cultural activities and events; amusement entertainment and shows”.

2. I consider that the Applicant’s trade mark so nearly resembles the Opponent’s cited trade mark that it is likely to deceive or cause confusion. I find that this ground has been established.

3. The Applicant, in written submission, raised the issue of honest concurrent use under section 44(3) of the Act. The basis of the Applicant’s submission was that it had made a number of ATMOSS and business name searches and found no other entity using OMEGACHEF and that the Applicant had been using that trade mark for some time. While I do not doubt the honesty of the Applicant’s application, there is no evidence of the use of its OMEGACHEF trade mark on other than its various goods. The Applicant did not provide evidence of any use with respect to the designated services that would satisfy section 44(3) of the Act.

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. Exhibit PLH-1 of Hallett 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 McGuire submitted that use of the cited trade mark in respect of the entertainment, sporting, cultural, or educational services claimed in class 41 will cause a significant risk of an assumption that there is a connection with the Opponent, 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. Mr McGuire also submitted that alternatively, the Opponent would accept amendments to the designated services suggested under the section 44 ground of opposition. While the Opponent has amply demonstrated a requisite reputation if the area of timekeeping in sporting, cultural and entertainment, I do not consider that it would extend to the remaining services designated. Therefore I will adopt the alternative suggested by Mr McGuire.

Decision

1. Section 55(1) of the Act provides:

   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.

2. I find that the ground of opposition under section 44 is established in respect of “entertainment; sporting and cultural activities and events; amusement entertainment and shows” services specified in the application. That being the case, I will allow the Applicant one month from the date of this decision to amend its applications by:

• deleting “entertainment; sporting and cultural activities and events; amusement entertainment and shows”; and

• amending the statement to read “Education services, namely educating about food and cooking; providing training about food and cooking; demonstrations and teaching demonstrations about food and cooking; none of the foregoing concerning timekeeping.

1. If the application is so amended, I direct that it may proceed to registration. In the event that the services are not so amended, I refuse the application in its entirety.

Costs

1. Each of the parties has requested costs. As neither party has been entirely successful I decline to make an order of costs against either party. I consider that the appropriate course on this occasion is that each party should be responsible for meeting its own costs.

Jock McDonagh

Hearings Officer

Trade Marks Hearings

13 June 2013