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

[2012] ATMO 92

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 applications 1333519(21) – Device ; 1333521(25) – Device ; and 1333531(16) – Device filed in the names of Mark Robinson and Brenda Robinson.

Delegate:

Debrett Lyons

Representation:

Opponent :  Sean McQuire of Watermark

Applicant :  no representation

Decision:

2012 ATMO 92

s52 opp : ss 44 and 59 pressed; opp partly successful.

Background

1. In these matters Mark Robinson and Brenda Robinson (‘the applicants’) have applied to register trade marks, details of which appear below:

   Application No: 1333519

   Priority Date      :             26 November 2009

   Goods:Class: 21 Household or kitchen utensils and containers; combs and sponges; brushes; brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass; glassware, porcelain and earthenware not included in other classes; cookware of all types in this class; pots, frying pans, boiling pans, saucepans, baking and caserole dishes, serving dishes, kitchen utensils

   Trade Mark:  
   
   

   Application No: 1333521

   Priority Date      :             26 November 2009

   Goods:                Class: 25 Clothing, footwear, headgear, scarves

   Trade Mark:                

   
   
   

   Application No: 1333531

   Priority Date      :             26 November 2009

   Goods:                Class: 16 Paper, cardboard and goods made from these materials including paper party decorations, paper party supplies, paper napkins, paper place mats, coasters, gift wrapping paper and ribbons, paper table cloths and party bags, bags for microwave; printed matter including children's activity books, children's story books, comic books, cook books, recipe books, recipe cards, newsletters, magazines, newspapers, book marks, book covers, loose leaf binders, stationery type portfolios, bookbinding material including spiral band notebooks, not (sic) pads or writing pads, posters, postcards; greeting cards, stationery packs consisting of writing paper, envelopes, stickers and stamps; photographs, stationery; paint brushes; artists materials; instructional and teaching material; plastic material for packaging
   
   
   

   Trade Mark:  

   
   
   

2. The applications were examined and accepted for possible registration. They were then advertised as such in the Australian Official Journal of Trade Marks after which Omega SA (Omega AG) (Omega Ltd.) (‘the opponent’) opposed registration of all three trade marks.

3. I took the submissions of the opponent at a hearing in Melbourne on 16 July 2012. The opponent was represented by Sean McGuire of Watermark, Patent and Trade Mark Attorneys. The applicants were not represented and relied on written submissions they had made to the Office on 26 June 2012. Prior to the hearing the opponent provided outline submissions indicating that they only pressed those grounds of opposition provided for by sections 44 and 59 of the Trade Marks Act 1995 (“the Act”).

4. The opponent served and filed evidence in support of the opposition.  It comprised the statutory declaration of Peter Leonard Hallett made 24 March 2011.  The applicant served and filed evidence in answer comprising the statutory declaration of Mark Robinson made 22 December 2011.

   Submissions and reasoning

   5. As stated, sections 44 and 59 are the grounds of opposition pressed. The onus is on the opponent to establish one of those grounds on the balance of probabilities.[1]  For the sake of completeness I find that the other grounds mentioned in the Notices of Opposition have not been established by the opponent.

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 82 IPR 13 at [22] to [26]; 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])

   Section 44

5. Section 44 of the Act relevant 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.

6. Therefore in order to establish its opposition under this ground the opponent has the burden of providing the following:

   ·     a trade mark, either registered or pending registration, in the name of a person other than the applicant, and in relation to which the applied-for trade mark is either substantially identical or deceptively similar;

   ·     the trade mark in the name of the other person must be in respect of similar services or closely related goods; and

   ·     the priority date of the trade mark of the other person be the earlier.

7. The Notices of Opposition are not identically framed.  The Notice of Opposition to trade mark application 1333519 identifies prior trade mark nos. 190631, 556242 and 1054423.  The Notice of Opposition to trade mark application 1333521 identifies prior trade mark nos. 556244, 862558, 877842, 1054423 and 1253025.  The Notice of Opposition to trade mark application no. 1333531 identifies prior trade mark nos. 190630, 556240, 1054423, 1235456 and 1250719.

Application  1333519

1. Registrations 190631 and 556242 have been cancelled as from 4 October 2012.  The former had been registered since 1908 in relation to class 21 goods being “Small domestic utensils and containers of nickel and aluminium”; the latter since 1991 in relation to class 21 goods being “All goods in this class including combs and brushes”.

2. The cancellations were the outcome of non-use actions brought by the applicants.  In its written submissions, the opponent said:

   The ultimate fate of these non-use actions is irrelevant for present purposes. As at the date of the filing of the opposed applications, and the date of this Hearing, the Opponent’s marks are registered for the purposes of s 44 (reg. 4.15A). The Full Court of the Federal Court in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27 held that a non-use application does not operate retrospectively, but only from the date of the removal order (if any), and this finding was not disturbed by the High Court.

3. The facts are to be examined as they now stand. For the purposes of section 44(1) “a trade mark registered” means a trade mark presently registered. The cancelled registrations no longer form a basis for objection under that section. In Gallo, the Full Federal Court held that the registration there at issue could be expunged only from the date the Court made the order under section 101 of the Act. The Full Court’s finding was linked to the submission that Lion Nathan’s use infringed the trade mark whilst it remained registered. That finding has no bearing on the operation of section 44 as a ground for refusal of registration.

4. What remains as a basis of objection under section 44 in the opponent’s submission is registration 1054423 with an earlier priority date than the Priority Date of the application and registered in class 35 for “Retailing”. Today the Office would not accept a services description as open ended as retailing per se and the practice of the Office for some time has been not to cite trade marks registered for “retailing” against applications for specific goods simply because those goods might be sold by a retailer with such a service class registration for a similar trade mark.  I endorse that approach and do not consider there to be any conflict between the class 21 application, on the one hand, and a prior registration for retailing services, on the other. 

5. The section 44 ground of opposition has not been established against application 1333519.

   Application  1333521

6. For reasons given, it is only registrations 862558, 877842, and 1253025 which remain as potential bases for objection under section 44 to the application in class 25 for “Clothing, footwear, headgear, scarves”. Of those registrations, I need consider only 877842 in the name of Elan Polo Australia Pty Limited for the word mark OMEGA with an earlier priority date of 31 May 2001 and registered for “Footwear” and registration 12553025 owned by the opponent and registered for “Clothing excluding footwear; headgear” with a priority date of 28 December 2007 for the trade mark:

1. Section 14 is satisfied since it states that goods are similar to other goods if (a)  if they are the same as the other goods; or (b)  if they are of the same description as the other goods.

2. The opponent submitted that the trade mark of the application was substantially identical to both the word mark OMEGA and the composite trademark shown in paragraph 11. I accept the former submission and so application 1333521 must be rejected for at least footwear on the basis of section 44. As to the remaining goods, it was the opponent’s submission that:

   The essential feature of the Applicants’ marks is the ‘omega’ symbol Ω. The chef’s hat device is not particularly distinctive, given that it is an item of clothing (class 25) and descriptive of cooking.

   … …

   In E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, the High Court noted that the addition of a device that is an illustration of the word is not a feature which separately distinguishes the relevant goods or substantially affects the identity of the mark. The Opponent’s mark is indeed a mark in which the device is an exact illustration of the word, and vice versa. There is no conceivable way that the ‘omega’ symbol Ω can be described other than using the word OMEGA. They are synonymous.

3. Not quite. In Gallo the trade mark under consideration was the word BAREFOOT together with the image of a barefooted footprint. The device was essentially one of very few ways in which to visually present the word. The analogy to the present case is weak. I do not find the compared trade marks to be substantially identical and so the remaining question is whether they might be deceptively similar. Section 10 of the Act provides 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”. Deceptive similarity can be assessed according to the test in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 where paragraph 13 Windeyer J wrote:

   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.

4. In Registrar of Trade Marks v Woolworths [1999] FCA 1020, French J discussed at paragraph 50 the assessment of deceptive similarity in these words:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (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] HCA 43; (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. This being so, there is no doubt in my mind that the compared trade marks so nearly resemble each other that use of the trade mark of application 1333521 is likely to cause confusion. The opponent has established its ground under section 44 of the Act in respect of all of the goods of application 1333521.

6. With that finding there is no need for me to consider the opponent’s submissions resting on its registration 1203522.  After the hearing, Mr McGuire sent the Office an email stating that “the other mark that may have been detached from the material I left with you but was the basis of my submissions on the omega symbol in class 25 was trade mark registration no. 1203522.”  I note that Registration 1203522 was not listed in the Notice of Opposition, nor in the evidence in support, and in other circumstances its admissibility to the evidence of record might have required examination.

   Application  1333531

7. The Notice of Opposition lists trade mark nos. 190630, 556240, 1054423, 1235456 and 1250719 as the alleged prior rights.  Whilst all of those registrations are for class 16 goods of one kind or another, I note that they are for either the word marks OMEGA or OMEGA LIFETIME, or the now familiar composite trade mark:

1. Without reference to further case law, or recourse to the customary assessment of the similarity of the respective goods as a preliminary determination, I can move straight to the finding that, even assuming the identity of the goods, there is in the face of the registered trade mark no likelihood of deception or confusion arising from the use of the applicants’ trade mark shown for convenience once more below.  The compared trade marks are so manifestly different that use of the applied-for trade mark could not be the likely cause of deception or confusion.

1. I find that the ground of opposition pressed under section 44 against application 1333531 has not been established.

   Section 59

2. There finally remains the questions of whether it can be said that the applicants had, at the Priority Date, no intention to use the trade mark

in relation to a range of class 21 household and kitchen items, or to use the trade mark

in connection with a wide range of class 16 items.           

1. The opponent’s written submissions included the following passage:

   The Opponent refers to the declaration of Peter Hallett dated 24 March 2011 and filed in support of the oppositions. As noted in those declarations, investigations conducted on behalf of the Opponent indicate that:

   The Applicants have used the mark OMEGA in connection with a colouring book intended to promote the Applicants’ honey products. The investigations did not reveal any other use or intended use of the opposed marks.

   The Applicants run a small business that has made limited use of the opposed marks covered by their applications, primarily in respect of food products and associated promotional merchandise.

   It is submitted that use of a mark in connection with an item that is essentially promotional in nature – ie. that is given away or otherwise intended to promote the sale of other products – does not constitute trade mark use in relation to the promotional item: see Optical 88 Limited v Optical 88 Pty Limited [2011] FCAFC 130.

   The Applicants have filed more than 90 applications for marks containing the word OMEGA, and 30 containing the ‘omega’ symbol Ω. It seems highly improbable that the Applicants have a genuine intention to use these marks in respect of the diverse range of products and services covered by these applications. The evidence in answer supports a much narrower use, and no genuine trade mark use of the opposed trade marks.

   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 prove 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 marks, both in its Notices of Opposition and in its evidence. In those circumstances the onus of proof switches to the Applicants, yet they have provided no evidence to demonstrate their intention to use the marks in respect of the broad range of goods at issue.

   Accordingly, the Opponent submits that the applications should be rejected under s 59 of the Act.

   26.   In his declaration Mr Hallett states that an investigator’s report commissioned by his attorney firm has “not revealed any evidence to show that the Applicants have the capacity to manufacture or market all of the products covered by their trade mark applications, or that they have any intention to do so.”  That is no surprise.  Earlier in his declaration, Mr Hallett states that his firm “engaged an investigator to ascertain the extent to which, if at all, the Applicants were using the marks containing or comprising the word OMEGA or the symbol Ω.”  Since the investigator was not briefed to look into the business potential of the applicants, or their manufacturing capacity, or their ability to market particular classes of goods, or their intention to do any of those things, I can place no weight at all on the statement made by Mr Hallett which was said to rest on that investigation.

   27.   Mr Hallett’s declaration refers to a case heard by the Federal Court involving a company, Nature’s Blend Pty Ltd, which for present purposes I accept as being a company owned and controlled by the applicants or one of them albeit that no material evidence is given of that connection, in which it is said that on an assessment of the evidence it was found that “[i]nitially the applicants’ business was confined to the sale of veterinary and/or medical products, however, sometime in 2004, the applicants expanded to human products including confectionary.”  

   28. The case law on section 59 establishes 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. That intention must exist at the filing date: Television Food Network, G.P. v Food Channel Network Pty Ltd (No 2) [2009] FCA 271 (27 March 2009) at [95] – [106]. Affirmed by the Full Federal Court in Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 at [74]. It is the opponent’s submission that the onus of establishing intention to use the trade marks has shifted to the applicants because the opponent has put the applicants on notice that its intentions are in question by reason of the inclusion of the section 59 ground in the Notices of Opposition.

   29.   In Health World Ltd v Shin-Sun Australia Pty Ltd and Others (2008) 75 IPR 478 Justice Jacobson stated:

   … 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.

   30. The simple nomination of the section 59 ground in the Notices is not enough to shift the onus from the opponent to the applicants. There must be additional evidence of a prima facie case that at the time the applications were filed there was no requisite intention to use any of the trade marks.  The fact that the applicants have filed numerous applications in various classes, of itself, counts for nothing.  The fact that they might have a medium sized business currently focused on certain food products, as is claimed by Mr Hallett, is not inconsistent with a desire to extend use of existing or new trade marks to goods in classes 16, 21 and 25; indeed, in this age of saturation with food and cooking extension of use to goods in those classes seems to me almost predictable.  Moreover, on Mr Hallett’s evidence, the Federal Court found that in 2004 the applicants had already extended their business in certain ways beyond its original limits.

   31.   The opponent has not established a prima facie case and the onus has not shifted.  I have for that reason no cause to examine more closely the applicants’ evidence in answer as it might touch on their intentions in this respect.

   32. Accordingly, the section 59 ground of opposition has not been established against either application 1333519 or 1333531.

   Decision

   33. Subsection 55(1) of the Act provides:

   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.

   34.   I refuse to register trade mark application 1333521.

   35.   Trade mark applications 1333519 and 1333531 may then proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration of those two applications shall not occur until the appeal has been decided or discontinued.

   Costs

   36.   As a rule, costs follow the cause.  In this case, the opponent has succeeded in relation to only matter and is therefore entitled to its full costs in relation to one opposition.  The applicant has succeeded in relation to two matters and is therefore entitled to its costs appropriately apportioned between them.

   Debrett Lyons

   Hearing Officer

   Trade Marks Hearings

   17 October 2012