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

[2011] ATMO 58

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 1234736(16), 1252449(16) - OMEGACHEF, OMEGAKIDS AND BOY AND GIRL DEVICES - filed in the names of Mark Robinson, Brenda Robinson.

Delegate:

Claudia Murray

Representation:

Opponent: Mr Peter Hallett, Registered Trade Mark Attorney, of Watermark Patent and Trade Mark Attorneys, Melbourne.

Applicant: Mr Mark Robinson and Ms Brenda Robinson represented themselves.

Decision:

2011 ATMO 58

Section 52 oppositions - oppositions successful under section 44 and regulation 4.15A – registration refused – parties to bear their own costs.

Background

1. Mark Robinson and Brenda Robinson (‘the applicants’) filed trade mark applications 1234736 and 1252449, on 13 April 2008 and 21 July 2008 respectively, for the following trade marks:

OMEGACHEF
1234736	1252449

1. The applications were advertised accepted for possible registration in the Australian Official Journal of Trade Marks in November 2008. Both are for goods in class 16 of the International (Nice) Classification of Goods and Services. While the specifications of goods have slight differences, they essentially cover the same items, so it is expedient here just to provide the details of the specification for trade mark application 1234736:

   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, note 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 (except apparatus); plastic materials for packaging

2. After obtaining extensions of time to do so, Swiss company Omega SA (Omega AG) (Omega Ltd) (‘the opponent’) filed notices of opposition to registration of the trade marks in May 2009. Eighteen grounds of opposition were listed in each notice.

3. The opponent followed its earlier extension of time to file the notice of opposition with a further three successful requests for a total of nine months extension of time to serve its evidence in support. However, the opponent’s fourth request to extend the time to serve its evidence by another three months (in respect of both oppositions) became the subject of a hearing, and the extension was subsequently refused by the delegate. The opponent had, in the meantime, attempted to file and serve some evidence in support of its reputation in Australia. While the status of this evidence caused some confusion at the subsequent opposition hearing, being referred to by both parties in their submissions, it was in fact excluded from these proceedings by the refusal of the extension of time intended to cover its date of service. In the event, the grounds pursued by the opponent at the hearing were not dependent upon the nature of the opponent’s evidence. I will not refer to it again.

4. On 11 November 2010 the trade mark applicants indicated that they did not intend to rely on evidence in answer to the notices of opposition. Following this notification, the opponent requested on 15 December 2010 that the oppositions be heard. I heard both matters, as a delegate of the Registrar of Trade Marks, on 10 March 2011 in Melbourne. Mr Peter Hallett, Registered Trade Mark Attorney, of Watermark Patent and Trade Mark Attorneys, Melbourne, represented the opponent. Mr Mark Robinson and Ms Brenda Robinson represented themselves.

Grounds of opposition

1. In his summary of submissions provided prior to the hearing, Mr Hallett indicated that the grounds of opposition to be pursued against both applications were only those under sections 44 (and regulation 4.15A) and 59. For completeness, I note that none of the other grounds listed in the notices of opposition have been made out. An opponent’s success in relation to a single ground of opposition usually renders unnecessary any further consideration of other grounds although, of course, those grounds would still be available to an opponent in the event of an appeal from a delegate’s decision. I will deal with the grounds in the order they were dealt with by the opponent.

Section 44 - Identical etc. trade marks

1. Subsection 44(1), applied to the present circumstances, provides that an application for registration must be rejected if it is substantially identical with, or deceptively similar to, another person’s trade mark application or registration that has an earlier priority date and covers goods that are similar to the applicants’ goods. The definition of ‘deceptively similar’ in section 10 is 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’. Section 14 defines ‘similar goods’ as goods which are ‘the same’ or ‘of the same description’. Regulation 4.15A (‘Grounds for rejection – trade mark identical etc to trade mark protected under Madrid Protocol’) applies the principles of section 44 where the cited trade mark is an International Registration Designating Australia, or a Protected International Trade Mark.

2. Mr Hallett drew my attention to the opponent’s trade marks, details of which are shown below, as relevant citations for the purposes of section 44 and regulation 4.15A:

TM No.	Trade Mark	Priority Date	Class/Goods
190630	OMEGA	7 Jan 1908	16 / Goods of aluminium and nickel being stationery requisites in this class
556240	21 May 1991	16 /  Mechanical pencils, ball-point pens and felt pens in aluminium, nickel with or without coatings of precious or semi-precious materials
1250719 (International Registration No. 966590)	28 Dec 2007	16 / Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks

1. There was no dispute between the parties over the earlier priority dates of the opponent’s trade marks, or whether the applicant’s goods were similar to those of the opponent. The opponent did not suggest that the trade marks in question are substantially identical. The remaining question for my determination, then, is whether the trade marks are in fact deceptively similar in terms of section 10, and in the context of those similar goods.

2. Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd[1], said of deceptive similarity:

   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. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.

   [1] (1937) 58 CLR 641, at p 658.

3. Mr Hallett argued upon this point for the opponent that:

   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 feature of each of the Applicants' marks is the word OMEGA:

   ·     In relation to OMEGACHEF, the word CHEF is not particularly distinctive, given that it is descriptive of printed matter relating to chefs or cooking. It is apparent from the wording of the specification of goods that many of the goods covered by the application in fact relate to cooking.

   ·     In relation to OMEGAKIDS (logo), the word "kids" is not distinctive in the context of printed material and other products intended for use by children. The device elements of the mark only serve to reinforce the idea of "kids" and OMEGA. It is apparent from the wording of the specification of goods that many or all of the goods covered by the application are in fact intended for children.

   The essential (or only) feature of the Opponent's 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. Given that the Applicants' marks include the word OMEGA as an essential feature, the risk of market confusion is high.

   It is common for brand owners to use a particular brand as an "umbrella" brand, with a range of "sub brands" directed to particular market segments underneath - eg NIKE RUNNING, NIKE KIDS etc. 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 stationery or printed matter would view the marks OMEGACHEF and OMEGAKIDS (logo) as sub brands directed to products for the cooking/chef and children’s markets respectively.

4. The applicants’ submissions in rebuttal concentrated upon the descriptive nature of the word OMEGA as it appears in both the opposed trade marks. They also pointed out that they have many existing registrations also featuring the word OMEGA which they presumed were not opposed by the opponent because it did not consider those trade marks to be deceptively similar to its own. Included in this list was trade mark number 1228893, also covering a wide range of goods in class 16, for the trade mark OMEGA CHEF.

5. Regarding the second point, both sides have referred to the applicants’ large portfolio (almost 80 in all) of OMEGA-related trade marks in various goods and service classes. The opponent has tried unsuccessfully, on several occasions,[2] to rely upon the complexity of managing multiple trade mark settlement negotiations to explain to the Registrar’s delegates why it needed extra time to prepare its evidence in support, after those negotiations had broken down. Refusing the final extension of time for evidence in these matters, Hearing Officer Bianca Irgang remarked:

   [I]n making my decision on this matter, I must consider what will be the reasonable course of action in the particular circumstances of the case. I am aware that the Registrar considers it appropriate for parties to an opposition to negotiate in the hopes of reaching a mutually beneficial solution, and that she is prepared to allow more time for this process to be completed. I am also aware that the parties need to be open and frank in their disclosures during the process. If a settlement could have been reached in this case, it may well have finalised several oppositions, including those being dealt with here.

   While the opponent can claim that since it has opposed more than ten of the applicant’s applications the negotiation process had taken precedence over any evidence gathering I am not satisfied the opponent has approached these oppositions with the seriousness which is warranted. The opponent has been aware of the applicant’s refusal to negotiate since 19 January 2010. Since that time the opponent has been warned that it should act with diligence and complete its evidence as a matter of urgency. This has not occurred. The opponent has been dilatory in dealing with these matters and it is only appropriate that it now reap the rewards of its actions.[3]

   [2] See: Omega SA v Mark & Brenda Robinson [2010] ATMO 23 (26 March 2010), OMEGA SA (OMEGA SA) (OMEGA LTD) v Mark Robinson and Brenda Robinson [2010] ATMO 95 (24 September 2010), OMEGA SA (OMEGA SA) (OMEGA LTD) v Mr Mark Robinson and Ms Brenda Robinson [2011] ATMO 16 (14 February 2011), Omega SA (Omega AG (Omega Ltd) v Mark and Brenda Robinson [2011] ATMO 29 (31 March 2011).

   [3] OMEGA SA (OMEGA SA) (OMEGA LTD) v Mark Robinson and Brenda Robinson [2010] ATMO 95 (24 September 2010), paras 30-31.

6. I share the various delegates’ scepticism as to the actual extent of administrative problems likely to be posed to a multinational company such as the opponent by any rival party’s abundance of similar trade mark filings. However, there does seem to have been quite a degree of confusion surrounding the history of the trade mark disputes between these parties. This suggests that the applicants would be ill-advised to assume an absence of opposition proceedings against any particular trade mark application to be conclusive proof that the opponent had actually made a conscious decision about the deceptive similarity (or lack thereof) of the relevant trade marks in that specific instance.

7. The trade marks at issue here were considered at the same hearing, and the submissions of both parties addressed the trade marks as if they were interchangeable. However, it is appropriate at this point to recognise that the trade marks are in fact different from each other.

1234736 – OMEGACHEF

1. The applicants and opponent are in stark disagreement as to the significance of the word OMEGA in relation to their respective goods of interest. Mr Hallett described it above as ‘highly distinctive’ and as having ‘no descriptive or other significance in connection with the relevant goods’. The applicants submitted instead that:

   OMEGA by itself is a descriptive word meaning OMEGA Nutrients or Polyunsaturated Fatty Acids (PUFAs) such as Omega 3, Omega 3 DHA, Omega 3 EPA, Omega ALA, Omega 6 and Omega 9. There are many names for OMEGAS such as Alphalinolenic Acid or Linoleic Acid or Oleic Acid, and many more. This is comparable with Newmans v Nestle [2002] MILK BEARS and MILKBARS.

2. I am unsure as to the actual case to which the applicants were referring. However, the principles which I believe they had in mind have been set out both in New Zealand and in Australia, in Newmans Chocolate Ltd v Societe des Produits Nestle SA [2003] NZIPOTM 27 (2 July 2003) and Societe Des Produits Nestle SA v Newmans Chocolates Ltd [2004] ATMO 50 (30 August 2004), respectively. The trade marks at issue in those cases were MILKY BAR and MILKYBAR vs MILKBEARS, used in respect of white chocolate and similar confectionery. In the Australian case, Hearing Officer Iain Thompson found those trade marks were not deceptively similar. He remarked:

   The word `milk' or `milky' has some utility in relation to the goods of the parties. `Milk' chocolate is made by many traders and the applicant's evidence shows that this is reflected on the Register of Trade Marks. The point being that consumers do not view descriptive matter as distinguishing between goods and look for other factors which do distinguish when making their purchases. Additionally, the applicant's evidence shows that the word `bar' also occurs frequently on the Register of Trade Marks. The words `bar' and `block' appear (in my observations of the world) to be used more or less interchangeably to describe the oblong shape in which some confectionery is sold.

   Thus, when one looks for an essential feature within the opponent's trade mark, one is forced to the conclusion that there is none. The trade mark is composed of comparatively weak trade mark matter and derives its strength only through use and acquired distinctiveness of the whole. This is the source of the `endorsement' on the opponent's first registration of the trade mark MILKY BAR: the trade mark was registered on evidence of use by the authorised user of the trade mark. One the other hand, the world `bear' appears to have no immediate facility in relation to the applicant's goods, any more than would the words `moon' or `unicorn'.

   Thus in the comparison of the trade marks, the opponent's trade marks must be considered as wholes, whether as MILKYBAR or MILKY BAR: they form a corporate identity where the purchaser relies exclusively on the recognition of the whole. On the other hand, the applicant's trade marks has an immediately recognisable and distinctive essential feature, the word `bears'.

   Thus, I think, it immediately follows from the above conclusion that the ideas of the trade marks are quite different. The opponent's trade marks, taken literally, in relation to the goods, immediately conjure up an idea of a bar or block which is milky. The applicant's trade mark, similarly considered, conjures up an image of a confectionery bear comprised of milk. It is an incongruous image and entirely unalike that brought to mind by the opponent's trade marks.

   These above factors do, I think, dispel any concerns that the trade marks of the parties might be imperfectly recalled and be mistaken for each other.[4]

   [4] Societe Des Produits Nestle SA v Newmans Chocolates Ltd [2004], op. cit., paras 35-39.

3. Here the goods at issue include various types of books and other printed matter where the use of the word OMEGA might reasonably be expected to denote subject matter concerning polyunsaturated fatty acids. In that context the addition of the word CHEF, also being a word with a ‘descriptive tinge’[5] in connection with such goods might yet, in Hearing Officer Thompson’s words, create a ‘corporate identity’ able to be easily differentiated from OMEGA solus, or OMEGA together with the Greek letter device.

   [5] “Ucolite” case, 48 RPC 477 at p 486.

4. However, that is not the end of the matter. For the purposes of section 44 (and reg 4.15A), it is the notional use that the applicants may make of their OMEGACHEF trade mark if registered which is the standard, rather than the very limited actual use in relation to children’s cook books to which both parties referred in the hearing. The applicants’ statement of goods is wide ranging, and for the most part the goods covered have no apparent connection whatsoever with polyunsaturated fatty acids. For example, in the context of such disparate items as photographs, paint brushes, or plastic materials for packaging, to pick just a few from the list, the word OMEGA stands out as a highly memorable and essential feature of the OMEGACHEF trade mark.

5. In a similar case, involving a comparison of the trade marks POLO and POLO CLUB, Burchett J noted the following:

   On the mundane level which is appropriate here, someone who knew of a “Polo” product, upon seeing a similar product selling under the name “Polo Club”, would be quite likely to think it was a particular version of the product which could be described as the Club version.[6]

   [6] Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 42 FCR 227 at p 230.

6. Later in the course of his decision, His Honour stated:

   It is plain that the word “Polo” must be an essential feature of the applicants’ mark, since it is the whole of the mark … “Polo” is also quite a distinctive word, and the taking of it is bound to cause confusion which the mere addition of the word “Club” will not dissolve. Bearing in mind that the test requires consideration of the customer with an imperfect recollection of the mark, it is important that the distinctive impact of the word “Polo” is likely to affect the mind although the presence or absence of the blander word “Club” may escape notice. At the same time, some persons may be quite aware that one mark contains the added word, and the other does not, but may yet think of “Polo Club” bed linen as a particular style of “Polo” bed linen.[7]

   [7] Polo Textiles, ibid, 232.

1. I believe this to be the true situation here. I find the applicants’ trade mark OMEGACHEF to be deceptively similar to the opponent’s OMEGA trade marks, in the context of similar goods. The opponent’s grounds of opposition under section 44 and regulation 4.15A are established.

1252449 – OMEGAKIDS and BOY AND GIRL devices

1. While the applicants’ second trade mark is indisputably different from their first, I believe that the findings I have made above in relation to the OMEGACHEF trade mark also apply here. If anything, the impact of the word OMEGA in the OMEGAKIDS trade mark is stronger still, emphasized as it has been by the presence of the Omega letter as part of the representations of the children’s heads, and as the ‘O’ in the word itself. I find that trade mark number 1252449 is also deceptively similar to the opponent’s trade marks, in the context of similar goods. The opponent’s grounds of opposition under section 44 and regulation 4.15A are established in relation to this trade mark.

2. Further, I note that in relation to both subject trade mark applications, the applicants have provided no evidence of honest concurrent use or prior use that might have led to the exceptions also provided under those grounds to be applied.

Other grounds of opposition

1. Mr Hallett also pressed grounds of opposition under section 59 against both trade mark applications at the hearing. However, there is no need to explore them further here. The opponent has succeeded in its grounds of opposition under section 44 and regulation 4.15A in relation to all the goods covered by the subject applications. As with the outstanding grounds originally listed in the notices of opposition, the additional grounds of opposition under section 59 would again available to the opponent in the event of an appeal from this decision.

Decision

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

   (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.

2. The onus is upon an opponent to establish one or more of its grounds of opposition. Gyles J has referred to the appropriate standard of proof required in terms of a ‘balance of probabilities.’[8] His findings upon that issue, arrived at after an exhaustive consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[9].

   [8] Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26].

   [9] (2009) 82 IPR 13 at [22] to [26].

3. I find here that the opponent has met the onus upon it, in terms of the grounds of opposition argued under section 44 and regulation 4.15A. I therefore refuse to register trade mark numbers 1234736 and 1252449.

Costs

1. The opponent requested its costs in this matter and it is usual for costs to follow the event. However, as I have described above, the history of these oppositions has been fraught with unproductive delays generated by the ultimately successful opponent. Under the particular circumstances of these cases, I do not intend to make an award in favour of the successful party, as I consider it more appropriate that the parties bear their own costs.

Claudia Murray

Hearing Officer

Trade Marks Hearings

1 July 2011