Omega SA v Jean-Claude Gillet
[2010] ATMO 74
•11 August 2010
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Omega SA to protection of international registration designating Australia 1205071(8, 9, 14, 28) (International Registration No 938182) - SEAMAXX - filed in the name of Jean-Claude Gillett.
Delegate: | Alison Windsor |
Representation: | Opponent: Peter Hallett of Watermark patent and trade mark attorneys Applicant: Not represented |
Decision: | 2010 ATMO 74 Reg 17A.29 opposition: Grounds of opposition pursued under ss 44, 60, 39, 42, 43 and reg 17A.31(4) – no grounds established – IRDA to proceed to protection – costs awarded against opponent. |
Background
Jean-Claude Gillet, of Porto-Vecchio, France (“the Holder”) requested protection in Australia for the following international registration designating Australia (“IRDA”):
| Application Number | 1205071 |
| Filing date | 20 August 2007 |
| Convention priority | 22 February 2007 (France) |
| Goods | Class: 8 Side arms (other than fire-arms) Class: 9 Scientific (other than medical), nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; spectacles (optics); optical goods Class: 28 Fishing tackle |
| Trade mark | |
Acceptance advertised: | 29 November 2007 |
Notice of opposition to the protection of an IRDA is governed by the provisions of regulation 17A.29 of the Trade Mark Regulations 1995 (“the Regulations”).
On 22 May 2008 Omega SA[1] (“Omega” or “the Opponent”) filed a notice of opposition (“the Notice”) citing all the grounds of opposition allowed for by the Trade Marks Act 1995 (“the Act”).
[1] Omega SA is also referred to on the application form as Omega AG and Omega Ltd. All the references are to the same entity.
The parties served and filed evidence in support and in answer as provided for by Trade Mark Regulations 1995 (“the Regulations”), the Holder having nominated FB Rice and Co as its address for service in Australia. The Opponent advised that it did not intend to provide any evidence in reply. Following this advice, the Holder’s legal representative advised that the Holder would not be requesting a hearing, nor would he be represented in the event a hearing was held.
The Opponent requested a hearing and, as a delegate of the Registrar of Trade Marks, I heard submissions from Peter Hallett of Watermark Patent and Trade Mark Attorneys, representing the Opponent, by telephone in Melbourne on 8 June 2010. The Holder, meanwhile, had provided brief written submissions a few days earlier.
Grounds of opposition pursued
Despite having nominated all possible grounds of opposition in the Notice, at the hearing the Opponent gave brief submissions in respect only of the grounds relating to sections 39, 42, 43, 44, 60 and 62 of the Act. For completeness I decide that all other grounds of opposition mentioned on the Notice have not been established.
The Opponent noted in its submissions that the registration was only opposed in respect of “class 14, and class 9 to the extent that it relates to apparatus and instruments that measure time or determine longitude at sea, or precious metals and their alloys and goods made of or coated with these materials not included in other classes”.
Onus
The onus is on the Opponent to establish a ground of opposition in order to succeed.[2] The standard of proof is on the balance of probabilities.[3]
[2]Lomas v Winton Shire Council [2003] AIPC 91-839; [2002] FCAFC 413
[3] Following Gyles, J in Pfizer Products Inc v Karam (2006) 70 IPR 599. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26].
Evidence
The evidence in support consists of the declaration of Jean-Claude Monachon, vice president of the Opponent. The declaration includes Exhibits JCM-1 to JCM-4.
The evidence in answer consists of two declarations. These are the declarations of Wayne Keith Willis, Solicitor and partner of the firm of FB Rice & Co, with Exhibits 1 to 3, and Jean-Claude Gillett, the Holder of the IRDA which is under opposition. Mr Gillett’s declaration includes a single exhibit.
Evidence in support
The Monachon declaration gives a history of the Omega company and in particular of its SEAMASTER brand of horological and chronometric instruments. It states that the SEAMASTER brand was launched worldwide in 1948, including in Australia, and has been in use continuously since that time.
Omega owns four Australian trade mark registrations for trade marks containing or comprising the word SEAMASTER. The earliest of these, registration 108848, has a priority date of 31 January 1952.
Mr Monachon states that Omega regularly promotes the SEAMASTER products by appointing famous athletes and actors as ambassadors for the brand. It also uses prominent product placements in Hollywood blockbuster movies. Exhibit JCM-2 consists of a summary of a 2007 advertising campaign involving the character “James Bond”.
The Opponent’s declaration also states that it has been the official time keeper at events such as the Melbourne Olympic Games in 1956 and the America’s Cup in 2002 and 2003, noting that at each of these events Omega launched a special edition SEAMASTER watch.
Sales numbers in Australia of SEAMASTER watches do not appear to be high, but the items themselves are quite high-priced, undoubtedly affecting the number which will be sold in the particular market. Exhibit JCM-3 consists of over 160 pages of invoices which gives a good indication of the prices charged for the goods and the numbers entering the Australian market. However, it is not at all clear just what proportion of the watches shown on the invoices carry the SEAMASTER brand.
Mr Monachon gives his opinion that there is a significant risk that the applicant’s and opponent’s trade marks are likely to be confused in the Australian market if used on watches. He considers the prefix SEAM- to be very distinctive in Australia in the context of watches, noting that there are only five entries on the Australian register, and these belong to the applicant and to the opponent.
Evidence in Answer
The Willis declaration is a vehicle to provide examples of the relative commonness on the Australian Register of the “formative elements ‘SEA, MASTER and MAX’ in trade marks in the context of ‘horological and chronometric instruments’”. From the results of his searches, Mr Willis has concluded that the word SEA is a common prefix for trade marks for the specific goods, that MASTER is a common suffix for trade mark for the same goods and that MAX or MAXX is uncommon as a suffix for the same goods.
The Holder’s declaration exhibits pages from his website which give information on the background to his business, his trade mark and his goods of particular interest. It also notes that the Opponent has opposed protection of his trade mark in all countries in which his International Registration has been designated.
Discussion and Reasons
The Opponent made the greatest part of its submissions in respect of the ground of opposition under section 44 of the Act. The relevant parts of section 44 as they apply to this opposition are as follows:
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.
In respect of this section, the Opponent relied on its ownership of the following trade mark registrations:
| Regn No | Priority date | Trade Mark | Goods |
| 108848 | 31 January 1952 | SEAMASTER | Class: 14 Watches, wristlet watches, hunting watches, pendulum clocks, fob watches and watch movements, |
| 912000 IR 778376 | 9 April 2002 | SEAMASTER APNEA | Class: 14 Precious metals and their alloys and goods made of or coated with these materials not included in other classes; jewellery, precious stones; horological and chronometric instruments |
| 1153596 IR 906916 | 20 November 2006 | SEAMASTER | Class: 14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments |
| 1173047 IR 918195 | 5 March 2007 | OMEGA SEAMASTER WHITE PLANET | As above |
The Opponent submitted that the Holder’s trade mark was either substantially identical with or deceptively similar to the trade mark registrations noted above, all of which have earlier priority dates and are registered for goods which the Holder is also claiming – that is, horological and chronometric instruments in class 14.
In order to determine the section 44 matter,[4] the only matter to be decided is the similarity of the trade marks – both parties are well aware of the relevant priority dates and the similarity of goods.
[4] Regulation 4.15A applies in respect of the three trade marks noted above which have proceeded to protection under the provisions of the Madrid protocol. The regulation’s provisions are effectively the same as those of section 44.
The Opponent submitted that the trade marks were substantially identical because on a side by side comparison – SEAMAXX vs SEAMASTER – the total impression is one of resemblance rather than dissimilarity.[5] The logic behind this, being that “often multiple XX’s are used to indicate continuous letters or ‘etc’ and do not necessarily represent the letter X”, is interesting but not something that I find I can agree with.
[5] Shell Co (Australia) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 414 per Windeyer J
A side by side comparison of two trade marks involves taking the two trade marks, putting them adjacent to each other, and considering their differences and similarities. It does not involve an exercise in making assumptions about hypothetical circumstances. In this case, both trade marks may well begin with the same three letters SEA, but their endings are completely different. In the Opponent’s trade mark the ending is a known word, and one with connotations relevant to the word SEA – that is, the connotation of either the master of a ship, or something which “masters” the sea. The Holder’s trade mark has an ending which may have connotations of “maximum” or “maximize”, but those connotations have no obvious relevance to either the ocean or to the Opponent’s trade mark. Despite the trade marks both beginning with the same letters, I do not find them to be substantially identical.
Neither do I find them to be deceptively similar. The Opponent provided a hypothetical situation during its submissions at the hearings designed to demonstrate that it would be easy for people to confuse the two trade marks. The hypothetical example involved imperfect recollection, and placed importance on the likelihood of someone who remembered the first three or four letters of the mark being unable to recall which one of the two endings – MAXX or MASTER – related to the trade mark they had encountered previously.
Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd[6], 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.
[6] (1937) 58 CLR 641, at 658
The Opponent’s submissions all relate to the trade marks under comparison being broken up into various combinations of letters in the minds of the people faced with them in the marketplace. I consider it to be more likely that the Opponent’s trade mark will be seen as two known words conjoined and will be remembered as two known words conjoined. I do not consider it is likely that it will be recalled as strings of letters.
The Holder’s trade mark consists of a known word followed by an ending which is not a known word, and which has an unusual combination of letters – XX is not a particularly common occurrence in the English language, let alone as an ending for a word. Again, I consider it is likely to be recalled as a single word SEAMAX(X) rather than simply as strings of letters.
The Opponent also placed emphasis on the supposition that the letters MAXX would be pronounced in a similar fashion to the first three letters of MASTER. I simply cannot see that this is likely to happen. The letter X is pronounced completely differently from the sibilance of the letter S. I have great difficulty in imagining a situation where “master” would be pronounced “maxter” or “maxx” would be pronounced as “mass”. I am satisfied that it there is little likelihood of any real tangible danger of confusion occurring between these two trade marks.
The Opponent has not established this ground of opposition.
Section 60 – Trade mark with a reputation in Australia
The IRDA was filed with IP Australia on 20 August 2007 and has a convention priority date of 22 February 2007. Both dates are after the date at which the provisions of section 60 as amended by the Intellectual Property Laws Amendment Act 2006 apply. The section reads:
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.
To satisfy section 60 the opponent must establish:
that it has priority;
that it has acquired a reputation in Australia; and
that because of the reputation, use of the Holder’s trade mark would be likely to deceive or cause confusion.
As mentioned previously, the Opponent entered the Australian market with its SEAMASTER trade mark many years ago. However, in looking at the images of the wrist watches the Opponent has provided, I note that each and every SEAMASTER watch also includes the following trade mark:
The Opponent has registered this trade mark in Australia a number of times, the earliest registration, number 38940, dates back to 1924. This trade mark always appears on the SEAMASTER watch face, and indeed, on all the watch faces which were shown in images provided in the evidence in support. In addition, the OMEGA trade mark is, in the majority of cases, larger and more prominent on the watch face than any of the other words which also appear, including SEAMASTER.
The prominence of this word and device trade mark has a definite effect on how the purchasing public will recall the watch brand and thus a definite effect on the reputation which may be attributed to the word SEAMASTER. While I would not go so far as to describe SEAMASTER as a “limping trade mark”,[7] it is, in my opinion, just as likely to be recalled as being an OMEGA SEAMASTER watch, than as a SEAMASTER watch in its own right.
[7] British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281
With that in mind, on the basis of the evidence provided to me, I am satisfied that the Opponent has acquired a reputation of some degree in its SEAMASTER trade mark, at least as far as high priced OMEGA brand wrist watches are concerned. I am not, however, satisfied that the nature and extent of this reputation is such that the Holder’s use of his trade mark, even on the very same goods, will result in deception or confusion in the marketplace. The Opponent has not established this ground of opposition.
Remaining grounds of opposition
The Opponent also made submissions in respect of sections 39, 42, 43 and 62 on the basis of a single matter, that being the presence in the Holder’s trade mark of the ® symbol. Section 39 is a logical place to begin considering these remaining grounds.
Section 39 – trade mark containing etc. certain signs
Sub section 39(2) relevantly provides:
(2) An application for the registration of a trade mark may be rejected if the trade mark contains or consists of:
(a) a sign that is prescribed for the purposes of this subsection; or
(b) a sign so nearly resembling:
(i) a sign referred to in paragraph (a); …
as to be likely to be taken for it.
Subregulation 4.15 is specific to section 39 of the Act and relevantly provides:
Reg 4.15. Trade marks containing etc certain signs
For the purposes of paragraph 39(2)(a) of the Act (which deals with signs), the following signs are prescribed:
(a) the words Patent, Patented, By Royal Letters Patent, Protected International Trade Mark, Registered, Registered Design, Copyright, Plant Breeder’s Rights, EL rights, or words or symbols to the same effect (including the symbols © and ®);
The first matter to note is that section 39 gives the Registrar discretion in deciding whether an application should be rejected because of the presence of a prescribed sign or symbol. Subsection 39(2) states that “an application may be rejected …”. The presence of the word “may” allows the Registrar to consider the matter and decide on a case by case basis whether or not subsection 39(2) is applicable.
General examination practice for national applications makes allowance for dealing with a trade mark representation which is filed at IP Australia bearing the ® symbol. Subsection 65(2) allows for amendments to the representations of trade marks once the particulars of the application have been published, and provides:
(2) An amendment may be made to the representation of the trade mark if the amendment does not substantially affect the identity of the trade mark as at the time when the particulars of the application were published.
Paragraph 4.1 of Part 31 of the Trade Marks Examiners Manual sets out the usual practice applied to domestic trade mark applications when the ® symbol is included in a trade mark representation.
4.1 Indication of intellectual property rights etc - Subregs 4.15(a) and (b)
The signs prescribed in subregs 4.15(a) and (b) usually form a minor part of any trade mark in which they are used. It is thus unlikely that deleting any of them will affect its identity. In these cases the owner should be requested to consent to delete the particular item from their trade mark.
Where the prescribed term or symbol forms a reasonably large component of the trade mark and deleting it would affect the identity of the trade mark then a ground for rejection exists against the trade mark and should be raised.
The practice in respect of an IRDA is slightly different. Two matters have been taken into consideration, resulting in the difference in practice. The first of these is the discretion inherent in the wording of subsection 39(2) mentioned previously. The second is IP Australia’s awareness of the problems likely to beset a holder if a provisional refusal is issued because of the presence in the trade mark of an ® symbol forming a very minor part of the trade mark. A provisional refusal of an IRDA would requires the holder to engage an Australian address for service to deal with IP Australia and may result in a requirement to amend the International Register, as the Australian designation cannot be different from the representation on the International Register. In any event, the situation is anomalous since the trade mark is already a registered trade mark on the International Register and arguably it has a right to include the symbol under those circumstances.
The IRDA under consideration here proceeded to acceptance on the basis of this difference in practice relating to IRDAs. This does not seem to be unreasonable, given that the Holder is able to claim that his trade mark appears as an entry on the International Register. In addition, the representation which the Holder has provided to IP Australia is the identical representation which appears on the International Register, complete with the ® symbol.
Under these circumstances, it appears to me to be reasonable to use the discretion that section 39 allows the Registrar not to reject the application because of the ® symbol appearing in the trade mark.
Section 42 – Trade mark scandalous or its use contrary to law
The Opponent made submissions in respect of paragraph 42(b) which provides the following:
An application for the registration of a trade mark must be rejected if:
…
(b) its use would be contrary to law.
The Opponent submitted that because the application contains a prescribed sign, its use would be contrary to the Act. In addition, the Opponent directed my attention to section 151 of the Act which specifies that misuse of an indication that a trade mark is registered when that is not the case is an offence under the Act.
The relevant subsection is 151(5) which provides:
(5) For the purposes of this section, the use in Australia in relation to a trade mark:
(a) of the word registered; or
(b) of any other word or any symbol referring (either expressly or by implication) to registration;
is taken to be a representation that the trade mark is registered in Australia in respect of the goods or services in relation to which it is used except if the trade mark is registered in a country other than Australia in respect of those goods or services and:
(c) the word or symbol by itself indicates that the trade mark is registered in that other country or in a country outside Australia; or
(d) the word or symbol is used, together with other words or symbols of the same or a bigger size, to indicate that the trade mark is registered in that other country or in a country outside Australia; or
(e) the word or symbol is used in relation to goods that are to be exported to that country.
Once a trade mark achieves registration, the owner is entitled to use the ® symbol as an indication of that registration when using the trade mark in the Australian marketplace in respect of the goods for which it has been registered. Both paragraph 42(b) and subsection 151(5) require use of the trade mark before the provisions of the respective portions of the Act are triggered.
Australian trade marks law does not require that a trade mark be in use within this marketplace before an application is made to register it. Section 27 states that a person may apply for the registration of a trade mark if they are firstly, the owner of the trade mark and secondly, if they are using it or have an intention to use it in relation to particular goods and services. At this stage, there is nothing before me which demonstrates that the Holder has already used the trade mark in Australia. Neither is there any indication of his future intentions, apart from the application itself which is a prima facie claim to his intention to use the trade mark in Australia.
Given this, I am not satisfied that the Holder’s intended use of his trade mark would be contrary to law.[8] If he does not use the trade mark until after achieving registration, then he has the right to use the ® symbol. If he does not achieve registration, his application will be refused protection, and any use he makes of the trade mark which falsely claims registration would be dealt with after the event. The onus is on the Opponent to satisfy me that this ground has been established, and they have not done so.
[8] See Advantage-Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] 52 IPR 24
Section 43 – Trade mark likely to deceive or cause confusion
Section 43 of the Act provides the following:
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
The Opponent submitted here that the ® symbol is a sign contained within the trade mark which connotes that the trade mark is a registered trade mark. Therefore, the Opponent said, use of the ® symbol as a trade mark, as opposed to a separate symbol to represent that a trade mark is registered, is likely to deceive or cause confusion.
I consider that the Opponent does have a point here. The whole purpose of the ® symbol is to indicate that a trade mark is registered and has the benefits of some legislation behind it. There is a definite connotation of registration inherent in use of the ® symbol.
However, it can be argued than an IRDA is indeed registered – it is already on the International Register, and in this case, on that Register in the exact form in which it has been applied for in Australia, including the ® symbol. If the trade mark achieves registration in Australia and the Holder puts it into use within the Australian marketplace, the presence of the ® symbol will only connote its correct status.
I am of the opinion that, in respect of the inclusion of a minor representation of the ® symbol, an IRDA is not quite on a par with a domestic application in terms of section 43 of the Act. IRDAs are clearly identified as such on the electronic register, and any person viewing the Register is able to see that these entries are references to “international registrations”. So while the connotation of registration exists in the trade mark prior to official registration in Australia, I am not satisfied that it necessarily follows that use of the trade mark in respect of the Holder’s chosen goods is likely to deceive or cause confusion. I do not find the Opponent has established this ground of opposition.
Section 62 – Application etc defective etc
The grounds for opposing an IRDA differ slightly from those applicable to a national application. Regulation 17A.31 is the relevant regulation here. The analogue of section 62 relevant to an IRDA may be found in subregulation 17A.31(4) which provides:
(4) The extension of protection may also be opposed on the grounds that:
(a) a document filed in support of the IRDA was amended contrary to the Act; or
(b) the Registrar accepted the IRDA on the basis of evidence provided, or a representation made, by the holder that was false in a material particular.
The Opponent submitted that the trade mark contains a prescribed sign, and that the ® symbol represents that the trade mark is registered. The Holder’s representation that its trade mark is registered is false in material particulars, the Opponent argued, meaning that the Registrar has accepted the trade mark application on the basis of a representation that was false in material particulars. Therefore, the Opponent submitted, the provisions of paragraph 62(b) apply.
This is a rather odd argument. It seems to suggest that the Registrar accepted the IRDA for registration on the basis of its claim to be a registered trade mark, a status which the Opponent refutes.
The application was examined on the basis of the trade mark which was applied for. The ® forms an insignificant part of that representation, and the reason for it remaining in the representation has been explained previously. I can find nothing in the representation of the trade mark or the material on the file relevant to the acceptance of the IRDA which could be even remotely regarded as a false representation of the kind envisaged by subregulation 17A.31(4).
The presence of the ® symbol in the trade mark and the resulting putative claim to a registered status may, in some cases, be seen as a false claim. However, in this case, it can be seen to refer to the registered status the trade mark enjoys because of its entry on the International Register. The application came to IP Australia as an IRDA – it is already an international registration. The ® symbol did not influence the acceptance for protection/registration.
The Opponent has not succeeded in establishing this ground of opposition.
Decision
Regulation 17A.34 provides:
Decision on opposition
(1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a) to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.
(2) The Registrar must tell the International Bureau of his or her decision.
The opponent has not established any of the grounds of opposition which it pursued. Therefore trade mark application 1205071 (International Registration No. 938182) may proceed to protection after one month from the date of this decision. If the Registrar is notified of an appeal before that time, the IRDA shall not proceed to protection until such time as the appeal is discontinued, or in the event of a direction by the court, the IRDA shall be subject to those directions.
Costs
The Holder has requested his costs and is so entitled. I award costs against the Opponent according to the official scale.
Alison Windsor
Hearing Officer
Trade Marks and Designs Hearings
11 August 2010
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