Omega SA v Mark & Brenda Robinson

[2011] ATMO 114

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 1234735(21) - OMEGACHEF - filed in the name of Mark and Brenda Robinson.

Delegate:	Nicole Worth
Representation:	Opponent: Peter Hallett of Watermark Patent and Trade Mark Attorneys. Applicant: Mark Robinson and Brenda Robinson represented themselves.
Decision:	2011 ATMO 114 S52 opposition: one ground for opposition pursued under section 44 – section 44 established – costs awarded against applicant.

Background

1. Mark Robinson and Brenda Robinson (‘the applicants’) applied to register a trade mark on 13 April 2008, relevant details of which are shown below:

Application Number	1234735
Priority Date	13 April 2008
Goods/Class	Class 21: Cookware of all types in this class; pots, frying pans, boiling pans, saucepans, baking and casserole dishes, serving dishes, kitchen utensils.
Trade Mark	OMEGACHEF

1. Following examination, acceptance of the application for registration was advertised in the Australian Official Journal of Trade Marks on 20 August 2009.

2. After obtaining an extension of time in which to do so, Omega SA[1] (‘the opponent’) filed a notice of opposition on 16 February 2010. The notice nominated all grounds for opposition provided by the Trade Marks Act 1995 (‘the Act’). The opponent was granted a further two extensions of time in which to serve evidence in support of its opposition. It then requested a third extension and served partial evidence in support, albeit outside of the time allowed. The Registrar’s delegate found the contents of the evidence was unlikely to affect the outcome of proceedings and declined to grant the extension to bring that evidence into proceedings.

   [1] Omega SA, Omega AG and Omega Ltd are, respectively, French, German and English versions of the same company name.

3. The applicants indicated on 22 February 2011 that they did not intend to rely upon evidence in answer given there was no evidence in support of the opposition. Following this the opponent requested a hearing. As a delegate of the Registrar of Trade Marks, I heard the matter in Melbourne on 21 July 2011. The opponent was represented by Peter Hallett of Watermark Patent and Trade Mark Attorneys. The applicants represented themselves.

   Onus and grounds of opposition pursued

4. The onus rests with the opponent to establish, to the delegate’s satisfaction, at least one ground of opposition in order to succeed in its opposition. The standard of proof is the balance of probabilities[2].

   [2] Pfizer Products Inc v Karam (2006) 70 IPR 599, per Gyles J at [6] to [26]; Chocolatier Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, (2009) 82 IPR 13 at [22] to [26].

5. In his written submissions prior to the hearing, Mr. Hallett indicated that the opponent would rely upon section 44 as its principal ground for opposition. No submissions were made in relation to any of the other grounds listed in the notice of opposition. For completeness I find that those other grounds have not been established.

   Discussion and reasons

6. Section 44 of the Act relevantly provides:

   Section 44 – 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.

7. Mr. Hallett, on behalf of the opponent, referred to three trade mark registrations containing or comprising of the word OMEGA to which, he submitted, the opposed trade mark was deceptively similar. Two of these registrations are owned by the opponent, and were cited in the notice of opposition. The last is owned by a third party and was not cited in the notice of opposition. It was raised for the first time in the opponent’s written submissions as a further basis for the ground of opposition under section 44. Generally the Registrar does not consider it appropriate to raise such matters so late in proceedings (although certain circumstances may warrant it). In Axis Communications AB v Action Electronics Co Ltd[3] Hearing Officer Thompson observed:

   I note that, based on the evidence and Notice in these proceedings, the applicant is unlikely to be aware that the opponent is reliant on the above trade mark registration in relation to the ground under section 44. The inclusion of the above trade mark registration amongst those upon which the opponent wishes to rely as late as the hearing may thus (in the absence of the applicant at the hearing) constitute an unanswerable ambush and there exists a strong argument this registration should therefore be excluded from my considerations in order to afford the applicant procedural fairness. I am therefore reluctant to give this registration any weight.

   [3] Axis Communications AB v Action Electronics Co Ltd [2008] ATMO 58, at para 14.

8. Had I concluded, at this point, that this registration owned by a third party was the basis for the opposition being successful, it may have been necessary for me to adjourn proceedings to allow the applicants a reasonable opportunity to provide evidence of honest concurrent use or prior use, or to bring to my attention any other circumstances in support of their application. However given the prior registrations owned by the opponent, as discussed below, it is not necessary to consider the registration owned by a third party.

9. The relevant details of the opponent’s prior registrations are shown below:

TM No. 190631
Priority date: 7 Jan 1908

Owner: Omega SA

Class 21: Small domestic utensils and containers of nickel and aluminium.

TM No. 556242
Priority date: 21 May 1991

Owner: Omega SA

Class 21: All goods in this class including combs and brushes.

1. As a preliminary issue I note that the opponent’s registrations are the subject of non-use proceedings brought by the applicants. Mr. Hallett submits that the fate of these non-use proceedings is irrelevant for the purposes of this matter - as at the filing date of the opposed trade mark application, and as at the date of the hearing, the opponent’s prior marks were registered for the purposes of section 44 of the Act. He cites E&J Gallo v Lion Nathan[4] in support of the opponent’s position.

   [4] E&J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) FCR 506; [2009] FCAFC 27 (24 March 2009).

2. In that case the Full Federal Court confirmed that the court’s order for the Registrar to remove a trade mark from the register operated from the date of judgment, and not retrospectively. They also indicated that infringement is still possible, where a non-use action has been made out, up until the point when the Registrar makes an entry in the register that a trade mark has been removed[5]. Their comments are made in the context of sections 101(2) and 127 of the Act, which relate respectively to the power of the court to order the Registrar to remove a trade mark from the register, and to a plaintiff not being entitled to relief for infringement if the defendant has applied for the removal of the trade mark. Although I do not believe E&J Gallo v Lion Nathan is determinative in the present case, I agree that the non-use action brought against the opponent’s registrations is a separate matter. Despite the opponent’s cited registrations being the subject of a non-use action, as at the time of writing they are still registered and whether or not they will ever be removed for non-use has not yet been determined.

   [5] E&J Gallo, ibid, [62] to [66].

3. Returning now to the assessment under section 44, the registrations upon which the opponent relies both have earlier priority dates than that of the opposed application. In terms of section 44 of the Act it thus remains to be decided if the goods involved are similar goods and whether the trade marks in question are substantially identical or deceptively similar.

4. The opponent did not address the similarity of goods between the respective registrations and application, and the applicants made only brief submissions. I will also be brief in my comments. I consider that the applicants’ goods are encompassed by the opponent’s specification in registration 556242, which is registered in class 21 in respect of “all goods in this class including…” and therefore implicitly covers the applicant’s goods. Additionally, the applicants’ goods are similar to the goods covered by the opponent’s registration 190631, given that cookware and kitchen utensils (as claimed by the applicant) may well be described as “containers of nickel and aluminium” and “small domestic utensils” respectively. Such goods are often sold through the same kitchenware, homeware and department stores.

5. Accordingly I consider that the applicants’ goods are the same as, or of the same description as, those listed in the prior registrations owned by the opponent.

6. With regard to the trade marks in question, the opponent did not argue that any were substantially identical. It remains for me to decide, then, whether they are deceptively similar within the meaning of section 10 of Act[6] and in the context of the similar goods.

   [6] Section 10 - Definition of deceptively similar: for the purposes of this Act, 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.

7. The well accepted test for deceptive similarity is as set out in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd[7], wherein Windeyer J observed:

   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 the recollection of the plaintiff’s mark, that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the defendant’s [mark].

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

8. Additionally, Kitto J noted in Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd[8]:

   It is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products came from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   [8] Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd (1954) 91 CLR, at 595.

9. The impression and essential feature of the prior registered trade marks is the word ‘omega’ (and, indeed it is the only feature of registration 190631). The presence of the character Ω in registration 556242 serves only to reinforce the element OMEGA as constituting the identity of the mark as rather than differentiate it significantly from other marks which feature the word ‘omega’ alone.

10. Similarly the essential feature of the applicants’ 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’. The applicants make a number of submissions in rebuttal, including that the word ‘omega’ is descriptive, that the word ‘chef’ is distinctive and exists on the register in many different trade marks, and that there is no explicit separation between the words ‘omega’ and ‘chef’. I will address each of these in turn, below.

11. I do not consider that the lack of punctuation or spacing between the words ‘omega’ and ‘chef’ obscures the presence of either word. To my mind they are clearly two readily recognizable words in use in the English language, which have been conjoined. The natural separation point is between the two known words and I do not consider the consuming public would interpret the mark any other way.

12. The distinctiveness or descriptiveness of a word within a trade mark is assessed in the context of the goods and/or services to which the mark is applied. The submission that the word ‘omega’ is descriptive of various polyunsaturated fatty acids, such as Omega 3 or Omega 6, does not account for the context in which the mark will be applied. Whilst the word ‘omega’ may well be understood by the consuming public to refer to nutrients when applied to supplements, foods or drinks (and therefore not indicate any single trader), it has no such significance in relation to cookware and kitchen utensils. In the context of the applied for goods, the word ‘omega’ is highly distinctive and its potential use by different parties would result in a tangible risk of confusion regarding the origin of the goods.

13. The presence of the word ‘chef’ in the applicants’ mark does not differentiate it from the earlier registrations. With regard to its meaning, the UK Board of Trade has previously noted[9]:

    The word “chef” is well-known and is in common use in the English language. It is derived from the French word of the same spelling meaning a chief or head person but in common usage it is used as an abbreviation of the French phrase “chef de cuisine” that is, head cook in an establishment employing a number of cooks or, more loosely, cook... Clearly the words THE CHEF cannot be regarded as invented and because of the meaning of the word CHEF it seems to me that when used in relation to for example printed matter they will convey a direct reference that the goods are of interest to cooks or about cookery.

    I consider the meaning of the word ‘chef’ as outlined above applies here. In relation to cookware and kitchen utensils the word ‘chef’ will convey a direct reference that the goods are of use or interest to those who cook, or those who are chefs or aspire to be chefs.

    [9] “The Chef” Trade Mark (1979) RPC 143.

14. Furthermore, given that the applicants’ mark differs only by the addition of a word with little distinctiveness, contextual confusion is as likely as mistaking one trader’s mark for the other’s. In John Fitton & Co. Ltd’s Application[10] the Assistant Comptroller noted:

    With reference to the nature of the confusion alleged the evidence furnished on behalf of the Opponents by their trade declarants is directed not so much towards showing that the two marks ‘Jest’ and ‘Easyjest’ might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element ‘Jest’ in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from one and the same trade source.

    [10] John Fitton & Co. Ltd’s Application (1949) 66 RPC 110 at 113.

15. Similarly, Burchett J noted in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd[11]:

    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.

    ….

    …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, ad the taking of it is bound to cause confusion which the mere addition of the word “Club will note 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.

    [11] Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 42 FCR 227 at p 230; 26 IPR 246 at 249.

16. The type of confusion that is outlined here is founded on a perception that, within the context of the market place, the applicants’ marks would be seen as being a ‘brand extension’ of the opponent’s registered trade marks due to the common element OMEGA leading to a conclusion that they identify the same trader. The applicants’ OMEGACHEF mark is likely to be seen as an extension of the OMEGA brand applied to goods that are of interest to, or cater to the needs of, chefs and cooks. I am of the opinion that the consuming public would have a sufficient expectation that OEMGACHEF cookware and kitchen utensils come from the same source as the various utensils and containers provided under the OMEGA trade marks relied upon by the opponent.

17. In view of the extent of the applicants’ submissions regarding various trade marks appearing on the register it is useful to provide some comment. The state of the register is one of the surrounding circumstances to be taken into account when comparing trade marks, as described in Beck Koller & Co[12], and quoted with approval by Sundberg J in Scotch Whisky Association v De Witt[13]:

    When an application for registration is before the Registrar, it frequently happens that the search for conflicting marks reveals several marks having some characteristic feature in common with the mark of the application, which marks may stand on the register in the name of one proprietor only, or in the name of several different proprietors.

    …

    If, therefore, all the marks were owned by one proprietor, the registrar would presume that the latter was using a ‘series’ of marks and judge the conflict between the applicants’ mark and each of the proprietor’s mark with this consideration in mind.

    …

    On the other hand, if the registered marks were owned by several different proprietors, this would be a circumstance which might considerably assist the applicant who would be in a position to submit that the common characteristic was one well recognised in marks in use in the particular trade. In short, when the registrar comes to compare the applicant’s mark with the registered marks … the presence of marks on the register other than the one with which the comparison is being made is regarded as one of the surrounding circumstances which he is required to take into account. [Emphasis added].

    [12] Beck, Koller & Company’s Application (“Plio”) (1947) 64 RPC 76.

    [13] Scotch Whisky Association v De Witt (2007) 74 IPR 382, at 76.

18. It is therefore not binding precedent, but may show that in particular industries a word (if registered by several different owners) is common to the trade. The examples submitted by the applicants do little more than show that the words ‘omega’ and ‘chef’ are common in registered trade marks owned by several different parties in a wide range of classes. They do not show, in particular, that the word ‘omega’ is common in the cookware or domestic utensil industry.

19. Secondly, the list of the applicants’ own current registered marks provided in their submissions relate generally to foods, drinks and supplements (being in classes 5, 29, 30, 31 and 32), as well as some other registrations in classes 16, 25, 41 and 43. None of these relate to the goods in respect of which registration is sought here. Despite the fact that cookware and kitchen utensils may be used in the preparation of foods, it does not follow that cookware and kitchen utensils on the one hand, and foods, drinks and supplements on the other share common origins, manufacturers, markets or trade channels.

1. I find therefore that the applicants’ trade mark OMEGACHEF is deceptively similar to the opponent’s prior registered marks, in the context of similar goods. The opponent’s ground of opposition under section 44 is accordingly established. Further, there is no evidence of use before me that may go to the application of subsections 44(3) or 44(4), (being acceptance of an application because there has been honest concurrent use or prior use of the trade marks, or because of other circumstances it is proper to do so).

   Decision and costs

2. 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.

3. I find that the opponent has met the onus upon it in terms of the ground of opposition under section 44. I therefore refuse to register trade mark application 1234735.

4. The opponent requested its costs and sought to distinguish the subject opposition from a similar previous case between the parties in which the opponent, though successful, was denied costs. This was on the basis of the history of the opposition being “fraught with unproductive delays generated by the ultimately successful opponent”[14]. In that case, three extensions of time in which to serve and file evidence in support of the opposition were granted, with such evidence ultimately being denied from admission to proceedings as a result of a hearing in relation to a fourth extension request.

   [14] Omega SA (Omega AG) Omega Ltd v Mark Robinson, Brenda Robinson [2011] ATMO 58.

5. Although I concede the circumstances of the subject opposition contain some similarities, here the opponent has not been granted any extensions of time beyond the published ‘benchmark’ of nine months. Despite the fact that the opponent has not furnished its evidence within the time allowed, as extended, I do not consider that the granting of two extensions of time warrants a denial of an award of costs. I therefore award costs against the applicants according to the official scale at Schedule 8 of the Trade Marks Regulations 1995.

   Nicole Worth
   Hearing Officer
   Trade Marks Hearings
   16 November 2011