One Mode Productions Limited
[2014] ATMO 89
•24 September 2014
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1556294(9, 16, 25, 41) - 5SOS - in the name of One Mode Productions Limited.
Delegate: | Iain Campbell Thompson |
Representation: | Applicant: Mark Williams of Allens, Patent & Trade Mark Attorneys |
Decision: | 2014 ATMO 89 Subsection 33(4) proceedings: s44; goods and services closely related; trade marks deceptively similar; application rejected |
Background
This matter arises out of the filing of an application by One Mode Productions Limited (‘the Applicant’) under the Trade Marks Act 1995 (‘the Act’) to register a trade mark detailed hereunder. The goods and services below are those which have been restricted and/or qualified following the Examiner’s report:
Application No: 1556294
Filing Date: 8 May 2013
Convention Claim: 011523388 OHIM
Goods/Services: Class 9: Apparatus for recording, transmitting or reproduction of sound, music, images, data and videos; sound, music, image, data and video recordings; multimedia productions; motion picture films; television films and programmes; animations; 3D motion picture films, television films and programmes, and animations; radio programmes; recording materials used for storage and transmission of digital and analogue data, images, sounds and recordings; pre-recorded audio and/or video media, CDs, CDRs, DVDs, DVDRs, Digital Audio Tapes, Digital Audio Cassettes, HD discs, 3D discs, mini-discs, records, tapes, cassettes, discs and flash drives; laser-read discs for recording, reproducing, transmitting and playing sound, images, music, data or video; optical-read discs for recording, reproducing, transmitting and playing sound, images, music, data or video; audio, image, data and video files provided from the Internet; audio files in MP3 format; audio and/or video files in electronic format provided from the Internet; video files in MP4 format; MP4 videos; application software for mobile devices, tablet computers and smartphones; mouse mats; downloadable digital music or sound files provided from the Internet; downloadable digital video, image, film and TV files and programmes provided from the Internet; downloadable digital video, image, film and TV files and programmes provided from MP4 web sites on the Internet; refrigerator magnets; downloadable electronic media; publications downloaded in electronic form from the Internet; downloadable electronic publications provided from databases or the Internet; ebooks; audio books on CD, mini-disc, record, cassette or disc; talking books; printed matter in electronic form; on-line publications, magazines, periodicals and newspapers; text, audio and/or visual images and data transmitted by electrical or electronic means; printed matter in electronic form; photographs and stills in electronic form; sunglasses; eyewear; parts, fittings and accessories for the aforesaid goods
Class 16: Paper, cardboard and goods made from these materials; printed matter; printed publications; stationery; advertising materials; books; pamphlets; magazines; postcards; pictures; posters; diaries; drawing instruments; greeting cards; address books; catalogues; brochures; programs; tickets; VIP tickets; laminated tickets and VIP tickets; calendars; photographs; signed photographs; autographed printed items; photographic albums; autograph albums; newspapers; newsletters; notelets; note pads; note books; stickers; decalcomanias; paper files; periodicals; instruction manuals; instructional and teaching materials; record token cards; gift token cards; wrapping paper; writing implements; pens; ballpoint pens; fountain pens; pencils; rulers; erasers; pencil sharpeners; pen and pencil cases; picture cards; picture books; songbooks; sheet music; cardboard and paper badges; paper flags; record, tape, cassette, CD, CDR, DVD, DVDR, Digital Audio Tape, Digital Audio Cassette, HD and 3D disc labels, inserts and inlays
Class 25: Clothing; footwear; headgear; parts, fittings and clothing accessories for the aforesaid goods
Class 41: Entertainment; entertainer services; music writing; music composition; song writing; score writing; score composition; composition of soundtracks; writing of soundtracks; musician services; music production services; production of music, musical recordings, musical performances and concerts; music concert services; performance of, and participation in, music, musical recordings, musical performances and concerts; music concert services; production services in the field of sound and/or visual recordings and entertainment; audio production services; provision and production of, and participation in, live entertainment, live performances and live shows; production of audio/visual presentations; arranging of music performances, music shows and musical entertainment; services providing entertainment in the form of live musical performances; performance of musicals; arranging and production of musical events; production of entertainment in the form of a television or radio series; production of shows; production of sound recordings; publication of books; music publishing services; publishing of musical works; publishing services; song publishing; publication of lyrics of songs in book and sheet form; publication of music and music books; arrangement and performance of dance, music and drama; arrangement and performance of radio and television programmes, films, shows, and/or recordings of sound, music or images; arrangement and production of theatrical and stage entertainment; arranging and conducting of colloquiums, conferences, congresses, seminars, symposiums, shows and workshops (training); arranging and conducting of lectures, demonstrations, displays, exhibitions, presentations, seminars, concerts, gigs, shows, events and festivals for educational, entertainment, teaching and training purposes; conducting instructional, teaching and coaching classes, courses, seminars, presentations, shows and workshops; organisation of competitions; electronic library services for the supply of electronic information (including archive information) in the form of electronic texts, audio and/or video information and data, games and amusements; providing on-line publications (non-downloadable); providing digital sound, music and video recordings, not downloadable, from the Internet; providing digital sound, music and video recordings, not downloadable, from MP3 and MP4 Internet websites; providing digital sound recordings, not downloadable, from the Internet; providing digital sound recordings, not downloadable, from MP3 Internet websites; providing digital music and sound recordings, not downloadable, from the Internet; providing digital music and sound recordings, not downloadable, from MP3 Internet websites; providing digital video, image, film, radio and TV recordings and programmes, not downloadable, from the Internet; providing digital video, image, film radio and TV recordings and programmes, not downloadable, from MP4 Internet websites; provision of information relating to music, musical recordings and musical entertainment; information, advisory and consultancy services relating to all of the aforesaid services
(‘the Goods and Services’)
Trade Mark: 5SOS
‘the Trade Mark’)
Endorsement: Convention priority claimed: 28 January 2013, European Community, No. 011523388 in respect of Apparatus for recording, transmitting or reproduction of sound, music, images, data and videos; sound, music, image, data and video recordings; multimedia productions; motion picture films; television films and programmes; animations; 3D motion picture films, television films and programmes, and animations; radio programmes; recording materials used for storage and transmission of digital and analogue data, images, sounds and recordings; pre-recorded audio and/or video media, CDs, CDRs, DVDs, DVDRs, DATs, DACs, HD discs, 3D discs, mini-discs, records, tapes, cassettes, discs and flash drives; laser-read discs for recording, reproducing, transmitting and playing sound, images, music, data or video; optical-read discs for recording, reproducing, transmitting and playing sound, images, music, data or video; audio, image, data and video files provided from the Internet; audio files in MP3 format; audio and/or video files in electronic format provided from the Internet; video files in MP4 format; MP4 videos; application software for mobile devices, tablet computers and smartphones; mouse mats; downloadable digital music or sound files provided from the Internet; downloadable digital video, image, film and TV files and programmes provided from the Internet; downloadable digital video, image, film and TV files and programmes provided from MP4 web sites on the Internet; refrigerator magnets; downloadable electronic media; publications downloaded in electronic form from the Internet; downloadable electronic publications provided from databases or the Internet; ebooks; audio books on CD, mini-disc, record, cassette or disc; talking books; printed matter in electronic form; on-line publications, magazines, periodicals and newspapers; text, audio and/or visual images and data transmitted by electrical or electronic means; printed matter in electronic form; photographs and stills in electronic form; sunglasses; eyewear; parts, fittings and accessories for the aforesaid goods in class 9; Paper, cardboard and goods made from these materials; printed matter; printed publications; stationery; advertising materials; books; pamphlets; magazines; postcards; pictures; posters; diaries; drawing instruments; greeting cards; address books; catalogues; brochures; programs; tickets; VIP tickets; laminated tickets and VIP tickets; calendars; photographs; signed photographs; autographed printed items; photographic albums; autograph albums; newspapers; newsletters; notelets; note pads; note books; stickers; decalcomanias; paper files; periodicals; instruction manuals; instructional and teaching materials; record token cards; gift token cards; wrapping paper; writing implements; pens; ballpoint pens; fountain pens; pencils; rulers; erasers; pencil sharpeners; pen and pencil cases; picture cards; picture books; songbooks; sheet music; cardboard and paper badges; paper flags; record, tape, cassette, CD, CDR, DVD, DVDR, DAT, DAC, HD and 3D disc labels, inserts and inlays in class 16; Clothing; footwear; headgear; parts, fittings and accessories for the aforesaid goods in class 25; Entertainment; entertainer services; music writing; music composition; song writing; score writing; score composition; composition of soundtracks; writing of soundtracks; musician services; music production services; production of music, musical recordings, musical performances and concerts; music concert services; performance of, and participation in, music, musical recordings, musical performances and concerts; music concert services; production services in the field of sound and/or visual recordings and entertainment; audio production services; provision and production of, and participation in, live entertainment, live performances and live shows; production of audio/visual presentations; arranging of music performances, music shows and musical entertainment; services providing entertainment in the form of live musical performances; performance of musicals; arranging and production of musical events; production of entertainment in the form of a television or radio series; production of shows; production of sound recordings; publication of books; music publishing services; publishing of musical works; publishing services; song publishing; publication of lyrics of songs in book and sheet form; publication of music and music books; arrangement and performance of dance, music and drama; arrangement and performance of radio and television programmes, films, shows, and/or recordings of sound, music or images; arrangement and production of theatrical and stage entertainment; arranging and conducting of colloquiums, conferences, congresses, seminars, symposiums, shows and workshops (training); arranging and conducting of lectures, demonstrations, displays, exhibitions, presentations, seminars, concerts, gigs, shows, events and festivals for educational, entertainment, teaching and training purposes; conducting instructional, teaching and coaching classes, courses, seminars, presentations, shows and workshops; organisation of competitions; electronic library services for the supply of electronic information (including archive information) in the form of electronic texts, audio and/or video information and data, games and amusements; providing on-line publications (non-downloadable); providing digital sound, music and video recordings, not downloadable, from the Internet; providing digital sound, music and video recordings, not downloadable, from MP3 and MP4 Internet websites; providing digital sound recordings, not downloadable, from the Internet; providing digital sound recordings, not downloadable, from MP3 Internet websites; providing digital music and sound recordings, not downloadable, from the Internet; providing digital music and sound recordings, not downloadable, from MP3 Internet websites; providing digital video, image, film, radio and TV recordings and programmes, not downloadable, from the Internet; providing digital video, image, film radio and TV recordings and programmes, not downloadable, from MP4 Internet websites; provision of information relating to music, musical recordings and musical entertainment; information, advisory and consultancy services relating to all of the aforesaid services in class 41.
The Trade Mark was examined as is mandated by section 31 of the Act and the Examiner reported grounds for rejection under subsections 44(1) and (2) of the Act in the following terms:
Your trade mark is identical to or closely resembles the following trade marks. These trade marks have earlier priority dates and are for the same or similar goods or services:
1002203, 1005901, 1149844, 1440300
• Your trade mark closely resembles the earlier trade marks because SOS is a major feature of each trade mark, with the addition on 5 in the present trade mark indicating a number in a series.
AND
Trade mark number: 1002203
• The goods are similar because the earlier trade mark covers adhesives which are similar to “stationery” as included in the present application.
Trade mark number: 1005901, 1440300
• The goods are similar because each of trade marks cover clothing and related items such as footwear and/or headgear, and/or accessories in class 25.
Trade mark number: 1149844
• The services are similar because both trade marks cover services such as education, training and coaching in class 41.
I have enclosed details of these trade marks.
PLEASE NOTE: I have taken into account any differences between these trade marks and your trade mark. I consider, however, that confusion between them is still likely to occur.
Following the restriction and/or qualification of the Applicant’s Goods and Services to those seen in the first paragraph of this decision, the Examiner maintained the section 44 ground of rejection in relation to registrations 1002203, 1005901, 1149844 and 1440300.
The Applicant requested to be heard. As a delegate of the Registrar of Trade Marks, I heard the submissions of the Applicant at a hearing in Melbourne on 4 September 2014 presented by Mark Williams of Allens, Patent & Trade Mark Attorneys.
Onus
In regard to where the onus lies in these proceedings I adapt the words of Murphy J in Phone Directories Co Australia Pty Ltd v Telstra Corporation Ltd [2014] FCA 373 (2014) 106 IPR 281 (‘Yellow’) at [15]:
There is a general presumption of registrability in favour of the applicant: Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 186 FCR 519 (“Sports Warehouse”) at [26] to [27] and the authorities cited therein.
The onus of proof in [proceedings] before a delegate of the Registrar and on appeal to the Court rests upon the opponent to registration: Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9 (“Food Channel”) at [32] per Keane CJ, Stone and Jagot JJ.
Accordingly, in the YELLOW Appeals as the opponents to registration, PDCA and Yellowbook must prove the grounds of opposition they rely upon. But where the enquiry proceeds to s41(6) of the Act (as I have found) or s41(5), then the onus shifts to Telstra as the applicant for the mark to persuade the Court of its entitlement to registration.
Absent an opponent in these ex parte proceedings, I must be satisfied that the ground as stated by the Examiner is well-taken. If well-taken, the onus then shifts to the Applicant under subsections 41(5) or (6) to persuade me of its entitlement to registration.
In Yellow, Murphy J also referred to the standard of proof at [36]:
It is unnecessary to descend into the differing views to explain my conclusion on this issue as that terrain is already well trodden. For the reasons stated in Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 237 ALR 787 (“Pfizer Products”) at [18] per Gyles J, Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60 (“Chocolaterie Guylian”) at [26] per Sundberg J, Sports Warehouse at [39] per Kenny J, and Allergan, Inc v Di Giacomo [2011] FCA 1540 at [11] to [12] per Stone J, I respectfully prefer the view that the Act does not impose a requirement on an opponent to a trade mark to show that it is “clearly” not to be registered. The onus is to be discharged to the ordinary civil standard.2
In Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37,241 Branson J observed:
Where the Act requires the Registrar to be "satisfied" of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.
Evidence
The Applicant has filed a statutory declaration by Mark Andrew Williams which I will further discuss below.
The Cited Trade Marks
Relevant details of the cited trade marks (‘the citations’) under section 44 are:
Registration No: 1002203
Priority Date: 17 May 2004
Goods:Class 1: Chemicals used in industry; adhesives for use in industry; adhesives used in construction
Class 16: Adhesives for stationery, household and do-it-yourself purposes
Trade Mark: SOS
Registration No: 1005901
Priority Date: 9 June 2004
Goods:Class 25: Clothing, apparel, jeans, T-shirts, jackets, socks, underwear, hats, general clothing items
Trade Mark:
Registration No: 1149844
Priority Date: 13 March 2006
Services:Class 36: Organisation of collections for institutions for coaching children and young people
Class 41: Education and training for children and young people; operating institutions for coaching children and young people
Trade Mark: SOS
Registration No: 1440300
Filing Date: 19April 2001
Convention Claim: 22 October 2010 via 2010/08496 Sweden
Goods/Services: Class 9: Protective sports helmets; protective helmets for skiers; safety helmets
Class 18: Pocket wallets; bags; bags for sports; bags for climbers; travelling bags
Class 25: Clothing, footwear, headgear; belts (clothing); money belts
Trade Mark:
At the hearing I advised the Applicant’s representative that the item ‘stationery’ within Class 16 of the Goods and Services includes by definition[1] items commonly sold by stationers, which includes adhesives (such as, for example, those sold as retractable sticks or as paste for children’s projects). Subsequent to the hearing the Applicant amended the item ‘stationery’ in Class 16 of the Goods and Services to read ‘stationery (excluding adhesives). As a consequence registration 1002203(1)(16) SOS is no longer a citation.
[1] Oxford English Dictionary: The articles sold by a stationer; writing and office materials. In later use freq.: spec. writing paper and envelopes.
Section 44
Section 44 of the Act relevantly provides:
44Identical etc. trade marks
(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.
Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(2)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).
In the matter before me the Applicant acknowledges that the citations have earlier priority dates than that of the Trade Mark and that the goods and/or services involved are similar or closely related. The Applicant submits, however, that the cited trade marks are not deceptively similar to the Trade Mark.
The expression ‘deceptively similar’ is defined by section 10 of the Act:
10Definition 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.
The assessment of the likelihood of deception or confusion is informed by the factors discussed in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 (‘Woolworths’) by French J at [50]:
(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."
Concerning the comparison of trade marks, Windeyer J said in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [13]:
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] HCA 51; (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".
The trade marks are to be compared within the context of their likely use; in In the Matter of An Application by the Pianotist Company Ltd for the Registration of a Trade Mark (1906) 23 RPC 774 at 777 Parker J said:
You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods ... you must refuse the registration, or rather you must refuse the registration in that case.
When considering deceptive similarity, the trade marks are to be considered to be ‘notionally’ used. That is, fair and normal use is to be imputed to the trade marks rather than notice taken of evidence of actual use or reputation: in C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; [2000] AIPC 91-640; [2001] ATPR 41-793; (2000) 52 IPR 42 (‘Henschke’) the Court put it this way (albeit in relation to infringement proceedings):
Consistently with the nature of the test of deceptive similarity and the authorities to which we have referred, it is not easy to see what relevance the reputation an applicant may have in a particular mark (even the "icon status" of that mark) has in an action for infringement brought in reliance on s 120(1) of the Trade Marks Act. (Clearly, and by contrast, it is relevant under s 120(3) and may be relevant under s 120(2)). Nor, with certain exceptions to which we shall come, were we directed to a course of authority in which, where there has been a question of infringement by use of a deceptively similar mark , the reputation of the plaintiff in the mark allegedly infringed has been taken into account. Indeed, the course of authority has been quite to the contrary. The search has concentrated on such matters as ascertaining the essential element of a mark, the impression taken away by one who looks at it, and how it sounds when pronounced. (Australian Woollen Mills, Shell, Saville Perfumery and Aristoc Ltd v Rysta Ltd [1945] AC 68 are all well known examples).
The Court went on to observe of the decision in Woolworths:
Woolworths was not an infringement case and, of course, the notoriety taken into account was not any notoriety attaching to marks already registered (or marks applications for which had been lodged before the Woolworths application); the notoriety attached to an element of the mark for registration of which Woolworths had applied. Nevertheless, in our view, Woolworths suggests a proposition for which the cases on which the appellants rely may be taken as authority. It is that, in assessing the nature of a consumer's imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration. It is unnecessary to consider whether the cases are authority for precisely that proposition. All that is necessary for present purposes is to hold, as we would, that they are authority for no wider proposition in relation to the relevance, on a question of deceptive similarity in proceedings where it is alleged under s 120(1) that a registered mark has been infringed, of evidence as to the reputation attaching to the mark. A wider proposition would not, in our view, be consistent with the earlier, and binding, authority to which we have referred. It is unnecessary, in order to decide this case, to go further.
The ‘notional use’ consideration is a corollary of the ‘normal and fair use’ test mentioned in Woolworths by French J at [88]:
It is not in dispute on this appeal that in applying the test provided for by s 44(2) of the Act, consideration is not to be given to the actual use made by the owners of the trade mark cited against the applicant for registration. The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration.
With the above principles in mind I turn to the evidence tendered by the Applicant. Mr Williams’s declaration concerns a musical group called ‘5 Seconds of Summer’ and the contraction of the name of that group to 5SOS. The name of this group is not notorious: apart from these proceedings I have not encountered the group and it is not suggested in the declaration that the group is notorious. Neither does it necessarily follow that if the name of the group were notorious that that directly equates to notoriety as a trade mark.[2] Accordingly, I am to compare the trade marks as per the discussion in Henschke, above. This extends, in my consideration to the likely pronunciation of the Trade Mark: while Mr Williams submitted that the pronunciation of the Trade Mark is similar to ‘five soss’, this conclusion is, in my view, only probable if one is familiar with the musical group and what they call themselves. (Similarly, and more familiarly, one is only aware of the significance of the letters INXS in relation to music groups when one is familiar with the eponymous band and consequently aware, because of that reputation, that the letters refer to the words ‘in excess’ rather than being a phonetic rendering of the word ‘inks’).
[2] Musidor BV v Tansing [1994] FCA 1242; (1994) 52 FCR 363; (1994) 123 ALR 593; (1994) 29 IPR 203; [1994] AIPC 91-083.
That said, I consider that the most likely pronunciation of the Trade Mark is ‘5S.O.S.’ (ie ‘five ess oh ess’) because of people’s familiarity with the distress call ‘Save Our Souls’ and its common abbreviation to S.O.S. or SOS. The numeral ‘5’ at the beginning of the Trade Mark does not detract from or submerge the perception or impact of the letters as being SOS as might be the case with coinages which conform with normal rules of construction and pronunciation such as ASOS, PSOS or SOSO. A pronunciation as ‘five soss’ depends, in my consideration, on familiarity with the musical group and their reputation and foreknowledge that that is how they pronounce their name. However, as discussed, this approach is not appropriate as outlined in Henschke.
Each of the remaining cited trade marks either contains the prominent letters SOS or consists of those letters. SOS is the sole indicium within the cited trade marks by which they can be readily recognized, remembered, recalled and requested. The letters within the Trade Mark are prominent and strike the untutored eye as being the distress call SOS preceded by the numeral 5. It is likely, in my consideration that a person seeking goods (or services) sold (or provided) under one of the cited trade marks will be caused to wonder whether the occurrence of the well-known distress call SOS within the Trade Mark on (or in relation to) the relevant Goods and Services indicates there is some connection between the goods and/or services sold or provided by the owners of the cited trade marks and those of the Applicant. Or that the occurrence in common of the letters SOS in relation to both the cited trade marks and the Trade Mark indicates that there is some connection between the Applicant and the owners of the cited trade marks.
Thus what is likely as result of the concurrent use of the Trade Mark and the cited trade marks is a species of confusion. The Act does not put any limitation on the scope of the word ‘confusion’. In Parker-Knoll Limited v. Knoll International Limited [1962] RPC 265 at page 174 Lord Denning said of the differences between ‘confusion’ and ‘deception’:
Secondly, ‘to deceive’ is one thing. To ‘cause confusion’ is another. The difference is this: When you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so.
In Pioneer Hi-Bred Corn Co v Highline Chicks Pty Ltd [1979] RPC 410, at 423 Richardson J, in the New Zealand Court of Appeal, said:
Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.
And in Radio Corp Pty Ltd v Disney [1937] HCA 38; (1937) 57 CLR 448 (the Mickey Mouse case) Rich J, at 454, said of the word 'confusion':
In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name "Walt Disney" summons up a picture of "Mickey Mouse" and the picture of Mickey Mouse reminds them of "Walt Disney". The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of "Mickey Mouse" with "Walt Disney". This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.
Consequently, grounds for rejection under section 44 exist in relation to 1005901, 1149844 and 1440300. Accordingly, I reject application 1556294.
If, however, the Applicant applies within two weeks to amend the Goods and Services as specified below, the Trade Mark will be accepted for possible registration:
1.Class 25: delete claim in its entirety.
2.Class 41: Delete the services:
arranging and conducting of colloquiums, conferences, congresses, seminars, symposiums, shows and workshops (training); arranging and conducting of lectures, demonstrations, displays, exhibitions, presentations, seminars, concerts, gigs, shows, events and festivals for educational, entertainment, teaching and training purposes; conducting instructional, teaching and coaching classes, courses, seminars, presentations, shows and workshops; electronic library services for the supply of electronic information (including archive information) in the form of electronic texts, audio and/or video information and data, games and amusements; providing on-line publications (non-downloadable);
In so directing, I note that the ‘concerts, gigs, shows, events and festivals’ in the Applicant’s Class 41 specification are qualified as being for educational, teaching and training purposes; and, that ‘electronic library services for the supply of electronic information’ are similar services to educational services. Both of the foregoing are necessarily similar services to those of registration 1149844: ‘Education and training for children and young people’. Further, both ‘electronic library services’ and ‘providing on-line publications’ are similar services to ‘Organisation of collections for institutions for coaching children and young people’ on registration 1149844.
The Applicant should also request corresponding amendments to its Convention Priority Claim.
Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
24 September 2014
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