Opposition by Stonehenge Homes & Associates Pty Ltd to registration of trade mark application number 816152(19) in the name of Jerzy Skryplonek

[2001] ATMO 80

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Stonehenge Homes & Associates Pty Ltd to registration of trade mark application number 816152(19) in the name of Jerzy Skryplonek

Background

Trade mark application number 816152 was filed on 6 December 1999 by Jerzy Skryplonek (the applicant).  The application was for the trade mark consisting of the word STONEHENGE and device, as depicted below

in respect of "sandstone tiles, slate tiles, timber flooring, ceramic tiles, porcelain tiles, terracotta tiles, limestone tiles" in class 19.

The trade mark application was duly examined under the Trade Marks Act 1995 (the Act) and was advertised as accepted in the Australian Official Journal of Trade Marks on 13 April 2000.

On 28 June 2000, within the time allowed, Stonehenge Homes & Associates Pty Ltd (the opponent) filed Notice of Opposition to registration of the trade mark.  The Notice of Opposition listed 14 grounds of opposition.  However, 13 of these grounds were neither supported by the evidence, nor argued by the opponent.  Thus, I find those grounds have not been established.  The remaining ground is that under section 60.

Following allowance of two extensions of time in which to do so, evidence in support was filed and served by 28 December 2000.  The applicant did not file evidence in answer.  Neither party requested a hearing and the matter came before me as Registrar's delegate to decide on the material on file.

Evidence

The opponent's evidence in support comprises the Statutory Declaration of Mark Davis, who is a director of the opponent, Stonehenge Homes and Associates Pty Ltd.  Mr Davis states that the opponent is trustee for the Stonehenge Group, which consists of seven associated entities.

He says the word STONEHENGE was first used by the opponent's predecessor in business from 1980 until 1989, when the opponent acquired all relevant trade mark rights associated with the mark.  The opponent, together with the Stonehenge Group, has used the word STONEHENGE continuously since 1989 in respect of "architectural services, interior design, building services, development of property, project management and building materials". 

Mr Davis provides details of industry awards received by the opponent, and the extent of promotion of the trade mark via information brochures, telephone directory advertisements, newspaper and magazine articles, display homes and the opponent's website. 

Attached to the declaration are exhibits "MD1" to "MD23" which include samples of advertising material and brochures, newspaper and magazine articles, company stationery, and sales and advertising figures for the years 1993 to 1999.

Reasons

Section 60 of the Act provides:

Trade mark similar to trade mark that has acquired  a reputation in Australia

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

To be successful under section 60, the opponent must show the existence of a trade mark that is at least deceptively similar to the applicant's mark, demonstrate that the pre-existing trade mark had a reputation in Australia before the priority date of the application, and that because of that reputation, deception and confusion are likely to occur.  The issue of substantial identity or deceptive similarity must be assessed in isolation from the question of reputation.  Under section 60, the opponent may rely on a trade mark which is not registered, but which has been used at common law.

Trade mark use

Section 17 of the Act defines a trade mark as:

What is a trade mark?

17. A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

Note:  For sign see section 6.

Here the opponent relies on its common law use of the word STONEHENGE.  To establish it has used the word STONEHENGE as a trade mark, it must show that it has been used as a "badge of origin" - as confirmed by Gummow J in Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd[1], where at 25 His Honour says:

[1] (1991) 21 IPR 1

. . .the primary function of a trade mark registered in Part A or B of the Register is that of distinguishing the commercial origin of goods or services sold under the mark.  The registered mark serves to indicate, if not the actual origin of the goods or services, nor their quality as such, the origin of that quality in a particular business, whether known or unknown by name.

Information and brochures in the opponent's evidence show the word STONEHENGE in prominent display, and demonstrate that the opponent has, and is using, the word STONEHENGE to denote the commercial origin of its goods and services.  I am therefore satisfied the opponent has used the word STONEHENGE as a trade mark as defined by section 17 of Act.

Comparison of trade marks

The standard test for substantially identity of trade marks is that established in Shell Co(Aust) Ltd v Esso Standard Oil (Aust) Ltd[2]:

[2] (1963) 109 CLR 407 at 415 (Shell v Esso)

In considering whether marks are substantially identical they should, I think, be compared side by side their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison . . .

I find that the trade marks are not substantially identical.  On a side by side comparison, I believe the differences between the two marks are readily apparent.  The opponent's mark is simply the word STONEHENGE.  The applicant's trade mark consists of the word STONEHENGE, together with a stylised depiction of well-known English stone monument, and disc-shaped moon or sun.  The graphic features included in the applicant's mark make it very different from the plain word, STONEHENGE.

In deciding whether or not the trade marks are deceptively similar, I have applied the relevant tests set out in Australian Woollen Mills Ltd v F S Walton & Co Ltd[3] and Shell v Esso, supra.

[3] (1937) 58 CLR 641

In Shell v Esso, supra, 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 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 television exhibitions.

Considering the individual impressions created by the two marks, I find they are deceptively similar.  Both trade marks create the impression of the well-known monument, Stonehenge, which exists in Wiltshire, England.  Both trade marks would be known and referred to as "Stonehenge" in the marketplace.

Priority and reputation

The relevant priority date is 6 December 1999, the date that the application was filed. 

The evidence shows the trade mark STONEHENGE has been used by the opponent at least since 1989.  I note that a predecessor in business used the mark from 1980 until 1989.  However, it is not apparent to what extent the mark was used during that period.  Since 1989 the opponent's use in respect of services has been confined principally to the State of Victoria.  From the advertising material provided, that use has been mainly in respect of the prestige home market.  Sales figures are around $6 million annually.  This figure is not particularly high, considering the nature of the opponent's services.  I note Exhibit "MD13" shows homes in the opponent's Williams Bay development are priced in the $300,000 to $550,000 bracket.

Gross export earnings amount to about $6 million over a period of five years. 

The trade mark has been promoted widely in newspapers and building trade publications.  Apart from some limited promotion in nationally-distributed magazines, promotion of the trade mark has been via the Victorian media.  The opponent's services and products are also advertised Australia-wide by way of its website.  As the date of construction of the site has not been disclosed, I am unable to attach much weight to this.

The opponent has received various industry awards, including Australian Home of the Year Award in 1994 ($500,000 plus category).

Taking into account the evidence provided, I am satisfied the opponent had established a reputation in respect of architectural services, project management, building construction and building renovation services, before the relevant priority date.  However, that reputation was limited to the State of Victoria and was mainly in respect of prestige homes.  As use of the trade mark on building materials has been in relation to export products, very little reputation would have been established in Australia in respect of those goods. 

Deception and/or Confusion

The criteria for assessing the likelihood of deception and confusion were set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd[4]. Those criteria were recently considered by French J in Registrar of Trade Marks v Woolworths Ltd[5].  At 426, His Honour, identifying the presumption of registrability as an underlying policy of the Act, said:

[4] (1954) 91 CLR 592 at 594

[5] (1999) 45 IPR 411

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.

I have found that at the relevant priority date the opponent had established some reputation in respect of a deceptively similar trade mark to that of the applicant. Given the limitations of the reputation established, however, I do not consider that use of the applicant's trade mark in respect of "sandstone tiles, slate tiles, timber flooring, ceramic tiles, porcelain tiles, terracotta files, limestone tiles" would be likely to deceive or cause confusion in terms of the above test outlined by French J.  I therefore find that the ground of opposition under section 60 has not been made out.

Decision

As the delegate of the Registrar in this matter, I find the opponent has not established any of the opposition grounds relied on, and accordingly I dismiss the opposition. 

I direct that, subject to payment of the registration fee, this application may proceed to registration.

Frances Aarnio
Senior Examiner

31 August 2001