Oracle Corporation v Newcom Technologies Pty Ltd

[2000] ATMO 105

TRADE MARKS ACT 1995

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

Re:Opposition by Oracle Corporation to registration of trade mark application 717241(9, 37, 38) - Oratel - filed in the name of Newcom Technologies Pty Limited.

Background

In this issue Newcom Technologies Pty Limited ('Newcom') filed application on 13 September 1996 to register the trade mark ORATEL for the goods and services in the respective classes nominated below:

Class: 9  

Telecommunication equipment including mobile phones, parts and accessories for mobile phones; electronic and electrical equipment for use with telecommunication equipment; computer software for telecommunication equipment; integrated circuits including sim chips

Class: 37 

Construction, maintenance and repair services relating to communication equipment

Class: 38 

Communication services including provision of telephone services

The application was accepted on 8 April 1997 and advertised as such in the Australian Official Journal of Trade Marks on 24 April 1997. 

On 21 October 1997, after seeking and receiving an extension of time in which to do so, Oracle Corporation, of California, ('Oracle') filed notice of opposition to the registration of the trade mark.  The grounds specified in the notice are wide ranging but the relevant heads of opposition will become apparent in these reasons.

The evidence was filed in accordance with the Act and regulations and, on 31 August 2000, I heard the parties in relation to the issue in Canberra.  Mr Tim O'Callaghan, of Piper Alderman Lawyers of Adelaide, represented Newcom.  Ms Fiona Symons of Davies Collison Cave represented Oracle.

The evidence

The evidence presented by the parties is summarised in the table immediately below; however, for reasons which will become obvious in these reasons, I will not discuss it at length except to specify the registered trade marks on which Oracle relies.

Declarant	Shortform	Date Made	Exhibits
Michael Wilde	Wilde 1	28 August 2000	1 - 10
Keith Benson	Benson	18 June 1999	KB-1
John Hogarth	Hogarth	18 June 1999
Cary Michael Stephen Dreelan	Dreelan	11 August 1999
Michael Wilde	Wilde 2	16 May 2000	A - C

The registrations on which Oracle mostly relies in its opposition are mentioned in the Wilde 2 declaration.  These are registrations 386207 and 607462 of which brief details are:

Reg Number:   386207
Owner:  Oracle Corporation
Priority Date:  17 January 1983
Goods:  Prerecorded computer programs recorded on tape, disks and diskettes.
Trade Mark:    ORACLE

Reg Number:   607462
Owner:  Oracle Corporation

Priority Date:  22  July 1993

Goods:Communication services; electronic transmission and exchange of voice, data and digital information; networking and inter-connection of computers and terminals; message handling services

Trade Mark:    ORACLE

Reasons

The grounds of opposition argued by Oracle at the hearing were in terms of sections 44 and 60 of the Act.  Ms Symons formally abandoned any other head of opposition at the hearing.  For the sake of convenience and brevity in these reasons, I deal with both of these sections jointly. 

Section 44

As far as it relates to this issue, section 44 states:

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.

(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).

Note 3:  For priority date see section 12.

As Oratel's application is filed in respect of both goods and services, the provisions of subsections 44(1) and (2) apply.

The prior Oracle registrations have priority dates earlier than that of this application.

Section 60

This section 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.

Whereas section 44 is couched in terms of a prior application or registration, section 60 specifies the reputation of a trade mark, which may or may not be the subject of an application or registration.  I will mention now that the ORACLE trade marks on which Oracle relies, had a huge reputation in their field at the relevant date which is that Newcom applied to register this opposed application: 13 September 1996.  However, it is common to both sections 44 and 60 that the trade mark or trade marks on which an opponent relies should be substantially identical or deceptively similar to the opposed trade mark.  While Mr O'Callaghan argued at some length that the goods and services of this application were not closely related to (and are in fact distinct from) those of the registrations on which Oracle relies, I believe that he eventually conceded that the pertinent goods and services as specified on the application and prior Oracle registrations are, in fact, closely related. 

However, I believe that it was common ground between Ms Symons and Mr O'Callaghan at the hearing that if the trade marks in question (ORACLE and ORATEL) are neither substantially identical nor deceptively similar, the opposition under both sections 44 and 60 must fail.

As Ms Symons, for Oracle, conceded that the trade marks in question were not substantially identical, I will discuss the words deceptively similar.

The term deceptively similar is defined in section 10 of the Act which says:

Definition of deceptively similar

10. 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.

In The Shell Co. of Australia Ltd. v. Esso Standard Oil (Australia) Ltd. (1963) 109 CLR 407, Windeyer J said of deceptive similarity:

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) 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" (1937) 58 CLR, at p 658.

Further, some rules of the comparison of trade marks apply: Lord Parker (then Parker J) in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777), 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 — then you may refuse the registration, or, rather, you must refuse the registration in that case.

I will consider the market background shown in the evidence and then the similarity of the trade marks themselves in applying Pianotist, above, to this issue. 

Oracle's evidence shows that it builds business alliances with telecommunications operators and designs data-base systems with these partners for use in cable television, telephony and Internet mail applications, among others.  These business alliances and partnerships are, say Oracle, of particular relevance here since, as part of the alliance agreements, their partners formally agree not to use the trade mark ORACLE or to use or attempt to register any trade mark which has the "prefix" 'ORA-'.  The element ORA- is, states Oracle's evidence, well recognised throughout the telecommunications industry as denoting Oracle's family of trade marks.

Further than this, said Ms Symons, for Oracle, I should consider that, while the evidence shows that the Oracle goods and services are concerned with large, expensive and elaborate data-base management systems, the context of the comparison of the trade marks is not just against this background.  Ms Symons drew my attention to the so-called 'notional user' test in Re Application by Smith Hayden & Co Ltd (1946) 63 RPC 97 at 101:

… assuming user by the opponents of their trade marks in a normal and fair manner for any of the goods covered by the registration of their trade marks, am I satisfied that there will be no likelihood of deception or confusion among a substantial number of persons if the applicants also use their trade mark normally and fairly in respect of any goods covered by their proposed registration.

I drew Ms Symons attention to the words of French J in Registrar Of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 where he said of the 'notional user' test in Smith Hayden, above:

So far as this passage, reflected in oral submissions, suggests that an applicant must satisfy the registrar or the court that there will be no reasonable likelihood of deception and confusion it does not represent the law as it stands under the 1995 Act. The position now is that the registrar and the court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

However, Ms Symons' argument that I must consider the opponent's specifications at their widest in the context of the comparison of the trade marks is well taken.   The specifications must be read as reading not only data base management systems such as are sold to major communications systems operators but also as including cheap 'off the shelf'' computer programs for any purpose such as could be bought by members of the public at department stores, electronics retailers or even, nowadays, newsagencies.

Turning now to the similarities of the trade marks, Ms Symons was careful in her submission to always refer to the Newcom trade mark as ORATLE and argued strongly that I should accept that this is the way that the word is naturally pronounced.  That is, with any emphasis on the final syllable suppressed, the letter 'E' not vocalised and some stress on the element 'ORA-'.  The pronunciation is, in this way, similar to the pronunciation of the word 'ORACLE'.  Mr O'Callaghan, for his part, pronounced the trade mark ORA - TEL; that is, with the initial element 'OR' pronounced as in 'orange', and with emphasis put on the suffix 'TEL', which he pronounced as it is in the word 'telephone'.

I think that I prefer the pronunciation suggested by Mr O'Callaghan and I believe that this is the way that the trade mark will be naturally pronounced by most Australians.  I believe that when most people confront a new word, particularly an invented word such as ORATEL, the pronunciation that they adopt for that word is governed by the known rules of language and pronunciation but also in part both by the context in which they see the word and the perceived norms of commercial practice.  The setting in which the trade mark ORATEL will be seen, per the test in Smith Hayden, is in the broad context of the telecommunications industry.  I believe that the public is well aware of the practice of traders in coining fresh words and trade marks with the employment of the word element 'TEL', either as a suffix or a prefix, to help denote that the goods or services are in the telecommunications field.  Several well-known examples come to mind immediately such as the telecommunications service providers ONE.TEL and TELSTRA; the gradual seepage of the word TELECOM into language; or, the coinage of new words such as TELECOMMUTE.

In London Lubricants (1920) Ltd's Appn (1925) 42 RPC 264, Sargant LJ commented on the importance of prefixes when comparing trade marks. However, while the word element 'ORA' does occur in dictionaries as a word in its own right, or even elsewhere as a surname, it does not appear to be a recognised prefix in the English language. According to the Oxford English Dictionary, the provenance of the word ORACLE is from Latin word 'Oraculum' where it had, in turn, been compounded from the word 'Orare' (to speak) and the suffix '-culo' (of material instrument).  Any attempt to split the word 'ORACLE' might therefore be unnatural and unrealistic - thus the element ORA is less likely to be recognised as a prefix. 

Further, when the words ORACLE and ORATEL are pronounced, the stress in the former is at the start of the word and the stress in the latter is at the end of the word.  As remarked by the Registrar's delegate in Mct Unilabels Sa v Peter Katholos (1993) 27 IPR 176 at 183:

[W]hile it may be true as a general rule that the first syllable of a word is more important, there will be cases nevertheless where the emphasis will be placed on some other syllable: Jenoptik Jena GmbH v Nippon Kogaku KK noted (1985) IPD 8053; Maker’s Application noted (1986) IPD 9002; Chanel Ltd v Chantal Chemical & Pharmaceutical Corporation (1990) 19 IPR 108. In the present case the accent on the second syllable would attract the emphasis.

I also accept Mr O'Callaghan's argument that the trade marks ORATEL and ORACLE are readily distinguished as the word ORACLE has known meanings in the English language by which it will be remembered whereas the word ORATEL does not.  The entries for the word ORACLE in the Oxford English Dictionary are extensive and well known and I will not quote them here.  However, I think that it is obvious that when the word ORATEL is encountered it is most unlikely that it could be mistaken for the word ORACLE.

I turn now to Oracle's belief that it has some monopoly in the element 'ORA-' or that this element is seen by others in trade to denote the goods and services of Oracle.  In view of the state of the Australian Register of Trade Marks, this belief is obviously erroneous.  For example, registration 274767(9) ORACLE is recorded in the name of Kodak (Aust.) Pty Ltd, and the goods in respect of which the trade mark is registered are, "Photographic, cinematographic, and optical instruments and apparatus; microfilming apparatus; input verifiers; interpolation, retrieval and display equipment; but excluding prerecorded computer programs recorded on tape, disks and diskettes."  Trade mark registration 402131(9) ORATOR is in the name of Dynamic Technology Pty Ltd and covers the goods "Telephones, telecommunication systems and audio conferencing terminals, and parts and accessories thereof included in this class."  Registration 567594(9) ORA exists in the name of Alliance Research Corporation and nominates the goods, " Hardware mounts for installing electronics; electrical connectors, electric cables, antennas, magnetic head cleaners, compact disc cleaners, microphones, speakers, electrical fuses, fuse holders, switches in this class, electrical clips and test clips, soldering irons in this class, telephone wire, semiconductors and integrated circuits."  There are numerous registrations of the word ORANGE in Class 9 and associated Classes by Orange Personal Communications Services Limited.  Therefore, whatever Oracle's private arrangements with its business partners are, its belief in the significance of the element ORA as so broadly denoting its goods or services is mistaken.

In terms the test in Smith Hayden, above, and of French J's words from Woolworths, above, I am not satisfied, for the above reasons, that there is a reasonable likelihood of deception or confusion arising if the applicants use their trade mark normally and fairly in respect of any goods covered by their proposed registration.

Decision

Oracle has not been successful in making out a case for its opposition.  I therefore dismiss the opposition in its entirety.  I direct that the application may proceed to registration after 30 days from the date of this decision, on payment of the appropriate fees. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

Newcom (having been successful) are entitled to claim their costs, if they so wish, at the official scale, and I award these costs against Oracle.

Ian Thompson
Hearing Officer

28 September 2000