Oxford Shop Menswear Pty Ltd v Yumex Company, Limited

[1999] ATMO 87

TRADE MARKS ACT 1995

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

RE:Opposition by OXFORD SHOP MENSWEAR PTY LIMITED to the registration of trade mark application 735642 in the name of YUMEX COMPANY LIMITED for the word trade mark OXFORD CLUB in classes 18 and 25.

Background

On 30 May 1997, Yumex Company Limited (the applicant) filed the above numbered application for the word mark OXFORD CLUB in respect of goods in classes 18 and 25. The class 18 goods were listed as 'Trunks, bags, travelling bags, sacks, backpacks, cases, pouches and wallets, and accessories for all the aforementioned goods', whilst the class 25 goods were listed as 'Clothing, footgear, headgear and accessories for all the aforementioned goods included in this class including belts'. The application was accepted on a first examiner's report. Acceptance was advertised in the Australian Official Journal of Trade Marks of 18 September 1997.

A notice of opposition was filed on 18 December 1997 in the name of Oxford Shop Menswear Pty Limited (the opponents). The grounds, under the Trade Marks Act 1995 (the Act), on which opposition is based, are fall under s.41, s.42(b), s.43, s.44, s.58, s.59 and s.60.

The Evidence

Despite approved extensions of time, amounting to a total of 12 months, being granted to the opponent, no evidence was filed or served to support the opposition. The applicant also chose not to file or serve any evidence. During the proceedings, the agent for the opponent advised that it no longer represented that party. Opposition, however, was not withdrawn and the applicant requested to be heard in the matter. I heard the matter, as a delegate of the Registrar, on 13 August 1999 in Canberra.

At the hearing, Mr Andrew Morton of the Melbourne office of Griffith Hack represented the applicant, whilst the opponent remained unrepresented.

Submissions

Mr Morton contended that the applicant had no case to answer, because the opponent had not adequately met its onus to present any reason why the application should not proceed to acceptance. He added, however, that in case I reviewed the file and felt that the application still faced some difficulty, he wished to address some of the grounds that the opponent had raised in the notice of opposition.

The grounds addressed by Mr Morton were those expressed in terms of s.41 and s.44.

The attorney argued that OXFORD CLUB was capable of distinguishing the applicant's goods from those of other traders. He submitted that these words were not in the same category as simply the word OXFORD, which must suffer some problem because it is a word that other traders may need to use to indicate the geographical source of goods. Such a problem did not exist for OXFORD CLUB, he claimed, because it would not prevent other traders making use of the word OXFORD to indicate the source of goods. Mr Morton also stated that the mark OXFORD CLUB, when viewed as a whole, merely provides some allusion to an exclusive club or fashion fraternity, but provides no descriptive meaning when applied to the goods of interest.

He addressed the opposition in terms of s.44 at some length. Mr Morton said that the opponent was the registered owner of trade mark numbers 603592 to 603599, inclusive, and also the owner of four expired registrations, numbers 577576, 577577, 578795 and 578796. (These 12 trade marks are reproduced in the Discussion section of this decision.) Mr Morton went on to outline the differences between these marks and the present application. He conceded that some of the opponent's registrations contained co-incident goods with the application. The differences in the actual trade marks, however, he argued, were substantial and could not lead to the marks being considered either substantially identical or deceptively similar. In addition, he pointed out that the only common feature between the opponent's trade marks and the application, being the word OXFORD, had been disclaimed by the opponent in all of its registrations.

Discussion

There were seven separate grounds raised by the opponent in the notice of opposition. No evidence was submitted to support these grounds. Without some sort of evidentiary support I believe that the grounds raised under s.42(a), s.43, s.58, s.59 and s.60 can be dismissed as not being valid. The remaining two grounds, under s.41 and s.44, however, may have been argued at a hearing without evidence, on the basis of the registrability of the mark and the state of the Register. Mr Morton chose to make submissions in respect of these grounds at the hearing.

(a) Section 41 - Trade mark not distinguishing applicant's goods or services

At sub-section 41(2) the Act reads:

(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of another person.

In the present case, only if the trade mark OXFORD CLUB is not capable of distinguishing the applicant's class 18 or class 25 goods from the goods or services of other traders would the mark fail the test for registrability under s.41. To assist the matter further sub-section 41(3) of the Act reads:

(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

The expression 'inherently adapted to distinguish', as found in s.41(3) above, has been discussed in Blount Inc v Registrar of Trade Marks 40 IPR 498 (the Oregon case) by Branson J. Her Honour there confirms that the expression is to be understood under s.41(3) of the Act in the same way as under s.26(2) of the Trade Marks Act 1955 with the words at 506:

The notion of a trade mark being inherently adapted to distinguish the designated goods was of primary significance under the 1955 Act. There is no reason to think that the phrase "inherently adapted to distinguish the designated goods from the goods of other persons" appearing in s.41(3) of the Act is not intended to be understood in the light of decisions under the 1955 Act, and comparable United Kingdom legislation which includes references to inherent adaptability.

Earlier in the decision, Justice Branson cites Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 (the Michigan case) as outlining the relevant test, by which the inherent adaptability of a trade mark to distinguish the goods as belonging to a particular trader, should be made. Justice Kitto sets out this test at 514 as follows:

… the question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

Although this test was framed in the context of a trade mark for goods involving a single word, the principle involved applies to the inherent adaptability of any trade mark to distinguish the goods or services of one trader from the goods or services of another trader. So the question to be resolved in the present case is, 'what is the likelihood that other persons, offering similar goods or services to the applicant's class 18 or class 25 goods, and being actuated by proper motives, will think of the words OXFORD CLUB and want to use them in connection with their services'.

On this issue, I agree with Mr Morton's submissions. He argued that granting this trade mark registration would not provide rights for the applicant in the word OXFORD to prevent another trader from legitimately indicating the source of their goods. He said that it was the mark as a whole that must be assessed and that no other trader should require OXFORD CLUB without improper motive. I agree, and so find that the opposition in terms of s.41 is not successful.

(b) Section 44 - Identical etc. trade marks

The relevant legislation concerning this ground of opposition reads as follows:

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 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.

The opponent's trade marks are shown below. Trade mark numbers 603592 - 603598 inclusive are shown at representation number 1. Representation number 2 depicts trade mark numbers 578795, 578796 and 603599. The final representation is for trade mark numbers 577576 and 577577.

No. 1  No.2  No. 3

Despite four of the trade marks being in a status of 'expired', renewal is still possible at this stage and so, if they fulfil the criteria of s.44, they may still provide a barrier to the present application.

All 12 of the opponent's marks have a priority date before the present application date of 30 May 1997. Some of the registrations contain goods co-incident with the present application. These are 577576(18), 577577(25), 578795(18), 578796(25), 603594(18) and 603596(25). These six marks cover all three of the above representations. Thus, the only relevant question that I must determine, for s.44 to be triggered, concerns whether or not any of the opponent's marks are either substantially identical or deceptively similar to the applicant's mark.

(b)(i) Substantially identical trade marks

The test for 'substantial identity' has been well set out in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd., 109 CLR 407, at page 414, Windeyer J said:

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...

A comparison of the present mark, OXFORD CLUB, with any of the three representations above provides obvious differences for each case. I find that the marks are not substantially identical.

(b)(ii) Deceptively similar trade marks

On the matter of deceptive similarity of the marks, the test is centred upon the impression based on an imperfect recollection of one mark when the two marks to be compared are not seen side by side. The first of these citations is in the case of Rysta Limited's Application (1943) 60 RPC 87 where Luxmoore LJ held at 108 that:

It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.

The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants.

The other reference, involving the test for deceptively similar trade marks, was that outlined in the judgement of Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F. S. Walton & Co. Ltd. (1937) 58 CLR 641 at 658 as follows:

In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.

The impression to be recollected in the applicant's mark, in my opinion, would be of a type of 'exclusive club' or 'fashion fraternity' as suggested by Mr Morton. Not only does the word 'club' provide such an association of idea, but the word 'oxford' also adds to this concept. Oxford Street in London is reputed to be the busiest street for shopping in London with approximately four million people using the shopping area each day. Given the nature of the applicant's goods, being clothing, clothing accessories and travel goods, I believe that the trade mark OXFORD CLUB contains many links to the idea of an 'exclusive club' or 'fashion fraternity'. Even where the recollection of an individual was not as clear, the person who had already seen the mark would recall that it was more than simply a geographical reference for OXFORD. The impression or recollection formed in the mind of the prospective purchaser by all three of the opponent's marks, given the prominent device of the rower, would be a link or reference to the well known Oxford University rowing team. The word OXFORD in the opponent's marks would be more likely to be seen as a geographical place name than in the applicant's mark and the device of the rower provides a further clear difference between the marks. The word SHOP in two of the three of the opponent's marks provides another element to differentiate those marks from the applicant's mark.

The only common element in the applicant's and the opponent's marks is the word OXFORD. However, even this commonality is undermined by the different ideas evoked by the use of that word in the marks as a whole by the respective parties, as described above.

From the foregoing, I find that the applicant's OXFORD CLUB trade mark is not deceptively similar to the opponent's composite trade marks containing the device of the rower. As such, the ground of opposition under s.44 is not made out.

Conclusion

From the foregoing, I have found that the opposition fails on all seven grounds claimed in the notice of opposition. Therefore, as a delegate of the Registrar, and subject to an appeal from this decision, I dismiss this opposition.

I can see no reason why costs should not follow this decision, and thus I award costs in this matter to the applicant, Yumex Company, Limited.

Don Nancarrow
Acting Hearing Officer
27 August 1999.