Pelikan International Handels-Gesellschaft mbH & CO. KG, Re

[1994] ATMO 92

TRADE MARKS ACT 1955

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

Re:Opposition by PELIKAN INTERNATIONAL HANDELSGESELLSCHAFT mbH & CO. KG to the registration of Trade Mark applications numbers 573853 and 574178 in the name of LIFINIA PTY. LTD.

Application No. 573853 was lodged on 6th March, 1992 and application No. 574178 was lodged on 12th March, 1992, both in the name of LIFINIA PTY. LTD. ("the applicant").  The first of these applications, which is seeking registration of the words LE PELICAN in respect of "wallets and all other goods in this class", being class 18, was advertised as accepted in the Official Journal of 10th June, 1993.  The other application is for the word PELICAN, also in respect of "wallets and all other goods in this class", namely, class 18, and was advertised as accepted in the Official Journal of 17th June, 1993.  On 10th September, 1993, notices of opposition to registration of the two trade marks were lodged by PELIKAN INTERNATIONAL HANDELSGESELLSCHAFT mbH & CO. KG.  Filing and serving of the evidence in support was completed on 10th March, 1994 on both oppositions.  

The notices of opposition in relation to both trade marks set out 19 grounds of opposition of which I propose to select only those claims which basically are supported by the evidence, namely: that the applicant's trade marks are substantially identical and deceptively similar to the opponent's trade mark, the subject of a pending application No. 573252, and the marks of many registrations in the name of PELIKAN AKTIENGESELLSCHAFT, which company intends to assign its marks to the opponent, all the marks being in respect of the same goods, or goods of the same description as the applicant's goods; that owing to the extensive use and reputation of the opponent's trade marks and those of PELIKAN AKTIENGESELLSCHAFT, any registration or use by the applicant's subject trade marks in respect of the goods for which registration of those marks is sought, would cause deception or confusion in the trade, and that the marks would not be entitled to protection in a court of justice.

In response to official letters to the opponent and the applicant, which referred to overdue evidence and advised the parties that the Registrar intended to decide the opposition matter based on the material on file, unless reasons to the contrary were provided within a month, or a hearing requested, the opponent explained that it was attempting to negotiate with the applicant with a view to resolving the matter and therefore did not wish to apply for a hearing at that stage.  Accordingly, the matter of a hearing was put aside for a month until 14th October, 1994.  Since no further submissions, nor a request for a hearing were received by the specified time, the matter will now be decided on the written record.

Evidence in Support

This consists of a statutory declaration of Andrew David Rees, product manager of Esselte Dymo Australia Pty. Ltd. and three declarations of Ian Robert Tannahill, patent attorney of Pizzey & Company.  Mr. Rees states that since 7th May, 1990, his company has remained the sole agent responsible for the wholesale distribution of the "Pelikan" products in Australia, having purchased the business of the previous sole agent, Hogbin Excelsior.  He understands that the goods of the opponent, or its predecessors in business, under the trade mark PELIKAN, have been offered for sale in Australia for the past 74 years.  A list of the goods, which have been distributed since 7th May, 1990 by his company under the trade mark PELIKAN, principally fall in the categories:  stationery, adhesives, artists' materials and office requisites.  These goods are illustrated in a copy of a catalogue affixed to his declaration under exhibit "AR1".  Exhibits "AR2" and "AR3" display packages and copies of orders from retailers showing the mark PELIKAN with and without a pelican device.  Mr. Rees further declares that after acquiring the business of Hogbin Excelsior, his company has sold in excess of $6,000,000 worth of products bearing the PELIKAN mark, which would represent approx. $11,000,000 to $12,000,000 at a retail level.  During the period from 1989 to 1993, his company has expended $925,000 on advertising by way of brochures, advertisements in print media, as well as broadcasting of advertisements on radio and television. 

In the first of his declarations, Mr. Tannahill provides information obtained from Mr. Rees that Esselt (sic) Dymo Australia Pty. Ltd. has sold in Australia at least 864 different product items bearing the mark PELIKAN, together with the retail sales value of four randomly selected items.  The other declarations concern his observations that a retailer of stationery items and related accessories and two well known retail stores, all in Brisbane, offer for sale under the same trade mark a number of goods in respect of which the applicant is seeking registration of the subject marks and goods falling in the category of stationery.  He has also noted that in one of these outlets stationery items, which also include items of the type sold in Australia by the opponent bearing the mark PELIKAN, are located on the same floor and in close proximity to travelling bags, which has led him to express an opinion that in the event of the opponent's stationery items and leather wallets being sold in an area close to the applicant's goods, including wallets, the members of the purchasing public might be deceived or confused.  Furthermore, as a consequence of his investigations, he surmises that, in view of the substantial reputation acquired by the opponent in respect of the sale of the goods bearing the mark PELIKAN, the offer for sale of applicant's bags displaying the subject marks is likely to result in deception or confusion.

Decision
Section 33
To consider the question whether the subject marks qualify for registration under the provisions of s. 33, I will firstly decide whether they are substantially identical with, or deceptively similar to the marks of the opponent enumerated in the notices of opposition, with their respective statements of goods, which are as follows:

A116288

Inks, typewriter ribbons, perpetual stencil plates, carbon paper, painting and drawing materials (but not including paper or drawing books, or cardboard or pasteboard or pulpboard), water colours, ink pads, adhesives, fountain pens and all kinds of stationeries but excluding printed publications and bookbinding 

A221472

Artists' colours; varnishes for artists' colours; and lacquers for artists, said artists' colours including oil and water colours for use by artists, teachers, students, craftsmen, architects, draughtsmen and designers; for painting or colouring pictures, maps, assignments, designs, posters, placards, advertisements, drawings, photographs and engravings

A254561

Artists' colours; varnishes for artists' colours and lacquers for artists' colours, said artists' colours including oil and water colours for use by artists, teachers, students, craftsmen, architects, draughtsmen and designers; for painting or colouring pictures, maps, assignments, designs, posters, placards, advertisements, drawings, photographs and engravings

A254562

All goods in class 16 excluding: printed publications, book binding, photographs, photograph albums and photograph holders

A254563

Artists' colours; varnishes for artists' colour and lacquers for artists' colours said artists' colours including oil and water colours for use by artists, teachers, students, craftsmen, architects, draftsmen, and designers; for painting or colouring pictures, maps, assignments, designs, posters, placards, advertisements, drawings photographs and engravings

A334287

Games and playthings, excluding toy pelicans

A334288

Games and playthings

A440150

Writing instruments, felt tip pens, fibre pens, felt tip pens and fibre pens for text marking

A464197

Paper, cardboard and goods made from these materials, not included in other classes; carbon paper, pen and pencil carbon; stationery; inks, drawing inks; erasers; correcting media, correction fluids, correction films and correction ribbons; typewriter ribbons, stamp pads, stamping inks; duplicating inks; writing drawing and painting instruments; adhesives for stationery or household purposes; artists' materials, paint brushes; typewriters and office requisites (except furniture) instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; and excluding printed publications and bookbinding

A464198

Overhead projectors and accessories therefor in this class

A464199

Artists' colours; varnishes for artists' colours and lacquers for artists' colours, said artists' colours including oil and water colours for use by artists, teachers, students, craftsmen, architects, draughtsmen, and designers; for painting or colouring pictures, maps, assignments, designs, posters, placards, advertisements, drawings, photographs and engravings

A464200

Chemical products used in industry (manufacture), science and photography necessary for copying purposes, such as toners and developers, and duplicating fluid

A479452

Correction agents (stationery) adhesive substances for stationery

A490425

Correcting agents for correcting writing and typing mistakes

A504720

Adhesives for paper and stationery, as well as cartridges and devices for rolling adhesives for paper and stationery from a strip onto paper, photographs and other materials; correcting paper, correcting fluids, correcting strips and correcting agents for covering and correcting writing, typing and drawing errors, as well as cartridges and devices for unrolling such correcting agents; fibre markers, as well as unrolling cartridges and devices for marking and stressing points in texts, marking ink; cartridges and devices for rolling off stamped symbols, printed and neutral labels, as well as transfer pictures

A573252

Correcting fluids, correcting paper and correcting strips for covering and correcting writing, typing and drawing errors; cartridges and cassettes for unrolling such correcting paper and strips

It is noted that the mark of registration 440150 was removed from the Register under sub-section 70(2) of the Act on 6th May, 1993.  Since lodgment of the notices of opposition, the following registrations have been cancelled under section 19: 221472, 254561, 334287 and 479452, their cancellation having been advertised in the Official Journal of 29th September, 1994.

Sub-section 33(1) of the Act provides that:

Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, of goods of the same description as those goods or of services that are closely related to those goods, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.

The test to be applied to determine substantial identity has been set out by Windeyer J. in Shell Co. (Aust.) Ltd. v. Esso Oil (Aust.) Ltd. (1961) 109 CLR 407 at p. 414:

"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..."

Under sub-section 6(3) a mark is deemed deceptively similar if it is likely to deceive or cause confusion, and the relevant criteria have been enunciated by Dixon and McTiernan JJ. in Australian Woollen Mills Ltd. v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 at p. 658:

"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 opponent's marks may be divided in the following groups: marks which merely comprise the word PELIKAN, a device of a pelican,  the word PELIKAN with a pelican device, the word PELIKAN with other words, and the word PELIKAN with other words and a pelican device. 

In appearance, the words PELIKAN and PELICAN vary only in the letters "K" and "C" respectively.  To a speaker familiar with the German language, the differences in pronouncing PELIKAN, the German word for PELICAN, would be apparent in the long 'e' and 'a' vowel sounds, otherwise, from the viewpoint of the side by side comparison, the pronunciation of the words could be considered as virtually the same.  Persons who have no knowledge of German, are likely to see the word PELIKAN as a wrongly spelled form of PELICAN.  Consequently, I regard the marks of registrations 254563 and 334287 to be substantially identical with the mark of subject application 574178, and in support of my contention, I refer to "Pelican" Trade Mark [1978] RPC 424.

Being mindful of the fact that a pelican device mark is likely to be identified by referring to it as simply "pelican", as well as the fact that the other opponent's marks contain the word PELIKAN with either purely descriptive words with or without a pelican device, I believe the applicant's marks are likely to be responsible for causing deception or confusion when the marks are no longer available for close scrutiny, and given the strong likelihood that a number of the purchasers would only vaguely remember the exact composition of the opponent's marks. 

An analysis of the marks in terms of section 33 will not be complete, however, before deciding whether the relevant goods are the same goods, or goods of the same description.  In this regard, I will contemplate the trade outlets through which the goods are bought and offered for sale, the purpose and nature of the goods, and the type of customer seeking the goods (see Jellinek's Appn. (1946) 63 RPC 59).

The majority of the opponent's goods bearing the marks under consideration, which may be categorised as comprising different stationery supplies and office requisites, and materials for artists, instructors, teachers, students, craftsmen, architects, designers, photographers and printers, would be distributed and marketed by stationers, stationery, office and printing product suppliers, newsagents, and by various large retail outlets in their respective departments.  While a number of games and playthings could be available in some of the mentioned stores, the most extensive selection of such goods is offered for sale by toy merchants. 

In accordance with the Fourth Schedule to the Trade Mark Regulations, the statements of goods of the subject applications, which, besides wallets, are claiming other goods in class 18, encompass the following description of goods: leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.  Goods of such nature are normally made available in shops which specialize in selling leather goods and saddlery products, or those which sell travel goods, particularly luggage.  In the large department stores luggage is found with other travel goods. 

Quite clearly, the nature and uses of the applicant's products cannot be said to be even vaguely similar to the opponent's sets of goods.  The only relationship exists between schoolbags and other bags used for carrying or safeguarding the materials listed earlier by persons pursuing various occupations or professions, these goods being made of leather, imitation leather, vinyl, canvas or fabric.  To my knowledge, such goods are not normally made by the same manufacturer who produces the kind of goods in respect of which the opponent has registrations of the conflicting marks, nor do these goods share the same trade channels.  Notable exceptions would be well known fashion houses where the same trade mark could be applied to some stationery items, as well as such goods as handbags, wallets and purses; YVES SAINT LAURENT, DUNHILL, PIERRE CARDIN and OROTON are trade marks that readily spring to mind in that regard.  However, these names have become widely recognized and are firmly established as fashion houses which do manufacture a diverse range of goods.  For this reason, consumers would not be deceived or confused on seeing a variety of stationery goods, as well as purses, wallets, handbags and briefcases which, as noted by Mr. Tannahill, have been offered for sale under the same mark OROTON in Myer and David Jones stores in Brisbane.  The opponent's reputation does not extend to the manufacturing and selling of bags, purses or wallets for normal use as individual items; the evidence presented fails to convince me otherwise.  The leather wallets mentioned by Mr. Rees in the declaration in relation to the trade mark PELIKAN are described and illustrated at p. 5.6 of the catalogue '90, under exhibit "AR1", as writing instrument cases for two or three instruments.  These cases, being specially designed and for a specific purpose, would be exhibited in the same area and sold over the same counter as the writing instruments and, more often than not, sold together with the instruments.

In view of the foregoing reasons then, I find that no ground has been made out in terms of section 33, and the opposition based on that section does not succeed. 

Section 28
The provisions of this section of the Act are:

A mark -
(a)       the use of which would be likely to deceive or

cause confusion
(b)       the use of which would be contrary to law;
(c)       which comprises or contains scandalous matter; or
(d)       which would otherwise be not entitled to
           protection in a court of justice,

shall not be registered as a trade mark.

The primary concern of this section is the public interest to ensure that confusingly similar marks are not concurrently in existence, hence a mark similar to one which has become well recognised in the market place may offend the provisions of the section because of the possibility of causing deception or confusion of the marks. 

The provisions of para. 28(a) are to be considered in light of the well established principles in cases such as Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty. Ltd. (1954) 91 CLR 592, where the High Court said at p. 608:

"Registration should be refused if it appears that there is a real risk that 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 come from the same source."

Following the High Court decision in New South Wales Dairy Corporation v. Murray Goulburn Co-operative Company Ltd. 18 IPR 385, the Registrar follows the practice outlined in Titan Manufacturing Co. v. John Terrence Coyne 22 IPR 613, namely, that paragraphs (a) and (d) of s. 28 should be read conjunctively. Having regard to this practice, even if I were to find that the marks under consideration were likely to deceive or cause confusion in terms of para. (a), it would be also necessary to determine whether any blameworthy conduct existed on the part of the applicant, which would disentitle the subject marks to protection in a court of law.

In assessing the question of reputation, the relevant date is the date of lodgment of the present applications (see Southern Cross v. Toowoomba Foundry, supra). 

I do not think that the reputation of marks which have been in use in Australia for 74 years, the sales value of the goods bearing the marks having reached the impressive figures in the vicinity of $11 - $12 million in retail sales of artists' materials and various stationery and office items in a period of only three and a half years, as evidenced by Mr. Rees, can be disputed.  However, as I have already commented in relation to section 33 considerations, the opponent's reputation has not been shown by evidence to enter into the area of the kind of goods specified in the present applications, nor is it likely that the respective goods are produced by the same manufacturer.  Moreover, the opponent's evidence is lacking in establishing that a substantial number of persons well acquainted with the opponent's marks as being associated with the opponent, on seeing the applicant's marks on goods of the same general description, "would either infer that those goods had come from the same source, or at least would be caused to wonder whether that might not be the case" - Kendall Co. v. Mulsyn Paint and Chemical (1963) 109 CLR 300, p. 305.

Concerning the opponent's allegation that the applicant's marks are disentitled to protection in a court of justice, this statement has not been substantiated by evidence as to any improper conduct for which the applicant might be responsible.

Consequently, the opposition based on the grounds of section 28 fails, both in the sense of paras. 28(a) and 28(d) of the Act.

In light of my previous conclusions, I find that the opposition has failed on the grounds relied upon.  I therefore dismiss the opposition and direct, subject to any appeal from this decision, that the application proceed to registration.  The applicant is entitled to costs which I award.

Vija Zars
Senior Examiner

30 November 1994