Peter Katholos v MCT Unilabels S.A

[1993] ATMO 11

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by MCT UNILABELS S.A. to Trade Mark Application No. 462838 in the Name of PETER KATHOLOS

Application no. 462838 was lodged on 3 April 1987 in the name of PETER KATHOLOS ("the applicant"). It sought registration of the trade mark shown below in respect of "footwear and clothing" being goods included in International Class 25.

The application was duly accepted, subject to a disclaimer of the right to the exclusive use of the word SPORT, and advertised as such in the  Official Journal of 13 October 1988. On 13 January 1989 notice of opposition to registration of the mark pursuant to s49 of the Act was lodged by MCT UNILABELS S.A., a Swiss company ("the opponent"). The evidence in support of the opposition was served on the applicant on 21 July 1989. The applicant served its evidence on the opponent on 21 February 1990 and service of the opponent's evidence in reply was completed on 11 June 1991. On 30 April 1992 the opponent requested a hearing of the opposition and the matter came on before me in Canberra on 20 August 1992. Mr David Shavin of counsel appeared for the opponent and Mr Leon Allen of Shelston Waters, patent attorneys, for the applicant.

Mr Shavin opened his submissions by stating that the opponent relied essentially on three grounds of opposition: that the opponent was the proprietor of the trade mark in suit (s40); that the applicant's mark was substantially identical with or deceptively similar to the opponent's registered trade mark (s33); and that the use of the applicant's mark would be likely to cause deception or confusion in view of the established reputation of the opponent's registered trade mark (s28).

It will be convenient at this point to summarize the evidence of both parties.

the evidence

The opponent's evidence in support consists of a declaration by Edoardo Vitale Cesa, president of the opponent company, together with Exhibits MCT1 - MCT4 comprising invoices, sample advertising material, catalogues, sample labels and swing tickets and copies of certificates of registration of the opponent's trade mark in other countries. Mr Cesa states that the opponent's trade mark was first used in Italy on 27 March 1979 and in Australia on 24 October 1983 and has been used throughout Australia since that date to identify "jogging suits, t-shirts, skirts, sports pants, sports shoes and blue jeans". He states, however, that it is not the policy of his company to reveal the value of sales figures or the amount spent on advertising. The trade mark on which the opponent relies is registered under no. A408090 in respect of the goods detailed above. The mark is shown below

The applicant's evidence in answer consists of a declaration by the applicant himself, Peter Katholos, together with Annexures A -H comprising mostly invoices, promotional material and examples of labels and tags used in connection with the goods traded in by the applicant, and eight declarations from various persons in support of the application. Those declarations are in the form of questionnaires in which the respondents, after stating their names and experience, have answered a number of questions pertaining to their knowledge of both the applicant's and the opponent's marks. They were also asked whether, if they were familiar with both marks, they had been confused between them or, if not so familiar, they would be confused between them. The applicant himself states that the mark in suit has been in use since March 1986 and was adopted by him as " a newly coined word suggested to me by a colloquial Greek word for a particular type of bird which lives in my family's village of Mersini in Greece. I adopted the trade mark as a symbol of sport and a patriotic gesture to my parents' birth place". Annual sales for the year 1988-1989 were close to one quarter of a million dollars and advertising expenditure to date had been approximately $12,450. The applicant's business, he states, is a member of the Australian Sporting Goods Association Inc and has helped to sponsor the Sydney soccer club, Marconi, and the Cappé Cup, a soccer trophy.

The opponent's evidence in reply consists of a declaration by Christine Faye Lowe, a barrister and solicitor of the Supreme Court of Victoria employed by Davies & Collison (now Davies Collison Cave), patent attorneys, together with Exhibits, and two further declarations by Edoardo Vitale Cesa (the second and third Cesa declarations). In the second Cesa declaration Mr Cesa states that his company has been the sponsor of some of the most famous soccer teams in the world including Milan A.C., Sampdoria, Juventus, Ajax Amsterdam and Rapid Vienna. The trade mark is attached to the garments worn by the players. Italian and international soccer matches are televised in Australia and the trade mark would therefore be seen by viewers of the televised matches. Mr Cesa also states that his company had secured, at the cost of some 10 million US dollars, between the years 1984 and 1992 a sponsorship agreement with the United States Olympic track and field team. United States athletes wearing clothing displaying the opponent's trade mark could therefore be seen by Australian television viewers. In all of these sponsorship arrangements, states Mr Cesa, the opponent's trade mark is attached to clothing worn by athletes and team members, is displayed in publications produced in association with the events, is displayed at the sporting arena on billboards and on electronic display screens and awnings. Mr Cesa also overcomes his initial reluctance to reveal the extent of sales of clothing bearing the trade mark. In this declaration he provides worldwide sales figures for clothing bearing the trade mark for the years 1980-1990. These run into many billions of lire. He states that such sales have occurred in a large number of countries including all Western European countries, United States, Canada Mexico, Chile and Japan. There is no mention of Australia. Exhibit MCT4 to this declaration consists of various magazines, described by Mr Cesa as "international" magazines, containing advertising of the opponent's goods. Two of the magazines are Italian, one is from South Africa and one from Chile. Ms Lowe states in her declaration that on 6 December 1990 she lodged a request with the Registrar of Trade Marks under the Freedom of Information Act for copies of all documents filed in relation to application no. A45944 (this should in fact be A454944). Exhibit CFL2 to her declaration consists of copies of the information supplied by the Office, as follows:

.a letter dated 4 February 1987 from Peter Katholos to the Registrar requesting the amendment of the word forming part of the trade mark the subject of application no. 454944 from Cappa to Cappé. In that letter Peter Katholos stated that he was "dissadvantaged (sic) by a trade mark that sounds similar to mine. I cannot proceed with the label until I receive the department's report, as to avoid any possible infrengment (sic) and suing dillemas (sic) that could occur."

.notes of telephone discussions which took place on 30 March 1987 between Mr Katholos and staff of the Trade Marks Office in which Mr Katholos was advised that it was not possible to amend the application in the way requested but that a fresh application could be lodged;

.an examiner's report dated 13 April 1987 confirming that the requested amendment of the mark was not allowable because the change from Cappa to Cappé constituted a substantial alteration to the mark in terms of s127 of the Act. The examiner also cited several applications of the opponent, including the now registered mark 408090, and two registered marks in the name of the opponent's predecessor in business against the application.

Ms Lowe goes on to state that it appeared that Cappé was not a newly coined word suggested by a colloquial Greek word for a type of bird but that that mark was adopted by the applicant as a means of avoiding possible infringement proceedings and citation objections based on prior applications and registrations by MCT Unilabels S.A.

In his third declaration Mr Cesa states that his company's Italian attorneys had caused inquiries to be made in Greece about the alleged derivation of the word Cappé and had been informed that the word Cappé was not known as a colloquial Greek word for a type of bird living in the village of Mersini and nor was the word KAPPE. He states, furthermore, that he believed that the Greek language has no letter "c". Exhibited to the declaration as Exhibit A is a copy of an extract from The Macquarie Dictionary, Revised Edition, showing various foreign alphabets including the Greek which does not contain the letter "c". Exhibit B of this declaration is a copy of a declaration by a Helen Georgios Papaconstantinou, a Greek associate of the opponent's Italian attorneys, in the original Greek and in English translation. She states that she has made inquiries and checked dictionaries for any meaning of the words Cappé, KAPPE and of similar words for a bird name in Greece and was unable to find any reference to such a word. Enclosed with this declaration are copies of extracts from several leading Greek dictionaries which show no occurrence of any such word. Mr Cesa goes on to state that in addition to the publications referred to in his previous declaration the opponent's trade mark had been publicised from at least 1982 onwards in publications which he believes were readily accessible to the public throughout Australia, including in particular the publications Money, Time Magazine and The New York Times. Exhibit C consists of computer printouts from articles from such publications in which the opponent's trade marks were mentioned. He also refers to a declaration by Giuseppe Lattes, a former president and administrative director of the opponent's predecessor in business, which was lodged in the Office in connection with another matter and a copy of which is annexed as Exhibit D. Mr Lattes states in this declaration that the word Kappa had been used alone as a trade mark by the opponent in Australia since 1973 and had been extensively advertised in magazines and printed publications circulating in Australia. He refers to copies of extracts from various publications which are not included with the Exhibit. Details of sales of the company's goods in Australia are said to be listed in Schedule (ii) of the declaration. This schedule is also absent from the Exhibit. Mr Cesa also points to various advertisements by the applicant for goods advertised as "INTERNATIONAL JERSEYS eg LIVERPOOL MANCHESTER NAPOLI JUVENTUS" and to others describing goods of the applicant as being of the "LATEST EUROPEAN DESIGN & MATERIALS". He states that in view of the opponent's close association with European soccer clubs such advertising would contribute to the likelihood of deception or confusion with goods of the opponent.

submissions

In relation to the question of proprietorship Mr Shavin submitted that the onus was on the applicant for registration to show that it was the author of the mark in Australia at the date of lodgment of the application. A person could not adopt a foreign mark if there had been any use of the mark by another party in Australia. In this regard he referred me to cases such as: In re Hicks's Trade Mark (1897) 22 VR 636; The Shell Company of Australia Limited v Rohm and Haas Company and Another (1949) 78 CLR 601; Re the Registered Trade Mark "YANX" Ex Parte Amalgamated Tobacco Corporation Limited (1951) 82 CLR 199; Aston v Harlee Manufacturing Company (1961) 103 CLR 391; Moorgate Tobacco Co Limited v Philip Morris Limited and Another (1984) 156 CLR 414: The Seven Up Company v O.T. Limited and Another (1947) 75 CLR 203 and The Kendall Company v Mulsyn Paint and Chemicals (1962) 109 CLR 300. In the latter two cases in particular Mr Shavin drew attention to the differences between the marks in question, namely, 7 UP and 8 UP in the former and POLYKIN and POLYKEN in the latter. He then took me to the evidence of use of the opponent's mark in Australia as set out in the several Cesa declarations , in particular the invoices bearing dates in 1983, the advertisements placed in widely disseminated magazines, the use on the uniforms of soccer players and athletes as well as on billboards in sports arenas all of which would be seen by Australian television viewers. He submitted that the two marks were phonetically identical and that therefore the applicant was not entitled to be considered the proprietor of its mark in Australia.

With regard to s33 Mr Shavin submitted that it was common ground that the goods of both parties were goods of the same description and that therefore the question to be decided was whether the applicant's mark was substantially identical with or deceptively similar to the opponent's registered trade mark. He submitted that even if not substantially identical the marks were deceptively similar. The onus, he said, was on the applicant to show that there was no likelihood of deception or confusion: Hermes v E T Swift and Co Pty Ltd 2 IPR 432. Further, the effect of spoken description had to be considered: Australian Woollen Mills Limited v F.S.Walton and Company Limited (1937) 58 CLR 641. The opponent's mark would be known by the word Kappa despite the presence of the device. The applicant's mark consisted essentially of the word Cappé which was phonetically equivalent to that word. The ideas conveyed by the two marks was also an important consideration: Jafferjee v Scarlett (1937) 57 CLR 115; Mothercare UK Ltd v Serry (A'Asia) Pty Ltd 21 IPR 469. The effect of imperfect recollection had to be taken into account in deciding whether the two marks were likely to be confused: Re Application by Hardings Manufactures Pty Ltd t/a Wyandra Industries 8 IPR 147. The first syllable of each word was the most important and to be given more weight: In the Matter of London Lubricants (1920) Limited's Application to Register a Trade Mark (1925) 42 RPC 264. In this case the first syllables of the two words were phonetically identical and that should be given due weight.

Mr Shavin pointed out that from the applicant's evidence it was clear that the mark had not been used in the form in which it had been applied for. In no instance did an acute accent appear above the letter "e". The wings device appears in various positions, sometimes above the word and between the second "p" and the "e", sometimes above the first "p" and even besides the word and quite separate from it. In no case does it appear within the capital "C" of Cappé. Sometimes the word SPORT does not appear as part of the mark. The omission of the accent in particular reinforced the submission that the pronunciation of two words would be identical.

Mr Shavin was also critical of the applicant's supporting declarations claiming that no weight at all should be given to them. The first declarant, Richard Hassall, states that he is a graphic designer.He is therefore not even concerned in the relevant trade. He has held that position for only three years and is therefore even less qualified to comment. He does not know of either the applicant's or the opponent's marks but nevertheless associates both with sports goods. His statement that he would not be at all confused between the two marks is mere speculation and in any case a matter for the Registrar or his delegate to decide. This was a general criticism of all the declarations. The next declarant, Alberto Mariani, states that he is the manager/coach of Club Marconi Ltd, a position which he has held for three years. As the applicant was a sponsor of the Marconi soccer team, said Mr Shavin, Mr Mariani had a financial interest in the success of the applicant and was not therefore an independent witness. The same criticism was made of the declarations of Nicholas Reed and John Gordon Lovell who were, it appeared from other material in the applicant's evidence, the NSW and Queensland agents of the applicant. Reed, moreover, had had only three and a half years' experience in the relevant trade. Andrew Iles is another graphic designer with a mere 14 months experience in that profession. Frank Dimis declares that he is a director of Southern Embroidery Pty Ltd, a position which he has held for 8 months. Christopher Anthony Dick is a senior art director of an advertising agency and is not therefore concerned in the relevant trade despite 25 years' experience in his present position. Peter John Allen states that he is executive director of Australian Sporting Goods Association of which the applicant is a member. Apart from not being an independent witness Mr Allen is prepared to declare that he is aware of the use of the applicant's mark in all states of Australia despite the applicant's own declaration that sales of products bearing the mark had occurred only in New South Wales, Tasmania, South Australia the ACT and Queensland. In view of this Mr Shavin submitted that no weight should be given to any other statements in the declaration. All in all, Mr Shavin submitted, four of the declarants were associated with the applicant, one had made an apparently false statement and the rest were unqualified to express an opinion in the matter.

In relation to s28 Mr Shavin referred me to Radio Corporation Proprietary Limited v Disney and Others (1937) 57 CLR 448; Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA 12 IPR 321 and New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Limited (1990) 171 CLR 363. He argued that the Lowe declaration and the Exhibits to it showed that the applicant knew of the opponent's trade mark and therefore fraudulently applied for registration of its own mark. The applicant's mark would therefore not be entitled to protection in any court of equity. Moreover, the applicant had not used the mark in the form applied for. In particular it had never been used with an accent on the final "e". Mr Shavin conceded that the onus was on the opponent to establish its reputation in its mark but claimed that that had been shown by the use of the mark in magazines and other publications. As it was a foreign mark only slight use should be sufficient to defeat the claims of an applicant who attempted to misappropriate that mark.

In countering Mr Shavin's criticisms of the applicant's supporting declarations Mr Allen submitted that while I should give all evidence its appropriate weight I was not bound by the rules of evidence. This particular evidence was contained in statutory declarations to which penalties were attached and were not therefore made lightly. It was not unusual for declarations to be provided by people who dealt in the course of trade with an applicant. With regard to the opponent's evidence Mr Allen submitted that there was a complete lack of tangible evidence in the Cesa declarations of use of the opponent's mark in Australia. The only evidence of use at all was the invoices which formed Exhibit MCT1 to the first Cesa declaration. Exhibit MCT2 of the same declaration consisted of a selection of advertisements about which there was nothing to show where they were published or where distributed. Mr Cesa himself by his own admission had had only two years experience  in the manufacture and marketing of clothing. His allegation that the applicant had purposely adopted his mark to be as closely similar as possible to the opponent's trade mark was mere speculation since Mr Cesa had no way of knowing the state of the applicant's mind. The lack of a dictionary definition of the word Cappé was not conclusive as the applicant had merely stated that the mark was suggested by the name of a bird, not that it was in fact such a name. As to the publications referred to in the third Cesa declaration there was no evidence that The New York Times circulated in Australia in 1982, the date of the article extracted. Time magazine had different editions in different parts of the world. There was also no evidence to show that the article from that magazine appeared in an edition which circulated in Australia. The Lattes declaration could not be relied on as it had not been served on the applicant. In any case that declaration although it referred to use of the mark in Australia since 1973 contained no sales figures for Australia. The magazines comprising Exhibit MCT4 to the first Cesa declaration were all foreign magazines. A catalogue forming part of Exhibit MCT2 to the same declaration contained an "International Sales Network", a list of agents and distributors in various countries of the world. There was no mention of Australia.

On the question of proprietorship Mr Allen submitted that in order for s40 to apply at all the conflicting marks must be identical or substantially identical: Kendall v Mulsyn (supra). In the present case the two marks were overall quite different marks so that the question of proprietorship simply did not arise.

With regard to s33 Mr Allen firstly pointed out that the marks were not to be compared side by side : Australian Woollen Mills v Walton (supra). The opponent's mark contained a device of two seated figures in silhouette which was a very prominent part of the mark as a whole. The applicant's mark contained a very different device so that when the two marks were compared as wholes, as they must be, they were quite different: Clark v Sharp 15 RPC 141. The phonetic similarity between the two words was not sufficient to give rise to an objection under s33. Moreover, the word forming part of the applicant's mark had no meaning to the average Australian while the word Kappa was well known as the name of the Greek letter. There was also a clear visual distinction Between the initial letters "c" and "k" of the two words. Moreover, the word Cappé would be pronounced as other words having an acute accent on the final "e", such as "café" and "pâté". The ideas conveyed by the two marks were quite different: Jafferjee v Scarlett (supra). For the purposes of s33 Mr Allen submitted that I had to consider the mark actually applied for and not how it may have been used in practice. The visual differences between marks was of greater importance than their sound where the goods were packaged in such a way as to make the marks applied to them clearly visible. Mr Allen also referred to Mars GB Ltd and Anr v Cadbury Ltd [1987] RPC 387, where Whitford J observed that in these days of self service, where brand names appear clearly on packaging, the sound of a mark was diminishing in importance. In this same regard he also referred to Re Application by Hamish Robertson & Co Ltd 13 IPR 69 and Taiwan Yamani v Giorgio Armani SpA 17 IPR 92 where it was observed that in relation to clothing the "label", as a trade mark is known in the industry, is of supreme importance both to the manufacturer and the purchaser of clothing and that the visual impact of marks was therefore of more importance than any aural similarity. As to phonetic similarity, while 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 G.m.b.H. v Nippon Kogaku K.K. noted (1985) IPD 8053; Maker's Application noted (1986) IPD 9002; Chanel Ltd v Chantal Chemical & Pharmaceutical Corporation 19 IPR 108. In the present case the accent on the second syllable would attract the emphasis.

In relation to s28 Mr Allen submitted that there must be a real risk of a number of persons being caused to wonder whether the goods might come from the same source: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1945) 91 CLR 592. There must therefore be evidence to show a real possibility of a likelihood of confusion. It was not sufficient to rely on use in foreign jurisdictions. There had to be evidence of an established reputation in Australia: Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410; Michael Sharwood & Partners Pty Ltd and Others v Fuddruckers Inc 15 IPR 188; Flagstaff Investments Pty Ltd v GUESS? Inc 16 IPR 311. If use in foreign magazines was to be relied on it had to be shown that those magazines had had an extensive circulation: Riviera Leisurewear Pty Ltd v J. Hepworth & Son PLC; In the Matter of Trade Mark Application No. A386146 (1987) AIPC ¶90-419; In the Matter of Gaines Animal Foods Ld's Application to Register a Trade Mark (1951) 68 RPC 178. With regard to para (d) of s28 Mr Allen submitted that there was simply no evidence of any wrongdoing on the part of the applicant in relation to the adoption or the use of the trade mark in dispute. It had not been shown that the applicant knew of the opponent's mark at the time he adopted it or applied to register it.

decision

I propose to deal with the objections under s40, s28 and s33 in turn.

proprietorship

I accept Mr Allen's submission that for the question of proprietorship to arise at all the parties must be claiming the same mark or marks which are so substantially identical that they may be considered the same mark. This is not the same question as that which falls to be considered under ss28 and 33, whether the two marks are so similar as to lead to a likelihood of deception or confusion. Further, I think that in deciding whether the marks are so alike as to be substantially identical I am entitled to consider the marks side by side. This would seem to follow from what the High Court has said in relation to the question whether conflicting marks are substantially identical in terms of s33: Shell Co (Aust.) Ltd v Esso Standard Oil (Aust.) Ltd (1961) 109 CLR 407. I think it is clear that when the conflicting marks in this case are compared side by side there are very obvious differences, to the extent that it cannot be said that they are the same mark or so alike as to be virtually the same mark. They are different trade marks and therefore the question of proprietorship is not at issue.

sections 28 & 33

The tests to be applied under ss.28 and 33 may be stated as follows, paraphrasing the words of Evershed J. in Smith Hayden & Co Ltd's Application (1946) 63 RPC 97, in which he compared the tests under ss.11 and 12 of the Trade Marks Act 1938 (UK), which correspond to ss.28 and 33 of the Trade Marks Act 1955 (Cth):

The questions for my decision ... have been formulated, and I think accurately formulated, as follows:

(a) (Under s.28) "Having regard to the reputation acquired by the name Kappa Sport and device, is the Registrar satisfied that the mark applied for, if used in a normal or fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons?";

(Under s.33) "Assuming user by the opponent of its mark Kappa Sport and device in a normal and fair manner for any of the goods covered by the registration of that mark ... is the Registrar satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant also uses its mark Cappé Sport and device normally and fairly in respect of any goods covered by their proposed registration?"

section 28

In assessing the reputation of the opponent's mark in Australia the relevant date is the date of lodgment of the applicant's application: Southern Cross (supra), that is, 3 April 1987. It is therefore necessary to consider the evidence of use of the mark in Australia prior to that date.

Exhibit MCT1 to the first Cesa declaration consists of four invoices from MAGLIFICIO CALZIFICIO TORINESE SpA, a predecessor in business of the present applicant, to a Sydney company CRESTA HOLDINGS PTY LTD, all dated 24 October 1983. Apart from this information and other details the invoice heading contains a representation of three trade marks used by the applicant, Kappa Sport with the device of the two seated figures in silhouette, which is registered in Australia under A408090, the words Robe di Kappa, together with the same device, which is registered under A286814 and the word jesus which was refused registration in Australia. The first invoice is for five items of clothing, mostly shirts, besides each of which is the word "sample". In a box headed "Product" are the words "Robe di Kappa". This invoice clearly refers to goods shipped under the Robe di Kappa trade mark. In the same box in the second invoice is the word jesus. This invoice clearly relates to goods, 61 pairs of denim jeans, shipped under the jesus trade mark. The remaining two invoices again relate to goods,  621 sweaters, shipped under the Robe di Kappa mark. None of the invoices, then, relates to the Kappa Sport mark. It is true that the Robe di Kappa mark contains the word Kappa and the silhouette device but the evidence of sales under the mark is too slight in any case to begin to establish the sort of reputation required under para 28(a). Furthermore, none of the material contained in Exhibits MCT2-MCT4 relates to use of the opponent's mark in Australia. The catalogue mentioned by Mr Allen does not list an agent or distributor in Australia as at the summer of 1988, well after the date of application. There is no evidence of any reputation the opponent may have acquired in this country by virtue of its sponsorship of various sporting teams either through the televising of events involving those teams or through any other means. The applicant has therefore failed to satisfy me that as at the date of application it had established such a reputation in its mark that use by the applicant of its mark in a normal or fair manner would be reasonably likely to cause deception or confusion amongst a substantial number of persons. It is not therefore necessary for me to decide the question under para 28(d), whether the applicant's mark would not be entitled to protection in a court of justice, but in deference to Mr Shavin's submissions in regard to that matter I will say that I do not consider that there is any evidence of wrongdoing on the part of the applicant, in particular that there was an intention on his part to misappropriate the opponent's goodwill. The facts evidenced by Ms Lowe's declaration are susceptible of a quite innocent explanation. In all fairness, however, I should add that when asked by the examiner in her first report on the present application whether the word KAPPE had any other meaning the applicant responded as follows:

"The word CAPPÉ has no meaning in any other language that I know off (sic), it's an invented word that's original, and it's (sic) spelling and pronounciation (sic) are in no means conflict with any other trade mark."

Otherwise there is no evidence of the applicant's state of mind either at the time of adopting his mark or of applying for its registration.

section 33

Mr Shavin made the point that in all the material submitted by the applicant in its evidence in answer which showed the applicant's mark in use, in no case did the final letter "e" of the word appear with an accent. This is true but for the purposes of s33 I must consider the rights sought by the registration and not any possible uses to which the mark may be put should registration be granted. If the proprietor of a registered trade mark which is not in itself deceptive uses the mark in such a way as to cause deception the aggrieved party must seek its remedy in passing off or in statutory provisions regulating such conduct. Here the applicant has sought registration of a mark consising of the word Cappé together with a graphic device which has been indexed as "symbol, punctuation, correct", that is, a "tick", but which could also be seen as an abstract representation of a bird in flight or "bird, grotesque, in flight" as the indexer of the applicant's earlier application saw it. The word SPORT also appears in much smaller block letters within the mark and above the other word. The word Cappé is much more prominent in this mark than the device. The opponent's mark consists of the words Kappa Sport, which have equal prominence, and a device of a man and woman seated back to back in silhouette. Considered as wholes I do not consider the two marks to be so alike as to be deceptively similar. They are in fact quite different. The device element of the opponent's mark is striking and memorable and occupies a prominent position in the mark. In addition, the word kappa is a well known word in common use whereas the word cappé would have no meaning to the average Australian. There is no evidence as to how the latter word would be pronounced but I think it a fair assumption that it would be pronounced, on analogy with such words as "café" and "René", with the emphasis on the second syllable. Be this as it may, I accept the submission that in relation to the particular goods of concern in this case the visual impact of the marks is of more importance than any aural sinilarity between them. I consider the marks to be visually quite different especially in view of the prominence of the distinctive device in the opponent's mark together with the other visual differences. For all of these reasons I do not consider that an objection exists to the registration of the applicant's mark in terms of s33.

conclusion

As I have found for the applicant on all three of the grounds relied on by the opponent it follows that the opposition is dismissed. I therefore direct that, subject to any appeal from this decision, application no. 462838 proceed to registration and I award costs to the applicant in accordance with the regulations.

Michael Homann

Hearing Officer

10 February 1993