Philip Morris Products SA v PT Perusahaan Dagang Dan Industri Tresno

[2010] ATMO 31

TRADE MARKS ACT 1995

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

Re:Opposition by Philip Morris Products SA to registration of trade mark application 1188564(34) - COUNTRY INTERNATIONAL LOGO - filed in the name of PT Perusahaan Dagang Dan Industri Tresno.

Delegate:

Iain Thompson

Representation:

Opponent:  Simon Williams of Spruson & Ferguson

Applicant:  Did not appear or file written submissions

Decision:

2010 ATMO 31

s52 opposition – section 60 – trade marks of the parties deceptively similar and likely to confuse. Registration refused.

Costs awarded against applicant

Background

1. In this matter PT Perusahaan Dagang dan Industri Tresno (‘the applicant’) of Malang, Indonesia, has applied to register a trade mark, current details of which appear below:

Application No: 118864

Priority Date:                   20 July 2007

Goods:Class: 34 Cigarettes; filter cigarettes; tobacco and tobacco products; cigars; cigarette boxes; lighters for smokers; smokers articles and matches; all included in class 34

Trade Mark:  

“the opposed trade mark”

2. The application was examined and advertised for possible registration in the Australian Official Journal of Trade Marks on 22 November 2007.

3. On 22 February 2008, Philip Morris Products SA, (‘the opponent’) of Neuchatel Switzerland, filed Notice of Opposition (‘the Notice’) to the registration of the trade mark. The grounds nominated in the Notice include, as the main grounds of the opposition, those under sections 60 and 44.

4. The parties have served and filed evidence in relation to this opposition.  The matter came before me for a hearing in Sydney on 16 March 2010.  The opponent was represented at the hearing by Simon Williams of Spruson & Ferguson.  The applicant was not represented at the hearing, did not appear, and did not put in written submissions.

5. The opponent argues, in descending order of its perceptions of relevance, grounds under sections 60, 62A, 44, 59 and 42 of the Trade Marks Act 1995.

Evidence

6. The opponent’s declaration in support of the opposition is a joint declaration by Irina Lucidi and Georg Punkenhofer, each holding the position of ‘Fondés de Procuration’ of the opponent.  The deponents state that the opponent and its predecessors in title are, and for many years have been, engaged in the manufacture, importation, distribution, marketing and sale of tobacco products.  Since 1954, the opponent has been engaged in the manufacture, importation, distribution, marketing and sale in Australia of tobacco products. 

7. Relevant to this matter, the opponent has sold tobacco products under the registered trade mark MARLBORO[1] and related registered and unregistered trade marks.  The pertinent registered trade marks are:

[1] For example 161295(34)

Reg No:              1118584

Priority Date:                   14 November 2005

Goods:Class 34:  Raw or manufactured tobacco, including cigars, cigarettes, cigarillos, hand-rolling tobacco, pipe tobacco, chewing tobacco, snuff, tobacco substitutes (for non-medical use); smokers’ articles, including cigarette paper and tubes, cigarette filters, tobacco tins, cigarette cases and ashtrays neither of precious metal, their alloys nor coated therewith; tobacco pipes, pocket machines for rolling cigarettes, smokers’ lighters; matches.

Trade Mark:  

“the rooftop device”

Reg No:              1111525

Priority Date:                   3 April 2006

Goods:Class 34: Raw or manufactured tobacco, including cigars, cigarettes, cigarillos, hand-rolling tobacco, pipe tobacco, chewing tobacco, snuff, tobacco substitutes (for non-medical use); articles for smokers, including cigarette paper and tubes, cigarette filters, tobacco boxes, cigarette cases and ashtrays not of precious metal, their alloys nor plated therewith; tobacco pipes, pocket machines for rolling cigarettes, smokers’ lighters; matches

Trade Mark:  MARLBORO COUNTRY

Reg No:              1111526

Priority Date:                   3 April 2006

Goods:Class 34:  Raw or manufactured tobacco, including cigars, cigarettes, cigarillos, hand-rolling tobacco, pipe tobacco, chewing tobacco, snuff, tobacco substitutes (for non-medical use); articles for smokers, including cigarette paper and tubes, cigarette filters, tobacco boxes, cigarette cases and ashtrays not of precious metal, their alloys nor plated therewith; tobacco pipes, pocket machines for rolling cigarettes, smokers’ lighters; matches

Trade Mark:  COME TO MARLBORO COUNTRY

Reg No:              336137

Priority Date:                   3 August 1979

Goods:  Cigarettes

Trade Mark:  

“the opponent’s packet trade mark”

8. I also note that the coat of arms in the trade mark immediately above would reasonably be considered a common law trade mark of the opponent in its own right given its prodigious use on the packets of the opponent’s MARLBORO branded cigarettes.  This trade mark features a heraldic device with supporters in the form of two rearing horses and a scroll bearing the words ‘Veni Vedi Vici’ underneath a crowned oval shield with the letters PM emblazoned on it – if this device is registered, this is not in evidence and I have not been able to locate a trade mark registration of it.  I note, however, that it has been consistently used on, or in conjunction with, the opponent’s packet registration, the rooftop device and the trade mark MARLBORO and that it appears in some other trade marks registered by the opponent.

9. Goods have been sold under the trade marks MARLBORO, the rooftop device (which is a similar shade of red as the coloured portion of the opposed trade mark) and the coat of arms in Australia by the opponent since 1957.  The product sold under the MARLBORO trade mark is, according to the evidence, the top selling brand of cigarettes in the world.

1. I am satisfied from the evidence that the trade mark MARLBORO is very well known and widely recognized in Australia in relation to cigarettes.  I would estimate that the coat of arms is also well known and the rooftop device is widely recognized, again in relation to cigarettes.

2. The evidence in answer is a declaration by Nicolaas Bernadus Tertinata, President Director of the applicant.  He states that the brand was developed in 1998 and, since 2003, 500 million sticks of product have been manufactured for export from Indonesia. Assuming there were 20 cigarettes per packet this would be equivalent to 25 million packets bearing the opposed trade mark.

3. The opposed trade mark is registered in countries which include Indonesia, East Timor, Laos, Cambodia, Thailand, Taiwan, Vietnam and India. 

4. Mr Tertinata says that the opposed trade mark was developed and adopted independently and that the applicant did not consider the opponent’s trade mark when adopting the opposed trade mark.

5. Mr Tertinata draws attention, in his declaration, to various Australian trade mark registrations which contain representations of chevrons which are alleged to resemble the rooftop device of the opponent.  The most notable of these are the chevrons which appear on registrations 270845(34), 750619(34), and 786027(34), all of which are similar and the last of which I reproduce below:

Onus

1. After reviewing the precedents in Pfizer Products Inc v Karam [2006] FCA 1663, in particular whether such matters should be decided in summary manner only on clear proof, Gyles J said of the onus in trade mark oppositions:

   I am faced with the clear words of the statute, on one hand, and the opinions of various judges, on the other. There is no binding Full Court authority. I cannot find any instance where a single judge has actually applied the higher standard. In my opinion, in this case, comity does not demand that I depart from my view as to the meaning of the statute. ‘The fundamental responsibility of a court when it interprets a statute is to give effect to the legislative intention as it is expressed in the statute’ per Mason J in Babaniaris v Lutony Fashions Pty Ltd [1987] HCA 19; (1987) 163 CLR 1; cited with approval by Mason CJ, Wilson, Dawson, Toohey and Gaudron JJ in John v Federal Commissioner of Taxation [1989] HCA 5; (1989) 166 CLR 417 at 439. I will, therefore, approach the matter on the basis that the opponent has to establish a ground of opposition, although not clearly establish such a ground, whether in a summary fashion or otherwise.

2. The opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.  See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26]

3. I will accordingly decide this matter on the balance of probabilities, although if the higher standard were adopted, my decision would be unaltered.

Discussion

1. Section 60 of the Act provides:

   60Trade mark similar to trade mark that has acquired a reputation in Australia

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

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, 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:For priority date see section 12.

2. Here the opponent relies on the reputation of those of its trade marks which I have discussed above.

3. In McCormick & Company Inc v McCormick [2000] FCA 1335, Kenny J said of ‘reputation’ at paragraph 81:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her  marks  would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

4. It is some time since the opponent’s trade marks have been advertised in Australia (in this regard, television advertising of tobacco products was banned in Australia in 1975), with other forms of advertising subsequently also banned over the years and a view could consequently be formed that, on this basis, indicia such as the slogan COME TO MARLBORO COUNTRY are fading from the memories of Australians.  However, I consider that there are many Australians who will recall the use of the slogan in advertising and, further, many will have encountered the slogan when travelling overseas.  It is likewise with the other trade marks on which the opponent relies.

5. The opponent’s argument is, in essence, that the opposed trade mark is deceptively similar to one or more of the opponent’s trade marks and because of the reputation of those trade marks the use of the opposed trade mark would confuse.

6. Deceptive similarity is to be assessed according to the tests set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at paragraph 13 per Windeyer J:

   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.

7. The comparison is to take place within the market context within which the trade marks are, or will be, used: see, In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, above, where Parker J, as he then was, 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.

8. And the standard to be applied when making the comparison is that which was applied by French J in Registrar of Trade Marks v Woolworths [1999] FCA 1020, where at paragraph 50 he discussed the issue of deceptive similarity in the following way:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) 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.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

9. Mr Williams submitted at the hearing that the applicant had adopted various elements of the opponent’s trade marks, which I have detailed above, in designing this trade mark and this gives rise to both the inferences as to the conduct of the applicant and the conclusions that I may draw as to whether the opposed trade mark is deceptively similar to the trade marks of the opponent.  This argument, as I understand it, does not suggest that the trade marks of the parties would be mistaken for each other and thus the submission implicitly alleges that, as the opposed trade mark ‘bridges over’ or references two or more of the opponent’s trade marks, the opposed trade mark’s use would be confusing, rather than deceptive. 

10. In Pioneer Hi-Bred Corn Co v Highline Chicks Pty Ltd [1979] RPC 410, at 423, Richardson J, in the New Zealand Court of Appeal, said in relation to confusion:

    ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.

11. In Radio Corp Pty Ltd v Disney [1937] HCA 38; (1937) 57 CLR 448 Rich J, at 454, said of the word ‘confusion’:

    In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney”. The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney”. This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.

12. The areas of alleged similarity to, reference to, or mimicry of, the opponent’s trade marks which are argued by the opponent are:

    ·     The use of the word COUNTRY which occurs in the opponent’s COME TO MARLBORO COUNTRY trade mark,

    ·     The opponent’s ‘rooftop’ device which is echoed in the opposed trade mark rotated clockwise through ninety degrees,

    ·     The heraldic device which has a crown and rearing horse,

    ·     The colours in which the opponent’s trade mark is used are very similar to the colours in which the opposed trade mark is filed and apparently used.

13. The conclusion that the opposed trade mark ‘bridges over’ or mimics various elements of the opponent’s trade marks and thus should be refused registration would be consistent with the findings in Freestone NA v Caterpillar Tractor Co. (1985) AIPC 95-237, in which the trade mark CAT-TRACKS was refused registration on the basis of the opponent’s reputation in the trade marks CAT and TRAXCAVATOR for similar goods, and to the UK case of Taylors Drug Co Ltd’s Application (1923) 40 RPC 193, where the trade mark GERMOCEA was refused on the basis of the trade marks GERMOLENE and HERMOCEA which had been registered and used for similar goods by two different parties.

1. The thematic similarities of the opposed trade mark to elements of the opponent’s trade marks are obvious, in my estimation, and place into question Mr Tertinata’s claims that the opposed trade mark was developed and adopted independently and without regard to the opponent’s trade mark.  I have also given careful thought whether this alleged mimicry gives rise to the inference which Mr Williams would have me draw which leads to a conclusion about the deceptive similarity of the opposed trade mark to the opponent’s trade mark.  This inference was referred to in Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641 by Dixon and McTiernan JJ:

   The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive. Moreover, he can blame no one but himself, even if the conclusion be mistaken that his trade mark or the get-up of his goods will confuse and mislead the public.

2. Concerning the particular way in which tobacco products are marketed, in W.D. & H.O. Wills (Australia) Ltd v Philip Morris Ltd [1997] FCA 1074, (‘Summit’) Davies J said:

   However, cigarettes are ordinarily kept in secure areas behind counters and are handed over by a shop assistant on request. Thus, purchasers will not be likely to be misled into picking up a packet from a shelf thinking it to be another product. Purchasers will have to ask for the cigarettes by name, by the size pack and the tar variant required. The names of the cigarettes are distinctly different. Many affidavits by retailers have been filed on behalf of Philip Morris. They confirm the view, to which I think I would in any event have arrived, that retailers and their employees would be unlikely to confuse the Horizon cigarettes with Summit and that the occasions when consumers are able to select packets themselves, from what are described as dump bins, are few. I consider that the occasions on which mistakes would be made would be too few to satisfy the requirement of “likely”, as to which see Tillmans Butcheries Pty Ltd v Australasian Meat Industry Employees’ Union (1979) 27 ALR 367 at 380-2, per Deane J.

3. The particular way in which cigarettes are marketed thus precludes any likelihood of deception, per se. 

4. Thus, I consider it to be most unlikely that purchasers of goods would buy goods under the opposed trade mark mistakenly believing that they were buying goods sold under the opponent’s trade marks – however, this is not the whole of the question.  In Summit, Davies J went on to observe:

   But it is sufficient in a get-up case that purchasers are likely to be misled into thinking that the competing products came from the same source, such as being produced by the same manufacturer.

   In Hogan v Pacific Dunlop Ltd (1988) 83 ALR 403, Gummow J at first instance said at 426-7:-

   “... the action is concerned with misrepresentation, and with a particular type of misrepresentation involving use of the image or indicium in question to convey a representation of a commercial connection between the plaintiff and the goods or services of the defendant, which connection does not exist. This case, like 10th Cantanae Pty Ltd v Shoshana Pty Ltd (1987) 79 ALR 299 is concerned with what will satisfy that requirement of commercial connection. Again, it is not all representations, made in commerce, as to connection between the plaintiff and the goods or services of the defendant which will suffice.”

   At 427, his Honour cited the remarks of Goff LJ in HP Bulmer Ltd & Showerings Ltd v J Bollinger SA [1978] RPC 79 at 117:-

   “Not every kind of connection claimed will amount to passing off; for example if one says that one’s goods are very suitable to be used in connection with the plaintiff’s. On the other hand in my view there can be a passing off of goods without representing that they are actually the well known goods which the plaintiff produces or a new line which he is supposed to have started. It is sufficient in my view if what is done represents the defendant’s goods to be connected with the plaintiff’s in such a way as would lead people to accept them on the faith of the plaintiff’s reputation. Thus for example it would be sufficient if they were taken to be made under licence, or under some trading arrangement which would give the plaintiff some control over them ...”.

5. I consider that the effect of the similarities of the elements of the opposed trade mark to those of the opponent’s trade marks is cumulative – it is unlikely that, taken one by one, the use of the individual elements of the opposed trade mark would confuse.  But considered in totality, the resemblance is marked.  Consumers are unlikely to compare the trade marks of the parties side by side and are also unlikely to remember the precise details of the opponent’s trade marks.[2]

   [2] The ‘doctrine of imperfect collection’ – see, Aristoc Ltd v Rysta Ltd [1945] AC 68 applied in, for example, Crazy Ron’s Communications Pty Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196.

   .

6. I conclude that the similarity of the opposed trade mark to those of the opponent is such that it is likely that a purchaser would be caused to wonder if the goods appeared on the market under the opponent’s aegis, or by some licensing or trading arrangement with the opponent.

7. The opponent has established its opposition under section 60.

8. There is no need to consider the other grounds of opposition pursued at the hearing.

Decision

1. Section 55 of the Act provides:

   Decision

   55. Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

   (a) to refuse to register the trade mark; or
   (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:  For limitations see section 6.

2. I refuse to register application 1188564.

Costs

1. The opponent is entitled to its costs at the official scale which I award against the opponent.

Iain Thompson

Hearing Officer

Trade Marks Hearings

5 May 2010