Pifco Limited v Tchibo Frisch-R�st-Kaffee AG

[1997] ATMO 6

TRADE MARKS ACT 1955

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

Re:Opposition by TCHIBO FRISCH-RÖST-KAFFEE AG to registration of trade mark application number 477179 in the name of PIFCO LIMITED

Background
As provided for in the transitional provisions of Part 22 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to govern this opposition.  Accordingly, unless otherwise specified, any reference to the Act in this decision is a reference to the Trade Marks Act 1955.

Application number 477179 was lodged on 25 November 1987, in the name of Pifco Limited (the applicant).  The application was for the registration of the trade mark, PIFCO, for the statement of goods, "Lights for land vehicles. lamps, lampshades, lamp reflectors, battery operated torches, cooking and heating apparatus, electric plate warmers and electric warming trays, parts and fittings in class 11 for all the aforesaid goods," in class 11.  The trade mark was advertised as accepted in Part A of the Register in the Australian Official Journal of Trade Marks of 7 December 1989.

Notice of opposition to the trade mark's registration was lodged, following the granting of an extension of time to do so, on 5 June 1990, by Tchibo Frisch-Röst-Kaffee AG, (the opponent). The notice of opposition listed a great many grounds of opposition but the only ground which was later pursued at the hearing was based on s.33(1) of the Trade Marks Act 1955, that the present trade mark was substantially identical or deceptively similar to a prior registered trade mark owned by the opponent for the same goods, or goods of the same description.

The evidence

The service and lodgment of the evidence in support and answer from the respective parties were completed by 22 May 1996.  That evidence comprised:

Evidence in Support

*Statutory declaration by Brian Marsden Munday dated 4 December 1992, together with Exhibit BMM-1

Evidence in Answer

*Statutory declaration by Andrew David Streets dated 21 December      1994, together with Exhibits ADS-1 to 3

In his declaration forming the evidence in support, Mr Munday, the patent attorney representing the opponent, said that the present applicant and opponent were engaged in opposition proceedings in Ireland and that no formal written decision had been made there.  He said that the opponent’s application for trade mark registration in the UK was held up awaiting a decision in the Irish case.  Exhibited to his declaration was a copy of a Trade Marks Office database printout showing the details of the opponent’s registered Australian trade mark number B379970 for the word PICCO in Class 11.  The statement of goods of that registration comprises: “Electric coffee brewing machines”.

Mr Streets, whose declaration comprises the evidence in answer, declared that the applicant had several registrations of the word PIFCO in the UK in various classes.  He said that these registrations co-existed on the UK Register with the opponent’s PICCO trade marks in that country.  He supplied some historical data on the applicant’s use of its trade marks and also of the company itself.  He said that the applicant had established a reputation in Australia for its trade mark in relation to the goods on which it was used.  Attached as exhibits to his declaration were details of overseas registrations of the trade mark PIFCO, copies of his company’s annual reports from 1990 to 1994, together with product catalogues and brochures.

Following a breakdown of negotiations between the parties, the applicant requested a hearing in the matter and it came before me, as a delegate of the Registrar, in Sydney.  Mr Brian Munday of Spruson & Ferguson appeared on behalf of the opponent.  The applicant was represented by Mr Ray Walton of Griffith Hack.

Submissions
Mr Munday, on behalf of the opponent, said that he would only be pursuing the ground of opposition under s.33(1) of the Act at the hearing. He submitted that the trade marks PICCO and PIFCO were substantially identical or deceptively similar to each other when used on goods of the same description. He said that the opponent had registered the word PICCO as a trade mark for, “electric coffee brewing machines,” which were goods of the same description as the applicant’s goods, “...cooking and heating apparatus...”. He referred here to the considerations of this topic which were outlined in Jellinek's App'n (1946) 63 RPC 59 - the nature of the goods, the uses thereof, and the trade channels through which they were bought and sold. He said that any argument based on the fact that the applicant had already registered a trade mark for “kettles” in class 9 was not relevant as “kettles” in class 11 were very different items.

Mr Munday outlined the factors to be considered in coming to a decision in the present case, including that there was an onus on the applicant to satisfy the Registrar that there was no reasonable probability of confusion - Gummow J in Johnson and Johnson Australia Pty Ltd v Kalnin (1993) 26 IPR 435 quoting Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592. He said that the date when all of this should be considered was the date of application - here 25 November 1987. Mr Munday referred further to Justice Gummow’s words in the Johnson and Johnson case, supra, with respect to the consideration of s.6(3) of the Act and when a trade mark could be deemed deceptively similar to another.  He said also that an assumption should be made of fair and normal use of a registered trade mark in determining the reasonable likelihood of deception and confusion caused by the use of a trade mark which is the subject of a later application.

In considering the two trade marks, Mr Munday said that, when one considered the tests, as laid down in Shell Co of Australia v Esso Standard Oil (Australia) Ltd, (1963) 109 CLR 407 and the doctrine of “imperfect recollection” expressed there, it was a logical conclusion that the two trade marks here, if they were not substantially identical, were most certainly deceptively similar. He said that it should be noted that both words were the same length, had the same number of syllables, started and finished with the same letters, and only differed in the third letter of each trade mark, F and C respectively. He submitted that the opponent’s mark would be consistently pronounced PICK-O and not PEAK-O, and this would tend to add to any confusion because the applicant’s mark would almost certainly be pronounced PIFF-CO - a very close pronunciation of the words. He said that the examiner had not considered the opponent’s trade mark in deciding if there were any prior lodged marks to the present application as she had only searched for the prefix PIF- and not selected those beginning with PIC. The latter course, he said, would have unearthed the opponent’s prior registration.

Mr Munday referred to the evidence lodged by both sides.  He said that his own declaration, which comprised the opponent’s evidence, showed that the parties were in dispute in other jurisdictions in relation to their respective trade marks and that the present applicant was opposing the registration of the opponent’s own trade mark on the same grounds as were at issue in the present case.  He referred to the Streets’ declaration comprising the applicant’s evidence in answer, saying that it was mainly assertion.  He said there was no real evidence, in the form of invoices and the like, to indicate whether sales had taken place, of the goods presently applied for, prior to the date of application.  The annual reports included in that evidence were all post the application date and there was nothing to show that the applicant had established a reputation in its trade mark as at the relevant date.

He concluded his submissions by seeking costs in the matter in favour of the opponent.

In his submissions in reply, Mr Walton said that, given the opponent was only relying upon one ground of its opposition at the hearing - that of s.33, he would restrict his responses to that ground.  He said that the evidence in support served by the opponent comprised a single declaration which served no purpose other than to identify activities of parties outside of Australia and which had no relevance to the present opposition.  However, the applicant had decided to serve evidence in answer, primarily to establish itself as the proprietor of the present trade mark and to prove use of the trade mark consistent with its intentions as at the date of the application.  The opponent had not served any evidence in reply and this meant that the applicant’s evidence was uncontested.  He said that this evidence showed the history of the trade mark in the UK since 1958 for substantially the same goods as the present application covered.  It also showed that the two trade marks, relevant to the present dispute, co-existed in that market for goods such as, “machines for use in the preparation of foods and beverages”, owned by the applicant, and “coffee; mixtures of coffee and chicory; coffee essences, coffee extracts; cocoa”, owned by the opponent.  He said that the PIFCO trade mark had been applied for and registered by the applicant in other overseas countries.  The applicant had first used the trade mark in Australia for “massagers” and then for a range of electrical products since the 1960s.  He said that the applicant had already achieved registration in this country for the same trade mark for goods in class 9, including kettles.  Given these were goods of the same description as were contained in the present application’s statement of goods, it did not make sense to deny registration here.  He said that there had been no instances of confusion in the market place shown between the two trade marks which would tend to support an objection made under s.33 of the Act.

With respect to the allegations that the trade marks were substantially identical or deceptively similar to each other, Mr Walton said that the present mark, PIFCO, had been accepted, notwithstanding the pre-existing registration of the PICCO trade mark.  He said that the opponent’s registration only covered “electric coffee brewing machines” which, he contended, were not goods of the same description as all or any of the specified goods covered by the present application.  Additionally, he said that there were visual and aural differences between the trade marks, the letter F in the present mark having a soft sound and having a dominating effect in separating the two syllables PIF and CO.  The first syllables of the respective trade marks were visually and phonetically so different as to preclude the application of the “imperfect recollection” doctrine, referred to in the case of Rysta Ltd’s App’n (1943) 60 RPC 87, when comparing the two trade marks. He said that, in applying the principles established by Parker J in the case of Pianotist Co's App'n (1906) 23 RPC 774, the two marks in question could not be considered substantially identical or deceptively similar.

Mr Walton said that the applicant had met the onus of establishing that there was no reasonable likelihood that registration of the trade mark PIFCO would deceive or cause confusion.  On the other hand, the opponent had not discharged its onus of proving that the two marks in question were substantially identical or deceptively similar in relation to goods of the same description - Hermes S.A. v E.T.Swift & Co Pty Ltd 2 IPR 432. Additionally, he referred here to page 169 of Australian Law of Trade Marks and Passing Off (Second Edition) by D.R.Shanahan where the author discussed the topic at some length.

He concluded his submissions by seeking costs in the matter in favour of the applicant.

Discussion

Section 33 - Substantially identical or deceptively similar

Sub-section 33(1) reads:

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.

I think that the some of the goods of the present application, viz. “...cooking and heating apparatus...” can be considered goods of the same description as those covered by the opponent’s registered mark, B379970, “electric coffee brewing machines”.  When one considers the respective goods, using the three heads classified by Romer J in Jellinek's App'n, supra, it seems obvious to me that the nature and uses of the respective goods are the same - apparatus designed to cook or brew food and drink, and to keep it warm.  I also think it highly likely that they would be bought and sold through the same outlets - department stores and wherever food preparation apparatus is sold.

Having so decided, in considering the question of whether the trade mark in question is caught by the provisions of s.33, I must now determine whether it is substantially identical with, or deceptively similar to, the trade mark owned by the opponent.

It is obvious that there is a difference between the opponent’s and applicant’s trade marks in that the words, although being the same length and sharing the first two and last two letters - PI and CO, respectively, differ in the third - F and C.  The words are therefore unalike in appearance and would certainly be pronounced differently.  I therefore find that the trade marks are not substantially identical.

I now turn therefore to consider whether the trade marks can be considered deceptively similar.  Sub-section 6(3) defines a trade mark as deceptively similar if it is likely to deceive or cause confusion.  Here, the trade marks should not be placed side by side but consideration should be given to any common impression carried away from the two marks.  The test here is as found in the judgment in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd (1937) 58 CLR 641, and I refer to where 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.  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.

In the present case, there has been no evidence adduced of instances of actual confusion and there is no evidence of any such events occurring.  Mr Munday attributed this to an alleged lack of sales of goods under the subject mark prior to the lodgment date.  Mr Walton, on his part, said that it was implicit, from the undisputed Streets’ declaration, that the mark had been used in Australia for many years.  Whatever the case, I will have to consider the matter from a theoretical viewpoint.

The trade marks of the parties in dispute are, in the applicant’s case, the word PIFCO, and in the opponent’s, the word PICCO.  Mr Munday submitted that, given the similarity in spelling and that the words would be consistently pronounced PIFF-CO and PICK-O, respectively, then the words were, at the least, deceptively similar.  I agree with him that the subject trade mark would be pronounced the way that he has submitted.  However, I do not concur about the pronunciation of the opponent’s trade mark.  I think it quite possible that it could also be pronounced PEAK-O.  However, notwithstanding either of those variations, I believe that the applicant’s and opponent’s trade marks would be pronounced differently because of the soft F in that of the applicant’s trade mark and the hard C sound in the middle of the opponent’s.  I also think that they do not look the same because of the different letters contained in them.  Although that difference is not great, I believe that a member of the appropriate public would give more attention to that variance when the trade marks are applied to the respective goods.  Both sets of goods appear to be comparatively expensive and not “bags of sweets” items.  Assuming, therefore, that persons buying such goods would have given the matter some consideration, I think that they would pay a deal of attention to the competing trade marks and the respective goods, and not find them deceptively similar.  Another differentiating feature is that the applicant’s trade mark is an acronym for the original company name, The Provincial Incandescent Filament Company Limited, and apparently has no other meaning.  On the other hand, the opponent’s trade mark is an Italian word meaning, inter alia, “mountain peak”.

Mr Munday made much of the fact that the examiner in the matter had not searched under the prefix PIC- and had therefore failed to consider the opponent’s mark as a bar to registration.  However, it is my experience that such a search would not be usual.  Any potentially deceptively similar trade marks to that covered by the present application would usually be found in the range of database prefix “hits” beginning with PIF.  Using Mr Munday’s logic here, examiners would need to search every letter in the alphabet following the letters PI- to compare various marks.  Such a prefix search conducted today for associated classes to class 11 reveals 952 occurrences on the trade marks database - an unworkable and unrealistic option to consider.

In my opinion, in relation to the tests laid out in the Australian Woollen Mills case, supra, I think that the net impressions left by both trade marks would be sufficiently unalike so as to differentiate them.  I therefore feel that there is very little possibility that the relevant purchasers of the goods covered by the respective trade marks under scrutiny would consider those trade marks to be deceptively similar - even taking into consideration the doctrine of "imperfect recollection".  For the foregoing reasons, I find that the opponent's objection, as it is based on s.33, must fail.

Conclusion
I find that the opponent has failed on the only ground pursued at the hearing.  I therefore dismiss the opposition and, subject to any appeal from this decision, the trade mark should proceed to registration.  I award costs in the matter of the opposition proceedings to the applicant.

Ian Forno
Hearing Officer

27 February 1997