Pitstop Fuel and Convience Stores Pty Ltd v Mobil Oil Corporation

[2000] ATMO 30

TRADE MARKS ACT 1995

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

Re:Opposition by PITSTOP FUEL AND CONVENIENCE STORES PTY LIMITED to registration of trade mark application 777289(4, 37) - MOBIL PITSTOP- filed in the name of MOBIL OIL CORPORATION.

Background

Application number 777289 was filed on 4 November 1998, in the name of Mobil Oil Corporation (the applicant).  The application was for the registration of the trade mark MOBIL PITSTOP, and covered the following goods and services:

Class 4:         Fuels, lubricants, illuminants, oils and greases; fuels including petrol, oils, greases and other lubricants, illuminants.

Class 37:       Service station services for vehicles, repair and maintenance of vehicles, vehicle washing, driveway service and self service for vehicles.

Following examination, the trade mark was advertised as accepted in the Australian Official Journal of Trade Marks of 4 March 1999.

A notice of opposition to the trade mark's registration was filed by Pitstop Fuel and Convenience Stores Pty Limited (the opponent) on 4 June 1999.  The grounds for opposition are as follows:

a.      the applicant is not the owner of the trade mark;

b.      the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons, namely of Pitstop Fuel and Convenience Stores Pty Limited, being the proprietor of the trade marks:

(i) 'Pitstop' in respect of fuels, lubricants, illuminants, oils and greases; fuels including petrol, oils, greases and other lubricants, illuminants,

(ii) 'Pitstop' in respect of service station services for vehicles, repair and maintenance of vehicles, vehicle washing, driveway service and self service for vehicles,

(iii) 'Pitstop fuel' in respect of fuels, lubricants, illuminants, oils and greases; fuels including petrol, oils, greases and other lubricants, illuminants,

(iv) 'Pitstop fuel' in respect of service station services for vehicles, repair and maintenance of vehicles, vehicle washing, driveway service and self service for vehicles,

(v) 'Pistop' (sic) Fuel and Convenience Stores' in respect of fuels, lubricants, illuminants, oils and greases; fuels including petrol, oils, greases and other lubricants, illuminants,

(vi) 'Pistop' (sic) Fuel and Convenience Stores' in respect of service station services for vehicles, repair and maintenance of vehicles, vehicle washing, driveway service and self service for vehicles,

(vii) 'Ampol Pitstop' in respect of fuels, lubricants, illuminants, oils and greases; fuels including petrol, oils, greases and other lubricants, illuminants,

(viii) 'Ampol Pitstop' in respect of service station services for vehicles, repair and maintenance of vehicles, vehicle washing, driveway service and self service for vehicles;

c.      use of any trade mark granted on the basis of the said application would be contrary to law;

d.      because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion;

e.      (i)  it is substantially identical with, or deceptively similar to, trade marks and service marks that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia, namely, the trade marks and service marks and reputations identified in b(i) - (viii) above; and

(ii) because of the reputation of those other trade marks, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

The opponent served its evidence in support by the due date.  The applicant requested an extension of time to serve evidence in answer but did not submit the evidence within the extended time.  A standard notice was issued regarding the late evidence, and giving the parties the opportunity to request a hearing.  As neither party did so within the allowed time, the opposition was referred to me, as a delegate of the Registrar, for a decision on the written record.

The evidence.

The evidence in support consists of a Statutory Declaration sworn by Michael Badaoui (the Badaoui declaration) with annexures A to N; and additional declarations sworn, respectively, by Richard Bial, Wayne Willmington, Graham Beckett, Lawrence Turnbull and Rodney Turnbull.

The Badaoui declaration forms the bulk of the evidence in support.  Mr Badaoui gives a history of the use of the word 'Pitstop' on a service station site at Faulconbridge in NSW, run by himself and a family member, Mr Ken Dahdah.  He states that a family company, Kenmick Fuel Pty Limited, which traded as Pitstop Fuel & Convenience Stores, bought the Faulconbridge site in 1994 and commenced trading under the name Pitstop Fuel.  Subsequently, in 1998 the family established a separate operating company to trade under the name, and formed the company Pitstop Fuel & Convenience Stores Pty Ltd, the opponent in these proceedings.

Mr Badaoui states that because the service station site was an 'independent' site, i.e. one not contracted to any one of the major oil companies, he did not wish to rely on branding by any particular company.  He says the name 'Pitstop' was chosen because it had connotations of fast and efficient service, and professionalism in service, using the analogy of 'pit stops' for racing drivers.  He refers to the importance to the company of the brand and goes into some detail on the forms of signage for the service station site.  An example of the importance of this signage to the company, he says, is that the illuminated signs were changed in 1994 to read 'Pitstop Fuel', and remained in that form until January 1999 when they were changed following a major upgrade of the site.  At this stage, he states, the name 'Ampol' was added to the word 'Pitstop'. 

The annexures to the Badoui declaration contain examples of documents such as invoices addressed to the name Pitstop Fuel, and letters sent out under a letterhead incorporating the same words, as well as newspaper articles which include the name.  Also included are copies of business name registrations and various licences for sale of goods such as petrol and tobacco, and motor repairs under the names 'Pitstop Convenience Stores', and 'Pitstop Fuel'.  Copies of entries in the local Telstra White Pages and Yellow pages are also appended.

The remainder of the evidence consists of 5 declarations by the persons mentioned earlier.  These all attest to knowledge of the Pitstop business at Faulconbridge, and its connection with Mr Badaoui and Mr Dahdah, and give the opinion that they would expect this connection to exist if they became aware of the word 'Pitstop' in use on other service station/convenience store businesses.

Discussion

The grounds for opposition are extensive and quoted in full earlier in this decision.  However, the evidence supplied by the opponent does not clearly address them.  The evidence is brief and general, and is designed, I assume, to demonstrate the reputation the applicant is claiming in the word PITSTOP.  I consider it appropriate to look at each ground for opposition in turn.

(a) The applicant is not the owner of the trade mark

This is a reference to section 58 of the Trade Marks Act 1995, which reads as follows:

58. the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

The principles surrounding the issue of ownership under s.58 of the Act have not changed from the same considerations under s.40 of the Trade Marks Act 1955. The present position at law is that ownership of a trade mark for the purposes of s.58, is found either by first use of the mark in the Australian market, in connection with the relevant goods or services, or by the making of an application for registration, whichever is the earlier. These principles[1] are well established in relation to s.40 of the repealed Act.

[1] Shell Co (Aust) Ltd v Rohm & Haas Co (1948) 78 CLR 601

The opponent claims ownership of the trade mark by virtue of use of the words PITSTOP FUEL on, or in respect of, the relevant goods and services from as early as 1994.  The applicant applied for its trade mark, MOBIL PITSTOP, in November 1998, a full 4 years later than the opponent's claimed first use.

The question of ownership under section 58 rests on whether the trade mark the opponent claims use of is the same, or at least substantially identical to that of the applicant. Despite the general nature of the opponent's evidence, it is clear that the goods and services in question are the same or closely related.

In Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, Windeyer J considered the question of substantially identical trade marks and stated at p414:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

A side by side comparison of the applicant's trade mark, and that claimed by the opponent shows a strong similarity in that both include the word PITSTOP.  However, there the similarity ends.  The applicant prefaces the word with its already registered trade mark MOBIL, whilst the opponent uses the descriptive word FUEL after it.  Applying the test from Shell, supra, and comparing the marks side by side, I find that the two trade marks, MOBIL PITSTOP and PITSTOP FUEL, are not substantially identical.  The word MOBIL is an overwhelming feature of the applicant's mark, and clearly delineates the two on a side by side comparison.  The claim that the applicant is not the owner of its trade mark therefore must fail and the ground for opposition be dismissed.

(b) the trade mark is not capable of distinguishing the applicant's goods or services …

This ground is phrased rather strangely.  It refers to a number of trade marks which are claimed to be owned by the opponent, some of which are the subject of applications for registration. These applications all postdate that of the applicant by some 8 months, having been filed on 9 July 1999, and indeed were filed at the Trade Marks Office after the present notice of opposition was filed on 4 June 1999. The ground appears to be attempting to apply the provisions of section 41 to the matter of conflicting trade marks. 

Section 41 is not designed to be used in this way.  Grounds for opposition based on section 41 are an assessment of the actual trade mark itself and whether it meets the requirements of that section of the Act.  Such a ground under section 41 would usually rely on a claim that the trade mark fails to meet the requirements of the section.  In this case, the trade mark MOBIL PITSTOP was assessed by the examiner under section 41 and was accepted without a report issuing.  In trade mark examination parlance, it was "clear on the first report".  The examiner considered the trade mark itself, as well as the Register, and concluded that there were no grounds for rejecting it.  I am in agreement with this assessment of the trade mark, and do not consider that a ground for opposition under section 41 exists.

When the issue of conflicting trade marks arises, either section 44 or section 60 applies.  Section 44 is not at issue here because those trade marks applied for by the opponent post date the applicant's own mark.  Section 60 will be dealt with at a later stage in this decision.  In respect of this ground for opposition, I find that the ground itself is faulty, and the opponent's claims under this ground must fail.  I therefore dismiss this ground.

(c)  use of any trade mark granted on the basis of the said application would be contrary to law.

This ground refers to section 42(b) of the Trade Marks Act 1995 which reads as follows:

42.  an application for the registration of a trade mark must be rejected if:

(a) the trade mark contains or consists of scandalous matter; or

(b) its use would be contrary to law.

For this section of the Act to apply, the use of a trade mark would need to breach some piece of legislation.  A breach of common law rights is not the intention here.  As the function of the Trade Marks Office is administrative, not judicial, this section is only applied where there is clearly a breach of another Act.  It therefore generally refers to use of words or signs prohibited under the provisions of legislation, such as those, for example, by the Sydney 2000 Games (Indicia and Images) Protection Act 1996.

The applicant's trade mark does not contain or consist of words or signs which breach another piece of legislation.  Therefore there is nothing to support the opponent's claim that the applicant's use would be contrary to law, and I dismiss this ground.

(d)  because of some connotation that the trade mark … has the use of the trade mark … would be likely to deceive or cause confusion.

This ground is based on the provisions of section 43 which reads as follows:

43.  An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusions.

The operation of section 43 does not depend upon the existence of a conflicting trade mark.  The purpose of this section is to prevent the registration of trade marks which, in respect of the particular goods and services, carry a meaning which would be likely to deceive or confuse people purchasing or otherwise dealing in the particular goods and services. 

The word 'connotation', as observed by the Registrar's delegate in Down to Earth (Victoria) Co-Operative Society Ltd v Schmidt (1998) 41 IPR 632, denotes a secondary meaning a word has developed. The secondary meaning the word 'pitstop' (or 'pit stop') has developed is that of a stop during a journey where you can quickly obtain service and fuel for your car, or food and refreshments. It is an analogy based on the 'pit stops' for refuelling and tyre changes during motor races. This secondary meaning clearly shows in the definitions given in the Macquarie Dictionary. In the field in which both the applicant and the opponent trade, it seems to be an obvious connotation, and one which will not result in deception or confusion amongst the buying public. The ground based on section 43 therefore fails and I dismiss it.

e. Section 60

Ground (e) is effectively a quoting of section 60, which reads as follows:

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

(a)  it is substantially identical with, or deceptively similar to, a trade mark  that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

When written out in full, this ground refers back to the trade marks nominated in ground (b).

In order to support a ground under section 60, the opponent needs to be able to indicate a trade mark which, prior to the relevant date, 4 November 1998 (the application date) had an established reputation.  Once that trade mark has been identified, the opponent needs to demonstrate the likelihood of deception and confusion caused as a result of the existence of that mark. 

There are a number of points I would like to make here.  Firstly, the opponent has demonstrated some reputation before the relevant date in only one trade mark - PITSTOP FUEL, in respect of service station services for vehicles, repair and maintenance of vehicles, driveway services and self service for vehicles.  While it has referred to some of the others, such as PITSTOP solus and PITSTOP FUEL AND CONVENIENCE STORES, the bulk of the evidence before the priority date goes to the reputation in PITSTOP FUEL.  When considering section 60, then, I am obliged to discount all trade marks mentioned apart from PITSTOP FUEL.

Secondly, the opponent claims proprietorship of the trade mark AMPOL PITSTOP, though it has not filed an application for the mark.  This proprietorship I do not believe it has any right to claim.  The trade mark AMPOL is registered in the name of another party entirely, a well known oil company.  While there may be an agreement of some sort between this oil company and the opponent company, such that the opponent has permission to use the word AMPOL alongside its own mark, a claim of proprietorship and reputation in the mark is inappropriate.  Again, reference to this trade mark for consideration under section 60 is discounted.

In considering the provisions of section 60, I am thus looking at the applicant's mark PITSTOP FUEL and comparing it with the applicant's trade mark, MOBIL PITSTOP.  When considering ground (a), I determined that the two trade marks were not substantially identical.  To determine whether they are deceptively similar, I refer to the test enunciated by Windeyer J in the Shell case, supra, where, after discussing the concept of substantial identity, he went on to consider deceptive similarity as follows:

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.

I consider the impression most likely to be left in a consumer's mind will differ between these two trade marks.  The applicant's trade mark is most likely to be remembered by the extremely well known word MOBIL.  The opponent's mark, on the other hand, is most likely to be remembered by the word PITSTOP.  However, this word is also included in the applicant's mark.  The question is whether the presence of the word PITSTOP in both trade marks will deceive the buying public into deciding that the trade marks are related.

In the Metro case, Registrar of Trade Marks v Woolworths 45 IPR 411, Justice French makes a comment which I consider is most pertinent in respect of this ground of opposition. He says, at page 431, when commenting on the decision of Wilcox J in the original Federal Court decision on the case

His Honour's reference to the familiarity of the name "Woolworths" in Australia was appropriate.  Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, as is the present case, it would be artificial to separate out the physical features of the mark from the viewer's perception of them.  For in the end the question of resemblance is about how the mark is perceived.  In the instant case the visual impact of the name "Woolworths" cannot be assessed without a recognition of its notorious familiarity to consumers.

It is my opinion that the word MOBIL, in the field in which both applicant and opponent are trading, is one with "notorious familiarity to consumers".  Therefore, I do not consider the two trade marks are deceptively similar, as it is unlikely that a substantial number of persons would be likely to confuse them in the marketplace.

While some use of the trade mark PITSTOP FUEL is certainly demonstrated, in my opinion, it does not amount to a strong reputation, either in the services claimed in class 37, or the goods claimed in class 4.  The evidence does not support, at the appropriate date, anything other than a local reputation.  There is nothing to show an Australia wide reputation, or indeed one which is even state wide.  There may be the possibility of deception and confusion between the trade marks within a small group of consumers, but I cannot envisage it occurring in respect of  a substantial number of persons, which is required to sustain this ground.  I therefore dismiss the ground for opposition based on section 60.

Decision

I have found that the opponent has not succeeded on any of the grounds of opposition relied upon.  Accordingly, the opposition fails and, as a delegate of the Registrar, I dismiss it.  Subject to any appeal from my decision, application 777289 may proceed to registration. 

Alison Windsor
Senior Examiner

10 April 2000

Moorgate Tobacco Co Ltd v Philip Morris Ltd (No. 2) 156 CLR 414 (or 3 IPR 545)