Quanta Computer Inc v Quante AG

[2004] ATMO 64

TRADE MARKS ACT 1995

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

Re:Opposition by Quante AG to registration of trade mark application 922942 (9,16,35,37,38,41,42) - QUANTA - filed in the name of Quanta Computer Inc.

Delegate:

Deirdre O'Brien

Representation:

Opponent

Trevor Stevens of Davies Collison Cave

Applicant

John O’Mahoney of Collison & Co

Decision:

S44 ground not made out. Registration allowed. Costs awarded against opponent.

Background

1. Registration of trade mark application no 922942 has been opposed by Quante AG (‘the opponent’).  The trade mark applicant is Quanta Computer Inc (‘the applicant’).  Both parties filed and served evidence as follows:

Declarant	Date made	Exhibits
Evidence in support	Thomas Percival Spencer[1]	02.09.2003	1 - 5
Evidence in answer	Winnie Ju[2]	30.12.2003	BL1 - BL9
Evidence in reply	Thomas Percival Spencer	01.07.2004

[1] Company Secretary of the authorised user in Australia of the opponent’s trade mark

[2] Deputy Director of Intellectual Property Team of the trade mark applicant

1. I was delegated by the Registrar to hear the matter in Canberra on 7 September 2004.  The opponent was represented by Mr Trevor Stevens of Davies Collison Cave, Sydney.  The applicant was represented by Mr John O’Mahoney of Collison & Co, Adelaide.  At the hearing Mr O’Mahoney requested permission to introduce further material in response to issues raised in the evidence in reply.  Mr Stevens did not object and I allowed the material[3] into proceedings.

   [3] Copies of recent articles from the Sydney Morning Herald, APC Magazine and PC Tablet

Ground of opposition

1. Mr Stevens accepts the onus is upon the opponent to make out at least one of the grounds on which registration can be refused[4]. He says the opponent is relying on the ground contained in section 44 of the Trade Marks Act 1995 in respect of its trade mark registration no 819020. Relevant details of this application and of the cited registration are below:

   [4] Lomas v Winton Shire Council [2002] FCAFC 413

This application	Cited registration
Trade Mark	quanta
Priority date	13 August 2002	4 January 2000
Classes	9, 16, 35, 37, 38, 41, 42	6, 9, 42

1. In the interest of brevity I have not listed all the goods and services covered by each trade mark.  Suffice it to say I am satisfied that many of the applicant’s electronic, electrical and telecommunication goods in class 9 are the same or similar to some of the cited goods in the same class.  Furthermore the cited registration has an earlier priority date.  Accordingly the opponent’s ground of opposition will be made out if I am satisfied that the two trade marks are substantially identical or deceptively similar. 

2. Applying the standard test[5] I find the trade marks are not substantially identical.  It is true they differ in their spelling only with respect to their final letters but that is a significant difference. As Ms Ju says in her evidence in answer, the applicant’s trade mark is a word which would be recognised by those in the electronics industry as indicating ‘bundles of energy’.  It also has another well known meaning of ‘amounts’ or ‘quantities’[6].  The cited trade mark is an invented word of no apparent meaning.  In other words the two marks differ in their substance. 

   [5] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 414

   [6] quanta is the plural of quantum which, according to the Macquarie Dictionary, can mean ‘quantity or amount’.

3. Mr Stevens submits that the test for substantial identity is not limited to a visual comparison of the trade marks but that the aural impression conveyed by each trade mark must also be taken into account[7]. According to the Macquarie Dictionary, quanta is pronounced kwontuh.  quante, being an invented word, does not appear in that dictionary.  There is nothing in evidence from a recognized authority such as a linguistics expert to show how quante is likely to be spoken by Australians and the applicant and opponent have differing opinions in the matter.  Mr O’Mahoney says the te will be pronounced as tay or tai; Mr Stevens says the sound of te and ta at the end of words is sometimes the same.  Ms Ju claims in her declaration that quante will be pronounced in the French manner or in the manner of another, unspecified, foreign language whereas Mr Spencer says quanta and quante have an almost identical sound.  However no one has explained how they came to their respective conclusions.

   [7] Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd 59 IPR 318 at 327

4. I am aware that the final e in English words is often ‘silent’ but I do not know if this would apply to a word ending in ante.  Although ant is a common English suffix, ante is not.  It is a recognised prefix[8] but I am not aware of any English words ending in ante other than andante and ante.  According to the Macquarie Dictionary andante can be pronounced andantee or andantay.  The same dictionary indicates that ante on its own is pronounced antee, but in the phrase vide ante it can be pronounced antee or antay.  It also indicates that the name of the well known Italian poet dante is pronounced in Australia as dantay.  I consider the manner in which the letter e is depicted in the cited mark means its presence is unlikely to be overlooked and that some attempt will be made to pronounce it. From the aforesaid examples I think it likely that it will be pronounced as ee or ay and not as uh as in quanta.  Accordingly quante and quanta will not be pronounced in the same way and on that basis I find they are not aurally substantially identical. 

   [8] Macquarie Dictionary

5. The question of deceptive similarity requires an assessment of the way in which each trade mark is likely to be remembered[9].  Both commence with the prefix quan but have different suffixes.  In order to obtain some idea of whether or not the prefix quan is likely to be associated with one trader, I turn to the state of the register as indicated in Ms Wu’s evidence.  I agree with Mr Stevens that the register is not necessarily a true reflection of the marketplace.  Not all registered trade marks are used and some of those in use are not being used in relation to all the goods/services covered by the registration.  Nevertheless, I cannot overlook the fact that at the date of application there were fifteen registrations in class 9 other than the cited registration for trade marks commencing with quan.  Those other registrations are all in the names of different traders.  This would seem to indicate that, although both trade marks share the same prefix, consumers will not necessarily assume they have a common origin[10].  The question is whether or not the trade marks as wholes[11] are sufficiently alike to cause deception and/or confusion. In deciding that question, I must take into account the visual and aural impressions likely to be formed of each trade mark[12].

   [9] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658

   [10] Bracco International BV v Schering AG 47 IPR 381 at 388

   [11]  Clark v Sharp (1898) 15 RPC 141 at 146

   [12] Pianotist Co Ltd’s Application (1906) 23 RPC 774 at 777

6. The visual impression of the applicant’s trade mark is of an ordinary English word with a well known meaning/s.  The visual impression of the cited trade mark is not just that of an invented word, but an invented word depicted in a fanciful way.  The oversize and stylised letter Q and the depiction of the final letter E all contribute to the impression formed[13].  Of course registration will give the applicant the right to depict its trade mark in manners other than in plain block letters[14].  Nevertheless I must assume that its use of its trade mark will be fair[15] and that it will not depict its trade mark in the manner of the cited trade mark.  On that basis I find that the visual impressions created by each trade mark are sufficiently different for them to be distinguished by consumers.  

   [13] Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd supra at 332-3

   [14] Morny Ltd’s Trade Mark (1951) 68 RPC 131 at 149-50

   [15] Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97 at 101

7. I turn now to the aural impressions.  I have already found that the trade marks are unlikely to be pronounced in the same way.  That, together with the fact that quanta has a meaning/s and quante has not, militates against them being remembered in the same way[16].  The opponent has not provided any evidence of actual deception/confusion.  I draw no inference from this as the evidence of both parties would seem to show their goods are directed towards different markets.  Nevertheless the onus is upon the opponent to show deception/confusion is likely[17] when notional use is taken into account[18] and it has not done so.  It is possible, as Mr Stevens says, that the trade mark on the goods could be obscured.  However I agree with Mr O’Mahoney that the applicant’s class 9 goods will be purchased with some care.  It is unlikely that they will be ‘picked from the bargain bin’ and taken straight to the cashier without being inspected by the purchaser.  It is also possible that when the goods are ordered by telephone[19] quante may be pronounced by some persons as quanta.  But I am not satisfied there is a real danger that a substantial number of persons will do so[20].  Mr Stevens says that the opponent often uses the trade mark quante in ordinary type.  However that is not use ‘within the scope of the registration’[21] and so not relevant here.  Taking into account the different meanings of the trade marks, their dissimilar appearance and sound and the likelihood that the goods will not be purchased in haste[22], I find the trade marks are not deceptively similar.

   [16] Australian Woollen Mills Ltd v FS Walton & Co Ltd supra

   [17] Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd supra at 328

   [18] MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 at 245

   [19] Aristoc Ltd v Rysta Ltd (1944) 1B IPR 467 at 472

   [20] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 598

   [21] Gardenia Overseas Pte Ltd v The Garden Co Ltd (1994) 29 IPR 485 at 493

   [22] Anheuser-Busch Inc v Budejovicky Budvar (2003) 56 IPR 182 at 217

Decision

1. The opponent has failed to make out the ground of opposition on which it is relying.  Accordingly the trade mark application may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

2. I award costs according to the Official Scale against the opponent.

Deirdre O'Brien

Senior Examiner

Trade Marks Hearings   

17 November 2004