Quantum Pacific Ltd

[2003] ATMO 27

TRADE MARKS ACT 1995

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

Re:Trade mark application number 809101(3) - ACTIVE & device - in the name of Quantum Pacific Ltd.

Date of Decision:	02 May 2003
Delegate:	Senior Examiner Deirdre O'Brien
Representation:	Julia Baird of counsel instructed by Griffith Hack, Patent and Trade Mark Attorneys of  Sydney
Decision:	Ex parte hearing - s 44 ground withdrawn and application accepted

Background

1. 
   On 5 October 1999 Quantum Pacific Ltd (the applicant) filed trade mark application 809101 in respect of the trade mark depicted below:

The goods (as amended) are cleaning preparations for dishwashing in class 3. 

1. The application was duly examined as required by the Trade Marks Act 1995 (the Act) and grounds for rejection were raised under section 44.  The ground for rejection based on registration 472543 was maintained in four reports, whereupon the rejection process was initiated.  The applicant was advised per notice dated 22 November 2002 that unless it applied for a hearing or a decision on the written record or withdrew its application within two months from the date of the notice, application 809101 would be rejected.  Registration 472543 is the word trade mark active care for bleaching preparations and other substances for laundry use; cleaning preparations in class 3.  It has an earlier priority date than this application. 

2. On 22 January 2003, within the time allowed, the applicant through its agent, Griffith Hack, Patent and Trade Mark Attorneys of Sydney, requested to be heard.  The matter came before me, as the Registrar's delegate, on 25 February 2003 in Canberra.  The applicant was represented by Ms Julia Baird of counsel by videoconference.

Submissions

1. Ms Baird conceded that the cited specification encompasses the applicant's goods, however she disputed the examiner's finding that the respective trade marks are deceptively similar.  She submitted that deceptive similarity is not judged solely from the degree of similarity between the trade marks but from the effect of 'that similarity in all the circumstances'[1].  While the two trade marks being considered here were similar in that they have the word active in common, Ms Baird argued they were not deceptively similar.  She submitted that the word active in active care is descriptive and noted that registration 472543 carried an endorsement in which the cited owner disclaimed any right to exclusive use of active.  She also noted that the courts have warned against a finding of deceptive similarity based on a common word when that word has descriptive overtones[2] or gives rise to a different idea[3].  She submitted that in all the circumstances the Registrar could not be satisfied that there was a reasonable likelihood of deception or confusion[4] and that therefore the ground for rejection should be withdrawn.

   [1] Shell Company (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 416

   [2] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536

   [3] CA Henschke & Co  v Rosemount Estates Pty Ltd 52 IPR 42

   [4] Registrar of Trade Marks v Woolworths Ltd 45 IPR 411 at 426

Reasons

1. For there to be a ground for rejection under section 44 based on registration 472543, I must be satisfied, inter alia, that the respective trade marks are deceptively similar.  Section 10 of the Act provides the following definition of 'deceptively similar':

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

2. It is well established that in assessing deceptive similarity, the respective trade marks are to be compared as wholes[5] and that their visual and aural impressions should be taken into account[6].  I find and active care look and sound different.  However trade marks can be deceptively similar if they have similar 'ideas'[7]. active care is a recognised English expression with a known meaning of proactive care, care that prevents damage or limits the amount of damage occurring.  When used on the goods of this application, consumers are likely to perceive active care as encouragement to choose this product if they wish to take preventive or active care of their dishes.  The 'idea' of active care is one of care.

   [5] Clarke v Sharpe (1898) 15 RPC 141 at 146

   [6] Pianotist Co Ltd's Appn (1906) 23 RPC 774 at 777

   [7] Jafferjee v Scarlett (1937) 57 CLR 115 at 121-122

3. The subject trade mark consists of the word active in ordinary font depicted on a splodge. I am aware that traders in cleaning preparations may describe their goods as having 'active' ingredients, usually enzymes, which promote the cleaning process.  While active does not actually say anything concrete about such goods, it is likely to be perceived by consumers as an allusion to the nature of the goods or of their ingredients.  In other words, active and active care give rise to different 'ideas' when used on cleaning preparations.  I am satisfied the trade marks are unlikely to be confused on the basis of their respective ideas.

4. This leads me to the likelihood of contextual confusion, that is, of consumers believing the trade marks indicate goods from the same trade source[8].  Contextual confusion has been said to occur because of the practice of 'traders adopting a certain word as a trade mark and constructing other trade marks for distinguishing characteristics of their goods by using such word as a basis and adding thereto prefixes of a qualifying nature'[9].

   [8] John Fitton & Co Ltd's Appn (1949) 66 RPC 110 at 113

   [9] Kodak (A/asia) Pty Ltd's Appn (1936) 6 AOJP 1724

5. As a general principle, contextual confusion is more likely when the word in common is a strong trade mark, such as a made-up word or a word of no relevance to the goods in question[10], so that it retains its identity when combined with words of a qualifying nature.  For example, contextual confusion may occur between cirrus and cirrus care if both trade marks were to be used on cleaning preparations. cirrus is a strong trade mark with respect to those goods and retains its identity as indicator of trade origin in the combination cirrus care. 

   [10] Conde Nast Publications Pty Ltd v Taylor 41 IPR 505 at 511-2; Bose Corporation v QSC Audio Products Inc [2002] ATMO 118

6. Here the trade marks are active care and .  They have the word active in common.  Ms Baird submitted that in the trade mark active care, active has the 'descriptive tinge' referred to by Maugham J in Magdalena Security Ltd’s Appn[11]. I agree.  active describes the kind of care provided and I find that it does not function as an indicator of source. Given normal English usage, I see no reason why consumers would dissect active care into its constituents, active and care, and regard care, a noun, as a qualification of active, an adjective.

   [11] (1931) 48 RPC 477 at 487

7. I would have found differently if the cited trade mark had been _care.  Consumers are likely to see that trade mark as a juxtaposition of two different elements rather than a recognised English expression.  But what is being considered here is the expression active care simpliciter.  I am not satisfied that there is a real, tangible danger[12] of consumers regarding goods bearing the words active care as coming from the same source as those identified by the trade mark . There is nothing before me to show that such confusion has occurred in the marketplace.  If it is occurring, that is something that can be tendered in evidence at the opposition stage[13]. 

   [12] Registrar of Trade Marks v Woolworths Limited supra

   [13] ibid at 427

Decision

1. I am not satisfied there is ground for rejecting this application under section 44 based on registration 472543.  I have therefore accepted it for the goods as they now stand.

Deirdre O'Brien

Senior Examiner

Trade Marks Hearings