Rado Uhren AG (Rado Watch Co. Ltd) (Montres Rado SA) v Aleksandr Vladimirovich Suvorin

[2010] ATMO 118

TRADE MARKS ACT 1995

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

Re:Opposition by Rado Uhren AG (Rado Watch Co. Ltd) (Montres Rado SA) and MIDO AG (Mido SA) (Mido Ltd) to registration of trade mark application 1249398(14) (International Registration Designating Australia No 965238) - MADO - filed in the name of Suvorin Aleksandr Vladimirovich.

Delegate:	Jock McDonagh
Representation:	Opponent: Margaret Ryan of Phillips Ormonde Fitzpatrick Holder: No participation in process
Decision:	2010 ATMO 118 Reg. 17A.29 opposition – Ground under section 44 established – trade marks deceptively similar to opponent’s MIDO trade mark – protection refused. Costs ordered against holder.

Background

1. Aleksandr Vladimirovich Suvorin (but filed as” Suvorin Aleksandr Vladimirovich”) (“the holder”) requested protection in Australia for the following international registration designating Australia (“IRDA”):

   Application number:           1249398 (IRDA No 965238)
   Priority date:  18 April 2008

   Advertised accepted:           21 August 2008

   Goods:Class 14: Anchors (clock and watch making); barrels (clock and watch making); straps for wristwatches; watch bands; alarm clocks; watch cases; pendulums (clock and watch making); clockworks; movements for clocks and watches; chronometrical instruments; watch springs; stopwatches; watch crystals; watch glasses; clock hands (clock and watch making); cases for clock and watch making; clock cases; cases for watches (presentation); chronographs (watches); chronometers; watch chains; dials (clock and watch making); clocks; watches; atomic clocks; sundials; clocks and watches, electric; control clocks (master clocks); wristwatches

   Trade mark:  

2. Section 189A of the Trade Marks Act 1995 (“the Act”) governs the consideration of IRDAs.  This section makes provisions for the regulations to “provide for such matters as are necessary to enable the performance of the obligations of Australia, or to obtain for Australia any advantage or benefit, under the Madrid Protocol.”

3. Notice of opposition to the protection of an IRDA is governed by the provisions of regulation 17A.29 of the Trade Marks Regulations 1995 (“the regulations”). Regulation 17A.31(3) applies the grounds of opposition under sections 58 to 61 and section 62A of the Act to oppositions to IRDA.

4. On 20 November 2008, Rado Uhren AG (Montres Rado SA/ Rado Watch Co. Ltd)  and Mido AG (Mido SA/ Mido Ltd)  based in Switzerland (“the opponent”), filed a Notice of Opposition (“the notice”).  The opponent duly filed its evidence in support of the opposition as shown below:

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Franz Linder	President, Mido AG	21.09. 2009	FL-1 to FL-12
David Francis Stuart Longmuir	Patent & Trade Mark Attorney	18.11. 2009	DFSL-1 & DFSL-2
Roland Streule	President, Rado Uhren AG	5.11. 2009	RS-1 to RS-19

1. While the notice claimed most grounds authorized by the regulations, the opponent relied upon sections 42(b), 44, and 60 at the hearing. For the sake of completeness, I treat the remaining grounds of opposition as having been abandoned.

2. The matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Melbourne on 3 August 2010.  The opponent was represented by Margaret Ryan of Phillips Ormonde Fitzpatrick Patent & Trade Mark Attorneys. The holder was not represented, nor has it participated in the hearings process.

   Discussion

3. The first ground of opposition discussed by counsel for the opponent was that under section 44, which relevantly reads as follows:

   44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a) the applicant's trade mark is substantially identical with, or deceptively similar to:

   (i) a trade mark registered by another person in respect of similar goods or closely related services; or
   (ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1:  For deceptively similar see section 10.

   Note 2:  For similar goods see subsection 14(1).
   Note 3:  For priority date see section 12.

4. The opponent relies on two prior registrations as follows:

Number	Class	Mark	Priority Date
157923	14: All horological products: watches, watch movements, watch cases, dials and parts of watches	14.01.1960
656235	14: Watches and parts thereof	RADO	21.03.1995

1. It is quite apparent that the cited marks have earlier priority dates than, and cover the same goods or goods of the same description (see section 14(1) of the Act) as the opposed IRDA. The opponent did not argue that the cited trade marks were substantially identical to the opposed trade mark; therefore, the issue is whether they are deceptively similar.

2. Section 10 of the Act provides:

   Definition of deceptively similar

   10. 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.

3. On the question of deceptive similarity, Ms Ryan cited the relevant authorities, commencing with the familiar words of Justices Dixon and McTiernan in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd (1937) 58 CLR 641, at 658:

   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, then 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.

4. Ms Ryan reminded me of the concept of “imperfect recollection” as stated by Luxmoore LJ in Re Rysta Ltd’s Application (1943) 60 RPC at 108, and Windeyer J’s statement in Shell Co of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407:

   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.

5. Ms Ryan submitted that although the holder’s trade mark is in stylized form, the degree of stylization is not great. It has no logo or pictorial element; rather, it is simply the word MADO represented in a particular font. She further submitted that, in assessing whether the mark is deceptively similar to either of the cited registrations, the holder’s mark should be treated as if it were presented in block letters. It was submitted that this would reflect the practical reality that a customer would likely recollect the word MADO rather than any particular font or stylized form.

6. My attention was drawn to the Federal Court decision of Gummow J in Johnson & Johnson v Kalnin and Anor (1993) 26 IPR 435, at 441:

   As to visual appearance, I make allowance for the use of the chevron device rather than a hyphen to separate the two components of the "BAND>>IT" mark for which the respondents seek registration. I also make allowance for the somewhat different print in which the two marks, as registered and as applied for, appear. However, the evidence suggests and common experience would affirm, that fine details such as different type faces are likely to be overlooked by those to whom these marks will be addressed in trade.

7. Ms Ryan submitted that, based on this authority, the cited MIDO registration should also be considered without regard to the particular font or stylized form. Submissions were first directed at that cited mark and I shall consider it first.

8. Ms Ryan highlighted that MADO and MIDO both commenced with the letter “M”, are both four letter words of two syllables and both have the same second syllable, ‘DO”. The only difference between the two trade marks is the second letter. She also pointed out that there are no other M*DO trade marks registered in Class 14.

9. Ms Ryan cited the following Trade Marks Office decisions in which registration of four letter words was refused:

   ·     BASE refused in face of BOSE: Bose Corporation v Target Australia Pty Ltd [2008] ATMO 54;

   ·     MEGO refused in face of LEGO: Interlego AG v Mego Corporation (1979) 49 AOJP 2829; and

   ·     WOSS refused in face of BOSS: Hugo Boss AG v World One Co Ltd [2000] ATMO 88.

10. The question of deceptive similarity (unlike that of substantial identity marks) is not to be judged by a side-by-side comparison. In assessing the impression created by the mark, it is important to consider what is recalled by a person who has a brief opportunity to review it. The test is that cited by Ms Ryan, above: "The comparison is between the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have and the impression that such persons would have [from the other product]". Shell Co of Australia Limited v Esso Standard Oil (Australia) Limited, above.

11. Allowance must be made for imperfect recollection: Aristoc v Rysta (1945) 62 RPC 65. The effect of spoken description must be considered and similarities both of sound and of meaning are important: Australian Woollen Mills Ltd v Walton, above. And also see:

    "A trade mark is undoubtedly a visual device but … since words form part, or indeed the whole of a mark, it is impossible to exclude consideration of the sound or significance of those words": de Cordova v Vick Chemical Co (1951) 68 RPC 103, per Lord Radcliffe

12. Further, where a trade mark is composed of verbal and figurative elements, the former should, in principle, be considered more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark. It is reasonable to assume that the average consumer will perceive the verbal element as the trade mark and the figurative element as a decorative element. As discussed by Lord Radcliffe, in de Cordova v Vick Chemical Co, above, if the mark:

    "includes words or a 'fancy word' composed of them, when pronounced, sounding virtually the same [as the registered mark] then use by another trader of those words … will infringe because, necessarily … use of the words … is likely to cause confusion"

13. While it is not necessary to prove actual deception, a mere possibility of confusion is not sufficient: Southern Cross Refrigerating Company v Toowoomba Foundry Pty. Limited (1954) 91 CLR 592. There must be a real, tangible danger of confusion occurring: Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411). It follows that, when comparing the trade marks for the purpose of considering whether they are deceptively similar, the relevant consideration is the likely effect or impression produced on and retained by customers and potential customers.

14. Here, the respective trade marks are short words with no obvious meaning. They each consist of two syllables, with each syllable made up of a single vowel and consonant. Both are arranged in the same order and the sequence of letters within each trade mark is precisely the same (consonant­ – vowel – consonant - vowel). Each word has the same weight and balance and the same general sense and emphasis. Both start with the letter “M”, both have the letter “D” in the same location within the trade mark, and both end with the letter “O”. The only difference between the respective words resides in the fact that the one corresponding vowel (being the letter “A” in the holder’s mark and the letter “I” in the opponent’s mark) is not the same.

15. There would be some degree of difference in the pronunciation of the respective trade marks. The Australian community is multicultural and ethnically diverse. Persons of different cultural backgrounds would be expected to pronounce the word “MIDO” in a variety of different ways and with different emphases and accents. The stereotypical “Australian” accent is notorious for its treatment of vowel sounds, especially “a” and “i”. Realistically, there is every likelihood that the words “MIDO” and “MADO” would be pronounced the same way by a significant proportion of the purchasing public.

16. The possibility of confusion in the notional use of the trade mark is quite high, notwithstanding that many of the goods included in the holder’s specification are likely to be expensive. As recognised by Hearing Officer Thompson in Peugeot v Viva Time Corp (2002) 54 IPR 568, the self-service element in jewellers’ shops and other outlets for the relevant Class 14 goods is minimal. There exists as a result a limited opportunity for close inspection of the goods. For that and other reasons he concluded that the chance of verbal confusion is therefore high.

17. Taking into account the judicial authorities cited above and previous relevant decisions of the Trade Marks Office I am satisfied that the holder’s MADO mark sufficiently resembles the prior existing MIDO registration as to be deceptively similar to that trade mark within the meaning of the Act. I do not find it necessary to consider the second trade mark, RADO.

18. Having found in favour of the opponent in terms of section 44 there is no need for me to discuss the other grounds set out in the notice although these grounds or any others in the Act may also be relied on in the event of an appeal of this decision.

    Decision

19. Regulation 17A.34(1) provides:

    17A.34 (1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

    (a) to refuse protection in respect of all of the goods or services listed in the IRDA; or
    (b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

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

20. The opponent having established the ground of opposition under section 44, I refuse to extend protection to Australian trade mark application 1249398 (IRDA No 965238) in respect of all goods listed in this IRDA. The International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accordance with regulation 17A.34 (2).

    Costs

21. The opponent is the successful party and is entitled to its costs. Accordingly, I award costs against the applicant as per Schedule 8 of the Regulations.

    Jock McDonagh
    Hearings Officer
    Trade Marks Hearings
    29 November 2010