Re: Opposition by Somfy Activites SA to registration of trade mark application 1869357 (9) - Intey- in the name of Changchun Chengji Technology CO., Ltd

[2020] ATMO 73

TRADE MARKS ACT 1995

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

Re:Opposition by Somfy Activites SA to registration of trade mark application 1869357 (9) – INTEY– in the name of Changchun Chengji Technology CO., LTD.

Delegate:	Nicholas Smith
Representation:	Opponent: Phillips Ormonde Fitzpatrick Applicant: Wilma Kin
Decision:	2020 ATMO 73 Trade Marks Act 1995 (Cth) - Section 52 opposition: s 44 considered – ground established – registration refused

Background

1. This decision concerns an opposition brought by Somfy Activites SA (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name Changchun Chengji Technology CO., LTD. (‘Applicant’): 

Application Number:	1869357
Filing Date:	29 August 2017
Goods:	Class 9: Electric door bells; Smoke detectors; Optical lenses; Microphones; Sound recording apparatus; Filters (photography); Air analysis apparatus; Solar batteries; Rechargeable batteries; Sockets, plugs and other contacts (electric connections); Telescopes; Cabinets for loudspeakers; Sound transmitting apparatus; Pedometers; Electronic pens (visual display units); Optical character readers; Couplers (data processing equipment); Fuse wire; Solar panels for the production of electricity; Transmitters for use in emergency communications; Radio receivers (‘Applicant’s Goods’)
Trade Mark:	INTEY	(‘Trade Mark’)

1. Following the advertisement on 18 January 2018 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 19 March 2018.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 12 April 2018. The SGP raised a ground of opposition under s 44 of the Act. The Applicant filed a Notice of Intention to Defend on 23 May 2018.

2. Neither Party filed any evidence in this matter.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  By letter issuing from IP Australia on 1 February 2019 the parties were notified that as a hearing had not been requested the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions upon which they wished to rely.  Neither party filed any submissions.

3. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

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

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Parties

4. The Parties, not having filed any evidence, have provided no details about themselves other than what is available on the Register.  The Opponent is the owner of the trade mark listed below (‘Opponent’s Trade Mark’).  The goods for which the Opponent’s Trade Mark is registered are collectively referred to as the ‘Opponent’s Goods’. 

Number	Trade Mark	Priority Date	Goods
1861820	20 Dec 2016	Class 9: Interfaces for home automation applications; electric or electronic apparatus for the remote control of home automation systems for equipment in the home and/or buildings, particularly via Internet communication and telecommunication networks, including mobile telephones, for the installation, configuration, control, management and monitoring, especially from a computer or a mobile telephone, of home automation functions and applications and/or motors for blinds, shutters, window openers, locks, doors, gates and other systems for access, lighting; electric or electronic apparatus and instruments for the control and remote control of lighting apparatus; electric or electronic apparatus and instruments for surveillance and alarm purposes and their control devices for the protection of persons, goods and buildings; software used for the tuning, automation and control of these electric, electronic and/or computer applications; servers for home automation applications used for the reception and transmission of remote control orders as well as the operation of data storage; modems, connectors to a computer or home automation network; telecommunication terminals; computer and communication transmitter and receiver apparatus; electronic docking stations; electronic digital tablets; digital terminal for tertiary and residential buildings; digital terminals for tertiary and residential buildings for the purposes of transmission, reception and decoding; portable electronic devices for wireless data reception and/or transmission; presence sensors, wind sensors, interior light sensors, sunshine sensors, temperature sensors, rain sensors, snow sensors for electrical equipment for controlling lighting or alarms or blinds or shutters or heating; smoke detectors; detectors

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above in the SGP the Opponent nominated s 44 as a ground of opposition under the Act. To successfully oppose the application the Opponent needs to establish this ground.

2. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 29 August 2017 (‘relevant date’), being the priority date of the application in Australia.[3]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 44

3. The relevant provisions of the Act with respect to the ground of opposition pursuant to s 44 are reproduced below:

   Section 44 - Identical etc. trade marks

   (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)it 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).

   (2)…

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)            the similar goods or closely related services; or

   (ii)           the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
   Note 2: For predecessor in title see section 6.
   Note 3: For priority date see section 12.

   Section 10 - 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.

4. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered by a person other than the Applicant:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

5. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4) of the Act, that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark. As the Applicant has put on no evidence before the Registrar relevant to ss 44(3) or 44(4) of the Act it is not necessary to consider these provisions.

6. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark.  The Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Mark. 

   Similar goods

7. Section 14 of the Act relevantly provides:

   14Definition of similar goods and similar services

   (1)For the purposes of this Act, goods are similar to other goods:

   (a)if they are the same as the other goods; or

   (b)if they are of the same description as that of the other goods.

8. McCormick & Company Inc v McCormick summarises the legal principles applicable when determining if the goods for which the Opponent’s Trade Mark is registered are goods of the same description as the Applicant’s Goods as follows:

   Whether the relevant goods are of the same description is essentially a question of fact.

   The authorities establish that there are three principal factors to be considered in this regard.  They are:  (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold.  As to the last-mentioned matter, it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade:  see In Re Jellinek’s Application (1946) 63 RPC 59 at 70-72; In Re John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 (“Crowther’s Application”) at 372; In Re Frank George Whiting’s Application (1952) 69 RPC 219 at 221; and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 94. As the High Court stated in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 606-607:

   The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive.  Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods:  see In re The Australian Wine Importers Ltd (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84, at p 90 per Latham CJ. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In re Jellinek’s Application (1946) 63 RPC 59. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case … the Assistant-Comptroller elaborated on the observations of Romer J in the following manner:  ‘In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade.  In the case of Jellinek’s Application …, Romer J classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold.  No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description”’:  Inre an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 when he said: ‘What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments’ (1945) 70 CLR, at p 94.

   On the one hand, goods are not necessarily of the same description simply because they are sold for human consumption and in common trade channels: see, for example, In Re J & J Colman Ltd’s Application (1929) 46 RPC 126, where mustard and semolina were held not to be goods of the same description. See also G Wood, Son & Co Ltd v McVitty & Co Pty Ltd (1964) 34 AOJP 2601 and In Re Chan Li Chai Medical Factory (HK) Ltd’s Application (1990) 19 IPR 140 at 144. On the other hand, the expression “goods of the same description” is not construed restrictively and regard is paid to the commercial context in which the goods in question are bought and sold: see Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 546 and Dinning v New Balance Athletic Shoe Inc (1992) AIPC 38,719 at 38,725. [4] 

   [4] [2000] FCA 1335 [17].

9. The Applicant’s Goods include various electrical products such as electrical door bells, microphones, solar panels, batteries, transmitters and sound recording apparatus.  The Opponent’s Goods essentially relate to home security and home automation systems, and includes sensors, equipment for controlling lights, locks, doors and monitoring visitors as well as various devices for the transmission and reception of information relating to the home security systems.  While the Applicant’s Goods have somewhat broader uses than the Opponent’s Goods, there is also considerable cross-over between the respective goods.  Each set of goods includes various transmission devices as well as devices for recording sound.  A number of the Applicant’s Goods, including batteries, transmitters, microphones and sound recording devices, would be key components of the Opponent’s home security and home automation systems.  While not precisely identical I find that each set of goods would be sold through similar channels, or at least that the channels that sell the Opponent’s Goods would also sell the Applicant’s Goods.  They are used for similar purposes (albeit the Applicant’s Goods have slightly broader purposes) and are of a similar nature.  I find that the first and third elements have been established for most of the Applicant’s Goods.  I note that there are some goods listed as the Applicant’s Goods that are not similar to the Opponent’s Goods such as Telescopes, Cabinets for loudspeakers and Electronic pens (visual display units) (‘Remaining Goods’) and I will refer to them later in this decision.  

   Substantially identical and/or deceptively similar

10. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

    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.[5]

    [5] (1963) 109 CLR 407, 414.

11. The Trade Mark and the Opponent’s Trade Mark are set out below:

    INTEY           

12. On a side by side comparison there are clear differences between the respective trade marks namely the different stylization and the inclusion of the ‘house’ device in the Opponent’s Trade Mark.  While I find the stylization differences to be of no consequence the replacement of the ‘y’ with the house device is sufficient for me to conclude that the respective trade marks are not substantially identical.  I move then to consider whether the Trade Mark and Opponent’s Trade Mark are deceptively similar.

13. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

    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 [trade mark].[6]

    [6] Ibid [13].

14. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

    Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

    First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[7] at [49]; Australian Woollen Mills[8] at 658.

    Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[9] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

    Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

    Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

    Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[10] at 594 – 595.

    Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

    Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

    Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

    Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[11]

    [7] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

    [8] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

    [9] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

    [10] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

    [11] [2012] FCA 1022, [38]-[46].

1. Disregarding the minor differences in stylization, the marks share the first 4 letters ‘INTE’ but differ in that the letter ‘y’ is replaced with the house device.  The impact of this change is that aurally the trade marks will have a slightly different pronunciation (‘In-Tee’ compared to ‘In-Tey’) but the difference is not particularly significant, especially if the respective marks are pronounced with an emphasis on the first syllable, with the second syllable slurred.  Visually and conceptually the Opponent’s Trade Mark is likely to be viewed as the coined word ‘inte’ with a house device containing the @ symbol.  Given that the house device is likely to be somewhat discounted due to the nature of the goods offered under that mark, being goods relating to the home I find that customers will likely focus on the ‘INTE’ element of the Opponent’s Trade Mark.  Given the marks share the INTE element I consider that a consumer with imperfect recollection, when viewing a product bearing the Trade Mark, would be caused to wonder if (for example) the ‘INTEY’ transmitter is from the same source as the ‘’ receiver they are aware of. As such there is a real tangible danger of consumer confusion arising from the shared use of the dominant ‘inte’ element in both marks. The requirements under s 44(1) of the Act have been satisfied.

2. I find that the Opponent has established the ground of opposition under s 44 of the Act with respect to all the Applicant’s Goods other than the Remaining Goods.

   Resolution of Opposition

3. In Apple Inc. v Registrar of Trade Marks Yates J stated that:

   My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[12]

   [12] [2014] FCA 1304, [232].

4. In circumstances where an opposition has been established in respect of some, but not all of an applicant’s goods or services the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has not been established.

5. Neither party has filed evidence or submissions in this case and/or raised the possibility of an amendment.  In circumstances where the opposition has been established for a considerable majority of the Applicant’s class 9 goods and there is no compelling evidence or submissions suggesting the need for an amendment, I do  not consider it appropriate to offer an amendment in respect of the present trade mark application.  I note that if the Applicant wishes to register the Trade Mark for a more narrow range of services based upon its existing use of the Trade Mark it may do so.

   Decision

6. I have found that the Opponent has established the ground of opposition it raised pursuant to s 44 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark.

   Costs

7. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under s 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

   Nicholas Smith
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   5 May 2020