Re Tumble Tots International Ltd

[1992] ATMO 83

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Application number 518117 to register a trade mark in the name of TUMBLE TOTS INTERNATIONAL LIMITED

Application 518117 for a trade mark registration was lodged by TUMBLE TOTS INTERNATIONAL LIMITED (Tumble Tots) of St Helier, Jersey, Channel Islands on 29 August 1989.   The trade mark which is the subject of the application is depicted below and consists of the words TUMBLE TOTS together with a drawing of an active baby-like creature.   The goods which are covered by the application are 'Articles of outer clothing, t-shirts, sweat shirts, leisure suits (track suits), blousons, sweaters, foot-wear'.

The examiner, when reporting on its acceptability for registration under the Trade Marks Act, raised an objection that the trade mark was deceptively similar to trade mark registration A334999, the word TUMBL-TOGS, covering 'wholesale and retail trading services in respect of clothing and textile fabrics and materials'. Submissions were put by Tumble Tots' agent that the marks were entirely different, and that the buying public would not expect that services rendered under the cited mark would emanate from the same source as goods sold under their mark. The examiner maintained the objection under s.33 of the Trade Marks Act. 

Tumble Togs then requested that a decision be made on the written record.   At the same time the right to a hearing was waived.

Decision
The questions I must consider here are those raised under sub-s. 33(1) as to the identity of the two marks - are they either substantially identical or deceptively similar? - and, if so, what is the relationship between the goods covered by one mark and the services of the other.  

A comparison of the marks side by side, as is required to establish substantial identity (Shell Co (Aust.) Ltd v Esso Standard Oil (Aust.) Ltd (1961) 109 CLR 407 at 414-415), shows the differences in the marks. The inclusion of the cartoon figure in this application clearly differentiates the two marks and so they are not substantially identical.

However the question of deceptive similarity differs from that of  direct comparison.   Sub-section 6(3) provides that a trade mark shall be deemed to be deceptively similar to another trade mark if it so nearly resembles the other as to be likely to deceive or cause confusion.   Lord Parker set out the approach which should be followed in Application by Pianotist Co Ltd 23 RPC 774.

You must take the two words.  You must judge of them, both by their look and by their sound.  You must consider the goods to which they are to be applied.  You must consider the nature and kind of customer who would be likely to buy those goods.  In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

I have taken into consideration the principle of imperfect recollection when comparing the two marks (Rysta Ltd's Appn (1943) 60 RPC 87). The words in the two marks are not identical but are very similar. The first element in the words differs only by the letter 'e' and the second word in the marks differ in only one letter. However the missing 'e' only distinguishes the words TUMBLE and TUMBL when they are viewed side by side. They would both be pronounced the same and the ordinary purchaser would ascribe the same meaning to both. No descriptive connotation can be attributed to TUMBL(E) for the goods or services for which they are used. It cannot be said that the word is common to the trade or a normal word to use in respect of the goods or services. The words TOTS and TOGS have different meanings but when combined with a word not usually used to describe them are subsumed by that word. The letter 'O' in each of these common words is soft and would never be pronounced differently. It is the combination of words in these marks which will be remembered and not the individual words. Despite the inclusion of a device in Tumble Tots' mark, it would tend to be known and referred to as TUMBLE TOTS (Re Application by Hardings Manufactures Pty Ltd t/a Wyandra Industries (1987) 8 IPR 147). While one of the marks is clearly two words and the other hyphenated this would not affect their pronunciation. That is, the emphasis is on the word TUMBL(E) with the second word being pronounced so similarly as to be difficult to distinguish when combined with TUMBL(E). As observed by Sargant LJ in London Lubricants (1920) Ltd's Appn (1925) 42 RPC 264 there is a 'tendency (for) persons using the English language to slur the termination of words'. I consider that this would indeed be likely in both these marks. With all these factors in mind then I regard the marks as being deceptively similar.

Having found the marks are deceptively similar, the other question I must consider is whether the goods of this application are closely related to the services of the citation.   The matter of retailing services in relation to goods was recently discussed by Assistant Registrar S Farquhar in K Mart Corporation v A-Mart Allsports Pty Ltd (1992) 23 IPR 161 where Rowntree plc v Rollbits Pty Ltd (1986) 10 IPR 539 was considered. It follows from this that the retailing services of specific goods are closely related services to the specific goods. So that a specification of services containing 'wholesale and retail trading services in respect of clothing...' will satisfy the second question raised by sub-section 33(1) in respect of 'Articles of outer clothing, t-shirts, sweat shirts, leisure suits (track suits), blousons, sweaters, foot-wear'. These goods are closely related to the services of the cited mark.

Having found that the marks of A518117 and A334999 are deceptively similar and that the goods of the one are closely related to the services of the other, I agree with the examiner that sub-section 33(1) stands as a bar to registration of this application.

S34 of the Act makes provision for consideration of honest concurrent use of the mark but no evidence has been provided to support such use.   Neither have any special circumstances been put forward which might be considered.   There has been no claim of prior use of the mark which  I might also consider under the terms of this section.

As the application fails under the provisions of sub-section 33(1) of the Trade Marks Act and cannot be assisted by section 34, I refuse the application.

Patricia Wearne
A/Hearing Officer
22 December 1992