Rocket Trademarks Pty Ltd v Obschestvo S Ogranitchennoi Otvetstvennostyou "Kompania "Bazoviy Element"

[2011] ATMO 27

TRADE MARKS ACT 1995

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

Re:Opposition by Rocket Trademarks Pty Ltd to protection of International Registration Designating Australia 1292505 – International Registration 995982 - BASIC ELEMENT & Device - in the name of Obschestvo s ogranitchennoi otvetstvennostyou "Kompania "Bazoviy element"

Delegate:

Deirdre O'Brien

Representation:

Decision on the written record

Decision:

2011 ATMO 27

Reg 17A.29 opposition to protection - ss44 and 60 grounds established - protection refused in respect of all the goods and services listed.

Costs awarded against holder.

Background

1. Obschestvo s ogranitchennoi otvetstvennostyou "Kompania "Bazoviy element" (‘the holder’) has requested protection in Australia for its International Registration Designating Australia (‘IRDA’) 995982.  The trade mark of the IRDA is depicted below:

1. The IRDA has a priority date of 22 January 2008 and it covers goods and services comprising the class headings of all 45 classes.  It was given the Australian trade mark number 1292505 and, following examination, it was advertised as ‘accepted for protection’ in the Australian Official Journal of Trade Marks on 21 May 2009.

2. Opposition to the protection of an IRDA is allowed under the provisions of regulation 17A.29 of the Trade Marks Regulations 1995 (‘the Regulations’). Regulation 17A.31 adapts the grounds of opposition in the Trade Marks Act 1995 (‘the Act’) to opposition to an IRDA.

3. Regulation 17A.33, set out below, specifies how opposition proceedings are to be conducted. 

   (1)The Registrar must give to the opponent and to the holder of the IRDA an opportunity of being heard on the opposition.

   (2)Regulations 5.7 to 5.17 apply, with the necessary modifications, for the purposes of the opposition.

   (3)Despite subregulations (1) and (2), a requirement to serve a document on the holder, or to give the holder an opportunity to make written representations or to be heard, does not apply until the holder has notified the Registrar, in writing, of the holder's address for service in Australia.

4. On 20 November 2009[1] Rocket Trademarks Pty Ltd ('the opponent’) filed a notice of opposition to protection.  The holder was informed of this but it did not provide the Registrar with an address for service in Australia. 

   [1] The period allowed for filing a notice of opposition had been extended by three months at the request of the opponent pursuant to regulation 5.2.

5. Once the time allowed for the filing and serving of evidence had ended both parties were given an opportunity to request a hearing.  The opponent did so.  The holder was informed and given an opportunity to attend.  It did not respond.

6. I was delegated by the Registrar of Trade Marks to conduct the hearing.  However shortly before the scheduled date the opponent said it would not be appearing but would rely on written submissions which it duly filed.  I then proceeded to decide the opposition as provided by regulation 17A.34(1) as follows:

   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.

7. My decision is based on relevant information on the official file, namely the notice of opposition and the opponent’s submissions.

Grounds of opposition

1. The notice of opposition contains all of the allowable grounds for opposing extension of protection but the opponent subsequently indicated that it is only relying on the grounds pursuant to sections 44 and 59 of the Act. It bears the onus of establishing at least one of these grounds on the balance of probabilities.[2]

Section 44 ground – trade mark identical with or deceptively similar to trade mark of earlier application or registration

[2] Pfizer Products Inc v Karam (2006) 70 IPR 599 per Gyles J at [6] to [26]

1. In support of this ground the opponent cited the following of its registered trade marks (‘the opponent’s trade marks’):

TM no.	Trade Mark	Goods/Services Class	Priority date
830377	ELEMENT	25, 28	04.04.2000
891674	ELEMENT	18	10.10.2001
1033508	14	08.12.2004
1060820	ELEMENT	35	17.06.2005
1170566	41	11.04.2007

1. Subsections 44(1) and (2) of the Act provide:

   (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.

   (2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) 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 services or closely related goods; or

   (ii)a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

2. The opponent submits that the holder’s trade mark is deceptively similar to both of its, the opponent’s, trade marks, being the word trade mark ELEMENT and the composite trade mark .   

3. Section 10 of the Act defines ‘deceptively similar’ as follows:

   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. The opponent refers to the accepted test for deceptive similarity[3] and to the need to take into account that consumers may have an imperfect recollection of a trade mark[4].  It points to similarities in ideas being a possible source of confusion[5] and it notes that confusion is likely to result if a trade mark incorporates the distinguishing feature of another’s trade mark[6].  It cites Effem Foods Pty Ltd v Wandella Pet Foods Pty Ltd[7] as being an example of the latter.

   [3] Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641 at 658

   [4] Aristoc Ltd v Rysta Ltd (1943) 60 RPC 87 at 108 per Luxmore J, the dissenting judgment in the Court of Appeal, and later quoted and approved by Viscount Maugham and by the majority of the House of Lords on appeal in (1945) 62 RPC 65 at 72-73

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

   [6] De Cordova v Vick Chemical Company (1951) 68 RPC 103 at 106

   [7] (2006) 69 IPR 243

5. With these principles in mind the opponent makes the following submissions about the holder’s trade mark. 

   [T]he word BASIC does little to change the meaning of the Opposed Mark as a whole.  BASIC is defined in the Oxford Australian Dictionary, 2^nd Edition, as meaning:

   1 forming or serving as a base. 2 fundamental. 3 a simplest or lowest in level

   The same publication provides the following definitions for ELEMENT:

   1 a component part; a contributing factor or thing.

   The addition of the word BASIC to ELEMENT simply serves to indicate that the ‘element’ in question is simple or fundamental. It does not change the meaning of the word ELEMENT in the same manner as would occur if ‘element’ was included in the phrase ‘element of subjectivity’ or ‘element of doubt’. Rather, the word BASIC serves to emphasis the fundamental nature of the word ELEMENT as describing a constituent part of a greater whole.

   Similarly, the presence in the Opposed Mark of a simple device element is not sufficient to reduce the risk of confusion to a low and acceptable level. Consumers are clearly encouraged to view and refer to the Opposed Mark by its word elements, and the presence of a device element will often not be recalled by a consumer, particularly one relying on imperfect recollection. This is also emphasized by the fact that there is no obvious way to verbally refer to this device element.

   Taking the visual, aural and conceptual similarities into account, it is clear that the average consumer, relying on an imperfect recollection and with knowledge of the Opponent’s ELEMENT registrations, may be confused if later faced with the Opposed Mark. The mutual presence of the essential and distinctive feature ‘element’ is sufficient to cause a consumer to seriously question whether the respective goods originate from the same trade source.

6. According to the commentary in Lahore, Patents, Trade Marks & Related Rights[8] at [54.185]:

   … the fact that the application mark includes the whole of another mark, or an essential feature of it, does not, in itself, make the second mark deceptively similar to the earlier mark.  The question will still be whether the use of the second mark is likely to deceive or cause confusion. That will depend on the effect of the incorporation of the earlier mark. If it retains its identity, or it is likely to be used as an abbreviation or diminutive of the later mark, the risk of deception or confusion is likely to be substantial.

   [8] Published online by LexisNexis Australia

7. In the case earlier cited by the opponent[9] the trade marks under consideration were WHACKOS and DOGS GO WACKO FOR SCHMACKOS.  Moore J said at [34]:

   … Plainly, as Effem submitted, there is a substantial similarity between Wandella’s mark and a central word (WACKO) in Effem’s registered mark, notwithstanding the inclusion of an H in Wandella’s mark and a concluding S. The words “WHACKOS” and “WACKO”, aurally and visually, are very similar. The central issue is whether the word in Effem’s mark is sufficiently dominant so as to give rise to confusion of the type referred to in the authorities. Effem pointed to various factors which indicate the necessary confusion arises. It was submitted that in Effem’s mark, the total phrase derives the whole of its force from the word “WACKO”. That word would be viewed as having one of the two meanings discussed earlier, and probably both. It was said to be such a strongly emotive term that it completely dominates the phrase. Its dominance is further heightened by the onomatopoeia contained in the expression. The word “WACKO” therefore was said to be a powerful component of Effem’s mark which will be retained in the memory of the relevant consumer and will be recalled when Wandella’s mark is seen.

   [9] Effem Foods Pty Ltd v Wandella Pet Foods Pty Ltd, supra

8. At [36] His Honour concluded:

   … [The words “GO WACKO”] are, in my opinion, a significant and distinctive element in Effem’s registered mark, DOGS GO WACKO FOR SCHMACKOS. In that mark, the word “WACKO” plays an important role by giving colour to the whole expression. It prominently plays a role in telling consumers, in a light hearted and amusing way, their pet’s attitude or response to Effem’s SCHMACKOS products. While Effem’s mark can be spoken in a variety of ways, one ready way is to divide the mark into two parts, the first concluding with the word “WACKO”. Spoken this way, “WACKO” assumes comparative significance aurally. In my opinion, the word “WACKO” in Effem’s mark is sufficiently prominent for it to be recalled by consumers as associated with Effem’s products. Given that it is a playful, amusing and interesting word, used prominently by Effem, its use by another trader is likely to create confusion of the requisite kind. I am satisfied the word “WHACKOS” is deceptively similar to Effem’s registered mark, DOGS GO WACKO FOR SCHMACKOS.

9. In the present matter the issue is, to paraphrase His Honour, whether the word “ELEMENT” in the holder’s trade mark is sufficiently prominent so as to give rise to confusion of the type referred to in the authorities.

10. For convenience I have reproduced the holder’s trade mark below:

11. In that trade mark the word that immediately strikes the eye is BASIC.  It is given such prominence that on a cursory glance it would be easy to overlook the presence of the word ELEMENT.  The device in the trade mark is just as prominent and it is also likely to make an impression on consumers.  Given the prominence visually of these elements I consider that a substantial number of consumers will recall the holder’s trade mark by reference to them.  The prominent feature of the opponent’s trade marks is the word ELEMENT.  Visually the respective trade marks do not “nearly resemble” each other.  I find that in visual use the trade marks are not deceptively similar.

12. This finding does not necessarily mean that the trade marks in verbal use are not deceptively similar.  The opponent submits that customers requesting the holder’s goods or services over the telephone or in person are likely to use both words in the holder’s trade mark without any reference to the device. In radio advertisements for the holder’s goods or services the trade mark will be referred to as BASIC ELEMENT.   Thus, the prominent and distinguishing feature of the holder’s trade mark in verbal use is not the word BASIC, but the entire expression BASIC ELEMENT.  The opponent submits that the addition of BASIC to the word ELEMENT does not change the meaning of the latter but rather qualifies it.  I agree.  Hearing it spoken, the impression consumers are likely to form of the holder’s trade mark is of a basic or fundamental element.  I am satisfied that in verbal use the respective trade marks resemble one another to such an extent that there is a real likelihood of confusion.

13. Also to be decided is the issue as to whether the holder’s goods and services are similar or closely related to the goods and services of the opponent’s trade marks.  It would serve no useful purpose to list the respective goods and services here[10].  It is sufficient to say that the holder’s goods and services in classes 14, 18, 25, 28, 35 and 41 contain the same goods and services for which the opponent’s trade marks are registered.  Therefore, in terms of subsections 44(1) and (2), the holder’s goods and services in those classes are similar goods and services to those of the opponent’s trade marks.

    [10] As previously noted, the holder’s goods and services comprise the headings to all 45 classes.

14. Finally, I note that the priority date of the holder’s trade mark is later than those of the opponent’s trade marks. 

15. I am satisfied the opponent has established the ground pursuant to subsections 44(1) and (2) in respect of the holder’s goods and services in classes 14, 18, 25, 28, 35 and 41.  There is nothing before me which would support the application of subsections 44(3) or (4).

Section 59 ground - Applicant not intending to use trade mark

1. The opponent is also relying on the ground pursuant to section 59 which provides:

   The registration of a trade mark may be opposed on the ground that the applicant does not intend:

   (a)to use, or authorise the use of, the trade mark in Australia; or

   (b)to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services specified in the application.

2. As a general principle, the act of applying for registration/requesting protection is prima facie evidence of an intention to use the trade mark in relation to all the goods and services listed.[11]^.  Here the opponent submits that if a case is made to the contrary, the onus shifts to the holder to establish the requisite intention.  I note that in order to shift the onus to the holder the opponent first has to make out a prima facie case[12]. 

   [11] Aston v Harlee Manufacturing Co (1960) 103 CLR 391; Food Channel Network Pty Ltd v Television Food Network GP (2010) 86 IPR 437 at 456

   [12] Health World Ltd v Shin-Sun Australia Pty Ltd (2008) 75 IPR 478, being the decision of Jacobson J at first instance

3. In support of its case the opponent refers to the finding in Health World Ltd v Shin-Sun Australia Pty Ltd[13] that:

   [T]he legislative scheme reveals a concern with the condition of the Register of Trade Marks. It is a concern that it have “integrity” and that it be “pure”. It is a “public mischief” if the register is not pure, for there is “public interest in [its] purity”. The concern and the public interest, viewed from the angle of consumers, is to ensure that the register is maintained as an accurate record of marks which perform their statutory function — to indicate the trade origins of the goods to which it is intended that they be applied.

   [13] (2010) 85 IPR 362 at [32], being the decision of the High Court on appeal

4. On this basis the opponent submits that:

   The scheme of the Act is clearly not designed to grant ‘universal’ monopolies when there is no genuine intention to use the trade mark except in respect of a limited range of goods or services. Such monopolies would compromise the ‘purity’ and ‘integrity’ of the Register.

5. The opponent notes that the holder is seeking protection in all 45 classes of goods and services in respect of an “enormous and diverse range of different goods and services”.  It argues that:

   While the Opponent has not provided formal evidence to support its allegation of lack of intention to use, sufficient evidence is found in the surrounding circumstances. The level of evidence required to shift the onus to the applicant should be determined on a case by case basis.  Obviously, where an applicant has applied for a reasonably narrow range of goods, more substantial evidence will be needed to shift the onus back to the applicant.

   However in the present instance, the Holder has applied for class headings in all 45 classes of goods and services. This by itself should be considered sufficient circumstantial evidence to put the onus on the Holder to respond and positively demonstrate an intention to use. Such a finding is entirely consistent with the intention of the legislative scheme to maintain a pure register and to only grant trade mark monopolies within appropriate boundaries. It is clearly not in the interests of the public that an IRDA covering 45 classes should be protected without a clear indication of intention to use being demonstrated by the Holder.

   …

   [T]he Holder may have a genuine intention to use its trade mark in Australia in respect of some of its goods and/or services. However, the fact that it has applied in all 45 classes makes it difficult to assess which of these goods and services any such intention relates to. As it stands, it is reasonable to draw an inference that the Holder is seeking two things. Firstly, protection for its goods and/or services of interest. Secondly, de facto ‘defensive’ protection for all other goods and services. This secondary goal is clearly not consistent with the purpose of the Trade Marks Act.

   The person in the best position to provide evidence as to the Holder’s intentions is the Holder. It has declined to do so. As such, given the surrounding circumstances, an adverse inference of lack of intention to use must be drawn against it.

6. As noted by the opponent, this matter is to be decided on its own facts.  To reiterate, the holder is seeking protection in respect of all the goods and services listed in all 45 class headings. That claim is so wide that arguably it could have been queried by the examiner as allowed by subregulation 17A.13(2):

   Use of trade mark

   (1)The holder of an IRDA:

   (a)  must be using, or must intend to use, the trade mark that is the subject of the IRDA in relation to the goods, services or goods and services listed in the IRDA; or

   (b)  must have authorised, or intend to authorise, another person to use the trade mark in relation to those goods, services or goods and services; or

   (c)   must intend to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods, services or goods and services.

   (2)If there is reason to suspect that the holder does not meet a requirement of subregulation (1) in relation to any of the goods or services mentioned in the IRDA, the Registrar may require the holder to make a declaration to the Registrar that those provisions apply to all of those goods and services.

1. I note that it is not the Registrar’s practice to routinely require such a declaration, even where the application/designation is in relation to all 45 classes. Be that as it may, during opposition proceedings there is an adversarial scrutiny of whether or not a trade mark is entitled to protection. In this case the inclusion of the section 59 ground in the notice of opposition put the holder on notice that its use of, or intention to use, the trade mark in relation to all the goods and services was disputed. The holder did not respond to the notice of opposition. Nor did it respond to the notice from IP Australia that the matter was to be heard.

2. The opponent submits, and I agree, that prima facie it is most unlikely that one trader would have the capacity to trade in all the goods and services listed in the IRDA. The facts of the case therefore give rise to an inference that the holder applied for protection without a bona fide intention to trade in all the goods and services. Having been challenged as to its intentions by the inclusion of the section 59 ground in the notice of opposition, the holder has failed to rebut that inference. I am satisfied on the balance of probabilities that the section 59 ground is established in relation to all the goods and services listed in the IRDA.

Decision

1. The section 44 and 59 grounds of opposition have been made out. On that basis I refuse protection of IRDA 1292505 – International Registration 995982 – in respect of all the goods and services listed.

Costs

1. The opponent has sought its costs. It is usual for costs to follow the event and I see no reason why this approach should not apply in the present matter. I award costs against the holder according to Schedule 8 of the Regulations.

Deirdre O'Brien

Hearing Officer

Trade Marks Hearings

6 April 2011