RS Components Limited v Holophane Corporation

[1999] ATMO 67

TRADE MARKS ACT 1995

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

Re:Opposition by RS COMPONENTS LIMITED to registration of trade mark application number 701347 in the name of HOLOPHANE CORPORATION for the mark RSL

Background

Application number 701347 was filed on 29 January 1996 in the name of Holophane Corporation (the applicant).  It sought registration of the mark consisting of the letters RSL in respect of a statement of goods subsequently amended to "electric lighting fixtures", which are goods in class 11.

Acceptance of the application was advertised in the Australian Official Journal of Trade Marks of 2 October 1997.  A notice of opposition to registration of the mark was filed on 2 January 1998 by RS Components Limited (the opponent).  In the notice of opposition, the opponent has stated various grounds of opposition.  At the hearing, however, the opponent chose to challenge the applicant's mark on the following grounds: that use of the opposed mark would be likely to deceive or cause confusion; that its use would be contrary to law; that the mark is substantially identical with, or deceptively similar to the opponent's mark registered for similar goods; and, that it would be likely to deceive or cause confusion, having regard to a mark which has acquired a reputation in Australia before the present application was filed. 

The hearing was held in Canberra.  Mr Michael Kirov of Spruson & Ferguson, patent and trade mark attorneys of Sydney, represented the opponent by telephone.  No appearance was made on behalf of the applicant, nor any written submissions received concerning the opposition.

Evidence
Evidence in support is the only evidence in the present proceedings.  It consists of a statutory declaration by Yvonne Paterson, the assistant company secretary of RS Components Pty Ltd, a company related to the opponent.  The declarant's company has been responsible for the marketing in Australia of the products manufactured and sold by the opponent.  Ms Paterson has annexed to her declaration a catalogue detailing the products offered for sale by her company under the mark RS.  She provides information on the turnover figures of the products represented by the mark in Australia, as well as approximate advertising expenditure.  Many samples of advertising material are also provided in the exhibits to her declaration.  According to Ms Paterson, the mark RS has been used in Australia by her company with the opponent's authority as the primary corporate mark.  The opponent has a number of registrations of the mark RS for goods and services in a number of different classes, the details of which are shown in two exhibits. 

Submissions and analysis of issues
Before addressing the issues concerning the grounds of opposition, Mr Kirov directed my attention to two general considerations which, he said, applied in an uncontested oppositions.  First, where the opponent had raised matters which required an answer, but the applicant had not responded, the Registrar was not to act as an advocate for the applicant.  Second, if there was doubt as to whether the applicant's mark would cause deception or confusion , that matter must be resolved against the applicant.  In support, he cited the authorities Camelot Design Industries Group Pty Ltd v Bernard Leser Publications Pty Ltd (1987) 9 IPR 596 and Eno v Dunn (1890) 7 RPC 311.

Trade mark likely to deceive or cause confusion - s.43
Under this ground of opposition, Mr Kirov submitted that the organisation known simply and universally as "the RSL" was essentially an Australian icon.  For that reason, upon encountering the mark RSL, there would be a very few people who would not instantly recall that famous organisation.  The word had acquired an overwhelming secondary meaning.  Further, he said, although the RSL was principally an organisation set up by and for the returned and other servicemen and women, it had expanded its activities considerably over the years to embrace a network of social clubs around the country, as well as various business enterprises, such as a taxi service, travel service and possibly others.  It could be assumed therefore that there would be a certain number of people amongst the public, who would be caused to wonder whether the goods covered by the opposed mark were not also associated in some way with the RSL, be it by way of endorsement, sponsorship, or otherwise . 

Under the Trade Marks Act 1955, the onus was on the applicant to establish that there was no reasonable probability of confusion or deception in terms of s.28 of the Act - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 - and it was submitted by the opponent that a similar onus applied in relation to s.43 of the current Act, once a prima facie case had been made out.

Section 43 of the Act states that -

43.  An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

For a definition of the word "connotation", I refer to the Oxford English Dictionary, second edition:

1. The signifying in addition; inclusion of something in the meaning of a word besides what it primarily denotes; implication. 
   b.    That which is implied in a word in addition to its essential or primary meaning.

I also note the definition of the word in the Macquarie Dictionary to be:

1. the act or fact or connoting.

2. that which is connoted; secondary implied or associated meanings (as distinguished from denotation)… . 

For further clarification, I turn to the intention behind the provisions of s.43, as stated in the Explanatory Memorandum presented to the Parliament, i.e.. that an application must be rejected if the trade mark:

… because of some signification inherent to it, would be likely to deceive or cause confusion regarding a characteristic of the goods or services.

It is apparent from the above definitions and the purpose of s.43, that, if a trade mark conveys a meaning which is inherent or implicit, and that meaning would be likely to deceive or cause confusion, then the mark should not be registered.  

I think Mr Kirov is correct in assuming that the letters "RSL", as signifying the "Returned Services League" organisation, would be widely known to the members of the community throughout Australia, even without consultation of the various general dictionary sources for the abbreviation.  I note that the Macquarie Dictionary, third edition, the Oxford Dictionary of Abbreviations: Oxford University Press, the Australian Dictionary of Acronyms and Abbreviations, ALIA Press, Canberra, all clearly show the abbreviation to relate to the said organisation. 

Mr Kirov has referred to the various activities under the auspices of the Returned Services League, whereby the renown and recognition of the organisation, identified as the RSL, would have spread in this country.  In particular, he has mentioned  social clubs, and business enterprises such as taxi services.  These, as far as I am aware, provide only services.  There is no evidence, however, that the organisation produces any goods.  The goods of this application are specific, "electric lighting fixtures", and appear to be totally unrelated to the services normally associated with the RSL.  There should be no reason therefore why a number of persons would be likely to think that the mark RSL indicated some connection with the Returned Services League in a way suggested by the opponent.

In the absence of any additional evidence, I find the opponent has not established a case in terms of s.43.

Use of the opposed mark would be contrary to law - s.42
Mr Kirov submitted that the applicant's mark would be contrary to law and, in particular, would constitute passing off at common law and breach ss. 52 and 53 of the Trade Practices Act 1974. Due to the activities of the Returned Services League, the letters "RSL" had acquired a secondary meaning, therefore use of the mark RSL on any goods, or services, would be trading on that secondary meaning. It was important to note, he said, that neither the common law doctrine of passing off, nor ss.52 or 53 of the Trade Practices Act required any intention on behalf of the defendant to deceive or cause confusion, or to trade on another's reputation, to be proven. In any case, he said, specific legislation had been enacted to prevent behaviour of this kind, in particular, the Scout Association Act 1924, Geneva Conventions Act 1957, the Olympic Insignia Protection Act 1987 and many others.  

He said that the case law concerning the operation of s.28(a) of the Trade Marks Act 1955, which was similar to s.42 of the current Act, made it clear that it was not necessary under that section to establish that the "prior mark", i.e., the letters RSL, had been used for similar goods to those of the opposed application, nor that the owner of the "prior mark", i.e., the RSL itself, would be injured by the use of the opposed mark - "Bali" Trade Mark [1969] RPC 472. Further, several cases concerning s.28(a) of the repealed Act made it clear that an objection under that section did not need to be based on a trade mark at all, which was arguably the case as far as the RSL was concerned. The opponent's point here was that the object of s.28(a), and also of s.42, was not to protect competitors of the applicant necessarily but rather, as stated by Richardson J in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410:

…. To protect the public interest by refusing to accord monopoly rights to a mark, the use of which is likely to deceive or confuse those in the market for the goods.

Under the provisions of section 42 of the Act -

42. An application for the registration of a trade mark must be rejected if:
      (a)  the trade mark contains or consists of scandalous matter; or
      (b)  its use would be contrary to law.

In the Trade Marks Office Draft Manual of Practice and Procedure, Part 30, para 2.2, the operation of this section is explained in the following terms:

2.2  To be caught by this section of the Act [s.42(b)], a trade mark's use should breach some piece of legislation, as opposed to being in breach of common law rights.  As the function of this office is administrative, rather than judicial, this section is only applied in what is clearly a breach of another Act. 

It then refers to Re Kelly (1987) AIPC 90-374. There the matter concerned the Advance Australia Logo Protection Act 1984.  In finding that use of the mark would be contrary to law under the repealed Act, the Deputy Registrar said, at 37,374:

Although a side-by-side comparison of the applicant's logo and the protected logo would reveal differences in detail I consider that the overall impression of the two designs is such that a person familiar with the protected logo would be put in a position of having to decide whether the applicant's logo was not that protected logo. For this reason I conclude that use of the applicant's logo on any of the goods specified in the applications here in question would constitute infringement of the protected logo within the meaning of sec. 11 of the Advance Australia Logo Protection Act 1984 and that it is therefore a mark which falls within sec. 28(b) of the Trade Marks Act 1955 as a mark the use of which would be contrary to law.

In the present proceedings, however, I have not been referred to any Act which protects use of the letters RSL. It appears therefore that considerations in terms of s.42(b) do not apply here. Whilst I appreciate Mr Kirov's submissions in relation to passing off and the Trade Practices Act, these are matters that involve decisions elsewhere than in the Trade Marks Office.

Marks substantially identical or deceptively similar for similar goods - s.44
The opponent's submissions in terms of s.44 were based on registration 523370, bearing a priority date of 15 November 1989, in respect of goods in class 11:

"Installations for lighting; lamps, lights, torches and bulbs, lamp holders, all included in class 11; parts and fittings included in class 11 for the aforesaid goods".

 

The mark concerned is            .anand, in this decision, it will be identified as RS. 

There seems to be no question that both the applicant's and the opponent's goods are similar, i.e., they are the same or of the same description, as defined under s.14 of the Act.

Concerning the s.44 issue, Mr Kirov submitted that the mark RSL and the opponent's mark RS were deceptively similar.  He then proceeded to discuss the various factors to be taken into account when comparing the marks.  These will be incorporated in my following comments.

As Mr Kirov observed, in relying on A. and F. Pears Ltd v Pearson Soap Co Ltd (1925) 37 CLR 340, there is a possibility that the applicant's goods could be packaged and displayed in such a way so as to obliterate the last letter "L" in the mark. If the whole mark is visible to the eye, there may be some purchasers inclined to ignore the last letter, having regard to the goods being lighting fixtures. However, I regard this as only a minor consideration. In Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641, in outlining the basic criteria on comparison of trade marks, Dixon and McTiernan JJ have stated that the marks should not be looked at side by side. Rather, one should consider what impression the marks were likely to leave in the mind of a prospective customer with an average intelligence, that would be retained and used for the purpose of recognising the product of interest. Although both marks comprise letters, visually, of course, the marks display obvious notable differences: bold joined letters RS, as opposed to three plain type letters RSL. In stressing the long period of use of the opponent's mark, Mr Kirov submitted that many potential purchasers may not be aware of the opposed mark, or they may only have a vague recollection of the other mark, as considered by Luxmoore LJ in Rysta Ltd's Appn (1943) 60 RPC 87, at 108. As observed previously, however, the letters RSL are so readily recognized by most Australians that the purchasers would tend to remember the applicant's mark by associating it, in their minds, with the Returned Services League without necessarily believing that the mark had a trade connection with the goods. Thus, in the present circumstances, the risk of confusion is not as likely as it would be if the applicant's mark consisted of meaningless letters. In this regard, with reference to "Tornado" Trade Mark [1979] RPC 155, the conflicting marks being TORNADO and TORNA, I think that the principle that, where a word mark conveys an idea and the other one does not, the marks are more easily distinguishable, is also relevant here.

Mr Kirov argued that, by simply adding the letter "L" to its mark, the applicant had incorporated in it the essential and distinguishing feature of the opponent's mark.  In such circumstances, confusion could be caused by the purchasers remembering the mark by a feature which "strikes the eye and fixes itself in the recollection" - Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, at 162. Mr Kirov said that, before filing the application for registration of the mark RS in class 11, the opponent's search had revealed no remotely similar mark in that class. The opponent appears to be implying here that it should have a monopoly in a combination of letter marks beginning with the letters "RS". It should be noted, however, that the applicant's mark represents a total identity, expressing a certain meaning, and therefore it would be unlikely to be viewed as including another owner's mark. Even if it could be said that the applicant had decided to adopt the leading features of the opponent's mark, it has, deliberately or otherwise, ensured that the marks are sufficiently dissimilar, so as to be distinguishable, as directed by Romer LJ in Payton & Co Ltd v Snelling Lampard & Co Ltd (1900) 17 RPC 48, at 56, cited by Mr Kirov, who took the opposite view.

Mr Kirov's submission, based on John Fitton & Co Ltd's Appn (1949) 66 RPC 110, that the mark RSL could be taken by consumers to indicate related products, which originated from the opponent, is not persuasive. There does not seem to be any logical reason for persons to believe that the letter "L" in the applicant's mark would indicate any relationship with the opponent' mark, particularly if the combination of the letters RSL denotes something in its own right and that significance would be familiar to the majority of the consumers.

In view of my foregoing comments, I do not accept that what Lord Cranworth said in Seixo v Prozende (1866) LR 1 Ch. 192, applies to the present case. There his Honour stated, at 197:

If the goods of a manufacturer have, from the mark or device he has used, become known in the market by a particular name, I think that the adoption by a rival trader of any mark which will cause his goods to bear the same name in the market, may be as much a violation of the rights of that rival as the actual copy of his device. 

It follows that I have found the marks in question to be neither substantially identical nor deceptively similar within the meaning of s.44 of the Act.   

Mark similar to one that has acquired a reputation in Australia - s.60
Mr Kirov first directed my attention to use of the mark RS in Australia, as evidenced in Ms Patterson's declaration.  He said it was important to note in this context that, because the goods covered by the opposed mark were lighting products, some persons amongst the relevant Australian public may well be caused to wonder whether the letters RSL were not an abbreviation for "RS Lighting".  Others, he said, could wonder whether the letters stood for "RS Limited". 

Section 60 of the Act reads:

60.  The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

(b)because of the reputation of that other trade mark, the use of the first mentioned trade mark would be likely to deceive or cause confusion.

Under these provisions, if the respective marks are found to be substantially identical or deceptively similar, then it must be decided whether the opponent's mark has acquired such a degree of reputation that, if the applicant's mark was used in a fair and normal manner in relation to the goods specified, it would be reasonably likely to cause deception and confusion amongst a substantial number of persons - Smith Hayden & Co Ltd's Appn (1946) 63 RPC 97. The reputation of the conflicting marks is to be determined as at the date of filing the subject application - Southern Cross v Toowoomba Foundry, supra.  The date of the application is 29 January 1996.

In relation to the s.44 question, I decided that the marks being considered are not substantially identical or deceptively similar.  Should my conclusions in that regard be wrong, I will assess the opponent's evidence with a view to determining the reputation in Australia of its mark RS.

The turnover figure of sales under the mark RS in Australia for the years 1970 to the end of 1995 - $191 million - is very substantial.  This amount represents sales of all the products under the mark.  The opponent's evidence shows the mark RS to be registered in many classes for various goods and services.  An exhibit of a 1995 catalogue is said to detail 40,000 products offered for sale under the mark RS.  The only information as to the sales of a number of items included in the opponent's registration 523370 is contained in an exhibit of a 'sales by product' report for every month from 1993 to 1997.  It is not clear what items the given numbers represent as, according to Ms Paterson, the sales figures are for the items she describes as "lighting, lamps, torches, heating and ventilation", whereas, on the copy of the report itself, the items, handwritten, are identified as "lighting, lamps, torches".  On the same copy, also handwritten, is indicated the approximate sales value for the years 1991, 1992 and 1998, presumably for the items mentioned in the report.  From these amounts, it appears that, in the relevant period, approximately $213,000.00 worth of those goods were sold under the opponent's RS mark.  The amount on the expenditure for advertising, approximately $4,100,000 between 1991 and 1995, covers all the products bearing the mark.  These products are advertised by distributing catalogues and pamphlets in the relevant industry sectors, one such publication being RS Viewpoint, shown as an exhibit.  Ms Paterson says that, in the first year of its distribution in 1993, 75,000 copies had been circulated, adding that the numbers have since increased.  Of the other publications advertising the mark before this application, Ms Paterson has exhibited representative sample copies of Naval Supply Newsletter and What's New in Electronics.  The mark is also prominently displayed on copies of the opponent's stationery.

From the opponent's evidence it can be deduced that the opponent has built up a considerable reputation in the mark RS for goods which largely encompass electronic, electrical and mechanical components and tools, but not necessarily in respect of lighting installations, lamps and torches.  However, in view of the existing reputation, had I found the marks in question to be deceptively similar, I believe that, on encountering the applicant's mark, a significant number of persons concerned with electrical and electronics industry products would have a reason to wonder whether the products originated from the same source, or, at least, suspect a connection between the applicant and the opponent. 

Registrar's discretion
Mr Kirov said that s.55 of the Act conferred on the Registrar a discretion to refuse to register a mark, even if the grounds of an opposition had not been established, provided both sides had been afforded natural justice.  The "presumption of registrability" did not outweigh the Registrar's need to consider all the surrounding factors, including the public interest, before deciding whether or not to register a trade mark, with or without conditions or limitations.  The public interest, he said, could be harmed by registration of a mark which, during the course of opposition proceedings, was revealed to clearly not qualify for registration, but where the reason for disqualification was not necessarily one of the grounds stated in the notice of opposition, as observed in TV Shopping Network Ltd v Home Shopping Network Inc 40 IPR 639.

With reference to the matters relating to uncontested oppositions raised by Mr Kirov at the outset of the proceedings, I have not found that deception or confusion with the opponent's mark is likely to occur through use of the mark now sought to be registered.  There is no obligation for either party in opposition proceedings to file evidence, to make submissions, or to appear at a hearing.  In the present case, I do not see that the applicant's case has been prejudiced by electing not to file evidence, or defend its mark by being represented at the hearing. 

Shortly after the hearing on the present opposition commenced, I was handed facsimile copies received from Mr Kirov, which contained a written outline of the opponent's submissions, together with copy of a report, dated 23 February 1998, on results of an investigation purported to show that the opposed mark had not been used as at the relevant date.  The attachments listed in the report were not enclosed.  I do not see how this material can be admitted as evidence in these proceedings.  The opponent has not observed the procedure prescribed in reg.5.15(1)(b) by seeking permission to serve a copy of further evidence on the applicant and filing the documents in the proper form.  This regulation still applies even in the event of the applicant's silence in the proceedings.  Consequently, no consideration has been given to the said material.  

Conclusion
I have found that the opponent has failed in relation to all the grounds relied upon at the hearing.  I therefore dismiss the opposition.  Accordingly, subject to any appeal from my decision, the application should proceed to registration.

Costs
The opponent has claimed costs.  However, it has been unsuccessful in the proceedings.  I see no reason why costs should not follow the cause.  I therefore award costs to the applicant. 

Vija Zars
Hearing Officer

23 June 1999