Seiko Kabushiki Kaisha v Asahi Seiko Co., Ltd

[2000] ATMO 82

TRADE MARKS ACT 1995

DECISION THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Seiko Kabushiki Kaisha to registration of trade mark application 708893(9) - AsahiSeiko - filed in the name of Asahi Seiko Co., Ltd.

Trade mark application 708893 was filed for a wide statement of class 9 goods, in the name of Asahi Seiko Co., Ltd, on 21 May 1996. Registration was sought for the word mark AsahiSeiko represented thus -

Asahi Seiko Co., Ltd is described as a corporation organised and existing under the laws of Japan, and located in Tokyo. I shall refer to the applicant as ‘Asahi Seiko’.

This trade mark was accepted under the provisions of subsection 44(3) of the Trade Marks Act 1995 and the acceptance was advertised in the Official Journal of Trade Marks of 29 January 1998. For the purpose of s44 (3) the goods were restricted back to read:

Money handling apparatus, including coin selectors, coin dispensing apparatus, bill dispensing apparatus and bill validators; card dispensing apparatus and vending machines; electrical and mechanical parts and fittings for all the aforesaid goods; all included in class 9

Asahi Seiko’s trade mark application is now opposed by Seiko Kabushiki Kaisha (t/a Seiko Corporation). It too is a Japanese company located in Tokyo. I shall refer to it as ‘Seiko Corporation’. Stated grounds of objection include sections 41, 42, 44, 58, 59 and 60 of the Trade Marks Act 1995.  To support these grounds, Seiko Corporation filed an affidavit by Mr Takehiko Takigawa (the general manager of Seiko Corporation), some 19 supporting trade declarations, and a declaration from Mr Garry Manou (a manager of Seiko Australia Pty Ltd), who attests to the impartial selection of the trade declarants. As evidence in answer, Asahi Seiko relies on eight trade declarations of its own, and a declaration from its attorney, Mr Russell Waters, who exhibits an earlier declaration of Mr Kazuhiro Uei.  Seiko Corporation, in reply, served and filed a second affidavit from Mr Takehiko Takigawa.

The evidence phase came to an end and, in accordance with the provisions of regulation 5.14, the opponent, Seiko Corporation, requested that the matter be heard.  A hearing was set down for Melbourne, and the matter came before me on 4 June 2000.  Seiko Corporation was represented by Mr Robert Strickland of the Melbourne office of Griffith Hack.   The applicant, Asahi Seiko, was represented by Mr Russell Waters of the Melbourne firm of Phillips Ormonde & Fitzpatrick.

Mr Strickland commenced his submissions by stating that Seiko Corporation relied on four only of the nominated grounds ¾ these are:

1. That the trade mark is substantially identical with, or deceptively similar to a trade mark with an earlier priority date registered by another person in respect of similar goods. This is a s44 ground.

2. That there has been no honest concurrent use, prior continuous use, and no other circumstances exist, justifying acceptance of the trade mark for registration under ss.44 (3) or ss. 44(4).

3. That the applicant is not the owner of the trade mark, is not entitled to claim to be the owner thereof and the applicant is therefore not a person entitled under s27 (1)(a) of the Trade Marks Act to apply for registration. This is a s58 ground.

4. That the trade mark is substantially identical with, or deceptively similar to, a trade mark that, before the priority date of the registration of the first-mentioned trade mark, had acquired a reputation in Australia and 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. This is a s60 ground.

Background

The trade mark seiko is a very well known trade mark.  Its history is broadly outlined in the Takigawa affidavits. Seiko Corporation first used seiko as a trade mark in Japan in 1924. It used the mark on watches.  By the late 1940s, seiko watches were in the Australian market and subsequently so too were seiko clocks, metronomes, tuners and electric shavers.  Very significant sales have since been achieved. Generally speaking, however, these sales seem to have been achieved through the sale of watches.  During the ten years 1987 to 1997, with prices of individual watches ranging from $150 to $2,292, total sales were approximately $229m (Australian dollars).

Advertising outlay on the seiko products is also into the million dollar range.  On average, for these years 1987 - 1997, it was above $2m.  Advertising is broadcast by various means. A good deal of advertising occurs in high profile publications such as Marie Claire, The Australian Magazine, The Financial Review Magazine, Good Weekend (the Sydney Morning Herald magazine), Mode, The Bulletin, New Woman, Better Homes, Vogue and Australian Gourmet Traveller. There is substantial television advertising. Promotion also occurs at trade fairs and exhibitions and further exposure is achieved through sponsorship of sporting events and venues.  Amongst Australian beneficiaries have been the Sydney Half Marathon, Sydney Marathon and Sydney City to Surf, Noosa Triathlon, Randwick Trotting and Harold Park Raceway.  Various worldwide events have also had the benefit of Seiko Corporation’s sponsorship. Included are the 1990 and 1994 Commonwealth Games, the 1992 Summer Olympic Games and the 1994 and 1998 Winter Olympic Games. 

Associated with Seiko Corporation’s market success are a number of trade mark registrations. Mr Takigawa exhibits some 25 Australian registrations which were live as of May 1998.  These all contain the word seiko either solus, as a separate word, or as an element in compound words such as seikosha. Most are registered in classes 9 or 14 – most commonly for watches, clocks, horological and chronometric apparatus.  The earliest registration in Mr Takigawa’s list is trade mark number 161860, the word seiko, registered as of 18 August 1960 in respect of watches, clocks and other horological instruments, and parts thereof.  There are also many international registrations.

The applicant, Asahi Seiko, provides a limited account of its corporate history. Asahi and Seiko are, however, Japanese words. As per information suppled to the examiner of trade marks, Asahi means rising sun or morning sun; Seiko means precision industry. Mr Kazuhiro Uei is company manager of Asahi Seiko. In a declaration filed during examination (now exhibit RJW1 of the Waters declaration) Mr Kazuhiro Uei says that AsahiSeiko is the company name presented as a single word.   AsahiSeiko, he says has been used in respect of card dispensers, bill validators, coin selectors, coin doors and coin hoppers in Australia since July 1987. Sales have been continuous and extend to New South Wales, Victoria, Western Australia and Queensland.  Advertising in Australia appears to have been modest, but in 1994 Asahi Seiko participated in an exhibition in Sydney called “Gaming Expo 94”. 

The goods on which Asahi Seiko Co uses the trade mark AsahiSeiko sound like specialist goods and indeed they are. Their nature is illustrated by Mr Kazuhiro Uei’s Exhibit 5, a brochure distributed at the “Gaming Expo 94” entitled Asahi Seiko Coin Handling Equipment.  It describes the function of the goods, and gives some helpful detail such as:  

Asahi Seiko has been part of the Australian Gaming Industry since the beginning, more than 10 years ago.  The Australian market demands the highest quality and technology available today.

Asahi Seiko has proven year after year that our products perform reliably day in, day out to ensure maximum playing time and minimum down time.

If you are not using Asahi Seiko products in your equipment, your competition has the advantage.

Proven worldwide our DH-750 and WH series coin hoppers provide fast, accurate coin dispensing in the brutal Casino environment.  State of the art R & D ensure Asahi Seiko is always one step ahead of our competition.  Continuous analysis of our product ensure the product performance.  Patented designs ensures you can only get the best designs from Asahi Seiko.

Descriptions of the goods then run along the following lines:

MODEL DH-750/U1 – its reliability makes it the first choice for use in slant or bar top slots and video poker machines where the coins are required to be elevated to the player

MODEL AD-922 – new electronic coin selector model: AD – 922, single or dual coin applications.  3½” size makes it excellent for use in amusement, gaming, pin ball, vending and change machines

These goods are, in fact, the internal coin hoppers and dispensing mechanisms that drive gaming, vending and change machines.  The trade mark AsahiSeiko is applied to these parts but not to the machines themselves. The manufacturers, mechanics and maintenance staff would be aware of the AsahiSeiko badging. The public who use the machines would not.

The Section 44 ground

Seiko Corporation first opposes 708893 on grounds that AsahiSeiko is deceptively similar to various of its own trade marks with earlier priority dates and for the same or similar goods ¾ and that in respect of these conflicts the provisions of section 44(3) are improperly applied.

A number of the trade marks relied on by Seiko Corporation were raised by the examiner of trade marks and in consequence, the applicant turned to the provisions of subsection 44(3) ¾ a matter which I shall come to. The examiner's citations included the registrations in the following table. All but 532400 are in the name of Seiko Corporation. 532400 stands registered in the name of Asahi Keiki Co. Ltd.

Number	Trade mark	Goods
225317	SEIKO	All goods in Class 9 including desk-top computers and electric calculating machines
243186	SEIKO	All goods in this class including cameras, camera shutters, other photographic apparatus and instruments (class 9)
441643	SEIKO	All goods in this class, including photographic, cinematographic and optical apparatus and instruments, lenses including optical lenses (class 9)
504039	SEIKO LVD	All goods in this class; liquid crystal display televisions (class 9)
532400	ASAHI KEIKI	Thermostats and panel meters (class 9)
665727	SEIKO	Adding machines, amplifiers, audiovisual teaching apparatus, bar code readers, barometers, battery chargers, alarm bells, calculators, integrated circuits, computers, software and hardware, copying apparatus and machines, photographic equipment, films, speed indicators, optical fibres, magnetic tapes, measuring apparatus, mileage recorders for vehicles, navigational instruments, projection apparatus, quantity indicators, radios, audio and video receivers, apparatus for recording distance, remote control apparatus, scales, semi-conductors, signalling panels, sound recording and receiving apparatus, telephone apparatus, televisions, temperature indicators, video tapes and recorders (class 9)

There is no disagreement, I think, that these trade marks comprehend goods which overlap with the goods claimed in the subject application, that is,

Money handling apparatus, including coin selectors, coin dispensing apparatus, bill dispensing apparatus and bill validators; card dispensing apparatus and vending machines; electrical and mechanical parts and fittings for all the aforesaid goods; all included in class 9.

Nor is there argument about priority. The subject application, 708893, has a filing date later than any one of these registrations. Mr Waters on behalf of Asahi Seiko did make a submission, however, regarding the extent to which I should hold the trade mark AsahiSeiko deceptively similar to any of these trade marks.  He drew my attention to the directives of French J in the metro case[1]. His Honour says that the mandatory language of section 33 of the Trade Marks Act 1995 gives effect to the expressed intention that there be a presumption of registrability and that a ground of objection in terms of section 44 only exists when the Registrar is satisfied that there is a reasonable likelihood of deception or confusion. In respect of the likelihood of deception or confusion arising from use of the application trade mark Mr Waters points to the hill of gold case[2] and to Finn J’s directive that competing trade marks must be considered according to look, sound and idea; the way in which the marks are likely to be referred to or heard; and particular attention needs to be paid to the first part of a name.   I turn then to consider the marks in terms of these four principles

[1] Registrar of Trade Marks v Woolworths Limited 45 IPR 411

[2] C.A.Henschke & Co and Others v Rosemount Estate Pty Ltd – [1999]FCA 1561 paragraph 35

The trade mark seiko, and seiko lvd and AsahiSeiko all feature the word seiko.  In the seiko trade marks it makes up the whole mark; in seiko lvd it constitutes the first word of the mark; and in AsahiSeiko it constitutes the last two of the four syllables.  Its presence in the trade mark AsahiSeiko is emphasised by the presence of the capital “S”.  In the trade mark itself  —    —   the division of the mark into two words is emphatic.  It throws the word seiko into prominence and at the same time highlights the word asahi. As a result, this trade mark has strong visual links with the various seiko trade mark listed above, and similarly, strong visual links with the asahi keiki mark. 

The same finding applies, I think, in terms of sound.  In speaking the words AsahiSeiko,    ‑Seiko is at least as strong an element as Asahi-. This causes the application trade mark to echo with a word which has the identical sound as the opponent’s seiko trade marks. AsahiSeiko also sounds like a variation of the trade mark asahi keiki. 

The idea generated by any of these marks is a matter of conjecture. To Japanese speakers, the meaning of seiko as precision industry and the presence of that word in AsahiSeiko and in the citations, would be expected to generate a vivid and common idea. To the average person in Australia, however, the idea produced by these marks is likely to be little more than a general impression of Japanese words. The finding here must be that, while it is not clear that a strong idea will be generated by any of these word marks, they do have some character in common as Japanese words. 

So far as the way in which the marks are likely to be referred to or heard, it seems to me that while in the written form, the presence of Asahi in AsahiSeiko is plainly apparent, it may not be so easily recognised when the trade mark is spoken. Asahi is a soft sounding element which generally will be unfamiliar and meaningless.  Aurally, particularly to people familiar with the trade mark seiko, it seems likely that a reference to AsahiSeiko may easily be misunderstood or misheard as a reference to seiko.  Confusion of this kind goes hand in hand with imperfect recollection.   However, even when buyers are paying particular attention to the presence in AsahiSeiko of the first word Asahi, contextual confusion of the kind identified in John Fitton & Company Limited’s Application [3] is likely

[3] (1949) 66 RPC 110 at 113

The first part of the marks AsahiSeiko and seiko clearly are not the same, and do not sound or look the same. However, in the weighing up I do not think that this difference can save the application mark from offending the provisions of section 44(1).

Considering, therefore, the application trade mark in light of appearance, sound, idea and the manner in which it will be referred to, I agree with the examiner that the trade mark AsahiSeiko is deceptively similar to a number of seiko trade marks registered in the name of the opponent, Seiko Corporation. I also think that the examiner was right in citing 532400, asahi keiki, as a ground of rejection under the terms of section 44(1) of the Act.

Subsection 44(3)

As found in the course of the examination, the trade mark AsahiSeiko, being in breach of subsection 44(1) of the Act, may only proceed to registration if the provisions of either subsection 44(3) or 44(4) are brought into operation. The acceptance officer applied the provisions of 44(3). This subsection, so far as it is relevant, reads:

44.(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. …

The evidence put to the examiner comprised the Uei declaration.  This is now supplemented by eight trade declarations served as part of Asahi Seiko’s evidence in answer. 

The five tests for honest concurrent use are derived from Alex Pirie and Sons Ltd.’s Appn [4] and John Fitton[5] (supra). They are well known and I shall deal with them in turn.

[4] (1932) 49 RPC 195; (1933) 50 RPC 147

[5] (1949) 66 RPC 110

1         The honesty of Asahi Seiko’s use of the trade mark AsahiSeiko

Mr Kazuhiro Uei has described the reason for Asahi Seiko’s adoption of AsahiSeiko.  As mentioned, Asahi means rising sun, Seiko means precision industry and the name Asahi Seiko had been taken up as the company name. On this evidence, Mr Waters submits that the term seiko is one which any number of manufacturers of precision goods or goods containing precision components would be entitled to use in Japan.  He says that no single trader could claim exclusive rights in seiko because of this descriptive function.  Mr Strickland, however, lays stress on the wide knowledge of seiko as a famous trade mark. He submits that Asahi Seiko’s adoption of AsahiSeiko should be seen as nothing more than an endeavour to piggy-back on Seiko Corporation’s extensive reputation. I am, however, swayed by the undisputed evidence that seiko means precision industry. I agree with Mr Waters that seiko should therefore be treated as a word that is natural for any Japanese company to take up, either as part of its company name or as part of a trade mark. Asahi Seiko’s allegation of ‘piggy backing’ is out of line with this evidence and is, moreover, an unsupported assertion.

Asahi Seiko, on the other hand, has evidence of long term use of its name. It can point to trade mark number 235546. This registration dates from 1970.  It is in class 7, it is for bearings, and it is in the name of Asahi Seiko. This confirms that the applicant has been operating in Australia under its present name for over 25 years.

In sum, I accept that this background shows that Asahi Seiko’s use of the trade mark AsahiSeiko is honest and that the first of the Pirie/Fitton tests is satisfied.

2         The duration, area and volume of Asahi Seiko’s use of AsahiSeiko

Details of turnover are provided in the Uei declaration, but confidentiality is claimed. I observe, however, that year by year sales figures do show sales, and sometimes substantial sales, for each of the years 1987 to 1996 (the year of filing).   Over this period, coin handling apparatus bearing the AsahiSeiko trade mark was sold in New South Wales, Victoria, Western Australia and Queensland.  Material evidence of these sales is provided by invoices and a catalogue exhibited by Mr Kazuhiro Uei.  The catalogue depicts the goods and shows the trade mark applied to them. Most items carry labelling plates.  

I am satisfied that the use made by Asahi Seiko of its trade mark AsahiSeiko is sufficient in terms of duration, area and volume, to meet the requirements of subsection 44(3)(a).

3         The degree of confusion likely

While the degree of confusion likely is a factor to be taken into account in the scheme of subsection 44(3), it is relevant to note comments recently made by the High Court in respect of the operation of section 34 of the repealed Trade Marks Act 1955.  In the judgment of the full High Court in Campomar Sociedad, Limitada v Nike International Limited[6] their Honours say, 37,158 (paragraph 50):

[6] (2000) AIPC ¶ 91-540

The 1955 Act established a system which, in various respects, involved a prospect of deception and confusion. Those provisions dealing with licensing and assignment "in gross" and honest concurrent user are examples.

And at 37,159 (paragraph 52)

Provisions respecting honest concurrent use, whereby identical or nearly identical trade marks for the same goods or description of goods might be registered by more than one proprietor, subject to possible imposition of conditions, had first been made in Australia by s 28 of the 1905 Act 1905. Of the concurrent use provision in s 34 of the 1955 Act, Bowen CJ observed in Riv-Oland[7]:

[7] Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA (1988) AIPC ¶ 90-517

No doubt this provision had its origin in the situation that traders in different parts of the country might be circulating goods within their particular region under marks which were similar and doing so quite honestly. In such circumstances expansion of the respective markets might tend to bring the likelihood of deception or confusion. Notwithstanding this the policy of the legislation was to enable honest concurrent users to register their marks.

The evidence in support of Seiko Corporation’s opposition indicates that there is likelihood of confusion if the trade mark AsahiSeiko is used in association with money handling apparatus, coin selectors, coin dispensing apparatus, bill dispensing apparatus and bill validators; card dispensing apparatus and vending machines.  This evidence comes from 19 declarants most of whom are associated with the jewellery trade.  The remainder are involved in related businesses, such as gifts and promotions. The declarations are in the form of questionnaires. Question number (9) asks if the declarant has encountered the trade mark asahi seiko in relation to any of these goods.  All but one declarant answers that they have not.  Question (11) then asks if the declarant believes there would be a likelihood of instances of confusion arising between the use of seiko and any use of asahi seiko in the market place.  In reply to this question all declarants say that they think that there would be. 

Mr Waters takes issue with this evidence.  He draws attention to the fact that the application goods are highly specialised goods destined for a highly specialised market, and advocates that a sampling of people whose experience and expertise are limited to the jewellery trade is of little if any relevance. He says that the applicant’s goods are directed to manufacturers of gambling and vending machines, and that this (as opposed to the jewellery trade) is the market which should be assessed in order to gauge the likelihood of confusion being caused through use of AsahiSeiko on the Asahi Seiko goods.    

I think that Mr Waters has a point.  On the evidence of the Uei declaration it seems clear that the Asahi Seiko goods would not come to the attention of people involved in the jewellery (or related) trade.  It is not surprising therefore that jewellers have not come across any use of the AsahiSeiko trade mark.  Moreover, had the nature of the Asahi Seiko goods been explained to the declarants - in particular, that they are found in the internal workings of gaming and vending machines - the response to question (11) may well have been different. On the whole, I agree with Mr Waters’ criticism of the value of these supporting declarations.

The recent confirmation from the High Court[8] (supra) - that the provisions for honest concurrent use allow registration notwithstanding the prospect of confusion - indicates that a strongly negative finding on the confusion test need not be fatal.  In terms of the Pirie /Fitton test, however, the conclusion as to the likelihood of confusion must ultimately be weighed along with the findings of the other four tests. 

[8] Campomar Sociedad, Limitada v Nike  International Limited  (2000) AIPC ¶  91-540

In the present instance, I find that the nature of the application goods and the fact that they are directed to a specialist market, mitigate the likelihood of confusion. I do not think the risk of confusion from use of AsahiSeiko in respect of the goods claimed is at all high. 

4         Whether instances of confusion have occurred

There is one instance of confusion recorded in the evidence.  It is in a declaration by Graham Hosking, of Cliff House, Elm Court, Mt Eliza, Victoria.  Mr Hosking is a director of Hosking the Jeweller Pty Ltd of 16 Davey Street, Frankston, a business concerned with the retail sale of watches and jewellery.  He has had 52 years’ service in the industry and says that for some 35 years he has been aware and familiar with use of the trade mark seiko in respect of watches in Australia.  In answer to question (9) viz:

Have you encountered use of the trade mark asahi seiko in relation to products in the form of money handling machines, including coin selectors, coin dispensing machines, bill dispensing machines and bill validators, card dispensing machines and vending machines, and if so what particular products?

Mr Hosking answers:  Yes.

In answer to question (10) viz:

If your answer to Question 9 is in the affirmative, are you aware of any instances of confusion between the use of seiko and the use of asahi seiko in the market place?

Mr Hosking answers:  Yes.

In answer to question (11) viz:

If the answer to Question 9 is in the negative, would you believe there would be a likelihood of instances of confusion arising between the use of seiko and any use of asahi seiko in the market place?

Mr Hosking answers:  Yes.

In answer to question (12) viz:

If you answer to either Question 10 or 11 is in the affirmative, would you believe that use of asahi seiko in connection with any of the products referred to in Question 9 is likely to be associated with the organisation named in your answer to Question 7?

Mr Hosking answers:  I thought they were “seiko” Australia.

Mr Waters is quite rightly doubtful about the weight I can give this evidence.  It is apparent that Mr Hosking is not clear about what he is being asked.  In his answer to question (9) he fails to describe the money handling machines on which he encountered AsahiSeiko.  Then, having responded positively to question (9), he ought not (according to the questionnaire) to have answered question (11). Taken overall, I assume that the message in this evidence is that Mr Hosking himself has come across AsahiSeiko and has been confused about trade origin.  In light of the disparity in his answers, however, I agree that this evidence should bear very little weight. But even if there been no disparity, I still would not have assigned significant weight to this single instance of confusion. In the context of the Pirie/Fitton criteria, and of the recognition that honest concurrent use is a provision which is available even in circumstances of considerable deception and confusion, I find here that the disclosure of one instance of confusion is of little significance, and I find that significance diminished further by reason of its doubtful nature. 

5         The relative inconvenience

Asahi Seiko has used its trade mark AsahiSeiko in Australia since July 1987 -  that amounts to almost nine years before filing. It has established a valuable trade under this mark, and it would clearly be a matter of some serious inconvenience if Asahi Seiko failed in its endeavour to achieve a registration to protect that trade.

So far as Seiko Corporation is concerned, the question is to what extent the registration of this trade mark would cause inconvenience to it.  Had the goods been more closely connected, or had the application goods been directed to the general public rather than to a highly specialist market, the likelihood of confusion could have been a very live issue. Concerns about dilution of reputation may also have been warranted. That, however, is not the case, and as no other matter has been mentioned, it is my view that the inconvenience caused to Seiko Corporation by registration of AsahiSeiko is less that the inconvenience Asahi Seiko would suffer if registration were denied.

Findings in respect of honest concurrent use – s44 (3)

I have found that Asahi Seiko’s use of the trade mark AsahiSeiko is honest; that the duration and volume of use are satisfactory; that, in the face of any seiko (or asahi) trade mark there is little likelihood of deception and confusion being occasioned by the use of AsahiSeiko in relation to money handling machines; that the single instance of confusion identified in the opponent’s evidence bears very little weight; and that an assessment of relative inconvenience weighs in favour of allowing Asahi Seiko’s trade mark application  to proceed. 

I find therefore, that the Pirie/Johnson tests are satisfied, that trade mark application number 708893 qualifies for the benefits of honest concurrent use, and that the provisions of section 44(3) of the Trade Marks Act 1995 have been properly applied.

Prior continuous use and other circumstance.

Having decided the matter of the section 44 ground in terms of honest concurrent use, it is not necessary for me to consider prior continuous use or other circumstances. Prior use was not pressed by Mr Waters. As other circumstances he pointed to the breadth of some of Seiko Corporation’s registrations and aired the proposition that these registrations were vulnerable to non-use actions.  He did not, however, put these submissions very high.

I dismiss this proposition out of hand. If there is a case for non-use, then the Act provides remedies. Unsupported allegations of non-use, however, do not amount to circumstances that satisfy the provisions of section 44(3).

The Section 58 ground

There is no evidence to support the grounds that Asahi Seiko is not the owner of the trade mark AsahiSeiko and is not entitled to claim to be the owner this trade mark.  Mr Uei explains why the trade mark was adopted, and there is convincing evidence of genuine trade use for a significant number of years prior to the filing of the trade mark application.  Seiko Corporation lays claim to no trade mark that is the same kind of trade mark as AsahiSeiko and has shown no use, before May 1996, in relation to the same kind of goods as the application goods.  I dismiss this ground.

The Section 60 ground

There are two legs to section 60. Under the provisions of paragraph 60(a) Seiko Corporation must demonstrate that the application mark, AsahiSeiko, is substantially identical with or deceptively similar to, a trade mark that, before the priority date of the registration of AsahiSeiko (21 May 1996) had acquired a reputation in Australia. The second leg of section 60, paragraph (b), requires a finding that because of that acquired reputation, use of the trade mark AsahiSeiko is likely to deceive or cause confusion.

I have already found that AsahiSeiko is deceptively similar to a number of seiko trade marks. And I have acknowledged that in respect of a range of precision instruments, particularly watches, Seiko Corporation has acquired a substantial reputation. The determining question for the section 60 ground therefore is whether, in the face of that acquired reputation, use by Asahi Seiko of its trade mark AsahiSeiko, in respect of the money handling apparatus nominated, is likely to deceive or cause confusion.

I turn back briefly to consider the nature of the acquired reputation.

Mr Waters points out that the advertising evidence under Exhibit TT2 of Mr Takehiko Takigawa’s affidavit shows promotion of the trade mark seiko exclusively in respect of watches. This is true — there are 25 advertisements from high profile magazines mentioned above and, without exception, they are advertisements for watches.  Under Exhibit TT1, Mr Takehiko Takigawa lists television advertising for some 4 years, 1994 to 1998. Here, however, there is no description of the advertising content and I cannot assume that this promotional activity was directed to anything other than the watches displayed under Exhibit TT2.  Exhibit TT3 is described by Mr Takehiko Takigawa as leaflets in relation to promotion of the goods bearing the said mark in respect of electric shavers, metronomes and tuners for musical instruments. These three single-page leaflets illustrate a modest range of these goods, and they can be seen to bear the seiko trade mark. Mr Takehiko Takigawa, however, gives no indication of how or when the leaflets were distributed, nor does he say that they have been used in Australia.  One of the leaflets, showing electric shavers, is in Japanese and I assume that it was destined for use outside Australia. As evidence of reputation in Australia, these leaflets of TT3 add up to very little.  At TT4 there is a list of retailers.  While this shows that Seiko Corporation’s goods are distributed throughout the country it is no more than a list of retailers and does not show use or acquired reputation attaching to any specific goods. Lastly, I note that the 19 supporting declarants acknowledge use of the seiko trade mark for watches and clocks. But the question put is leading (have you encountered use of the trade mark seiko in relation to watches and clocks?) and I do not think that I can give that evidence much weight. Taken as a whole, I agree with Mr Waters that on the basis of the evidence, Seiko Corporation has only succeeded in confirming an acquired reputation in respect of watches.   Having said that, however, I acknowledge that in respect of watches, seiko is indeed a very well known trade mark.

Mr Strickland would have it that, as a consequence of Seiko Corporation’s reputation, and as borne out by the supporting declarations, the use of AsahiSeiko on money sorting apparatus should be held likely to deceive or confuse.  Mr Waters, however, maintains that the questions asked of the opponent’s declarants were not the right questions and further, that the respondents do not constitute the relevant market.  I have largely dealt with this issue above and there came to the conclusion that, because of the specialised nature of the Asahi Seiko goods, jewellers and other ordinary member of the community were unlikely to encounter the AsahiSeiko trade mark.   Continuing from that point, the question becomes what difference, if any, is likely to be brought about as a consequence of Seiko Corporation’s wide reputation in respect of watches?

With acquired reputation being associated only with watches, I cannot think that use of AsahiSeiko in respect of money handling apparatus particularly coin selectors, coin dispensing apparatus, bill dispensing apparatus and bill validators; card dispensing apparatus and vending machines; electrical and mechanical parts and fittings for all the aforesaid goods is likely to deceive or cause confusion. This is expensive and specialised equipment. In the main, as Mr Waters has pointed out, it will be purchased by manufacturers of gaming machines, pin ball machines, change machines and vending machines. Such enterprises will conduct their purchases with care. They will, in all probability, be in the habit of dealing with equipment of this kind, will research the market, and will make decisions on the basis of technical assessment and for the purpose of resource investment. This is not the sort of spending that is described as impulse buying, is characterised by the ‘bag of sweets’ metaphor, and is susceptible to careless decision making. The goods produced by Asahi Seiko are the component parts of gaming, vending and change machines, and I do not think that the acquired reputation shown to exist in the seiko trade marks is likely to deceive or confuse the purchasers of such goods. I find that the section 60 ground is not made out.

Neither Mr Waters nor Mr Strickland made reference to the operation of subsection 44(3) in relation to the section 60 ground. I have held that the section 60 ground does not stand up and in the event the inter-relationship between these sections is of no moment. However, had the section 60 ground been made good, the effect of the positive subsection 44(3) findings would have become an issue. The operation of subsection 44(3) in respect of section 60 was discussed by Hearing Officer Zars in McCormick & Company, Inc v Mary McCormick.[9]  Ms Zars refers to findings of Lord Diplock in the GE case[10] that deception and confusion arising merely from honest concurrent use does not ‘disentitle a mark to protection in a court of justice.’[11]  His Honour’s comments are made in respect of s11 of the 1938 British Trade Marks Act which corresponds (broadly) to s28 of the repealed Trade Marks Act 1955 and s42 of the Trade Marks Act 1995.  Ms Zars then cites a relevant passage from Northrop J’s judgment in the Riv-Oland case[12].  This passage is now cited by the High Court in Campomar Sociedad, Limitada v Nike International Limited[13] and I have referred to it above.  It is a decision of the year 2000, and endorses the finding that the trade mark law offers protection in some instances to trade marks which involve a prospect of deception and confusion.  I agree with Ms Zars’ conclusion that, in light of the case law and of the general policy apparent in the Trade Marks Act 1995, success in establishing an opposition ground in terms of section 60 does not debar an applicant from considerations available to it as an honest concurrent user.

[9] 42 IPR 515 at 526

[10] “GE” Trade Mark [1970] RPC 469 at 476

[11] Shanahan D.R., Australian Law of Trade Marks and Passing Off, The Law Book Company Limited 2nd edit., Sydney 1990 - at 201

[12] Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA. (1988) 12 IPR 321 at 341

[13] (2000) AIPC ¶ 91-540

Decision

I have agreed with the opponent, Seiko Corporation, that trade mark application number 708893, is deceptively similar to a number of trade marks, most of which are the opponent’s own seiko trade marks.  This is in line with the original findings of the examiner of trade marks.  Again, in line with the findings in examination, I have found that the provisions of paragraph 44(3) may properly be invoked by Asahi Seiko.  I dismiss the ground that the provisions of paragraph 44(3) were wrongly applied.

I have dismissed the section 58 ground.

I have also found that, in respect of the reputation acquired by the opponent, Seiko Corporation, in relation to its seiko trade marks, use of the subject trade mark AsahiSeiko is not likely to deceive or cause confusion. I have therefore dismissed the s60 ground.

In sum I dismiss the opposition and direct that trade mark application number 708893 may proceed to registration after 30 days from the date of this decision.  If the Registrar has been served with a notice of appeal before the end of that time, I direct that the application may not proceed to registration until that appeal has been decided or discontinued.

Costs

The opposition has failed and in accordance with the provisions of section 221 I direct that the opponent, Seiko Corporation, pay the costs of the trade mark applicant, Asahi Seiko, in the amounts provided for in the regulations.  On a request for taxing, costs will be taxed, allowed and certified by a trade marks officer appointed for that purpose.      

Helen R Hardie
Deputy Registrar

31 July 2000