Seminvest Investments SA v Spotters Shades Pty Ltd

[2002] ATMO 83

TRADE MARKS ACT 1995

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

Re:Opposition by Seminvest Investments B.V. to registration of trade mark application 852997(9) - ICE - filed in the name of Spotters Shades Pty Ltd.

DATE OF DECISION:	23 September 2002
DELEGATE:	Hearing Officer Jock McDonagh
REPRESENTATION:	Opponent - Ian Horak and Michael O’Donnell, of Phillips Ormonde Fitzpatrick, Patent & Trade Mark Attorneys
DECISION:	Section 52 Opposition: registration refused - s 55(a)

Background

The applicant, Spotters Shades Pty Ltd, filed trade mark application number 852997 on 3 October 2000 ("the relevant date"). It is an application to register the word ice for goods in Class 9: Polarised sunglasses.

The application was duly examined and accepted for registration. Its acceptance was advertised in the Australian Official Journal of Trade Marks on 26 April 2001.

On 26 July 2001, in accordance with Part 5 of the Trade Marks Act 1995 ("the Act"), the opponent, Seminvest Investments B.V. a Dutch private limited liability company of Rotterdam, the Netherlands, filed a notice of opposition to the registration of 852997.

The opponent served and filed evidence in support. There was no evidence in answer filed or served by the applicant.

The matter came before me as a delegate of the Registrar of Trade Marks for hearing in Canberra on 18 June 2002. The opponent was represented by Messrs Ian Horak and Michael O’Donnell of Phillips Ormonde Fitzpatrick, Patent & Trade Mark Attorneys of Melbourne, who appeared by video link. The applicant was not represented.

Grounds of Opposition

In its Notice of Opposition the opponent cited 19 grounds of opposition provided in the Act. However, in the hearing only the following three grounds were specifically addressed:

• Section 44 - identical, etc, trade marks;

• Section 58 - applicant not owner of trade mark; and

• Section 60 - trade mark similar to trade mark that has acquired a reputation in Australia.

The remaining grounds were not supported by evidence or submissions. I formally dismiss them.

Evidence

The evidence filed in these proceedings comprises a statutory declaration declared on 3 December 2001 by Waltherus Hoogstraate, Administrative Director of Monterey Executives B.V, whose director is a management board member of the opponent.

The declaration is witnessed by the civil law notary, Hendrikus Johannes Portengen, who explains in a covering statement that under Dutch law Mr Hoogstraate is fully entitled to represent the opponent and sign documents on its behalf.

The declaration refers to exhibits PG-1 to PG-5.

Considerations and Findings

Ground 1: Section 44 - Deceptive Similarity

Section 44, in so far as it is relevant, reads:

Identical etc. trade marks

(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

(a)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.

Note 1:For deceptively similar see section 10.

Note 2:For similar goods see subsection 14(1).

Note 3:For priority date see section 12.

Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

Additionally, section 10 of the act provides as follows:

Definition of deceptively similar

10. 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.

The opponent relies upon three trade marks with earlier priority dates than the applicant's trade mark as follows:

• 512266 - iceberg - Class 9: Scientific, nautical, geodesic, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines and data processing equipment; fire extinguishing apparatus. Priority date 7 June 1989

• 564045 - ice - Class 25: Clothing, footwear, headgear. Priority date 24 September 1991.

• 518495 - sport ice - Class 9: Spectacles, spectacle glasses, spectacle frames, sunglasses, parts in class 9 for the aforesaid; and all other class 9 goods. Priority date: 6 September 1989.

The matters for determination are therefore:

(a)whether the applicant's mark is substantially identical with, or deceptively similar to, the opponent's registered trade marks; and

(b)whether the opponent's trade marks are registered in respect of similar goods.

In respect of the first mark - iceberg - I am of the view that it is not substantially identical to ice. In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, at 414, Windeyer J states:

In considering whether marks are substantially identical, they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

In considering the applicants’ trade marks alongside the opponent’s registered trade mark, I think that the total impression that emerges is not one of substantial identity.

The tests for deceptive similarity also lie in the words of Windeyer J in Shell Company of Australia Ltd v ESSO Standard Oil (Australia) Ltd:

The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.  Therefore the comparison is the familiar one of trade mark law.  It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions...

And in Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658; Dixon and McTiernan JJ said:

In deciding this question, the marks ought not, of course, to be compared side by side.  An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought.  The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.

The High Court in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 said that deceptive similarity is established if:

[t]here is a real risk that the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products came from the same source.

In considering this matter, I have taken into account the above tests. The word “ice” is the dominant element of the competing marks. In my opinion, the applicant’s mark might be taken as a variant of the earlier trade mark. Both marks contain an idea of “coolness”, which would be a desirable image in fashion accessories such as sunglasses. However, a common idea is only relevant when the marks themselves look or sound alike: Sports Cafe v Registrar of Trade Marks (1998) 42 IPR 552. The words neither look nor sound alike. The Australian tendency of slurring or shortening words is unlikely to materially affect the different sound of the competing marks.

On balance, I am not satisfied that there is real likelihood that some people will wonder or be left in doubt about whether the two sets of goods in question come from the same source.

I find that polarised sunglasses are similar goods to optical apparatus and instruments.

In respect of the second mark - ice - it is clear that the marks are literally identical and substantially identical for the purposes of the Act. However, I am not satisfied that polarised sunglasses are similar goods to Clothing, footwear, headgear. In coming to this determination, I have taken into account the factors outlined in Re Jellinek’s Application (1946) 63 RPC 59, namely: the nature of goods, their uses, and the trade channels through which they are sold. This was applied by Hearing Officer Zars in Goldberg & Anor v John Brown Hosiery Pty Ltd (1996) 36 IPR 161, who held that clothing, headgear and footwear were not goods of the same description as eyewear.

The third mark - sport ice - is a composite word and device mark, as displayed below:

The mark is clearly not substantially identical to the applicant’s mark. Submissions on behalf of the opponent did not suggest that identity was in issue.

In my opinion, customers will more naturally refer to the word element of the mark when ordering the product. The distinctive feature of both the word element and the device element is, again, ice. In the context of the mark, the word sport is merely descriptive. Again, the applicant’s mark might reasonably be taken as a variant of the opponent’s trade mark. I find that there is real likelihood that some people will wonder or be left in doubt about whether the two sets of goods in question come from the same source.

I also find that polarised sunglasses are similar goods to Spectacles, spectacle glasses, spectacle frames, sunglasses, parts in class 9 for the aforesaid; and all other class 9 goods.

The section 44 ground is established to my satisfaction in respect of the sport ice trade mark.

Ground 2: Section 58 - Ownership

Section 58 provides:

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:  For applicant see section 6.

Ownership of a trade mark may be established by showing who had first use in Australia of the same trade mark, or of a substantially identical trade mark, in respect of "the same kind of thing", before the priority date of the application: Re Hicks' Trade Mark (1897) 22 VLR 636; Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375.

A small amount of use as a trade mark on the Australian market will suffice: Thunderbird Products Corp v Thunderbird marine Products Pty Ltd (1974) 131 CLR 592.

The evidence shows that the opponent produces and sells sunglasses. A number of models of these sunglasses bear the mark ice on their arms. The opponent has exhibited invoices, dated 20 December 1996 and 31 May 1997, showing sales in Australia of such models of sunglasses.

I am satisfied that the opponent’s sunglasses are "the same kind of thing" as polarised sunglasses. I am also satisfied that the opponent has used ice as a trade mark on its goods.

Having regard to the evidence I am satisfied that the opponent has demonstrated use in Australia of the same trade mark, or of a substantially identical trade mark, in respect of "the same kind of thing", before the priority date of the application (the relevant date).

Ground 3: Section 60 - Reputation

Although I have already found grounds for refusal of the applicant’s mark, for completeness I shall briefly discuss this ground. Section 60 of the Act provides:

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.

Accordingly, to satisfy section 60, the opponent has the burden of establishing the following elements:

(a)         a pre-existing trade mark;

(b)substantial identity or deceptive similarity between the applied for trade mark and the pre-existing trade mark;

(c)the acquisition of a reputation in Australia by the pre-existing trade mark; and

(d)a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

I have already determined the issue of substantial identity under the section 58 ground. Having found a pre-existing mark that is substantially identical to the applicant’s mark, it is now necessary to consider the other elements.

I am satisfied that the evidence establishes that the opponent has acquired a reputation in Australia. The evidence shows substantial sales of sunglasses bearing the opponent’s marks. There is also significant evidence of prominent advertising in magazines published in Australia, such as Mode and Harpers Bazaar, and high quality promotional material. Therefore, I am satisfied that because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion. Accordingly, this ground is made out.

Decision

I have found that the opponent has been successful in each ground argued. Accordingly, I exercise my discretion pursuant to section 55 to refuse to register the applied for trade mark.

Costs

The opponent sought its costs. I see no reason why costs should not follow the general rule, being against the unsuccessful party. I award costs against the applicant and direct that the applicant pay the costs of the opponent in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

Jock McDonagh

Hearing Officer

Trade Marks Hearings

23 September 2002