Sharp Kabushiki Kaisha v Sharpline Stainless Steel Pty Ltd - [2008] ATMO 62

TRADE MARKS ACT 1995

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

Re:Opposition by Sharp Kabushiki Kaisha to registration of trade mark application 1090797(7, 11, 12, 20) - SHARPLINE - filed in the name of Sharpline Stainless Steel Pty Ltd.

Delegate:

Iain Thompson

Representation:

Opponent: Trevor Stevens of Davies Collison Cave.

Applicant: Simon Minahan, counsel, instructed by F Butera & Co.

Decision:

2008 ATMO 62

Section 52 opposition - sections 44 and 60 - section 44: trade marks are deceptively similar and goods in Classes 7 and 11 of the same description as opponent’s goods. Opposition partially established in class 11 and totally established in class 7. Provisions of subsection 44(3) cannot apply in terms of both evidence and section 60.

Costs awarded against applicant.

Background

Sharpline Stainless Steel Pty Ltd, of Sydney Road, Coburg, Victoria (‘the applicant’) seeks registration of a trade mark, under the Trade Marks Act 1995 (‘the Act’), current details of which appear below.

Application No: 1090797

Priority Date: 20 December 2005

Goods: Class: 7 Dishwashers

Class: 11 Sinks; rotisseries; food warming apparatus
Class: 12 Trolleys
Class: 20 Work benches

Trade Mark: SHARPLINE

Following examination of the application, it was advertised as accepted for possible registration in The Australian Official Journal of Trade Marks on 27 April 2006.
On 26 July 2006, Sharp Kabushiki Kaisha, also trading as Sharp Corporation, of 22-22, Nagaike-cho, Abeno-ku, Osaka, Japan, filed Notice of Opposition, (‘the Notice’) to the registration of the trade mark. The Notice includes the following grounds:
The trade mark is substantially identical with or deceptively similar to one or more of the opponent’s trade marks including, but not limited to, registration 400543, in respect of similar goods and for which the priority date is earlier than that of the trade mark the subject of the application and therefore its registration would be contrary to Section 44 of the Act. The trade mark has not been used by the applicant to satisfy the requirements of Section 44(3) and/or 44(4) and there are no other circumstances which make it proper for the Registrar to accept the application.
The use of the trade mark would be likely to deceive or cause confusion and registration of the trade mark would be contrary to Section 43 of the Act.
The use of the trade mark would be likely to deceive or cause confusion and registration of the trade mark would be contrary to Section 60 of the Act.
For the sake of completeness I note that the other grounds that are given in the Notice have not been established.
The parties have served and filed evidence in support and evidence in answer in relation to these proceedings.
The matter came before me as a delegate of the Registrar of Trade Marks at a hearing in Melbourne on 18 June 2008. Trevor Stevens of Davies Collison Cave represented the opponent. Simon Minahan, counsel, represented the applicant, instructed by Ferdinando Butera of Butera & Co, solicitors.

Additional Evidence

On 13 June 2008, five days before the hearing, the applicant presented the opponent and the Trade Marks Office with additional evidence. No request for extensions of time or fees accompanied the additional evidence – or an explanation as to why it was so late or outside the scheme of the regulations.
At the hearing, Mr Stevens objected strongly to the possible inclusion of this evidence and the applicant’s method of bringing it before the Office.
I agree. The regulations provide for the orderly service and filing of evidence. The presentation of evidence outside of the provisions of the regulations is not, ultimately, in the interests of either party, or of the orderly administration of the Register.
Had the evidence contained matter which was likely to affect the outcome of proceedings adversely to the opponent, I would have adjourned proceedings so that the applicant could pay fees and seek extensions of time and serve and file its evidence in a proper manner – and allow the opponent an appropriate period of time to consider a possible response. In this circumstance, costs in respect of the adjourned proceedings (for example, in relation to the opponent’s preparation and attendance costs relating to the hearing) would have been ordered against the applicant, irrespective of the eventual outcome of these proceedings.
However, I think that this additional evidence actually provides a clearer picture in establishing why the application must be at least partially refused registration.
Accordingly, I will very briefly discuss this additional evidence in the course of my decision.

Evidence

There is one statutory declaration in support of the opposition; this is by Shigeo Terashima who is Group General Manager of the opponent’s Intellectual Property Group.
Shigeo Terashima says that the opponent’s history dates back to 1912. Sharp was founded in Osaka, Japan in 1912, where the opponent produced the first self-propelling pencil called the “Ever Sharp”. The opponent is a global comprehensive electrics and electronics manufacturer with a focus on consumer and information products and on electronic components. The opponent’s products are aimed at both the commercial/hospitality market and the retail market. Today, the opponent’s products are sold in 140 countries. There are 27 manufacturing operations, 24 sales companies and 10 representative offices in 25 countries. The opponent employs approximately 46,600 staff, of whom approximately half live outside Japan
Shigeo Terashima states the opponent has registered the trade mark SHARP (the “SHARP trade mark”) in Australia for a wide range of goods and services including goods in classes 7, and 11, including the following registrations:

Application No: 400543

Priority Date: 29 November 1983

Goods: Class: 11 Cooking and heating apparatus for food

Trade Mark: SHARP

Endorsement: The provisions of subsection 24(2) applied.[1]

[1] This endorsement was applied under the Trade Marks Act 1955.

Application No: 400545

Priority Date: 29 November 1983

Goods:Class: 37 Installation, maintenance and repair of […] cooking and heating apparatus for food[2]
[2] At the hearing, the opponent relied only on this portion of the much longer specification.

Trade Mark: SHARP

Endorsement: The provisions of subsection 24(2) applied

Application No: 471817

Priority Date: 31 August 1987

Goods: Class: 11 Refrigerators

Trade Mark: SHARP

Application No: 471819

Priority Date: 31 August 1987

Goods: Class: 7 Washing machines

Trade Mark: SHARP

Shigeo Terashima avers the opponent’s products branded with the SHARP trade mark are aimed at both the commercial/hospitality market and the retail market and include microwave ovens, superheated steam ovens, small cooking appliances, electric heaters, kerosene heaters and refrigerators. In Australia the opponent offers for sale a range of products under the SHARP trade mark, aimed at both the commercial/hospitality market and the retail market including air conditioners, air purifiers, microwave ovens, convection ovens, and refrigerators.
Shigeo Terashima says the products offered by sale in Australia by the opponent under the trade mark SHARP include microwave ovens for both the commercial/hospitality market and the retail market, as well as refrigerators. Attached to the declaration and marked Exhibit ST-7 are extracts from Sharp’s Australian website displaying microwave ovens and refrigerators offered for sale in Australia under the trade mark SHARP.
Retail sales of the opponent’s goods sold under the trade mark SHARP exceeded $200 million in Australia annually for eight years preceding the filing date of the opposed application and the opponent has expended well in excess of $5 million on advertising and promoting goods sold under the trade mark in Australia in the same years.
The renown of the SHARP trade mark can be gauged, says Shigeo Terashima, by the listing given to the value of the trade mark SHARP by Forbes magazine in the years before the priority date of the opposed application:
·     2001, Sharp Corp was listed as the135th most valuable brand in the world conducted by Forbes. Its brand value in that survey was US$18,212 million;
·     2002, Sharp Corp was listed as the172th most valuable brand in the world conducted by Forbes. Its brand value in that survey was US$14,416 million; and
·     2003, Sharp Corp was listed as the154th most valuable brand in the world conducted by Forbes. Its brand value in that survey was US$16,423 million.
The evidence in answer is a statutory declaration by Joseph Patrick Vella who is a director of the opponent.
Mr Vella explains that Sharpline Stainless Steel Pty Ltd (‘Sharpline SS’) was incorporated as Shein Madel Holdings Pty Ltd in 1981 to conduct the Sharpline Stainless Steel business. It operated under the Sharpline trade mark and held a business name registration. Annexed to the declaration and marked “A” are copies of an ASIC search for Sharpline SS and the said business name registration. After the change of the company name to Sharpline SS, the business name registration was allowed to lapse. However, the name and trade mark has, Mr Vella states, remained in constant and continual use since the business was commenced in 1981.
Mr Vella avers that the nature of the business is the fabrication and commercial sale of stainless steel products on the type outlined in the classes for which registration of the Sharpline mark is sought, namely commercial dishwashers, rotisseries, bains marie food warmers, glass and plate stainless steel benches, trolleys and commercial sinks.
The business is, explains Mr Vella, based in Coburg, Melbourne, and is one of the largest Victorian fabricators but it also trades nationally on a significant level. Sharpline SS products are variously custom-built or standard range items which it makes at its Coburg premises. The applicant currently employs around 44 workers. It has always traded under the Sharpline trade mark and has always promoted its product by that mark extensively within Australia including by way of signage, brochures, Yellow Pages listings, advertisements in trade and related publications and associated promotional materials. Annexed as exhibit B to Mr Vella’s declaration are several advertising brochures through which the applicant advertises the Sharpline products.
Mr Vella gives sales figures for the years 2004 to 2007: these have been in the order of $10 million annually. It is not expressly stated in his declaration that these sales have been under the opposed trade mark.
Mr Vella avers that Sharpline SS products are almost exclusively sold to commercial operators for use in catering and like applications and its customers include Burger King, Hungry Jacks, Spotless, Safeway and Subway as well as various hospitals, restaurants and shopping mall businesses. The applicant obtains a good deal of its business by means of obtaining approval as a supplier from franchisees and as a consequence obtaining business from franchisees fitting out stores. Additionally, it obtains a good deal of business via relationships with shop-fitters and by word of mouth in the commercial kitchen fit out and professional catering industry. The applicant’s business is also advertised through a website, and by a ground floor showroom at the premises. There are no retail outlets through which the applicant conducts or promotes its business. Sharpline SS’s products are all comprised principally and visually of stainless steel and they are routinely custom-made. Mr Vella says they are not and never have been sold in outlets selling domestic electronic or white goods. The company has no plan to branch into such products or markets in the future. It does not manufacture nor have any expertise in or intention to branch into manufacture of domestic white goods or electronic cooking equipment such as microwave ovens.
Much of the balance of Mr Vella’s declaration consists of argument or submission and I will not therefore reproduce them as I believe that in addressing the submissions of Mr Minahan, applicant’s counsel, made at the hearing I will meet most of these concerns. However, one passage in Mr Vella’s declaration bears reproducing as it appears to be central to one of several misapprehensions on the applicant’s behalf. Mr Vella states:
I ask the Office to consider […] that the Sharpline mark has virtually always been used in connection with the words “Stainless Steel” in promotional literature and most often appears together with a logo of an oblique map of Australia coloured with the Australian flag appearing above the word “Sharpline” to the right, Annexed hereto and marked “I” is an example of the usual presentation. The applicant has invested considerably in and obtained extensive good will in this form of presentation of the mark. It is the present intention of the applicant to continue in this practice and profit by the goodwill established and build upon it. I would further ask the Office to consider that the opponent a Japanese electronic goods manufacturer and to take notice that it is recognised as such by Australian consumers. Again these matters stand in sharp distinction to each other and suggest that the opponent’s asserted grounds of opposition relying on potential or actual confusion are not grounded in fact or probability.
A logo form of the trade mark referred to by the declarant appears below:

One might reasonably question, after considering the above passage in Mr Vella’s declaration, and my decision in this matter, why the applicant did not apply to register the logo form of the trade mark which it uses. And I also note that the passage amounts to a statement that the applicant does not usually use the opposed trade mark.

Section 44

Section 44 of the Act relevantly provides:
Identical etc. trade marks
44.(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.
[…]
(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. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant’s trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.
Initially, I observe that, in considering this matter in terms of section 44, I am bound to assess the matter according to the use of the parties’ respective trade marks on the full scope of the opponent’s goods specified on the registrations on the one hand, and the full scope of the applicant’s specification of goods on the other. From the declaration in evidence, and the submissions at the hearing, it is apparent that the applicant strongly believes that its goods, and the marketplace they are sold in, are in reality quite different to such goods and marketplace of the opponent. However this is not the relevant test in terms of section 44.
I am, I reiterate, bound to consider the use of the trade marks in question to the full extent of the parties’ respective specifications of goods. Thus, when the applicant protests that its goods are stainless steel, those goods are also implicitly included within the opponent’s specifications; additionally the opponent’s goods are not limited on the application to consumer goods and may be sold within any marketplace, be it retail, industrial or commercial. Similarly, there are no qualifications within the applicant’s specifications of goods which negative the applicant’s goods being made of enamel or sold at retail. See Branson J in Registrar of Trade Marks v Woolworths [1999] FCA 1020, above, at paragraph 88:
The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of [goods or] services covered by the proposed registration. [parenthetical matter added]
The start-point in my considerations under section 44 is any similarity in the goods and services of the opponent’s registered trade marks, above, and the goods of the opposed application. In Registrar of Trade Marks v Woolworths [1999] FCA 1020 at paragraph 39 French J stated:
The characterisation of the relationship between services and goods in this way is evaluative. The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods.
I also note that as the comparison of trade marks is to take place in the context of the marketplace, it is logical to consider any similarity in the goods first.
Subsection 14(1) of the Act defines similar goods:
14 Definition of similar goods and similar services
(1)For the purposes of this Act, goods are similar to other goods:
(a)if they are the same as the other goods; or
(b)if they are of the same description as that of the other goods.
The opposed goods, ‘rotisseries; food warming apparatus’ fall within the general description ‘Cooking and heating apparatus for food’ of the opponent’s registration 400543 and are thus the same goods.
At the hearing, Mr Stevens submitted that the goods ‘dishwashers’ in the opposed application are goods of the same description as goods such as ‘ovens’ in the opponent’s registration 400543, ‘refrigerators’ in the opponent’s registration 471817 and/or ‘dishwashers’ in the opponent’s registration 471819.
What constitutes goods of the same description was the subject of recent consideration by Flick J in E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934 at paragraph 67:
It is again accepted that it is a question of fact and impression whether goods are “of the same description”: Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 545 per Needham J.
In resolving this question, the fact that goods serve different purposes is not conclusive; nor is any one particular consideration conclusive. Assistance, however, has been provided as to those matters which may be taken into account: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592. Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ there, at 606–7, gave content to the task to be undertaken as follows:
The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods... There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek’s Application [(1946) 63 RPC 59]. Romer J. thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case the Assistant-Comptroller elaborated on the observations of Romer J. in the following manner: “In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application [(1946) 63 RPC 59], Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are ‘of the same description’”: In re an Application by John Crowther & Sons (Milnsbridge) Ltd. [(1948) 65 RPC 369 at 372]. Much the same considerations are evident in the observation of Dixon J. (as he then was) in Reckitt & Colman (Australia) Ltd. v. Boden [(1945) 70 CLR 84 at 94] when he said: “What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments”.
In McCormick & Co Inc v McCormick [2000] FCA 1335, 51 IPR 102, Kenny J also identified some of the factors to be taken into account when determining whether goods were of the same description. Her Honour there observed:
The authorities establish that there are three principal factors to be considered in this regard. They are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold.

In considering whether the ‘stoves, refrigerators and washing machines’ of the opponent are goods or the same description as the ‘dishwashers’, of the applicant, I note that these goods are, at least in a retail environment, made of the same material, with a similar finish – enamel or stainless steel – the goods are commonly sold in the same part of shops, by the same salesperson, to the same class of customer. The goods share a trade channel and are frequently made by the one trader.
Stoves and refrigerators, at least, are frequently bought by the one person at the same time as dishwashers for use in the same kitchen area and are frequently ‘coordinated’ or matched with each other as kitchen accessories.
Thus the ‘stoves, washing machines and refrigerators’ of the opponent are goods of the same description as the ‘dishwashers’ of the applicant.
It was not argued by the opponent that the applicant’s sinks, trolleys and workbenches are similar goods to those of the opponent’s registrations.
I turn now to the question of whether the trade marks of the parties are deceptively similar. The expression ‘deceptively similar’ is defined within section 10 of the Act:
10 Definition of deceptively similar
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.
This concept was considered by French J in Registrar of Trade Marks v Woolworths [1999] FCA 1020 at paragraph 50:
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:
“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”
I will stress again, in connection with the above words from Berlei Hestia, that I am to consider the similarity (in terms of section 44) in the context of the marketplaces of all of the goods included in the respective specifications – this would include the applicant’s goods sold in the retail environment and the opponent’s similar goods sold in a commercial environment and made of the same materials: and see, again, Re Smith Hayden and Co’s Application (1946) 63 RPC 97 at 101.
In Australian Woollen Mills Limited v F S Walton and Company Limited [1937] HCA 51; (1937) 58 CLR 641, Dixon and McTeirnan, JJ said, concerning the comparison of trade marks:
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 effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.
Subsequently, in the same case, their Honours said:
It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs.
This contextual comparison of the trade marks was stressed in In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, above, where Parker J, as he then was, said:
You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.
Further, and of particular relevance here, I am to consider general effect of the trade marks. In Starr Partners Pty Ltd v Dem Prem Pty Ltd (No 2) (2006) 70 IPR 113 Edmunds J said at paragraph 35:
The trade marks must be considered in their entirety. “One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding and comparing the results of such matters, but by judging the general effect of the respective wholes.” (Clark v Sharp (1898) 15 RPC 141 at 146 (Ch D)). It is not sufficient to seize upon and compare the differences between the trade marks, for the overall impressions created may be so similar as to lead to confusion: (See eg William Bailey (Birmingham) Ltd’s Appn (1935) 52 RPC 136 (Ch D).
The common element within both trade marks is the word SHARP. I think it can be accurately stated that it is the essential feature in each trade mark. I do not subscribe to the view expressed in the opponent’s evidence that consumers are likely to see the opposed trade mark as denoting a ‘SHARP line’ of goods. However, I do not think that the trade mark SHARPLINE forms any sort of corporate identity, or forms any impression, which is separate and distinct from the word SHARP, such as do the expressions SHARP SHOOTER or SHARP PRACTICE, which might change the immediate impact of the word SHARP in the opposed trade mark. In essence, within these trade marks, it is the word SHARP which strikes the eye and fixes itself in the recollection and is the feature by which the trade marks are likely to be remembered, recalled, and recognized: Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147.
I also note that there is no material within the opponent’s trade mark other than the word SHARP by which it can be distinguished from the opposed trade mark.
On the other side of the coin, the goods involved are of some expense and people contemplating their purchase are likely to take some time and care in their purchase: Lancer Trade Mark (1987) RPC 303 at 324.
In Anheuser-Busch, Inc v Budìjovický Budvar, Národní Podnik [2002] FCA 390, Allsop J said at paragraph 151:
Ultimately it is a matter to be decided by the trial judge as a ´jury question’ on which the judge gives his or her opinion as to the likelihood of deception or confusion and in so doing is not confined to evidence from witnesses called as to that matter, though, of course, giving such weight as is thought appropriate to such evidence: see Murray Goulburn Co-operative Co Ltd v NSW Dairy Corporation Ltd (1990) 16 IPR 289 at 296; and General Electric Co v General Electric Co Ltd [1973] RPC 297, 321-22.
I consider that the effect of the trade marks appearing on the similar goods of the parties, in close proximity in a retail environment would be that people would be likely to think that the trade marks denote a common trade origin – or that it is likely that most people would be caused to wonder if this might be the case. This wonderment equates to ‘confusion’ in terms of the words ‘deceive or cause confusion’ within section 10 of the Act. Speaking of the differences between the words ‘deceived’ and ‘confused’, Richards J in Pioneer Hi-Bred Corn Co. v. Hy-Line Chicks Pty. Ltd. [1979] RPC 410 at 423 said:
‘Deceived’ implies the creation of an incorrect belief or mental impression and causing ‘confusion’ may go no further than perplexing or mixing up the minds of the purchasing public..... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.
Accordingly, the trade marks of the parties are deceptively similar, at least in relation to ‘rotisseries; food warming apparatus, and dishwashers,’ and the opponent has established its opposition in relation to those goods.
I do not think that the applicant could establish that it has used the opposed trade mark honestly and concurrently in terms of subparagraph 44(3)(a), above, in view of its concession that it usually uses the logo form of the trade mark and regards this as where its goodwill lies. In this regard, I note that the additional evidence put in by the applicant shows that it has used a number of trade marks in the past which include the word SHARPLINE but are not substantially identical to the opposed trade mark and thus could not be viewed as uses of the opposed trade mark in terms of section 7 of the Act:
7Use of trade mark
(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note:For prescribed court see section 190.
As the representations of the applicant’s prior trade marks in the additional evidence are not substantially identical to the opposed trade mark, they are not uses of the opposed trade mark.

Section 60

At the relevant date, section 60 of the Act provided:
Trade mark similar to trade mark that has acquired a reputation in Australia
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.
Note 1: For deceptively similar see section 10.
Note 2: For priority date see section 12.
Here I am to consider the actual use of the opponent’s trade mark on goods on the one hand (and any reputation in the trade mark) and the specifications of goods of the opposed application on the other hand. The question is not the use to which the applicant has put its trade mark in the past, the question is the use to which it can put the trade mark within the scope of the opposed application.
The reputation of the opponent’s trade mark is to be assessed according to the tests in McCormick & Company Inc v McCormick [2000] FCA 1335 stated by Kenny J at paragraph 81:
What is intended by the word ‘reputation’ in s 60? The word is defined in The Macquarie Dictionary as follows:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".
Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?
The opponent has relevantly used its trade mark SHARP extensively in relation to microwave ovens, convection ovens, and refrigerators in Australia. While the opponent has used its trade mark in relation to other goods, in particular consumer electronics, the trade mark SHARP does have a reputation in Australia in relation to microwave ovens, convection ovens, and refrigerators.
The trade marks of the parties are, as I have found in my discussion of section 44 of the Act, deceptively similar.
If the applicant’s trade mark were used to the full extent of the registration which it seeks, and its goods were sold in retail stores, the applicant’s use of the opposed trade mark on ‘rotisseries; food warming apparatus, and dishwashers,’ would be confusing and deceptive.
I add for the sake of completeness that the honest concurrent user provision of section 44 of the Act do not provide an exception to section 60: in McCormick, above, at 96 Kenny J said:
Whilst I accept, as counsel for Mary McCormick contends, that the doctrine of honest concurrent user is derived from the common law and pre-dates trade mark legislation, I am of the view that s 44(3) of the Act does not provide an exception to s 60.
Accordingly the opponent has established its opposition in terms of section 60 of the Act.

Section 43

Section 43 of the Act provides:
Trade mark likely to deceive or cause confusion
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.
I do not think that Mr Stevens seriously argued this ground. In T.G.I. Friday’s Australia Pty Ltd v TGI Friday’s Inc [2000] FCA 720, the Court stated at paragraph 43:
The case on deception and confusion sought to be made by Big Country and Friday’s Australia in the present proceedings is one that falls outside the reasons specified in those sections. It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others. So the alleged deception or confusion is not for a reason covered by section 43.
I do not consider, nor does the evidence show, that the opponent’s trade mark has a connotation in Australia – in my view the only trade marks which could be claimed to have such a connotation are those which have effectively passed into language. The opponent has not established its ground of opposition under section 43.

Other

In my view, the applicant’s chief prospects for securing trade mark registration rests in applying to register the trade mark which it states that it uses and in which it attests its goodwill resides.

Decision

Section 55 of the Act provides:
Decision
55. Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
As the opponent has established its opposition, I refuse to register the opposed trade mark in its entirety.
However, the application is also in respect of some goods other than ‘rotisseries; food warming apparatus, and dishwashers’ which conflict with the opponent’s goods. If the applicant wishes this application to proceed to registration in respect of goods in the specification of 1090797 other than ‘rotisseries; food warming apparatus, and dishwashers,’ it should apply to delete ‘rotisseries; food warming apparatus, and dishwashers,’ from its specification within two weeks of the date of this decision. The goods on the application would then read:
Class: 11 Sinks;
Class: 12 Trolleys
Class: 20 Work benches
If so amended, the trade mark application may then proceed to registration one month from the date of this decision. If, however, the Registrar has been served with a notice of appeal before that time, I direct that the disposition of the application be in accordance with the Court’s direction or order.

Costs

Having been successful in these proceedings, the opponent is entitled to its costs which I order at the scale set out in the regulations against the applicant.

Iain Thompson

Hearing Officer

Trade Marks Hearings

17 July 2008