Shell International Petroleum Company Limited v Peap Mentor Pty Ltd

[2002] ATMO 116

TRADE MARKS ACT 1995

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

Re:Opposition by Shell International Petroleum Company Limited to registration of trade mark application 797246(36) - E-SELECT AND DEVICE - filed in the name of Peap Mentor Systems Pty Ltd.

DATE OF DECISION:

16 December 2002

DELEGATE:

Hearing Officer Jock McDonagh

REPRESENTATION:

Opponent

Ms Fiona Brittain of Davies Collison Cave, Attorneys

Applicant

No appearance

DECISION:

Section 52 Opposition: registration allowed

Background

The applicant, Peap Mentor Systems Pty Ltd of Melbourne Victoria, filed trade mark application number 797246 on 16 June 1999. 797246 is an application to register the words e-select and device as shown:

The application is in Class 36 for:

Insurance, financial affairs, monetary affairs, real estate affairs

The application was duly examined and accepted for registration. The acceptance of 797246 was advertised in the Australian Official Journal of Trade Marks on 24 February 2000.

On 23 August 2000, in accordance with Part 5 of the Trade Marks Act 1995 ("the Act"), the opponent, Shell International Petroleum Company Limited of London in the United Kingdom, filed a notice of opposition to the registration of 797246.

The opponent's evidence in support was duly served and filed. The applicant did not serve any evidence.

The matter came before me as a delegate of the Registrar of Trade Marks for hearing in Melbourne on 3 September 2002. Ms Brittain of Davies Collison Cave, Attorneys of Melbourne appeared for the opponent. There was no appearance for the applicant.

Grounds of Opposition

Although the opponent listed ten grounds of opposition in the Notice of Opposition, at the hearing it relied on the following three:

• Section 41 - Trade mark not capable of distinguishing applicant’s services;

• Section 44(2) - Identical etc trade marks; and

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

The Evidence

The evidence in support of the opponent comprises two statutory declarations made by Samantha Duncan - Stores Brand and Communications Manager of the Shell Company of Australia Limited, a subsidiary of the opponent - the first made on 23 November 2001 and the second on 12 February 2002.

The first declaration states that the opponent is the registered owner of the following trade marks:

606036

Class 42:

Restaurants; cafes; snack bars and quick food services; wholesale and retail services relating to convenience stores, excluding the sale or retail of photographic film, including photographic slide film and photographic chemicals, and clothing including sports clothing, footwear and headgear

715046

Class 42:

Restaurants; cafes; snack bars and quick food services; wholesale and retail services relating to convenience stores, but not including the sale or retail of photographic film (including photographic slide film and photographic chemicals) and clothing (including sports clothing, footwear and headgear)

The declaration states that the opponent also has an application, 844440, filed on 28 July 2000 and accepted but opposed, using the same device as for 715046 but with goods and services in Classes 29, 30 and 32. The opponent did not rely on this application in its submissions and I make no further reference to it.

The first declaration states that 606036 was first used in Australia in September 1993 and has been used continuously since then in connection with a wide range of goods and services offered through select branded convenience stores. It is not clear from the evidence whether “select” refers only to 606036, or to both 606036 and 715046; however, in submissions this use is attributed to “select and tick device” (606036).

For simplicity, I shall refer to 606036 as select/tick and 715046 as select/apple.

The first declaration states that at the date of its execution there were 128 select branded convenience stores in Australia, with a further 50 “stand alone” stores planned to be in operation by the end of 2002. The select convenience stores represent a 10% market share in Australia.

The first declaration also discusses the extensive use of automated bank teller machines (“ATM”) installed in the opponent’s stores. The ATMs’ hardware and cash management are owned by Cashcard, but the opponent receives an income stream from Cashcard. During the period March 1999 to December 2000 this amount was approximately $4,305,724.

The first declaration details the opponent’s “ShellCard” and “Shell Mastercard” services. The former is an electronic payment system for the purchase of fuel products, while the latter is a general purpose credit card that also offers a “loyalty programme” that earns users Fly Buys and rebates that can be redeemed for purchasing Shell products. A large selection of literature relating to the cards is exhibited.

The second declaration exhibits examples of the opponent’s signage and promotional material bearing the select/apple mark. I note that reference is made to ATMs in the promotional material and the signage, while an ATM is shown in a convenience store bearing the select/apple signage.

Ground 1 - Section 41

The opponent submitted that the applicant’s mark has insufficient inherent adaptability to distinguish to be registrable, therefore it must be rejected under subsection 41(2) of the Act.

Ms Brittain pointed to the word element of the mark comprising the commonly-used prefix “e” and the laudatory term select. The device element was simply a plain depiction of a tick superimposed on the word element and merely serving to emphasise the meaning of the word select. Further, the term was descriptive of the applicant’s designated services.

The definition of “select” was said to include “chosen for excellence or suitability, choice, picked, got by rejection or exclusion of what is inferior”. Certainly, the Oxford English Dictionary (Second Edition) includes the following definition “Selected, chosen out of a larger number, on account of excellence or fitness; picked ... hence, choice, of special value or excellence; composed of or containing the best, choicest or most desirable; superior.”

The issue of whether inherent distinctiveness is resident in a trade mark is to be assessed with reference to the question of whether other traders would, in the normal course of trade, and without improper motive, want to use the sign in respect of their similar goods or services in a manner which would infringe a putative registration of that sign – see for example, Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511; F.H. Faulding & Co v Imperial Chemical Industries (1965) 112 CLR 537.

In Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177 (25 February 2000), Wilcox J said at paragraph 25:

I agree with Jacob J[1] that "the power of advertising may be able to turn almost anything (save a pure description) into a trade mark". It follows, as it seems to me, that any mark other than "a pure description" may be regarded as capable of distinguishing a trader's goods, regardless of whether or not it does so at any particular time. This approach would deny registration under s41(2) to the word "Soap", because that is merely an ordinary English description of a product.

[1] British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281

I do not think there is any inconsistency between this approach and the test enunciated by Kitto J. It will be recalled that, in Clark Equipment, his Honour spoke of the likelihood that other traders would wish to use the word in connection with their goods "in the exercise ... of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess". In F H Faulding he put the test as "whether the word is one which other traders are likely, in the ordinary course of their businesses, and without any improper motive, to desire to use upon or in connexion with their goods". In other words, to take Jacob J's example, all soap manufacturers may be expected to wish to describe their product as "soap"; so that word cannot be regarded as inherently adapted to distinguishing the products of one of them.

I do not consider that the word select, in relation to the services of this application, functions in the same manner that the word soap does as described above; or, as do the words cranberry classic when used in relation to fruit drinks. It is not used in conjunction with any description of the applicant’s services, nor is it descriptive of those services.

Additionally, the other elements of the applicant’s mark must be taken into account. Considered as a whole, it seems to me unlikely that other persons, trading in the services of this application, and being actuated only by proper motives will independently think of this combination of devices, assemble them in the same manner, and want to use that arrangement in connexion with similar goods. The word select can be descriptive and laudatory. However, the presence of the prefix “e” and the tick device elevates this sign above the commonplace, and beyond the category of marks that other traders, of their own accord, are likely to assemble and want to use. In my view this trade mark is inherently capable of distinguishing, and I dismiss this ground of opposition.

Ground 2 - Section 44

So far as is relevant, section 44 states:

Identical etc. trade marks

44.(1) ...

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

(a) it is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1: For deceptively similar see section 10.

Note 2:  For similar services see subsection 14(2).
Note 3:  For priority date see section 12.

The opponent's trade marks have priority dates of 1 July 1993 and 14 August 1996, both of which are earlier than the applicant's trade mark.

The matters for determination are therefore:

(a)whether the applicant's mark is deceptively similar to the opponent's registered trade mark in that it so nearly resembles that mark that it is likely to deceive or cause confusion (Section 10); and

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

Ms Brittain submitted that the essential feature of each of the applicant’s mark and those of the opponent was the word select, with each mark commencing select with a capital “S” followed by a lower case “...elect”. Additionally, the word element of the opponent’s mark is wholly contained in that of the applicant.

Ms Brittain submitted that the idea conveyed by the applicant’s mark was very similar to that conveyed by the opponent’s marks, especially the select/tick mark. The select/tick mark also incorporates a device that could be described as a tick.

It was submitted that having regard to the imperfect recollection of ordinary consumers and the close resemblance of the marks, the impression created by the marks is the same. The “e” prefix was said to have a low level of distinctiveness and there would be a likelihood of confusion in relation to the designated services.

Having considered the opponent’s submissions and relevant authorities, I find that the applicant’s mark is deceptively similar to the opponent’s select/tick mark (606036). I agree that the use of the word select along with a tick device in both marks is likely to deceive of cause confusion. However, I do not find that the applicant’s mark is deceptively similar to the opponent’s select/apple mark. In this latter mark, the apple and sun device creates a much different impression, and I am not satisfied that consumers with imperfect recollection would be deceived or confused.

Having found that the opponent’s registration 606036 is deceptively similar to the applicant’s mark, it is now necessary to determine whether the opponent's trade mark are registered in respect of similar services.

Ms Brittain submitted that because the opponent’s convenience stores provided facilities for the use of its Shellcard and Shell Mastercard and automated telling machines. On the basis of these “ancillary financial services” it was submitted that services covered by the application (particularly financial and monetary affairs) are similar services to the wholesaling and retailing services relating to convenience stores covered by the opponent’s registration 606036.

I am not satisfied that consumers seeing the services under the deceptively similar marks would expect a common trade source. Notwithstanding the fact that wholesaling and retailing services relating to convenience stores involve money and credit cards, it is not accurate to characterise such services as being similar or the same as monetary affairs and financial affairs.

I therefore dismiss this ground of opposition.

Ground 3 - Section 60

Section 60 reads:

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.

To be successful under section 60, the opponent must show the existence of a trade mark that is at least deceptively similar to the applicant's mark, demonstrate that the pre-existing trade mark had a reputation in Australia before the priority date of the application, and that because of that reputation, deception and confusion are likely to occur.

I have already determined that the opponent’s registration 606036 is deceptively similar to the applicant’s mark. That mark pre-existed the applicant’s registration.

The opponent, in its first declaration, states that the select/tick mark was first used in Australia in September 1993. However, the remaining evidence in the declarations refers to the select “brand” generally. There is no evidence differentiating between the select/tick mark and the select/apple mark. Additionally, no sales or advertising figures have been provided in respect of the select/tick mark, and there is no other material from which I can determine the extent, if any, of the opponent's reputation relating to the select/tick mark as at the relevant priority date.

In the absence of specific evidence, I cannot be satisfied that the applicant has gained the requisite reputation in the select/tick mark before the priority date of the applied-for trade mark.

I find that the opponent has not established this ground of opposition.

Decision

The opponent has not established any of its grounds of opposition. I therefore dismiss the opposition. Subject to the payment of the requisite fees and the expiration of six weeks from the date of this decision, the applicant's trade mark may proceed to registration.

Costs

The opponent sought its costs in this matter, while the applicant made no submissions regarding costs. I make no order as to costs.

Jock McDonagh

Hearing Officer

Trade Marks Hearings

16 December 2002