Shimmersea (Aust) Pty Limited v SPL Worldgroup (Australia) Pty Limited

[1998] ATMO 64

TRADE MARKS ACT 1995

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

Re:Opposition by SPL Worldgroup (Australia) Pty Limited to trade mark application number 647304.

Trade mark number 647304 was filed on 2 December 1994 by Shimmersea (Aust) Pty Ltd of Artarmon, New South Wales (hereafter Shimmersea).  The trade mark consists of the letters SPL as shown below.

On 12 June 1997, in the Official Journal of Trade Marks, the Registrar published the acceptance of this trade mark for registration in respect of  computer printers in class 9, and reselling of computer hardware in class 42.

With advertisement of acceptance, a trade mark application is, for three months, open to opposition, and within that time, SPL Worldgroup (Australia)  Pty Limited (hereafter SPL Worldgroup) filed an opposition citing various grounds, including:

i.The Applicant is not the owner of the trade mark for which registration is sought.

ii.The trade mark, registration of which is sought in the said application, is substantially identical with or deceptively similar to the following registered trade marks, and the goods in respect of which registration is sought are similar to the goods in respect of which the following trade marks are registered by us [SPL Worldgroup].

NUMBER   CLASS  SERVICES.

398704	42	Computer software and systems services; system design and development services
463986	42	Computer software and systems services; system design and development services; consulting services for the provision of computer software packages for financial and business modelling
640424	42	Computer software and systems services; system design and development services; consulting services for the provision of computer software packages for financial and business modelling

SPL Worldgroup duly served and filed evidence to support its opposition.  It consists of a single declaration by Lewis John Folb - a managing director of SPL Worldgroup.  There was no evidence from Shimmersea and, in July 1998, Baldwin Shelston Waters, a Sydney firm of patent and trade mark attorneys acting on behalf of SPL Worldgroup, asked that the matter of the opposition be set down for hearing.  The Registrar appointed a hearing time in Sydney for 14 October 1998. This hearing took place before me.  The opponent, SPL Worldgroup, was represented by Mr Ken McInnes of Baldwin Shelston Waters.  No representations, either in person or in writing, were made on behalf of the applicant, Shimmersea.

Major issues

Mr McInnes' submissions were directed to the two grounds set out above  - first, that Shimmersea is not the owner of the trade mark; and second, that  the application trade mark is substantially identical with or deceptively similar to the SPL Worldgroup’s trade mark 640424,  and the application goods and services, namely computer printers in class 9, and reselling of computer hardware in class 42, are closely related goods and similar services to the services of 640424 -  computer software and systems services; system design and development services; consulting services for the provision of computer software packages for financial and business modelling. Although Mr McInnes focussed his attention on SPL Worldgroup’s trade mark 640424, his submissions extend to 398704 and 463986.  I do not think the absence of an explicit reference to services in the notice of opposition, is material.

Ownership - section 58

The SPL Worldgroup trade mark 640424, , was filed on 12 September 1994. This pre-dates the filing of the subject trade mark, , by some three months. According to Mr Folb, SPL Worldgroup has used 640424 “on a global basis” since early 1994.   Shimmersea does not in any way contest this claim.

Mr McInnes acknowledges that the lettering style used in these marks is simple and conventional.  Nevertheless, he says,  the style is bold and crisp and has considerable visual impact. Comparing the lettering in the two marks, he points out that although they are not identical, the form of the individual letters - particularly the slight elongation apparent in the letters “P” and “L” - shows a striking similarity. As a result, he says,  the dominant features of each mark, the letter group SPL, look almost exactly alike. Mr McInnes acknowledges that there are some differences in the make-up of each of the marks, but he argues, with the same letter group in a similar and distinctive form dominating each mark, and with so little to differentiate them, the two marks should be held to be substantially identical.   He submits further that this degree of similarity could hardly be put down to mere coincidence.

This first ground of opposition relies on section 58 of the Trade Marks Act1995 which reads:

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

Ownership depends on a combination of authorship and first use and, as per Shell Co. (Aust.) Ltd v Rohm and Haas Co., (1949) 78 CLR 601, may be claimed either on the basis of use of the trade mark in relation to the nominated goods or services, or on the basis of the making of an application for registration. Such a claim will only succeed in displacing a trade mark application, however, where the opponent can show that the trade mark it relies upon is substantially identical with the mark in suite. In Carnival Cruise Lines Inc v Sitmar Cruises Ltd.,  (1994) AIPC 91-049 at 38,114, and with reference to the Trade Marks Act 1955,  and to Shell Co. (Aust.) Ltd v Rohm and Haas, Gummow  J. says:

[Shell v Rohm and Haas] does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice. The phrase "substantially identical" … was discussed by Windeyer J. in The Shell  Company of Australia Limited v Esso Standard Oil (Australia) Limited (1961-1963) 109 CLR 407 at 414. It requires a total impression of similarity to emerge from a comparison between the two marks. ...

In order for SPL Worldgroup to succeed on the section 58 ground it is therefore necessary for me to find that SPL Worldgroup has prior use of a trade mark which is the same, or substantially the same, as the application mark.

On the question of first use there is no debate.  SPL Worldgroup’s trade mark predates the subject mark. It is also able to point to use of 640424 in the market within the year 1994.  There is no evidence of any use to support the application mark.

640424 and the application mark are not, however, identical.  The principal difference between them is that 640424 contains a serrated disc device (which the application mark does not) and the application mark contains a reflected image of the letters SPL (which 640424 does not). 

640424  647304        

On a side by side comparison, the letters SPL in bold sanserif print, clearly show as the principal feature of each mark. The differences, however, are obvious and immediately apparent. The serrated disc device in the SPL Worldgroup mark is significant enough to be considered a distinctive element in its own right; so too are the group of reflected images in the application trade mark.  Moreover, although the fonts used in the marks have a great deal in common, they are not the same .  This is particularly apparent in a comparison of the two versions of the letter “S”.  Further, the letters in the Shimmersea trade mark are not joined.  All told, I consider there is sufficient difference between these marks for me to hold them not substantially identical.   

On that finding, in accordance with the directives of Gummow J in Carnival Cruises (supra), the section 58 ground fails.

The Section 44 ground

The section 44 ground is based on 640424 and, in addition, 398704 and 463986 are cited. The latter two marks also have a priority date earlier than Shimmersea’s trade mark. As detailed above, they are registered for a range of computer services.

398704  463986

Mr McInnes’ submissions concerning the section 58 ground and substantial identity hold good in respect of deceptive similarity. In short, he says that the principal features of the SPL Worldgroup’s trade marks are the letters SPL - that these same letters constitute the principal component of the subject trade mark, and, moreover, that the style of the application mark emulates the style of 640424.

Mr McInnes then points to the goods and services claimed in Shimmersea’s application.  Computer printers - the goods nominated by Shimmersea - are, says Mr McInnes, an integral part of computer systems, and printer functions are commonly a component of software packages. Printer services would therefore be included in the services described in the SPL Worldgroup specifications. Reselling of computer hardware, he says, encompasses the second-hand trade, but further, includes any of the transactions that occur in the course of distribution.  Retailing, he submitted, would come within the broad description reselling.

Section 44 of the Trade Marks Act1995, so far as it is relevant, reads:

44.(1)     … 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; …. 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.

(2)   … 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; …. 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 goods or closely related goods.

For the section 44 ground to be made out, SPL Worldgroup must establish that the cited marks have an earlier priority date; it must successfully address the question of the similarity of the marks; and it must demonstrate a closeness between the goods and/or the services nominated in those marks. The priority date is not in issue. Substantial identity I have already dismissed. I therefore turn to deceptive similarity and then to the goods and services.

The test for assessing deception and confusion is set down by Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S. Walton & Co. Ltd, 58 CLR 641 at 658.

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, their 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.

Deceptive Similarity

I agree, at the outset, with Mr McInnes that the features of the Shimmersea’s application trade mark and 640424, taken together with the common style elements, do indeed seem more than would normally be expected in terms of coincidence. Intent, however, is not an issue in terms of section 44 and I give that matter no weight.

The relevant facts are that Shimmersea’s application mark, , and 640424 ,  both essentially consist of the three letters SPL rendered in bold, slightly elongated, sanserif letters. To my mind, the impression that the application mark is likely to produce on the mind of a potential customer who knows of the SPL Worldgroup marks,  is an impression that the trade marks indicate a common source. These trade marks have so much in common that even if the customers have an opportunity to compare them, they are likely to conclude that both indicate the one trade source. The two earlier SPL Worldgroup marks, 398704 and 463986, have a different presentation style, but in terms of a spoken description, all four marks would be named simply as “SPL”. There is no obvious alternative and, indeed, I think even a well informed, careful and discerning  customer would be hard pressed to name these marks in any other way.  In terms of the ordinary purchasers of computer goods and services, there are, however, a significant number of customers who will not be so well informed.  It is common knowledge that many inexpert households and businesses, who are little more that first-time users, purchase computer systems and computer printers and engage computer services. These ordinary customers have only a superficial acquaintance with the computer industry. It is true that the purchase of computer goods and services involves significant outlays.  However, despite significant outlay, in the current circumstance, I believe it is likely that ordinary customers will be deceived or confused if, in the face of the opponent’s three SPL trade marks, the Shimmersea SPL mark appears on computer goods and services.

Applying the tests of the Australian Woollen Mills case to the facts of this opposition, I find  that the application trade mark is deceptively similar to the three marks cited by SPL Worldgroup’s notice of opposition.

Goods and Services

The tests for same goods, and goods of the same description, are long established.   The test for comparison between goods and services has been less considered.  Nevertheless, the principles are settled.  As per Shanahan D.R., in Australian Law of Trade Marks and Passing Off,  Law Book Company, Sydney, 2^nd edit, 1990 at p191:

The expression “goods of the same description” is … a term of art, implying a relationship between goods such that they would be seen by purchasers as having the same trade origin if sold under deceptively similar marks. … The question is one of fact to be looked at from a business and commercial point of view in the light of principles laid down by the courts.

These principles, in the main, hark back to criteria established by Romer J. in Jellinek's Application - the Panda case - (1946) 63 RPC 59. His Honour identified three tests - first, the nature of the goods; second, the purpose for which those goods are to be used; and third, the trade channels through which the goods are bought and sold. No one of these factors in itself is likely to be determinative - the questions must be looked at in toto and, as Mr Shanahan points out, from a realistic business and commercial point of view. In considering whether goods and services are closely related, the same general principles apply - they too must be considered in realistic business terms on their nature, their purpose, and the trade channels via which they come to the end user. The objective is to determine whether the public are likely to perceive the respective goods and/or services as coming from a single business or from economically- linked undertakings.

I turn now to the issues of whether the Shimmersea goods - computer printers,  and its services - reselling of computer hardware, should be held closely related to, or similar to, the services of the three SPL Worldgroup registrations. The services computer software and systems services; system design and development services are common to all three of those marks. I do not need to deal with the additional services nominated in 463986 and 640424.

First then, considering and comparing computer printers with computer software and systems services; system designs and development services in relation to their respective natures, purposes and trade channels. Computer printers link into computer systems by means of both software and hardware and, by nature, computer software and systems services; system designs and development services are services which offer expertise that extend to the printing components of a computer system. The purpose of computer software and systems services; system designs and development services is, inter alia, to maintain and develop the printing facilities in computer networks.  The trade channels through which a person obtains computer software and systems services; system designs and development services are frequently one and the same as the trade channel through which one obtains computer printing hardware.  It is commonplace to find dealers advertising a catalogue of options under a heading such as “Hardware, Software, Services, Support and Network Solutions”.  On all three counts, then, I find that computer printers  are closely related to computer software and systems services; system designs and development services.

Second, considering and comparing reselling of computer hardware with computer software and systems services; system designs and development services in relation to their respective natures, purposes and trade channels.   As I mentioned, Mr McInnes has put it to me that the description reselling of computer hardware  extends well beyond second-hand sales.  He says that distribution incorporates a sequence of transactions which fall within the definition of reselling, and that this includes retailing.  I think that he is probably right.  However, for the purpose of this exercise I confine the comparison to second-hand dealing. Comparing then the respective natures of the services of, on the one hand,  reselling of computer hardware and, on the other, computer software and system services; system design and development, again I find that they are closely related.  The daily press, the Yellow Pages, and the suburban weeklies regularly publish advertisements of enterprises selling second-hand computer hardware and offering installation, set-up, maintenance, training and support.  By nature, selling and computer software and systems services; system designs and development services complement each other and frequently go hand in hand.  They share the common purpose of providing for the needs of computer system operators. They do this not only through the same trade channels, but frequently through the same trade outlets.  Again, I find that reselling of computer hardware and computer software and systems services; system designs and development services are closely allied on all three criteria, and I consequently find that they are similar services.

The outcome of the Panda  tests is, therefore, that I find:

§  computer printers  are goods which are closely related to computer software and systems services; system design and development services,
and

§  reselling of computer hardware is a similar service to computer software and systems services; system design and development services.

The opponent then has established the section 44 ground. All of the marks it relies on, namely 398704(42), 463986(42) and 640424(42), have a priority date earlier than the application trade mark; all, I have found, are deceptively similar to the application trade mark, and all have services which I find are closely related to the goods, and similar to the services of the application mark. I find, therefore, that in terms of the section 44 ground, the opposition succeeds.

Decision

SPL Worldgroup has not made out its opposition in terms of the section 58 ground. It succeeds, however, on its section 44 ground. I therefore refuse to register trade mark application 647304.

Costs

Mr McInnes sought costs which, in accordance with the authority of sections 202 and 221, I award to SPL Worldgroup in the amounts provided for in the Regulations.  As per regulation 21.13 costs must be taxed, allowed and certified by an officer appointed by the Registrar for that purpose.

Helen R. Hardie
Deputy Registrar

10 December 1998