Slumbertrek Australia Pty Ltd, Paul Schwarz and David Schwarz v Structure Imports Pty Ltd

[2001] ATMO 110

TRADE MARKS ACT 1995

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

Re:Opposition by Slumbertrek Australia Pty Ltd, Paul Schwarz and David Schwarz to registration of trade mark application 812225(20, 24) - THE SCIENCE OF SLEEP, SLUMBERTECH- filed in the name of Structure Imports Pty Ltd.

Background

Trade mark application number 812225 is an application to register the words The Science of Sleep, Slumbertech and device, which appears below, in class 20 for cushions and pillows and class 24 for Quilts, throw rugs, blankets, underblankets, sheets, pillowcases, comforters, towels, pillow protectors, mattress protectors, quilted eiderdowns. The application was filed on 2 November 1999 ("the relevant date") by Structure Imports Pty Ltd of 140 Swan Street, Richmond, Victoria ("the applicant"). 812225 was duly examined and, on 17 August 2000, the Registrar advertised, in the Australian Official Journal of Trade Marks, that he accepted this trade mark for registration.

On 7 December 2000, in accordance with Part 5 of the Trade Marks Act 1995 ("the Act"), Slumbertrek Australia Pty Ltd ("the opponent"), and Paul Schwarz and David Schwarz, filed opposition to the registration of 812225 and, in their notice of opposition, nominated two grounds, relying on ss44 and 60 of the Act.

The opponent served on the applicant, and filed with the Trade marks Office, a statutory declaration by Paul Alexander Schwarz. This constitutes the evidence in support of the opposition.

The applicant served on the opponent, and filed with the Trade marks Office, a statutory declaration by Stephen Henry Wilson. This constitutes the evidence in answer to the opposition.

Pursuant to the provisions of regulation 5.14(2)(c), the opponent requested to be heard by telephone link up. The Registrar appointed a hearing for 8 August 2001, in Canberra. The hearing was conducted before me by telephone conference with the representatives of the parties. The opponent was represented by Matthew Hall, of Deacons Solicitors of Brisbane.  The applicant was represented by Stephen Wilson of Griffith Hack Patent and Trade Mark Attorneys of Melbourne.

The Evidence

The opponent's evidence in support is a statutory declaration by Paul Alexander Schwarz dated 13 March 2001. Mr Schwarz, with his son David Schwarz, is a co-owner of trade marks 667184 (class 24 Textiles and textile goods including sleeping bags, bed linen, bed and table covers, quilts, blankets) and 664185 (class 20 Furniture including camp mattresses, sleeping bags, camping furniture, outdoor furniture, cushions, pillows)- Slumbertrek Australia and device. These trade marks are licensed to Slumbertrek Australia Pty Ltd, a company founded by Paul Schwarz and advised by him. The opponent's trade mark is shown below.

The opponent manufactures sleeping bags and quilts, and is involved through an associated company in the manufacture of camping furniture, rucksacks, canvas packs, and outdoor and camping equipment including tents, tent flies and tarpaulins.

The opponent sells sleeping bags bearing the SlumberTrek mark to retail chains Big W and KMart, and has done so since 1995. The opponent has appointed a distributor to sell the opponent's goods to other retail stores.

The opponent has used the SlumberTrek mark on letterhead, business cards and other promotional and marketing material. Examples exhibited included:

• Signage at the opponent's business premises using the SlumberTrek mark,

• Sleeping bag label using the SlumberTrek mark,

• "Swing Tag" attached to sleeping bag using the SlumberTrek mark,

• Signage at a display of the opponent's quilts and sleeping bags using the SlumberTrek mark,

• A catalogue produced by L.E. Whittaker & Sons advertising products including sleeping bags bearing the SlumberTrek mark,

• An advertisement for the opponent's sleeping bags using the SlumberTrek mark, and

• An article in "Outdoor Australia" including a review of the opponent's Challenge 402 sleeping bag.

The opponent provided details of sales of sleeping bags and quilts, from Financial Year 1995/96 ($130,000) to the Financial Year 2000/01 ($1,326,800 as at the date of the declaration).

The opponent's sleeping bags have been featured as prizes on the television shows "Sale of the Century" and "Wheel of Fortune". The promotion of the opponent's goods usually takes the form of a camping scene in which models display the opponent's sleeping bags.

The applicant's evidence in answer is a statutory declaration by Stephen Henry Wilson, Patent Attorney dated 15 June 2001. The declaration states that a search of the Trade Mark Office records relating to classes 20 and 24 relating to beds and bed wear was made The results that included trade marks with the word "slumber" are exhibited with the declaration. There are 25 such marks, including those of the applicant and the opponent.

Submissions, Considerations and Findings

The Section 44 Ground

Section 44 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.

(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) 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 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.

In terms of subsections 44(1) and (2), the initial issues for me to determine are if:

·     the goods and services in question are, respectively, closely related or similar

·     the trade marks at issue are substantially identical, or deceptively similar

·     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.

The opponent submitted that the goods of the opponent were the same as or similar to the applicant's goods. Quilts and blankets (registration 667184) and cushions and pillows (registration 667185) were said to be the same goods as those specified in the applicant's application. All other goods were said to be similar, being textiles or textile goods including those that can be described as bed linen or bed and table covers.

The applicant submitted that its good were not of the same description as those of the opponent. Specifically, the applicant stated that the goods of registration 667185 were said not to be of the same description as those included in the class 20 specification of the application. The goods in registration 667184 were said not to be of the same description as pillow protectors and mattress protectors.

However, it is quite clear that the Quilts, throw rugs, blankets, underblankets, sheets, pillowcases, comforters, towels, pillow protectors, mattress protectors, quilted eiderdowns of the application claim overlap with the bed linen, bed and table covers, quilts, blankets of the 667184 statement, and accordingly I find the goods of these two marks to be similar.

Both parties submitted that the test for substantial identity was that propounded in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 ("Shell") per Windeyer J at 417, that the marks should be compared side by side for this test.

The opponent submitted that the suffixes of the marks are visually and phonetically similar. The sound of each mark is not distinct from the other. Looked at side by side, each mark would be seen by a reasonable observer as substantially identical.

The applicant highlighted the differences between the two marks.

Both parties considered that the key issue was that of deceptive similarity. Both pointed to the well established considerations of imperfect recollection and common net impression of the marks, referring to Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 ("Woollen Mills").

The opponent submitted that the distinctive parts of the respective marks were SLUMBERTREK and SLUMBERTECH respectively. The words are invented words with no ordinary English meaning. I was invited to give lesser regard to the other words and the devices in the marks. It was submitted that potential buyers would refer to the source of the respective goods simply as "Slumbertrek" and "Slumbertech".

The opponent stated that both trade marks included the word "slumber", which was neither distinctive nor capable of distinguishing the relevant goods. The opponent accepted that there were many trade marks incorporating the word "slumber". This, it was submitted, also supported the contention that the word was not distinctive of the goods.

The suffixes for each trade mark was "Trek" and "Tech", respectively. The opponent submitted that there are cases where the suffix or ending of a mark is important in determining deceptive similarity. Cases in which this was important include where the prefix is an ordinary English word, and where both words are unusual and the ends of them sound similar. Here, the ends of each word- "trek" and "tech" sounded similar and confusion could occur, especially if words were slurred.

The opponent referred to the following authorities:

Re London Lubricants (1920) Ltd's Application (1925) 42 RPC 264 (distinguished)

Re Trade Mark "Cameo" (1974) 1 NZIPR 1 (Distinguished)

Hoover Co (Australia) Pty Ltd v Spackman (1999) 44 IPR 167

Reebok International Ltd v JH Import-Export Co (1998) 40 IPR 535 (Distinguished)

The applicant's submissions canvassed similar principles of comparison as the opponent. As well as Shell and Woollen Mills, the applicant pointed to Jafferjee v Scarlet (1937) 57 CLR 115 to support the proposition that the idea conveyed by the marks must be considered when deceptive similarity is determined. This case related to device marks, but the applicant contended that the doctrine also held true for word marks.

Relying on a line of authorities commencing with Payton & Co Ltd v SnellingLampard & Co (1900) 17 RPC 48 ("Payton"), and including Coca Cola Co (Canada) Ltd v Pepsi-Cola Co (Canada) Ltd (1942) 59 RPC 127 ("Coca Cola"), the applicant submitted that when considering trade marks that include parts common to the trade, the part that is common to the trade must be to some extent discounted in determining whether the marks are deceptively similar.

The applicant argued that "slumber" was the part common to the trade and that should be discounted. This, it was submitted, left the words "Trek" and "Tech, the Science of Sleep" respectively. "Trek" has a well-known and definite meaning, as have "tech, the Science of Sleep". It was submitted that the words "trek" and "tech" have quite different meanings, and are quite different in appearance and sound. In addition the addition of "the science of sleep" further distinguished the marks.

Having found the goods to be similar, I now turn to the issue of whether the trade marks in question are substantially identical or deceptively similar.

In Shell, supra, 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 mark alongside the opponent’s registered trade mark, I am unable to conclude that the marks are substantially identical. The opponent's mark comprises the word Slumbertrek in light print within a dark rectangle with rounded ends above the word AUSTRALIA. The applicant's mark comprises the words The Science of Sleep in a wavy line superimposed above the word Slumbertech. The words are all in light print and within a dark rectangle. I think it is quite clear that these marks are not substantially identical. I note that in Hoover Co (Australia) Pty Ltd v Spackman, supra, the word marks Hoover and Hoovex were held not to be substantially identical.

The tests for deceptive similarity lie in the words of Windeyer J in Shell:

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.  To quote Lord Radcliffe again (de Cordova v Vick Chemical Co (1951) 68 RPC 103; at 106; 1B IPR 496; at 499):

The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him…It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.

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.

Further, the commercial and other surrounding contexts of the comparison must be considered and some rules of the comparison of trade marks apply: Parker J (as he then was) in Re Application by the Pianotist Co Ltd 1A IPR 379 at 380; (1906) 23 RPC 774 at 777), 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. If, considering all those circumstances, you come to the conclusion that there will be a confusion — that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods — then you may refuse the registration, or, rather, you must refuse the registration in that case.

Concerning deceptive similarity, in Registrar of Trade Marks v Woolworths (1999) 45 IPR 411, at paragraph 50, French J said:

In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (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) 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."

The respective impression or recollection that is carried away and retained in respect of these two trade marks is, I think, likely to be quite different. It is true that both marks prominently feature words commencing with the word "slumber" and the suffixes rhyme and are similar. It is also true that both devices comprise contrasting lettering on a dark background. However, apart from that the marks are quite different in style and content.

The opponent's mark is quite simple and distinct. The word SlumberTrek is the dominant feature of the mark. It is, with the words "slumber" and "trek", quite suggestive of the opponent's goods - camping equipment and sleeping bags. The additional word, "Australia", is purely descriptive and I give it no weight for trade mark comparison purposes. I note that it does not appear in examples in the catalogue exhibited by the opponent.

On the other hand, the applicant's mark is more complex. . The word Slumbertech is the dominant feature of this mark. While the words "slumber" and tech", in themselves, do not suggest much more than sleep, the additional words "the science of sleep" do modify the mark. The words suggest science and sleep, and the position of the words in the device is suggestive of a body lying on a mattress.

However, focussing on the words Slumbertech and SlumberTrek, I do not think that they are deceptively similar. Both words contain the prefix "slumber" and a suffix comprising a whole word. I accept the applicant's evidence that there are 25 marks in classes 20 and 24 including the word Slumber and that it is a word that is common to the trade. Therefore, the focus is on the other parts of the mark: see Payton and Coca Cola. I note that "tech" "trek" are complete words in their own right and are defined in both the Macquarie and Oxford dictionaries. I agree with both opponent and applicant that the suffix is the operative part of the respective marks. In my opinion, the respective suffixes are not so similar that they would be mistaken for each other, even if mispronounced.

I do not think that the opponent has shown that there is a real tangible danger of deception or confusion occurring. I note also that there have been no instances of deception or confusion included in the evidence before me.

I have considered the circumstances in which the relevant goods will be sold and the character of probable customers for the goods. The opponent produces what appears to be high quality camping equipment. The goods are not cheap; for example the sleeping bag reviewed in Outback Australia (Annexure L to the Schwarz declaration) costs $149. Prospective customers are likely to be relatively discerning in their selection. I do not consider that there is a real likelihood that some people will be left in doubt about the source of the goods.

As I have found neither substantial identity nor deceptive similarity, I find it unnecessary for me to determine the other issues for this ground.

I find that this ground of opposition is not made out.

The Section 60 Ground
Section 60 reads:

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:

1. a pre-existing trade mark;

2. substantial identity or deceptive similarity between the applied for trade mark and the pre-existing trade mark;

3. the acquisition of a reputation in Australia by the pre-existing trade mark; and

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

As I have already found that there is neither substantial identity nor deceptive similarity between the marks, I find that this ground also fails.

Decision and Costs

The opponent has not established any of its grounds of opposition. I therefore direct that the applicant's trade mark be registered unless, within one month from the date of this decision, the Registrar is served with a copy of a notice of appeal. In such a case, I direct that registration be deferred until the appeal is decided or discontinued.

As to costs, I direct that the opponent pay the costs of the applicant in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

Jock McDonagh
Hearing Officer

5 November 2001