Smart Home Products Pty Ltd v Danielle Gaye Attard and Shane Edward Attard

[2009] ATMO 64

TRADE MARKS ACT 1995

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

Re:Opposition by Smart Home Products Pty Ltd to registration of trade mark application 1185626(35) - BISTRO BLINDS & device - filed in the name of Danielle Gaye Attard and Shane Edward Attard.

Delegate:

Jock McDonagh

Representation:

Opponent: Benjamin Fitzpatrick of counsel instructed by Davies Collison Cave Patent & Trade Mark Attorneys

Applicant: no appearance

Decision:

2009 ATMO 64

Section 52 opposition section 44 – marks deceptively similar – closely related goods and services - registration refused - costs awarded against applicant

Background

1. Danielle Gaye Attard and Shane Edward Attard (‘the applicants’) filed an application to register a trade mark, current details of which appear below:

Application number:  1185626

Filing date:  5 July 2007

Specifications:  Class: 35 Retailing of goods (by any means); wholesaling of goods (by any means); discount services (retail, wholesale, or sales promotion services); import-export agency services; distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); advertising; marketing

Trade mark:  

1. The trade mark was accepted for possible registration, under the provisions of the Trade Marks Act 1995 (‘the Act’), and advertised for opposition purposes. Smart Homes Pty Ltd (‘the opponent’) filed a Notice of Opposition under section 52 of the Act, objecting to the registration of the trade mark. The opponent served and filed evidence in accordance with the Trade Marks Regulations 1995 after which the matter was set down before me, a delegate of the Registrar of Trade Marks, for a hearing on 28 May 2009, in Melbourne. 

Evidence

1. The only evidence filed and served pursuant to the Act is a declaration by David Smith, the General Manager of the opponent, dated 5 June 2007. The evidence is to the effect that:

• the opponent created the trade mark BISTRO BLINDS for use with plastic outdoor see-through blinds in 2002.

• the opponent registered 944730 BISTRO BLINDS as a trade mark from 21 February 2003 in class 19 (Sheeting, partitions, panels, screens, outdoor blinds, roll-up blinds; all including those made from plastic or PVC to protect against wind, rain, sun, snow, dirt, pollution or debris; non-metallic building materials).

• since November 2002, the opponent has considerable sales in goods bearing the trade mark.

The Hearing

1. The opponent was represented by Benjamin Fitzpatrick of counsel instructed by Davies Collison Cave Patent & Trade Mark Attorneys. The applicant did not appear at the hearing and did not provide written submissions.

2. The Notice of Opposition cited most grounds of opposition available to the opponent under the Act; however, at the hearing the opponent relied upon only those under sections 44 and 60. For the sake of completeness, I treat the remaining grounds of opposition as having been abandoned.

Discussion

1. I shall deal with the two grounds of opposition in the same order as they were dealt with at the hearing.

Section 44 – Identical etc Trade Marks

1. The relevant parts of section 44 provide:

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.

1. Deceptive similarity is defined in section 10 of the Act as follows:

Definition of deceptively similar

10. For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

1. To establish the section 44 ground, the opponent must establish all of the following:

• at the priority date

• there was a substantially identical or deceptively similar trade mark application or registration

• in respect of similar services or closely related goods

• in the name of a person other than the applicant.

1. The opponent nominated its registration 944730 for this ground.  This registration has an earlier priority date than the applicant's trade mark, namely 21 February 2003.

2. My attention was drawn to the proposition that the test for deceptive similarity is not whether customers might think that the marks are the same, but rather whether there is a real risk that, because of the use of the opposed mark a significant number of people will be caused to wonder whether the goods/services come from the same trade source: Southern Cross Refrigeration Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, at 594, 595.

3. Counsel for the opponent further submitted that a mark would be found to be deceptively similar to another mark if it takes a prominent and distinct feature of that mark: Seven-Up Co Inc v Bubble Up Co Inc (1987) 9 IPR 259, De Cordova v Vick Chemical Co (1951) RPC 271, Saville Perfumery Ltd v June Perfect Ltd & Anor (1941) 58 RPC 147 and Polaroid Corp v Sole Pty Ltd [1981] 1 NSWLR 491 at 497-498.

4. The opponent submitted that the prominent and distinctive feature of the opposed mark is “BISTRO BLINDS”; the remaining words being descriptive, as is the logo. It was submitted that, given the imperfect recollection of consumers, the marks are deceptively similar to each other.

5. In considering the similarity or otherwise of the opposing marks, I have taken the statutory definition into account as well as the judicial authorities cited by the parties, including those I have mentioned above.

6. Having also considered the evidence filed and served by the opponent, I am satisfied that the applicant’s trade mark is deceptively similar to the opponent’s cited mark. I consider that there is a real risk that a number of persons will be caused to wonder whether it might not be the case that the applicant’s services and the opponent’s goods come from the same source: Southern Cross Refrigerating Co, supra.

7. The remaining issue under this ground is whether or not the applicant's services are closely related to the opponent's goods. 

8. The opponent correctly pointed out that there has been little detailed analysis by the courts on the question of services closely related to goods. Further that in Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co (1983) 1 IPR 265 (“Caterpillar”), Lockart J provided some examples of goods closely related to services, but did not suggest any particular tests. Counsel submitted that in Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 (“Metro”), French J noted that because goods and services are different things, the term “closely related” must mean more than just similarity, as in “similar goods” and “similar services”.

9. Mr Fitzpatrick referred me to the decision of Hearing Officer Iain Thompson in Re Aussat Pty Ltd’s Application (1993) 27 IPR 309 (“Aussat”), which suggested the required tests must lie in the adoption of criteria against which to judge the relationship. At 311, Hearing Officer Thompson suggested the criteria should include (inter alia):

   ·     are the services performed directly upon or by means of the goods? if so,

·     are the goods and services generally regarded by the ordinary consumer as originating in, or being part of, the one industry or trade, or, a closely related trade or industry? 

·     is the nature of the goods or the service such that they would cease to exist without each other, thus creating an expectation of a common source?

·     does the service consist of altering, matching and/or installing the goods to a customer's or client's requirements?

·     are the goods and services commonly offered by the one company or organisation? 

1. Counsel submitted that the nature of the mark itself clearly indicates that the applicant’s services will be directed to blinds – to do otherwise would risk misdescription.

2. Mr Fitzpatrick stated that, in light of this, applying the Aussat criteria, there could be no doubt that the respective goods and services are closely related. The services relate directly to the goods: goods being blinds and the services being retailing and wholesaling (etc) of blinds.

3. I agree with the argument as presented by Mr Fitzpatrick. Indeed, in Metro, supra, French J said of the relationship between goods and closely related services:

   “The relationship may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them.”

4. Justice French noted that the above is consistent with the relationships considered in Caterpillar. Examples of this kind of relationship include the retail and wholesale services and timber lattice, trellis, fencing panels and gazebos: Conde Nast Publications Pty Ltd v Margo Pty Ltd (1994) 28 IPR 374.

5. In this case, I particularly note that the wholesale of blinds is often conducted by a manufacturer of such goods. As far as I am aware, and this is suggested in the Smith declaration, there is a significant likelihood that an entity that wholesales blinds will also be the manufacturer.

6. I am satisfied that the opponent has established the section 44 ground of opposition.

Section 60 - Prior reputation

1. Having found in favour of the opponent in terms of section 44 there is no need for me to discuss this ground; however, this ground or any others in the Act may also be relied on in the event of an appeal of this decision.

Decision

1. Subsection 55(1) of the Act provides:

   (1)      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.

2. The onus is upon the opponent to establish one or more of its grounds of opposition. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 44 argued at the hearing. Accordingly, I refuse to register trade mark application 1185626.

Costs

1. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the applicant.

Jock McDonagh

Hearing Officer

Trade Marks Hearings

17 August 2009