Sogo Co Limited v Vamuta Pty Limited Trading as Sogo Jewellers

[1995] ATMO 15

TRADE MARKS ACT 1955

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

Re:Opposition by VAMUTA PTY LIMITED, trading as SOGO JEWELLERS, to registration of trade mark applications number 504071 and 504073 in the name of SOGO CO LIMITED

Background

Applications number 504071 and 504073 were lodged, on 2 February 1989, in the name of SOGO CO LIMITED (the applicant).  The applications were for registration of the word SOGO, and the mark as shown below, respectively, for the statements of services, "Retailing and wholesaling services pertaining to department stores", and "Retailing and wholesaling services relating to department stores", respectively, in Class 42.  The marks were advertised as accepted in the Official Journal of 3 October 1991.

Notices of opposition to the marks' registration were lodged on 31 March 1992 by VAMUTA PTY LIMITED, trading as SOGO JEWELLERS (the opponent). The opposition was based on multiple factors but the main ground, as pursued at the hearing in the matter, related to s.40, that the applicant was not the proprietor of the trade marks and was therefore not entitled to apply for registration. Counsel for the opponent said that his client wished to place on record objections under s.28 but would not pursue those matters at the hearing because it felt constrained by the Office's interpretation of the relevant precedent case law that paras. (a) and (d) of s.28 should be read concurrently.

The evidence

The service and lodgment of the opponent's and applicant's respective evidence in support, answer and reply in the matter were completed on 17 October 1994.  The evidence comprised:

Evidence in support

*Statutory declaration by Yean Yun Chao Lee dated 21 September 1992 (first Lee declaration) and Annexures A to H.

Evidence in answer

*Statutory declaration by Terumori Ashida dated 23 June 1994 and exhibits A to Z, and AA to PP.

*Statutory declaration by Marianne Liebmann dated 6 July 1994

*Statutory declaration by Nicolas Alexander Tole dated 1 July 1994

*Statutory declaration by Mark Raymond Wilde dated 27 June 1994

*Statutory declaration by Michelle Georgette Shadler dated 29 June 1994

*Statutory declaration by Margot Elizabeth Lumsden dated 29 June 1994

*Statutory declaration by Katherine Janna Mott dated 5 June 1994

Evidence in reply:

*Statutory declaration by Yean Yun Chao Lee dated 6 October 1994 and attachments A and B (second Lee declaration)

In his first declaration, which comprised the evidence in support, Mr Lee, a Director and Chairman of the opponent, outlined the history of his company, and described the advertising and promotional material distributed by the opponent.  Attached to his declaration were various documents, including those relating to registration of the opponent's business names, photographs of a store operated by the opponent, copies of various guides and newsletters which carried the opponent's advertisements and which were seemingly aimed at Japanese tourists to Australia, and copies of credit card sales vouchers carrying the name "SOGO JEWELLERS".

The applicant's Representative Director and Senior Executive Director, Mr Ashida, in his declaration lodged as part of the evidence in answer, described his company's history and business, and listed the many shops it had opened in Japan and throughout the world which sold goods, including jewellery, under the present marks.  He said that the applicant was the leading department store group in Japan and he listed its sales figures by year in Japan and internationally.  He said that the applicant had purchased a building site in Sydney in 1989 with the, as yet, unfilled, intention of opening its own store there in 1992.  He said that the applicant had achieved a wide reputation for its marks in Asia, Europe and the U.S.A, and that Australian travellers would have been exposed to the marks in those places.  Included as exhibits to his declaration were historical and contemporary photos of Japanese and international stores bearing the marks, and various copies of promotional brochures, stationery, wrapping paper, newspaper articles and advertisements, magazines, guide books, promotional material and advertising copy all showing the applicant's marks in Japan and abroad.

The Liebmann, Tole, Wilde, Shadler, Lumsden and Mott declarations were all made by persons who declared that they knew of the applicant's use of the mark with respect to the department store services in various overseas locations.

The second Lee declaration formed the opponent's evidence in reply.  Mr Lee provided sales and advertising figures for the opponent from July 1988 to June 1994 and explained the reason for the opponent's choice of the word SOGO as a trade mark.

The matter was set down before me, as the Registrar's delegate, in Sydney on 27 February 1995.  The opponent was represented at the hearing by Mr Richard Cobden of Counsel, instructed by Baker & McKenzie.  Appearing on behalf of the applicant was Ms Isobel Parsons of Counsel, instructed by Corrs Chamber Westgarth.

Submissions

Mr Cobden said that the opponent would be relying upon s.40 of the Trade Marks Act in the present proceedings.  As I have previously indicated, he said that his client wished to place on record its objection under s.28 but would not pursue that matter at the hearing because of the Office's current practice in determining oppositions under that section.  This was where blameworthy conduct needed to be shown, in addition to the possibility of deception and confusion, to succeed in an opposition under that section.  He said that the opponent could not point to any blameworthy conduct in the matter and would therefore not proceed under s.28 at this stage.

He said that the opponent claimed that it had first used the mark in Australia for the appropriate services and was therefore the proprietor of the mark in this country.  He said that such use was shown in an advertisement in the Clocktower Square Newsletter, distributed in October 1988, annexed to the first Lee declaration, and in the October/November/December 1988 issue of Meat Pie, a magazine which was specifically targeted at Japanese visitors to Australia, and that this constituted use - Tait-Jamison v Alexander (1993) AIPC 91-020. Despite any claims to the contrary, such use was as a trade mark, the words OPAL and JEWELLERY only being used as descriptors. In addition, the opponent had submitted credit card vouchers showing use of the mark by it since 20 December 1988. All of this amounted to use, both as a trading style and also to distinguish the owner of the mark.

With respect to whether the jewellery services, which the opponent said that it had first provided under cover of the mark, and the department store services of the applicant could be considered to be the same for the purposes of s.40, Mr Cobden said that a broad view needed to be taken when referring to "retail services". The applicant's own broad references to its services as "retailing and wholesaling" supported this conclusion. He said that there had been no evidence lodged by the applicant to show it had used the mark in this country prior to, or after, the date of the present applications - 2 February 1989 - on any services. He said that the Ashida declaration did nothing to assist the applicant's claim of first use. Mr Ashida had said, in his declaration, that the former Walton's site in Sydney had been reportedly purchased by the applicant in April 1989 but nothing further seemed to have been done. In any event, such reporting was secondary evidence only and there was no actual evidence of use of the mark from that time. The only evidence of use, that had been lodged, had been regarding the applicant's activities in Japan and in other overseas locations. There was also nothing in the evidence to show that the applicant provided wholesale services at all, despite a claim from Mr Ashida that such services had been provided in Japan since 1877.

Mr Cobden continued commenting on the evidence, saying that all of the applicant's evidence related to overseas retail services and that none of the material indicated that there had been any provision of such services in Australia at any time.  He said that there was nothing regarding the applicant having Australian stores which provided the services claimed.  All of the magazines, brochures and other promotional material appeared to be directed at Japanese domestic and other overseas target audiences in South East Asian cities such as Singapore, Hong Kong and Bangkok, and none referred to activities in Australia.  The advertisements placed in in-flight magazines showing the applicant's mark, were also not sufficient to establish use in this country as the magazines were either only available on intra-Asian flights which did not include Australia as a destination.  There was also no information included on the distribution or circulation of these magazines.  He also said that much of the material was not relevant, in any event, as it post-dated the present application.  Any examples of advertising expenditure, shown in the Ashida declaration, were only expressed in Japanese currency and there was nothing to suggest that any of this advertising was seen in Australia.

Mr Cobden said that any claims that the applicant's overseas reputation would have reached Australia were not supported by any evidence.  Nothing had been produced to show any Australian activity by the applicant other than the article in the Financial Review which had reported the applicant's possible move to set up a store in that city.  This had not happened.  He said that the declarations submitted by the applicant to support its claim that the reputation of its use of the mark overseas had reached Australia amounted to a less than useful variety of survey evidence.  Survey evidence had been considered by the Registrar where such research was properly carried out - Kabushiki Kaisha Nakamura Seisakusho v Overseas Corporation (Australia) Ltd 14 IPR 613. In the present case, however, there were no details given of the questioning method, the selection of the candidates or whether there were any dissenting declarants. Mr Cobden said that the questions asked of the declarants were leading - a practice he said was frowned on by the courts. Such questions created artificial circumstances, which then promoted the notion of an association. This led declarants to make assumptions and give unbalanced responses. Therefore, the material should be given little weight. In any event, the dates that three of the declarants had said that they became aware of the applicant's use of the mark were after the relevant date. In contrast, the opponent has claimed it had first used the mark since mid-1988 and certainly from December 1988. He said that the rules regarding proprietorship had been well documented, most notedly in Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 and these criteria should be considered by the Registrar in coming to his decision.

In reply, Ms Parsons said that the opponent's claim of first use of the mark was not supported by its evidence.  Mr Lee, in his declaration, had claimed that the opponent had used the word SOGO in the Clocktower Square Newsletter in October 1988 to indicate that there was a jeweller at that location.  However, such an entry did not appear to be evident.  In any event, there were no details supplied of the distribution of either the Clocktower Square Newsletter or the magazine Meat Pie, alleged to carry advertisements for the opponent.  She was critical of much of the opponent's evidence, saying that the word SOGO had been used only in relation to the supply of opals in much of it and that it was difficult to assess what date that use was from, in any event.  She said that the four sales vouchers indicating the purchase of opals relied upon by the opponent to show use prior to 2 February 1989 showed the merchant's name as being "Sogo Jewellers, The Rocks".  However, there was no indication of what sign appeared on the opponent's premises, or what marking was used on the packaging, at that time.  She said that none of the evidence clearly showed that it was the opponent who had first used the mark.

Ms Parsons said that the Ashida declaration clearly outlined the history of the applicant's use of its marks since 1877 in Japan and later in other countries.  She said that, by the end of 1988, the applicant operated seventeen stores in Japan and four other stores in South-East Asia, all of which clearly displayed both of the marks applied for.  The applicant was the market leader for its services in Japan and had experienced a great leap in sales in its overseas stores in recent years, including those for jewellery items and watches.  She said that, although no stores had been yet opened in Australia, some moves had been made in relation to this and she cited the Financial Times article on the purchase of a store site in Sydney to support her claim.

With respect to the declarations, which Mr Cobden had alleged amounted to survey evidence, Ms Parsons denied that they were of little value, saying that they fairly represented the truth of the declarant's answers.  Some of the declarants who attested to knowledge of the marks' use in overseas cities had seen them before the opponent's claimed use in Australia.

Ms Parsons said that the applicant had a prima facie claim to the marks and had qualified as their proprietor because of its authorship, intention to use and application for registration.  The opponent had not established, in any way, a superior claim.  It had produced no evidence to show that the word SOGO had been used on anything other than the sale of opal jewellery, and then it had only been used as a business name and not as a trade mark.  Its use had not established a link between the mark and the opponent.  In any event, the use of the word SOGO as part of the opponent's business name did not necessarily equate to use of the mark, because there was no general rule when considering whether one mark encompassed another - Australian Law of Trade Marks and Passing Off (Second Edition) by D.R.Shanahan, pp.171-172.  She referred to Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 and Shell Co of Australia v Esso Standard Oil (Australia) Ltd, 109 CLR 407 regarding the tests to be applied as to whether the forms of use of SOGO by the respective parties could be considered identical or substantially similar. She said that such a case could only be made if the words OPAL and JEWELLERY were also included. She referred to Tait-Jamison v Alexander, supra, for support in her further submission that the method of use shown by the opponent on its sales dockets did not amount to use of the word SOGO as a trade mark but was merely use of the opponent's business name.

Ms Parsons said that the use by the opponent of the word SOGO was not use on the same kind of services as those claimed in the present applications - Hick's case (1897) 22 VLR 636. It was difficult to apply the tests outlined in Jellinek's App'n (1946) 63 RPC 59 in competing claims for retail services where one is narrow, such as a jewellery store, and the other is wide, such as a department store, but the two would appear to be mutually exclusive. The concept of the establishment of proprietorship meant that there had to be a "substantial identity of services". In department stores retail services, other things such as rest rooms, car parks, creches and information services needed to be provided, whereas none of these things were usually included in providing the opal and jewellery sales which formed the opponent's business. She said that any opposition based on prior use for a different product should be under the provisions of s.28, relying for support here on the entry in Shanahan, p.158.  It was therefore obvious that the first use of the marks on the appropriate services claimed by the opponent was not valid.

Discussion

Section 40 - Proprietorship

The provisions of s.40, so far as is relevant here, are that:

A person who claims to be the proprietor of a trade mark may make application to the Registrar for registration of that trade mark in Part A or Part B of the Register

On that subject, McGarvie J said in Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd, supra,  at 413:

The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there: Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 203; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603; Moorgate Tobacco Co Ltd v Philip Morris Ltd(No 2) 59 ALJR 77 at 83.
 ...

In considering who, within s.40(1) of the Act, was at the time of Settef's application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia: The Shell Co of Australia Ltd v Rohm & Haas (1949) 78 CLR 601 at 625 and 627.

In other words, the first user of a mark in Australia (for relevant goods or services and prior to the date of application) becomes the proprietor at common law.  That proprietorship, however, is limited to "the same kind of thing", as per Holroyd J in Hick's trade mark, supra.  Any small amount of use will suffice, but the effect of the act relied on to constitute use must be the creation, in the minds of those concerned, of an impression that the goods or services of a particular trader are being offered for sale in Australia.

I am not concerned, in deciding the issue of proprietorship, with the question of whether the opponent's and applicant's marks are so alike as to lead to the deception or confusion of customers. That question is relevant in relation ss.33 and 28, but not to s.40 which only applies when the marks are identical or so similar as to be virtually the same mark - The Kendall Co v Mulsyn Paint and Chemicals 109 CLR 300; and Tavefar Pty Ltd v Life Savers (Australasia) Ltd 12 IPR 159.

In the present case, the marks used by the respective parties all contain the word SOGO. In the instance of application number 504071, for the word mark SOGO, solus, I think that the opponent's mark, as shown in its evidence is, in the context of s.40 considerations, the same mark. I agree with Mr Cobden that the words OPAL and JEWELLERY are merely descriptors and the main feature of the mark is the distinctive element, SOGO. I have considered the instances of alleged use put forward by the opponent. I do not consider that the registration of the business names, SOGO OPALS, SOGO WATCHES and SOGO JEWELLERS to be of any relevance in establishing use of the mark in question. Neither do I think that Mr Lee's unsupported statement that the opponent has used the mark since July 1988, or the photographs of the opponent's premises bearing the word SOGO, to be of any assistance in this regard. Notwithstanding this, the opponent's listings in the Clocktower Square Newsletter do, I think, equate to trade mark use, in that the advertisements do appear to make an offer to trade.  However, there is no way to tell when this publication was issued, except for the mention of a competition which was to be drawn on "Monday 7 May 1990".  This date is after the date of application for registration of the present marks.  Therefore, this part of the evidence does not appear to show prior use by the opponent.  The copies of Boomerang magazine showing use of the opponent's mark are equally impossible to be dated, despite any claims of when it was issued, and it must also be discounted.  However, the issue of Meat Pie, dated October/November/December 1988 does include use of the word SOGO and does pre-date the present applications.  Despite the fact that no details of its circulation have been supplied, it carries an Australia Post publication number and also indicates it is published by Nichigo Press, which has an address in Double Bay.  Consequently, it is a fair inference, I think, that it is made available to Japanese tourists who visit this country.  The English words in that advertisement offer "Opal Jewellery" and the translation of the Japanese script included there lists the goods available as "...top quality opal...".  I think that those credit card sales vouchers which pre-date the present applications are also sufficient to show, within the meaning of para. 6(2)(b) that the opponent was using its mark "in physical or other relation to the goods" - Angoves Pty Ltd v Johnson (1982) 43 ALR 349. Again, the purchases shown by the vouchers to be made under the mark are limited to opal jewellery. I have given some consideration to the differences between department store retail and wholesale activities, on one hand, and the sale of opal jewellery in a specialised store, on the other. I have come to the conclusion that a distinction can be drawn between the two, given that a great deal of infrastructure is required to supply the former set of services whilst the latter, being much more focussed on a particular activity, can be carried out with very little outlay in the form of facilities, premises or staff.

However, in the case of 504073, the applicant's mark also contains the device of a triangle or an inverted hourglass within a circle.  I consider that this combination of word and device comprises a trade mark which is sufficiently different from any mark which may have been shown to be used by the opponent in its evidence.  I therefore think that this mark is one where no prior use has been shown by the opponent before the date of the present application.  On the other hand, the applicant has fulfilled the criteria of authorship, intention to use, and application for registration mentioned by Dixon J in The Shell Co of Australia Ltd v Rohm & Haas, supra, sufficient to lay claim to the mark's proprietorship. Therefore, it would seem to me that, in the case of the mark covered by application 504073, the applicant is entitled to be considered the proprietor in terms of s.40 of the Trade Marks Act

Given the foregoing, I find that, in the case of application number 504071, for registration of the mark SOGO, the opponent has shown that it was the first user and therefore the proprietor of the mark for, specifically, the sale of opal jewellery.  This does not, however, displace the applicant's claim to proprietorship of the mark for any other services as shown in the specification.  In the case of 504073, for registration of the mark SOGO and the device of a triangle or an inverted hourglass within a circle, the opponent has failed to show first use and therefore the applicant is entitled to proprietorship of that mark for the services listed in the specification.

Section 28 - Deception and confusion

The provisions of this section of the Act read as follows:

A mark -

(a) the use of which would be likely to deceive or cause confusion;
           (b) the use of which would be contrary to law;
           (c) which comprises or contains scandalous matter; or

(d) which would otherwise be not entitled to protection in a court of justice,

shall not be registered as a trade mark.

Mr Cobden said at the hearing that the opponent, whilst it alleged likely deception and confusion in its notice of opposition, felt constrained by the Office's interpretation of High Court decision in New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Ltd 18 IPR 385, the Moo case, with respect to objections to registration under s.28.  He therefore declined to make submissions on this aspect of the opposition, simply saying that he wished to raise that ground should the matter go on from this hearing before the Registrar.  I am of the opinion that the submissions made by Ms Parsons regarding the marks' reputation in Japan and in other countries, and the statements made by the Australian declarants, lodged as part of the evidence in answer, regarding their knowledge of the marks gained from their overseas travel, all go to answer any possible case which the opponent may have made under this section.  Given Mr Cobden was silent on this issue, I will not comment here on the specifics of this case.

However, despite the fact that there were not any arguments raised under s.28, I will take the opportunity to reiterate the Office's position on cases where opposition has been raised under that section.

The test to be applied under paragraph (a) of these provisions has been well established by cases such as Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, where it was said:

Registration should be refused if it appears that there is a real risk that the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case the two products come from the same source.

That risk must extend to a substantial number of people: Kendall Co v Muslyn Paint and Chemicals , supra.

Following the High Court decision in the Moo case, the Registrar now follows the practice as laid out in the decision of Hearing Officer Homann in Titan Manufacturing Co v John Terrence Coyne 22 IPR 613 - that is, that all paras of s.28 should be read conjunctively. This means that, should I have found that the marks applied for were likely to deceive or cause confusion, then I would also have had to have found that the marks would not be entitled to protection in a court of law before any opposition based on s.28 could have been successful.

Conclusion

I find that, with respect to application number 504071, the opponent has been successful in showing that it is the proprietor of that mark only for services relating to the sale of opal jewellery.  I allow a period of 28 days from the date of this decision during which the applicant may apply to restrict its statement of services to exclude references to the sale of those items.  The application may then proceed to registration.  If the applicant does not so restrict its services within the time specified, the opposition will have been successful and the application will be refused.  In relation to application number 504073, I find that the opponent has failed on the grounds relied upon in the notice of opposition.  I therefore dismiss the opposition as it relates to that application and thus it should proceed to registration as accepted.

In relation to costs, I find that both sides have been partially successful and I therefore find that each should bear its own costs in the matter.

Ian Forno
Hearing Officer

4 April 1995