Stokely-Van Camp, Inc v Alexander Hutton

[1999] ATMO 123

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF
TRADE MARKS, WITH REASONS

Re:Opposition by STOKELY-VAN CAMP, INC to the registration of trade mark application number 744539 in the name of ALEXANDER HUTTON.

Background:
The Trade Marks Office has examined application 744539 and accepted it for registration.  The applicant is Alexander Hutton, whom I will refer to simply as “the applicant” from this point.  The applicant filed his application on 23 September 1997, seeking registration of the following trade mark:

The class 32 goods for which registration is sought are: Beer, mineral and aerated water and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages.

Stokely-Van Camp, Inc ("the opponent") opposes registration of the trade mark under three sections of the Trade Marks Act 1995. These, in very simplified terms, manifest themselves in two separate disputes with the proposed registration:

• the application is too close to the opponent's own registered trade marks

• the applicant's trade mark would be likely to deceive or confuse because of the prior reputation in the opponent's trade mark.

The opponent is the registered owner of the following trade mark, described in the evidence as a double lightning flash device.

That trade mark has been registered, under number 567137, for all of the goods in the same class as the applicant's.

The opposition process has followed the course set out in the regulations, with the opponent serving a copy of its evidence in support.  The details of the evidence can be summarised as follows:

The opponent produces GATORADE, a sports drink, by which I mean a drink designed or promoted to replace energy and electrolytes lost by the body during exercise.  Its trade mark for those goods is typically used in the form registered as number 597467 ("the GATORADE mark"):

This trade mark has been extensively promoted, with advertising expenditures of between 5 and 7 million dollars per year in this country over recent years prior to the filing date of the opposed application.

In the lack of any evidence in answer to the opposition, the opponent requested a hearing.  This came on before me, as a delegate of the Registrar of Trade Marks.  The applicant did not appear at the hearing but the opponent's patent attorney, Trevor Stevens, of the firm of Davies Collison Cave, presented the opponent's submissions by telephone.
Issues and decision
Section 44: conflicting prior registration?
Mr Stevens opened his submissions by addressing section 44 of the act, of which the relevant part is:

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.

Note 1:  For deceptively similar see section 10.  A trade mark is deceptively similar to another if the resemblance is such as to be likely to deceive or cause confusion.

Note 2:  For similar goods see subsection 14(1).  Similar goods are either the same goods or, in terms of earlier case law, goods of the same description.
Note 3:  For priority date see section 12.  For present purposes, it is the filing date and the application's priority date, 23 September 1997, is not earlier than that of registration 567137.

Mr Stevens drew my attention to an aspect of one of the applicant's registered trade marks.  In trade mark 567137, the device is comprised of two flashes, each being only two-dimensional, a smaller one laid on top of a larger but otherwise matching one.  Mr Stevens characterised this as a double flash.  Such a perception of a double flash, he argued, would be central in any confusion. 

Mr Stevens noted that the Trade Marks Office had indexed the opponent's mark as "lightning, double" while the applicant's was indexed as "lightning, two".  When, at the hearing, I asked him what was the relevance of the indexing actions of the office, he replied that this description was evidence of what a reasonable perception of the mark would be, not in itself decisive but illustrative of perceptions in general.

I do not accept this.  That the Trade Marks Office may choose to index three trade marks in similar ways, or to index one as a V, another as a chevron and a third as a pair of wings, is of little weight in matters such as these.  The Index of Constituent Particulars is a searching tool which, when used carefully, will allow similar trade marks to be located.  However, trade marks are indexed with a methodology that is logical, systematic and largely technical.  It may thus have little to do with the way marks are ordinarily used and compared, confused or distinguished.  Moreover, it is balanced, in the interests of safety, to tend to disclose unlike marks, rather than obscure the existence of those that are deceptively similar.

I certainly agree with Mr Stevens, however, that perceptions and recollections are at the heart of any potential for confusion.  Mr Stevens noted that, in cases such as Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, the focus was put firmly onto impressions, based on the recollections of people of ordinary intelligence and memory. He noted Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641

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.  Evidence of actual cases of deception, if forthcoming, is of great weight."

From this, he assembled the following issues:

·     effect of impression of the respective device elements

·     visual impact which is carried away

·     usual manner in which buyers behave

·     course of business and the usual ways in which such goods are sold

·     verbal descriptions likely to be applied to trade marks.

and made the following observations:

• the goods are inexpensive, usually bought without much deliberation and sometimes hurriedly, and displayed en masse, on shelves in tightly packed formations

• buyers will include the very young and the not so young

• both trade marks will engender orders by reference to the double lightning flash.

Mr Stevens stressed that the only essential feature of the opponent's registration was a double lightning flash.  He argued that, in adopting a mark that used the same essential feature, the applicant had constructed one that was necessarily deceptively similar.  The applicant's mark was certainly to be used for identical goods sold in the circumstances outlined above.  Moreover, in the notional comparison under s 44, it was arguably to be used in the same colours.

Mr Stevens also noted that the lightning bolt was a twofold allusion to the nature of the goods: to rainfall, and hence to thirst quenching, and to the electrical aspects of electrolyte drinks.  He argued that the applicant had "borrowed" the same images.  First impressions, he said, would count for a lot in the comparison of such marks.

I agree with Mr Stevens on that issue, but not on his ultimate conclusion.  I have allowed for all the circumstances to which he has referred, particularly the use of the marks in the same colours.  However, the first impression of the applicant's mark will not leave a common idea that can be confused with the opponent's.  Nor will a more considered view.  Nor, in the reverse case, will any reasonable impression of the opponent's mark be liable to be confused with the applicant's. 

The opponent's registered trade mark does present itself as a lightning flash.  The mark can, it is true, be construed to be two, two-dimensional flashes, a smaller one laid on top of a larger.  However, that is simply not the way the mark will actually be perceived when in use. A lightning flash is a familiar object and one that lends itself to colourful or emphatic renditions.  It is far more likely that the mark will be seen as a single flash, rendered in two tones or colours.  My assessment is that people will see the opponent's mark as a two-tone rendering, such rendering being used either for graphic emphasis or to better depict the three-dimensional aspect of a real lightning flash. 

Secondly, I believe that the prominent words DOUBLE VOLT, arguably themselves a reference to the electrolytic action of some of the goods within the scope of the application, would be the main way the applicant's mark was seen and recalled.  When seen and recalled in such a context, the device is equally likely to be seen as an electrical spark, in which case it is subordinate to the weight that will be given to the words DOUBLE VOLT, the second word of which directly refers to electricity. 

When consumers come across the applicant's mark, which includes the words DOUBLE VOLT, while knowing of goods that bear the opponent's trade mark, hypothetically in use without any added words, I believe that they will tread warily before they infer a common origin.  Such consumers are, in my view, unlikely to be misled.  They will neither overlook nor ignore the differences in the marks and I can think of no good reason why, in such a case, they would expect the marks to denote a common origin.

The opponent is entitled, of course, to argue that the applicant has taken an element that, when used by itself, is the essential feature of the opponent's registration 567137.  However, the present case is one where a principle set out in Dial-an-Angel Pty Ltd v Sagitaur Services Systems Pty Ltd, 19 IPR 171, comes into play. In that case, Wilcox J was considering the importance of common features and their balance with distinguishable features. He noted a proposition of long standing: "a man infringes the mark of another if he seizes upon some essential feature of the plaintiff's mark". Wilcox J continued, obiter but entirely appropriately to the point of the present case:

Perhaps that statement should be read subject to a qualification that the similarity of an essential feature may be negated by another feature which tellingly distinguishes the two marks.  But this will ordinarily be difficult, for the reasons spelled out in Jafferjee. (Jafferjee v Scarlett ( 1937) 57 CLR 115)

While it may be difficult to do this, decisions such as Tecmo Kabushiki Kaisha v Tokyo Denki Kabushiki Kaisha, 1995 AIPC 91-177, show that this is possible when the conflicting element is safely defused and buried in the applicant's mark. I am satisfied that this has been done in the present case, and that the applicant's mark is not deceptively similar to the opponent's mark number 567137.

Deception and confusion?
Mr Stevens argued that the applicant's mark is such that, in use, it would lead to deception or confusion because of the extent of the extent of the reputation of the opponent's mark.  If such a thing is established then, in principle, s 43 and/or s 60 may be triggered.  However, it will not be necessary to go into the details of the concerns and applications of those two provisions because, in my view, the opposition fails under both headings.  My reasons for saying this are as follows.

I have already given my decision in terms of s 44, that the mark sought to be registered by the applicant is not deceptively similar to the one registered by the opponent as number 567137.  This means that I have concluded that, to reverse the test in section 10, the resemblance between them is not "such as to be likely to deceive or cause confusion".

For the purposes of sections 43 and 60 I must consider the mark that is actually used by the opponent.  This features, very prominently, the word GATORADE, much after the style of registration 597467.  Thus, for current purposes, the differences between the mark used by the opponent and the one sought to be registered are considerably greater than the differences I have already considered for the purposes of s 44.  This, in my view, goes even further to reducing any likelihood of deception or confusion. 

I have allowed for the fact that, at times, the lightning flash device appearing with the word GATORADE is rendered more after the style of the device in 567137 - the difference being a relatively minor variation at the top of the flash.  I have also allowed for the fact that, in the opponent's television advertisements, attention is, very briefly, drawn to a lightning flash, by sound effects and visible special effects.  At no stage, however, is the viewer's attention drawn to the fact that the lightning flash is a trade mark in its own right.  Its apparent function, in the ways the GATORADE mark is actually used, is simply to add energy and emphasis to the rendition of the word in question.

For these reasons it is, in my view, very unlikely that any consumer will either overlook the many differences between the current mark and the GATORADE mark or consider that, differences notwithstanding, they imply a common origin.  It follows, therefore, that I have not been shown that deception or confusion are reasonably likely outcomes of the use of the applicant's mark.

Conclusion
The opposition fails on all the grounds that have been pursued.  I therefore decide, in terms of s 55, to register the trade mark.  I award costs, in accord with the official scale, to the applicant.  If necessary, on payment of the appropriate fee, those costs will be taxed, allowed and certified by an officer of the Trade Marks Office.

T. E. Williams
Hearing Officer
6 December 1999