Suyen Corporation v Shiny Pty Ltd

[2012] ATMO 75

TRADE MARKS ACT 1995

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

Re:Opposition by Suyen Corporation to registration of trade mark application 1319627(25) - BENCHMARK CLOTHING - filed in the name of Shiny Pty Ltd.

Delegate:

Iain Thompson

Representation:

Opponent: Malcolm Bell, Solicitor, of Phillips Ormonde Fitzpatrick, Patent and Trade Mark Attorneys

Applicant: Caroline Baker, Senior Associate, of Freehills Patent and Trade Mark Attorneys

Decision:

2012 ATMO 75

s52 opposition - s44, trade marks not deceptively similar; s59 differences in trade marks as used and applied for do not establish lack of intend to use the trade mark

Background

1. In this matter Shiny Pty Ltd (‘the applicant’) of Fairfield, Victoria, applied under the Trade Marks Act 1995 (‘the Act’) to register a trade mark, current details of which appear below:

Application No: 1319627

Priority Date:  9 September 2009

Goods:Class 25: Uniforms (all kinds of uniforms, school, corporate wear, business shirting, suiting, hospitality and medical, military, police uniforms)

Trade Mark:     

(‘the Application’ or ‘the Trade Mark’ as is appropriate)

1. The Application was duly examined in compliance with section 31 of the Act, accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 21 January 2010.

2. On 21 April 2010, Suyen Corporation (‘the Opponent’) of the Philippines filed Notice of Opposition (‘the Notice’) to the registration of the Trade Mark.

3. The Opponent has not served and filed evidence in support of its opposition. The Notice does, however, specify four trade mark registrations in relation to the ground under section 44 of the Act:

Registration No:              588371

Priority Date:  14 October 1992

Goods:Class 25: T-Shirts, jackets, shirts, trousers, shorts, hats, socks, underwear, footwear, all other goods in class 25.

Trade Mark:  BENCH

Registration No:              968530

Priority Date:  3 September 2003

Services:Class 35: Business services relating to the operation and management of boutique, retail outlets; promotion of clothing, cosmetics and personal care products

Trade Mark:  

Registration No:              968981

Priority Date:  5 September 2003

Goods:  Class 25: Clothing; including boots, shoes, slippers

Trade Mark:  

Registration No:              989448

Priority Date:  17 February 2004

Goods:Class 25: Clothing including underwear and outerwear; headwear including hats and caps; footwear including socks and shoes

Trade Mark:  BENCH ; bench ; bench/ (Series)

1. The Applicant’s evidence in answer comprised a statutory declaration made by You Min Wu on 1 July 2011 with Confidential Annexures A and B and Exhibits YMW-1 to YMW-9 (‘Wu One’).

2. The Applicant applied for, and was granted, permission to serve further evidence in order to clarify or correct Mr Wu's description of the wholesale turnover figures provided for the financial years 2009/10 and 2010/11 in Wu One.  The Registrar granted permission to serve further evidence.

3. The Applicant subsequently filed a statutory declaration with Confidential Annexure A made by You Min Wu on 19 October 2011 (‘Wu Two’) as its further evidence. Confidential Annexure A attached to Wu Two replaced Confidential Annexure A attached to Wu One.

4. The matter came before me to be heard in Melbourne on 20 July 2012.  Mr Malcolm Bell, solicitor, of Phillips Ormonde, Fitzpatrick represented the Opponent and Ms Caroline Baker, Senior Associate of Freehills, Patent and Trade Mark Attorneys, represented the Applicant.

Onus

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.  See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12] and most recently Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (2012) 94 IPR 551 per Dodds-Streeton J at [13].

Section 44

1. Section 44 of the Act relevantly provides:

   44Identical etc. trade marks

   (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.

   Note 2:For similar goods see subsection 14(1).

   Note 3:For priority date see section 12.

   Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

2. The Opponent does not argue that its registered trade marks are substantially identical to the Trade Mark; further, it is common ground between the parties that the goods of the Application are encompassed by those of the Opponent’s registrations which include, inter alia, ‘clothing’ and are thus similar goods.  Additionally, the priority dates of the registrations on which the Opponent relies are earlier than that of the Application.

3. It is not necessary in this decision to decide one way or the other whether the goods nominated on the Application are closely related to the services of registration 968530 BENCH BODY as if the opposition is not established in relation to the Opponent’s goods registrations it cannot be established in relation to the Opponent’s services registration.

4. Accordingly, there are two questions for my consideration: firstly, is the Opponent’s BENCH trade mark deceptively similar to the Trade Mark? and, secondly, is the Opponent’s BENCH BODY (Logo) trade mark deceptively similar to the Trade Mark?

5. Deceptive similarity is defined by section 10 of the Act which provides:

   10Definition of deceptively similar

   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.

6. In Australian Woollen Mills Limited v F S Walton and Company Limited [1937] HCA 51; (1937) 58 CLR 641, (‘Woollen Mills’) Dixon and McTeirnan, JJ said, concerning the comparison of trade marks:

   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, then 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.

7. Subsequently, in the same case, their Honours said:

   It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs.

8. The expression ‘ordinary conduct of affairs’ brings into consideration the marketplace in which the goods are bought and sold: in In Re Application by Pianotist Company (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, Parker J 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.

9. The comparison is to occur within the scope of the uses to which the Applicant and Opponent may fairly put their trade marks on any of the goods specified within the Application or the registrations relied upon by the Opponent.  In Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 French J said at [88]:

   The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration.

10. According to the Oxford English Dictionary the word ‘benchmark’ means:

    a. A surveyor's mark cut in some durable material, as a rock, wall, gate-pillar, face of a building, etc., to indicate the starting, closing, or any suitable intermediate, point in a line of levels for the determination of altitudes over the face of a country. It consists of a series of wedge-shaped incisures, in the form of the ‘broad-arrow’ with a horizontal bar through its apex, thus {benchm}. When the spot is below sea-level, as in mining surveys, the mark is inverted.

    [The horizontal bar is the essential part, the broad arrow being added (originally by the Ordnance Survey) as an identification. In taking a reading, an angle-iron ∠ is held with its upper extremity inserted in the horizontal bar, so as to form a temporary bracket or bench for the support of the levelling-staff, which can thus be placed on absolutely the same base on any subsequent occasion. Hence the name.]

11. The word ‘bench’ is also defined by the Oxford English Dictionary:

    a. A long seat, with or without a back, usually of wood, but also of stone, etc. ‘Distinguished from a stool by its greater length’ (Johnson).OE   Beowulf 327   Bugon þa to bence.

12. I note also that the Macquarie Dictionary defines the word ‘benchmark’ as ‘a point of excellence’ and from personal experience the word is used to denote ‘a specific level of quality’.  Thus an organisation might ‘benchmark’ its goods or services against those of another organisation.

13. The meanings of the words ‘bench’ and ‘benchmark’ are thus quite different and bring entirely different ideas to mind.

14. However, the word ‘bench’ which constitutes the entirety of the trade mark BENCH is wholly included in the Trade Mark.

15. In his submissions Mr Bell said:

    One of the recognised bases for deception and confusion occurring is where although two marks may not be likely to be mistaken for one another, they may nonetheless be thought to be related.

    A well-known example of this is Fitton’s Application (1949) 66 RPC 110 where the application for registration of Easy Jests was refused in the face of a prior registration for Jests. Although it is a UK Registry decision, we submit it is accepted authority. Reference is made to the discussion in Shanahan at [30.1555] which lists a number of cases where this reasoning has been applied.

    The question is to be assessed on the basis of postulated use: re Fitton’s Application at p. 113.

    In Shanahan it is stated that “this form of confusion has been said to result from the “well-known” trade practice of traders in adopting a certain word as a trade mark and constructing other trade marks for distinguishing characters of their goods by using such a word as a basis and adding their two prefixes of a qualifying nature”; citing Kodak’s Application (1936) 6 AOJP 1724 an early decision of the Australian Deputy Registrar of Trade Marks in which registration of Hyperpan was refused in light of the existing registration of Pan.

    The objection has been maintained in cases involving other than prefixes, as examples in Shanahan indicate, for example the trade marks Southern Maid v Western Maid in Ahern Ltd’s Application (1932) 2 AOJP 167; and the trade mark Permalux v Perma in Expanded Metal Co Ltd v Finn Blinds [1986] AIPC 90-305.

16. A certain amount of caution must, of course, be taken in applying cases from before 1995 when (on commencement of the current Act in 1995) the onus in opposition proceedings transferred from an applicant onto an opponent.  Prior to the 1995 commencement, an applicant was ‘in petitorio’: Eno v. Dunn (1890) 15 App Cas 252, at p 257, and if the decision-maker was left ‘in dubio’ whether to grant the application or not the application should be refused.[1]  Now, if the question is on balance, the application should be accepted.

    [1] Eclipse Sleep Products Inc v Registrar of Trade Marks [1957] HCA 86; (1957) 99 CLR 300.

17. In any event, I cannot agree with Mr Bell that the cases he relies upon are in any way analogous to the present situation.  In each of those cases, the meaning of the essential feature of a trade mark (for example, the elements MAID or JEST or PAN or PERMA) was qualified but unchanged by the addition, or variation, of an element to, or with, it.  Such is not the case here where the addition of the element ‘mark’ to the word ‘bench’ in no way qualifies the word ‘bench’ but results in the creation of a quite different word with a completely dissimilar meaning.

18. The goods in relation to which the trade marks are, or are proposed to be, used are not of such trifling expense or sold in such a manner that little attention might be paid to their purchase: Re Stuart Alexander and Co (Interstate) Pty Limited and Douwe Egberts Koninklijke Tabaksfabriek-Koffiebranderijen-Theehandel NV v Blenders Pty Limited [1981] FCA 152; (1981) 53 FLR 307; Lancer Trade Mark (1987) RPC 303.

19. The difference in meaning of the word ‘bench’ and ‘benchmark’ within the context of the goods ‘clothing’ militates against any likelihood that the trade marks could be imperfectly remembered for each other; in Rysta Ltd’s Application (1943) 60 RPC 87, Luxmoore LJ said (at 108-109)[2]:

    ‘The answer to the question whether the sound of one word resembles too nearly the sound of another so as bring the former within the limits of s 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The court must be careful to make allowance for  imperfect recollection  and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistance ministering to that person’s wants.’

    [2] Applied in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1; (2004) 61 IPR 212; [2004] AIPC 92-015.

20. Here the meanings of the words ‘bench’ and ‘benchmark’ are so different that, in my consideration, it is quite unlikely that the trade marks formed from those words could be misremembered for each other – a person recollecting the trade mark BENCH is likely to recall it by its signifying or denoting a long low seat whereas a person calling to mind the trade mark BENCHMARK is likely to recollect it by its signifying a surveyor’s mark or as being a metaphorical allusion to a specific level of quality.

21. The meanings of the words ‘bench’ and ‘benchmark’ are so completely different in the context of ‘clothing’ that in my consideration any visual similarity between the words would not be noticed by most people or be the source of confusion.  It is difficult to see how any degree of deception or confusion could arise from the concurrent use of the trade marks. 

22. I find the Opponent’s BENCH trade mark and the Trade Mark are not deceptively similar.

23. The same observations apply a fortiori to the Opponent’s BENCH BODY trade mark registrations in which the original meaning of the word ‘bench’ is preserved.  If there is no likelihood of deception or confusion between the trade marks BENCHMARK and BENCH, the greater differences in idea, meaning and pronunciation makes the likelihood of deception or confusion less probable between the trade marks BENCHMARK and BENCH BODY.  Of course, it is possible that some careless or silly people might be confused but Woollen Mills cautions against focusing on this portion of the market for the goods: ‘On the other hand, exceptional carelessness or stupidity may be disregarded’.

24. Accordingly, in my consideration, it is difficult to see how any real likelihood of deception or confusion could arise from the concurrent use of the trade marks BENCH (or BENCH BODY) and the Trade Mark.

25. The Opponent has not established its opposition under section 44 of the Act.

Section 59

1. Section 59 of the Act provides:

   59Applicant not intending to use trade mark

   The registration of a trade mark may be opposed on the ground that the applicant does not intend:

   (a)to use, or authorise the use of, the trade mark in Australia; or

   (b)to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services specified in the application.

   Note:For applicant see section 6.

2. The Opponent argues this ground is established by the Applicant’s evidence which shows that it is using the trade mark which appears below:

1. This evidence, along with statements in the evidence of the Applicant which arguably appear to conflate the use of the above trade mark (‘the BENCHMARK trade mark’) with the Trade Mark, are evidence, submits the Opponent, that the Applicant did not at the priority date of the Application have an intention to use the Trade Mark.

2. However, I do not consider this conclusion necessarily logically follows from the evidence before me.  A person may apply to register the trade mark CRICKET to use on sports drinks while commencing (or continuing) the use of the trade mark RUGBY for the same goods.  That person’s use of the trade mark RUGBY does not necessarily reflect on the person’s intention at the priority date of the application to use the trade mark CRICKET; the person may simply not have got round to doing it yet or be awaiting the supply of suitable tags, labels, packaging and so on.

1. Thus the ongoing use of the BENCHMARK trade mark by the Applicant does not necessarily reflect a lack of intent at the priority date to use the Trade Mark.

2. Further, I consider that the provisions of subsection 7(1) of the Act, should they be required to be applied, should pertain in this situation. That subsection provides:

   7Use of trade mark

   (1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

   Note:For prescribed court see section 190.

3. Mr Bell argued that the provisions of subsection 7(1) should not extend to section 59 but did not cite any authority for this viewpoint. However, I cannot agree that there is anything about the language of either section 59 or subsection 7(1) which suggests that such a limitation is appropriate. Indeed, by the language of subsection 7(1) it is a discretionary provision and its applicability appears to be broad in scope and it contains no express limitation. The Applicant’s use of the BENCHMARK trade mark appears to fall within that use apprehended in PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602; 47 IPR 47; [1999] AIPC 40-117 (which invokes a similar principle), or E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381.

4. Further, in the assessment of evidence concerning an application for registration in terms of either subsection 41(5) or subsections 44(3) or (4), an applicant could avail itself of the provisions of subsections 7(1) to successfully argue that a similarly variant use to that here under consideration was a use of the applied-for trade mark despite the alteration or addition. Hence, if the logic of Mr Bell’s submission ran true, it would be possible to arrive at the anomalous situation where subsection 7(1) could be beneficially applied to the one application in relation to sections 41 and 44 but not in relation to section 59 when considering exactly the same use of precisely the same trade mark. As I have observed, absent any express limitation on the operation of subsection 7(1), this course appears to be inappropriate.

5. Thus, if it was necessary for me to find that the Applicant’s use of the trade mark shown at paragraph 35, above, is a use of the Trade Mark in terms of subsection 7(1), I would have so found.

6. The Opponent has not established its opposition under section 59 of the Act.

Decision

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

   55Decision

   (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.

1. The opposition to registration has not been to any extent established on either of the grounds on which it was argued.

2. The Application may then proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the Application be in accordance with the Court’s order or direction.

Costs

1. The Applicant, having been successful, is entitled to its costs which I award at the official scale against the Opponent.

Iain Thompson

Hearing Officer

Trade Marks Hearings

5 September 2012