Swatch Ag v Christopher Gray

[2008] ATMO 48

TRADE MARKS ACT 1995

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

Re:Opposition by Swatch AG (Swatch SA) (Swatch Ltd) to registration of trade mark application 1079618(14) - LUMIE  - filed in the name of Christopher Gray.

Delegate:

Iain Thompson

Representation:

Opponent

Peter Hallett of Watermark

Applicant

Written submissions

Decision:

2008 ATMO 48

Section 55 opposition – no evidence filed in support of opposition. Applicant notified of grounds. Section 44, trade marks not deceptively similar – opposition not established.

Background

1. In this matter Christopher Gray, of St Kilda Rd, Melbourne, (‘the applicant’) seeks registration under the Trade Marks Act 1995 (‘the Act’) of a trade mark current details of which are:

Application No:  1079618

Priority Date:  10 October 2005

Goods:  Alarm clock

Trade Mark:  LUMIE

1. The application was examined and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 9 February 2006. 

2. On 9 May 2006, Swatch Ag (Swatch SA) (Swatch Ltd) of Biel/Bienne, Switzerland, filed Notice of Opposition (‘the Notice’) to the registration of the trade mark.  The Notice cites the following grounds:

   1.        The trade mark is not capable of distinguishing the applicant's goods from the goods or services of other persons.

   2.        The use of the trade mark would be contrary to law.

   3.        The trade mark is substantially identical with, or deceptively similar to a trade mark with an earlier priority date registered by another person in respect of similar goods or closely related services.

   4.        The trade mark is substantially identical with, or deceptively similar to a trade mark with an earlier priority date and whose registration is being sought by another person in respect of similar goods or closely related services.

   5. There has been no honest concurrent use, prior continuous use, and no other circumstances exist, justifying acceptance of the trade mark for registration under ss.44(3) or ss.44(4).

   6. The applicant is not the owner of the trade mark and is not entitled to claim to be the owner thereof and the applicant is therefore not a person entitled under Section 27(1)(a) of the Trade Marks Act to apply for registration.

   7.        The applicant does not intend to use, or authorize the use of, or to assign to a body corporate for use by the body corporate in Australia, the trade mark in relation to the goods and/or services specified in the application.

   8.        The trade mark is substantially identical with, or deceptively similar to, a trade mark that, before the priority date of the registration of the first-mentioned trade mark, had acquired a reputation in Australia and 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.

   9.        The trade mark contains or consists of scandalous matter.

   10. The use of the trade mark in relation to the applicant's goods or some of the applicant's closely related goods and/or services would be likely to deceive or cause confusion because of some connotation in the trade mark or in a sign contained in the trade mark.

   12.      The application for registration of the trade mark or a document filed in support of the application was amended contrary to the Trade Marks Act.

   13.      The trade mark contains or consists of a sign that, under the Trade Mark Regulations, is not to be used as a trade mark, or so nearly resemble such a sign as to be likely to be taken for it.

   14. The trade mark contains or consists of a sign that is prescribed in Regulation 4.15 of the Trade Marks Regulations or a sign so nearly resembling a sign prescribed in Regulation 4.15 as to be likely to be taken for it.

3. The opponent did not serve evidence in support of the opposition and the applicant did not serve evidence in answer.  The matter came before me as a delegate of the Registrar of Trade Marks at a hearing in Melbourne on 5 March 2008.  The opponent was represented by Peter Hallett of Watermark, Patent & Trade Mark Attorneys.  The applicant did not appear but had earlier filed a letter as written submissions.

4. Simply put, I told Mr Hallett at the hearing that, in terms of section 55 of the Act, I would have the greatest difficulty in finding that an opponent has established its opposition in the absence of evidence in support of the opposition and that the onus was on the opponent to establish the opposition to my satisfaction.

5. He responded saying that the parties had been in negotiations which had come to naught and that, on the basis of these negotiations, the applicant must know the basis for the opposition and have been in a position to respond to it.

6. However, I observed that unless the applicant is formally on notice that a specific ground, or grounds, are relied upon by an opponent, out of the plethora of grounds mentioned in a Notice, the applicant may not (in the absence of evidence that which puts them on notice that specific grounds are being pursued) avail itself of any of the answers to those grounds in its own evidence in answer. Lack of any specificity in either the Notice or evidence as to the reasons a particular ground is relied upon might also smack of ambush and leave applications which have merit without any creditable defence. Such evidence in answer might be, for example, evidence of honest concurrent use of a trade mark in answer to grounds under section 44 of the Act or evidence of factual distinctiveness to address potential grounds under section 41.

7. I agreed to adjourn proceedings in order that the opponent could formally draw the applicant’s attention to the fact that it intends to rely on section 44 of the Act and the particular registrations the opponent relies on.

8. Accordingly, at the hearing, Mr Hallett made his submissions and gave me a written copy of them. Subsequent to the hearing, Mr Hallett wrote to the Registrar advising that the applicant had been formally notified that section 44 and the two trade mark registrations specified in my discussion below would be relied upon by the opponent.

9. The applicant has not responded to this notice, or to a letter by a delegate of the Registrar, allowing him one month to respond.

10. Accordingly, I now make my decision and give the reasons therefore.

Section 44

1. Insofar as it is relevant to this matter, 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.

   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.

2. The registered trade marks upon which the opponent relies are:

Registration No:              660003

Priority Date:  2 May 1995

Goods:Class: 14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments; being goods in class 14

Trade Mark:  

Registration No:              907619

Priority Date:  14 February 2002

Goods:Class: 14 Precious metals and their alloys and goods in precious metals or coated therewith; jewellery, precious stones; timepieces and chronometric instruments

Trade Mark:  

1. Both of the priority dates of the above registrations are earlier than the priority date of this opposed application and the expression ‘alarm clock’ falls within the general expressions ‘timepieces and chronometric instruments’ and ‘horological and chronometric instruments’ within the specifications appearing immediately above.

2. Thus, the sole question for my consideration is whether I am satisfied, on the balance of probabilities, the trade marks involved are deceptively similar when used on, or in relation to, alarm clocks.

3. Section 10 of the Act defines the expression ‘deceptively similar’:

   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.

4. The expression also received judicial consideration in Registrar of Trade Marks v Woolworths [1999] FCA 1020, 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."

5. The comparison of the trade marks in question was discussed by the Full Bench of the Federal Court in C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539 at paragraph 40, as follows:

   There is no room for doubt, in general terms, about the test to be applied. In Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658, Dixon and McTiernan JJ described it as follows:

   "But, in the end, it becomes a question of fact for the Court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained.

   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 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."

   Equally well known is the following passage from the judgment of Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415:

   "On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. 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."

   Windeyer J added, at 416, that "[the] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone but, by the effect of that similarity in all the circumstances". Thus, for instance, although the present Trade Marks Act contains no analogue of s 66 of the Trade Marks Act 1955 (Cth), it is still true that questions of deceptive similarity must be considered against the background of the usages in the particular trade.

6. And the comparison is to take account of the circumstances of trade, and all of the surrounding circumstances in the comparison; in In Re Application by the Pianotist Co Ltd (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. 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.

7. The opponent has filed no evidence as to the marketplace in which alarm clocks are bought and sold.  In my general observations of the world, alarm clocks are sold through stores such as department and electrical stores.  I am not sure whether they are also generally sold, for example, alongside other goods such as watches in jewelers stores, pharmacies, or at the stands one sees in shopping centres or malls that sell watches.

8. The opponent in its submissions places a great emphasis on the phonetic similarity of the words within the trade marks of the parties.  Obviously, if the goods are sold where they are likely to be the subject of verbal request by reference to the trade marks, as within jewelers’ stores, this similarity gains a great importance.  If, however, the trade marks are likely to be sold where the goods are self-selected by the purchaser, as within a department store or electrical stores, the phonetic similarity of the words within the trade marks may not be a deciding factor in the selection of the goods (and thus a source of confusion) when there are otherwise obvious differences in both the appearance of the word and the overall look of the trade marks by which they will be distinguished from each other.

9. For whatever reasons, the opponent has not chosen to put on evidence as to the marketplace for alarm clocks and it is inappropriate that I do this work for the opponent.  In the absence of such evidence, I must rely on my own observations of the world.  In my experience, the alarm clocks are sold in circumstances where there is a high degree of self-selection as in department stores or electrical retailers – I would suppose that some alarm clocks might be sold through jewelers but I am not certain of this – or whether the goods are self-selected within these stores by customers. 

10. Further, the goods are ones where there is a degree of expense and consequently some caution should normally be exercised in the purchase of the goods and it is more likely than not that alarm clocks are carefully examined prior to purchase.  The goods are not normally bought in haste.  This would apply in particular within jewelers stores (if alarm clocks are normally sold there) where the goods are likely to be more expensive.

11. Thus, balancing these factors, and the uncertainties, I am not satisfied, on the balance of probabilities, that the trade marks are deceptively similar or that whatever similarities that exist are such that they are likely to be the source of confusion.  It is apparent that on any visual inspection of the trade marks, they are quite dissimilar.  Nor are they likely to be misremembered for each other.

12. I also note that the opponent states that I should consider the post-sale use of the trade mark and the effects of the similarity of the trade marks in radio advertising.  In my experience, it would be most unusual for alarm clocks to be advertised on radio.  In the absence of evidence, the submission thus calls for a degree of speculation on my part – if the goods bearing the opponent’s trade mark have in fact been advertised on radio, this is information within the opponent’s control and should be easy for the opponent to demonstrate.  I would very obviously be wrong both in regard to the radio advertising of the opponent’s alarm clocks and the radio advertising of alarms clocks in general, but this evidence is not before me.  As to post-sales use: although the opponent quotes Levi Strauss v Kimbyr Investments (1994) 28 IPR 149 in support of this proposition, there are two immediate problems with the suggested approach. Firstly, such use would prima facie appear to fall outside the definition of ‘trade mark’ within the Act:

    17  What is a trade mark?

    A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

    Note:For sign see section 6.

    [Stress added]

13. Prima facie, once goods have been sold, they have passed out of the course of trade.

14. The second problem is this: the proposition is unsupported by any evidence of how such confusion is likely to occur and calls for speculation on my part whereas the onus is on the opponent to establish its grounds of opposition.

1. The opponent has not established its ground under section 44 of the Act.

Decision

1. Section 55 of the Act provides:

   Decision

   55. 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 opponent has not, as stated above, established its ground of opposition.

3. The trade mark application may therefore 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.

Iain Thompson

Hearing Officer

Trade Marks Hearings

18 June 2008