Techtronic Power Tools Technology Limited v Global Power Brands International Pty Ltd

[2014] ATMO 109

TRADE MARKS ACT 1995

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

Re:Opposition by Techtronic Power Tools Technology Limited to registration of trade mark application 1459038(7) - SAWZILLA - filed in the name of Global Power Brands International Pty Ltd.

Delegate:	Debrett Lyons
Representation:	Opponent: Amanda Caldwell of Spruson & Ferguson, Patent & Trade Mark Attorneys Applicant: Did not attend; relied on written submissions
Decision:	2014 ATMO 109 s52 proceedings: ss42(b), 44, 60 and 62A pressed – none established; application to proceed to registration; costs awarded against Opponent

Background

1. On 11 November 2011 (‘the Priority Date’), Global Power Brands International Pty Ltd (‘the Applicant’) applied to register SAWZILLA (‘the Trade Mark’)  in respect of “power tools” in class 7 (‘the Goods’).

2. The Trade Mark was examined and accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 8 March 2012.

3. On 8 June 2012, Techtronic Power Tools Technology Limited (‘the Opponent’) sought and obtained an extension of time to 8 September 2012 to oppose the Trade Mark.

4. On 7 September 2012, the Opponent lodged a Notice of Opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) listing most of the available grounds for opposition.

5. The parties filed and served evidence in accordance with the Trade Mark Regulations 1995, comprising:

• the Opponent’s evidence in support being a Statutory Declaration of Michael Brendle made on 8 April 2013 with Exhibits 1 to 11 (‘the Brendle Declaration’) and a Statutory Declaration of Amanda Caldwell made on 7 May 2013 (‘the Caldwell Declaration’);

• the Applicant’s evidence in answer being a Statutory Declaration of Peter John Hosking made on 19 September 2013 with Exhibits PJH-1 to PJH-4 (‘the Hosking Declaration’).

1. The Opponent did not file evidence in reply to the Applicant’s evidence.

2. A hearing was convened in Sydney on 11 August 2014 where the Opponent was represented by Amanda Caldwell of Spruson & Ferguson, Patent & Trade Mark Attorneys.  The Applicant was not represented by relied upon written submissions prepared and filed on its behalf by EKM Legal.

3. The Opponent also made written submissions from which it was clear that it intended to rely for its opposition on sections 42(b), 44, 60 and 62A of the Act and those grounds were the only grounds pressed at the hearing.

Onus, Legislative framework and Submissions

1. The Opponent bears the onus of establishing one or more of the aforementioned grounds of opposition on the balance of probabilities.[1]

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663

2. The date at which the grounds of opposition must be established is the Priority Date of the application.[2] 

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.

3. Notwithstanding the Opponent’s statement that it had not abandoned any of the grounds of opposition listed in the Notice of Opposition, I find that the grounds not pressed have not been established.  They can, of course, be argued should my decision be appealed.

4. With the exception of section 62A which provides a basis for opposition in the case of an application filed in bad faith, the grounds pressed by the Opponent rely in common on confusion in some form or another. In that regard, the Opponent is the owner of Australian trade mark registration No. 1383116 for SAWZALL (‘the Registration’ or ‘the Opponent’s Mark’ as the context requires) for class 7 goods being “portable reciprocating power saws and saw blades”. The priority date of the Registration is 10 September 2010.

5. The Opponent maintains that the goods of the Registration are similar to the Goods of the application and that Trade Mark is deceptively similar to the Opponent’s Mark.  Moreover, it submits that the Opponent’s Mark has been used in Australia in relation to the goods of the Registration continuously for more than 25 years and that by reason of sales and promotion of those goods over that period, use of the Trade Mark would be likely to cause confusion or deception amongst the Australian public.

6. The evidence is that the Trade Mark has yet to be used in Australia but that the intention is that it be applied to a type of circular saw. The Opponent alleges, for the purposes of section 62A, that the Applicant knew of the Opponent’s business and targeted the Opponent’s Mark and so had applied for the Trade Mark in bad faith.

7. The Applicant broadly denies all of those allegations.

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).

2. The Registration has as an earlier priority date than that of the Trade Mark and is owned by a person other than the Applicant.  It remains for the Opponent to show that the goods of the Registration are “similar goods” [3] to the Goods and that the trade marks in question are “deceptively similar” (there being no submission that they are substantially identical).

   [3] As defined in s 14(1) of the Act, namely the same goods or goods “of the same description”.

3. The Registration covers “portable reciprocating power saws and saw blades”.  There is no doubt that the Goods - “power tools” – are either the same goods or goods of the same description as those covered by the Registration.

4. The remaining question is whether SAWZILLA and SAWZALL are “deceptively similar”, an expression defined by section 10 of the Act. In The Coca-Cola Company v All-Fect Distributors Ltd, (1999) 96 FCR 107; 47 IPR 481, section 10 was considered by the Full Federal Court. In a joint judgment, Black CJ, Sundberg and Finkelstein JJ said the following at [39]:

   Section 10 of the Act provides that a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion. No intention to deceive or cause confusion is required: Re Bali Brassiere Co Inc's Registered Trade Mark (1968) 118 CLR 128 at 139. The distinction between “likely to deceive” and “likely to cause confusion” lies not in some element of culpability in the user to be inferred from the word “deceive”, but in the effect of the mark on prospective purchasers. In Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 423 Richardson J, in the New Zealand Court of Appeal, said:

   “Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public … Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.

5. The Opponent submitted that:

   The relevant principles to apply in considering deceptive similarity were set

   out in Australian Woollen Mills Ltd v FS Walton and Co Ltd (1937) 58 CLR 641:

   ...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 … for which the protection … is sought.  The impression or recollection which is carried away or 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 … 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…

   With the above principles in mind, it is submitted that the Applicant’s Mark SAWZILLA and the Opponent’s Mark SAWZALL are deceptively similar to each other because:

   ·We note that both SAWZALL and SAWZILLA are invented words in that neither is defined in the English dictionary.

   ·Both marks contain as their first and arguably dominant element the prefix SAWZ.  Further, the Opponent’s Mark is the only registered trade mark on the Register which contains the prefix “SAWZ-”, in Class 7 or indeed any class of goods or services.

   ·Both marks have a similar look and convey a similar impression when pronounced.

   ·The Opponent owns a prior registration for SAWZALL covering the same or similar goods in Class 7.

6. At another place in its written submissions the Opponent states that:

   The Applicant has chosen a trade mark which contains the prefix “SAWZ”, including a distinctive misspelling which includes the letter “Z”.  The prefix is identical to that contained in the Opponent’s Mark, and as a result the look, sound an impression conveyed by the respective marks as a whole is such that they are deceptively similar.  Indeed, the impression conveyed is that the Applicant’s goods are a variation or subset of the Opponent’s SAWZALL products.

7. The Applicant’s submissions are that:

   The comparison of two marks requires the decision maker to consider the visual, aural, and conceptual similarities and differences. …

   Visually

   The Opposed Trade Mark is composed of a term of 8 letters. The Opponent’s Trade Mark is composed of a term of 7 letters.

   The additional letter I, the final letter A and the specific sequence of letters “ILLA” give a very specific and distinct look to the Opposed Trade Mark.

   The prefix SAW- will be immediately perceived as a reference to the nature of the subject goods. In fact, the term SAW is directly descriptive of the “portable reciprocating power saws and saw blades” claimed by the Opponent’s Trade Mark. Thus, when seeing the trade marks in the context of the relevant goods, the consumers will not pay much attention to that part of the marks, but will naturally focus their attention on the dominant parts of the marks, being the suffixes –ZALL and –ZILLA. The prefix SAW- will thus not be decisive in the overall visual impression made by the marks.

   In contrast, the differences between the dominant portion of the marks, –ZILLA and –ZALL, including their lengths and the specific sequences of letters, are visually striking.

   The suffix –ZILLA is a substantial and visually predominant portion of the Opposed Trade Mark that confers a very specific look to the mark and is clearly distinct from the suffix –ZALL of the Opponent’s Trade Mark.

   Therefore and considered as wholes, the Trade Marks at stake are visually strongly dissimilar.

   Phonetically

   The Opposed Trade Mark is composed of three syllables SAW-ZIL-LA. The Opponent’s Trade Mark is composed of two syllables SAW-ZALL.

   As noted above, the prefix SAW- is a clear reference to the nature of the goods. Thus, when pronouncing or hearing the marks in the context of these goods, the consumers will not pay much attention to that part of the marks, but will naturally focus their attention on the dominant parts of the marks, being the suffixes –ZALL and –ZILLA. The prefix SAW- will thus not be decisive in the overall aural impression made by the marks.

   In contrast, the suffixes –ZILLA and –ZALL are very different in sounds and rhythms. The additional letter I and the final letter A in the Opponent’s Trade Mark create a much stronger and longer sequence of sounds, composed of two syllables ‘ZIL - LA’, whereas the suffix –ZALL is much shorter (one syllable only) and much shorter and softer in sound. Moreover, the letter Z is pronounced as a strong “Z” in the Opposed Trade Mark SAWZILLA, whereas it is pronounced as a soft “S” in the Opponent’s Trade Mark, i.e. “saws-all”. The marks as wholes are therefore clearly different in sound and pronunciation.

   In Advance Magazine Publishers Inc v Tags & Accessories Pty Ltd [2004] ATMO 15 (22 March 2004) regarding the marks GLAMOUR and GLAMGIRL, the Registrar found that:

   “The second syllable of GLAMOUR, 'uh', is short and pronounced softly whereas the two syllables of GLAMGIRL are equally dominant and strongly pronounced so that aurally there are obvious differences in the trade marks”.

   The suffix –ZILLA is a substantial and phonetically predominant portion of the Opposed Trade Mark that confers a very specific sound to the mark and is clearly distinct from the suffix –ZALL of the Opponent’s Trade Mark.

   Therefore and considered as wholes, the Trade Marks at stake are phonetically strongly dissimilar.

   Conceptually

   Not only are the Trade Marks visually and phonetically dissimilar, but they are also extremely different from a conceptual point of view.

   The Applicant preliminary notes that the only common part of the marks, namely, the prefix SAW-, is a clear reference to the nature of the goods at stake. In fact, the prefix SAW- is directly descriptive of the “portable reciprocating power saws and saw blades” claimed by the Opponent’s Trade Mark.

   In this regard, there are numerous trade marks registered for goods in class 7 in Australia, that include the descriptive term SAW as a prefix or suffix, including trade marks that predate the Opponent’s Trade Mark, and in particular:

   ·    SAWPREME No. 486553 of 6 May 1988, registered for “metal cutting circular saw blades” in class 7;

   ·    DINASAW No. 504218 of 3 February 1989, registered for "all goods in class 7 including saw blades of all kinds being parts of machine tools; machines for manufacturing, servicing or using saw blades including machines for the manufacture of bandsaw blades or circular saw blades and in particular machines for continuous manufacture of bandsaw blades from stock material; machines for sharpening saw blades; sawmills and other machines not being hand tools on which saw blades are used; and parts and accessories included in class 7 associated with machines for manufacturing, servicing or using saw blades”;

   ·    HewSaw No. 619765 of 5 January 1994, registered for “sawmill machines” in class 7;

   ·    SAWTEC No. 802475 of 3 August 1999, registered for “machines and machine tools including air powered saws, diamond blades, dustless saw crack chasers for cutting out cracks in concrete prior to repair, cutters (machines), tile and grout cutters; accessories in relation to all the foregoing, including blades (parts of machines)” in class 7;

   ·    Allsaw No. 827412 of 13 March 2000, registered for “a handheld, stone, masonry and wood cutting tool, being either electrically or petrol driven” in class 7;

   ·    SPIRAL SAW No. 863541 of 22 January 2001, registered for “motor driven, hand held power cutting tools and parts and bits therefor; power tool attachments, including tools for converting cutting tools into a grinder, sander and polisher; cutting bits for cutting drywall, plastic foam, wood, tile and the like for use with the aforementioned power tools” in class 7;

   ·    TERRASAW No. 938186 of 17 December 2002, registered in particular for “earth cutting equipment, portable earth cutting equipment, earth sampling equipment, portable earth sampling equipment, portable trenching equipment, hand-held motorised trenching equipment, motors for hand-held trenching equipment, accessories for chain saws” in class 7;

   ·    SERPENTINE SAW No. 1185822 of 6 July 2007, registered for “power tools, namely, power saws, and carrying cases therefor” in class 7;

   ·    SAW CAM No. 1211257 of 21 November 2007, registered in particular for “machine and machine tools, AC power operated circular saws, AC power operated jigsaws, battery operated jigsaws, AC power operated mitre saws, AC power operated bench saws, AC power operated saws, battery operated saws, AC power operated chainsaws, gasoline operated chainsaws” in class 7;

   ·    SAWCAT No. 1224638 of 14 February 2008, registered for “power tools including circular saws, jigsaws, mitre saws, compound mitre saws, band saws and blades” in class 7;

   ·    SAW MAN No. 1323396 of 16 June 2009, registered for “electrical drills; drilling bits (parts of machines); drill chucks (parts of machines); drilling heads (parts of machines); reamers (parts of machines); milling cutters (parts of machines); bits (parts of machines)” in class 7;

   ·    JAWSAW No. 1444649 of 24 August 2001, registered for “power operated tools; saws in this class” in class 7;

   ·    RIFLE SAW No. 1499577 of 28 June 2012, registered for “power tools; power saws, power drills, power-driven screwdrivers, power sanders, power grinders, power multi-tools, power hole saws, power reciprocating saws” in class 7.

   In Conde Nast Publications Pty Ltd v Virginia Taylor [1998] 864 FCA regarding the marks VOGUE and EUROVOGUE, Burchett J found that:

   “It should be borne in mind that "vogue" is neither a made-up word nor a word wholly without any direct application, in the ordinary use of language, to the goods in question. A trader is not entitled to monopolize such a word, denying its use entirely to other traders. Deceptive or confusing use is barred by the applicant's registration, but the Court should be careful not to shut out inappropriately other traders from the fair use of the language in ways that will not in reality deceive or confuse”.

   Obviously, the Opponent cannot claim any exclusive rights on the term SAW in relation to the relevant goods.

   In addition, the marks considered as wholes and in their dominant parts, are not conceptually similar.

   The Opponent’s Trade Mark is an obvious misspelt of the terms “SAWS” and “ALL” and sounds like “SAWS-ALL” which is calculated to convey the message that the Opponent’s reciprocating saws can cut through more or less anything, a desirable quality for this type of products.

   The Opponent’s Trade Mark is therefore highly descriptive and laudatory and its inherent capacity to distinguish (and therefore to work as a trade mark) is extremely limited. In this regard, the Applicant notes that the Opponent’s Trade Mark No. 1383116 was accepted under the provisions of subsection 41(5) of the Trade Marks Act 1995 Cth, which strongly suggests that the Registrar was preliminary of the view that the mark was not inherently distinctive, most likely because of the reason outlined at paragraph 40 above.

   In contrast, the Applicant’s Trade Mark SAWZILLA is a highly distinctive mark: SAWZILLA is a fairly obvious play on words referencing the Japanese science-fiction monster, Godzilla. As noted in the Hosking Declaration, the Applicant’s intention in adopting the mark is that “the suffix –ZILLA connotes the strength and power of both the fictional monster and, hopefully, the Applicant’s products marketed by reference to this trade mark”.

   The Applicant submits that Godzilla is an extremely famous fictional character and, when encountering the mark, consumers will immediately notice and remember the clever pun and fanciful reference.

   Further, the Applicant is the owner of Trade Mark No. 1333058 jawzilla of 24 November 2009, duly registered for “tool holders for machine tools; power tools” in class 7 and “tool holders for hand operated tools” in class 8, which is prior to the Opponent’s Trade Mark No. 1383116 SAWZALL. As noted in the Hosking Declaration, the Opposed Trade Mark was conceived by Mr Hosking on behalf of the Applicant as a reference to the “jawzilla” trade mark, using the same play on words referencing Godzilla. The Opposed Trade Mark was obviously conceived and adopted in good faith, as part of a “family of trade marks” using common distinctive references.

   In addition, the Opponent’s Trade Mark will be understood as two distinct words (“SAWS-ALL”) composing a fairly descriptive expression, whereas the term SAWZILLA is one single made-up word and a highly distinctive mark, alluding to a fictional “saw monster”. Accordingly, the marks at stake convey completely different meanings and ideas.

   According to a constant case law, where two marks have dissimilar meanings, or one has a meaning and the other none, they will be more easily distinguished by consumers (Home Court International Limited v Rivers (Australia) Pty Ltd [1997] ATMO 4).

   In Societe Des Produits Nestle S.A. v Newmans Chocolates Ltd [2004] ATMO 50 (30 August 2004), the Registrar decided that Milkbears was not deceptively similar to MILKY BAR or MILKYBAR, because:

   “The word `milk' or `milky' has some utility in relation to the goods of the parties. `Milk' chocolate is made by many traders and the applicant's evidence shows that this is reflected on the Register of Trade Marks. The point being that consumers do not view descriptive matter as distinguishing between goods and look for other factors which do distinguish when making their purchases. Additionally, the applicant's evidence shows that the word `bar' also occurs frequently on the Register of Trade Marks. The words `bar' and `block' appear (in my observations of the world) to be used more or less interchangeably to describe the oblong shape in which some confectionery is sold.

   Thus, when one looks for an essential feature within the opponent's trade mark, one is forced to the conclusion that there is none. The trade mark is composed of comparatively weak trade mark matter and derives its strength only through use and acquired distinctiveness of the whole. This is the source of the `endorsement' on the opponent's first registration of the trade mark MILKY BAR: the trade mark was registered on evidence of use by the authorised user of the trade mark. One the other hand, the world `bear' appears to have no immediate facility in relation to the applicant's goods, any more than would the words `moon' or `unicorn'.

   Thus in the comparison of the trade marks, the opponent's trade marks must be considered as wholes, whether as MILKYBAR or MILKY BAR: they form a corporate identity where the purchaser relies exclusively on the recognition of the whole. On the other hand, the applicant's trade marks has an immediately recognisable and distinctive essential feature, the word `bears'.

   Thus, I think, it immediately follows from the above conclusion that the ideas of the trade marks are quite different. The opponent's trade marks, taken literally, in relation to the goods, immediately conjure up an idea of a bar or block which is milky. The applicant's trade mark, similarly considered, conjures up an image of a confectionery bear comprised of milk. It is an incongruous image and entirely unalike that brought to mind by the opponent's trade marks.

   These above factors do, I think, dispel any concerns that the trade marks of the parties might be imperfectly recalled and be mistaken for each other”.

   This decision is particularly relevant to the present case. The meanings and evocations conveyed by the marks SAWZILLA and SAWZALL are totally different. There are striking differences between the marks from a conceptual point of view. The consumers will immediately notice these differences and distinguish the marks on this basis, especially because the inherent distinctive character of SAWZALL is extremely low, whereas SAWZILLA is a highly distinctive mark.

   The Trade Marks at stake are therefore extremely dissimilar from a conceptual point of view.

   Relevant market

   The relevant goods (Portable reciprocating power saws and saw blades, on one hand, and power tools, on the other hand) are of highly technical/technological and specialized natures and purposes. They are purchased by well advised and informed consumers for specific needs and applications.

   The relevant goods are not fast moving consumer products. A high degree of attention is generally connected with the purchase of these products, especially because these purchases are likely to be expensive and/or infrequent. Moreover, customers would often seek professional assistance or advice when choosing or buying such products.

   Because of the specific nature of the goods claimed, customers will exercise a high degree of care in their selection and will buy the goods only after careful consideration, thus paying particular attention to the products’ brands. Given the significant differences between the marks at stake, it is therefore extremely unlikely that the relevant customers would confuse them.

1. In the case of Registrar of Trade Marks v Woolworths (1999) 45 IPR 411, French J found that the assessment of the likelihood of deception and confusion rested on a number of factors including what he described as a real tangible danger of confusion, rather than a mere possibility of such. His Honour stated that this was “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.”

2. Accordingly, my task is to determine what is memorable about the two trade marks and so decide, having regard to the similarity of impression created by the marks and to the other factors just mentioned, whether there is a real and tangible likelihood of confusion or deception.  In making that assessment I am required to assume use of the Opponent’s trade mark in a normal and fair manner on any of the goods covered by the Registration.  I must then be satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the Applicant uses the Trade Mark normally and fairly in respect of the Goods.

3. My finding is that the likelihood of confusion or deception is very remote.  I am in agreement with essentially all of the Applicant’s submissions.  I agree with the Trade Mark would be understood as an invented word which borrows from a common appreciation of the fictional character, GODZILLA.  I find that the “SAW” element of the Trade Mark would be seen as descriptive of the Goods and would not bring to mind the integer, “SAWZ”, of the Opponent’s Mark. The trade marks are not deceptively similar.

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

Section 60

1. Section 60 provides:

60  Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)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.

Note:For priority date see section 12.

1. The Opponent’s success under section 60 is contingent, in part, upon proof of a reputation in the Opponent’s trade mark in Australia before the Priority Date. In McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 (‘McCormick’) at [81] Kenny J said of reputation:

   What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public's mistakenly attributing a business connection between the two or attributing her product to the company?

2. The Applicant is critical of the evidence of alleged reputation adduced by the Opponent.  In particular, the Applicant submits that there is almost no dated evidence to support the Brendle Declaration’s claim to continuous use of the Opponent’s Mark in Australia for 25 years.  The Applicant points out that the only dated material postdates the Priority Date.  That evidence shows use of the Opponent’s Mark only in relation to reciprocating saws and reciprocating saw blades.  Moreover, the evidence very frequently shows use of the Opponent’s Mark together with the word, MILWAUKEE, apparently the Opponent’s house mark as evidenced by the Opponent’s websites and

3. I have taken account of the confidential sales and marketing figures set out in the Brendle Declaration (which I would characterize as modest) and of the Applicant’s criticisms.  I would think that a fair assessment is to say that the Opponent’s Mark most likely had a limited reputation in Australia at the Priority Date.

4. For the purposes of section 60, the question is whether consumers will be confused into believing that the Trade Mark signifies that the Goods emanate from the Opponent. In practical terms, that requires that I assess the likelihood of deception or confusion resulting from the combined effects of the reputation of the Opponent’s Mark, the degree of similarity of the trade marks and finally, the nexus of the goods.

5. It has been said that the likelihood of confusion rises with the degree of similarity of the compared goods.  The Hosking Declaration indicates that, at the time of filing, the Trade Mark was intended for use in Australia in connection with a twin-blade circular saw with two adjacent circular blades that rotate in opposite directions.   Such saws are used mainly to cut wood.  But, as I have said, the proper assessment requires that I assume fair use of the Trade Mark on “power tools”.  In Registrar of Trade Marks v Woolworths, op.cit. French J said at [50] that the question of confusion or deception:

   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] HCA 43; (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."

6. I therefore can place very little significance on the distinctions between different saw types made by the Applicant, other than to note with general approval its submission that power tools, including power saws, are the type of goods which are purchased with a degree of attention and not carelessly.

7. In short, notwithstanding the similarity of the compared goods, the Opponent’s Mark had a limited reputation at the relevant time and it is already clear from what I have said in regard to section 44 that the danger of confusion of the trade marks is marginal. I find that the section 60 ground of opposition has not been established.

Section 42(b)

1. Section 42(b) provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law. The law on which the Opponent relies is the Australian Consumer Law (‘ACL’) within Schedule 2 of the Competition and Consumer Act 2010. Relevantly, section 18 of the ACL provides:

   18  Misleading or deceptive conduct

   (1)  A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

   (2)  Nothing in Part 3‑1 (which is about unfair practices) limits by implication subsection (1).

   Note:          For rules relating to representations as to the country of origin of goods, see Part 5‑3.

2. Subsection 29(g) of the ACL provides:

   29  False or misleading representations about goods or services

   (1)  A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:

   […]

   (g)  make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits;

   […]

   Note 1:       A pecuniary penalty may be imposed for a contravention of this subsection.

   Note 2:       For rules relating to representations as to the country of origin of goods, see Part 5‑3.

3. The principles which apply are those enunciated in relation to the corresponding provisions in the predecessor of the ACL – the Trade Practices Act 1974 – in particular section 52. In Re Equity Access Pty Limited v Westpac Banking Corporation and Westpac Savings Bank Limited and Challenge Bank Limited [1989] FCA 506; 16 IPR 431 Hill J at said [41]:

   1. For conduct to be misleading or deceptive the conduct must convey in all the circumstances of the case a misrepresentation: Taco Bell[4] at 202. In the present case the misrepresentation on the part of the respondents is said to be that the financial product advertised and marketed by each of them is the product of the applicant or that there is some business relationship between the applicant and each of the respondents or that the applicant has endorsed the respective product of the respondents.

   2. There will however be no contravention of s.52(1) of the Act unless error or misconception results from the conduct of the corporation and not from other circumstances for which the corporation is not responsible: Puxu[5] per Gibbs CJ at p 6 and per Mason J at p 15, Global Sportsman Pty Ltd v. Mirror Newspapers Ltd [1984] FCA 180; (1984) 55 ALR 25, at p 34.

   3. Conduct will be likely to mislead or deceive if there is a “real or not remote chance or possibility” of misleading or deception regardless of whether it is less or more than 50%: Global Sportsman at p 34. The question of whether conduct is misleading or deceptive or likely to mislead or deceive is an objective question which the Court must determine for itself. Hence evidence that persons in the relevant class have been misled will, although admissible, not be determinative. In some cases however such evidence will be very persuasive: Puxu per Gibbs CJ at pp 198-9.

   4. Conduct of a corporation causing mere confusion or uncertainty in the minds of the public in the sense that they may be caused to wonder whether two products may have come from the same source is not necessarily coextensive with misleading or deceptive conduct: Puxu at p 100; Bridge Stock Brokers v. Bridges [1984] FCA 391; (1984) 57 ALR 401 at p 413 per Lockhart J. Since actual deception need not be shown the Court must consider whether a reasonably significant number of potential purchasers would be likely to be misled or deceived: Weitmann v. Katies Ltd (1977) 29 FLR 336, 343. The test in passing off cases is usually expressed as being whether a “substantial number of persons likely to become purchasers ... are liable to be deceived by the defendant’s use of the name. On the other hand it is not necessary to show that all, or substantially all, persons in the market associate the name with the plaintiff’s goods, if this can be shown of a substantial proportion of persons who are probably purchasers of the goods of the kind in question.” (per Wilberforce J, as he then was, in Norman Kark Publications Ltd v. Odhams Press Ltd (1962) RPC 163 at 168 and see Saville Perfumery v. June Perfect Ltd (1941) 58 RPC 147 at 175-6, 10th Cantanae Pty Ltd v. Shoshana Pty Ltd (1987) 79 ALR 299 at 315 per Gummow J).

   5. In a case such as the present the applicant must establish that it has acquired the relevant reputation in the name, that is to say that the name had become distinctive of the applicant’s business in a particular country or geographical area: Sheraton Corporation of America v. Sheraton Motels Ltd (1964) RPC 202; BM Auto Sales Pty Ltd v. Budget Rent A Car System Pty Ltd (1976) 12 ALR 363. However at least in some circumstances very slight activities may be found to be sufficient to establish that a name has become distinctive of a person’s business in a particular country: Miki Shoko Co Ltd v. Merv Brown Pty Ltd (1988) ATPR 40-858.

   6. Section 52 is not confined to conduct which is intended to mislead or deceive: Puxu per Gibbs CJ at p 197 and a corporation which acts honestly and reasonably may none the less engage in conduct that is likely to mislead or deceive: Yorke v. Lucas [1985] HCA 65; (1985) 61 ALR 307 at p 309.

   [4] Taco Company of Australia Inc v. Taco Bell Pty Ltd [1982] FCA 136; (1982) 42 ALR 177

   [5] Parkdale Custom Built Furniture Pty Ltd v. Puxu Pty Ltd [1982] HCA 44; (1981-2) 149 CLR 191

4. For many of the same reasons I have already given in relation to sections 44 and 60, there is nothing before me to suggest that use of the Trade Mark would be contrary to the provisions of the ACL. This ground of opposition has not been established.

Section 62A

1. The issue is whether the application was made in bad faith and the Opponent’s submissions are that:

   The Applicant clearly applied for the Applicant’s Mark with the full knowledge of the Opponent’s Mark.  There is no basis for otherwise adopting a trade mark with a deceptively similar trade mark, the visual, phonetic and conceptual impression of which calls to mind the Opponent’s Mark, for use in connection with the same type of goods in which the Opponent has acquired such a significant reputation.  

   The Applicant understood that the trade mark SAWZALL remained the property of the Opponent but has deliberately set out to gain registration of a trade mark or adopt a trade mark in bad faith (Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26).

   The Applicant had knowledge of the Opponent’s use of its SAWZALL Mark … and would have been aware of the fame and reputation of the Opponent’s Mark as at the Relevant Date and sought to register a very similar trade mark having a similar format and including the prefix “SAWZ-” (Bombala Council v Peter Wilkshire [2009] ATMO 33).

2. The Applicant’s retort is that the Trade Mark was coined, adopted and filed in good faith and that there is simply no evidence of bad faith.

3. Whether the Applicant knew of the Opponent’s Mark before the Priority Date is not a sole determinant of bad faith and in the absence of more compelling evidence there is nothing to suggest to me bad faith at the time of application.  This ground of opposition is not established.

Decision

1. At the relevant date subsection 55(1) of the Act provided:

   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.

2. My decision is to register the Trade Mark.  In the absence of an appeal and once the registration fee has been paid, I direct that application 1459038 proceed to registration for all of the Goods one month after the date of this decision.

Costs

1. As the successful party the Applicant is entitled to its costs which I order against the Opponent to be calculated in accordance with Schedule 8 of the Trade Mark Regulations 1995.

Debrett Lyons
Hearing Officer
Trade Marks Hearings
4 November 2014