Teleflora (Australia) Inc v Roll International Corporation

[1997] ATMO 72

TRADE MARKS ACT 1955

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

Re:Opposition by Roll International Corporation to the registration of trade mark applications number 619574, 619575 and 631078 in the name of Teleflora (Australia) Inc.

Background:
After examination, trade mark applications number 619574, 619575 and 631078 were advertised as having been accepted for registration.  The applicant is Teleflora (Australia) Inc., which I will refer to simply as “the applicant” from this point.  For reference, however, it is clear from evidence on file that the current name of the applicant is Global Flower Services, a body incorporated in Victoria.

The mark in question is as follows:

and the goods and services specified are:

• Live plants, live flowers, horticultural products in this class, arrangements of live plants, arrangements of flowers and other horticultural products in this class and all other goods, being goods included in class no. 31 (application 619574, in class 31)

• Business and advertising services including services relating to provision of clearing house services (application 619575, in class 35)

• floral and plant supply and distribution. (application 631078, in class 42)

Registration of the application is opposed by Roll International Corporation (“the opponent”) on various grounds.  The opposition process has followed the course set out in the regulations.  Both sides served evidence to support their positions and the opposition came on for hearing and decision by me as a delegate of the Registrar of Trade Marks.

In general terms, the applicant appears to be a trade association.  Its members are florists - 346 of them in 1980, 688 in 1993, the year the first two of the opposed applications were filed.  Payment for flowers is arranged, and orders filled, by way of a clearing house service provided by the applicant. 

The applicant was previously authorised, by the opponent, to use the opponent’s trade mark but, for whatever reason, this arrangement was cancelled by the opponent.

At the hearing, the applicant was represented by Mr B. J. Hess of counsel.  The opponent did not appear, relying instead on written submissions, to which Mr Hess responded at the hearing.  Those

written submissions were prepared by its patent attorney, Mr Simon Williams of the attorney firm of Spruson and Ferguson.  It will be convenient to merge my assessment of the opponent’s case with my assessment of its evidence, which consists of a declaration by the same Mr Williams.

As set down in the transitional provisions of Part 22 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to govern this opposition.  Accordingly, the provisions to which I will refer, below, are those of the 1955 act.

Essentially, the opponent relied, at the hearing, on two trade mark registrations, numbers 438959 and 564937.  These are for a trade mark as follows:

registered for:

• Vases, flower pots and other containers in this class for flowers; watering cans and watering pots; baskets in this class; all the foregoing being in the nature of household or domestic utensils  (registration number 438959, in class 21) and

• Business services including clearing house services (564937, in class 35)

This position has been somewhat overtaken by events, however.  A third party had, by the time of the hearing, filed an application to remove the latter of these registrations, under the provisions of s 92 of the Trade Marks Act 1995.  This allows for the removal of apparently unused registrations.  The removal application was filed on 4.4.97 and was subsequently advertised for opposition by any party wishing to oppose removal of the attacked registration.  There has been no such opposition and accordingly, as provided under s 97(1), that trade mark registration has been removed from the register.

While it is settled law that the rights of the parties are to be assessed and balanced at the date the disputed applications were made, the decision with which I am concerned will turn, as I explain below, on section 33. That section is written in the present tense. It specifies when a trade mark “is” not capable of registration.

Under s 33, the decision is best made on the state of the register at the time the opposition is to be decided. Since doing this will considerably reduce the complexity of what follows, I will explain, now, why it is so.

Section 33 sets out a stipulation as to what is to be registered, based entirely on the state of the register. Mr Williams submitted that it would be premature to make a decision where the non-use application has not been finalised.  That is, of course, correct.

The fact that a registered trade mark has been abandoned, for example, does not restrict the action of s 33 so long as the mark remains on the register. However, once the register is freed of the mark in question, that must be the end of the obstruction.  Registration of a later application can then proceed without regard to the formerly conflicting registration.

Were this not so, and was the fate of an application unalterably set at the date it was made, there would be no need for a provision like section 72, which reads:

72. Where a trade mark has been removed from the Register for non-payment of the fee for renewal, the trade mark shall, for the purpose of an application for registration by another person lodged not later than 12 months next after the expiration of the last registration, be deemed to be a trade mark which is already registered, unless it is shown to the satisfaction of the Registrar that-

(a) there has been no use in good faith of the trade mark during the 2 years immediately preceding the expiration of the last registration; or

(b) no deception or confusion would be likely to arise from the use of the trade mark which is the subject of the application for registration by reason of any previous use of the trade mark which has been removed.

If the state of the register at the time the later application was filed was the critical thing then, fairly obviously, this deeming provision would be entirely redundant.

It is settled practice that, once the twelve months referred to in s 72 have passed without renewal, the later application will again be free to proceed.  See, in this regard, the practice in the UK Trade Marks Office set out in POLYMAT Trade Mark (1968) RPC 124. However, the practice is equally settled in this country. Here I refer to, among others, Legal and General Life of Australia Ltd v Carlton-Jones & Associates Ltd (1987) AIPC 90-387 at p 37,470. The latter case is directly to the point in that it refers specifically to the consequences of removal of a trade mark from the register on grounds of non-use.

Accordingly, in the decision which follows, I will give no weight to the now-removed registration in class 35. 

Issues
Section 33
Mr Williams made his primary submissions under only section 33 of the Trade Marks Act 1955.

In essence, section 33 requires three questions to be resolved: Are the competing marks substantially identical? Are they, if not, then at least deceptively similar? Are the competing goods or services the same, of the same description or closely related?

Mr Hess, for the most part, did not dispute the principles relied on by the opponent in relation to the question of substantially identical trade marks.  He argued, from these, that the marks are not substantially identical.  Here, I agree with him.  That is the only conclusion that is open when the matter is approached in terms of Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 405 at 414-415.

Mr Hess added one significant case to the list relied on by the opponent in relation to deceptive similarity:  Australian Woollen Mills Ltd v F. S. Walton; (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."

He argued that the many individual differences between the competing marks have to be considered.  He contrasted the two devices as, on the one hand, a static or brooding bird and, on the other, a bird circling the globe.  He argued that the differences, in practical everyday use within the boundaries set by the applications, would overshadow the similarities.  The similarities, in his view, arise only from the fact that these are simply two bird devices with, in his view, little more in common than that.

However, here I do not agree with him.  There are, it is true, several differences.  Side by side, the differences are quite noticeable.  However, the proper comparison for the purposes of this test is the classic one:  imperfect recollection of one trade mark in a situation where the other trade mark is in normal and fair use.  In such a comparison, I must exclude the perceptions or misunderstandings of unusually careless people and postulate normal and fair use of both the marks applied for, on any of the goods or services specified, and of the opponent’s mark on either of its registrations.  When this is done, I believe that there is a significant risk of deception or confusion.  Not by any means a certainty, but to a level which, unless there is no conflict of goods and services, would require refusal.

Anticipating such a finding, Mr Hess addressed the possible overlap of competing goods or services.  He accepted as appropriate the cases relied on by Mr Williams.  In particular, he agreed that the test as applied by Romer J in Jellinek’s Application (1946) 63 RPC 59 was an appropriate one. Romer J had simplified the factors to be considered down to three broad headings: nature, uses and trade channels.  He also added the reservation that not all three criteria had to be fulfilled to find similarity.  This formulation was approved in Australia in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

On that authority, Mr Hess submitted that the opponent’s registration in class 21 did not conflict with any of the goods or services specified in the applications.

Mr Williams drew attention to the fact that, of the opposed applications, 619574 covered, among other things, live plants and arrangements of live flowers.  These, he said, were of the same description as the class 21 goods.  He relied, in this, on the circumstances prevailing in the floristry industry.  His written submissions pointed me, by way of supporting his claim, to the applicant’s own evidence, and I have carefully examined the declarations in question. 

I note that florists sell flowers. At florists, flowers are displayed in buckets, vases and tubs.  The evidence seems to be fairly clear on that point.  However, there is no evidence that florists are ordinarily thought to apply their trade marks to these items in any way that would indicate a connection in the course of trade between the containers and the florists.  Nor is there any suggestion, in the evidence, that suppliers of business and advertising services to, among others, florists, are ordinarily closely related to suppliers of plants, cut flowers and other living things.  While Mr Williams argued to the contrary, he did not identify a single item in the evidence which would verify this.

As to the second application, 619575 in class 35, Shanahan notes at p 193-194 of Australian Law of Trade Marks and Passing Of, that the Jellinek tests referred to above are adapted to detect closely related services for the purposes of s 33. In my view, and proceeding on that basis, Mr Hess is correct: the opponent’s registration in class 21 does not conflict with application 619575.

There is simply no reason to accept that these are closely related goods and services.  The clearing house services provided by the applicant are distinguishable in nature, uses and trade channels.  Again, the trade promotion services which the applicant provides, and any others which fall within the scope of the claimed “advertising services”, are promotion services, not floristry services or services aimed particularly at florists.  The evidence does show that the applicant provides, through at least one TAFE College, training to students of floristry.  That, however, is outside the scope of class 35 and is irrelevant to the question of registration, or otherwise, for the specified class 35 services.

As to the final application, 631078 in class 42,

Mr Williams made brief submissions to the effect that vases, flower pots and the other domestic and household utensils covered by the opponent’s class 21 registration were closely related to the applicant’s “floral and plant supply and distribution services”.  Given what I have already said about the lack of overlap between the opponent’s registration in class 21 and the class 31 and 35 applications, I do not agree with this.

Accordingly, I do not find that the opponent’s sole surviving registration, 619574 in class 21, is the source of any conflict under s 33.

Intention to use
This was Mr Williams’s secondary submission, by which he impugns the applicant’s intention to use in relation to all of the goods or services specified.  However, Mr Williams failed to point to any evidence by which that intention is seriously undermined. 

The Trade Marks Office has for many years, up to the introduction of the Trade Marks Act 1995, accepted quite broad claims for services and routinely accepted statements such as “all goods in this class”.  Equally, where such a ground is relied on in opposition, the position is quite well settled, since at least as long ago as Titan Manufacturing Co Pty Ltd v John Terence Coyne, (1991) 22 IPR 613.  In simple terms, it is for the opponent to seriously call into question the intention to use.  This can only be done by evidence, not by argument at the hearing.  Where there is no such evidence, an applicant that has met the Registrar’s requirements in relation to establishing an intention to use is under no onus whatsoever to
re-establish its intention in relation to all or some of the goods or services in question.  Accordingly, I am entitled to ignore the fact that the applicant’s evidence makes no reference to use or intended use on various services and goods that are not necessarily closely related to the floristry trade.

Mr Williams did not press his argument under this heading.  I do not think that now, when most of the oppositions conducted under the 1955 Act are headed for conclusion, would be the time to change a well-established direction.

Accordingly, this ground also fails and I dismiss the oppositions under that heading.

Conclusion
The oppositions have failed entirely and I dismiss them.  I direct that registration proceed.  In so doing, I award costs to the applicant.

T. Williams

Hearing Officer.
26 November 1997