Teraglow Pty Ltd
[2016] ATMO 32
•31 May 2016
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1612770 (28) - SAMURAI WARRIOR DEVICE- in the name of Teraglow Pty Ltd.
| Delegate: | Nicole Worth |
| Representation: | Kellie Stonier, Griffith Hack patent and trade mark attorneys |
| Decision: | 2016 ATMO 32 Section 33 proceedings – section 44 – idea of mark alone may give rise to deceptive similarity – trade marks deceptively similar – application rejected. |
Background
This is a decision pursuant to s 33 of the Trade Marks Act 1995 (‘the Act’) which provides that the Registrar of Trade Marks must, after examination, accept an application to register a trade mark unless satisfied that, inter alia, there are grounds for rejecting the trade mark.
On 21 March 2014 Teraglow Pty Ltd (‘the Applicant’) filed an application to register the trade mark detailed below:
Application number: 1612770
Trade Mark: (‘the Trade Mark’)
Priority Date: 21 March 2014Goods:Class 28: Fishing tackle including hooks, leaders, lines, sinkers, swivels, floats, lures, nets, gaffs, traps, waders and artificial baits; tackle boxes; fishing reels; fishing rods (including rod blanks); fishing tools.
The application was examined and a ground for rejection under s 44 of the Act was raised on the basis that the Trade Mark was deceptively similar to the prior registered trade mark detailed below:
Registration no.: 909842
Trade Mark: SAMURAI
Priority Date: 17 April 2002
Registered owner: Globeride Inc.
Goods: Class 28: Fishing reels and fishing lines.The ground for rejection was maintained over the course of four examination reports, after which the Applicant requested a hearing in relation to the examination of its application. The hearing was requested to take place by way of written submissions only and the Applicant, via its representatives Griffith Hack Patent and Trade Mark Attorneys, filed written submissions on 20 January 2016.
The matter was allocated to me, as a delegate of the Registrar of Trade Marks, for determination. I mention here that the purpose of these proceedings is not a review of the examiner’s decision, but rather a fresh consideration of the ground for rejection.
I mention also that throughout this decision the words ‘image’ and ‘device’ are used interchangeably.
The Applicant’s Submissions
The crux of the Applicant’s argument is that in order for the Trade Mark and the cited trade mark to be considered deceptively similar, they must first bear a visual resemblance to each other. Only if they visually resemble each other may the ‘idea of the mark’ inform the consideration of whether they are deceptively similar.
The Applicant submits that the principle espoused in Jafferjee v Scarlett (‘Jafferjee’)[1] (encapsulated by the quoted words below) must be considered in the context relevant to that case; namely, in the context of a comparison between two devices broadly conveying the same subject matter (being in each two men engaged in athletic activity: running in one mark and holding javelins in the other).[2]
It is important to consider what has been described as the ‘idea of the mark’, that is, the idea which the mark will naturally suggest to the mind of one who sees it. Lord Herschell’s committee (quoted in Kerly on Trade Marks, 6th ed. (1927), at p. 270) put the point very clearly in the following passage: - ‘Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same; so that a person acquainted with the mark first registered, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that which he was acquainted. Take, for example, a mark representing a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football. It would be too much to expect that persons dealing with trade-marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing.’
[1] [1937] HCA 36.
[2] I note also that the trade marks at issue in Jafferjee were composite marks containing words as well: ‘Best Australian Roller Flour’ in one and ‘Double Javan’ in the other.
The Applicant argues that this principle cannot be extended from a comparison of two devices to a comparison of a word and a device. To this end it is submitted that the examiner of this application and the delegate in Constellation Australia Limited v Littore Family Wines Pty Ltd (‘Constellation’)[3] (to which the examiner referred) have erroneously extended the principle in Jafferjee, and that they are therefore inconsistent with s 10 of the Act and with both the High Court in Cooper Engineering[4] and the Full Federal Court in Sports Café[5] (these cases are discussed in more detail later in this decision).
[3] [2011] ATMO 47, wherein a device of an emu in respect of alcoholic beverages was found to be deceptively similar to trade marks, including the word EMU, on the basis that ‘Whatever may be said of the competing ideas evident in the devices in Jafferjee, the only possible conclusion in the present opposition is that the idea of the applicant’s EMU device is “EMU”, precisely the same idea and name that would be associated with the opponent’s trade mark for the word EMU’.
[4] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15.
[5] The Sports Café Limited v The Registrar of Trade Marks [1998] FCA 1614.
The Applicant submits further that if the purported extension of the principles in Jafferjee were applied by the Trade Marks Office, then every time a device application was filed every word that could be viewed as describing that device would need to be searched. The applicant submits that the Trade Marks Office does not conduct such searches, and exhibits an examiner’s search results in relation to the image below. The examiner of that application did not search for conflicting trade marks using the word ‘samurai’.
Lastly, the Applicant submits that even in the event that one was to consider the ‘idea of the mark’ the impression of the Trade Mark upon consumers would not be obvious and is open to different interpretations. Accordingly, the impression would be that of a warrior generally but not specifically a samurai. To illustrate, the Applicant exhibits examples of medieval warriors that wore what it describes as horns or shell-like armour, which are replicated below.
Section 44
Section 44 of the Act relevantly provides:
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.
Subsections (3) and (4) of s 44 provide for registration of a trade mark in the face of prior deceptively similar or substantially identical trade marks. Subsection 44(4) relates to prior continuous use of an applied-for trade mark by an applicant; and sub-s 44(3) relates to honest concurrent use of an applied-for trade mark by an applicant or ‘other circumstances’ which would make acceptance of a trade mark proper. No evidence of use of the Trade Mark has been filed and the Applicant has not made any submissions regarding other circumstances which would make acceptance proper, and so I will not address those provisions.[6] The matter accordingly rests upon s 44(1).
[6] I note that during examination the Applicant led evidence of a co-existence agreement between itself and the owner of the prior trade mark regarding both parties’ use of the word SAMURAI, however the agreement was not considered to be a satisfactory basis upon which to apply the provisions of s 44(3)(b) for the device mark. The Applicant did not refer to that evidence in its submissions for the hearing nor address s 44(3)(b), and so I have not done so either, although I mention I too would not be satisfied on the basis of that evidence that the provisions of s 44(3)(b) should be applied.
No submissions have been made in respect of the similarity or otherwise of the goods, nor the priority date of the cited trade mark. I therefore assume the Applicant does not dispute that both trade marks are in respect of the same or similar goods,[7] and that the cited trade mark has an earlier priority date than the Trade Mark. I confirm that I consider this to be the case. The only issue that remains then is whether the Trade Mark is substantially identical or deceptively similar to the cited trade mark.
[7] Per s 14 of the Act.
‘Substantially identical’ is not defined in the Act. Windeyer J, in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’),[8] articulated the test for substantial identity as:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.
[8] [1963] HCA 66, [12].
He further stated that whether there is substantial identity is a question of fact and is properly judged by the eye alone.[9] Clearly, in a side by side comparison and judging by the eye alone, the trade marks at issue here display fundamental differences: namely that one comprises a word and the other an image.
[9] Ibid, [12].
Despite Windeyer J’s comments later decisions have found that either visual or aural resemblance may lead to a finding of substantial identity: see for example Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited[10] wherein Bennett J rejected a proposal that the comparison may only be a visual one, finding that nothing in s 44 of the Act drew this distinction and the comparison may take into consideration aural resemblance. However it is not clear to what extent ideational resemblance may contribute to substantial identity or that ideational resemblance alone could lead to such a finding. The High Court in E & J Gallo Winery v Lion Nathan Australia Pty Ltd (‘Gallo’)[11] found that the addition of an image of a footprint to the word BAREFOOT did not substantially affect the identity of the word BAREFOOT and that another trader would be precluded from registering the device alone whilst the word remained on the Register, because the device was an illustration of the word. This finding was made in the context of determining whether the word BAREFOOT had been used with additions or alterations not substantially affecting its identity, per s 7(1) of the Act. It has not been canvassed and settled by the Courts whether ‘additions or alterations not substantially affecting identity’ under s 7(1) equates to ‘substantially identical’ under s 44. In any event the actual trade marks considered by the Court were a word mark and a composite word-and-device mark, not a word mark and a device solus.
[10] [2003] FCA 901, [58].
[11] [2010] HCA 15, [69].
Another factor in this matter relevant to the consideration of substantial identity is that the Trade Mark has a degree of stylisation, in that its appearance is as though it has been woodblock printed and the figure is in profile. To that end, although it is not settled that a word could never be substantially identical to a device which is an illustration of that word, I do not consider that the trade marks at issue here are substantially identical.
The next inquiry is whether the Trade Mark is deceptively similar to the cited trade mark. Unlike ‘substantially identical’, ‘deceptively similar’ is defined in the Act which states at s 10 ‘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’.
Continuing on in Shell, Windeyer J articulated the test for deceptive similarity as:
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 [trade mark].[12]
[12] Shell [1963] HCA 66, [13].
Trade marks may be assessed for the purpose of determining whether one might be mistaken for the other (based upon the impression they leave,[13] which may be imperfectly recalled[14]). They may also be assessed on the basis of another form of confusion commonly referred to as ‘contextual confusion’, wherein trade marks might readily be distinguished from one another but still lead potential consumers to wonder whether they come from the same source.[15] John Fitton & Co Ltd’s Application, for example, states:
With reference to the nature of the confusion alleged the evidence furnished on behalf of the Opponents by their trade declarants is directed not so much towards showing that the two marks ‘Jests’ and ‘Easyjests’ might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element" Jest" in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from one and the same trade source.[16]
[13] de Cordova and others v Vick Chemical Coy (1951) 68 RPC 105 at 106.
[14] Rysta Limited’s Application (1943) 60 RPC 87 at 108.
[15] See for example John Fitton & Co Ltd’s Application (1949) 66 RPC 110 (JESTS and EASYJEST); Tonka Corporation v Chong (1994) 29 IPR 253 (MONOPOLY and MUSICOPOLY); Telstra Corporation Ltd v Yellownet Corporation (1999) 44 IPR 415 (YELLOW PAGES and YELLOWNET); Caterpillar Inc v Amco (Vic) Pty Ltd (2000) 49 IPR 407 (CAT and LANDCAT); Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203 (POLO and POLO CLUB) and Pfizer Products Inc v Karam [2006] FCA 1663 (VIAGRA and HERBAGRA); all cited in Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159 at [145]-[146].
[16] John Fitton & Co Ltd’s Application (1949) 66 RPC 110, p 113.
Whilst at first glance these comments may be considered to be more relevant to s 60, given the reference to ‘evidence furnished’, the Assistant Comptroller continued at 114 to state that such confusion was also relevant to the consideration of notional use that applied under s 12 of the act then in force (which corresponds to s 44 of the Act):
[T]he Registrar would under Sec. 12(1) refuse an application to register the words ‘Ursa Minor’ as a new mark in respect of, say, motor vehicles in favour of one proprietor if the mark ‘Ursa Major’ were already on the Register in respect of those goods in the name of another proprietor. In all such circumstances, it seems to me, the confusion or deception mainly to be feared is that the public would attribute a common trade origin to both sets of goods.
Thus trade marks may be considered deceptively similar according to whether they might be mistaken for one another, or according to whether they might be distinguished from one another but nonetheless thought to originate from the same source. Relevant to both of these considerations is the idea or meaning conveyed by trade marks.
As already stated, Jafferjee espoused the principle that although there may be differences between trade marks the idea conveyed by them may be similar, and that similarity in idea may outweigh the differences particularly where the detail of trade marks may be imperfectly recalled. Subsequently to the decision in Jafferjee the High Court issued its decision in Cooper Engineering, wherein the trade marks RAIN KING and RAINMASTER in respect of water sprinklers were compared. After a discussion of the difference between the suffixes ‘master’ and ‘King’ the Court stated:
The two words are so unlike to the eye and to the ear that counsel for the appellant was forced to rely on the likelihood of deception arising from the two words conveying the same idea of the superiority or supremacy of the article for the work it was intended to do. To refuse an application for registration this ground would be to give the proprietor of a registered trademark a complete monopoly of all words conveying the same idea as his trademark. The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive.[17]
[17] Cooper Engineering [1952] HCA 15, [3].
Similarly, in Sports Café two composite marks containing devices and the words ‘The Circuit Sports Café’ and ‘The Sports Café’ respectively were compared and, after a discussion of the findings in Cooper Engineering, the Full Court stated
[T]he fact that two marks convey a common idea becomes relevant only if the marks themselves look or sound alike. Commonality of idea might then tip the balance in favour of a finding that the likeness is deceptive.[18]
[18] Sports Café [1998] FCA 1614.
These comments would seem to restrict a consideration of ideational resemblance to only those cases where aural and/or visual resemblance existed as well. However the authors of Lahore Patents, Trade Marks & Related Rights[19] state (footnotes omitted):
There has been some suggestion that the ‘idea’ of the marks will not be relevant unless it is found that the marks look or sound alike and it has been argued that the concept only applies where the comparison is of device marks. The Full Federal Court considered both arguments in the Telstra Corporation case [Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 (‘Telstra’)] and rejected both. Their Honours explained that:
‘…the idea of the mark’ is a tool courts use to assist their analysis in recognition of the fact that consumers, unlike a court, do not have the opportunity to compare marks side by side. The usual circumstance is that a consumer will see one mark and have a memory of the other mark. Because the issue is whether or not the consumer is likely to be deceived, and not whether on a side by side comparison of the two marks a court considers consumers might be deceived, the “idea of the mark” enables the court to place itself, as best as possible, into the minds of the consumer. Nothing in Jafferjee v Scarlett suggests that this analytical tool is confined to pictorial or device marks. No rational reason for excluding this approach from consideration when it comes to word marks has been put forward.”
[19] Lahore Patents, Trade Marks & Related Rights online edition, ©2016 LexisNexis, at [50,270].
I note also comments made earlier in the Telstra decision at [210]-[212]:
There are statements in some of the authorities that, if read in isolation, might suggest that the idea of a mark can only be considered once visual or aural similarity is found. For instance, [here Sports Café is cited and the words at paragraph 26 of this decision are quoted].
We consider that the point that the Full Court was expressing in this passage was that ideational similarity is not sufficient independently of a consideration of whether the marks look or sound alike. As we explain below, the idea of a mark must still be relevant to an assessment of whether the two marks look and sound alike. Indeed, immediately before the passage quoted above, the Full Court had quoted from the decision of the High Court of Australia in Cooper Engineering [here the words from Cooper Engineering at paragraph 25 of this decision are quoted].
The comments by the High Court which were being summarised in the quotation by the Full Court in Sports Cafe Ltd were emphasising the point that mere ideational similarity is not sufficient, although s 10 of the Act contains no such express restriction. Even then, it has been observed by Professors Burrell and Handler that the comments of the High Court were “closely tied to marks that are suggestive of the qualities or characteristics of the goods or services in question”. Hence, it is arguable that it could be consistent with the decision in Cooper Engineering for a court to conclude that despite the absence of visual or aural similarity, the word mark “Red Star Brand” for glass is a mark that “so nearly resembles” the picture mark of a star on glass “that it is likely to deceive or cause confusion”: Burrell R and Handler M, Australian Trade Mark Law (Oxford University Press, 2010) 183–184 citing Re Societe Anonyme des Verreries de l’Etoile Trade Mark (1894) 11 RPC 142. But the short point relevant to this case is that the commonality of idea is part of the process of determining if the marks look or sound alike.
Additionally, Professors Burrell and Handler comment in Australian Trade mark Law[20] that an absolute rule that ideational similarity could never give rise to a finding of deceptive similarity is questionable, and give an example of sound marks that might be readily distinguished and yet give rise to confusion. They also cite Shanahan’s[21] summarised effect of Cooper Engineering:
[T]he presence of a common idea will not necessarily lead to confusion, particularly if that idea is itself commonplace or somewhat descriptive.
[20] Robert Burrell and Michael Handler, Australian Trade Mark Law, (Oxford University Press, 2010) p 184.
[21] D.R. Shanahan, Australian Law of Trade Marks and Passing Off, 2nd ed, (The Law Book Company Limited 1990), p 174.
A similar consideration might be applied to Sports Café, wherein the idea of a café with a sporting ambience is suggestive of the services relevant to those trade marks. Along the same lines, their Honours in Shell noted that humanised oil drop characters (being the trade marks in issue there) were not altogether uncommon in respect of oil companies, and in that context made the comment that ‘the issue is not abstract similarity, but deceptive similarity’.
I therefore do not consider it extraordinary that at times delegates of the Registrar have found deceptively similarity between trade marks that take entirely different forms, on account of the shared meaning or idea they convey: Constellation (an emu device and the word EMU); Trevor Clarke Holdings Pty Ltd v United Artists Corporation[22] (the words PINK PANTHER and a device appearing very much like the animated character ‘the Pink Panther’);[23] Carlton and United Breweries Ltd v Lion Nathan Limited[24] (a heraldic lion passant device and the word LION). I note also that in each of these cases the ideas of the marks, unlike Cooper Engineering, Sports Café or Shell, were completely unrelated to the goods and services in issue – whether expressed in words or by images.
[22] [1998] ATMO 12.
[23] I note that the Applicant cautions that this decision must be read with care because it involves considerations under s 28(a) of the Trade Marks Act 1955, now reflected in s 60 of the current Act. However the finding of deceptively similarity was made under s 33 of the act then in force, reflected in the current s 44 of the Act, albeit taking into account the notoriety of the Pink Panther character.
[24] [1999] ATMO 84.
There are also a number of older United Kingdom judgments which found similarity between devices and their word equivalents, although per the Applicant’s previous caution some of these decisions took into account trade marks as they were used (as opposed to a purely notional consideration): Re Trade Mark of La Societe Anonyme des Verreries d L’Etoile[25] (a star device – taken to be registered in all colours – and the words ‘Red Star Brand’); Seixo v Prozende[26] (a device containing a crown and the word ‘Seixo’, that had come to be known in the market as ‘Crown Seixo’, and another device containing a crown and the words ‘Seixo de Cima’); Dewhurst’s Application[27] (the words ‘the Golden Fan Brand’ written in Burmese characters and a device of a fan which in use was rendered in gold).
[25] (1894) 11 RPC 142.
[26] [1866] LR 1 Ch. 192 (H.L.).
[27] (1896) 13 RPC (C.A.)
I bear in mind also that the Australian Courts have made comments, in various contexts other than s 44, which lend support to the concept that ideational resemblance alone may give rise to deceptive similarity. In Gallo it was observed that a trader is likely to be precluded from registering a device of a footprint alone while the word mark BAREFOOT remained on the register (in the context of s 7(1) of Act). The primary judge in Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited[28] remarked, in the context of s 41 of the Act, that registration of the word ‘yellow’ would likely result in ‘serious difficulties for other traders in knowing where to draw the line using trade marks that contain the word yellow or use the colour yellow’, and echoed the concerns held by the New Zealand Court of Appeal in Cadbury Ltd v Effem Foods Ltd[29] that it was difficult to divorce a word denoting a colour from the colour itself.
[28] [2014] FCA 373, [218], a point which was not disagreed with by the Full Federal Court on appeal.
[29] [2007] NZCA 303, [28].
I therefore do not consider it an impermissible extension of the principle in Jafferjee to find that a word and its pictorial equivalent are deceptively similar, and it is open to me to make such a finding here.
I am satisfied that the image comprising the Trade Mark bears the hallmarks of a samurai, and that is how the Trade Mark will be perceived and recalled. Samurai armour typically consists of a helmet (often bearing stylised horns) with fanned neck guard and protective shoulder plates,[30] illustrative examples of which are below.
[30] See for example ‘ containing ‘An Online Japanese Armour Manual’.
The inference that the Trade Mark is indeed a picture of a samurai is also supported by the co-existence agreement between the Applicant and the cited owner, which provides that the cited owner agrees to the Applicant’s use of the word SAMURAI.
Additionally, although I have acknowledged a degree of stylisation of the Trade Mark that stylisation is not to such an extent that the Trade Mark conveys anything other than the idea of a ‘samurai’.
Lastly, in relation to the allegation that the Trade Marks Office does not conduct searches of the word equivalents of other forms of trade marks, the very fact that the examiner has conducted such a search refutes this claim. It is perhaps the case that such searches are not carried out in all cases which might arguably be similar, and it will not always be obvious when such a search is warranted. The example put forward by the Applicant could be one such case, although I consider that the Applicant’s example is less clearly of a samurai owing to the lack of armour or other characteristics typical of a samurai. In any event, the application here should be assessed on its own merits and although consistency in public administration is desirable, I am not bound to perpetuate any errors that may have taken place in the examination of other applications.[31]
[31] Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177 at [35].
In all, I am satisfied that the Trade Mark is deceptively similar to the cited registration 909842 and the ground for rejection under s 44(1) stands.
Decision
Section 33 of the Act relevantly provides:
(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it.…
(3) If the Registrar is satisfied that:(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it;the Registrar must reject the application.
I am satisfied that there is a ground for rejecting the application and there is no apparent basis upon which to apply the provisions of sub-ss 44(3) or 44(4). I accordingly reject trade mark application 1612770. If, however, the Registrar has been served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the application be in accordance with the Court’s direction or order.
Nicole Worth
Hearings Officer
Trade Marks Hearings
31 May 2016
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