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Teraglow Pty Ltd

Teraglow Pty Ltd

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Case Copied 31 May 2016 21 min read

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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 2014
Goods: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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2016] ATMO 32
Decision Date: 31 May 2016

CaseChat Overview and Summary

This matter concerned an application by Teraglow Pty Ltd for a trade mark, which faced a ground for rejection under section 44 of the Act due to its deceptive similarity to a prior registered trade mark, registration number 909842, known as SAMURAI, owned by Globeride Inc. The cited trade mark, registered on 17 April 2002, covered goods in Class 28, specifically fishing reels and fishing lines. The ground for rejection had been maintained through four examination reports, leading the Applicant to request a hearing, which was to be conducted solely on the basis of written submissions.

The central legal issue before the delegate of the Registrar of Trade Marks was whether the Applicant's trade mark was deceptively similar to the cited SAMURAI trade mark. The Applicant argued that for deceptive similarity to exist, the marks must first exhibit a visual resemblance. Only after establishing such visual resemblance, the Applicant contended, could the "idea of the mark" be considered in the assessment of deceptive similarity. The Applicant further submitted that the principle established in *Jafferjee v Scarlett* should be interpreted within the specific context of that case, which involved a comparison of devices broadly conveying the same subject matter.

The delegate considered the principle that the "idea of the mark" is crucial, referring to the passage from Lord Herschell's committee quoted in *Kerly on Trade Marks*. This principle highlights that even if two marks differ in specific details when placed side-by-side, they may convey the same main idea. Consequently, a person familiar with the earlier mark might be deceived into believing they are dealing with goods bearing the same mark if a second, visually different but conceptually similar mark, is used. The delegate noted that the *Jafferjee* case involved composite marks containing words, which was a relevant contextual factor.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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.: 909842Trade Mark: SAMURAIPriority Date: 17 April 2002Registered 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 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.