Texas Instruments Incorporated

[2015] ATMO 80

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1590615 (9) - PICTURE BY DLP TEXAS INSTRUMENTS (logo) - in the name of Texas Instruments Incorporated.

Delegate:

Robert Wilson

Representation:

Applicant: Collison & Co Patent and Trade Mark Attorneys

Decision:

2015 ATMO 80

Ex parte proceeding – Ground for rejection under s 44 of the Trade Marks Act 1995 considered – trade mark accepted for possible registration

1. On 11 November 2013, Texas Instruments Incorporated (‘the Applicant’) applied to register a trade mark the details of which are shown below:

Application No.:

1590615

Priority Date:

11 November 2013

Goods:

Class 9: Electronic circuits for projectors, namely, micromirror chipsets for projectors

(‘the Applicant’s Goods’)

Trade Mark:

(‘the Applicant’s Trade Mark’)

1. The Trade Mark was examined as required by section 31 of the Trade Marks Act 1995 (‘the Act’). The examiner was satisfied that a ground of rejection existed under section 44 of the Act. On 12 December 2013, the examiner wrote in the first report:

   Your trade mark is identical or closely resembles trade mark number 790338. This trade mark has an earlier priority date and is for the same or similar goods or services.

   ·Your trade mark closely resembles the earlier trade mark because both marks contain the acronym DLP as a dominant essential element. I note the surrounding material contained in your mark being the words PICTURE BY and TEXAS INSTRUMENTS. However, this is not sufficient to differentiate your mark given the presence of the shared dominant element. Consequently, confusion is likely to occur in the mind of the consumer as to the trade origin of the goods. This is because a consumer is likely to recall both marks by the essential element DLP.

   I note also the addition of the device material in your trade mark. However, these are not sufficient to prevent confusion. This is because a consumer is mostly likely to see these as being used to highlight the words in the trade mark rather than being separate distinctive memorable elements.

   AND

   ·The goods are similar because your claim in Class 9 for electronic circuits for projectors, namely micromirror chipsets for projects is similar to the existing proprietor’s broad claim, in the same class, for apparatus and instruments supplying, conducting, branching, transforming, accumulating, regulating and controlling electric current; electrical fittings and wiring for housing, commercial, office and institutional buildings and for industrial and domestic installations and equipment.

2. The examiner provided the Applicant with the option of supplying evidence under subsections 44(3) or 44(4) of the Act to overcome the issue.

3. Details of the cited trade mark are given below:

Trade Mark No.:	790338
Priority Date:	6 April 1999
Goods:	Class 9: Apparatus and instruments for supplying, conducting, branching, transforming, accumulating, regulating and controlling electric current; electrical fittings and wiring accessories for housing, commercial, office and institutional buildings and for industrial and domestic installations and equipment; electric switches; wire outlets; cable outlets; electric plugs, sockets and connectors; socket outlets; sockets with protective covers or shutters; tamperproof inserts for sockets; structural profiles for electric conductors as well as for electrical fittings and wiring accessories, including: trunking, mini-trunking, dado or skirting trunking, adaptable trunking, conduits, distribution columns, wire guides, cable guides, floor level raceways and floor ducts; electric conductors, including electric cables and wires; boxes and housings for electrical fittings and wiring accessories; junction boxes; isolating boxes; modular distribution boxes; centre point connection boxes for lighting fixtures; parts, fittings and accessories for all the aforesaid goods, including partitions, covers, spacers, end caps or covers, angles, branching or junction elements and accessories, tees, staple joints, body joints, cover joints, clips, adaptors, supports, support frames, support plates, front plates, front plate supports, blanking plates, boxes, mounting accessories, fixing accessories, fixing centres, staples for cable retentions, bases for cable ties, brackets, finishing accessories and trim, frames, mechanisms; junction strips for terminals (‘the Earlier Trade Mark’s Goods’)
Trade Mark:	DLP	(‘the Earlier Trade Mark’)

1. On 4 February 2015 the attorneys for the Applicant, Collison & Co Patent and Trade Mark Attorneys, responded to the examiner’s first adverse report submitting, inter alia, that:

   Our client has provided the following information that supports the argument that the goods of the current application are not sufficiently similar to the claims of the cited mark to warrant sustaining this s 44 citation:

   (1)    The goods of the cited registration appear to be directed to common apparatus in wiring homes and buildings. In contrast, [the Applicant’s Goods] are in a small integrated circuit level that include millions of tiny mirrors [sic] (referred to as ‘micromirrors’ …). These mirrors are each hinged so that they can be selectively tilted to project light, or coloured light, so that the aggregate of reflected light projects an image … .

   (2)    Given the disparity in the goods:

   (i)the consumers of [the Earlier Trade Marks Goods] are likely to be different than those of Texas Instrument’s goods; and

   (ii)the marketplace for the cited registration’s goods is not likely at all to be the same as that for the pending application’s goods.

2. The examination of the application was taken over by a second examiner who was not persuaded by the above submissions. In the second adverse report the examiner responded to the above submissions as follows:

   The earlier trade mark 790338 is able to be used on a wide variety of goods as the class 9 specification contains a broad claim for Apparatus and instruments for supplying, conducting, branching, transforming, accumulating, regulating and controlling electric current; electrical fittings and wiring accessories for housing, commercial, office and institutional buildings and for industrial and domestic installations and equipment. While this wording does not specifically name the goods designated in your client’s application, it is sufficiently broad to include goods which are electronic circuits and both trade marks could, therefore, be used upon the same or similar goods.

   Although your client’s goods may be narrow and specialised, the earlier trade mark’s goods are not clearly in a different field to those of your client and confusion is, therefore, considered likely in the marketplace.

3. The Applicant’s attorneys made further submissions in response to the second adverse report which failed also to satisfy the examiner that the s 44 ground for rejection should be withdrawn. On receipt of the third adverse report the Applicant elected to be heard on the matter as provided by s 33(4) of the Act.

4. The matter was scheduled to be heard on 25 August 2015 in Adelaide, but due to circumstances beyond their control the Applicant’s attorneys were unable to attend the hearing. On 14 August 2015, in anticipation of the hearing, Mr Anthony Norris on behalf of the Applicant’s attorneys provided written submissions. On 21 August 2015 I indicated to Mr Norris that I would be seeking detailed answers to a number of questions at the hearing which I considered particularly relevant and which were not fully addressed in his submissions. I also indicated that given the short notice, if Mr Norris was unable to obtain answers to those questions prior to the hearing I would allow him one week following the hearing to provide the answers in writing. As stated above, the hearing was not able to proceed; however, Mr Norris’ firm provided me with answers to the questions within a week of the date the hearing was scheduled to occur.

Discussion

9. The relevant sections of the Act with respect to the ground pursuant to s 44 are reproduced below:

44 - Identical 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).

Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A. …

1. It is my opinion that the Applicant’s Goods are not similar to the Earlier Trade Mark’s Goods; my reasons follow.

2. In response to my request for further information about the nature of the Applicant’s Goods the Applicant’s attorneys provided the following:

   The applicant’s goods in the present application are for the most part installed within a television or movie projector, so that the projector can project a very vivid and impressive image. Colloquially, customers in the trade might refer to the DLP chipset as the ‘brains’ of the projector, as the chipset is a critical part that causes the image generation, working in combination with the projector lens and light. …

   The applicant’s DLP chipsets, within a few square inches or less on an integrated circuit, include millions of tiny mirrors and each of these tiny mirrors is individually and separately hinged so that it can tilt back and forth, akin to a tiny mirrored swinging door. …

   The millions of reflections at any one time pass through a projection lens to a surface (e.g. a screen), so that surface depicts what is in fact the reflective position of each of the tiny mirrors.

   Of course, most consumers of the actual image likely have no idea of the intricacies of the applicant’s chipset that functions inside the projector; they just see an image that is pleasing to the eye.

3. The Applicant’s attorneys also provided me with information on the likely consumers of the Applicant’s goods:

   The likely purchasers are so-called OEMs, ‘original equipment manufacturers’, that is companies that build projector devices. These companies have sophisticated buyers, typically engineers, that seek to design acceptable quality image projectors, in view of considerations such as reliability, code compliance, cost, and of course image quality.

   Plus, the goods are typically purchased on a large scale once the OEM tests and completes a projector design, as thereafter the OEM will intend to build and sell numerous projectors, so they consequently are buying a large number of chipsets, with each chipset to be installed into a respective projector.

   The OEM, therefore, ultimately sells the projector, with the applicant’s DLP chipset having been designed and installed into the projector.

4. I am satisfied that the Applicant’s claim in Class 9 is very narrow and for the specific item as described above by the Applicant’s attorneys, and that the potential purchasers of those goods are limited to those described. The question that now needs to be determined is whether the Applicant’s Goods are similar to the Earlier Trade Mark’s Goods. The factors to be considered when deciding whether goods are similar are well established. The nature of the goods, their uses, and the trade channels through which they are sold require consideration. While these factors are not necessarily determinative they are important.[1]

   [1] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 606-7; Jellinek’s Application (1946) 63 RPC 59 (Ch); J Lyons & Co Ltd’s Application [1959] RPC 120, 128.

5. The examiners of the application took issue only with some of the Earlier Trade Mark’s Goods. I am satisfied that the remainder of the goods are different to the Applicant’s Goods and need not consider them further in this decision. The subset of the Earlier Trade Marks Goods that the examiners took issue with consists of:

   Apparatus and instruments for supplying, conducting, branching, transforming, accumulating, regulating and controlling electric current; electrical fittings and wiring accessories for housing, commercial, office and institutional buildings and for industrial and domestic installations and equipment

6. In respect of the Earlier Trade Mark’s Goods the Applicant’s attorneys have submitted:

   [T]he goods of the earlier trade mark are larger devices that are likely sold in electrical/building supply houses and hardware stores, for either do-it-yourself install/repair or the work of tradesmen and building contractors.

   Those goods are the types of items that are ultimately installed into the non-occupied space of buildings and homes to provide electrical functionality to those structures.

   The goods appear to include apparatus, both physical and electrical, for the communication of electricity (e.g. from the municipality) and then getting it to where it is needed in various building/home [sic].

   This is exemplified in the opening recitations such as ‘supplying, conducting, branching, transforming, accumulating, regulating, and controlling electrical current.’

   The other recitations appear to include greater specificity for goods all falling into that opening recitation – items that a home/building installer would need and use to set up an electrical framework so that ultimately electricity reaches the needed locations and structures in that building, such as getting it to switches, lighting, electrical equipment, and outlets.

   So, much of the cited registration’s goods appear to be items that go in an attic and crawl spaces, inside walls, and out of view of the person who would occupy the structure. None of these items relates to the chipset nature of the applicant’s goods, nor to micromirrors, nor to projectors.

7. It was stated by the examiner in the second adverse report that:

   While [the wording of the earlier claim] does not specifically name the goods designated in your client’s application, it is sufficiently broad to include goods which are electronic circuits and both trade marks could, therefore, be used upon the same or similar goods.

8. While I agree with the examiner’s view that the Earlier Trade Mark’s Goods would include goods which could be described as ‘electronic circuits’ this is not sufficient on its own to determine that the respective goods are similar. This description of the goods relates only to the nature of the goods. It is necessary to go further and consider the uses for which the electronic circuits are designed and the respective trade channels through which they are sold and purchased.

9. While there might be some similarity between the nature of some goods encompassed by the Earlier Trade Mark’s Goods and the nature of the Applicant’s Goods, I am persuaded by the Applicant’s attorneys’ submissions that the respective uses and trade channels are very different. I am satisfied, therefore, that deception and confusion are unlikely were the Applicant’s Trade Mark to be used in connection with the Applicant’s Goods. Consequently, the ground for rejection of the application under s 44 should be withdrawn.

10. I therefore accept Trade Mark application no. 1590615 for possible registration. 

Robert Wilson

Hearings Officer

Trade Marks Hearings

4 September 2015