The Gillette Company v Jarvis Walker Pty Ltd

[2007] ATMO 36

TRADE MARKS ACT 1995

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

Re:Opposition by THE GILLETTE COMPANY to registration of trade mark application 998678(9) - DYNACELL - filed in the name of JARVIS WALKER PTY LTD.

Delegate:

Alison Windsor

Representation:

Opponent:  Carmen Champion of counsel

Applicant:  Susan Gatford of counsel

Decision:

2007 ATMO 36

S52 opposition:  sections 44 and 60 – trade marks not substantially identical or deceptively similar – opposition unsuccessful

Background

1. Jarvis Walker Pty Ltd (“the applicant”) filed application to register a trade mark on 21 April 2004.  The application was given the number 998678 and is in class 9 for the following goods: 

   Dry cells batteries; electric batteries; electrical storage equipment; batteries for lighting; batteries for torches; battery chargers and re-chargers; batteries for vehicles and boats

The trade mark applied for is shown below:

1. The application was examined as required by section 31 of the Trade Marks Act 1995 (“the Act”) and advertised as accepted for possible registration on 19 August 2004. 

2. Following extensions of time in which to do so, The Gillette Company (“the opponent”) filed a Notice of Opposition on 28 February 2005.  Thence followed the usual evidence submissions, with the process being completed by 30 November 2006, on which date the opponent requested a hearing.

3. The matter eventually came before me as delegate of the Registrar on 14 May 2007 in Sydney.  At the hearing, the applicant was represented by Susan Gatford of counsel, instructed by McPherson + Kelley Lawyers.  Carmen Champion, also of counsel, instructed by Hodgkinson McInnes Pappas Patent & Trade Mark Attorneys, represented the opponent.

Notice of opposition

1. The notice of opposition encompasses all available grounds of opposition.  The ground under section 44 refers to specific registered trade marks owned by the opponent and shown in the table below:

Trade Mark Number	Class/Goods and Service specification	Trade mark
198216	9:  Electric apparatus and instruments and parts thereof	DURACELL
768482	11:  Apparatus for lighting, including flashlights	DURACELL
967761	11:  Flashlights (torches)	DURACELL EXPLORER
1016543	9:  Electric and electronic apparatus and instruments and parts thereof; electric storage cells; electric accumulators; lead-acid batteries, chlorine batteries and alkaline batteries and electric storage cells; apparatus for testing and monitoring battery performance capabilities and capacity; batteries and re-chargeable batteries, including automotive, marine and industrial batteries; electric dry cells and batteries, including alkaline dry cells; electric powered smoke detection apparatus; electric cell and battery chargers; light activated and power failure activated equipment in this class; standby power battery system for uninterrupted power supply applications; battery powered or operated items of electrical and electronic equipment in this class	DURACELL

Evidence

Evidence in support

1. The evidence in support consists of two declarations.  The first is by Mrs Violeta Emperatriz Delgado Serkovic, a Financial Controller/Director/Company Secretary of Gillette Australia, a wholly owned subsidiary of the opponent.  This declaration includes exhibits VS-1 to VS-6.  The second declaration is by Raymond J De Vallis, Assistant Secretary of the opponent, and has two exhibits labeled “A” and “B”.

2. The Serkovic declaration concentrates on the opponent’s trade mark DURACELL.  It gives a history of the adoption and use of this word in respect of batteries and flashlights in Australia and worldwide.  Figures for sales and advertising throughout Australia for the years 1999 to 2003 are included.  The exhibits include examples of the trade mark in use on labels and packaging, as well as a list of countries in which the trade mark is registered as a trade mark.  Copies of pages from the opponent’s web-site provide a short history of the DURACELL product and some information about the opponent company.

3. The De Vallis declaration provides information about world wide sales and advertising figures for goods bearing the trade mark DURACELL.  It also provides a copy of an article which appeared in BusinessWeek magazine.  This article ranked the DURACELL trade mark as number 80 in a list of the top 100 of the world’s most valuable brands.

Evidence in Answer

1. The evidence in answer consists of a single declaration made by Trevor Maundrell, director of the applicant company.  This declaration is brief, and provides little information.  It says that the applicant designs, manufactures, wholesales and retails a wide variety of recreational fishing equipment, and has been doing so since 1946.  The declaration says that the applicant now wishes to introduce into its product range a series of dry cell batteries, and chose the word DYNACELL as a trade mark for these particular goods.  It had not used the trade mark at the time the declaration was made.  The declaration refers to a relationship between the applicant and an associated New Zealand company, Thompson Walker Limited.  Thompson Walker Ltd owns Australian trade mark number 572866 for the trade mark DYNATEC, which covers goods in class 28 including fishing tackle.  The declaration states that the applicant’s trade mark “was chosen as a logical extension of “Dynatec” so as to appear to consumers as a part of the Applicant’s recognized range of fishing and other equipment”.

Discussion

1. The opponent’s submissions at the hearing went to the grounds under section 60 and section 44 of the Act and these sections are therefore those under which I will decide this matter. For completeness, I find that none of the remaining grounds raised in the notice of opposition have been established.

2. The onus is on the opponent to establish at least one ground of opposition.  In order to be successful under the provisions of section 44, the opponent must point to a trade mark which:

   • has an earlier priority date than the application
   • is for the same or similar goods

• is substantially identical or deceptively similar to the application trade mark.

1. Section 60 requires the opponent to point to the existence of a trade mark which is substantially identical or deceptively similar to the applicant’s trade mark; which has acquired a reputation in Australia before the applicant’s priority date amongst a significant section of the public, such that use of the opposed mark would be likely to deceive or cause confusion. 

2. The opponent has registrations for the trade mark DURACELL for specifications which arguably cover batteries[1], the applicant’s goods of interest.  This registration pre-dates the application by many years.  The opponent’s evidence points to a significant market presence for its trade mark within the battery market.  The opposition will thus be determined by the question of whether the trade marks are substantially identical or deceptively similar.

   [1] See registration 198216 in the table in paragraph 5.

3. I note that registration 1016543 has a later priority date than the application.  This registration is therefore not relevant in respect of section 44.

Substantial identity and deceptive similarity

1. The comparison to be made is between the applicant’s trade mark DYNACELL and DURACELL, the major component of the opponent’s trade marks under consideration.  The accepted tests for these comparisons are found in the often quoted words of Windeyer J in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd ((1963) 109 CLR 407 at 414-415:

   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.

   .....

   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 television exhibitions.

2. On a side by side comparison, the words DYNACELL and DURACELL have distinct differences, sufficient that they are unlikely to be confused one for the other in that situation.  They are thus not substantially identical.  The consideration then moves to the question of deceptive similarity.

3. Section 10 of the Act defines “deceptively similar” and reads as follows:

   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.

4. Deception and confusion as envisaged by section 10 were discussed by French J in Registrar of Trade Marks v Woolworths (1999) 45 IPR 411, in the following words:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is 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.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity 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) 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."

5. The test is not to be applied to the trade marks side by side but rather from the impression of the trade marks which is likely to be formed by the public.  In the words of Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd, (1937) 58 CLR 641 at page 658:

   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.

6. The opponent’s trade marks both contain or consist of the word DURACELL.  The applicant’s trade mark comprises the word DYNACELL in a specific font, underlined, with a small Greek cross placed at the end of the underline.  The word portion of any such trade mark is the portion most likely to remain in the mind of the purchaser, especially when the device component is such a minor portion of the trade mark as it is here.  Thus the comparison is effectively between the words DURACELL and DYNACELL.

7. Ms Champion for the opponent made strong submissions in respect of the importance of the word CELL in the opponent’s trade marks.  Rather than attempt to paraphrase her submissions at this stage, I shall quote the relevant portion of them:

   The word CELL in the opponent’s DURACELL mark is a distinctive branding element, because it is the non-adjectival and substantive word element.  Within the opponent’s DURACELL mark the discrete word CELL is the more predominant branding element and a more essential feature than the prefix DURA.

   The word CELL does not take on a wholly descriptive meaning in the DURACELL mark.  The prefix DURA does not have its own recognized meaning which means that the discrete word CELL stands alone as a distinctive branding element.  It should therefore be treated as the ‘one individual thing which is the monopoly’ of the opponent:  see for example, The Sanitas Company Ltd v Condy (1887) 4 RPC 530; Anheuser-Busch, Inc v Budejovick Budvar, Narodni Podnik & Ors (2002) 56 IPR 182 at [158]

   There is no evidence to suggest that the word CELL is common to the trade.  Neither can it be construed as performing a purely descriptive function when used on batteries in light of the meaning attributed to it by the Macquarie Dictionary.  Even though it may have descriptive connotations that does not prevent it having trade mark significance in the DURACELL mark.

   Accordingly, it is the word CELL that is likely to be carried away and retained in the minds of consumers as the distinctive branding element of the DURACELL mark, and it is this recollection the consumer would bring to his/her encounter with the DYNACELL mark.

   Batteries are offered for sale and sold in a large variety of stores, including supermarkets.  They are low cost items which are likely to be purchased without a great deal of consideration.  Relevantly, they are purchased by the young, the middle-aged and the elderly of both genders.  They are in fact common-place items bought by a large proportion of the Australian public.  Accordingly, consumers would pay more attention to the visual effect of each mark.

   In such circumstances, it is less likely that consumers would investigate or enquire as to the real trade origin of the goods.  In the opponent’s view, the fame of the opponent’s Duracell mark and the distinctiveness of the word CELL, make the opponent’s mark particularly vulnerable to confusion with the applicant’s DYNACELL mark as the marks would appear to consumers to be related, as observed in John Fitton & Co Ltd’s Appn (1949) 66 RPC 110 at 113. That impression is heightened by the fact that each mark starts with the letter “D” and in each word CELL is preceded by the letter “A”.

8. The relevant definition of the word CELL from the Macquarie Dictionary to which Ms Champion refers I assume to be the following:

   7. Electricity a device which generates electricity and which forms the whole, or a part of, a voltaic battery, consisting in one of its simplest forms of two plates, each of a different metal, placed in a jar containing a dilute acid or other electrolyte (voltaic cell).

9. Ms Gatford had a different view of the importance of the word CELL, submitting the following:

   The Macquarie Dictionary definition of “battery” is “Electricity either of two chemical cells or groups of cells, one which produces electrical energy, primary cell”.  The Oxford Dictionary definition of “battery” includes relevantly “portable cell(s) supplying electricity”.  Thus the word “cell” is a synonym for the word “battery”.  In trade mark terms it is descriptive of the products rather than distinctive.

   The fact that battery and cell mean the same thing and are used interchangeably is reflected in the wide usage of “cell” as a suffix in trade marks for batteries …[Thence followed a short list of trade marks extracted from the Trade Marks Register]

   … Indeed, the Opponent’s own evidence of sales revenue adopts the common descriptive/alternative usage.  The table at paragraph 9 of the Serkovic declaration refers to average price, quantity sold and gross value per cell.

10. I have more sympathy for Ms Gatford’s view than for that of Ms Champion.  My own knowledge of the market is that many smaller batteries are often referred to by the word “cell”, in expressions such as “D cell”, “AA cell” and such like.  It is significant that the opponent’s own evidence uses the term when referring to the individual units of the goods in respect of which the trade mark is used.  Further into the examples provided are other uses of the term, including the following quotation from the information provided as Exhibit VS-6 to the Serkovic declaration:

    Samuel Ruben’s inventions revolutionized battery technology.  Amidst World War II, for instance, Ruben devised the mercury cell, which packed more capacity in less space and was durable enough for the harsh climates of wartime theaters like North Africa and the South Pacific – places where ordinary zinc carbon batteries used in flashlights, mine detectors and walkie-talkies couldn’t hold up.  P.R. Mallory manufactured millions of mercury cells for the war effort.  The Mallory Battery Company was formed shortly thereafter.

    In the 1950’s, Samuel Ruben went on to improve the alkaline manganese battery, making it more compact, durable and longer lasting than anything before it.  At about the same time, Eastman Kodak introduced cameras with a built-in flash unit that required more power than zinc carbon cells could provide.  The cameras needed alkaline manganese cells but in the new size, the AAA.  Mallory made them, and also licensed the technology to others because the company, at that time, had no consumer distribution.

    The photographic demand for power put alkaline cells on the map – and the DURACELL brand was introduced in 1964. (My emphasis)

11. Ms Champion submitted that the word CELL was not shown to be common to the trade; could not be construed as purely descriptive; was the more predominant branding element; was the more essential a feature than the prefix DURA and was the part of the trade mark that is likely to be carried away and retained in the minds of consumers.  Despite the many examples of decided cases submitted in support of these contentions, I find I simply do not consider these submissions to be accurate. 

12. The word CELL is a well known and well used term in the domestic battery industry.  It is a term commonly used to describe small, readily available batteries such as those with a 1.5 volt capacity ranging in size from AAA to D.  While these items are relatively low cost items, they are by no means bought without considerable investigation and consideration.  These goods are the kind of thing which will not provide the appropriate function unless the correct item is purchased.  For example, there is no point in buying a D cell to fit an electrical “gadget” which only takes AA cells, and vice versa.  Some gadgets require alkaline batteries, some work more efficiently with long-life batteries; some function adequately on the cheapest available one of the correct size.  What this means is that the customer, even for these relatively cheap goods, will be likely to pay a good deal of attention to the purchase, rather than grab the first item off the rack.  This degree of scrutiny means that the importance of the word CELL as a descriptor is likely to be enhanced in the mind of the members of the small battery market.

1. The word CELL also forms part of a number of trade marks presently on the Register in class 9, the class relevant to batteries.  Ms Gatford provided a list with 9 examples, and advised this was by no means a complete list.  I am aware there are approximately one hundred “live” trade marks ending in the word CELL in class 9 – just how many of these incorporate batteries I have not investigated thoroughly, but I have no reason to believe Ms Gatford’s examples are the only ones relevant. 

2. I am satisfied the word CELL is one which is common to the trade in respect of batteries, and it is one with which the relevant buying public will be familiar.[2]  It therefore must be to some extent discounted when considering its presence within a trade mark word.  In this opposition, then, if there is likely to be confusion between the trade marks under consideration, that confusion would have to be predominantly on the basis of the prefix portion of the trade marks – DURA and DYNA.

   [2] See Mid Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 42 IPR 561. Also relevant is Coca-Cola Co (Canada) Ltd v Pepsi-Cola (Canada) Ltd (1942) 59 RPC 127

3. Ms Champion submitted that the word element DURA does not have its own recognised meaning; that both DURACELL and DYNACELL are coined words, and that neither word has a readily ascribed meaning.   These factors, she said, mean there is a greater risk of the two trade marks being confused in the marketplace, especially as she is of the opinion that the CELL portion of the trade mark retains its identity as a distinguishing feature. There is thus, she said, a real tangible danger of the public being deceived and confused into believing that the applicant’s and opponent’s goods emanate from the same source.

4. Ms Gatford, on the other hand, submitted that the two word elements – DYNA and DURA have different meanings and connotations, as well as different appearances and sounds.  She said the prefix DURA has connotations of “long lasting” and “durable”, while the prefix DYNA is defined in the Macquarie Dictionary as meaning “a word element referring to power, as in dynameter”.  The different meanings, connotations and pronunciations, taken together with the fact that the emphasis is on the first syllable in each word, she said, make DURACELL and DYNACELL very different as trade marks.  Ms Gatford also pointed to the opponent’s emphasis on the DURA word element for its trade marks, giving as evidence examples of trade marks owned by the opponent which incorporate the prefix DURA, such as DURABEAM, DURA4X and DURA2X.  In addition to this, she pointed to the opponent’s advertising campaigns which focus on the message that the batteries themselves are long lasting or durable. 

5. I agree that both DYNACELL and DURACELL are coined words.  While neither word may have an ascribed meaning, I consider both words possess at least some allusion to the expected attributes of the goods and that there is a different allusion for each trade mark.  The words look different and sound different.  The market for batteries has been well educated with regard to the word CELL, having been trained that it is both a descriptive word in the field, and a component of a number of trade marks owned by different producers.  I do not consider there is a likelihood of any real tangible danger of deception or confusion resulting from use of these two trade marks within the same trade.  Therefore, I find the trade marks are not deceptively similar.

6. Since the trade marks are neither substantially identical nor deceptively similar, the grounds of opposition under both sections 44 and 60 cannot be established to my satisfaction.  

Decision

1. The opponent has not established grounds of opposition under either of sections 44 or 60.  The opposition is therefore unsuccessful.  Trade mark application 998678 may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

1. The applicant having been successful is entitled to its costs.  I award costs against the opponent at the official scale.

Alison Windsor

Hearing Officer

Trade Marks Hearings

19 June 2007