The Gillette Company v Sichuan Huajing Guomao Industrial Co., Ltd

[2007] ATMO 15

TRADE MARKS ACT 1995

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

Re:Opposition by The Gillette Company to protection of international registration designating Australia 962818(9) Durata (International Registration No. 805277) proceeding in the name of Sichuan Huajing Guomao Industrial Co., Ltd. (Sichuan Huajing Guomao Shiye Youxian Zeren Gongsi).

Delegate:

Iain Thompson

Representation:

Opponent
Carmen Champion of Counsel instructed by Hodgkinson McInnes Pappas.
Applicant
Did not appear or provide written submissions

Decision:

2007 ATMO 15
1 regulation 17A.29 opposition. Sections 44 and 60. Opposition not established on evidence before hearing officer.

2 Costs ordered against opponent.

Background

1. In this matter, the holder, Sichuan Huajing Guomao Industrial Co., Ltd. (Sichuan Huajing Guomao Shiye Youxian Zeren Gongsi), (who I will henceforth term ‘the applicant’) has requested protection in Australia for the following trade mark:

   Appn No:                   962818
   IR No:  805277
   Priority Date:             30 June 2003 (‘the relevant date’)

   Goods/Services:         Class: 9  Batteries; batteries for lighting; solar batteries; batteries for mobile phones; electric accumulators; battery chargers; computers; sockets and other contacts (electric connections); electric wires; loudspeaker cabinets; all included in this class

   Trade Mark:               DURATA

2. Notice of opposition to the protection of an IRDA is governed by the provisions of regulation 17A.29. 

3. The application was accepted for possible protection on 30 March 2004 and advertised as such in the Australian Official Journal of Trade Marks on 30 October 2003.  On 30 April 2004, after seeking and receiving an extension of time in which to do so, The Gillette Company, (‘the Opponent’) filed Notice of Opposition to the protection of the trade mark.  The opponent filed evidence in support of the opposition at the applicant’s nominated address for service in Australia, Spruson & Ferguson.  The applicant has served and filed evidence in answer and the opponent has served and filed evidence in reply.

4. The following statutory declarations have been served and filed:

Declarant	Position Known As	Date Made	Exhibits
Evidence in Support
Raymond J. De Vellis	Assistant Secretary of Opponent De Vellis	26 May 2005	A and B
Rosita Soljic	Teacher Soljic	17 June 2005
Violeta Emperatriz Delgado Serkovic	Financial Controller/Director/Company Secretary of Gillette Australia Serkovic	7 March 2005	VS1 to VS6
Evidence in Answer
Donatella Prandin	Partner and Director of Foreign Department with Bugnion S.p.A., an Italian  firm of Patent & Trade Mark Attorneys Prandin	20 February 2006
Lance Newman Scott	Solicitor Spruson & Ferguson, Patent & Trade Mark Attorneys Scott	21 December 2005	LNS1 to LNS4
Evidence in Reply
Claire Fitzpatrick	Registered Trade Mark Attorney and Employee of Hodgkinson McInnes Pappas, Patent & Trade Mark Attorneys Fitzpatrick	28 August 2006	A and B

1. The opponent specified that it did not rely on the Fitzpatrick and Soljic declarations at the hearing.

2. The terms of the Notice of Opposition are broad and, at the hearing, the opponent relied on sections 60 and 44 of the Trade Marks Act 1995 (‘the Act’). For the sake of completeness, I note that those grounds other than under sections 60 and 44 of the Act have not been established.

3. As a delegate of the Registrar of Trade Marks, I heard the submissions of the opponent, made by Carmen Champion of Counsel, instructed by Hodgkinson McInnes Pappas, in Sydney on 15 February 2007.  The applicant did not appear and did not file written submissions.

   Evidence

4. The submissions and evidence show that the opponent has three trade mark registrations on which it relies in these proceedings in relation to the ground under section 44:

   Reg No:  198216
   Priority Date:             27 October 1965
   Goods/Services:         Class: 9   Electric apparatus and instruments and parts thereof
   Trade Mark:               DURACELL

   Reg No:  847497
   Priority Date:             23 August 2000

   Goods/Services:         Class: 9   Electrical apparatus, including electrochemical cells and batteries

   Trade Mark:               DURA4X

   Reg No:  847500
   Priority Date:             23 August 2000

   Goods/Services:         Class: 9  Electrical apparatus, including electrochemical cells and batteries

   Trade Mark:               DURA2X

5. The evidence is imprecise as to the date of first use of the opponent’s DURACELL trade marks within Australia although it appears that this might have occurred in 1965.  The Serkovic declaration deposes:

   The opponent purchased the business operations of Duracell International Inc. in 1997 on a global basis, thereby acquiring all of its trade marks and brand names.

   The trade mark DURACELL in 1965 was adopted and used in respect of "batteries" and in 1998 the trade mark DURACELL was adopted and used in respect of "flashlights".

   The trade mark DURACELL is applied to the labels and packaging. Samples of packaging showing the application of the trade mark are now produced and shown to me and marked Exhibit "VS-2".

   The goods bearing the trade mark DURACELL have been sold throughout all States of Australia and overseas.  A schedule of the countries in which the trade mark DURACELL is pending or registered is now produced to me and marked "VS-3".  A schedule of the countries in which the opponent's trade marks DURA2X and DURA4X are pending or registered is now produced to me and marked "VS-4".

   I advise that the goods are sold through various retail outlets, including supermarkets, newsagencies, camera retailers, electronic retailers and hardware stores. For example, Woolworths and Coles which are both large supermarket chains, stock the DURACELL goods.

   The opponent advertises its DURACELL products in various magazines, for example, IGA Distribution Catalogue and the goods have also been advertised on television.  A DVD of the nationwide television commercials advertising the goods bearing the DURACELL trade mark and a copy of an advertisement in the IGA Distribution Catalogue are now produced and shown to me marked Exhibit "VS-5".

6. Australian sales figures and amounts spent on advertising and promoting the goods sold in Australia under the DURACELL trade mark are also given in the Serkovic declaration. 

7. The Vellis declaration gives worldwide sales figures and advertising figures and states:

   Attached to this Declaration and marked Exhibit B is a copy of an article that appeared in BusinessWeek magazine on 2 August 2004. The article ranked the top global trademarks and GILLETTE was ranked as number 15 and DURACELL was ranked as number 80.

8. The figures given by the opponent are confidential – suffice to say that the amounts supplied show that the use of the trade mark DURACELL by the opponent is such that both the use of the trade mark on goods (and advertising in relation to such) should be regarded as being pervasive. 

9. Much of the applicant’s evidence in answer was couched in terms which address allegations in the Fitzpatrick and Soljic declarations on which the opponent did not rely at the hearing.  Consequently, the Prandin declaration is no longer relevant to these proceedings inasmuch as it addresses a perceived ground under section 41 which is no longer pursued by the opponent.

10. However, I note that the Prandin declaration deposes:

    I have been asked by Spruson & Ferguson to review and comment on the Soljic Declaration. According to my expertise, the words DURATA BATTERIA is an Italian expression of two words which literally mean "battery length". However, the phrase would be hardly used in every day speech by Italian speakers. Instead, it would be more natural to say, for example "DURATA DELLA (of) BATTERIA" since "DURATA BATTERIA" would sound very unusual to a native Italian speaker in every-day oral communication, being the same typically adopted in technical explanations.

11. The other evidence in answer is the Scott declaration which avers, inter alia:

    On 7 December 2005 I conducted searches of the Australian Trade Marks Office database. In particular, I conducted a search of the ATMOSS database for pending and registered trade marks in the single Class 9 using "part word" "DUR" as a search term.

    The search results are now shown to me and marked Exhibit LNS-1.

    The search results indicate that there are a number of trade marks co-existing in Class 9 which include DUR as a component, which cover batteries and which are owned by different proprietors. These include trade mark Nos. 172744 DURCO, 198216 DURACELL, 282104 ENDURO, 403018 SCANDURA, 669241 DURATHON, 796010 ENDURANCE, 847497 DURA4X, 847500 DURA2X, 962818 DURATA, 1016543 DURACELL, 1038496 DURABIS, 1039346 DURABOOK. Now shown to me and marked Exhibit LNS-2 is a Schedule setting out details of these trade marks.

    I am advised by the Applicant's Chinese attorneys, that the Applicant Sichuan Huajing Guomao Industrial Co. Ltd has successfully registered its DURATA trade mark in many jurisdictions, including China, Ethiopia, Malawi, Uganda, Afghanistan and Hong Kong.  In addition, the DURATA trade mark has been granted protection under International registration 805277 which designates jurisdictions such as, the United Kingdom, Germany and the DPR of Korea.  Now shown to me and marked Exhibit LNS-3 are copies of relevant Registration Certificates and Notifications of Protection issued under the International registration.

    Submissions

12. Mrs Champion drew my attention to the opponent’s registered trade marks, mentioned in the evidence in support, then continued:

    There is a live issue as to the applicable onus. The Opponent submits that it is to be established as any other matter is to be established in civil proceedings of an administrative character. That standard was recently applied by Gyles J in Pfizer Products Inc v Karam where he reviewed the authorities and held that there is no binding Full Court authority for the application of a higher onus: Pfizer Products Inc v Karam [2006] FCA 1663 at [26].

13. Mrs Champion further submitted:

    For the purposes of sections 60 and 44(1) of the Trade Marks Act 1995 (the "Act") the critical issue is whether the mark DURATA when used on the Goods is deceptively similar to the mark DURACELL. For the purposes of section 44 the Opponent relies upon trade mark registrations 198216, 847497 and 847500.

    ‘Deceptive similarity’ requires consideration of whether the marks so resemble each other that the use of the mark DURATA is likely to deceive or cause confusion: Section 10 of the Act. To determine deceptive similarity, the marks must not be placed side by side but consideration must be given to any common net impression inferred from the two marks: see Australian Woollen Mills v F.S.Walton & Co Ltd (1937) 58 CLR 641,

    The yardstick of deception or confusion under section 60 of the Act is the reputation of the existing mark, whether registered or not: Clinique Laboratories Inc v Luxury Skin Care Brands Pty Ltd (2004) 61 IPR 130 at [21]. The Delegate must estimate the effect or impression produced on the mind of potential customers by the Applicant's mark as “the impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark is the same”: see Australian Woollen Mills Ltd v FS Walton & Co (1937) 641 at 658 per Dixon/Tiernan JJ.

    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 commonplace items bought by a large proportion of the Australian public.

    The mark DURACELL has been used in Australia on batteries since 1965. The evidence on this issue clearly supports a finding that the mark DURACELL in the context of batteries had become notorious in Australia as at the Priority Date.

    In assessing the nature of the ordinary consumers’ likely imperfect recollection of the opponent's DURACELL mark consideration must be given to the fact that 'marks are remembered by general impression or by some significant detail' rather than by any photographic recollection of the whole: de Cordova v Vicks Chemical Co (1951) 68 RPC 103 at 106. The doctrine of imperfect recollection warns against the danger of trying to differentiate trade marks merely on the basis of a meticulous comparison of words letter by letter: Rysta Ltd's Application (1943) 60 RPC 87; Johnson & Johnson v Kalnin (1993) 26 IPR 435 at 441.

    Both “DURACELL” and “DURATA” are coined words. They have no meaning that can be readily ascribed to them as an aid-memoire by the public. There is therefore a greater risk of confusion: McDowell's Appn 44 RPC 335; Selco v Delco 20 AOJP 1224 and Interlego AG v Mego Corp 1979 AOJP 2829.

    Due to the purely descriptive nature of the word 'CELL' in the mark DURACELL, the prefix DURA' should be treated as the essential feature of the mark as it is what translates the word 'cell' into the realm of a trade mark. It should 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 Budejovicklyacutel Budvar, Alarodni Podnik & Ors (2002) 56 IPR 182 at [158].

    The prefix DURA retains its identity in the mark DURATA as a distinguishing or essential feature. It is rather like "Polo Club", where the original meaning of Polo was retained and was dominant because of the blandness of the word ‘club’: Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 42 FCR 227.

    The importance of the prefix is recognized in trade mark law due to the tendency in English to slur the termination of words: see London Lubricants Ltd's Application (1925) 42 RPC 264; Anheuser Bush Inc v Budejovicki Budvar & ors at [158].

    The element ‘DURA’ is the essential feature of both marks and in both cases it conveys the idea of duration. It is this feature consumers would seize upon as each marks 'mental cognitive' factor: see Carnival Cruise Lines v Sitmar Cruises Ltd (1994) 31 IPR 375.

    Even though the Application shows the applicant’s mark in upper case font , the Applicant will, if the mark becomes registered, be entitled to use any legible font or writing: see Lnyson Australia Pty Ltd Application (1987) 9 IPR 350. In addition it may give prominence to any part of the mark, including the component DURA.

    Importantly, for the purposes of deceptive similarity all surrounding circumstances in which the mark DURATA will be used must be taken into consideration. That consideration includes a consideration of how the marks will be marketed and sold, and the nature of the likely consumer.

    It is submitted that:

    (a)       the component DURA in DURACELL is the mark’s ‘mental cognitive’ factor carried away by the relevant consumer;

    (b)       The net impression which most observers would have of the marks is of two invented and meaningless words with a significant visual and aural similarity in that they share the prefix DURA;

    (c) relevantly, batteries are small purchases and are unlikely to be subjected to detailed consideration in the course of purchase;

    (d)      Compared visually and side by side the marks are sufficiently different however that is not the case where one mark is considered with the other mark in mind. In a great many cases the imperfect recollection of the mark DURACELL will be based on a general encounter with that mark;

    (e)       As the recognition of a word involves not so much the reading of the entire word but the seeing and identification of certain features which are then matched to that which is contained in the memory supports, in this instance, a finding that there would be a significant likelihood of confusion.

    Reasoning

14. I agree with Mrs Champion’s submissions that the crux of this matter is whether the trade marks in question are deceptively similar. The registrations on which the opponent relies are antecedent to the date of this application. The nexus between the goods of the parties in terms of both sections 44 and 60 is such that, if the trade marks of the parties are deceptively similar, then the grounds of opposition under those sections are established.

15. The principles to be applied in assessing whether the trade marks are deceptively similar are these.  In 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.

16. Windeyer J couched the same test in the following way in The Shell Co. of Australia Ltd. v. Esso Standard Oil (Australia) Ltd. (1963) 109 CLR 407 at page 415:

    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. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106.

17. These principles are to be applied in the context of the marketplaces for the particular goods.  In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777), Parker J said:

    You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion -- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you may refuse the registration, or, rather, you must refuse the registration in that case.

18. And, concerning the way in which these tests are to be applied and deceptive similarity is to be assessed, French J said in Registrar of Trade Marks v Woolworths [1999] FCA 1020, at paragraph 50:

    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."

1. There are obvious shortcomings in the applicant’s evidence that could be said to go to the commonness or occurrences of the prefix ‘DUR-’ in registered trade marks for goods which include batteries.  This is because the opponent’s trade mark DURACELL is more likely to be viewed as being comprised of the elements ‘DURA’ and ‘CELL’ as the latter word is an easily recognisable word of the English language which has, moreover, some facility in relation to the goods of interest – batteries. 

2. The word element or prefix ‘DURA-’ is one which denotes something that is hard, or lasting, and occurs in words such as ‘durable,’ ‘duration,’ or ‘endure’.

3. However, these observations ultimately, I think, assist the applicant’s position as the trade mark DURACELL is obviously comprised of the two different elements DURA and CELL as a portmanteau word such as “Bitumetal”, “Alluminoy” or “Flavotainer” (examples which are mentioned in Hallgarten's Application (1948) 66 RPC 105, the Whisqueur case).  Thus the way in which the opponent’s trade mark is compounded is immediately recognisable to people familiar with the English language and this is likely to form a part of the way that the trade mark is remembered and recalled.  This contrasts with the opposed trade mark DURATA which is not susceptible to the same analysis and strikes the eye as being a word unto itself – either one which is new and invented or one in a foreign language.  In this regard, I note that the word DURATA is one in the Italian language, which means ‘length’, as attested to in the Prandin declaration.  It is unlikely that most Australians would recognise the word DURATA as being one in the Italian language but it is probable, I consider, that the word would be seen as one which is new or invented and not compounded in the same way as the opponent’s trade mark.

4. Thus, while it may be true that the trade marks in question are coined words, they have been coined in ways which are different and this is likely to affect the way they are remembered and recalled.

5. More telling, perhaps, is Mrs Champion’s submission that the element DURA falls at the beginning of both trade marks.  In In the Matter of London Lubricants(1920) Limited's Application to Register a Trade Mark (1925) 42 RPC 264 at 279, Sargant LJ made the observation:

   "But the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction."

6. However, I am not totally convinced that here this kind of analysis is appropriate.  The two trade marks do strike my eye as being compounded in such a way that the prefix ‘DURA-’ is immediately apparent in the opponent’s trade mark yet is not apparent in the applied-for trade mark.  This is because the word or element CELL in the opponent’s trade mark dictates that the preceding element ‘DURA’ can be seen as nothing else than a prefix.  However, the ‘corresponding’ final element in the opposed trade mark, ‘TA’, does not have the same effect on the preceding letters ‘DURA’.  The final element in the applied for trade mark is meaningless in the context of the goods, which is not the case with the corresponding element ‘CELL’ in the opponent’s trade mark.  Thus, the element ‘DURA’ is almost hidden in the applied-for trade mark and forms a submerged part of a word which is essentially invented and without any meaning in English to an extent which is not so in the opponent’s trade mark.

7. The opponent also points to its registrations of the trade marks DURA4X and DURA2X and argues that it has, in effect, a ‘family’ of trade marks which incorporate the prefix ‘DURA-’.  This, the argument goes, will increase the likelihood that Australians will perceive any other trade mark on batteries with the same prefix as being related or denoting a common trade source.  The question is essentially one of confusion, rather than of deception, of the type referred to in John Fitton & Co Ltd's Appn (1949) 66 RPC 110, where, in considering the new mark EASYJEST in face of the registered mark JEST, the Assistant Comptroller said, at 113, that no limitation was to be placed ‘upon the nature of the confusion or deception so envisaged, whether it be visual or phonetic confusion of the marks themselves, or what is termed contextual confusion, or deception as to the trade provenance of the goods.’

8. The argument is weakened considerably by registration 669241(9) DURATHON mentioned in the Scott declaration which is registered for “Electric storage cells including electric accumulators, lead-acid batteries, chlorine batteries and alkaline batteries and electric storage cells, accumulators and battery chargers.”  Any suggestion that the opponent has some kind of monopoly in the prefix ‘DURA-’ begins to evaporate.  However, a possibly more telling point is that any perception that the opponent is identified in trade through the commonality of prefix in the trade marks DURACELL, DURA2X and DURA4X, is dependant on the extent that the opponent has actually used these trade marks which would result in this public recognition or perception.

9. The opponent has not established that it has used the trade mark DURA2X and DURA4X, thus it is unlikely that the trade marks will be perceived as a ‘family’ or that the opposed trade mark would be seen as an extension of that family.

10. Further, the prefix ‘DURA-’ is not one without any facility in relation to the goods.  It is, as mentioned above, a recognised prefix which denotes something that is lasting, a quality that is desirable in batteries.  This contrasts with the situation in John Fitton, above, where the trade mark JESTS had no facility in relation to the goods, and the present instance is more in line with Conde Nast Publications Pty Ltd v Virginia Taylor [1998] 864 FCA (VOGUE and EUROVOGUE) where Burchett J commented:

    At the same time, it should be borne in mind that "vogue" is neither a made-up word nor a word wholly without any direct application, in the ordinary use of language, to the goods in question. A trader is not entitled to monopolize such a word, denying its use entirely to other traders. Deceptive or confusing use is barred by the applicant's registration, but the Court should be careful not to shut out inappropriately other traders from the fair use of the language in ways that will not in reality deceive or confuse.

11. It is true that a part of the marketplace for these goods is children – however, I am not convinced that, in the circumstances of this particular application, children can be regarded as an unsophisticated target market.  It is well known that children and teenagers can be very brand aware and this fact is now exploited by the advertising people.

12. I am also cognisant of the fact that the goods here are of low unit cost and can be selected from the shelves of supermarket without much care under circumstances referred to in Re: Stuart Alexander And Co. (Interstate) Pty. Limited and Douwe Egberts Koninklijke Tabaksfabriek-Koffiebranderijen-Theehandel N.V. and Blenders Pty. Limited (1981) 53 FLR 307 [the 'Apothecary Jars' case]. However, I am not convinced on balance that, given the obvious differences in the trade marks, and the separate ways in which they are likely to be remembered and recalled, this would result in either deception or confusion.

13. Accordingly, I conclude that the opponent has not established that the trade marks in question are deceptively similar.

14. Thus, the opponent cannot establish its grounds under section 44 and 60.

    Decision

15. Regulation 17A.34(1) provides:

    17A.34 (1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

    (a) to refuse protection in respect of all of the goods or services listed in the IRDA; or
    (b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

    having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

16. Trade mark application number 977941 may therefore proceed to protection one month from the date of this decision.  If the Registrar has been served with notice of appeal before that time, I direct that protection shall not occur until the appeal has been decided or discontinued.

    Costs

17. The applicant, having been successful in these proceedings, is entitled to it costs which I order at the official scale.

    Iain Thompson
    Hearing Officer
    Trade Marks Hearings
    10 March 2007