The Timberland Company v. Woolworths Limited

[2005] ATMO 12

TRADE MARKS ACT 1995

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

Re:      Trade mark application number 906738(6)(8)(11)(20)(22) - Timberline - in the name of Woolworths Limited and opposition thereto by The Timberland Company.

DELEGATE:	Ian Thompson
REPRESENTATION:	Applicant: Gerard Skelly of Spruson & Ferguson Opponent:  Benjamin Fitzpatrick of Counsel
DECISION:	1. Opposition proceedings: sections 44 and 60 – opposition not established.

Background

1. In this matter Woolworths Limited, (‘the applicant’), seeks to register a trade mark, details of which appear below:

   Appn Number:  906738

   Priority date:  19 March 2002

   Goods/Services:  Class: 6  Gas cartridges, butane or propane canisters; gas bottle holders (of metal)

   Class: 8Cutlery and tableware including dinner kits including enamel dinner kits, knives, forks and spoons; pumps, including hand and foot pumps

   Class: 11Apparatus for lighting, heating, cooking, refrigerating, drying, water supply and sanitary purposes, including portable stoves, gas stoves, camp stoves, camp lanterns, floating lanterns, aluminium lights, lighting tubes and torches

   Class: 20Furniture including chairs, outdoor chairs, stools and tables, picnic tables, fishing chairs; bedding including sleeping bags, mattresses including air mattresses and air beds, camping mats and pillows

   Class: 22Ropes, strings, nets, sails including material for making sails, tents, awnings, tarpaulins, sacks and bags (not included in other classes), canopies and screen houses of textile

   Class: 22Ropes, strings, nets, sails including material for making sails, tents, awnings, tarpaulins, sacks and bags (not included in other classes), canopies and screen houses of textile

   Trade Mark:  TIMBERLINE

2. The application was accepted and subsequently advertised for opposition on 19 September 2002.  On 22 November 2002, The Timberland Company (‘the opponent’) filed notice of opposition to the registration of the trade mark.

3. The parties have duly served evidence in support of the opposition, evidence in answer and evidence in reply.

4. As a delegate of the Registrar of Trade Marks, I heard the parties in Canberra on 6 December 2004.  Benjamin Fitzpatrick of Counsel, instructed by Davies Collison Cave of Melbourne represented the opponent.  Gerard Skelly of Spruson & Ferguson represented the applicant.

5. The opponent relied on two grounds of opposition – sections 44 and 60 – both of which are grounds amongst those cited in the notice of opposition.

   Evidence

6. The evidence comprises:

Declarant	Position Known as	Date Made	Exhibits
Evidence in Support
Danette Wineberg	Vice President Wineberg	2 June 2003	DW-1 to DW-8
Evidence in Answer
Neil Kerry	Controller of Hard Goods Kerry	17 March 2004	NK-1 to NK-3
Evidence in Reply
Danette Wineberg	Vice President Wineberg 2	5 August 2004	DW-1

1. Briefly put, the evidence shows that:

2. The opponent has sold a range of outdoors-oriented clothing, in particular footwear, under the trade mark TIMBERLAND in Australia since 1981.  These goods are relatively expensive and apparently pitched at the upper end of the market.  As well as having four of its own shops, in Drummoyne, the Pitt Street Mall in Sydney, South Yarra and Richmond, the opponent sells through authorised dealers throughout Australia.  Yearly revenue from goods sold under the trade mark are moderate, as are expenditures on advertising and promoting the goods sold under the trade mark. The trade mark has been advertised in a variety of national magazines (which are exhibited in evidence) and, applying the test in McCormick & Company Inc v McCormick [2000] FCA 1335, I would assess it as having the requisite reputation to support grounds under section 60 of the Act.

3. The applicant has used its trade mark TIMBERLINE since 1996, initially in relation to picnic tables, tents and beach shelters and subsequently in relation to a more extended range of outdoors and camping equipment.  In the two years before this application was filed, the applicant’s revenues under the trade mark were approximately the same as those of the opponent under its trade mark.

10.  The opponent has a number of registrations of the trade mark TIMBERLAND on which to found its grounds under section 44.

11.  Finally, I note that there are no instances of confusion or deception reported by the opponent.

Submissions

12.  I think that it is accurate to say that the majority of the submissions of the parties were couched in terms of the alleged deceptive similarity of the trade marks.  I do not think that the applicant seriously questioned the reputation of the opponent’s trade mark nor that the opponent seriously alleged that the trade marks are substantially identical and, thus, given the overlap of goods and commonality of marketplace, the ultimate question in terms of both sections 44 and 60 is the deceptive similarities of the trade marks.

Reasons

13.  The parties’ representatives were both agreed about the basic tests for deceptive similarity.  That is, the question of deceptive similarity to be decided according to the test posited by Dixon and McTiernan JJ in Australian Woollen Mills Ltd v FS 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.

14.  And as stated by Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 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.

15.  Lord Parker (then Parker J) suggested some further considerations in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, where he 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.

16.  In support of the opponent’s position, Mr Fitzpatrick submitted that:

A mark will be found to be deceptively similar to another mark if it takes a prominent and distinct feature of that mark. Seven-Up Co v Bubble Up Co. Inc. (1987) 9 IPR 259; De Cordova v. Vick Chemical Co. (1951) RPC 271; Saville Perfumery Ltd v June Perfect Ltd (1941) IB IPR 44; Polaroid Corp. v Sole Pty Ltd [1981] 1 NSWLR 491 at 497-498.

In De Cordova v. Vick Chemical Co. (1951) RPC 271, in finding that the marks "VAPORUB" and "KARSOTE VAPOUR RUB" were deceptively similar, Lord Radcliffe stated that:

"In most persons the eye is not an accurate recorder of visual detail and marks are remembered rather by general impression or by some significant detail than by any photographic recollection of the whole."

The commonality of the idea in the mark was discussed in Jafferjee v Scarlett (1937) 57 CLR 115, where Latham CJ stated, at page 121-2:

"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 with which he was acquainted. JJ

In assessing whether marks are deceptively similar, the first portion of a word is by far the most important for the purposes of assessing the likelihood of confusion. London Lubricants (1920) Ltd's Appn (1925) 42 RPC 264. See also Conde Naste Publications Pty Ltd v. Virginia Taylor [1998] 864 FCA.

The TIMBERLINE and TIMBERLAND trade marks comprise a single composite word which is made up of two portions. The first portion in each trade mark is "TIMBER". The second portion in each trade mark comprises four letters, commencing with the letter “L” and sharing the letter ''N'' as the third letter. The TIMBER portion is not apt for normal description of any of the claimed goods, nor is it a commonly used or registered prefix for the claimed goods. It is, therefore, a highly significant portion of both marks. The second portions of the respective marks both act as qualifiers of 'TIMBER'. In light of these considerations, the marks are visually similar.

In addition, the marks have a similar sound, particularly taking into account the fact that consumers often slur the termination of words. In particular, it is likely that the pronunciation of' TIMBERLAND' would place little, if any, emphasis on the final letter. In Mothercare UK Limited v Serry (A’asia) Pty Ltd (1991) 21 IPR 469, the trade mark MOTHER DEAR was found to be deceptively similar to the trade mark MOTHERCARE despite the differences between the marks on the basis that:

"the similar terminal sounds [CARE and DEAR] considerably reduce any visual differences between them taking into account the tendency of English speakers to slur termination of words and to accentuate their beginning".

In a comparison of the marks TIMBERLINE and TIMBERLAND, it is also important to consider the idea which is conveyed by each of the marks. Both trade marks comprise words with meanings. The Australian Concise Oxford Dictionary defines the trade marks as follows:

TIMBERLAND: "land covered with forest yielding timber"
TIMBERLINE: "point above which no trees grow"

The similarity and close connection between the meanings increases the likelihood of confusion.

17.  Conversely, Mr Skelly argued that:

In application 642831, the Registrar's delegate, Mr Ian Forno, decided that ROCK RIVER was not deceptively similar to RIVERS in the context of Class 25 goods. The common element in each mark was the word RIVER, but the inference to be drawn from them was different. Significantly, this case was decided under the 1955 Act.

In the later case of application 721619, the Registrar's delegate, Mr Ian Thompson, approved the ROCK RIVER case and decided that STONERIVER was not deceptively to RIVERS also in the context of Class 25 goods. He was also not convinced that the trade marks ROCK RIVER and STONERIVER were deceptively similar.

In the Crazy Ron's Communications case, the Full Federal Court held that the CRAZY RON'S word mark was not deceptively similar to a composite trade mark containing the words CRAZY JOHN. The Court referred, with approval, to the Henschke case where HILL OF GOLD and HILL OF GRACE were not regarded as deceptively similar trade marks.

There are already various registrations for the trade mark TIMBERLINE which coexist on the Register with the Opponent's TIMBERLAND trade marks. For example:

Registration 230850 TIMBERLINE in Class 3 coexists with the Opponent's registration 806252 TIMBERLAND in Classes 3, 9, 16,20 and 35; and registration 492498 TIMBERLINE in Class 9 coexists with the Opponent's registration 806252 TIMBERLAND in Classes 3, 9, 16,20 and 35.

It should also be noted that the Applicant already has a Class 22 registration (No. 673546) for its TIMBERLINE trade mark which coexists on the Register with the Opponent's registration 806252 TIMBERLAND.

The state of the Trade Marks Register supports the view that the word TIMBER is relatively commonplace in registered trade marks in the context of timber related products. However, it is also significant to note that there are quite a number of registered marks in, for example, Class 25 which coexist with the Opponent's registrations 336895 TIMBERLAND and 405482 Timberland & Device. Relevant examples include registrations 613056 TIMBERWOLVES, 757003 TimberTrek and 866472 TIMBERTOP.

The respective trade marks TIMBERLINE and TIMBERLAND need to be compared as wholes. The Macquarie Dictionary, 3rd edition, defines "timber line" as 1. the altitude above sea level at which timber ceases to grow and 2. the latitudinal limit of tree growth. It also defines "timberland" as a US word meaning land covered with timber producing forests.

Consequently, TIMBERLINE and TIMBERLAND are likely to be recalled by reference to these known meanings which assists in distinguishing them. They convey quite different ideas. The Applicant's TIMBERLINE trade mark brings to mind outdoor goods which may be used to the limit of endurance, whereas the Opponent's TIMBERLAND trade mark suggests an environment filled with timber.

Also, relevant purchasers would be quite familiar with the presence of the element LAND in a trade mark. Indeed, the Trade Marks Office has developed a practice on registrability of LAND marks.

The elements -LINE and -LAND are readily distinguishable in ordinary usage. Indeed, the Trade Marks Register reinforces this. For example, Associated Retailers Ltd has registrations 473515, 765623 and 765625 for MENS LAND which coexist with Michael Wu's registration 700169 MENSLINE in Class 25. Also, Myer Stores Limited has registrations 239160, 239162 and 242535 for the trade mark GRACELINE in Classes 21, 28 and 25 respectively which coexist with Elvis Presley Enterprises, Inc' s registration 664843 GRACELAND covering, inter-alia, goods in Classes 21 and 28 and with The Warehouse Limited's registration 724505 GRACELAND covering Class 25 goods.

Consequently, the state of the Trade Marks Register reinforces the Applicant's submission that there is not a likelihood of deception or confusion between TIMBERLINE and TIMBERLAND.

In a relatively recent decision dated 30 August 2004 involving application 813594 the Registrar's delegate, Mr Ian Thompson, decided that Milkbears was not deceptively similar to MILKY BAR or MILKYBAR. Despite some surface similarity, the respective trade marks convey quite different ideas. That case involved a comparison of trade marks in the context of confectionery. In the present case, the relevant goods are camping and outdoor equipment which is considerably more expensive. The Applicant's evidence shows the importance of visual advertising and that relevant purchasers would ordinarily select by visual cues attaching to the TIMBERLINE brand.

Therefore, it is the Applicant's position that its TIMBERLINE trade mark is not deceptively similar to any of the Opponent's registered trade marks containing or consisting of the word TIMBERLAND.

It is a relevant fact that the Applicant has been using its TIMBERLINE trade mark since 1996 in connection with a range of outdoor and camping goods (refer Neil Kerry Declaration). The Applicant's evidence is that there has not been any instances of consumer confusion between the respective TIMBERLINE and TIMBERLAND trade marks. This evidence stands without any rebuttal from the Opponent on this point.

18.  I consider the ideas of these trade marks to be different.  If a person is aware of the significance of the trade marks as denoting ecological, geographical or environmental regions, that person will remember and recall the trade marks in different ways – if a person is unaware of the ecological, geographical or environmental significance of the trade marks, the fact that they have this significance is of low importance as a distinguishing factor.  In other words, the fact that the trade marks might both be viewed as being words with a meaning of geographical, environmental or ecological significance does not significantly, in itself, contribute to the similarity of the trade marks and there is a cogent argument why this should be otherwise.

19.  It is possible, as the cases cited by Mr Skelly demonstrate, to overemphasise the importance of the initial syllables or word of a trade mark in the assessment of deceptive similarity: London Lubricants (1920) Ltd's Application, (1925) 42 RPC 264 (CASTROL/ TRIPCASTROID). The elements or words LINE and LAND do have quite different meanings and I do not think that they would so lack stress in ordinary pronunciation that the trade marks would deceive or confuse. Further, the elements or words LINE and LAND both act to qualify the word TIMBER, rather than the goods to which they are applied, thus contextual confusion of the type referred to in John Fitton & Co Ltd's Application (1949) 66 RPC 110 do not apply. The words form ‘corporate identities’, each with its own dictionary definition.

20.  The words appear to be quite different when rendered in writing (bearing in mind, of course, that the comparison is not one that occurs side-by-side).

21.  While the word TIMBER does not directly describe a character or quality of the goods in question, it is somewhat allusive as to their character.  In my experience and observations of the world, the word fills a somewhat similar niche in the idiom or parlance of the United States as does the word BUSH in Australia.  In the context of the goods, it is quite likely, in my consideration, that if the dictionary definitions of the trade marks do not come to the purchasers’ minds, that the allusive nature of the word TIMBER in recalling the ‘outdoors’ will.

22.  Thus, I am not satisfied that it has been established that the trade marks are deceptively similar.

23.  Section 55 of the Act provides:

55  Decision

Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

(a)       to refuse to register the trade mark; or

(b)       to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

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

Note:    For limitations see section 6.

24.  Subject to the opponent notifying the Registrar of an appeal against my decision within one month of the date of this decision, the application may proceed to registration.  If such appeal is notified and not withdrawn, the application should be dealt with as the Court directs.

Costs

25.  Both parties requested their costs should they be successful in these proceedings.  I order costs against the opponent at the official scale.

Ian Thompson
Hearing Officer
Trade Marks Hearings
22 March 2005