Time West Pty Ltd v Chanel Limited

[1993] ATMO 73

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by Chanel Limited to the registration of Trade Mark application number 503624 in the name of Time West Pty Ltd

Background

This issue arises for my determination from the application, on 26 January 1989, by Time West Pty Ltd, ("the applicant") of Osborne Park, Western Australia for the registration of the trade mark CHATELLE, in respect of all goods in Class 14.

The application was advertised as being accepted in the Official Journal of 27 April 1989.  On 27 July 1989, as allowed by sub-section 49(1) of the Act, Chanel Ltd., ("the opponent"), lodged Notice of Opposition to the registration of the mark.  Evidence in support of the opposition was lodged on 13 November 1990 and Evidence in answer was lodged on 4 July 1991.

The hearing of the issue was before me in Perth on 30 July 1993.  The applicant was represented by John King of Wray & Associates, patent & trade mark attorneys, of Perth.  The opponent was represented by  David Wilson of Shelston Waters, patent & trade mark attorneys of Sydney.

The opponent relied on the provisions of sub-section 33(1), and its prior registrations in Class 14 of the trade mark CHANEL: D201126 and B297948 which both include all goods in Class 14.

The submissions
Mr Wilson's submissions were predominently aimed at arguing that the marks are deceptively similar in terms of sub-section 33(1).  It was further argued by Mr Wilson that the concurrent use of the marks would deceive or cause confusion in terms of section 28 of the Act.  It was accepted by both parties that the goods are both the same in respect of Chanel Ltd's Class 14 registration and those of the opposed mark.  It seems also that both parties accept that the marks are not substantially identical in terms of section 33(1) of the Act.

Accordingly, I believe that there can only be one issue for my decision that arises out of the hearing: whether the marks are deceptively similar.  Deceptive similarity between a trade mark and another is defined by sub-section 6(3) as existing if it, "so nearly resembles that other trade mark as to be likely to deceive or cause confusion."  In other words, sub-section 6(3) imports the language of section 28(a).  It seems to me to follow that if I am to find that the marks either are or are not deceptively similar, I am rendering further consideration of the same question under sub-section 28(a) redundant as the language of sub-section 6(3) already imports the same test under section 33(1) to the words 'deceptively similar'.

In short, if the trade marks are not deceptively similar in terms of sub-section 33(1), they cannot, in the absence of evidence about idiosyncrasies of the actual usage of the marks, be similar enough to confuse or deceive in terms of sub-paragraph 28(a).  Such evidence was not demonstrated here.

Section 33

Sub-Section 33(1) reads

Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, [...] by another person in respect of the same goods , of goods of the same description as those goods [...], unless the date of registration  of the first-mentioned trade mark is, or will be, earlier than the date of the second-mentioned trade mark.

As the goods are the same goods and the marks are not substantially identical, the question that remains is whether the marks here are deceptively similar in terms of sub-section 33(1), above.

Deceptive similarity   This is to be assessed not by a detailed side by side comparison of the marks but by an estimate of the impression and recollection which the marks will induce in the mind of the customer.  The rules, or guide-lines, for comparing marks were considered by Dixon and McTiernan JJ. in Australian Woollen Mills Ltd v. F. S. Walton & Co. Ltd., (1939) 58 CLR 641, at 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 [...]  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 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.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.  Evidence of actual cases of deception, if forthcoming, is of great weight.

A slightly differing approach was taken by Parker J. in Pianotist Co's Appn (1906) 23 RPC 774, at 777:

You must take the two words.  You must judge 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 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.

I believe that even when the cheaper goods in Class 14 are considered in relation to these two marks, such as costume jeweller, the goods are the type of goods concerning which buyers exercise some care.  Thus the likelihood is that purchasers are going to take time and pay attention to the detail of what they are considering for purchase.  It is unlikely in this situation that the one mark will be mistaken for another when the obvious differences in the marks are taken into account.  Accordingly, I think think that the prospects of any confusion between the marks is not very likely, and certainly would not constitute the likelihood envisaged by sub-section 6(3) of the Act.

Goods in Class 14 are commonly bought after close inspection of the goods, consultation with a salesperson and, possibly, trying the item on.  The goods do not fall into the class of goods such as biscuits or crackers, where inspection of goods might not be detailed and there is no sales assistance available.

Even allowing for the most imperfect recollection of the marks, or the poorest of memories, I do not think that it is likely that the marks CHANEL and CHATELLE would be confused with each other or that the public might be deceived.

Accordingly, I dismiss the opposition, and, subject to any appeal from my decision, direct that the application proceed to registration

Costs
I have found for the applicant and costs should follow my finding.  I therefore award the applicant its costs.

Ian Thompson
Senior Examiner
Trade Marks Hearings

23 August 1993