Timex Corporation v International Products Company SA

[2001] ATMO 116

TRADE MARKS ACT 1995

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

Re:Opposition by TIMEX CORPORATION to registration of trade mark application 773349(14) - P PRIMEX Logo - filed in the name of INTERNATIONAL PRODUCTS COMPANY SA.

Background

International Products Company ("IPC") is a Societe Anonyme incorporated under the laws of the Republic of Panama.  On 16 September 1998, it applied to the Australian Trade Marks Office ("the Office") under the provisions of the Trade Marks Act 1995 ("the Act") to register the trade mark shown below:

I will refer to this image as the Primex trade mark.

The application was in respect of Watches, clocks, horological and chronometric apparatus and instruments; all included in class 14.  The Office assigned number 773349 to the application.

On 21 January 1999, following examination, the Official Journal of Trade Marks advertised its acceptance.  On 15 April 1999, within the period allowed for doing so, Timex Corporation ("Timex"), an American company, filed Notice of opposition to registration of this trade mark ("the Notice").

By 1 May 2000, Timex had served its evidence in support of its opposition.  IPC served evidence in answer, with that stage being completed on 6 April 2001.  On 21 June 2001, Timex served a notice under reg 5.13(2), that it would not rely on evidence in reply.  The Trade Marks Office ("the Office") then advised the parties, by letter dated 29 June 2001, that either side might request a hearing.

By letter dated 20 July 2001, Timex asked to be heard.  IPC did likewise, by letter dated 30 July 2001.  The matter was duly set down for hearing. On 23 August 2001, IPC filed an application, under reg 5.15, to serve further evidence.  This application had not been dealt with prior to the hearing. 

The hearing came before me, as delegate of the Register assigned to decide this matter, in Canberra on 28 August 2001.  Mr Paul Sumpter, of the Sydney attorney firm of Spruson & Ferguson, represented Timex, the opponent.  Mr Michael Wolnizer, of the Melbourne attorney firm of Davies Collison Cave, represented IPC, the trade mark applicant.  Both attended in person.

The Notice of Opposition

The Notice lists a range of available grounds, identified as (a) to (l). However, the evidence and the submissions addressed only ss 44 and 60. The other grounds are unsupported and the opponent did not rely on them at the hearing. I see no reason to consider them further. I dismiss the opposition so far as it rests upon them.

The Evidence

The evidence in support of the opposition consists of two statutory declarations, one by Patrick James Morris ("the Morris declaration") and the other by Marcello Matthia, ("the Matthia declaration"). 

The Morris declaration is dated 17 December 1999.  Exhibits PJM-1 to PJM-7 are annexed to the declaration.  Mr Morris is President, Marketing and Sales - International, of Timex Corporation.  He states that his company owns two registered trade marks in Australia, ("the Timex registrations").  The table below sets out the relevant details:

Trade Mark	TIMEX	Trade Mark	TIMEX
Number	87325	Number	246647
Priority Date	3 June 1946	Priority Date	8 March 1971
Class	14	Class	14
Goods	Watches, clocks, and chronometers including parts thereof	Goods	Watches, clocks and their parts including electrically driven watch mechanisms; watch straps, bands, pendant chains and bracelets
Owner	Timex Corporation	Owner	Timex Corporation
Renewal due	3 June 2002	Renewal due	8 March 2006

Timex has used its trade mark in Australia since at least June 1946.  The trade mark is shown to be registered in many countries.  Considerable quantities of goods bearing the trade mark were sold between 1972 and 1982 through TMX Australia Ltd, a subsidiary of Timex.  Since 1988, however, the goods have been distributed by Sheaffer Pen (Australia) Pty Ltd, which is now known as Hagemeyer Lifestyle Brands (Australia) Pty Ltd ("Hagemeyer").  The goods are not consigned to Hagemeyer for sale, but paid for in full.  Both sales figures and advertising figures are supplied, but are given in $US.  Mr Morris also states his opinion that the reputation and goodwill of the Timex trade mark in respect of watches, clocks and related goods is likely to be damaged if the IPC trade mark proceeds to registration, on the ground that it is "substantially similar", and that the public is likely to be deceived thereby.

The Matthia declaration is dated 19 April 2000.  It states that Mr Matthia is a director of Hagemeyer.  Exhibits MM-1 to MM-4 are annexed to the declaration.  The facts provided in this declaration and its exhibits substantiate and augment the Morris declaration.  Australian sales figures 1996 - 1999 are provided for Timex Sports and Timex Youth products, which are listed and described in a 1999 price list at Exhibit MM-1.  Hagemeyer distributes Timex goods to approximately 890 other companies throughout Australia, the majority of which are jewellers, and many of which are chains.  It also sells to more than 40 department stores.  The goods have been advertised through trade and consumer magazines, metropolitan and regional cinema advertising, and promotional material associated with sponsorship of events such as the 1999 St George Triathlon Tour.

The evidence in answer consists of two statutory declarations. The first is by Joaquin Lum ("the Lum declaration") and the second by Timothy John Hancock ("the Hancock declaration").

The Lum declaration is dated 20 February 2001.  Exhibits JL-1 to JL-8 are appended to the declaration, with JL-6 being an actual example of a watch bearing the trade mark. 

In 1976, Mr Lum formed IPC and has been its President since.  Prior to forming his company, he had been "involved" with another Panama company which acted as agent for Seiko, the well-known Japanese watch company.  IPC acted as agent for Casio, Citizen and Q & Q watches in Central and South America.  It is still the agent there for Casio and Citizen.  In 1995, Mr Lum decided he wanted to have his own product line, "rather than always acting as agent for somebody else".  As a trade mark for that product line, "..'Primex' was chosen as a shortened version of 'Primero' being Spanish for 'first' and 'EX' being excellent."  Initially, IPC concentrated on Central and South America, and it has achieved registration of its trade mark in 14 countries there.  It has its own assembly factory in Brazil, although it sources its products internationally.  However, the company wishes to expand its business worldwide.  It therefore has been seeking to register its trade mark, represented in slightly differing ways, in the countries in which it hopes to trade.  One of the countries in which the trade marks co-exist on the Register is New Zealand (para 9 and exhibit JL-7).  It is not clear, however, whether New Zealand trade mark 298363 has in fact been used in that jurisdiction.

In Costa Rica, Chile, China, and Germany, four of the jurisdictions in which IPC sought to register its trade mark, oppositions were launched by Timex.  The first three of these had been dismissed at the time the declaration was made.  The opposition by Timex, in Germany, was pending at the time of the declaration.  Translations of the Costa Rican and Chilean decisions are at annexure JL-8.  These confirm that the decisions in those jurisdictions favoured IPC.  The Chinese decision was in the process of translation at the time Mr Lum made his declaration (clause 10). 

Mr Lum states that the Primex trade mark has not been used in Australia.  He also states:

Throughout the time that my company has been selling and marketing its products..., I have not become aware of any circumstances in any country under which consumers have been confused in any way into believing my Company's product is connected in any way with the opponent (or any other Company).

The Hancock declaration is dated 20 March 2001.  Mr Hancock is solicitor and partner in the firm of Robin Bridge and John Liu, a Hong Kong legal practice.  He assists IPC in obtaining registration of its trade marks in various jurisdictions, including Australia.  He refers to clause 10 of the Lum declaration and provides a copy of the translation of the Chinese decision.  The translation confirms that the decision favoured IPC.

IPC's proposed further evidence consists of a statutory declaration by Sally Erica Foreman, dated 22 August 2001.  Ms Foreman is an employee solicitor of Davies Collison Cave ("DCC"), the firm acting on behalf of IPC in this opposition.  She provides a copy of a translation of a decision, dated 25 April 2001, of the Office of Harmonisation for the Internal Market ("OHIM"), dismissing an opposition by Timex to registration in the European Community of the Primex mark.  As this opposition was still pending at the time of the Lum and Hancock declarations, this piece of evidence had not been available earlier.  The Hong Kong associate of Davies Collison Cave ("DCC"), the attorneys for IPC, informed DCC of the decision in early July 2001.  DCC requested a translation which was faxed to DCC on 8 August 2001.

The further evidence

At the hearing, I dealt first with the matter of the further evidence.  I indicated that I believed the further evidence should be allowed in, as its existence had been foreshadowed; it was akin to material already led in evidence; and it had simply not been available earlier (Pioneer Hi-Bred Corn Company v Hi-Line Chicks Pty Ltd [[1979] RPC [No 19] 410 at 435-6] ; Studio SrL v Buying Systems (Aust) Pty Ltd [(1991) 22 IPR 580] ). I allowed Mr Sumpter an opportunity to make submissions in the matter, as required by 5.15(3). While stating that decisions in other jurisdictions were not relevant to my decision in the substantive matter, he made no formal objection on behalf of Timex, indicating that he was content to leave the matter to me. On 6 September 2001, following the hearing, I wrote to the parties advising my decision to grant the application to serve further evidence under reg 5.15. I deemed the date of service to be the date of the hearing, 28 August 2001.

The Submissions

I will refer to the submissions of the parties, and to the case law to which they directed my attention, in the course of my Reasons, below.

Reasons

Timex relies only on grounds of opposition based on ss 44 and 60 of the Act.

Section 44 of the Act relevantly provides as follows:

Identical etc. trade marks

44.(1) .....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;
.....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.

The terms "deceptive similarity" and "similar goods" are defined elsewhere in the Act, as follows:

Definition of deceptively similar

10. 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.

Definition of similar goods

14 (1). For the purposes of this Act, goods are similar to other goods:
         (a) if they are the same as the other goods; or

(b) if they are of the same description as that of the other goods.

The Act contains no definition of substantially identical, nor of likely to deceive or cause confusion.  However, as remarked by French J in Registrar of Trade Marks v Woolworths Limited [(1999) 45 IPR 411 at 425], ("Woolworths") :

The first touchstone of construction is the language of the Act. Some of its words, however, import meanings and applications which have been developed in the case law. Their use suggests the legislature did not intend to jettison the learning that had accrued to them.

At 426 of the same judgement, his Honour summarised what is meant by likely to deceive or cause confusion:

The use of the word “likely” in this context does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a “real tangible danger of its occurring”: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594–5 per Kitto J.

The matters for consideration in comparing trade marks are well-established.  There is a convenient summary of the case law, (at least as far as it had been developed up until the time of the book's publication), in Chapter 9 of Australian Law of Trade Marks and Passing Off [D.R. Shanahan, The Law Book Company, 1990] .  Some of the cases involved the registrability of a trade mark, but many have been infringement actions.

As stated by Parker, J (as he then was) in 1906 [Pianotist Co's Appn.(1906) RPC 774 at 777 (Ch.D.)}:

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.

The terminology of the present Act, like its predecessor, makes a distinction between substantial identity and deceptive similarity.  The appropriate tests for each are to be found in the case law.  The test for substantial identity, which is a narrow test, is notably defined in a frequently quoted passage from The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited [(1963) 109 CLR 407], ("Shell"). Windeyer J said, at 414:

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.

The test for deceptive similarity is broader.  At 415 of the same judgement, in a passage quoted with equal frequency, his Honour said:

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.

In Rysta Ltd's Appn [(1943) 60 RPC 87 at 108 per Luxmoore J, dissenting, but approved on appeal in Aristoc Ltd v Rysta Ltd (1945) 62 RPC 65.], Luxmoore LJ said:

It is the person who knows only the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused.  Little assistance is therefore to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.  The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech not only of the person seeking to buy under the trade description but also of the shop assistant ministering to that person's wants.

More recent cases have applied the criteria for deceptive similarity in terms of the present Act.  As conveniently restated by French J in Woolworths supra, at 428:

In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 and 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 or services come from the same source.  It is enough that 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 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 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 present opposition, s 44 requires me to determine three matters. They are as follows:

·     Is the Primex trade mark either substantially identical or deceptively similar to the Timex registrations?

·     Are the goods in respect of which the Primex trade mark is proposed to be used similar to those in respect of which the Timex trade marks are registered?

·     Are the priority dates of the Timex registrations earlier than that of the Primex application?

All three conditions must exist for Timex to establish its opposition in respect of s 44.

Priority date

Both Timex registrations have priority dates earlier than that of IPC's application.  This issue was not in dispute.

Substantial identity

Mr Sumpter, for Timex, did not attempt to demonstrate that the trade marks were substantially identical.  Although Mr Wolnizer made some submissions in the matter, it is clear that the trade marks are not substantially identical on a side by side comparison.  It is therefore the issue of whether they are deceptively similar which is to be decided.

Deceptive similarity

The assessment is not to be made on a side by side comparison of the trade marks.  Rather, it is to be made as if the ordinary customer, who has some knowledge or recollection of the Timex trade marks, were to encounter the Primex trade mark on similar goods (Australian Woollen Mills Ltd v FS Walton & Co Ltd [(1937) CLR 641 at 658]; Rysta Ltd's Appn [(1943) 60 RPC 87 at 108] ; Shell Oil Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [(1963) 109 CLR 407 at 415]).

It is convenient to begin this enquiry by looking at the goods in respect of which the trade marks are used or proposed to be used.  Clearly, both sets are similar in terms of subparagraph 44(1)(a)(i), meaning that they are either the same or of the same description (s 14, supra).  Both the Timex registrations and the Primex application specify a range of horological and chronometric goods in International class 14.  However, the submissions and evidence concentrate particularly on watches.  I think it is appropriate to focus on that segment of the specifications.  The other goods comprised in the specifications, I believe, are both more expensive and more specialised items.  I think it is obviously with watches that the greatest potential for confusion would lie (Pianotist Co's Appn [(1906) 23 RPC 774 (Ch.D.)]).

Two recent decisions of the Registrar in respect of oppositions that concerned trade marks for goods of this kind were drawn to my attention by the parties.  In Eterna SA Fabrique d'Horlogerie v Advance Australasia Pty Ltd [(2001)AIPC ¶91-717] , Eternity was found not deceptively similar to Eterna.  In Automobiles Peugeot v Viva Time Corp [ATMO 27 June 2001], Paul Peugeot was found deceptively similar to Peugeot.  It goes without saying that each case was decided on its facts. However, the nature of the market and the conditions of trade for watches and timepieces, as presented in the evidence and arguments in the present case, accord with the comments of the respective Hearing Officers in those cases.  On a watch-face, particularly, there is little space to display a trade mark.  Except at the lowest end of the market, there is little opportunity for self-service - these goods are usually displayed in cabinets, which are often locked.  Aural and oral considerations are therefore as important as visual ones in assessing the likelihood of deception, because it is likely that the goods will be requested verbally.  On the other hand, being items of personal adornment, watches - even cheap or amusing ones - are usually selected with some care.  They are not "bag of sweets" items that are purchased on a recurrent or frequent basis or by shoppers in a hurry.

A further circumstance which I think is relevant to these particular trade marks, is that it is quite common for traders in many lines of business to create a trade mark by adding "ex" to the end of an existing word (the "ex" being perhaps intended to imply "excellence", as the Lum declaration attests).  By so doing, they attain the dual benefit of retaining an element that the public will easily recognise and to which a relevant meaning already attaches, whilst signalling that the word thus created is being used as a trade mark.  This is so common a practice that I think the ordinary customer pays very little regard to an -EX ending, looking to other parts of a trade mark for its essence or the idea it conveys (cf Mond Staffordshire Refinery Co. Ltd v Harlem [(1929) 41 CLR 475 at 477}).

I have considered the respective trade marks in the context of the comments above.  I will state at the outset that I reject Mr Sumpter's submission that I should disregard the pictorial element in the trade mark, and his submission that there is deceptive similarity because the trade marks share four terminal letters (that is, -IMEX).

To my mind, the Primex trade mark, taken as a whole and considered visually, is not likely to be confused with the Timex trade marks.  The stylised P above the word in the trade mark is visually striking.  Its presence is a 'significant detail' (de Cordova v Vick Chemical Co [(1951) RPC 103 at 106 (PC from Jamaica)]) and would be likely, I think, to emphasise that the initial letter of the word in the trade mark is also a P.

Even if the logo were separated from the word on a watch face, and the lettering were very small, I do not think that the initial letter P - still less the initial combination PR- is likely to be mistaken for a T.  The letters are visually quite different. 

I also think that both the words, although invented, clearly refer to or call to mind ordinary words with a well-known meaning.  The difference in meaning between "Time" [ Per Macquarie Dictionary - noun 1. the system of those relations which any event has to any other as past, present, or future; indefinite continuous duration regarded as that in which events succeed one another.] and "Prime" [ Per Macquarie Dictionary - adjective 1. first in importance, excellence, or value.] serves also to create a quite different impression in the beholder.  Being based on these words, the idea of the respective trade marks is not at all similar.

However, there is also the question of whether, to the ear, the trade marks may be deceptively similar in oral use.  Disregarding any visual component, is it likely the word Primex would be mistaken for the word Timex?  As Mr Sumpter said, the endings will not be slurred, for the nature of -EX endings is that they create sharp and crisp terminal sounds.  That notwithstanding, I think the beginnings of the words are sufficiently different to the ear to render the words aurally quite distinct, irrespective of the endings.  The initial consonant cluster PR uses the lips.  I would describe it as a labial plosive followed by a slightly trilled palatal consonant.  It is not easily confused with an initial T, which uses the teeth.  I would describe it as a dental plosive.  Unlike some consonant sounds in English, these are not subject to confusion.

It is true that, if the speaker's lips were not visible to the listener, as could happen when a sales assistant is taking items out of a cabinet behind the counter, the possibility of confusion would increase.  In my view, though, it would still be no more than a possibility.  I do not think deception or confusion are likely, even in this circumstance, for the reason I have given above: we simply do not tend to confuse these consonants with each other.

Mr Sumpter also made submissions as to the likelihood of 'contextual confusion' - John Fitton & Co Ltd's Appn [(1949) 66 RPC 110 (UK Reg.)] ("John Fitton"); Somers & Anor v Greenbelt Pacific Pty Ltd [(1999) 42 IPR 587} ("Somers"). I do not think that the circumstances of the present application resemble those that were before the decision-makers in those instances.  As the Assistant Comptroller said in John Fitton, at 113-114:

"The [Australian Wine Importers' Trade Mark (6 RPC 311)] is a typical case in which identical or closely resembling marks were to be used on closely related goods, but a similar position would arise where what I may term complementary marks are intended to be used on the same goods, e.g., the Registrar would under Sec.12(1) refuse an application to register the words "Ursa Minor" as a new mark in respect of, say, motor vehicles in favour of one proprietor is the mark "Ursa Major" were already on the Register in respect of those goods in the name of another proprietor. In all such instances, it seems to me, the confusion or deception mainly to be feared is that the public would attribute a common trade origin to both sets of goods. In the present proceedings the Opponent's declarants have given evidence that they know the mark "Jests" and that, if they should encounter similar goods sold under the mark "Easyjest", they would assume that such goods were another product of the proprietors of the mark "Jests".

I would observe that the degree of difference between the trade mark (or putative trade mark) pairs in John Fitton and in Somers is much smaller than is the case here.  "Jests" v "Easyjest", "Ursa Minor" v "Ursa Major", "Golden Fleece" v "Golden Fleece" (with a device), "Planet 2000" v "Planet" (in fancy lettering) are all "complementary marks", to use the terms of John Fitton.  I do not see Timex and Primex as complementary, and so I do not believe they are at risk of contextual confusion.

Mr Sumpter also invited me to consider the notoriety of the Timex trade marks, citing Woolworths, supra, as providing authority for such an approach in the context of s 44. Here again, I think the facts of the present case are quite distinct and preclude any conclusion that favours Timex. Because "Woolworths" was a word "familiar to all Australians", its presence as "a strong visual element" in the trade mark Woolworths Metro influenced the primary judge to believe that it was unlikely to be confused with trade marks that contained or consisted of the word "metro". Tamberlin J agreed with that, as did French J, Branson J dissenting. To quote from French J, at 431:

His Honour's reference to the familiarity of the name "Woolworths" in Australia was appropriate.  Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, as in the present case, it would be artificial to separate out the physical features of the mark from the viewer's perception of them.  For in the end the question of resemblance is about how the mark is perceived.  In the instant case the visual impact of the name "Woolworths" cannot be assessed without a recognition of its notorious familiarity to consumers.

I cannot see that the notoriety or otherwise of the Timex registrations is relevant here.

It is perhaps appropriate to conclude this section by referring to the further evidence, being the translated OHIM decision, and to the other trade mark decisions in different jurisdictions which were tendered in earlier evidence.  Certainly, little weight can be given to these decisions, because they are not made under the same law.  Also, the circumstances of trade in places where English is not spoken, or is not the primary language, are radically different.  Nonetheless, as per Dixon & McTiernan in Australian Woollen Mills,  supra, at 658, "evidence of actual cases of deception, if forthcoming, is of great weight".  The absence of any reference in any of these decisions to any instance of deception or confusion appears to corroborate Mr Lum's assertion, quoted earlier.

I find that the opposition in terms of s 44 fails, because in my opinion the trade marks are not deceptively similar.

Trade mark similar to trade mark that has acquired a reputation in Australia

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

To establish a ground of opposition based on this section, it is necessary for an opponent to show that three conditions exist.  They are as follows:

·     there is a substantially identical or deceptively similar trade mark; and

·     that substantially identical or deceptively similar trade mark has acquired a reputation in Australia; and

·     because of that reputation, fair and reasonable use of the mark applied for would be likely to lead to deception or confusion in the general public.

I have found that the trade marks are not deceptively similar, in terms of s 44. It follows that I also find that they are not deceptively similar in terms of s 60. The opposition in terms of s 60 falls at the first hurdle. As the trade marks are not deceptively similar, it is not necessary for me consider the effect of the reputation Timex has shown to exist in its trade marks at the relevant date.

Decision

I find that the opponent has not established any of the grounds of opposition.  Accordingly, in terms of s 55, I direct that application 773349 proceed to registration after 30 days 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

Costs usually follow the event.  I see no reason to vary that in the present instance.  I award costs against the opponent, Timex Corporation, in accordance with the Official Scale.

Arminel Ryan
A/Hearing Officer

23 November 2001