Tiodize Company, Inc v Unichema Chemicals Limited

[1993] ATMO 57

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by Unichema Chemicals Limited to the registration of Trade Mark application number 534334 in the name of Tiodize Company, Inc.

In this matter the trade mark TIOLUBE, accepted in Class 4 in respect of, "A protective coating in the form of a lubricant for application to metallic and non-metallic surfaces to inhibit friction, wear and corrosion", in the name of Tiodize Company, Inc., of Huntington Beach, California (a United States Corporation) is opposed by the above named opponent of Wirral, Merseyside, England.  The application was advertised as being accepted in the Official Journal of 1 October 1992.  Notice of Opposition was served on the applicant on 22 December 1993.  The Notice cited two registrations in the name of the opponent:

.       409089(4)  Priolube     Lubricants

.409091(1)  Priolube     Chemical products for use in industry; carboxylic acid esters, fatty acid esters and fatty acid derivatives, synthetic lubricant base fluids

Evidence in support of the opposition was not lodged and the applicant did not seek to lodge evidence under the provisions of regulation 44.

The issue was heard before me in Canberra on 19 May 1993.  The applicant chose to rely on written submissions and the opponent was represented by Mr Ray Jarman of the Unilever legal department.

The submissions
Insofar as they are relevant to my decision, the submissions of the opponent, briefly stated, are that:

.       the marks are substantially identical, if not,

.the mark is deceptively similar in terms of sub-section 33(1) of the Act to registrations 409089 and 409091 of the mark TIOLUBE

.in considering the similarity of marks, some account can be taken of material that is common to the trade

.the opponent considers that the commonality of the word part -IOLUBE within a short and invented mark, with the sole difference being the letters T and PR with which the marks commence, will lead to deception or confusion

.the goods in question are either the same goods or goods of the same description

.the marks are both invented words with no meaning that can be readily ascribed to them as an aid-memoire by the public.

The applicant's written submissions by Mr Ray Walton of the firm Griffith Hack, of Sydney, waived the applicant's right to be heard and stated that:

.       the opposition was improperly made and the sections that the opposition were lodged under are not relevant

.       there has been no evidence lodged

.       the opposition must fail under sub-paragraph 28(a) of the Act as there has been no blameworthy conduct as the tests infer under sub-paragraph 28(d) (with which sub-paragraph 28(a) must now be read conjunctively).

.       most of the matter common to both marks is common to the trade and hence not distinctive

.       the first syllable is the most important in distinguishing one mark from another

.       the goods are not goods of the same description

.       the opponent should accept that having marks close to its mark is a price that it pays for having a major portion of its mark being non-distinctive

.       the mark the subject of this application is registered in the United Kingdom and in the United States of America

The balance of the submissions was a rebuttal of the applicant's arguments by the opponent.

Discussion
This issue raises a number of questions some of which are difficult to decide and is one in which I find myself agreeing with at least some of the propositions of both applicant and opponent.  The argument was in terms of section 33 of the Act and I will so determine it.

Sub-section 33(1) leaves four issues to be decided - are:

.       the marks substantially identical? or
                  .       the marks deceptively similar?

and, if so, are the goods:

.       the same goods? or,
                  .       'goods of the same description'?

If the answer to either of the first two questions and either of the second two questions is "yes", the application must be refused.

The goods
The same goods.  Prior registration 409089 is in respect of 'lubricants'.  I note the applicant's submission that the goods that the marks are used on are, in fact, different.  However, this is not what I have to consider: the test is whether the goods in respect of which this application seeks registration fall within the description 'lubricants' - and the inescapable answer is that they do. 

As to the goods of this application as compared to prior registration 409091.  This application which is in respect of, "A protective coating in the form of a lubricant for application to metallic and non-metallic surfaces to inhibit friction, wear and corrosion" and  "Chemical products for use in industry; carboxylic acid esters, fatty acid esters and fatty acid derivatives, synthetic lubricant base fluids", the goods in respect of which 409091 is registered, are not, I believe, the same goods.

Goods of the same description.  However, I consider that some goods, at least, of prior registration 409091 are goods of the same description as the goods of the instant application.  The generality of the statement, "A protective coating in the form of a lubricant for application to ... non-metallic surfaces to inhibit friction, wear and corrosion", is such that it must include most lubricants: it would include, for example, lubricants as diverse as leather lubricants, cosmetic lubricants and possibly even nutritional lubricants.  Fatty acids, which are an item in the specification of goods of 409091, are used as lubricants in cosmetics and nutrition: (McGraw-Hill Dictionary of Scientific and Technical Terms).  I therefore believe that at least some of the applicant's goods are goods of the same description as some goods specified by registration 409091: they have the same trade source, they appear to be distributed along the same trade channels and are, or can be, used by the same class of people for the same purposes.  There has, as I have earlier indicated, been no evidence put in by the parties that would indicate that the trade situation is otherwise and this has, therefore, been an area of some difficulty for me.

However, I have concluded that some of the goods in common between registration 409089 and this application are the same goods; and, some of the goods in common between 409091 and this application are goods of the same description.

The marks
Substantially Identical.   This question is one of abstract similarity.  The marks are to be considered side by side and the collective similarities and differences carefully weighed. It is the total impression of resemblance or dissimilarity in the comparison that is the test: Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407.

It is clear when these tests are applied to the marks at issue that they are not substantially identical.  The marks start with different letters and present themselves to the eye in different ways.  It is true that, as similarly constructed invented words, both conjure up a fairly similar nebulous image of goods that are something to do with lubricants; however, this is not the test - the test lies in the mark itself not in something that it may bring, however nebulously, to mind.

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.

The problem confronting me in this decision is that there has been no evidence led by either party as to the class of customer, the surrounding circumstances, or the nature of the trade.  Additionally, as I have previously observed, the specifications of goods of the marks in question are very general: 534334 and 409089 in particular contain goods that are not expressed in terms that would make any class of person more obvious as a customer.  Accordingly, the class of customer would include the ordinary person with no technical knowledge, the labourer who follows the directions of others, the home handyman who might know a little bit more about the goods, the tradesman who would have a relatively good knowledge of the field, and the technical expert whose knowledge and expertise in the field is relied on, in turn, by others.

The goods, also, encapsulated within those specifications are such that they might readily be used in environments common to all of those people that I mention in the foregoing paragraph and be such that they are a simple lubricant such as any person might use.

I am hardpressed to seriously contemplate any situation where the similarity between the words PRIOLUBE and TIOLUBE would be such that the similarity would be deceptive.  That is, that the similarity would deceive or confuse in terms of sub-section 6(3) of the Act.

I believe that any class of purchaser or user of these goods exercises a degree of care - largely from the knowledge of the consequences of not exercising care when purchasing goods such as these.  The consequences of applying the wrong lubricant to any goods are large in the minds of the consumer, and, if the consumer is not aware of the consequences of using the wrong lubricant, and is operating to some extent out of their sphere of knowledge, that person will usually exercise more caution than they would otherwise.

Although both words are invented and the prefix does not have a readily ascribed meaning as an aide-memoire for the consumer, the prefixes PRIO- and TIO- do look and sound quite different.  I think that the instant marks fall into the same category of marks as those in Biersdorf AG's Appn (1984) 2 IPR 402 (CARPEX and BARDEX). The care with which the first syllable in pronounced is also going to fix itself in the mind, the differing number of consonants in the prefix is going to help as an aide-memoire and the similarity of the prefix PRIO to the word PRIOR is going to further separate the marks.

Accordingly, I do not think that the chances of the marks' concurrent use leading to confusion or deception, in terms of sub-section 6(3) of the Act, is such that those chances constitute the likelihood stipulated by that sub-section.

The opposition must therefore fail on this point and I therefore dismiss the opposition and direct that the application proceed to registration.

Costs
I award costs to the applicant, it being the successful party.

Ian Thompson
Senior Examiner
Trade Marks Hearings

30 June 1993