Torrag Pty Ltd v Lydboots Pty Ltd and Petcure Pty Ltd

[2002] ATMO 6

TRADE MARKS ACT 1995

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

Re:Opposition by Torrag Pty Ltd to registration of trade mark application 793178(5)(42) – The PET VET & HEART DEVICE - filed in the names of Lydboots Pty Ltd and Petcure Pty Ltd.

Background

On 6 May 1999, (‘the priority date’) Lydboots Pty Ltd and Petcure Pty Ltd (‘the applicants’), of Ashbury New South Wales, filed application to register the trade mark appearing below in respect of following goods and services in Classes 5 and 42, respectively, of the International (Nice) Classification of Goods and Services.

Veterinary preparations.

Veterinary services.

The application was examined and subsequently advertised as accepted for registration in the Australian Official Journal of Trade Marks on 25 November 1999.

On 25 February 2000, within the time allowed to do so, Torrag Pty Ltd, (‘the opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the trade mark.

The Notice cites grounds of opposition under sections 58, 59, 60, 41, 42(b), 43 and 44 of the Trade Marks Act 1995, (‘the Act’).

The Hearing

The hearing was in Sydney on 26 October 2001 before me as a delegate of the Registrar of Trade Marks. Mr Geoff Davidson of Halford & Co represented the opponent. Before the hearing, Mr Chris Nunn of Minter Ellison tendered written submissions on behalf of the applicants, a copy of which he supplied to the opponents. At the hearing, the opponent relied on grounds under section 43, 44 and 60. Accordingly, I find that the opponent has not established the other grounds specified in the Notice.

The Evidence

The opponent and applicants have served evidence in support of the opposition, evidence in answer and evidence in reply as provided for by the Trade Mark Regulations.  Details of the statutory declarations are summarised in tabular form below:

Declarant	Known as	Date Made	Exhibits
Evidence in Support
Margaret McLachlan	McLachlan 1	26 May 2000	MM1 – MM21
John Thrift	Thrift	23 May 2000	JT-1 – JT-3
Ian Steep	Steep	23 June 2000	IS-1 – IS-3
Ann Beverley Alderton	Alderton	24 May 2000
Terry J Wescombe	Wescombe	18 May 2000
Manuela Schuhmann	Schuhmann	15 May 2000
Evidence in Answer
Lydia Frances Brichta	Brichta	23 May 2001	1 – 5
Christopher Morgan	Morgan	21 August 2001
Evidence in Reply
Beverley Alderton	Alderton 2	22 August 2001
Margaret McLachlan	McLachlan 2	23 August 200	MM22 – MM23

The parties to these proceedings own and manage veterinary practices in suburban west Sydney.

Margaret McLachlan is principal of the opponent which owns a veterinary practice in Petersham.  This practice is open seven days a week.  It employs three veterinarians and four veterinary nurses.  Ms McLachlan says that, on behalf of the opponent, Torrag Pty Ltd, she filed an application to register an application to register a trade mark, (‘the opponent’s trade mark’) details of which are:

Reg Number:   786044
Priority Date:  19 February 1999
Class:              42
Services:         Veterinary hospital, pet boarding
Trade Mark:   

(‘the silhouette/word trade mark’)

However, Ms McLachlan attests that the trade mark had its genesis at an earlier date.  The opponent had used the silhouette component of the trade mark since 1995 on staff shirts, stationery items, fridge magnets and promotional flyers.  On around 2 May 1997, Ms McLachlan received a letter from a client, Mr Westcombe, whose dog, Mozart, had passed away.  Mr Wescombe, as well as thanking Ms McLachlan for her treatment of Mozart, suggested that the opponent’s practice adopt a heart shaped logo and the words PET VET, being a short-form of the words PETERSHAM VETERINARY HOSPITAL.

Ms McLachlan thought that this suggestion had merit and decided to incorporate the word petVET or petVets into a trade mark with the silhouette device that the opponent was already using.  Accordingly, in May 1997, Ms McLachlan had talks with a graphic designer, Mr John Thrift, concerning the design of a logo incorporating both the words PET VET and the silhouette device.  Mr Thrift designed the silhouette/word trade mark.  This, in turn, was incorporated into an Internet website Mr Thrift designed and which was first made publicly accessible on 14 February 1998.  The Thrift declaration confirms this.

In late 1997, Ms McLachlan asked Mr Thrift to design a newsletter that incorporates the opponent’s trade mark.  The first 2000 of these newsletters were delivered throughout Petersham and surrounding suburbs in February 1998 by Ms McLachlan and a friend, Ms Schuhmann.  The Schuhmann declaration confirms this.  Further editions of the newsletter were published in February 1999 (7000 copies) and February 2000 (15,000 copies); these were distributed among inner-western suburbs of Sydney.  Examples of these newsletters are exhibited to McLachlan 1.

Also attached to McLachlan 1 are examples of the Yellow Pages advertising by the opponent.  In the 1999 Yellow Pages entry, the two most prominent features are the words THE PET VETS and the phone number of the opponent’s practice.  The silhouette device does not appear in the Yellow Pages entry.

Ms McLachlan attests to ‘a growing, industry-wide trend in the veterinary profession for groups of veterinary practices to operate under a common franchise name or trade mark.’  Ms McLachlan documents three such veterinary franchises and exhibits to McLachlan 1 promotional literature from two of them.

The latter part of McLachlan 1 comprises allegations concerning how Ms Lydia Brichta, a principal of one of the applicant companies, arrived at the opposed trade mark.  However, since these allegations lack relevance to my reasons, I will not detail or consider them.  Nevertheless, a letter of demand (which is not ‘Without Prejudice’) issued from the applicants to the opponent.  In this letter, the legal representative of the applicants states, inter alia, that the Pet Vet name ‘is not a generic indicator available to be used by other traders without our client’s consent’.  The letter also contains claims that the trade marks are deceptively similar as it alleges a passing off.

The next declarant, Beverley Alderton, is a registered veterinary surgeon.  Ms Alderton attests that, in late April 1999, she was looking for a locum and telephoned a principal of the applicants, Dr Lydia Brichta, at her practice.  Ms Brichta answered the phone with the words “Pet Vets”.  As Ms Alderton associated the term ‘Pet Vets’ with the Petersham Veterinary Hospital (the practice of the opponent), she queried whether it was the Woodville Park Veterinary Clinic she had phoned.  Ms Brichta answered that the name of the practice was actually the Woodville Park Pet Veterinary Clinic [sic] but ‘was shortened to “Pet Vets” when they answered the phone’.

The balance of the declarations in the evidence in support serve to corroborate the evidence of the opponent’s principal declarant, Ms McLachlan, and I will not elaborate on them.

In evidence in answer Ms Brichta says that she is the director and owner of Lydboots Pty Ltd which, in partnership with Petcure Pty Ltd, owns and manages a veterinary hospital which trades under the registered business name The Pet Vet Woodpark Animal Hospital.

Ms Britchta avers that, in June 1998, she asked a designer friend, Christopher Morgan, to create the logo for the business.  In August 1998, Ms Brichta conducted business, company name search and trade mark searches before registering the business name.  Ms Brichta contacted the Trade Marks Office and was told that use of a trade mark meant she could claim ownership of the trade mark even if it was not registered.  By this, I understand that she means that her company, Lydboots Pty Ltd, and her partner’s company, Petcure Pty Ltd, could claim ownership of the trade mark even if it were not registered.

Ms Brichta says that the applicants have been using the opposed trade mark since December 1999 when they opened their veterinary hospital.  At paragraph six of her declaration she states the applicants used the business name in relation to a house call service since September 1999 and business has been conducted at the applicant’s place of business since December 1999.  Ms Brichta states that when the applicants opened the hospital, they used home-made business cards but have used a trade printer since February 1999.  I am not sure what Ms Brichta means by this since these dates are at odds with each other: it is not clear to me why the applicants should have used a trade printer in February 1999 before the veterinary hospital commenced business in December 1999 and then used hand-made cards.  It is possible that she means that the applicants have used a trade printer since February 2000.  It is also possible that the applicants occupied the business premises in December 1998 and commenced their house call service under the business name in September 1999.  It is also feasible that Ms Brichta has made a series of mistakes with the dates of events that she has provided.  In view of Alderton 1, above, the latter appears likely.

The applicants use the opposed trade mark on stationery, a newsletter, a sandwich board outside the surgery and on a roller door which is visible when the business is closed.

Paragraphs 15 and 16 of Ms Brichta’s declaration state:

“Petersham Veterinary Hospital displayed no signage with the words PET VETS or similar until at least after April 1999.

Annexure 2: Photographs of Petersham Veterinary Hospital enclosed.”

I would infer that, in April 1999, Ms Brichta visited the Petersham Veterinary Hospital and took photographs of it.  However, it is not clear to me why Ms Brichta should have done so before December 1999 when she says that the applicants started using the opposed trade mark.  The detail of the photographs is not clear – there is a sign on the door to the practice which could carry the words PET VET but this is not obvious.  The photographs are all taken from the same viewpoint and from some distance and are, I consider, of low probative value. 

Ms Britcha avers that she answers the telephone with the words “The Pet Vet” or sometimes “The Pet Vet Animal Hospital”.  Ms Brichta also states that the opponent’s use of the words THE PET VET on their own could be a source of confusion.

The balance of Ms Brichta’s declaration is largely criticisms of Ms McLachlan’s declaration.  I take these criticisms into account in my reasons, below, and will not detail them here.

Christopher Morgan, in his declaration, says that he thought of the name The Pet Vet for Ms Brichta in June 1998 without reference to any other business, business name or business entity and created the original design for Ms Brichta.  However, this evidence does not give the declarant’s qualifications or length of experience; the declarant does not state that he is a graphic designer, the name of his business or his position in the business.  Further, the annexure that the declarant says illustrates the design he created is not exhibited to his declaration.  I weight this evidence accordingly.

In her evidence in reply, Ms McLachlan details two instances of alleged confusion stemming from the applicants’ use of their trade mark.  A letter from a Dr Gregory Tillett says that he is a client of the Petersham Veterinary Hospital.  He says that he is surprised that there is no association between the Petersham Veterinary Hospital and the Woodpark Animal Hospital as he had driven past the latter practice and seen its trade mark.  This is, he says, because the name Petvet has been associated in his mind with the Petersham practice since 1998 because of signage, advertising and promotional activities of the opponent.

In the other example, a client of the Petersham practice requested that two dogs be collected from the practice by a boarding kennel with reference to the words PET VET.  The boarding kennel wrongly dispatched a driver to the applicants’ practice at Guildford West instead of to that of the opponent at Petersham.  The distressed client later received a message stating that her dogs were not at the practice. 

The declaration of a boarding kennel driver, Evelyn Frith, corroborates this incident.

In Alderton 2, Ms Alderton states that in early 2001 she advertised her veterinary practice, which is in Balmain, for sale.  On 19 March 2001, she received a phone call from Ms Lydia Brichta in response to the advertisement.  Ms Adlerton avers that Ms Brichta said that she was looking for a practice closer to her home in Croydon Park.

Discussion

The evidence shows that the opponent uses its trade mark in two forms.  The first is that in which the opponent has applied to register application 786044, above: the silhouette/word trade mark.  The second form in which the opponent uses its trade mark is the word(s) PETVET, or THE PET VETS, without the graphical element.  Evidence of this use of the words THE PET VETS before the priority date of the opposed application occurs within the opponent’s newsletters, first published in February 1998 and again in February 1999; on the shirts worn by the staff of the opponent produced on 9 October 1998; on the opponent’s Internet site first published on 14 February 1998; and, in the 1999 Yellow Pages advertisement.

The applicants, in their evidence, appear to point to the date of registration of the business name, ‘The Pet Vet Woodpark Animal Hospital’ as the start of their use of the opposed trade mark and the origin of their rights in the expression PET VET.  However, any rights in the opposed trade mark that may accrue to the applicants either arise from the date of the filing of their application for registration of the opposed trade mark or the date of first use of the opposed trade mark: Shell Co. of Australia Ltd. v. Rohm and Haas Co. (1949) 78 CLR 601 at 628 and Lone Star Steakhouse & Saloon v Zurcas [2000] FCA 29 (21 January 2000) at paragraphs 25 and 26.

Reasons

Section 43 of the Act provides:

43  Trade mark likely to deceive or cause confusion

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

The opponent argues that the opposed trade mark carries a false connotation of linkage to the opponent. 

Hearing Officer Forno, in Down To Earth (Victoria) Co-Operative Society Ltd v Schmidt (1998) 41 IPR 632, made the following observations of the word ‘connotation’, at pages 664-5:

“Connotation” is a new term in trade mark legislation and as such has not yet been interpreted by the courts. The following are two dictionary definitions which define the ordinary meaning:

Macquarie Dictionary :

1. the act or fact of connoting. 2. that which is connoted; secondary implied or associated meanings (as distinguished from denotation): for example the word “bum” has connotations of vulgarity.

Oxford English Dictionary :

1. The signifying in addition; inclusion of something in the meaning of a word besides what it primarily denotes; implication.

Therefore it can be said that the word connotation refers to that which is implied in a trade mark — in addition to its essential or primary meaning. A connotation can result from the trade mark as a whole, or can result from a sign contained within the trade mark. The prominence and context of the potentially deceptive or confusing element in the trade mark is important in deciding whether the trade mark is likely to deceive or cause confusion. Considerations under s 43 concentrate on the matter within the trade mark that could cause deception or confusion in the mind of the relevant buying public. For example, deception or confusion could arise in regard to the character of the services, or the implied endorsement or licence of services by a person or organisation.

The Explanatory Memorandum to the Trade Marks Bill 1995 says, of section 43, that the clause provides that an application for registration must be rejected if the trade mark, because of some signification inherent to it, would be likely to deceive or cause confusion regarding some characteristic of the goods or services.

In Amalagamated Television Services Pty Ltd v Linda Cameron Pickard, Alexandra Cameron Pickard and Linda Louise Pickard [1999] ATMO 103 (11 October 1999), I decided that the words SUMMER BAY had only slight use as a trade mark and that the evidence showed that their use and identity within Australian parlance signified the fictitious location in a television series and thus was likely to confuse or deceive because of the implicit suggestion that the goods were somehow connected (via licensing) with the opponent (ATS).

In Twentieth Century Fox Film Corporation v Michael F Durkan [2000] ATMO 5 (19 January 2000), Deputy Registrar Hardie found that the trade mark BRAVEHEART THE MUSICAL would give rise to a connotation of the motion picture BRAVEHEART, a coinage in relation to William Wallace by Twentieth Century Fox Film Corporation (Fox). This was because the evidence demonstrated the very wide publicity surrounding the release of the film which led to a signification of the word, combined with the strong public identity of the film with its makers and widespread knowledge of marketing and 'spin-offs' from such films.

These decisions implicitly assess the significations of the indicia as words, as opposed to trade marks, and are thus consistent with the Explanatory Memorandum.

I consider that the evidence does not show that the words PET VETS, or the device/word combination trade mark which the opponent has applied to register, have entered usage and that those indicia have taken on a connotation.

Accordingly, the opponent has not established this ground of opposition.

Section 44

Section 44 of the Act provides:

44  Identical etc. trade marks

(1)Subject to subsections (3) and (4), 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; or

(ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; 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.

Note 1:For deceptively similar see section 10.

Note 2:For similar goods see subsection 14(1).

Note 3:For priority date see section 12.

(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)it is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1:For deceptively similar see section 10.

Note 2:For similar services see subsection 14(2).

Note 3:For priority date see section 12.

(3)If the Registrar in either case is satisfied:

(a)that there has been honest concurrent use of the 2 trade marks; or

(b)that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:For limitations see section 6.

(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a)beginning before the priority date for the registration of the other trade mark in respect of:

(i)the similar goods or closely related services; or

(ii)the similar services or closely related goods; and

(b)ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:For predecessor in title see section 6.

Note 3:For priority date see section 12.

As the opposed application is in respect of both goods and services, the provisions of both subsections 44(1) and (2) apply.  It is not argued by the opponent that the trade marks are substantially identical; it is not disputed by the applicants that the goods and services of the parties are closely related; and, the priority date of the opponent’s application is earlier than that of the opponent’s.  What I am to consider, therefore, is whether the trade marks are deceptively similar.

Framework

Section 10 of the Act defines deceptive similarity thus:

10  Definition of deceptively similar

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.

Deceptive similarity was considered by French J in Registrar of Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999); at paragraph 50, he said:

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.

Concerning the comparison of the trade marks, Windeyer J said 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.

In C A Henschke & Co. v. Rosemount Estates Pty Ltd [2000] FCA 1539, at paragraph 42, Ryan, Branson and Lehane JJ observed of the Shell case:

Windeyer J added, at 416, that "[the] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone but, by the effect of that similarity in all the circumstances". Thus, for instance, although the present Trade Marks Act contains no analogue of s 66 of the Trade Marks Act 1955 (Cth), it is still true that questions of deceptive similarity must be considered against the background of the usages in the particular trade (Shell at 410).

In Australian Woollen Mills Ltd v F S Walton and Co Ltd (1937) 58 CLR 641 at 658, Dixon and McTiernan JJ said:

Evidence of actual cases of deception, if forthcoming, is of great weight.

Discussion

With the above parameters in mind, the evidence shows that veterinarian practices depend heavily on the word component of any trade mark that they might use to identify the source of the services they offer.  For example, the literature which promotes veterinary franchises exhibited to McLachlan 1 shows prominent use of combined word/device trade marks on the outside covers but almost exclusive reference to the word portion of the trade marks within the text.  This reliance on the word portion of trade marks also extends to telephone directory listings and use in the opponent’s newsletters.  Ms Brichta, the evidence shows, answers the telephone with the words PET VETS or similar.  In any oral use of, or reference to, the trade marks, use of the words PET VET(S) is unavoidable.  As observed in Bridge Stockbrokers Limited and Gregory P. Moore and: Bridges & Ors. No. G 275 of 1984 (1985) ATPR para 40 - 502 / 4 FCR 460, by Smithers and Woodward JJ:

We believe it was and is inevitable that, over a wide area extending beyond professional circles, persons having a degree of business with the firm, or who discuss it in relation to their own affairs, have referred and will refer to it as "Bridges". It is the normal practice in modern conditions to identify entities by one word or some short abbreviation.

But, Mr Nunn, for the applicants, submits that the words PET and VET are common to the trade mark and quotes Hearing Officer Forno in Lydia Brichta on behalf of the Pet Vet Woodpark Animal Hospital v Torrag Pty Ltd [2001] ATMO 13 (16 February 2001):

I think that the words PET VETS are common to the trade and should be able to be used to describe veterinary services for household pets by all providing them.

Mr Davidson, for the opponent, submitted that Hearing Officer Forno’s words were obiter to his decision; that the section of the Act under consideration in that decision was section 41; (whereas here it is section 44) and, there is no evidence that the words PET VET are, in fact, common to the trade.

Further, as stated in Henschke, above, it is still true that questions of deceptive similarity must be considered against the background of the usages in the particular trade. 

I accept that the words PET VET are not common to the trade but I consider that those words obviously have a comparatively low degree of inherent capacity to distinguish in respect of veterinary goods and services.  Although the words have a slight tautological ring, the expression PET VET can convey a meaning, I believe, of a veterinarian who treats pets as opposed to large animals.

Comparison of compound trade marks which have both word and device elements can present problems where the element in common between the trade marks are either descriptive or common to the trade.  If the elements in common between the trade marks lack any inherent distinctiveness, for example they are fully descriptive, or common to the trade, such as the word ‘cola’, there is no likelihood of deception or confusion: Coca Cola Co of Canada Ltd v Pepsi Cola of Canada Ltd [1942] 1 All ER 615. In contrast, if the words in common between the trade marks under comparison are adapted to distinguish the relevant goods or services there is, or will be, a likelihood or deception or confusion. The problematic cases are those where the element in common lies between these more straightforward extremes. In "Frigiking" Trade Mark [1973] RPC 739, Whitford J, having concluded that, although the word "King" shared by both the marks under consideration was not common to the trade, it was nonetheless not a highly distinctive word and therefore, in that case, the marks FRIGIKING and THERMO-KING could co-exist on the Register for refrigeration apparatus.

Whilst comparing the registered trade mark MELBOURNE BITTER to the compound trade mark appearing below, Hearing Officer Zars said in Carlton and United Breweries Limited v Melbourn Bros [1999] ATMO 111 (29 October 1999):

It is, of course, well-established in case law that, generally, in considering the possibility of confusion between trade marks, where a non-distinctive element or one which occurs in other marks in the same market is reproduced in marks owned by different proprietors, then purchasers tend to pay more attention to the other features contained in the marks so as to ensure they select the product of their choice - Harrods Ltd's Appn (1935) 52 RPC 65 and Coopers Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536. However, in the present situation, I must take a different stand. While it is true that the evidence produced by the applicant on the status of the Register reveals that the word MELBOURNE has been incorporated in marks by three other owners besides the opponent, to cover alcoholic beverages, that, in my opinion, is not sufficient in itself to maintain that the common or descriptive element should be entirely disregarded when assessing a possible conflict between the marks - Broadhead's Appn (1950) 67 RPC 209. It has been stated by Romer J in Payton & Co Ltd v Snelling Lampard & Co Ltd (1900) 17 RPC 48, at 56, that:

[W]hen one person has used certain leading features, though common to the trade, if another person is going to put goods on the market, having the same leading features, he should take extra care by the distinguishing features he is going to put on his goods, to see that the goods can be really distinguished.

However, in the Melbourn case the opponent could point to rights arising from a prior registration: here the opponent has no prior established registered rights in the expression PET VETS.

In Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999) at paragraph 45, French J said:

The position now is that the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

I have balanced the margin of inherent capacity to distinguish within the words PET VET, the opponent’s lack of any pre-existing rights in those words recognised by trade mark registration of those rights, and the words of Whitford J in Frigiking, above.  I have also taken into account the instances of confusion which the opponent has documented and the fact that there are graphical elements in the trade marks which may allow them to be distinguished from each other.  I am not satisfied that that there is a reasonable likelihood of deception and confusion based on the opponent’s pending application.

The opponent has not, therefore, established its opposition in terms of section 44 of the Act.

Section 60

Section 60 of the Act allows:

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

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.

Note 1:         For deceptively similar see section 10.

Note 2:         For priority date see section 12.

The issues that arise for consideration under section 60 are:

·     whether the trade marks are substantially identical or deceptively similar

·     the reputation of the opponent’s trade mark at the priority date; and,

·     whether because of the reputation of the opponent’s trade mark, the use of the applicants’ trade mark would be likely to confuse or deceive.

There is no requirement within section 60 that the trade mark on which an opponent may rely be registered or subject of an application for registration.

The evidence goes to the use by the opponent of two trade marks; the first is in the form that it has applied to register its trade mark and on which it based its opposition in terms of section 44, above. The second form of the trade mark is the common law trade mark PET VETS.

Evidence of this use of the common law trade mark PET VET by the opponent before the priority date of the opposed application occurs within the opponent’s newsletters, first published in February 1998 and again in February 1999; on the shirts worn by the staff of the opponent produced on 9 October 1998; on the opponent’s Internet site first published on 14 February 1998; and, in the 1999 Yellow Pages advertisement.   This use is in relation to the veterinary services performed by the opponent.

Similarity of the trade marks

The test for deceptive similarity is in terms of the test in Shell, above.  The opposed trade mark and the PET VET trade mark of the opponent are not to be compared side by side but are to be compared with reference to the context in which they are used and the impressions that the trade marks make on the minds of potential purchasers – or, in this instance, clients.

Veterinary practices are dependant on oral use of trade marks and the word component of any compound trade mark they use, as I have mentioned under the heading Section 44, above.  A visit by a client to a veterinary clinic is almost invariably preceded by a telephone call to make an appointment.  The evidence shows that Ms Brichta answers the telephone with the words “Pet Vet”.  Oral use of the words extends to client recommendations – such recommendations in relation to professional services are commonplace.  In Australian Woollen Mills Limited v. FS Walton and Co. Limited (1937) 58 CLR 641, Dixon and McTiernan JJ said at 658:

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, then similarities both of sound and of meaning may play an important part.  [Stress added]

In oral use, reliance on the word portion of the opposed trade mark is unavoidable.  I consider that the opposed trade mark and the opponent’s common law trade mark, PET VET, are deceptively similar.

Reputation at priority date

In McCormick & Company Inc v McCormick [2000] FCA 1335, Kenny J said, at paragraphs 81 to 82:

What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:

reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".

Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public's mistakenly attributing a business connection between the two or attributing her product to the company?

The decision in McCormick, above, concerned reputation of a trade mark used for goods sold in supermarkets throughout Australia.  Here, however, the trade marks at issue are both used in respect of veterinarian services which are provided locally in Sydney’s West.  In the instance of such a service trade mark, which is used locally, it is unlikely that the Australian public generally will recognise the trade mark although it might be well-recognised locally.  In assessing the reputation of service trade marks which are used locally, I therefore believe it appropriate to consider and assess that reputation within the area in which it is used.  The evidence here shows the area in which the opponent uses its trade mark to be what the opponent terms Sydney’s Inner West.  The suburbs in Sydney’s Inner West include Abbotsford, Annandale, Ashbury, Ashfield, Balmain, Belmore, Birchgrove, Burwood, Campsie, Chippendale, Concord, Croydon Park, Drummoyne, Five Dock, Glebe, Home Bush, Leichhardt, Marrickville, Newton, Petersham, Rhodes, Roselle, Stanmore, Strathfield, Sydenham, and Tempe.

I also take into account that veterinary services primarily concern those people who have companion animals and who are thus the major part of the public who might recognise the trade mark.

The opponent has filed details of revenue, and expenditure on promotion and advertising, in relation to the trade mark.  However, as these figures have not been served on the applicants, I do not consider them as to do so would not afford procedural fairness to the applicants.  But, reputation of a trade mark may be inferred in other ways.  The opponent has served and filed receipts for, and examples of, its advertising and promotional activities.

Before the priority date of this application, (6 May 1999), the opponent had, in February 1998, an initial distribution of 2000 copies of its newsletter to houses in Petersham, Marrickville, Tempe and Sydenham.  In February 1999, 7000 copies of the opponent’s newsletter were delivered to houses in the Inner West.  Both the silhouette/word trade mark and the trade mark PETVET appear in these publications – the opponent states its hours of business with reference to the trade mark PETVET.  T-shirts bearing the trade mark ‘pet Vets’ for wear by three veterinarians employed at the opponent’s practice were introduced in October 1998.  The opponent also introduced its Internet website on 14 February 1998 which features prominent use of the trade mark THE PET VETS; the opponent has not stated the numbers of people visiting the site but Ms McLachlan declares that it is a regular source of email inquiries to the opponent’s veterinarian practice.  The trade mark THE PET VETS, without the silhouette device, appears in bold in an advertisement in the 1999 edition of the Sydney Yellow Pages under the banner ‘Inner West Area.’  The provision of the veterinary service itself must also result in recognition of the trade marks by the public which has used the services – the opponent employs three veterinarians and four nurses and provides a weekend service.  Thus, the practice is of moderate size.  It follows that a substantial number of people must have been exposed to the PET VET trade mark via their contact with the practice before the priority date of the opposed application.

The use of the common law trade mark PET VET by the opponent has been in variable forms as described in the preceding paragraph.  These forms are, I consider, substantially identical and may be considered to be use of the same trade mark.

There is no evidence before me that the words PET VET are in common use within the veterinary trade. The words are, as I have mentioned under the heading Section 44, above, capable of being understood as referring to a veterinary who treats pets, as opposed to large animals.  However, it is usual in the veterinary profession to refer to either a large animal practice or a small animal practice and the descriptors used in relation to veterinary practices are, from my general knowledge, the expressions ‘Veterinary Clinic’, ‘Veterinary Hospital’, ‘Animal Hospital’ and the like.  Therefore, the expression PET VET is, although prima facie lacking in inherent capability to distinguish veterinary services, capable through use of distinguishing those services.  The opponent had, by the priority date of the opposed application, used the expression PET VET as a trade mark for some fifteen months.  During this time the opponent established a recognition of the trade mark among the public in Sydney’s Inner West.

I am therefore satisfied that, before 5 May 1999, the opponent’s PET VET trade mark was recognised by the public generally in the Inner West of Sydney.

Deception or Confusion

The propositions relevant to the consideration of deception and confusion, restated by French J in Woolworths, are set out, above, under the heading Section 44.

The applicants are situated at Guildford, in Sydney’s west, which is approximately 15 kilometres from Petersham where the opponent has its practice.  In broad terms, the suburbs of Croydon, Strathfield, Regents Park and Villawood lie between Petersham and Guildford.  At this distance, there has been a level of confusion between the trade marks of the parties.

However, in Berlei Hestia, above, Mason J stated that the question of whether there was likely to be deception or confusion was to be considered in the light of the uses to which the applicants can properly use their trade mark.  Within the scope of the specification of the opposed application, the applicants may franchise their services and the use of their trade mark.  There is evidence, as I have previously noted, which indicates that veterinary services are increasingly being franchised.  Were the applicants to franchise use of their trade mark, another person could properly start a veterinary practice closer to the opponent and franchise use of the opposed trade mark.  It also appears possible that one of the applicants, Lydboots Pty Limited, could move – as suggested by the evidence in Alderton 2 – to a location closer to that of the opponent.  In fact, the applicants could properly use the trade mark anywhere in Australia, including Petersham where the opponent is located.

A further consideration is that, as veterinary services are being increasingly franchised, this may add to the likelihood that the public will see trade marks as indicating a connection between the services of the parties, believing that the applicants’ practice is a franchise from the opponent or a part of the same franchise.

I consider that there is a real danger of confusion or deception resulting from the reputation of the opponent’s PET VET trade mark before the priority date.  I think that it is very likely that the public, recognising the opponent’s common law trade mark, will view the similarity of the applicants’ trade mark as signifying some sort of business connection between the parties.  It is not clear to me that the public is aware that veterinary services are often now a franchised service – however, it is likely that the public would see the similarity of the trade marks as signifying that the different services are branches of the same practice.

This confusion between the common law trade mark of the opponent and the opposed trade mark is, I consider, inevitable in view of the reputation of the opponent’s trade mark at the priority date for registration of the opposed trade mark.  It is noteworthy that one of the applicants, Ms Brichta, states that the opponent’s use of the words PET VET would be a source of confusion.

I am therefore satisfied that the reputation of the opponent’s word trade mark PET VET was such, at the priority date of the opposed application, that the use of the applicants’ trade mark was likely to confuse or cause deception.

Decision

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.

The opponent has established its grounds of opposition under section 60 of the Act. I therefore refuse to register the trade mark.

Costs

The opponent has requested its costs. Section 221 of the Act provides:

221  Costs awarded by Registrar

(1)       The Registrar may award costs in respect of the matters, and in the amounts, provided for in the regulations against any party to proceedings brought before him or her.

(2)       A party desiring to obtain costs must apply to the Registrar in accordance with the regulations.

(3)       If a party is ordered to pay the costs of another party, the costs may be recovered in a court of competent jurisdiction as a debt due by the first party to the other party.

The opponent has been successful in these proceedings.  I therefore order that the applicants pay the opponent’s costs as per the items allowed in Schedule 8 to the Trade Mark Regulations.

Ian Thompson
Hearing Officer

21 January 2002