Toshiba Tec Kabushiki Kaisha v Tecs Imports Pty Ltd

[2000] ATMO 119

TRADE MARKS ACT 1995

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

Re:Opposition by Toshiba Tec Kabushiki Kaisha to the registration of trade mark application number 768656 in the name of Tecs Imports Pty Ltd for the trade mark comprising the word Tecs, and also the words THE ELECTRONIC & COMPUTER STORES and a device consisting of an ellipse and crescents.

Background
Application number 768656 was filed on 28 July 1998 in the name of Tecs Imports Pty Ltd (the applicant).  The application was for the registration of the trade mark shown below and ultimately covered the statement of goods, "data processing equipment and computers " in Class 9.

Following examination, the trade mark was advertised as being accepted in the Australian Official Journal of Trade Marks of 26 November 1998.

A notice of opposition to the trade mark’s registration was filed by Toshiba Tec Kabushiki Kaisha (the opponent), on 26 February 1999.  The notice of opposition listed a number of grounds.  However, the only matters which were relied upon by the opponent's counsel at the hearing set down to decide the matter, were those under ss.44 and 60.  Accordingly, those grounds are the subject of this decision and the reasons for it.

The opponent requested a hearing in the matter and it came before me, as a delegate of the Registrar, in Melbourne.  Representing the opponent at the hearing was Mr Ben Fitzpatrick of Counsel, instructed by Griffith Hack.  The applicant had previously advised by letter that it had decided not to be represented at the hearing.

The Evidence
The evidence in support comprises a declaration by Mr Takashi Mine, the opponent's General Manager, dated 5 November 1999.  Mr Mine lists the three Australian trade mark registrations owned by the opponent, on which it is relying in its opposition, and also describes the business of the opponent and the goods that its sells.  He discusses the public perception of the opponent's TEC trade mark and declares that it is registered in many countries throughout the world.  He says that this mark is extensively advertised and promoted in Australia on its behalf and he details the way that goods bearing the mark reach customers in this country.  Mr Mine also gives details of the value and number of the opponent's TEC branded goods in Australia.

Attached as exhibits to Mr Mine's declaration are a list of the opponent's worldwide TEC registrations, copies of sales and promotional brochures bearing the opponent's TEC mark and copies of invoices showing examples of products sold under that mark.

The applicant did not serve any evidence in answer in the matter.

Submissions
Mr Fitzpatrick said, in relation to the ground of opposition under s.44, that the opponent was the owner of three registrations which included the word TEC: registration number 376824, for the word TEC and covering computer type goods in Class 9; registration number 321270, for the word TEC in slightly stylised form and covering computers and other goods in Class 9; and registration number 461031, for the word TEC and covering a variety of goods in Class 9.  He argued that the other material in the present mark, including the relatively common device element, was not sufficient to differentiate the presently applied-for mark from those trade marks and that, using all of the accepted tests, they must all be considered to be deceptively similar.  He distinguished other trade marks, which co-existed with the opponent's marks on the Register and which contained the word element TEC, by saying that they all included other words or syllables.  He said that, here, the only differences between the opponent's marks and applicant's mark here were the addition, in the latter mark, of the letter S, the descriptive wording and a relatively non-distinctive device.  He said that it was particularly important, in relation to a finding of deceptive similarity here, that the goods sold by the parties in dispute were the same or very similar.

With respect to the ground under s.60 of the Act, Mr Fitzpatrick said that the use of the subject mark by the applicant would be likely to deceive or cause confusion in the light of the reputation in the TEC marks attained by the opponent.  He referred for support here to the opponent's evidence which he said showed significant sales of goods bearing the opponent's marks from 1995 to 1998.

He closed his submissions by seeking costs in the matter on behalf of the opponent.

As I have said, the applicant did not appear at the hearing, nor did it make any written submissions in the matter.

Analysis
I will deal, in this part of the reasons for my decision, with both grounds in turn which the opponent's attorney relied upon in the making of his submissions.

The relevant part of s.44 reads as follows:

Section 44 - substantially identical or deceptively similar trade mark
44.(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.

In relation to this ground, the opponent has said that the subject trade mark is deceptively similar to three prior registered trade marks owned by it for the same or similar goods.  In deciding whether or not competing trade marks are deceptively similar in relation to each other, the tests are conveniently laid out in such cases as Australian Woollen Mills Ltd v F. S. Walton & Co Ltd (1937) 58 CLR 641. and Shell Co (Australia) Ltd v Esso Standard Oil ( Australia) Ltd (1963) 109 CLR 407, where, in the latter case, Windeyer J said, at 415:

(in relation to deceptively similarity)   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.

Section 10 of the Act defines a trade mark as being deceptively similar to another trade mark if it so nearly resembles that mark that it is likely to deceive or cause confusion.  Consideration should also be given to a normal person's impression based on a recollection of the opponent's marks.  In this regard, Luxmoore, L.J. expounded the test referred to as the doctrine of "imperfect recollection" in Rysta Ltd.'s Appn. (1943) 60 RPC 87.

As Mr Fitzpatrick has submitted, it is the case that the word element TEC is common to both trade marks and that the opponent's mark is wholly contained in the applicant's stylised mark.  He also argued that customers would see the word TECS in that mark as indicating the plural of the word TEC.  However, I must disagree with him on whether that would be the inference drawn by customers.  I am not wholly convinced, despite Mr Mine's unsupported belief that the opponent's customers see that mark as a word, that the mark would not be referred to as the letters, T, E, C - despite its being able to be pronounced.  I believe that this is the case with other well known trade marks, company names and acronyms, where users refer to the letters included in them rather than the pronounceable word they form.  Some examples are: NEC (NEC Corporation), CIG (the former Commonwealth Industrial Gases Ltd), SAS (Special Air Services), POA (price on application), and PAYE (pay as you earn).

I believe that the present mark must be considered as a whole.  When this is done, it is clear that the dominant feature in it is the capital letter T and the ellipse surrounding it.  I cannot agree with Mr Fitzpatrick that the ellipses and crescents in the mark do not add much to its capacity to distinguish.  On the contrary, I think that they are, together, reasonably distinctive.  The word element TECS is there but it is presented as a word, Tecs - the lower case letters further accenting the capital letter.  Additionally, the other words in the mark, THE ELECTRONIC & COMPUTER STORES indicate, in my opinion, that the word Tecs is an acronym of the first letters of those words and further serves to indicate that the owner of the mark is not the opponent, Toshiba Tec Kabushiki Kaisha.

In cases such as this, where I am required to determine whether or not trade marks are deceptively similar, I am permitted to consider all of the surrounding circumstances of their use.  This course has been endorsed by the High Court in Cooper Engineering Co Pty. Ltd. v. Sigmund Pumps Ltd 86 CLR 536 when citing with approval Parker J. in Pianotist Co. Ltd.'s Appn 23 RPC 774. In this context, I have considered Mr Fitzpatrick's claim that customers' verbal references to the opposing marks would lead to confusion. On this point, I think that, even allowing that the opponent's mark could be articulated as a word, in the modern era of commerce where goods are openly displayed and selected, such an argument cannot be given as much weight as would have been afforded it in the past. It would be rare today for a customer to simply request any of the goods sold by either party from a salesperson behind a counter - goods which I concede are similar or the same - and then simply purchase them without further inspection. Additionally, all of the goods appear to be of a relatively specialist nature and reasonably expensive. Consequently, I think that potential buyers of those goods would take some care in their selection. All of the above indicates to me that cases of imperfect recollection of the competing trade marks would be rare - despite the common nature of the goods covered by both.

As I have earlier recorded, Mr Fitzpatrick also sought to distinguish coexisting registrations, which contained the word element TEC, from the present situation because, he argued, the addition of other material in those marks helped to distinguish them from each other.  However, I believe that this principle could be applied in the present case.  When the additional words and devices in the mark are taken into account, and the present mark considered as a whole, I think that it serves to differentiate it from the opponent's simple and obviously well known TEC trade mark.

I think that the situation in the present case is much like that considered in the Office decision, Tecmo Kabushiki Kaisha v Tokyo Denki Kabushiki Kaisha (1995) AIPC 91-177. The same opponent's mark TEC, in that case, was wholly contained within the applicant's trade mark TECMO.  However, the delegate in that case found that, despite this common element, the marks there were not deceptively similar.  Similarly, I believe that the present application is not deceptively similar to the prior registered marks of the opponent.  I accordingly find that this ground of the opposition is unsuccessful.

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

This section reads:

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.

I have already found that the respective trade marks are not deceptively similar to each other in relation to the ground under s.44.  That being the case, in relation to the s.60 ground, it is not necessary for me to now explore whether deception or confusion would be caused if the presently applied-for mark is used on the goods in the specification, in the light of the opponent's reputation in the trade mark in Australia.

However, notwithstanding my finding of a lack of deceptive similarity between the marks, I think that, had I decided for the opponent on that issue, then it would have needed to have done more than it has here to show that there existed a sufficient reputation in Australia for its marks, as at the date of the present application, so that deception or confusion would be likely to occur because of the subject mark's use.  There is no change in the law under the Trade Marks Act 1955 that there is an evidentiary onus on the opponent, in the first instance, to establish the extent of its reputation in Australia - re Heery J., when referring to s.28 of that Act, in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 at 501.

Mr Mine, in his declaration, does provide impressive wholesale sales figures and the number of units sold from 1995 onwards.  Nevertheless, the opponent would have needed to establish that its marks' reputation was sufficient amongst a substantial number of persons, as at the critical date of the filing of the present application - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, so that deception or confusion would be likely to occur amongst a substantial number of people, likely to be concerned in the purchasing of the particular goods, because of the use of the applicant's mark - as per Kendall Company v Mulsyn Paint and Chemicals 109 CLR 300. That being the case, then I would have expected that, in addition to merely annexing some sales and promotional brochures, the amount of money expended on promoting the trade mark could have been provided. Additionally, some supporting declarations by those in the trade attesting to such a status could have been included to add weight to the opponent's case. This might have been supported by some other material which may have helped to establish a sufficient reputation for the opponent's mark, as at a particular date. On this point, I further note that the opponent's sales figures provided are only for three years prior to the date of filing - hardly enough to convincingly demonstrate to me that there existed sufficient reputation in the market for the opponent's mark, so that deception or confusion would be likely to occur.

Accordingly, I find that the opponent is also not successful on this ground of its opposition.

Conclusion
Given all of the above, I find that the opponent has not succeeded on any of the grounds set out in the notice of opposition, or relied upon by its representative at the hearing.  Accordingly, as the delegate of the Registrar in this matter, I dismiss the opposition as a whole.  It follows that, providing that the relevant fee is paid, the application may proceed to registration.

Costs
In respect of costs, I can see no reason why they should not follow the result.  Accordingly, I order that costs in the matter be awarded against the opponent.

Ian Forno
Hearing Officer

31 October 2000