Tripp Limited v Import Manteau Pty Ltd

[2008] ATMO 66

TRADE MARKS ACT 1995

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

Re:Opposition by Tripp Limited to registration of trade mark application 1092815(18) - TRIPMATE - filed in the name of Import Manteau Pty Ltd.

Delegate:	Alison Windsor
Representation:	Opponent:  Michelle Cooper, Shelston IP, Patent and Trade Mark Attorneys Applicant:  Not represented.  Written submissions provided by Wayne Covell, Solicitor and Trade Mark Attorney
Decision:	2008 ATMO 66 Section 52 opposition – grounds under s44 – trade marks not substantially identical or deceptively similar – opposition unsuccessful.  Costs awarded against opponent.

Background

1. Import Manteau Pty Limited (“the applicant”) of Ingleburn, New South Wales, filed an application to register a trademark, current details of which appear below:

   Application number:              1092815

   Filing date:  3 January 2006

   Goods specification:             Class 18:  Travel goods namely trolleycases, suitcases, garment bags, duffle bags, tote bags, backpacks, sportsbags, handbags, attaches, wallets, purses and other carry bags

   Trade Mark:  Tripmate

2. The application was examined as required by section 31 of the Trade Marks Act 1995 (“the Act”), and advertised as accepted for possible registration on 4 May 2006.

3. Tripp Limited (“the opponent”) filed a notice of opposition (“the notice”) on 2 November 2006.  The opponent did not file evidence in support of its opposition.  Similarly, the applicant did not file any evidence in answer.  However, Wayne Covell, as representative of the applicant filed and served written submissions on 11 January 2008. 

4. The opponent requested a hearing, and the matter came before me in Sydney on 9 April 2008.  Michelle Cooper of Shelston IP represented the opponent.  The applicant did not attend and was not represented on the day.

   Grounds of Opposition

5. The notice nominated eleven grounds and nine different sections of the Act, namely sections 41, 42, 43, 44, 58, 60, 62(a) and 62(b). However, both in its written submissions and at the hearing, the opponent indicated that it would rely only on the ground of opposition under Section 44, as well as an item numbered 11 “any other grounds as the Registrar may see fit to allow”. The remaining grounds as set out in the notice of opposition were not pursued and no submissions were put forward in respect of them. For completeness I find that none of the other grounds has been successful.

   Submissions

   Opponent’s submissions

6. As preliminary matters, the opponent submitted that while the opponent bears the onus, in order to be successful it needs only to establish one ground and to do so on the ordinary standard of the balance of probabilities.  The rights of the parties are to be determined as at the filing date of the “TRIPMATE” application (3 January 2006), and in respect of the notional use of both marks.  I am in agreement with those submissions.

7. The opponent nominated as relevant to section 44 the following trade mark:

   Registration number: 990010

   Filing date:  20 February 2004

   Goods specification:             Class 18:  Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; luggage; bags; suitcases; cabin bags; garment carriers; washbags; briefcases; pilot bags; attaché cases; handbags; vanity bags; folio cases

   Trade Mark:  TRIPP

8. The opponent noted that the nominated registration has an earlier priority date than that of the application, is for the same or similar goods, and that a notional use of its trade mark includes the version “Tripp.  The only issue for determination, it said, is whether of not “Tripp” and “Tripmate” are substantially identical or deceptively similar.

9. The opponent set out the accepted tests for substantial identity and for deceptive similarity, relying on the well-established quotations from Shell Co (Aust) Limited v Esso Standard Oil Limited (1963) 109 CLR 407 at 414 and 415, Australian Woollen Mills Limited v F.S. Walton & Co Limited (1937) 58 CLR 641 at 658, Re Application by Pianotist Company Limited (1906) 23 RPC 774 at 777 and Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411 at 428 (per Justice French).

10. In relation to substantial identity, the opponent submitted that when the respective marks are compared side by side their similarities are more noticeable than their dissimilarities. The first four letters in each mark are the same. When spoken, the opponent’s trade mark and the first syllable of the applicant’s mark are identical. The word TRIP is an essential feature which is shared by both marks. It follows therefore that the total impression of the two trade marks is similar. Therefore, the opponent reasons, the two marks are substantially identical.

11. In relation to deceptive similarity, the opponent said the issue is whether the ordinary purchaser, when buying goods in the market in which both parties operate, is likely to be confused into thinking that the applicant’s goods in fact originate from the opponent. The appropriate assessment, in the opponent’s view, is as to the likely effect of the respective trade marks on the purchaser if those marks are seen in isolation from one another.

12. In this instance, the opponent submitted, in conducting a comparison of the respective marks, deceptive similarity would be likely to arise because of the principle that as a general rule it is the start of a trade mark which will receive greater emphasis and because of the tendency of persons using the English language to slur the termination of words (Re London Lubricants Limited’s Application (1925) 42 RPC 264).

13. The opponent submitted that the tendency to slur, or even “swallow”, the termination of words is an even greater trait among the Australian public. At the hearing, Ms. Cooper pointed to the tendency of Australians to shorten words and to use abbreviations (for example, “Coke” for “COCA-COLA”, “Macca’s” for “McDONALDS”, and “Woolies” for “WOOLWORTHS”).

14. The opponent submitted that the appropriate test in this instance is whether there is a real, tangible danger of confusion or deception occurring and whether a person would at least be caused to wonder. In this regard the opponent’s argument is that the suffix ‑MATE is so prevalent and commonly used in the Australian market-place that its appearance in the applicant’s mark TRIPMATE is likely to be perceived as a sub-brand or brand extension of the opponent’s TRIPP registration. It submitted that the component ‑MATE is a commonplace word (such as ULTRA or WORLD) and that as such its use in the applicant’s TRIPMATE mark does not serve to render that expression sufficiently different from the opponent’s TRIPP registration as to enable the applicant’s goods to be distinguished from those of the opponent. In support of its submission, the opponent provided examples of more than twenty registrations in Class 18 which feature either the suffix ‑MATE or its plural form ‑MATES.

15. The opponent’s conclusion was that there is a real tangible danger that the two trade marks could be confused, and that the applicant’s trade mark is at least deceptively similar to the opponent’s nominated registration.

    Applicant’s submissions

16. The applicant submitted the following points:

    ·The opponent has not adduced any evidence in support of the grounds of opposition and therefore has not made out a case.

    ·There is a presumption of registrability in favour of the applicant and this presumption has not been rebutted.

    ·The respective trade marks are both aurally and visually dissimilar, and therefore the ground of opposition under section 44 has not been made out.

    ·There were no conflicting citations raised at the time of examination, therefore substantiating the submission that the trade marks in question are dissimilar.

    ·The word TRIP is an ordinary English word which has a well-known dictionary meaning (a voyage or journey) and arguably a reference relevant to the goods.

    ·To the extent that both of the trade marks have this idea in common, the conclusion does not follow that those trade marks are deceptively similar.  If the marks are otherwise sufficiently different, the presence of some common idea will not necessarily lead to confusion (see Shanahan, Australian Law of Trade Marks and Passing Off, 1990, 2^nd ed, at page 174).

    ·When comparing the applicant’s trade mark with the registration of the opponent, the common idea found in the word “trip” should not be monopolized by any one trader in relation to travel and similar goods in class 18 (see Cooper Engineering Company Pty Limited v Sigmund Pumps Limited (1952) 86 CLR 536 where the trade marks RAIN KING and RAINMASTER were held to be able to co-exist for similar goods).

    ·The opponent’s “TRIPP” mark already coexists with other entries which contain either the word Trip or the prefix TRIPP- and five examples of such entries were provided. The applicant’s mark TRIPMATE should be able to coexist on the Register with those entries and with the TRIPP registration of the opponent.

    Discussion

17. Leaving aside for the moment the matter of “any other ground”, the opponent pursued the ground of opposition under section 44.  Section 44, as it is relevant to this opposition, provides the following:

    Identical etc. trade marks

    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.

    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.

18. It is clear that the opponent’s nominated trade mark has an earlier priority date, and that the goods claimed by both applicant and opponent are the same or similar.  Therefore, the matter on which this opposition turns is whether or not the trade marks are substantially identical or deceptively similar.

    Substantial identity

19. The relevant test usually relied upon in this matter and to which the opponent has referred in its written submissions, is the oft-quoted statement of Windeyer J in the Shell vEsso case (supra) at paragraph 12:

    In considering whether the 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.

20. The issue is whether “a total impression of similarity” emerges from a comparison between the two trade marks (see Carnival Cruise Lines Inc. v. Sitmar Cruises Limited (1994) 31 IPR 375 at 391). When the two trade marks are compared side by side, they are found to have distinct differences which are readily observable. The applicant’s trade mark comprises the words TRIP and MATE in combination. On the other hand, the opponent’s trade mark features the single word TRIPP which is a surname. “A total impression of similarity” does not result from the comparison, and I do not agree with the proposition that the suffix –MATE is likely to be slurred to the extent that it is not likely to be noticed within the trade mark. I am therefore satisfied the trade marks are not substantially identical.

    Deceptive similarity

21. Section 10 provides:

    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.

22. The accepted test for deceptive similarity is as expressed in the judgment of Windeyer J in the Shell v Esso case as follows:

    On the question of deceptive similarity, a different comparison must be made form 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 or ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions.

23. In broad terms, a judgment about deceptive similarity is generally a matter of first impression rather than meticulous comparison. Allowance must be made for imperfect recollection (see Aristoc Ltd v Rysta Ltd (1944) 62 RPC 65). This principle applies as much to a visual comparison as it does when the sounds of two words are being compared. While it is not necessary to prove actual deception, a mere possibility of confusion is not sufficient (see Southern Cross Refrigerating Company v.Toowoomba Foundry Pty. Limited (1954) 91 CLR 592). There must be a “real, tangible danger of confusion occurring” (per Justice Farwell in William Bailey (Birmingham) Limited’s Application (1935) 52 RPC 136 at 153, and see Registrar of Trade Marks v Woolworths Limited, supra). It follows that, when comparing the two trade marks for the purpose of considering whether they are deceptively similar, the relevant consideration is the likely effect or impression produced on and retained by customers and potential customers.

24. I agree with the opponent that there is an undeniable element of similarity or resemblance between the respective expressions TRIPP and TRIPMATE, but I do not accept that such similarity serves to render the present application deceptively similar to the opponent’s TRIPP registration. I do not concur with the submissions which have been put forward on behalf of the opponent in this regard. I find that the element of similarity derives primarily from the presence in both marks of the shared prefix TRIP.  While Ms. Cooper has urged me to accept the proposition that the similarities between the respective marks “are more noticeable than their dissimilarities”, I find that upon proper consideration it is the points of difference between the marks which stand out.  In the circumstances envisaged by the quoted test, that is, where the trade marks are not seen side by side, the likelihood of any confusion seems to me to be minimal.

25. The opponent also argued the likely occurrence of “contextual confusion” because of the prevalence of ‑MATE suffixed marks. It suggested that consumers are at least likely to be caused to wonder whether products bearing the TRIPMATE mark are a sub-brand or “extension” of the opponent’s goods.  I am unable to agree with this proposition.  The opponent’s trade mark is, as noted previously, a surname.  The applicant’s is a coined word, with the connotation of something to take on a journey or trip.  The examples from the register provided to support the argument do no more than show that the suffix –MATE is used by other parties.  They do not establish any connection with the opponent’s trade mark.  I am satisfied that the two trade marks are not deceptively similar.

26. As I have found the two trade marks are neither substantially identical nor deceptively similar, the ground of opposition under section 44 has not been established.  The opponent is therefore unsuccessful in its opposition.

    Decision

27. The opponent has not established any of the grounds of opposition nominated.  I therefore direct that application 1092815 may proceed to registration one month 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 discontinued, or, in the case of a decision from the Court, that the application be subject to the Court’s order or direction.

    Costs

28. The applicant has requested its costs in the event of success in this matter.  As costs usually follow the event, I award costs against the opponent according to the official scale.  However, the applicant should note that the amounts likely to be allowed will be minimal, given its failure to provide evidence, and to appear at the hearing.  

    Alison Windsor
    Hearings Officer
    Trade Marks and Designs Hearings
    30 July 2008