University of Sydney v Cameron Jenkinson and Bim Ricketson

[2002] ATMO 106

TRADE MARKS ACT 1995

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

Re:Opposition by University of Sydney to registration of trade mark application 876986(35) - letter g device - filed in the names of Cameron Jenkinson and Bim Ricketson

Date of Decision:

21 November 2002

Delegate:

Senior Examiner Deirdre O'Brien

Decision:

ss. 39, 41, 42, 43, 58, 59, 60, 61 and 62 grounds dismissed

s.44 ground successful

Registration of trade mark refused

No order as to costs

Background

On 25 May 2001, Cameron Jenkinson and Bim Ricketson (the applicants) applied to register the trade mark depicted below (the subject trade mark) in respect of services in class 35. 

Following examination the application was advertised as accepted in the Australian Official Journal of Trade Marks on 27 September 2001 for the class 35 services advertising, integrated marketing and business management. On 14 November 2001, within the time allowed to do so, University of Sydney (the opponent) filed Notice of Opposition to registration of the subject trade mark. The opponent subsequently filed and served evidence in support of the opposition. That evidence comprises a statutory declaration by Claire Baxter, an employee of the opponent, with Annexures A to F inclusive. No evidence in answer was filed by the applicants. No party requested to be heard in the matter when notified that the opportunity existed. No party has made written submissions. The matter has been referred to me, as the Registrar's delegate, for a decision under section 55 of the Trade Marks Act 1995 (the Act) based on the written record.

Notice of Opposition

The Notice of Opposition cites grounds in terms of sections 39, 41, 42, 43, 44, 58, 59, 60, 61 and 62 of the Act.  No evidence or submissions have been filed with respect to the grounds under sections 39, 41, 42, 43, 58, 59, 61 and 62 and I find they have not been made out.

Ground based on Section 44

This ground in the Notice of Opposition reads:

The opposed trade mark is substantially identical with or deceptively similar to:

(i)  another person's prior registered trade mark for similar goods or closely related services; or

(ii)  another person's prior pending application for similar goods or closely related services with an earlier priority date (Section 44)

I note the ground refers to 'similar goods or closely related services'.  This wording is taken from subsection 44(1) which applies to trade mark applications made in respect of goods.  The subject application is made in respect of services and any ground of opposition under section 44 should be made in terms of subsection 44(2).  However, while the opponent has used the wording of subsection 44(1), it has nominated section 44 as a whole.  I will therefore consider whether either ground contained in section 44 has been made out.

I find there is no ground of opposition under subsection 44(1) as the subject application is in respect of services.  For subsection 44(2) to be made out, I must be satisfied of the following 3 matters:

• The subject trade mark is substantially identical with or deceptively similar to a registered trade mark of another person or a trade mark whose registration is being sought by another person.

• The other person's trade mark has an earlier priority date.

• The services of this application are the same or similar to the other person's services.

In its evidence the opponent cites trade mark registration 817230 and trade mark application 879734, both of which it owns.  Application 879734 has a later priority date than the subject application.  I therefore do not need to consider it any further with respect to this ground.

The relevant details of registration 817230 and the subject application are below.

Cited registration 817230	Subject application 876986
Trade mark
Services	Class: 35  Services to promote the awareness of glycaemic levels in foods Class: 41  Educating and training people in relation to glycaemic indexing of food and related research Class: 42  Nominating the glycaemic index being high, medium or low for specified food groups	Class: 35  Advertising, integrated marketing and business management
Priority Date	15 December 1999	25 May 2001

The priority date of registration 817230 is earlier than that of the subject application.  I therefore need to decide whether or not the respective trade marks are substantially identical or deceptively similar. 

The appropriate test for 'substantial identity' was provided by Windeyer J in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd 109 CLR 407. His Honour said at 414:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

Applying this test, I find there is a 'total impression of resemblance'.  Both trade marks consist of the letter G and a dot contained within concentric circles which resemble a target.  The subject trade mark has a somewhat 3-dimensional appearance whereas the cited trade mark appears to be sitting flat on the surface of the paper.  The dot is not in the same position in each trade mark, appearing in the centre of the letter G in the subject trade mark and at the side of the letter G in the cited trade mark.  The target device in the subject trade mark contains more rings than that in the cited trade mark.  However these are minor differences.  The essential features of the trade marks are the same and I find the trade marks closely resemble one another.  I am satisfied that the trade marks are substantially identical. 

The third matter I need to consider is whether or not the respective services are the same or similar. Romer J in Jellinek's Appn (1946) 63 RPC 59 stated the following three factors are to be considered when comparing goods:

·     the nature of the goods

·     the respective uses of the articles

·     the trade channels through which the commodities are respectively bought and sold

I believe the same factors should also be considered when comparing services.  In other words, I need to consider the natures of the respective services, their uses and the channels through which they are offered.

I find the applicant's services are not similar to the cited class 41 and 42 services.  They are different in nature and in use and would not be offered through the same channels.  However, I find some of the applicant's services are the same as the cited class 35 services. Advertising services encompass 'services to promote the awareness of glycaemic levels in foods'.  The latter are advertising services designed to increase public awareness of a particular topic whereas the applicant's advertising services are not limited to any particular topic.  Nevertheless the services are the same in nature and in use and would be offered through the same or similar channels.

I find subsection 44(2) has been made out with respect to registration 817230.  The ground of opposition based on section 44 has therefore been established.

Ground based on Section 60

This ground in the Notice of Opposition reads:

Use of the opposed trade mark would be likely to deceive or cause confusion because the opposed trade mark is substantially identical with or deceptively similar to a trade mark which, prior to the priority date of the opposed trade mark had acquired a reputation in Australia (Section 60)

In order to make out this ground, the opponent first needs to show that the subject trade mark is substantially identical with or deceptively similar to a trade mark or trade marks which had a reputation within Australia at the date the subject application was made.  The opponent has cited trade marks 817230 and  879734.  I have already found trade mark 817230 is substantially identical with the subject trade mark.  Trade mark 879734 is depicted below.

Applying the test for substantial identity discussed earlier, I find trade mark 879734 is not substantially identical with the subject trade mark.  I find the empty, concentric circles in the subject trade mark resemble a target.  Trade mark 879734 also contains concentric circles but they enclose the words glycemic index tested.  This gives them the appearance of a frame rather than a target. Accordingly I find there is no 'total impression of resemblance' between trade mark 879734 and the subject trade mark. 

In the test for deceptive similarity the trade marks are not compared side by side. Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd 58 CLR 641 said at 658:

...An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. 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.

Both trade marks contain the letter G and a dot depicted together on a dark background within concentric circles. The G is large in size and is rendered in similar script. Trade mark 879734 also contains the words glycemic index tested.  Nevertheless, bearing in mind the words of Lord Radcliffe in the Privy Council in De Cordova v Vick Chemical Co (1951) 68 RPC 103 at 106 that:

...in most persons the eye is not an accurate recorder of visual detail and marks are remembered rather by general impression or by some significant detail than by any photographic recollection of the whole.

I am satisfied consumers will form very similar impressions of each trade mark based on their recollection of the letter G and a dot in the centre of concentric circles.  I am satisfied there is a reasonable likelihood of deception and confusion between the two trade marks (Registrar of Trade Marks v Woolworths Ltd 45 IPR 411 at 426) and, accordingly, I find trade mark 879734 is deceptively similar to the subject trade mark.

The next matter I need to consider is whether or not either of the cited trade marks had acquired a reputation in Australia at the priority date, being 25 May 2001. 

Registration 817230 has a priority date of 15 December 1999.  However that does not necessarily mean that the trade mark was in use at that date.  An application for trade mark registration can be made based on an intention to use.

From the opponent's evidence it appears trade mark 817230 was used by Professor Jennie Brand-Miller on two books promoting awareness of the glycaemic index.  The dates of publication of those books are not provided, nor are sales or distribution figures.  According to the evidence the trade mark was also used on  '8 associated pocketbooks published by Hodder Headline'.  Again no dates of publication, sales or distribution figures are provided.

The opponent's declaration states the trade mark was displayed on the official nutrition website for athletes during the 2000 Sydney Olympics.  However the annexures to the declaration do not contain any examples of such use.  The declaration also states Diabetes Australia has used the trade mark in connection with a recipe book called Enjoy but again no details of the date of publication or numbers of copies sold or distributed are provided. 

On these bases I am not satisfied that, at 25 May 2001, trade mark 817230 had a reputation in Australia. 

Trade mark application 879734 has a later priority date than that of the subject trade mark application.  Therefore, in order to make out this ground of opposition, the opponent will have to show that trade mark 879734 was in widespread use before an application was made to register it.  However, all but one of the examples of trade mark use cited in the opponent's evidence post-date the priority date of the subject trade mark.  The exception is the stationery at Annexure D but there is nothing in the opponent's evidence which indicates when that stationery was first used.  Accordingly I am not satisfied from the material before me that trade mark 879734 had a reputation in Australia at 25 May 2001.

As neither of the cited trade marks had a reputation in Australia at the relevant time, this ground of opposition cannot be made out.

Decision

I find that the ground under section 44 on which the application is opposed has been established.  Therefore, in accordance with subsection 55(a), I refuse to register application 876986.

Deirdre O'Brien

Senior Examiner

Trade Marks Hearings

21 November 2002