Veedol International Limited v Caltex Petroleum Corporation

[1994] ATMO 36

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:     Opposition by CALTEX PETROLEUM CORPORATION to Application No 508520 in the Name of VEEDOL INTERNATIONAL LIMITED

Application No 508520 was lodged on 13 April 1989 in the name of VEEDOL INTERNATIONAL LIMITED ("Veedol"), a British company, seeking registration of the trade mark DIESELSTAR in respect of "Oils, greases, lubricants, fuels; all other goods in this class", being goods included in International Class 4. The application was advertised accepted on 18 July 1991 in respect of the goods "Oils, lubricants and greases for use in or with diesel engines." On 27 September 1991 notice of opposition to the registration of the trade mark was lodged in the name of CALTEX PETROLEUM CORPORATION ("Caltex"), a United States corporation. Service of evidence by both parties was completed on 30 March 1993. The evidence in support of the opposition consists of a declaration by Brian Marsden Munday ("the first Munday declaration"), together with Exhibit BMM-1, and a declaration by Derek Raoul Hentze with Exhibits DRH-1 and DRH-2. The evidence in answer comprises a declaration by Raymond Stenton Hind with Exhibits RSH1 to RSH4 and the evidence in reply a further declaration by Brian Marsden Munday ("the second Munday declaration") together with Exhibits BMM-A, BMM-B and BMM-C. On 23 April 1993 the agents for Caltex requested a hearing of the matter which was set down to be heard on 18 October 1993 in Sydney. Mr Ken Niblett of Spruson & Ferguson appeared for the opponent, Caltex, and Mr Raymond Hind of Davies Collison Cave for Veedol, the applicant.

Mr Niblett opened his submissions by referring to the evidence of both parties, in particular the exhibits which consisted for the most part of the results of a search of the Register for marks containing or consisting of the word STAR or the device of a star or stars in relation to goods in Class 4 or related goods in Class 1. The Munday exhibits show that Caltex is the registered proprietor of a number of marks which include the word STAR, such as STARFAK, FIVE STAR and STARCARD and an even greater number of marks containing or consisting of the device of a five-pointed star, with or without the word CALTEX, in relation to lubricants and fuels, including diesel oil. He then referred to the case of In the matter of the trade mark of La Société Anonyme des Verreries de L' Etoile 11 RPC 142 in which the trade mark RED STAR BRAND was ordered to be expunged from the Register. In that case the applicant for rectification had registered the device of a star in respect of window glass and had affixed the mark to goods produced for export. The respondent had subsequently registered the mark RED STAR BRAND in respect of the same goods for sale on the British market. The Court of Appeal concluded that in view of the provisions which enabled a registered proprietor of a device mark, without restriction as to colour, to use the mark in any colour, the applicant for rectification could well decide to use its registered mark in the form of a red star, the goods could therefore be referred to as RED STAR and that therefore the marks could be deceptive or confusing. Mr Niblett submitted that, likewise, Caltex's device marks could be referred to by the word STAR and that therefore the use of the applicant's mark could lead to deception or confusion as to the origin of the applicant's goods. He argued that the applicant's mark was no more than the word STAR with the addition of the descriptive and non-distictive word DIESEL. He conceded that the applicant had already a registration for the word mark TURBOSTAR but that the present mark was different in that it consisted of the word STAR with the completely descriptive DIESEL.

Mr Hind submitted in answer that the mark which Veedol sought to register consisted of the single word DIESELSTAR and was therefore to be distinguished from the mark RED STAR which was the subject of the decision relied on by MR Niblett which consisted of two quite separate and distinct words. He argued that Caltex had no registration in respect of the word STAR per se  and could not therefore claim a monopoly in that word. He pointed out, and the evidence as to the state of the Register would support the contention, that there were a great number of marks on the Register containing the word STAR in CLass 4 and related Class 1. The applicant itself had registered the word mark TURBOSTAR and had a pending application for the mark ULTISTAR. There was therefore no reason to believe that the public would associate the word STAR exclusively with Caltex. He urged that the mark should not be dissected into its component elements DIESEL and STAR but should be considered as a single word, DIESELSTAR. He then referred to the Hentze declaration. Mr Hentze is Group Sedretary of Caltex Oil (Australia) Pty Limited which is a registered user of most of the opponent's registered Australian trade marks. He declares that his company had sold, in 1991, a product called "STAR Diesel Engine Oil 30" to the extent of 820 litres. Exhibited to the declaration are three invoices none of which refers expressly to this product. Also exhibited is a Product Bulletin which gives a description of that product. Mr Hind submitted that there was nothing in this evidence to show that purchasers would associate the word STAR exclusively with Caltex.

Mr Niblett replied that he did not rely on s28 of the Act but rather on s33 in that the applicant's mark was substantially identical with Caltex's registered trade marks consisting of star devices which would be referred to by use of the word STAR. He submitted that it made no difference that the applicant's mark consisted of one word or two, that the outcome of the Red Star case would have been the same whether that mark had been one word rather than two. The applicant's other marks TURBOSTAR and ULTISTAR were different, he said, because they were not English words whereas the present mark consisted solely of the descriptive DIESEL coupled with the word STAR.

Decision

Mr Niblett argued the opponent's case on the basis of s33 and on that basis it must I think be decided . There is simply no evidence of the reputation of Caltex in either the star device or the word STAR to support a case under s28. The relevant provision of s33 is as follows:

33(1) Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, of goods of the same description as those goods or of services that are closely related to those goods, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.

There is no question but that the goods in respect of which Caltex's marks are registered and the goods in respect of which the applicant seeks registration are the same goods or at least goods of the same description. It remains then to decide whether any of the Caltex marks are substantially identical with, or deceptively similar to, the mark proposed for registration by Veedol. In my opinion they are not. The word STAR and star devices are common elements of trade marks. On a side-by-side  comparison of the Caltex word marks with the applicant's mark the differences between them are obvious: DIESELSTAR is not substantially identical with STARFAK, FIVE STAR, 5 STAR STARCARD or any of the other marks of Caltex. Mr Niblett relied on the potential for confusion between the Caltex star device marks and the inclusion of the word STAR in the applicant's mark. However, I think the present case can be distinguished from the Red Star case  referred to above inasmuch as the applicant's mark is not the word STAR alone but the word DIESELSTAR, quite a different mark. The applicant is the registered proprietor of the trade marks TURBOSTAR and ULTISTAR and, as I have said, both the word STAR and the device of a star or stars are extremely common elements of trade marks.

The test to be applied under s33 may be stated as follows, paraphrasing the words of Evershed J. in Smith Hayden & Co Ltd's Application (1946) 63 RPC 97, in which he compared the tests under ss.11 and 12 of the Trade Marks Act 1938 (UK), which correspond to ss.28 and 33 of the Trade Marks Act 1955 (Cth):

The questions for my decision ... have been formulated, and I think accurately formulated, as follows:

...

(Under s.33) "Assuming user by the opponent of its star device mark in a normal and fair manner for any of the goods covered by the registration of that mark ... is the Registrar satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant also uses its mark DIESELSTAR normally and fairly in respect of any goods covered by their proposed registration?"

On this test it seems clear to me that there is not that reasonable likelihood of a substantial number of persons being deceived or confused as to the origin of the applicant's goods such that an objection exists to the applicant's mark by reason of s33. Since this was really the only ground relied on by the opponent it follows that I must dismiss the opposition.

Conclusion

The opposition is dismissed and I direct that, in the absence of any appeal from this decision, application no. 508520 proceed to registration. I award costs in the matter to the applicant.

Michael Homann

Hearing Officer

29 April 1994