Velcro Industries BV v John Stedman & Laurie Male

[2003] ATMO 38

TRADE MARKS ACT 1995

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

Re:Opposition by Velcro Industries B.V. to registration of trade mark application 806659(21) - VELCREAN 2000 - filed in the names of John Sedman & Laurie Male.

Date of Decision:	20 June 2003
Delegate:	Terry Williams
Representation:	Opponent: Richard Cobden, instructed by Spruson & Ferguson, patent attorneys Applicants: no appearance
Decision:	Applicants' mark not deceptively similar to VELCRO, no evidence that common source likely to be inferred; insufficient evidence of reputation in a family of VEL- marks.

Background

John Sedman & Laurie Male filed an application to register the trade mark VELCREAN 2000 on 10 September 1999.  As filed, the goods covered by the application were "Brushes, combs and devices for cleaning the hook part of a hook and loop fastening system such as velcro".  However, the Trade Marks Office does not consider use of a registered trade mark as part of a statement of goods to be reasonable compliance with regulation 4.4(6).  Thus, during examination, the applicants agreed to delete the last three words.  The application now relates to "Brushes, combs and devices for cleaning the hook part of a hook and loop fastening system".

With that change, the application was advertised as having been accepted for registration. Such registration is now opposed, as provided for in part 5 of the Trade Marks Act 1995, (the Act) by Velcro Industries B.V. (VIB). 

VIB has filed, and served a copy of, evidence to support its opposition, following the scheme of the regulations.  The applicants have not sought to serve evidence in answer to the opposition, nor have they subsequently made any written submissions.  In due course I heard the matter.  The applicants did not appear at the hearing.  Richard Cobden of counsel, instructed by Spruson and Ferguson, patent and trade mark attorneys, represented the opponent.  I am now to decide the opposition under delegation from the Registrar of Trade Marks. 

Evidence

VIB has relied on three declarations: by Peter Batten, the General Manager of Velcro Australia Pty Ltd; by Peter Pelletier, the managing director of VIB, and by Rochelle Einfeld, an employee of VIB's patent attorneys.

These declarations fully set out the extent of use of the well-known VELCRO trade mark.  From the evidence it is clear that the trade mark in question is widely recognized as such by well-respected dictionaries.  VIB's hook and loop fastening products have been sold under other trade marks such as VEL-LOC and VEL-STUD, since as early as 1981.  Exhibit PAB-3 to the Batten declaration shows the extent of a range of hook and loop fastening products about which Mr Batten's company circulates product information sheets.  Mr Batten declares that use of these various other trade marks commenced at least with their registration in Australia.  He does not quantify the extent of use of these various trade marks.  He also provides (PAB-5) many examples of promotion of the various trade marks in diverse Australian trade publications: Cabling Installation and Maintenance, Stationery World and Australian Hardware Journal.  However, the marks in question there are either VELCRO or ONE-WRAP, the latter being a hook and loop strap material. 

Product information sheets for what I will call the VEL-family trade marks are in evidence as part of PAB-3.  Mr Batten declares that it has not been possible to distinguish between VELCRO and the other family members when it comes to sales or advertising figures.  In fact, the figures he quotes also include sales of ONE WRAP and ULTRA MATE products.

Of the VEL- marks other than VELCRO, so far as he declares them to have been used in Australia, the alleged years of first use up to the date of filing of the opposed application, are as follows:

1993: VELSTUD
1994: VELCOIN, VELTRAK, VELSTRETCH, VELSTRAP, VELFOAM,
1997: VELTEX.

Mr Pelletier puts into evidence the argument that Mr Cobden pressed at hearing.  This is that the public, seeing the applicants' goods, would assume that they were of the VEL- family.  This is said to be because the word VELCREAN not only commences with the letters VEL, allegedly an indicator of membership of the VEL- family, but with the letters VELCR.  The latter is almost the entire of the trade mark VELCRO.  Moreover, as Mr Cobden argued at the hearing, the word VELCREAN could be seen as an elision of the words VELCRo clEAN.  Mr Pelletier addresses this in his declaration but inadvertently misrepresents the elision as VELCR[O]C[L]EAN.

Mr Batten does not speculate on such a prospect but does say that he apprehends that consumers will mistakenly believe that goods originating from the applicants will be mistakenly attributed to VIB's manufacture, or be thought to be approved by VIB for cleaning VELCRO products.

Grounds and Issues

Mr Cobden directed a set of arguments at the applicants' mark.  Technically, these fall under the headings of sections 41, 42, 43, 44 and 60 of the Act.  It will not be necessary to deal with these diverse provisions in full, however.  All of the arguments fail because all of them rely on a common theme: that the applicants' trade mark, VELCREAN 2000, is deceptively similar (s 10) to either the trade mark VELCRO or to any one or more of the VEL- family.

In any ordinary case, the test for deceptive similarity is a notional one.  Mr Cobden noted the initial point of departure was as per Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641

In deciding this question, the marks ought not, of course, to be compared side by side.  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.  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, their similarities both of sound and of meaning may play an important part.  The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.  Evidence of actual cases of deception, if forthcoming, is of great weight.

However, Mr Cobden urged me to take note of the recent evolution of case law set out in C.A. Henschke & Co v Rosemount Estates (2000) 52 IPR 42 at para 52. This in turn confirms and clarifies some suggestive remarks in Registrar of Trade Marks v Woolworths Limited[1], as follows, with parenthetical simplification added:

[1] (1999) 45 IPR 411, AIPC 91-499

[52]     Woolworths was not an infringement case and, of course, the notoriety taken into account was not any notoriety attaching to marks already registered (or marks applications for which had been lodged before the Woolworths application); the notoriety attached to an element of the mark for registration of which Woolworths had applied. Nevertheless, in our view, Woolworths suggests a proposition for which the cases on which the appellants rely may be taken as authority.  It is that, in assessing the nature of a consumer's imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration.  It is unnecessary to consider whether the cases are authority for precisely that proposition. All that is necessary for present purposes is to hold, as we would, that they are authority for no wider proposition in relation to the relevance [in an infringement matter under s 120] of evidence as to the reputation attaching to the mark.

Logically, the same conclusion applies under s 44.  Therefore, Mr Cobden urged me to consider this case as one where VIB's trade marks were well known.  I understand and accept the principle that Mr Cobden sought to invoke.  The cases to which he referred lend considerable authority to something said of the comparison of marks by Hearing Officer Nancarrow in re opposition by McDonald's Corporation v Macri Fruit Distributors Pty Limited[2].  The Hearing Officer first listed a wide number of trade mark registrations held by the opponent.  He then noted, (omitting, for the current case, the list of the opponent's trade marks):

[2] (2000) 91 AIPC 91-583.

No single trade mark from this list bears a sufficient resemblance to either McSALAD or McFRESH, by means of either phonetic or visual comparison, to find that the applicant's marks are deceptively similar to one of the opponent's registered marks on that basis.  However, this does not totally rule out a finding of deceptive similarity between the applicant's marks and the opponent's marks.  This is illustrated in the statement in John Fitton & Co. Ltd's Application [3] ...

[3] 66 RPC 110 at 113. Mr Cobden also referred to this case in support of his arguments

With reference to the nature of the confusion alleged the evidence furnished on behalf of the Opponents by their trade declarants is directed not so much towards showing that the two marks 'Jests' and 'Easyjests' might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element 'Jest' in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from one and the same trade source.

The type of confusion outlined here is founded on a perception that, within the context of the circumstances of the market-place, the applicant's marks are seen as being an extension of the opponent's registered trade marks due to a common element in the marks that leads to a conclusion that they identify the same trader. In the present circumstances the opponent has a family of 78 registered trade marks containing a word which has a prefix of Mc-. Of these 78 registered marks, 17 also have another common element. The second common element is that they consist of, or contain, words in which the prefix Mc- has been conjoined with a word which is either the name of the goods or services being sold, or a description of a quality or characteristic of the goods.

...

Taken together, I believe that the family of 17 marks above, with one important proviso, supplies a sufficient expectation that any trade mark prefixed by Mc- which is conjoined to a word, which describes either the goods or services themselves or a quality or characteristic of the goods, would form part of the opponent's family of marks.

The important proviso here is that the goods or services referred to, in the part word conjoined to the prefix Mc- in the trade mark, would also need to be seen to form a normal or usual part of the opponent's business. Any food, or quality or characteristic of that food, which would be expected to form part of the opponent's fast food operation would, therefore, qualify.  

VIB's case is not directly comparable to that of either Woolworths or McDonalds.  On the evidence before me, including dictionary definitions, it is very clear that the trade mark VELCRO is very well known, to the extent that VIB has to caution its customers and others against generic use.  However, it is not at all clear that VIB's other trade marks are well-known.  Nor is it clear that, at the priority date, VIB was a trade mark owner acclaimed or acknowledged, to any significant degree, as the source of a family of VEL- trade marks.  The comparatively less well-known family of VEL- trade marks is simply not "so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services" or even tending significantly towards it. 

This would normally be a burden for the opponent, even in the light of one crucial fact to which Mr Cobden drew attention.  He reminded me that there is no doubt that the applicant intends to sell its VELCREAN 2000 product to customers as a cleaning device to remove lint from VELCRO brand fasteners.  There is clear evidence of this in the state of the application as first filed, and in the Einfeld declaration, which gives details of the initial and current state of the applicants' web page.  Therefore, in assessing the matter, it is highly likely that VELCREAN 2000 cleaning tools will be sold near or alongside the products of VIB.

As I have said, even so, there is no satisfactory evidence that the public would be at all familiar with the marks in the VEL- family other than VELCRO.  I must also consider circumstances in the trade, where stationers' staff and sales attendants in hardware stores may well be much more familiar with the VEL- family.  Such people, of course, will also be more likely to be aware of the actual origin of the respective lines.

However, in the end, the degree of similarity between VELCREAN and the VEL- marks is still very slight.  True it is that the initial three letters VEL are present in both marks.  However, VELCREAN does not present itself as being particularly like VELCOIN, VELFOAM, VEL-LOC, VELSTRAP etc.  As a matter of first impression, it does not look sufficiently like a member of the VEL- family to the eye of those who are unaware of the extent of that family.

To this I must add the fact that the mark in question contains the numeral 2000.  Now, as Mr Cobden argued, the latter is of very little substance in the comparison, and I give it little weight, but I cannot entirely ignore it.  To some degree at least it distracts the eye and urges that the word VELCREAN is a totality, discouraging the dissection to which I now come.

Mr Cobden argued that CREAN would be seen as a separate element and thus as an obvious allusion to the word "clean".  However, the suffix or element CREAN does not - unlike all of the suffixes in the VEL- family - have any remotely apparent meaning or identity in its own right.  VELCREAN therefore does not appear to be a VEL-something mark.  The initial letters, VEL, are welded into a totality.  It is not even particularly clear, and again this is unlike the VEL- family, just where the prefix ends and the suffix commences. 

VIB's case thus has two interlocking failings.  The bigger of these is that it is very far from clear that VIB's propensity to coin relevant trade marks of the form VEL-this or VEL-that is familiar to the general population.  This makes it unlikely that the ordinary consumer will spontaneously see the mark VELCREAN 2000 as VEL-related.  That in turn makes it doubly hard for VIB to argue that the analysis yielding a "conclusion" VELCRo clEAN will either be conducted or spontaneously present itself.  It would be an unusual person, in my opinion, who bothered to analyze the trade mark as Mr Cobden did or as Mr Pelletier, in his declaration, failed to do.

Accordingly, my decision is that none of the grounds of opposition has been established. 

Decision

The trade mark application may (assuming the registration fee is paid) proceed to registration  after 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 decided or discontinued.

Terry Williams
Hearing Officer
Trade Marks Hearings