Vision Group Holdings Limited v 3D Health Screen Pty Ltd

[2010] ATMO 115

TRADE MARKS ACT 1995

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

Re:Opposition by 3D Health Screen Pty Ltd to registration of trade mark applications 1227429, 1227430, 1227431, 1227432, 1227433 and 1227435(44) - VISION (VARIOUS) AND DEVICE - filed in the name of Vision Group Holdings Limited.

Delegate:	Jock McDonagh
Representation:	Opponent: No appearance, relies on written submissions Applicant: Susan Gatford,  instructed by Clayton Utz solicitors
Decision:	2010 ATMO 115 Section 52 opposition - sections 44, 58, 60 and 62A pressed – ground pursuant to s 44 established - registration refused - costs awarded against applicant

Background

1. Vision Group Holdings Limited (‘the applicant’) is the applicant for registration of trade marks, current details of which are:

Trade Mark /Application No:	Priority Date:	Goods:
1227429  1227430 1227431  1227432 1227433  1227435	29.02.2008	Class 44: Ophthalmological services, including performing eye surgery, performing cataract, corneal, refractive, glaucoma and excimer laser surgery, performing laser vision correction surgery

1. Following examination, the applications were accepted for possible registration and advertised as such in the Official Journal of Trade Marks on 31 July 2008.

2. On 23 September 2008, 3D Health Screen Pty Ltd (‘the opponent’) filed  Notices of Opposition under section 52 of the Trade Mark Act 1995 (‘the Act’), objecting to the registration of the trade marks.

3. The parties duly served and filed evidence in support and evidence in answer to the opposition. That evidence is shown below:

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
David William Gudex	Radiologist & director of opponent	18.12.2009 Gudex	GD1 to GD5
Evidence in Answer
Lesley Dellit	Group marketing manager of applicant	2.07.2009 Dellit	LD-1 to LD-7

1. The opponent asked to be heard and the matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Melbourne on 3 August 2010.  The opponent was not represented at the hearing and relied on written submissions by Anisimoff Legal. The applicant was represented by Susan Gatford of counsel instructed by Clayton Utz solicitors.

2. The Notices of Opposition cited most grounds of opposition available to the opponent under the Act; however, in written submissions the opponent limited its grounds of opposition to those under sections 44, 58, 60 and 62A. For the sake of completeness, I treat the remaining grounds of opposition as having been abandoned.

   Discussion

   Ground 1: section 44 Identical etc. trade marks

3. The opponent relied on its registration 926313 with a priority date of 6 September 2002 in respect of medical and radiology services in Class 44. The trade mark is shown below:

4. Sub-section 44(2) of the Act provides:

   (2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

   (a) it is substantially identical with, or deceptively similar to:

   (i) a trade mark registered by another person in respect of similar services or closely related goods; or
   (ii) a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1: For deceptively similar see section 10.

   Note 2:  For similar services see subsection 14(2).
   Note 3:  For priority date see section 12.

5. The opponent submitted that the device element common to all six opposed marks is substantially identical or deceptively similar to the opponent’s trade mark. In particular the submissions noted:

   ·     The distinctive shutter or turbine shape is the same, with each blade starting thin at the centre and expanding towards the edges to form a sharp edge at the end of each blade;

   ·     The number of blades in the turbine is the same, namely, eight;

   ·     The blades face an anti-clockwise direction in both cases;

   ·     The opening at the centre is a white circle in both cases;

   ·     The word elements of the applicant’s trade marks are descriptive, generic or both;

   ·     The applicant’s services are similar to those of the opponent; and

   ·     The applicant and opponent both have premises in the same street, about 200 metres distant from each other.

6. The opponent’s submissions did not include any citation of judicial authorities or decisions made by the Registrar.

7. On the question of substantial identity Windeyer J said in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[1]:

   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 . . .

   [1] (1963) 109 CLR 407, at 414-415

8. Applying the appropriate test, it is clear that the applicant’s trade marks are not substantially identical. The device elements are technically similar; however, a side by side comparison makes the differences in execution of the designs apparent. The word elements of the applicant’s trade marks, particularly the emphasis on the word “VISION”, further distinguish the respective marks.

9. Section 10 of the Act 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.

10. On the question of deceptive similarity, Ms Gatford cited the relevant authorities, including Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd[2], Shell Co of Australia Limited v Esso Standard Oil (Australia) Limited[3] and, as restated and applied to service marks by French J (as he then was) in Registrar of Trade Marks v Woolworths Ltd[4]:

    (i)  To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring.  A mere possibility is not sufficient.

    (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source.  It is enough if the ordinary person entertains a reasonable doubt.

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration.  These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v)  The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark.  The question is not limited to whether a particular use will give rise to deception or confusion.  It must be based upon what the applicant can do if registration is obtained.

    [2] (1954) 91 CLR 592

    [3] (1963) 109 CLR 407

    [4] (1999) 45 IPR 411, at 428

11. The marks for comparison are the opponent’s trade mark shown above in paragraph 7 and the applicant’s trade marks set out in paragraph 1. Each of the applicant’s trade marks is dominated by the word “VISION”, a description of services, and the common device, which, by virtue of the shading employed in the applications, seems to be eye-shaped. The opponent’s trade mark has no word element and is symmetrical in all dimensions and conveys no particular idea; however, when displayed in relation to various radiological services (as is shown in Exhibits in the both Gudex and Dellit) denoted with the suffix “–scan”, there can be a suggestion of the lens diaphragm of a camera to the beholder.

12. The essential feature of the applicant’s trade marks is the device element, which shares with that of the opponent the features detailed above in paragraph 9. While the differences are highlighted in a side by side comparison of the devices as presented in the respective trade mark applications, in practice I am concerned that a person of imperfect recollection observing the applicant’s trade marks is likely to consider that the services of the applicant are related to those of the opponent. I consider that the fine details such as different shading of the devices are likely to be overlooked by those to whom these trade marks will be addressed in practice.

13. While the applicant is engaged in medical services pertaining to ophthalmology and the opponent is engaged in radiological services, these are all subsets of medical services in Class 44. Prospective patients of either party could easily consider that the services described in the applicant’s trade marks are part of a wider practice of the opponent. Even potential referring medical practitioners could be caused to wonder whether the two sets of services in question come from the same source.

14. I am satisfied that there is a real tangible danger of deception or confusion occurring; therefore this ground of opposition has been established.

15. Having found in favour of the opponent in terms of section 44 there is no need for me to discuss the other grounds set out in the Notices of Opposition although these grounds or any others in the Act may also be relied on in the event of an appeal of this decision.

    Decision

16. Subsection 55(1) of the Act provides:

    (1)     Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

    (a)     to refuse to register the trade mark; or

    (b)     to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note:For limitations see section 6.

17. The onus is upon the opponent to establish one or more of its grounds of opposition. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 44. Accordingly, I refuse to register the trade marks.

    Costs

18. The opponent is the successful party and is entitled to its costs. Accordingly, I award costs against the applicant as per Schedule 8 of the Regulations, with costs for the second to sixth of the six oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad (2001) 53 IPR 591.

    Jock McDonagh
    Hearings Officer
    Trade Marks Hearings
    25 November 2010