Whirlpool Properites, Inc. v Huilong Electrical Appliances Pty Ltd

[2010] ATMO 79

TRADE MARKS ACT 1995

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

Re:Opposition by Whirlpool Properties, Inc to registration of trade mark application 1230187 (7, 9, 11) - KITCHENMAID - filed in the name of Huilong Electrical Appliances Pty Ltd.

Delegate:	Heath Wilson
Representation:	Opponent: Greg Chambers of Phillips Ormonde Fitzpatrick, Patent & Trade Mark Attorneys. No appearance by the Applicant.
Decision:	2010 ATMO 79 Section 52 – trade marks are deceptively similar under section 44 and a reputation exists under section 60 of the Act – consideration of similar goods/services – Trade Mark refused registration, and costs awarded against the applicant.

Background

1. On 31 March 2008, Huilong Electrical Appliances Pty Ltd (“the applicant”) applied to register the following trade mark:

‘KitchenMaid’

Class: 7 Beaters being electric appliances; cleaning appliances utilizing steam; electric appliances for preparing drinks; electric appliances for preparing food; electric domestic appliances for polishing; electric domestic appliances for scouring; electric domestic appliances for vacuuming; electric household appliances for grinding food; electric household appliances for mincing food; electric household appliances for mixing food; electric household appliances for slicing food; electric household cleaning appliances being vacuum cleaners; brushes, electrically operated; electrical brushes; electrically powered machines being small kitchen appliances

Class: 9 Appliances for communication; appliances for paging individuals; appliances for the recording of messages; appliances for the reproduction of messages; automatic timers for use with cooking appliances; electrical appliances for perming the hair; electrical appliances for styling the hair; electrical appliances for the care of the hair; electrical control units for electrical appliances; electrically heated appliances for waving hair; electrically heated curling appliances; electrically heated hair styling appliances; electrically heated hair waving appliances

Class: 11 Appliances for bathing the feet; appliances for cooking; appliances for cooking foodstuffs; appliances for curing foodstuffs; appliances for heating; appliances for heating beverages; appliances for heating foodstuffs; appliances for illumination; appliances for smoking foodstuffs; chilling appliances; cooking appliances; domestic cooking appliances (electric); domestic heating appliances; electric appliances for making yoghurt; electric appliances for making yogurt; electric domestic cooking appliances; electrical appliances for cooking; electrical appliances for heating; electrical appliances for lighting; electrical appliances for making beverages; electrical domestic appliances for drying; electrical household appliances for heating food; electrically operated appliances for heating; electromagnetic cooking appliances; griddles (cooking appliances); grills (cooking appliances); hair drying appliances; steam cleaners being electrical appliances; electrical apparatus for the cooking of foodstuffs; electrical apparatus for the preparation (cooking) of foodstuffs; electrical apparatus for the preparation of foodstuffs by cooking; electrical apparatus for the preparation of foodstuffs by grilling; electrical apparatus for the preparation of foodstuffs by toasting; electrical appliances for cooking; electrical appliances for heating; electrical appliances for lighting; electrical appliances for making beverages; electrical coffee brewing apparatus; electrical coffee brewing apparatus for household use; electrical coffee brewing apparatus for professional use; electrical coffee making apparatus; electrical coffee percolators; electrical coffee pots; electrical coffee pots incorporating percolators; electrical cooking apparatus; electrical cooking utensils; electrical hair driers (dryers); electrical heating elements; electrical household apparatus for cooling food; electrical household apparatus for heating food; electrical household appliances for heating food; electrical installations for cooking; electrical installations for heating; electrical rice cookers; electrical water heating apparatus for making beverages; electrically heated apparatus for infusing coffee; electrically heated apparatus for infusing tea; electrically heated roasting skewers; electrically operated apparatus for heating; electrically operated apparatus for making coffee; electrically operated apparatus for making hot beverages; electrically operated appliances for heating; electrically operated cooking ranges; electrically operated cooking ranges adapted for roasting; electrically operated electric griddles; electrically operated toasters; steam cleaners being electrical appliances

1. The examination of the above trade mark was followed by the advertisement of its acceptance in the Australian Official Journal of Trade Marks on 31 July 2008. The trade mark application was subsequently opposed by Whirlpool Properties, Inc (“the opponent”) on 30 January 2009. The opponent provided evidence in support consisting of the statutory declaration of James Darnton, dated 26 August with exhibits JED-1 to JED-9 (“the Darnton declaration”) and the statutory declaration of Alan Coupe, dated 21 August 2009 with attached exhibits AC-1 to AC-8 (“the Coupe declaration”). The applicant did not submit any evidence in answer.

2. Prior to the hearing, the opponent indicated that it intended only to pursue the grounds of opposition under sections 44, 59, 60, and 42(b) of the Trade Marks Act 1995 (“the Act”). I heard this matter in Melbourne on 6 August 2010 as a Delegate of the Registrar of Trade Marks. Greg Chambers of Phillips Ormonde Fitzpatrick, Patent and Trade Mark Attorneys appeared for the opponent, while the applicant did not make an appearance at the hearing, or file any written submissions.

   Onus and Reasons           

3. In hearings before the Registrar of Trade Marks, the opponent bears the onus of establishing one of the grounds of opposition nominated in the notice of opposition on the balance of probabilities.[1] I will proceed on this basis when determining the grounds of opposition pursued by the opponent.

   [1] Pfizer Products Inc v Karam (2006) 70 IPR 599, per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26].

4. The relevant provisions of section 44 of the Act state:

   Section 44: Identical etc. trade marks

   (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.

5. Mr. Chambers, on behalf of the opponent, referred to a number of the opponent’s trade marks containing or comprising the word “KITCHENAID” in various classes similar to those of the applicant’s mark. For clarity and conciseness, I will only refer to the word trade marks “KITCHENAID” with goods and services closest in similarity to that claimed in the applicant’s specification of goods. The details of the KITCHEN AID marks are as follows:

TM No.	Filing Date	Class / Statement of Goods
264757	4.1.73	Class 7 Electrically driven machines for the preparing, beating, mixing, stirring, kneading, blending, cutting, grating, whipping, shortening, mashing, shredding, slicing, chopping, straining, pressing, freezing and grinding of foods and condiments, and for extracting fruit juices; coffee mills; dishwashing machines; waste disposing machines; waste compacting machines; knife sharpening machines; ice chipping machines; can opening machines; pea shelling machines; and parts and accessories of such machines and attachments for such machines
512769	14.6.89	Class 7 Washing machines, drying machines and other apparatus for laundering clothes; dishwashers, waste disposals; motors and other parts for all the aforementioned goods, all being goods in this class and all other laundry and kitchen apparatus and machinery in this class
512770	14.6.89	Class 37 Services in class 37 involving the construction, installation, maintenance and repair of machines and machine tools, of clothes washers, of clothes dryers, and of apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating and water supply, including refrigerators, freezers, combination refrigerator- freezers, electric and gas clothes dryers, ranges, rangehoods, cooktops, ovens including microwave ovens and water dispensers
512771	14.6.89	Class 11 Apparatus for lighting, heating, cooking, refrigerating, drying, ventilating and water supply; including refrigerators, freezers, combination refrigerator/freezers, electric and gas clothes dryers, ranges, rangehoods, cooktops, ovens including microwave ovens, water dispensers, all being for household use and all other goods in class 11 for kitchen or laundry use
1056003	18.5.05	Class 11 Appliances, including, electric hot beverage making machines, electric waffle makers, electric tortilla makers, electric ice cream makers, electric food warming units, food warming drawers; ice cube making machines, temperature controlled wine cellars, hot water dispensers, and water supply units for dispensing cold water and ice from refrigerators and filtered water from domestic water filtration units, and parts and attachments for all of the above goods

1. A side-by-side comparison of the applicant’s and the opponent’s trade marks in accordance with the test set out by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[2] is appropriate in the first instance:

   [the trade marks] 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

   [2] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at 414-415)

2. Applying the above test, I find that the trade marks are not substantially identical. The addition of the letter “M” in the centre of the applicant’s trade mark substantially affects the identity (and to a lesser extent, alters the meaning) of the trade mark. They are therefore visually and aurally distinct on a side-by-side comparison.  

3. Despite the difference mentioned above, the trade marks may still be deceptively similar to each other. As Justices Dixon and McTiernan found in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd[3]:

   the marks ought not … 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 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.

   [3] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 (at 658).

4. The omission (or inclusion) of a letter in the centre of one of the trade marks could easily be overlooked during the purchase of these goods. Similarly, the pronunciation of the two expressions is also likely to cause confusion, as the syllable is not distinctive and there is a real likelihood that Australians would slur the operative part.[4] Some decisions of the Registrar that consist of letter changes in the middle of the trade mark which were found to be either substantially identical or deceptively similar include FORTEX and FOREX[5], MEDISON and MEDICON[6], and DERMAFILM and DERMOFILM[7]. In addition, Lord Radcliffe in De Cordova v Vick Chemical  Co[8] commented:

   …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.

   [4] See Aristoc Ltd v Rysta Ltd (1965) 62 RPC 65 at 75 (HL).

   [5] Lonz Ltd v Kantfield Pty Ltd (t/as Montagg Co) (1995) 33 IPR 396.

   [6] Medicon eG Chirurgiemechaniker-Genossenschaft v Medison Co Ltd [2000] ATMO 12.

   [7] Harel v Warner-Lambert Company [1995] ATMO 27.

   [8] De Cordova v Vick Chemical Co (1951) 68 RPC 103 at 106.

5. The applicant has claimed a wide variety of goods, resulting in consumers who are purchasing those goods giving varying levels of attention to the marks. These factors overwhelm any possible difference in meaning between the trademarks, and I find that a real and tangible danger of confusion would result. The overall impression is one of deceptive similarity.

6. The remaining issue required to establish section 44 is whether the opponent’s goods and those claimed by the applicant are similar. The goods in class 7 of the opposed application include items which I will broadly describe as kitchen appliances for preparing food and domestic cleaning appliances. These goods are similar to, or encompassed within, the goods claimed in trade mark registrations 264757 and 512769, particularly all other laundry and kitchen apparatus and machinery in this class. Similarly, the goods in class 11 of the opposed application include various cooking and heating appliances. I find that these goods are all encompassed within Apparatus for lighting, heating, cooking, refrigerating, drying, ventilating and water supply…;… and all other goods in class 11 for kitchen or laundry use in class 11 of the opponent’s trade mark registration no. 512771. To avoid any doubt in the matter, the (unrestricted) claim for Appliances in class 11 of trade mark no. 1056003 also covers these items.

7. The remaining specification in class 9 includes goods comprising of communication appliances, electronic cooking timers, electrical control units and various electrical hair appliances. Mr. Chambers made the further submission that the services in class 37 of its ‘KitchenAid’ trade mark (registration no. 512770) namely ‘the construction, installation, maintenance and repair of machines and machine tools’ are closely related to those class 9 goods. In my consideration of this matter, I am of the opinion that all of the applicant’s above goods in class 9 can safely be described as “machines.” It is therefore logical that the construction, installation, maintenance, and repair of those goods are connected to the goods themselves, and would be seen as closely related. An analogous case on this matter is AAP Information Services v Aaaaa All Auto Parts Pty Ltd[9], where the Hearing Officer said:

   It follows, therefore, that the word 'machines' in the applicant's specification of services embraces the goods of the opponent's Class 9 registrations. When I consider both the applicant's Class 37 statement, 'repair, installation, renovation maintenance services in connection with machines' and the opponent's Class 9 specification of goods in relation to the principle of notional use to the extent of the specifications as per Smith Hayden, supra, and in the light of the tests proposed in Aussat, supra, I must conclude that they are closely related goods and services.

   [9] AAP Information Services v Aaaaa All Auto Parts Pty Ltd [1999] ATMO 37.

8. Those tests mentioned are applicable and relevant in this matter, and moreover the opponent’s services notably include the construction of the goods. In summary, the goods contained within the applicant’s specification are therefore similar or closely related to the goods/services in one or more of the opponent’s trade marks. I find that a real and tangible danger of confusion exists between the marks, and as the applicant has not produced any evidence in answer, the ground of opposition relevant to section 44 has been established.

   Section 59: Applicant not intending to use trade mark

   The registration of a trade mark may be opposed on the ground that the applicant does not intend:

   (a) to use, or authorise the use of, the trade mark in Australia; or

   (b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services specified in the application.

   Note:  For applicant see section 6.

9. The issue of whether the intention to use the trade mark under section 59 of the Act should be determined as at the filing date of the application, has been the subject of recent discussion in the Federal Court. Mr. Chambers submitted that the issue concerning an ongoing intention is still unresolved due to Justice Dodds-Streeton’s comments in Suyen Corporation v Americana International Limited[10] who additionally stated:

   Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 (“Food Channel”) held that the intention must exist at the date of the application, although the Full Court acknowledged that “use (or non-use) after the date of application may be relevant in drawing inferences as to the issue of intention as at the date of application” (at [74]).

   [10] Suyen Corporation v Americana International Limited [2010] FCA 638 (21 June 2010) [at 147].

10. Her Honour particularly noted that[11]:

    While the Full Court has now confirmed that the intention under s 59 must exist at the date of the application, the arguments in support of the contrary view were not addressed and a number of potential inconsistencies and uncertainties remain.

    [11] Suyen Corporation v Americana (Supra) [at 177].

11. Despite the comments regarding the inherent difficulties with the Full Federal Court’s approach in Food Channel, its precedent was followed. As a delegate of the Registrar of Trade Marks, I am also bound to follow the Federal Court and will proceed on the basis that intention to use the trade mark is determined at the date of filing.

12. Since the initial application for this trade mark, any correspondence for the applicant (including opposition correspondence) was addressed to the applicant’s accountant acting as its representative. No alternative address for service has been supplied to IP Australia to date. On 29 May 2009, IP Australia was advised that the applicant’s accountant was no longer acting as representative for the applicant and that “Mr Robin Cohen the director of Huilong came collected all documents and files on 6 April 2009 and took his and his company’s business somewhere else” (sic). As no new address for service was provided by the applicant, all further correspondence for the applicant from this office (and also from the opponent) was sent to the accountant, and promptly returned to the relevant sender unopened.   

13. As the applicant has a prima facie intention arising from the act of applying for the trade mark,[12] the opponent bears the responsibility of shifting the onus to the applicant to establish its intention. The opponent submits that it is the above actions (or omissions) that infer a lack of intention to use the trade mark. The additional inference is that the applicant was aware of the opposition proceedings given that they apparently collected all material from their agents on 6 April 2009. However, a failure to provide evidence or submissions in an opposition matter does not, by itself, create an inference that an applicant lacks the intention to use the trade mark.

    [12] Aston v Harlee Manufacturing Co (1960) 103 CLR 391).

1. In addition, there may be a number of reasons (apart from a lack of intention to use the trade mark) why an applicant would not participate in an opposition. This could range from financial considerations, a misunderstanding of the opposition process, or a belief that the opposition and the opponent’s evidence did not require an answer from the applicant.

2. As the applicant did not update its address for service, it is clear that the opponent’s evidence in support was not actually received by the applicant. However, even if the evidence had been available to the applicant its contents do not point to, or even mention, a lack of intention to use the trade mark on the applicant’s part. To establish this ground the opponent must do more than merely nominate the opposition ground and question the applicant’s intention in its written submissions. On the above facts, I find that the onus cannot be said to have shifted to the applicant to answer this ground. On the balance of probabilities, I find that the ground of opposition under section 59 has not been made out.

   Section 60: Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

3. For a trade mark to be refused registration under section 60, the opponent must firstly establish that the opponent’s trade marks had a reputation existing at 31 March 2008 in Australia. Secondly, the opponent must establish that the use of the applicant’s trade mark on its claimed goods would be likely to deceive or cause confusion as a result of that reputation. In support of this opposition ground, the Coupe declaration indicates that its trade mark ‘KITCHENAID’ has been used in Australia since 1997 on kitchen appliances and with particular emphasis on its KITCHENAID food mixer.

4. In ConAgra Inc v McCain Foods (Aust) Pty Ltd,[13] Justice Lockhart provided some examples of the variety of media used to establish the relevant reputation, stating that:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

   [13] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 343

5. The opponent exhibits a number of advertisements relating to its Kitchen appliances from 1999 until 2008 via television (cooking and lifestyle programs) shows, culinary magazines and from cooking schools run by the Australian distributor of the opponent’s products. The amount of annual expenditure on advertising and the sales of the opponent’s kitchen products were significant over this lengthy period, and indicate a growth in sales. The Darnton declaration further outlines the history of the KITCHENAID mixer with its origins in the United States, and the subsequent transfer of the ownership of the trade mark. The declaration also annexes numerous trade mark applications and registrations from around the world, some of which have been registered for a number of years in similar classes to the opposed application.

6. In summary, I find that the opponent has a significant reputation in its trade mark existing at the priority date of the opposed application in relation to kitchen appliances and utensils, including toasters, blenders, espresso machines and particularly its well-known mixer. The opponent’s evidence dated subsequent to the applicant’s priority date indicates that the opponent is intending to extend its brand to other kitchen equipment and utensils. Despite the differences between some of the applicant’s goods and the goods for which the opponent has a demonstrated reputation, I find that and deception or confusion in the Australian marketplace would still be likely.

7. To the extent that it is necessary for the opponent to succeed in this matter, I find the ground of opposition under section 60 of the Act has been established.

   Decision and Costs

   Section 55: Decision

   (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.

8. As the opponent has established a ground of opposition under the Act, I find it unnecessary to address the remaining grounds nominated by the opponent. As a result, the applicant has been unsuccessful in this matter and I refuse to register trade mark application no. 1230187: ‘KitchenMaid’.

9. Costs normally follow the event and as the opponent has been successful, it is entitled to an award of costs. Accordingly, I award costs against the applicant to the extent allowed under the official scale within Schedule 8 of the Trade Mark Regulations 1995.

   Heath Wilson
   Hearing Officer
   Trade Marks Hearings
   25 August 2010