Yingli Group Co., Ltd.

[2012] ATMO 35

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1366282(9) – PANDA & YINGLI SOLAR device - in the name of Yingli Group Co., Ltd.

Delegate:

Debrett Lyons

Representation:

Applicant: Tracey Berger of Spruson & Ferguson

Decision:

2012 ATMO 35

Section 33 proceedings – s44: similar goods – trade marks deceptively similar – application rejected.

Background

1. This decision under section 33 of the Trade Marks Act 1995 (‘the Act’) concerns a ground for rejection of a trade mark application which has been recited by a trade mark examiner.  Details of the application appear below:

Application No: 1366282

Priority Date:  9 June 2010

Goods:Class 9:  Silicon chips; wafers (silicon slices); glass covered with an electrical conductor; semi-conductors; integrated circuits; printed circuits; electric conductors; plates for batteries; solar batteries; galvanic cells; battery chargers; chips (integrated circuits); batteries for lighting; solar cells; solar modules; solar panels

Trade Mark:  

2. The ground for rejection is stated by the examiner of trade marks to exist under subsection 44(1) of the Act because of the trade mark registrations below. That ground for rejection was maintained through three reports after which Yingli Group Co., Ltd. (‘the applicant’) asked to be heard.

Registration No:              1109708

Priority Date:  21 April 2006

Goods:Class 9:  Scientific, optical and measuring apparatus and instruments; diagnostic apparatus and instruments for scientific purposes; diagnostic apparatus and instruments for immunoassay use; scientific apparatus and instruments for testing and analysing biological samples other than for medical use; reaction units containing chemical and immunoassay reagents; chip arrays and sensors using diagnostic materials; apparatus and instruments, including parts of apparatus and instruments, for carrying out assays; but excluding goods used in research into or care of pandas

Trade Mark:   PANDA

Registration No:              1345026

Priority Date:  20 October 2009

Goods:Class: 9 Antivirus computer programmes; antivirus software and hardware; antimalware computer programmes; antimalware software and hardware; computer security programmes; computer security software and hardware; computer threat prevention computer programmes; computer threat prevention software and hardware; none of the foregoing relating to gaming, casinos and gaming establishments, gaming apparatus and equipment, poker machines, slot machines, devices which accept a wager

Class: 42 Analysis for the installation of computer systems in connection with computer security, computer threat prevention, antivirus and/or anti-malware; analysis of computer systems in connection with computer security, computer threat prevention, antivirus and/or anti-malware; design of computer systems in connection with computer security, computer threat prevention, antivirus and/or anti-malware; design and development of computer hardware and software in connection with computer security, computer threat prevention, antivirus and/or anti-malware; computer consulting in connection with computer security, computer threat prevention, antivirus and/or anti-malware; rental of computers in connection with computer security, computer threat prevention, antivirus and/or anti-malware; computer programming in connection with computer security, computer threat prevention, antivirus and/or anti-malware; design of computer software in connection with computer security, computer threat prevention, antivirus and/or anti-malware; installation of computer software in connection with computer security computer threat prevention, antivirus and/or anti-malware; rental of computer software in connection with computer security, computer threat prevention, antivirus and/or anti-malware; maintenance of computer software in connection with computer security, computer threat prevention, antivirus and/or anti-malware; updating of computer software in connection with computer security, computer threat prevention, antivirus and/or anti-malware; duplication of computer programmes in connection with computer security, computer threat prevention, antivirus and/or anti-malware; conversion of data or documents from physical to electronic media in connection with computer security, computer threat prevention, antivirus and/or anti-malware; conversion of computer programmes and data in connection with computer security, computer threat prevention, antivirus and/or anti-malware; database reconstruction in connection with computer security, computer threat prevention, antivirus and/or anti-malware; Web site creation and maintenance for others in connection with computer security, computer threat prevention, antivirus and/or anti-malware; super server hosting (of Web sites) in connection with computer security, computer threat prevention, antivirus and/or anti-malware; technical project studies in connection with computer security, computer threat prevention, antivirus and/or anti-malware; computer data-processing in connection with computer security, computer threat prevention, antivirus and/or anti-malware; operation and maintenance of computer systems (software) in connection with computer security, computer threat prevention, antivirus and/or anti-malware; none of the foregoing relating to gaming, casinos and gaming establishments, gaming apparatus and equipment, poker machines, slot machines, devices which accept a wager

Class: 45 Granting of computer software licenses in connection with computer security, computer threat prevention, antivirus and/or anti-malware

Trade Mark:   PANDA

3.     As a delegate of the Registrar of Trade Marks, I heard the applicant’s submissions in person in Sydney on 17 February 2012.  Ms Tracey Berger of Spruson & Ferguson, Patent and Trade Mark Attorneys, represented the applicant.

The Submissions

4.     Ms Berger presented oral submissions and also a written summary thereof, noteworthy passages of which I reproduce below:

The Trade Mark is as compared to the cited marks PANDA. A trade mark is not necessarily deceptively similar to another merely because it contains a word in common with that other mark Enoch’s Application (1946) 64 RPC 119, Darwin’s Application (1946) 63 RPC 1). This proposition was reinforced in the Henschke case where the Full Federal Court held that HILL OF GOLD was not deceptively similar to HILL OF GRACE in the context of wine.

When assessing deceptive similarity, the Trade Mark must be considered in its entirety. The comparison is, on the one hand, between the impression based on recollection of the cited mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the applicant’s mark-per Kitto J in Shell Co (Aust) Pty Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at 415.

An assessment needs to be made of the effect or impression produced on the mind of potential customers by the mark under application and what is relevant is the impression “carried away and retained” because this is the basis of any mistaken belief- Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658 per Dixon and McTiernan JJ.

The impression created by the applicant’s mark is completely different from the cited marks as a result of the inclusion of the registered mark YINGLI SOLAR and the Sun Device.  The words YINGLI SOLAR in particular are the memorable elements that will be carried away and retained by consumers. 

The Trade Mark and the Cited Marks are not aurally similar. The Trade Mark consists of three words which would be read as YINGLI SOLAR PANDA. In contrast, the Cited Marks consist of the single word PANDA. In London Lubricants (1920) Ltd's Application Sargant LJ observed that the:

"tendency of persons using the English language to slur the termination of words...has the effect necessarily that the beginning of words is [sic] accentuated in comparison, and...the first syllable of a word is, as a rule, far the most important for the purpose of distinction".  

Thus, the position of the words YINGLI SOLAR at the start of the Trade Mark changes the syllable on which emphasis is placed.

The marks are not visually similar. The Trade Mark consists of a distinctive Sun Device. The Sun Device also forms part of the Applicant’s earlier registration no. 1278609 and covers similar goods to those covered by the Application. The additional components in the Trade Mark are distinctive, memorable and serve as essential features of the Trade Mark.

Discussion

5. Subsection 44(1) of the Act provides:

Identical etc. trade marks

44.(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.

Note 1:  For deceptively similar see section 10.

Note 2:  For similar goods see subsection 14(1).

Note 3:  For priority date see section 12.

6.     I note that the applicant has not adduced any evidence of use of its trade mark and that the provisions of subsections 44(3) and 44(4) are therefore not relevant to this application.

7.     As the potentially conflicting trade mark of the registrations has both earlier priority and covers the similar (if not the same) goods to those of this application[1], the sole issue for me to decide is whether the trade marks are deceptively similar (there being no question of their substantial identity).

[1] The applicant’s submissions in this regard are set out hereunder but are immaterial to the test of similarity under section 14 of the Act which requires a comparison of the goods of the application with the goods of the registrations, absent considerations of the business activities of the respective owners.

The Applicant is a solar energy company and manufacturer of silicon solar energy modules. Thus, the Relevant Goods are used in the field of solar and renewable energy. Extracts from the Applicant’s website showing the Relevant Goods are attached and marked “A”.

The owner of cited registration no. 1109708 PANDA now trades under the name Alere and operates in the healthcare industry providing diagnostics in the fields of cardiovascular, infectious diseases, women's health, prenatal care, drugs of abuse and oncology. Extracts from the website at are attached and marked “B”.

The owner of cited registration no. 1345026 is an IT security company and provider of cloud-based antivirus security solutions. Extracts from the website at are attached and marked “C”.

It simply cannot be the case that consumers would consider the Relevant Goods to be similar to the goods covered by the cited marks. As a result of the Applicant’s area of operation the Relevant Goods are used in field of solar and renewable energy, and have a different nature, use and are bought and sold through different trade channels from the goods covered by the Cited Marks.

8.     Deceptive similarity is to be assessed according to the test set out in Shell Company of Australia Ltd v. Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 415 per Windeyer J. :

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two  marks  side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the  marks  clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that  marks  are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106 . And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "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" (1937) 58 CLR, at p 658.

9.     The comparison is to take place in the context of the goods in question.  This contextual comparison was stressed in In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, above, where Parker J said:

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

10.   The standard which is applied to the test is that specified in Registrar of Trade Marks v Woolworths [1999] FCA 1020 at paragraph 50 by French J who said:

In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

(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.

11.   Taking account of the goods in question, I can not accept the applicant’s submission that “the trade mark consists of a distinctive sun device”.  Within the context of the goods of the application and having further regard to the word “solar” in the mark, the sun device is utterly non-distinctive.

12.   The applicant is a Chinese company. During examination the applicant was asked whether the word “Yingli” had a meaning in response to which the Office was advised that “the word YINGLI does not have a meaning in Chinese or in any other language”.  That is not to say, however, that the word is invented and so enjoys a higher level of distinctiveness since it is more than likely that it is the Chinese given name, YingLi.   

13.   The filed representation of the trade mark of the application is not especially clear, yet I have the applicant’s advice that its earlier registration 1278609 is for the same  “sun device”.  That mark appears on the Register as follows:

14.   It can be seen that the words YINGLI and SOLAR are superimposed upon the sun’s flares but in a way which would lead me to term that trade mark a composite logo.

15.   The trade mark of the application adds the word PANDA to that mark.  Trade marks are not perfectly remembered.  Although the word PANDA sits underneath the logo, I nonetheless consider that ordinary members of the public would recall the trade mark by the word PANDA and are more likely to refer to the trade mark as a PANDA trade mark rather than a YINGLI or YINGLI SOLAR trade mark.  On this basis, confusion between the trade marks in question is inevitable.

16.   The applicant drew my attention to the state of the Register and submitted that:

The state of the Register supports the co-existence of the Trade Mark with the Cited Marks. In Rivers (Australia) Pty Ltd v River Island Clothing Co. Limited (2011) ATMO 28, Hearing Officer Kirov referred to the decision of Hearing Officer Williams in Re Unilever plc’s application to register the trade mark PHOENIX [2001] ATMO 39.

Hearing Officer Williams referred to the following words by Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579:

I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.

Hearing Officer Williams then commented:

The [above-quoted] paragraph is important. Firstly, consistency in public administration is desirable. Secondly, there is a difference between the role of the court and that of the Trade Marks Office in such matters. It is the responsibility of an administrator to take reasonable steps to understand, consider and assess the pattern of his/her own agency in dealing with past matters, where these are directly relevant. It is only if the decision-maker is satisfied that a current matter can be distinguished from past decisions, for whatever reason, that an established pattern can be varied in good conscience.

The Cited Marks already co-exist on the Register with other PANDA composite marks, including KUNG FU PANDA, WILD PANDA, 100 PANDAS, GIANT PANDA and Peking Pandas. A consistent approach thus indicates that the Trade Mark could also co-exist with the Cited Marks on the Register.

17.   I have paid regard to those other trade marks but I am not persuaded they influence the reasoning I have laid out and the result which follows.  In my assessment the trade marks in question are deceptively similar.

Decision

18. Section 33 of the Act provides:

Application accepted or rejected

33.(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a) the application has not been made in accordance with this Act; or
(b) there are grounds for rejecting it.

Note:  For the grounds on which an application may be rejected see Division 2.

(2) The Registrar may accept the application subject to conditions or limitations.

Note:  For limitations see section 6.

(3) If the Registrar is satisfied that:

(a) the application has not been made in accordance with this Act; or
(b) there are grounds for rejecting it;

the Registrar must reject the application.

(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note:  For applicant see section 6.

19.   I reject application 1366282.

Debrett Lyons

Hearing Officer

Trade Marks Hearings

12 April 2012