CHAPTER 5 – THE OPPOSITION PROCEEDING – AN ATTEMPT TO STOP A REGISTRATION AND HOW TO DEAL WITH IT

FROM THE INITIAL IDEA TO A WELL KNOWN TRADE MARK- A LONG WAY TO GO

Due to the workload of IP Australia it normally takes up to 13 weeks until the Australian Patent- and Trade Mark Office is able to attend to examination of a trade mark application. If no obstacles to registration are observed, a Notice of Acceptance will be issued and sent to the applicant. At the same time the Acceptance will be advertised in the Trade Mark Gazette. This starts the three months opposition period wherein everyone has the chance to lodge an opposition to prevent to application to mature into a registration in case it is believed that the applied trade mark is causing likelihood of confusion in the relevant public.
Once an opposition has been lodged and the reasoning for lodgment has been provided the applicant can send written submissions to IP Australia, outlining why is believed that the applied trade mark and the opposing registered mark are not confusingly similar.

Basically it has to be evaluated as to whether or not the goods or services of one mark are similar to another. The Trade Marks Manual of Practice and Procedure suggests that the following has to be taken into account:

  • the nature and character of the services,
  • the origin and purpose of the services,
  • whether the services are provided by the same business or person,
  • whether the services are provided from the same sources, in the same area or district, during the same season or in relation to the same related goods or services and to the same class or classes of customers and
  • whether the services are regarded as being the same by persons who apply them (See Part 26 para 4.2.).

With these criteria in mind one has to ask, if the applicant’s services differ significantly from those for which the conflicting mark is registered.
If there is a real doubt about whether the goods or services are similar or closely related this should be decided in the applicant’s favour. The same is true when trademarks are being compared (See Part. 26.2.).
Is there any indication to suggest, that a likelihood of confusion in the narrower sense has arisen, where the relevant public might believe that one trade mark is in fact the other mark.

According to section 44(1)(a) Trademarks Act 1995 a mark cannot be refused registration if it is not confusingly similar with another registered trademark.

A trademark suffers similarity in order to a prior existing registered trademark as set out in Re Pianotist Co`s Application (1906) 23 RPC 774, 777 and affirmed recently by the New Zealand High Court in Platinum Homes (NZ) Limited v. Golden Homes (1998) Limited (CIV 2005-485-1870) in case it is likely that the trademark is identical or confusingly similar considering their look, their sound, the respective goods and the nature and kind of customer who would be likely to buy those goods.

The question of whether consumers are likely to be misled by the coexistence of the applicant’s mark on the register with the conflicting Mark involves the test of deceptive similarity, which is a test of overall impression of the two marks. The likelihood that a mark will deceive or cause confusion must be judged according to the fair and normal use that an applicant might make of the application mark, if it is registered, not the use which has been made, or is being made, of it when the comparison is being made (Berlei Hestia Industries Ltd. v. Ball Co. Inc. (1973) 129 CLR 355 at 362).
A decision maker must try to estimate the effect or impression which the earlier mark will produce in the mind of potential customers because it is that recollection which forms the basis of any mistaken belief which is prompted by the later mark (Australian Woollen Mills Ltd. v. FS Walton & Co. Ltd (1957) 58 CLR 641). People tend to remember the general impression made by a mark (Beecham Group Plc. v. Colgate Palmolive Pty. Ltd (2006) 66 IPR 254).
The test to be applied in order to find out the likelihood of confusion is that originally formulated in particular in Australia by Evershed J in Re Smith Hayden & Co (1946) 63 RPC 97 at 101 and subsequently approved by the Privy Council in Hannaford & Burton Ltd v Polaroid Corporation [1976] 2 NZLR 14 at 18, namely: “Assuming use by the owner of the cited mark of its trade mark in a normal and fair manner for the goods or services in the specification of the cited mark, is the Court or Commissioner satisfied that there would be a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant’s trade mark was used in a normal and fair manner for the goods or services in the specification of the application under consideration?”
As far as the likelihood of confusion is concerned, this aspect must be appreciated globally, taking into account all factors relevant to the circumstances of the case (Sabel BV v Puma AG, Rudolf Dassler Sport [1998] RPC 199 at 224).
Assessing the similarity of two terms it shall be taken into account that both marks have to be considered in their entirety; the overall or net impression of the marks should also be considered (Clarke v Sharp (1898) 15 RPC 141, 146. Thereby it is not proper to divide up the marks and compare portions of them either visually, or aurally: Aristoc Ltd v Rysta Ltd [1945] 1 AC 68). Whilst differences between two marks may be significant it is the similarities, which are most significant, whether visual, audible, distinctive or conceptual: (Austin, Nichols & Co Inc. v Stichting Lodestar (2005) 11 TLCR 265 at [13].

As stated by Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415 regarding the question of deceptive similarity 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 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. The approach to these considerations was discussed by Lord Parker (then Parker J) in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777.
The marks are to be compared as they would be encountered in the usual circumstances of trade. In the process of comparison it has to be taken into account that a trademark should not be barred from registration because “unusually stupid people, fools or idiots would be deceived” (Crook’s Trade Mark (1914) 31 RPC 79 at 85). Historically the “ordinary person” test has been applied, namely, the potential purchaser has been assumed to be a person using ordinary care and intelligence who has an ordinary recollection of the mark (Don v Burley (1916) 22 CLR 136 at 140; see discussion in Shanahan, Australian Law of Trade Marks and Passing Off, 2nd edition, 1990, at page 183). It is the perception of marks in the mind of the average consumer of the type of goods or services in question that is decisive (Sabel BV v Puma AG, Rudolf Dassler Sport [1998] RPC 199 at 224). The average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. In this respect it has to be recognized that most people do not have a photographic recollection of the visual details of a mark, but instead remember marks by their general impression, or by some significant detail. This means that when considering whether two marks are sufficiently similar for citation purposes, a detailed comparison or close examination of the marks is not appropriate. Instead it should be assumed that consumers might have an “imperfect recollection” of a mark (Rysta Ltd’s Application (1943) 60 RPC 87 at 108).

As mentioned above the average consumer’s level of attention is likely to vary according to the category of goods or services in question. Accordingly the degree of visual, aural or conceptual similarity between them has to be determined and where appropriate the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed has to be evaluated. (Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV [1999] ETMR 690, paragraphs 26-27). It is important to consider the nature of the goods and/or services and the way that those goods and/or services will be purchased. This is a practical consideration, concerned not with “hypothetical possibilities of deception or confusion but with practical business probabilities”. The risk of confusion must be real rather than fanciful (Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50 at 76 per Richardson J (speaking of section 16); Lancer Trade Mark [1987] RPC 303 at 325).

The degree of similarity of the marks and the degree of similarity of the services must also be considered when assessing the likelihood of deception or confusion. A lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Canon Kabushiki Kaisha v MGM Inc. [1999] RPC 117 at 132). The relevant services of both marks are not similar for the reasons stated above. Thus, no likelihood of confusion exists, as both marks look different and sound different, whereas the wording of both trademarks has no ordinary meaning which could be considered in the process of determination of the likelihood of confusion between them.
The degrees of aural similarity as well as the degree of visual similarity are the most important aspects. This applies because the respective goods of each trademark are sold via the Internet and via Telephone where they can be requested by the consumers, who will therefore see and hear the marks. Therefore the aural similarity has to be assessed at the foremost. Both terms are provided with a sufficient difference in reference to each of the aspects to avoid confusion. The marks sound different and look different as one of the marks is written in low capital letters whereas the applicant’s mark is written in BLOCK letters and contains a device integral.
If an essential feature of the registered trade mark that is missing in the Conflicting Mark, the marks will not be considered deceptively similar (Global Brand Marketing Inc. v. YD Pty. Ltd. (2008) 76 IPR 161).

The distinctiveness of the respective marks may also be a relevant consideration. It has been held that the more distinctive the earlier mark the greater will be the likelihood of confusion (Sabel BV v Puma AG, Rudolf Dassler Sport [1998] RPC 199 at 224). The visual, aural or conceptual similarity of the marks must be considered on its merits and be assessed by reference to the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. When comparing trademarks it must be also considered whether any of their elements could be deemed descriptive of the kind, quality and/or intended purpose of the goods and/or services. If any element of the trade mark can be considered as being a descriptive or generic term for the goods or services protected, then its importance in the comparison will be diminished. It can be stated that it is accepted that where the marks contain one or two similar elements, but also contain other distinctive elements, this may not be considered enough to create deception or confusion. The Conflicting Mark contains an average amount of distinctiveness, but is not descriptive at all. The same applies for the mark of the applicant. Consequently the likelihood of confusion with other trademarks has to be considered of being unlikely. Indeed some major differences in the spelling and the sound will avoid the likelihood of confusion between both marks. The marks differ significantly in their spelling and sound, which provides a difference between them sufficient to overcome the likelihood of confusion.

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