| Fiji Islands - W Weddel & Co (New Zealand) Ltd v Kumpulan Barkath SDN BHD - Pacific Law Materials |
IN THE HIGH COURT OF FIJI
At Suva
Appellate Jurisdiction
MISCELLANEOUS ACTION NO. 0061 OF 1997
Between:
W. WEDDEL & CO. (NEW ZEALAND) LIMITED
(formerly) known as
W. & R. FLETCHER (N.Z.) LTD.
Appellant
- and -
KUMPULAN BARKATH SDN. BHD.
Respondent
Mr. P. Knight for the Appellant
Mr. Richard Naidu for the Respondent
JUDGMENT
This is an appeal under Section 13(5) & (6) of the Trade Marks Act (Cap.240), against the decision of the Administrator-General rejecting the appellant’s objection to the respondent’s application for registration of a trade mark. Before dealing however with
the appeal proper it is convenient to dispose of a preliminary objection raised by the respondent at the outset which was that the
appeal ought to be `struck out as being out of time’. After hearing counsels (including counsel for the Administrator-General) orally, I dismissed the objection for reasons which I now
provide.
Section 13(6) of the Trade Marks Act (Cap.240) simply provides for a right of appeal to this Court from any decision of the Administrator-General `(to) be made in the prescribed matter’ . In this latter regard Order 100 rule 2 of the High Court Rules specifically provides : `Every appeal ... to the High Court under the Trade Marks Act, must be begun by originating motion ...’ which `... must be served on the Administrator-General’ [sub-rule (2)] and `... must be entered with (sic) 28 days after the date of the decision, order, or other determination against which the appeal is
brought’ [sub-rule (3)].
In the present appeal several dates are important and are not disputed and these are:
(a) 17th November, 1995 the date of the Administrator-General’s decision;
(b) 17th January, 1997 the date when the appellant’s solicitors depose to having obtained a copy of the Administrator-General’s decision;
(c) 18th February, 1997 the date the appellant’s Originating Motion was filed in Court.
Counsel for the respondent’s simple submission is that the `date of the decision’ is 17th November 1995 and the `28 days’ time limit for an appeal to be lodged runs from that date (irrespective of delivery or receipt by the parties) and expired in December 1995. In any event, counsel argues, on the appellant’s own admission a copy of the decision was received on the 17th of January 1997 and `28 days’ from that date expired on 14th February 1997 (i.e. 4 days before the appeal papers were sealed).
Counsel for appellant on the other hand whilst accepting that the Originating Motion was filed out of time (although dated within time) nevertheless argues that the `date of the decision’ in Order 100 r.2(3) ought to include the date of delivery or receipt by the parties. In Counsels words : `Commonsense dictates that time cannot run until both parties have received the decision.’ Failing which counsel formally sought an extension of the time limited to appeal, citing the absence of any evidence of prejudice
or actual use by the respondent of its registered trade mark in Fiji.
Mr. Labo who appeared for the Administrator-General was unable to assist the Court with any relevant despatch records of the Administrator-General’s Office pertaining to the decision. He highlighted however that this particular application was dealt with exclusively by way of written
submissions and affidavits without any appearances by counsels. He frankly admitted that there was no laid down `procedure for parties to appear and take decisions of the Administrator-General which were normally despatched either by messenger
service or posted’ and in the circumstances, he submitted that the `date of decision’ should be interpreted to include the date of receipt.
Having given careful consideration to the opposing arguments I was satisfied given the absence of any differentiation in Order 100 rule 2 between decisions of the Administrator-General and decisions of the Court under the Trade Marks Act (Cap.240) [See : in this latter regard Sections 34 & 36], that the provisions of Order 55 rule 2(b) and, in particular, Order 55 rule 4(4) applied to a decision of the Administrator -General under the Trade Marks Act (Cap.240) such that the appeal period `... shall be calculated from the date on which notice of the decision, ... was given to the appellant by the person who made the
decision ...’ (i.e. the Administrator-General) and in the absence of such notice (as in this appeal) then the written decision itself.
I am fortified in my opinion by the judgment of Lord Parker C.J. in Minister of Labour v. Genner Iron & Steel Co. (1967) 3 ALL E.R. 278 who in rejecting a similar objection in an appeal against the decision of an industrial tribunal in that case said at p.280 :
`I confess that, as a matter of common sense, I should have thought that a time limit for appeal ought to date from the time when
the aggrieved party receives the reasons for the decision, which reasons he is entitled to have.’
and later in highlighting the difference between a court decision and a tribunal decision under Order 55 r.4 said at pp.280, 281 :
`... when one is dealing with a court which is not bound by statute to give reasons, but as a matter of practice has to give reasons
at the time of giving judgment, then the time runs from the time when as rule 4(2) says, the decision was given, that is the oral
decision. On the other hand, when one comes to r.4(4) (which deals with non-court on tribunal decisions)one finds a difference in wording. ... because one is dealing with a person who, though bound to give reasons, is not in the ordinary
way expected to be able to formulate and give those reasons at the time of announcing the decision and, indeed, one is dealing with
a person who in many cases is not bound to have an oral hearing at all ... Accordingly, as it seems to me, the time runs in such
a case as from the date when the document recording the decision is sent to the prospective appellant.’
I am glad to have reached this conclusion based on a commonsense reading of the appeal rules which exist to facilitate the exercise
of a statutory right of appeal and not to act as a technical hindrance. It was also urged on the Court that appeals under the Trade Mark Act are such a rarity that any guidance that might be obtained from the Court would be in the public interest as well as being of assistance
to the Administrator-General in the exercise of his statutory functions. The long delay in delivering this judgment however is much to be regretted.
I turn then to consider the substantive appeal and in doing so I briefly set out the back ground to the appeal:
(1) On 15th May 1990 the respondent a Malaysian registered company lodged an application through its local authorised agent, to register a trade mark in
respect of `edible oils and fats in international class 29 and in Fiji class 42'.
(2) The proposed trade mark comprises a rectangular label featuring a large palm tree in the foreground with what appears to be a cactus
plant at its base and two smaller palm trees in the distant background with the hyphenated words `PALM-BRAND’ prominently overwritten on the label diagonally from left to right in large hollow capital outline letters (see : Annexure I).
(3) Since May 1972 the predecessor to the present appellant company has been continuously registered in the Fiji Trade Marks Register as the proprietor of trade mark No : 7755 comprised of the words `PALM BRAND’ in respect of `meat and meat products including canned meat’ (in Class 42).
(4) By letter dated 19th September 1990 the respondent’s application in (1) above was `refused in view of trade Mark 7755'. The relevant Departmental worksheet records the following comments and advice of the Assistant Registrar of Trade Marks concerning the respondent’s application :
`A-G 1) Not recommended i.v.o 7755 attached. 2) T/M 7755 is similar to that of applicant. 3) Also description of goods in 7755 includes
meat products and description of goods of applicant is Edible Oils & Fats. 4) I consider the description of goods similar in
that edible oils & fats is also one of meat products.’
(5) By letter dated September 21, 1990 the respondent’s local agent sought `a reconsideration’ of the application on the grounds that the respondent’s trade mark was `for protection of different goods in Class 42 i.e. edible oils and fats’ and the mark as sought `(does) not so nearly resembles registered trade mark No.7755 as to be likely to deceive or cause confusion’.
(6) By letter dated `11/04/91' the Administrator-General approved the respondent’s application for advertisement `once in the Fiji Royal Gazette and once in the Fiji Times/Fiji Sun’ ;
(7) The relevant advertisement was published in the Fiji Republic Gazette of 3rd May 1991 calling for objections to be lodged `within three months’ with the Administrator-General ;
(8) By notice date 31st July 1991 the appellant company through its local agent lodged its objection to the intended registration of the respondent’s trade mark on
the grounds inter alia
`(a) The trade mark sought to be registered ... is identical or substantially identical with the trade mark of the opponent ;
(b) Goods which the Applicant intends to put out under the trade mark sought to be registered are likely to be confused with
or passed off as and for the goods of the opponent ... ; and
(c) The trade mark sought to be registered would by reason of it being likely to deceive or otherwise be disentitled to protection
in a Court of Justice and is, therefore, not entitled to registration.’
(9) By letter dated 06/09/91 to the respondent’s agent the Administrator-General forwarded a copy of the opposition notice in (8) above and `requested ... a counter-statement within fourteen (14) days ...’
(10) After several extensions over several months of the time fixed for filing a counter-statement and after a query from the appellant’s
agents, the respondent’s provided a counter-statement dated 1st November 1991 in which the respondent denied all of the appellant’s grounds of opposition in (8) above and re-emphasised that : `... the applicant’s concerned goods are not the same goods or description of goods as the opponents.’ A copy of the Counter-statement was provided to the appellant’s agent under cover of a letter dated 10/2/92.
(11) Eighteen (18) months later after several unsuccessful attempts to find a suitable hearing date, the respondent’s filed a statutory declaration
dated 25th November 1993 evidencing the registration of the respondent’s `PALM-BRAND’ trade mark in various states of Malaysia ; Singapore (1973) ; Brunei (1973) ; Tunisia (1990) and Bahrain (1991). In this regard it is not insignificant that the lettering of the respondent’s registered trade mark in the above-mentioned Asian
countries includes solid black block capitals as well as the hollow outline lettering presently proposed for registration. Numerous
invoices were also annexed to the declaration evidencing sales of the respondent’s products under its `PALM BRAND’ trade mark.
(12) By letter of 10th January 1994 a further attempt was made by the Administrator-General to fix the matter for hearing but again it was adjourned, this time, to allow the appellant to file a statutory declaration in support
of its opposition. Time-tabling directions were also settled by the Administrator-General which in essence avoided the need for a `viva voce’ hearing.
(13) The appellant’s statutory declaration was lodged on 23rd May 1994 followed by a Statement of Agreed Facts on 6th June 1994 wherein it was agreed inter alia:
`(1) The opponent is the registered owner of the Trade Mark `PALM BRAND’ which was registered in Fiji on the 17th day of May 1972 and renewed on the 14th day of May 1986 under the registration number 7755 in Class 42 ;
(2) The opponent uses the said Trade Mark in Fiji for its canned meat products such as corned beef and corned mutton.
(3) The opponent does not use the said trade mark for the items edible oils and facts.’
(14) Subsequently on 7th June 1994 and 21st June 1994 comprehensive written submissions were provided from the appellant’s and respondents agents respectively and on 4th July 1994 the appellant filed a further submission in reply ;
(15) Eighteen (18) months passed before a decision was handed down by the Administrator-General approving the respondent’s application and rejecting the appellant’s opposition.
It is from this decision that the appellant now appeals on the following three (3) grounds :
`1. That the Administrator-General wrongly held that the mark applied for does not so nearly resemble registered trade mark
No.7755 as to be likely to deceive or cause confusion and thereby wrongly failed to refuse registration under the provisions of Section
18 of the Trade Marks Act Cap.240 ; or
2. That the Administrator-General wrongly held that the fact that the goods for which the applicant in application No. 21362 sought registration
of its mark were in the same class of goods as those for which the opponents registered trade mark No.7755 was registered namely
Class 42, was not sufficient ground for refusing registration of the mark applied for.
3. That the Administrator-General wrongly held that the mark applied for was distinctive of the applicant’s goods in Fiji, although
at the time of the application such goods were not being sold in Fiji.’
At the hearing of the appeal counsel for the appellant drew the courts attention to the written submissions provided to the Administrator-General and complained that the decision did not address in any real way the substance of the objection taken on the basis of Section 10 of the Trade Marks Act Cap.240 which inter alia prohibits the registration of a trade mark `the use of which would, by reason of it being calculated to deceive or otherwise, be disentitled to protection in a court of justice
...’
As for the Section 18 argument, counsel essentially repeated what he had previously written to the Administrator-General namely :
`... the fact is that the applicant’s application for registration is in the same class viz. Class 42, as the class in which the opponent’s
mark is already registered. Edible oils and fats can be products of meat e.g. lard. Both goods are food products. As such the applicant’s
goods would be likely to be sold through the same wholesale and retail outlets as the opponents goods. The prominent feature of the
applicant’s application for registration is the words `PALM BRAND’ and these are the precise words of the opponent’s existing registration.
Bearing in mind the significant use of the opponent’s trade mark PALM BRAND in Fiji, it is submitted that if the applicant’s application
is granted, it is inevitable that members of the purchasing public in Fiji will be misled into believing that goods of the applicant
come from the same source as goods of the opponent or that at least there is a connection between the applicant’s goods and the opponent’s
goods.’
Counsel quite properly in my view, also complained about the misdirection on the `onus of proof’ on the Administrator-General’s part where he states with respect to the question of confusion : `I would have considered that argument to be of some significance had it been shown to me that (the appellant’s) Trade Mark 7755 protected a trade in `edible oils and fats’. Regrettably no such evidence has been adduced.’
For his part counsel for the respondent in seeking to support the Administrator-General’s decision highlighted the discretionary nature of the decision and submitted that this Court should only overturn the decision if
it was `clearly wrong’ , to adopt the words of Viscount Dunedin in George Banham & Co. v. F. Reddaway & Co. (1927) A.C. 406 at p.413.
In this regard I prefer however the view so clearly expressed by Latham C.J. in Jafferjee v. Scarlett [1937] HCA 36; (1937) 57 C.L.R. 115 when his lordship said, in rejecting a similar submission at p.119:
`This proposition does not accurately describe the functions of the court upon such an appeal ... Section 44(2) specifies the duty of the court upon an appeal [in words similar to our Section 13(6)]. These words show that it is the duty of the Court to decide the matter as upon an original application and not merely to decide
whether the decision of the registrar can or cannot be supported. ... The result is that the applicant before this Court is in the
same position as before the registrar, that is, the onus is on the applicant to show that, if his mark is registered, `there would
be no reasonable danger of the public being so deceived’ - to use the words of Lord Herschell in Eno v. Dunn (1890) 15 A.C. at 261. If the matter is left in dubio the application for registration should be refused.’
In similar vein Dixon J. said ibid at p.126 :
`I think the nature of the jurisdiction under ... the terms of the subsection show that the Court is to determine judicially whether
the application should succeed on the merits, and not whether an administrative officer has lawfully discharged his duties. Of course
weight will be given to the registrar’s opinion as that of a skilled and experienced person.’
In the course of his written submissions counsel subjected Section 18 of the Trade Marks Act to a close analysis separating it into its two (2) component parts or limbs and submitting that `the Registrar was perfectly entitled to hold that goods in the same class are not of the same description’.
Finally counsel drew the Court’s attention to the provisions of Section 13(9) of the Trade Marks Acts which empowers the Court, on an appeal, to permit the modification of the proposed trade mark before registration. In this instance
counsel suggested that the respondent’s trade mark might be confined to : `hydrogenated palm oil’.
So much for counsel’s submissions. I turn next to consider the relevant statutory provisions of the Trade Mark Act of which there are principally two (2) provisions, namely, Section 10 and Section 18.
Section 10 provides :
`It shall not be lawful to registrar as a trade mark or part of a trade mark any matter the use of which would, by reason of it being
calculated to deceive or otherwise, be disentitled to protection in a court of justice or would be contrary to law or morality or
any scandalous design.’
and Section 18 provides (so far as relevant) :
`Except by order of the court, ...., no trade-mark shall be registered in respect of any goods or description of goods which is identical
with one belonging to a different proprietor which is already on the register with respect to such goods or description of goods
or so nearly resembling such a trade-mark as to be calculated to deceive.’
It is sufficiently clear from a comparative reading of the two sections that there are common as well as different matters or elements
that need to be considered whenever either one or both sections are invoked.
In counsel for the respondent’s words : `Section 10 speaks for itself. It is clearly less rigorous in its approach than S.18' and appellant’s counsel : `S.18 makes reference to particular goods or description of goods whereas S.10 is broader in that it makes no reference (to goods).’
Furthermore Section 10 refers to `any matter’ forming part of a proposed trade mark and its proposed usage whereas Section 18 is more narrowly confined to the proposed `trade-mark’ and, in particular the goods or `description of goods’ in respect of which it is sought to be registered. Indeed Section 18 has two (2) discernible limbs one of which deals with `identical’ marks, and the other, with marks `so nearly resembling ... as to be calculated to deceive’ and both marks must be in respect of the same `goods or description of goods’. Both Sections however uses the expression `calculated to deceive’ as being the all-important offending characteristic.
Having said that however it is clear to my mind that despite the apparent commonality the sections are mutually exclusive, raising
different questions and requiring consideration of different evidential material.
This is clearly recognised in the joint judgment of the High Court of Australia in the leading case of Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty Ltd. (1953-54) 91 C.L.R. 591 where the Court, in rejecting the suggestion that once it has been established that goods are not `of the same description ‘ (under our Section 18) therefore the use of the trade-mark (under our Section 10) could not be likely to deceive said at p.607:
`Whilst conceding that the likelihood of deception is not as great where, in no sense, can it be said that an applicant’s goods are
the same or of the same description as those of an opponent, it is quite clear that the latter finding by no means disposes of the
relevant inquiry under (Section 10). To suggest that it does really confuses the nature of the inquiry which arises under (Section
18) for it is not sufficient in order to reach the conclusion that an applicant’s goods are of the same description as those of an
opponent, merely, to find that in the course of marketing there is a likelihood of deception taking place ; the enquiry is much more
limited and must be answered in favour of the applicant unless upon an examination of the material matters the conclusion is justified
that the applicant’s goods ought to be regarded as being of the same description as those of the opponent. This is far from saying
that if the evidence shows a probability or likelihood of deception such a conclusion would be justified. Indeed if it were not a
distinct and separate inquiry it would be impossible to reconcile the cases - ...... - in which it has been thought necessary to
consider the likelihood of deception not- withstanding a finding that the respective goods of the applicant and the opponent were
not the same or of the same description.’
More particularly in regards to a Section 10 objection, the relevant guiding principles are those so clearly outlined by Kitto J. in the Southern Cross case ibid at p.594-5 as follows (omitting citations of authority and separating propositions) :
`i) In all applications for registration of a trade mark, the onus is on the applicant to satisfy the Registrar (or the court)
that there is no reasonable probability of confusion.
ii) It is not necessary, in order to find that a trade mark offends against the section, to prove that there is an actual probability
of deception leading to a passing-off. While a mere possibility of confusion is not enough, there must be a real, tangible danger
of its occurring. It is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder
whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains
a reasonable doubt.
iii) In considering the probability of deception, all the surrounding
circumstances have to be taken into consideration. (This includes the circumstances in which the marks will be used, the circumstances
in which the goods will be bought and sold, and the character of the probable purchasers of the goods.)
iv) In applications for registration, the rights of the parties are to be determined as at the date of the application.
v) The onus must be discharged by the applicant in respect of all goods coming within the specification in the application ... of the
goods or class of goods in respect of which the registration is desired, and not only in respect of those goods on which he is proposing
to use the mark immediately. And the onus is not discharged by proof only that a particular method of user will not give rise to
confusion. The test is, what can the applicant
do if he obtains registration ?’
On the other hand the High Court of Australia in the Southern Cross case briefly referred in its joint judgment to the matters which require consideration in cases where it is material to consider
whether an applicant’s goods are the same as or `of the same description‘ as those of an opponent (i.e. in a Section 18 objection) when it said at p.606 :
`The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different
in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. ... There may be many
matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication
of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek’s Application. Romer J. thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but
also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in
Jellinek’s case (3) the Assistant-Comptroller elaborated on the observations of Romer J. in the following manner : “In arriving at a decision
upon this issue (i.e. whether or not goods are of the same description) the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics
of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the
same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class
or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the
same trade. In the case of Jellinek’s Application , Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels
through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasised that
the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are `of the same description’ : In re an Application by John Crowther & Sons (Milnsbridge) Ltd. Much the same considerations are evident in the observation of Dixon J. (as he then was) in Reckitt & Colman (Australia) Ltd. v. Boden when he said : “What forms the same description of goods must be discovered from a consideration of the course of trade or business.
One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course
of trade or business.’
To further illustrate the difference between the two Sections the relevant question which is raised by each section has been conveniently
identified by Evershed J. in Smith Hayden & Co. Ltd’s Application (1946) 63 R.P.C. 97 where his lordship said at p.101 of the U.K. equivalent of our Sections 10 and 18:
`The questions for my decision ... have been formulated, and I think accurately formulated, as follows :
(Under Section 10)
`Having regard to the reputation acquired by the (opponent’s trade-mark), is the court satisfied that the mark applied for, if used
in a normal or fair manner in connection with any goods covered by the registration proposed, will not be likely to cause deception
and confusion amongst a substantial number of persons ?’
and (under Section 18) :
`Assuming use by the opponent of its mark and device in a normal and fair manner for any goods covered by the registration of that
mark ... is the Court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number
of persons if the applicant also uses its mark normally and fairly in respect of any goods covered by its proposed registration ?’
Whatsmore in the only locally reported decision under the Trade Marks Act namely Parbhubhai Dalpatbhai Patel v. The Acting Registrar-General (1959) 7 F.L.R. 1 Knox-Mawer Acting J. in upholding the registrar’s rejection of an application to register a trade mark which had some common pictorial features albeit with different wordings, with an already registered trade mark said at p.2:
`Certainly there is one principle that does emerge from the English cases and that is how strictly the Registrar is required to act
when opposition is made to the registration of a new trade mark. An applicant is required to satisfy the Registrar on the very strongest
grounds that the trade mark for which he seeks registration is not likely to deceive.
The persons to be considered - are of course all who are likely to be purchasers of the goods, provided that such persons use ordinary
care and intelligence. In the instant case, it is common ground that amongst the main purchasers of the appellant’s goods will be
Fijian villagers some of whom will be unable to read.
Moreover, it is the principal characteristic or characteristics of the marks which must be considered. Two marks when placed side
by side may show various differences yet the main idea left on the mind by both may be the same.’
In similar vein in Australian Woollen Mills Ltd. v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 C.L.R. 641 Dixon and McTiernan JJ said in their joint majority judgment at p.658 :
`But, in the end, it becomes a question of fact for the court to decide whether in fact there is such a reasonable probability of
deception or confusion that the use of the new mark and title should be restrained.
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, the
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 observations of men considered
in the mass affords the standard. Evidence of actual cases of deception , if forthcoming, is of great weight.’
Bearing the above principles in mind and considering the evidence contained in the various statutory declarations provided by the
parties and the Statement of Agreed Facts, I am constrained to hold that the respondent (applicant) has failed to discharge the onerous burden placed on it of satisfying the
Court that there is no reasonable probability of confusion or deception in consequence of the use of its proposed mark.
In reaching that conclusion I am satisfied of the following:
(1) That the name or word `PALM’ either alone or in combination with `brand’ has come to be exclusively associated with the appellant’s products in this country ;
(2) That through its use and promotional activities the appellant’s trade mark has built up considerable goodwill in Fiji for its products
and captured a not insubstantial share of the market ;
(3) That even accepting that the visual representation of the respondent’s proposed mark is different from the appellant’s mark, nevertheless,
the wording of the respondent’s mark is not merely similar but is in fact identical to the appellant’s registered trade mark as is
its spoken form;
Lord Radcliffe in delivering the opinion of the Privy Council in de Cordova v. Vick Chemical Co. (1951) 68 R.P.C. 103 said at pp.105-106 :
`... a mark is infringed by another trader if, even without using the whole of it upon or in connection with his goods, he uses one
or more of its essential features ... A trade mark is undoubtedly a visual device ; but it is well-established law that the ascertainment
of an essential feature is not to be by ocular test alone. Since words can form part or indeed the whole, of a mark, it is impossible
to exclude consideration of the sound or significance of those words. Thus it has long been accepted that, if a word forming part
of a mark has come in trade to be used to identify the goods of the owner of the mark, it is an infringement of the mark itself to
use that word as the mark or part of the mark of another trader, for confusion is likely to result.
It is sufficient to refer to the words of Lord Cramworth L.C. in Seixo v. Provezende (1866) L.R.1 Ch.192 at 197 : ... The likelihood of confusion ... 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 orders for goods with both the marks clearly before him, for orders
are not often placed, under such conditions. 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.’
In the instant case it is plain that the word(s) `PALM’ (BRAND) must be considered an essential feature or `significant detail’ of the appellant’s mark, since it is the whole of the mark such that a verbal request or a phone or written order for the respondent’s
products would be made by reference to the appellant’s entire registered trade mark (not just `Palm’) without any mention of the respondent’s pictorial representation viz. `PALM brand oil, please’.
As was said by Gummow J. in Johnson & Johnson v. Kalnin and Another (1993) 26 I.P.R. 435 (loose volumes) in allowing the appeal and upholding the opposition to the grant of the respondent’s trade mark `BAND>> IT’ on the basis that the mark would be confused with the appellant’s prior registered trade mark `BAND-AID’, at p.441 :
`I am impressed by the presence in each mark of the common first element `Band’ and by the joinder of the two elements by a hyphen
or chevron device. It is true that the second elements, `Aid’ and `It’ differ but the comparison must be between the marks as a whole.
Also weight has to be given to the operation of the so-called doctrine of imperfect recollection ... the process of perception and
recognition of a word invokes not so much the reading of the entire word or, in this case, the compound expressions ... but the seeing
and identification of certain features which are then matched to that which is contained in the memory, so that the word then is
recognised. It is that process which is liable in the present situation to lend persons into error.’
(4) Even accepting the difference sought to be drawn in the respondent’s written submissions before the Administrator-General as to the nature and usage of the goods namely, that the `... opponents goods of meat and meat products including canned meat are used for human consumption while the applicant’s goods of
edible oils and facts are used for cooking’, there can be no denying that both are within the same Fiji classification of goods for trade mark purposes, namely, Class 42, and both are undoubtedly fairly common inexpensive grocery items stocked on supermarket shelves throughout Fiji and purchased by ordinary
consumers who would not take the time or care in selecting and examining such everyday items before purchasing them and relying instead
on the long-standing reputation of the appellant as the producer of a quality product marketed under its `PALM BRAND’ trade mark.
Whatsmore `edible oils and fats’ (the respondent’s description of goods) can be products of meat e.g. lard and dripping both of which products although not so common today, with society’s health conscious low-fat dietary regime, are
and were used extensively in cooking such as frying and baking in years past.
In Re Application by Jonsered Motor Akriebolag (1993) 27 I.P.R.267 (loose volumes) T. Williams (Hearing Officer) in refusing the application to register the single word `Jonsered as a trade mark where there was a pre-existing trade mark that contained the same word registered in the same class, said at p.270 :
`... the word `Jonsered’ being an unusual element in the cited mark and the entire of the applicant’s mark, I find that the two marks
are deceptively similar. That being so, I turn to consider the goods of the two claims.
The cited mark is registered for `machines and machine tools for the word working industry’. Are those goods of the same description
as `power-operated saws and parts and fittings in this class for such goods’ ? Mr. Stevens stressed the fact that the goods covered
by the earlier registration are for use in wood working, and would as such exclude chain saws. They were he argued, specifically
for use in carpentry, joinery and turning. The applicant’s goods on the other hand were argued to be specific outdoor-use power tools. [cf : in this case counsel’s distinction between `cooking’ and `direct consumption’] However, the demarcation which Mr. Stevens makes is somewhat artificial, in that the goods of the earlier registration are not merely
tools for the fine work of cabinet makers and the like, they would include tools such as petrol-powered auger’s ... intended only
for outdoor carpentry use on timber bridges, in mines and the like. ... Even chainsaws, as small domestic petrol and electric models
are released, are starting to make inroads in rough carpentry, and are used by wood turners in preparing and sectioning timber for
subsequent turning operations on a lathe.’
Then later in applying the standard three (3) prong test of `nature, uses and trade channels’ to `chainsaws’ (the applicant’s goods) and `machine tools for the wood working industry’ (the opponent’s category of goods) the hearing officer said at p.271 :
`Nature is the particular combination of qualities belonging to a thing by constitution : Macquarie Dictionary. The nature of the
two sets of goods is in some instances essentially the same : both sets include goods which will embody motors ... [The same can be said of the present case which involves `food items’.]
In determining the use of the goods it is appropriate to ask if they are arguably approximate substitutes or used for the same immediate
purpose. It is not likely that a circular saw will be used to fell trees but, as I have said, the chainsaw is moving into the workshop.
Both sets of goods are in any case used for cutting wood, and this is sufficient to show that they are being used for the same purpose,
be it in the workshop or elsewhere. [Similarly in the present case both items are `consumables’.]
Again there is a clear overlap in trade channels. Chainsaws may in some instances be sold by retail outlets that specialise in lawnmowers
and other items of outdoor equipment, but the two sets of goods have common producers and are retailed together in the power tool
sections of hardware stores and department stores. [Again and here it is common ground that the items are common supermarket grocery items.]
My conclusion is that the applicant’s goods, even if restricted to chainsaws, are goods of the same description as `machines and machine
tools for the wood working industry’.’
Whatsmore as was said by Mason J. in Berlei Hestia Industries Ltd. v. Bali Co. Inc. [1973] HCA 43; (1973) 129 C.L.R 353 in supporting the expunction of the respondent’s trade mark from the register, at p.362:
`... the question whether there is likelihood of confusion is to be answered, not by reference to the manner in which the respondent
has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that (proper future) use would give rise to a real danger of confusion.’
In the present case should the appellant company apply its existing trade mark to cooking oils and fats derived from animal products
as it is fairly and properly entitled to under its existing class of registration, and should the respondent be allowed to trade
using its proposed trade mark, then there is not the slightest doubt in my mind that there would be a real danger of confusion amongst
ordinary consumers.
(5) Granted the absence of any evidence of actual confusion, I am firmly of the view that an ordinary supermarket shopper in
Fiji, who is likely to have some familiarity with the appellant’s trade mark and products, if faced with a new product bearing exactly
the same wording as the appellant’s trade mark on its label albeit now with a `tropical get-up’ , is likely, to draw the not unreasonable but entirely erroneous conclusion, that the appellant company has not only branched out
into a new and related product line but also acquired a new get-up whilst retaining its traditional trade mark.
In R & C. Products v. Sterling Withrop Pty. Ltd. (1993) 27 I.P.R. 223 (loose volumes) Beaumont J. in restraining the use of the mark `PINE ACTION’ in a claim by the registered proprietor of the trade mark `PINE-O-CLEEN’ said at p.227 :
`In my opinion, the method adopted by the respondents for the presentation of their new product is likely to lead consumers to believe
contrary to the fact, that a connection exists between that product and the applicant’s product. Several factors point, I think,
to this conclusion.
First, the name `PINE-O-CLEEN’ ... carried with it a strong and well-established goodwill. Secondly, the respective products are competing
in exactly the same field of activity. Thirdly, the word `PINE’, as the first word of the applicant’s brand name, figures very prominently
in the respondent’s presentation ... Next it should be borne in mind that, because these are inexpensive products ... and usually
sold in supermarkets, it is reasonable to expect that consumers would not carefully study the labels on these products - it is more
likely that the decision to buy this kind of product would be made quickly - so that the first impression of the consumer are likely
to be important.’
With all due respect to counsel for the respondent, the distinctions and differences that he seeks to draw, in relation to the nature
and respective uses of the appellant’s and respondent’s goods and the trade channels through which the goods are manufactured, bought
and sold ,are pedantic refinements of a kind that is unlikely (if ever) to cross the mind of the average non-tertiary educated supermarket
shopper in this country.
The appeal is allowed with costs. The opposition of the appellant to the grant of registration for the respondent’s trade mark No. 20362 is upheld. The respondents should pay the appellant’s costs of the proceedings in this Court and of the opposition before the Administrator- General which are summarily assessed at $1,000.00.
D.V. Fatiaki
JUDGE
At Suva,
3rd April, 2000.
HBM0061J.
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