TRADE MARKS ACT 1955 DECISION OF A DELEGATE OF THE REGISTRAR OF - Download Now PDF by fionan

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									TRADE MARKS ACT 1955 DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS Re: Trade mark application numbers 624732(31), 624733(35), 631075(31), 631076(35) and 631077(42) in the name of TELEFLORA (AUSTRALIA) INC.

This decision deals with the registrability of five trade marks filed in the name of Teleflora (Australia) Inc, an incorporated association of 5-7 Market Street, Nunawading, Victoria. Details of the marks are as follows: 624732(31)
TELEFLOWER

Live plants, live flowers, horticultural products, arrangements of live plants, arrangements of flowers and other horticultural products, and all other goods in this class. Business and advertising services including services relating to floral and plant supply and distribution and the provision of clearing house.

624733(35)

TELEFLOWER

631075(31)

Live plants, live flowers, horticultural products, arrangements of live plants, arrangements of flowers and other horticultural products within this class, and all other goods.

631076(35)

Business and advertising services including services relating to the provision of clearing house.

631077(42)

Floral

and

plant

supply

and

distribution.

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The word appearing above the globe and dove devices in these pictorial marks is TELEFLOWER as per the larger reproduction below. Applications 624732(31) and 624733(35) were filed on 14 March 1994 and 631075(31), 631076(35) and 631077(42) were filed on 30 May 1994. I will refer to this group of applications as the TELEFLOWER applications.

In the course of examination, four trade marks were variously cited against the TELEFLOWER applications, and objections were raised under the provisions of section 33 of the Trade Marks Act. The cited marks, of which all are in the name of Roll International Corporation, and do not incorporate a pictorial device are as follows A203521(31) A328724(35)
TELEFLORIST TELEFLORIST

Live flowers and live plants Rendering clearing house services to subscribing florists for sale of flowers at near and distant locations Containers in this class including containers for flowers, baskets, water containers, watering equipment and all other goods in this class Business services including clearing house services.

A438960(21)

TELEFLORA

A564935(35)

TELEFLORA

I will refer to this group of marks as the cited marks.

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On 14 October 1994, the matter came to hearing before me in Canberra. Mr B J Hess of Counsel appeared for the applicant. He was assisted by Mr Cameron Harvey of the Melbourne firm of Coltmans.

At commencement of proceedings Mr Hess handed me a statutory declaration from Ms Ann Grey. She is an Executive Director of the applicant, Teleflora (Australia) Inc. Ms Grey deposes that Teleflora (Australia) Inc. is a non-profit association of some 670 member florists. She states that Roll International Corporation, the proprietor of the cited marks, was previously a member of this association and was expelled from membership. Mr Hess drew my attention to these statements and indicated that actions and cross actions under sections 22 and 28 of the Trade Marks Act and sections 52, 53 and 55 of the Trade Practices Act were being contemplated. None of these matters are relevant to the present hearing. I note Mr Hess's acknowledgment of this, and will make no further reference to Ms Grey's declaration.

Mr Hess then commenced his submissions with argument that the goods and services of the cited trade marks are not sufficiently close to the goods and services of the TELEFLOWER applications to sustain all citations. He acknowledged that in relation to each of the subject applications, at least one of the citations coincided with the nominated goods or services. It follows that the substantive question I am to address is the coincidence between the marks. However, I consider it worthwhile to decide, at the outset, the scope of the citation objections as determined by the goods and services claimed in the TELEFLOWER applications.

Sub-sections 33(1) and (2) of the Trade Marks Act read (1) Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, of goods of the same description as those goods or of services that are closely related to those goods, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark. (2) Subject to this Act, a trade mark is not capable of registration by a person in respect of services if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in

[4] respect of the same services, of services of the same description as those services, or of goods that are closely related to those services, unless the date of registration of the first mentioned trade mark is, or will be, earlier than the date of the registration of the second-mentioned trade mark. In view of Mr Hess's agreement with at least one section 33 citation against each of the TELEFLOWER applications, the question of whether the goods and services of the TELEFLOWER applications are the same, or the same description, or are closely related to the goods and services of the cited marks, can be treated quite briefly.

The goods and services as per the section 33 objections First, the two class 31 TELEFLOWER applications, 624732 and 631075 both nominate live plants, live flowers, horticultural products, arrangements of live plants, arrangements of flowers and other horticultural products in this class, and all other goods in class 31. These goods overlap with live flowers and live plants, the goods of the class 31 citation A203521. Further, live plants and flowers are the subject of the services concerned in the provisions of the class 35 services of clearing houses for florists nominated in citation A328724 and encompassed under clearing house services in citation A564395. On the other hand, applying the well known tests developed in the "Panda" case, Jellinek's Application 63 RPC 59, it is evident that the goods nominated under class 21 citation, A438960 - containers for flowers, etc. . . . are not of the same nature as in class 31 goods, do not pass through the same trade channels, are not normally or naturally bought by the same persons.

I find that, as far as the goods and services are concerned, only the class 31 and 35 citations hold up against the TELEFLOWER class 31 applications of 624732 and 631075 .

Second, the two TELEFLOWER applications in class 35, 624733 and 631076, both specify business and advertising services including services relating to the provision of clearing house services. 624733 specifically nominates these services as relating to floral and plant supplies. 631076 has a broader statement encompassing these same services. Parallel to my findings in the previous paragraph, I find these class 35 services sufficiently close to the goods and services of the class 31 and 35 citations, to justify a section 33 objection. Again, however, relying on the "Panda" principles I find the goods of the class 21 citation are not closely related to these services, and maintenance of the class 21 citation, A438960(21) is therefore not warranted.

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Third and last, the class 42 TELEFLOWER application nominates floral and plant supply and distribution. These services are very close to the services provided through florist and plant clearing house of the class 35 citations. Further, the live flowers and plants in class 31 are a necessary part of this service. The trade channels are the same , and the services are likely to be employed by the same people. Again, however, and per the "Panda" test, the container and equipment in class 21 do not seem to me to constitute goods which are closely related to these services.

I agree with Mr Hess, therefore, that the citation of the class 21 mark, A438960(21) cannot be maintained. However, as far as the coincidence between the goods and services are concerned, I find that all the TELEFLOWER applications are in conflict with the remaining citations raised at examination. In brief, the cited trade marks, A203521(31) TELEFLORIST; A328724(35) TELEFLORIST; and A564935(35) TELEFLOWER each obtain as objections against all five of the subject TELEFLOWER applications.

Substantial identity and deceptive similarity as per the section 33 objections It now falls to me to compare the two marks of the five TELEFLOWER applications, that is, the word TELEFLOWER solus, and the TELEFLOWER device marks which feature the dove and globe pictorial device - with the marks constituting the citations, namely TELEFLORIST and TELEFLORA .

I will first consider the conflict between TELEFLOWER and TELEFLORIST; second, the conflict between TELEFLOWER and TELEFLORA; and third, I will consider the TELEFLOWER device marks against TELEFLORIST and TELEFLORA.

First - TELEFLOWER and TELEFLORIST: comparing these marks side by side as I am required to do in order to determine whether or not they are substantially identical, The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited, 109 CLR 40, I note that the words both commence with the same prefix tele, both contain a suffix commencing with the letters flo, are both words of similar length (TELEFLOWER has 10 letters and TELEFLORIST has 11) and both convey a similar idea. However, flower and florist are two very ordinary English words. They are in common use and command, I should think, almost universal understanding. They are words which even young children can comprehend and are capable of using. The fact that these two common words occur as a major constituent in each of the two marks distinguishes them in meaning, pronunciation

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and appearance. Comparing TELEFLOWER and TELEFLORIST side by side, I find then that the differences are clearly perceptible and that they are not substantially identical.

The question of deceptive similarity brings in the wider consideration of whether, in the absence of a side by side comparison, ordinary people, with ordinary memories, will be likely to be confused between the words TELEFLOWER and TELEFLORIST . Mr Hess referred me to many of the famous cases concerned with this question, and of these the directions summed up by Lord Parker (then Parker J.) in In the Matter of an Application by the Pianotist Company Ltd. for the Registration of a Trade Mark (1906) 23 RPC 774 at 777, provide the essentials:

"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. If, considering all those circumstances, you come to the conclusion that there will be confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods - then you may refuse the registration, or rather you must refuse the registration in that case."

The words TELEFLOWER and TELEFLORIST are similar in the respects I have already noted. They share a common prefix, their second element commonly commence with the letters flo, they are words of almost equal length, and they share a common idea. Flower and florist as I have noted are common words. The potential for confusion most relevant here, however, is recognised as the doctrine of imperfect recollection ... the concern that the persons who will be availing themselves of these goods and services will, in the absence of a side by side comparison of the marks, be confused in recollecting the one mark when, in the process of purchasing goods, or ordering a service, they are confronted only by the other. People from all walks of life purchase flowers and employ the services of florists. Some may do so on a regular basis and indeed develop expertise and experience as consumers. Many more, however, purchase these goods and use these services on an infrequent basis. They are not likely to develop expertise in the trade or a high level of consciousness of the

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traders and their respective trade marks. Flowers may not be quite in the 'bag of sweets' category, but they are not in that range of goods where deeply considered investigations are undertaken prior to purchase. Turning to the services of clearing houses for florists and the dispatch of flowers to near and distant locations, it seems likely that use of these services will mainly be traders within the florist industry. Again, however, it is plainly the case that many flower sellers are very small businesses - market vendors, holder of road-side stalls operating on small financial outlays with a relatively limited specialist or technical knowledge of the industry. Taking these matters into account I consider that there is indeed a real likelihood that the many points of similarity between the words TELEFLOWER and TELEFLORIST are likely to lead to confusion among a significant number of ordinary consumers who (in the main) will be the purchasers of the florist goods; and among the vendors who are likely to be the users of the clearing house services and the florist supply and distribution services.

Second, I turn to the comparison between the words TELEFLOWER and TELEFLORA. On the question of substantial identity, it is apparent that there are greater differences between these words than between TELEFLOWER and TELEFLORIST. TELEFLORA is a shorter word, and the second element, as Mr Hess stressed, is a word that may be regarded as Latin. In any case, the construction of TELEFLORA heightens at least some of the differences considered in the comparison between TELEFLOWER and TELEFLORIST. So here too I find, in a side by side comparison, that TELEFLORA and TELEFLOWER are not substantially identical. In the matter of deceptive similarity between TELEFLOWER and TELEFLORA, I continue to rely on the tests formulated by Lord Parker in "Pianotist" (supra). The analysis of the surrounding circumstances in the comparison of TELEFLOWER and TELEFLORIST are, for the most part, unchanged from the comparison of TELEFLOWER and TELEFLORA. The similarity of TELEFLOWER with TELEFLORA in some ways, is not so strong as it is with TELEFLORIST, but in other ways it is stronger. TELEFLOWER and TELEFLORA share the same prefix, and both second elements commence with the letters flo and resemble each other in pronunciation. The words flower derives from the same Latin root as flora, and the flower and flora and in their normal English usage (flower meaning the blossom of a plant; and flora meaning pertaining to flowers - The Macquarie Dictionary) not only convey the same idea, but can operate interchangeably as synonyms.

Mr Hess referred me to Cooper Engineering Company Proprietary Limited v Sigmund Pumps Limited (the " Rainmaster" case) (1952) 86 CLR 536 at 538: wherein the High

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Court per Dixon, Williams and Kitto JJ, found that RAINMASTER and RAINKING were not deceptively similar marks. I do not think that this case established a precedent for accepting that TELEFLOWER and TELEFLORA are not deceptively similar. There are clearly many differences between -master and -king which do not exist between -flower and -flora. Phonetically master and king are not similar. The respective meanings are very different (although perceptively there may be a sharing of ideas) and their derivations have no apparent connection. Further, the goods concerned in the "Rainmaster" case consisted of expensive irrigation equipment which would be bought only on careful enquiry into the market and very frequently by those with a high level of technical knowledge of irrigation equipment. Comparison of the marks TELEFLOWER and TELEFLORA does not disclose any of these saving circumstances. On the contrary, it demonstrates a strong similarity between two marks which are to be used on goods and services that are frequently purchased casually or without specialist knowledge or evaluation. I am satisfaction that there is a strong likelihood of confusion arising between these two words. I find in respect of the class 31 and 35 citations that TELEFLOWER and TELEFLORA are deceptively similar.

Third, I must compare the device marks of applications 631075(31), 631076(35) and 631077(42), to TELEFLORA and TELEFLOWER. As shown in page 2 of this decision, these device marks consist of a pictorial element of a bird (described by Mr Hess as a dove) carrying a flower in its beak, and swooping in front of a representation of the globe. Above these elements is the word TELEFLOWER.

Unmistakably this mark is not substantially identical with either of the trade marks consisting solely of the words TELEFLORIST or TELEFLORA.

On the question of deceptive similarity, however, I have found TELEFLOWER, the word that surmounts the device, deceptively similar to both TELEFLORIST and TELEFLORA. The device element in 631075(31), 631076(35) and 631077(42) is clearly predominant but I think it is clear that the word that appears in the mark will undoubtedly operate as the reference by which these device marks are denominated. I therefore consider that inasmuch as I have found that there will be confusion between TELEFLORIST and TELEFLORA, and the words TELEFLOWER, there will be similar confusion with device marks that exhibit the single word TELEFLOWER.

Decision

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I have found that the trade marks TELEFLOWER and the device marks which feature this word are deceptively similar to trade marks TELEFLORIST and TELEFLORA. I have also found that the goods and services of the applicant's classes 31, 35 and 42 applications are the same goods or services, goods or services of the same description, or closely related goods and services, as the goods and services of the cited trade marks A203521(31), A328724(35), and A564935(35). The applicant's marks are hence in conflict with the provisions of section 33 of the Act and are not qualified for registration.

I therefore refuse trade mark applications numbers 624732(31), 624733(35), 631075(31), 631076(35) and 631077(42).

Helen R. Hardie Deputy Registrar 23 November 1994


								
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