Cooper Engineering Co
Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15
HIGH
COURT OF AUSTRALIA
DIXON, WILLIAMS AND KITTO JJ
THE
COURT:
This
is an appeal by Cooper Engineering Co. Pty. Ltd. from a decision of the
Registrar of Trade Marks dismissing its opposition to the granting of an
application by the respondent, Sigmund Pumps Limited, for registration as the
proprietor of a trademark consisting of the word "Rainmaster" in Class
7 in respect of water spraying installations for horticultural and agricultural
purposes and parts thereof. The appellant has been since 27th January 1934
registered as the proprietor in the same class of the word "Rain
King" in respect of spray nozzles, sprinklers and their parts. Since this
date the appellant has used and advertised this trademark extensively on its
spray nozzles and sprinklers and has built up a substantial business in these
articles. It contends that the respondent's application to register the word
"Rainmaster" as a trademark should be refused because registration is
sought in respect of the same description of goods and so nearly resembles the
appellant's trademark as to be likely to deceive (s. 25 of the Trade Marks Act
1905-1948) or alternatively that it should not be registered because it is a
mark the use of which would be likely to deceive (s. 114 of the Act). The
meaning of ss. 25 and 114 of the Act was discussed in Lever Bros. Ltd. v.
Abrams (1909) 8 CLR 609 , and it is there said that s. 25 is intended to
protect one trader or one trademark against another trader or another
trademark, while s. 114 is intended to protect the public from being deceived
by the use of confusing marks. Section 114 is wider than s. 25 as it applies to
cases where the goods are not of the same description and to cases where the
mark is objectionable on grounds other than that it is likely to deceive. But
these differences are immaterial in the present case as it is admitted that the
respondent's goods are goods of the same description as the appellant's goods,
and the sole question is whether the word "Rainmaster" so resembles
the word "Rain King" as to be likely to deceive.
The proper approach to the answer to this question is well settled. It was
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, in a passage appearing on p 777 , "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 a
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." To the same effect see Australian Woollen Mills Ltd. v. F.S. Walton
&Co. Ltd. (1937) 58 CLR 641, at p 658 ; Reckitt &Colman (Aust.) Ltd. v.
Boden (1945) 70 CLR 84 , in this Court. It is sufficient if persons who only
know one of the marks and have perhaps an imperfect recollection of it are
likely to be deceived: Aristoc Ltd. v. Rysta Ltd. (1945) AC 68, at p 86 . The
onus of proving that there is no reasonable likelihood of deception lies upon
the applicant for registration. If the question is left in dubio the
application must be refused: Eno v. Dunn (1890) 15 App Cas 252, at p 256.
3. In the present case the prefix of the two words is the same word
"Rain", but the suffix "master" differs from the suffix
"King" in appearance and in sound. This makes the two marks as a
whole quite distinct and the marks must be judged as a whole.
"Rainmaster" does not look like "Rain King" and it does not
sound like it. There is not a single common letter in master and in King. The
two words are so unlike to the eye and to the ear that counsel for the
appellant was forced to rely on the likelihood of deception arising from the
two words conveying the same idea of the superiority or supremacy of the
article as a mechanism for making a spray similar to falling rain or artificial
rain as it was called during the argument. But it is obvious that trademarks,
especially word marks, could be quite unlike and yet convey the same idea of
the superiority or some particular suitability of an article for the work it
was intended to do. To refuse an application for registration on this ground
would be to give the proprietor of a registered trademark a complete monopoly
of all words conveying the same idea as his trademark. The fact that two marks
convey the same idea is not sufficient in itself to create a deceptive
resemblance between them, although this fact could be taken into account in
deciding whether two marks which really looked alike or sounded alike were
likely to deceive. As Lord Parker said in the passage cited, you must consider
the nature and kind of customer who would be likely to buy the goods. A
purchaser of spray nozzles and sprinklers would not be likely to be lacking in
discernment. He would not be in a hurry to buy. He would not be likely to pay
any attention to the presence of a common word like rain in the conbination.
That prefix already appears in other trademarks for goods of the same
description sold on the Australian market such as Rainwell, Rainmaker, Rain
Queen, and Rainbow. The learned registrar was right in holding that the only
similarity between the two marks is the common prefix "Rain" and that
this similarity is not sufficient to create a reasonable likelihood of
deception when the remaining portions of the marks are so different.
The
appeal should be dismissed.