The opposed trade mark covered some electronic equipment and also sunglasses, which is a bit odd. Also, Zhang Yimin, the holder of the international registration, was nowhere to be found.
Zeiss relied on two of its registered marks. These were 502566 for HYPAL covering "Spectacle lenses, including tinted lenses and such lenses made of plastics material" and SKYPOL covering "Optical apparatus and instruments; spectacles, spectacle lenses".
Most of the case deals with a comparison between SKYPAL and SKYPOL. According to section 44(1) of the Trade Marks Act, an application must be rejected if the applicant's mark is "substantially identical with, or deceptively similar to" a trade mark registered by another person in respect of similar goods or closely related services.
In this case the Delegate found that "sunglasses" are "similar to" the goods listed in the Zeiss registrations. Romer J. in Jellinek's Application said that the question of similar goods requires a consideration of the nature, use and trade channels of the respective sets of goods or services. The Delegate said that sunglasses are simply spectacles designed for glare or sun protection. There was no doubt that the similarity requirement was met.
Comparing the marks, he found that SKYPOL was not substantially identical with SKYPAL. Substantial identity requires a side-by-side comparison. The difference between POL and PAL is obvious.
Five principles form the basis of the deceptively similarity test (Registrar of Trade Marks v Woolworths (1999) 45 IPR 411):
i) It is necessary to show a real tangible danger of deception or confusion
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 products come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
iii) All the surrounding circumstances have to be taken into consideration.
iv) The rights of the parties are to be determined as at the date of the application.
v) 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.
The Delegate made the point that where particular care is likely to be taken such as at the top end of the market, the visual and aural differences between the marks may be sufficient to diffuse any likelihood of confusion. However, in this case the goods would include goods across all styles and price ranges. Shopping would take place via busy shopping environments or the Internet. In those circumstances, the minor differences between the marks would be unnoticed. So he held that the marks were deceptively similar as far as sunglasses were concerned.