AAP Information Services v Aaaaa All Auto Parts Pty Ltd

[1999] ATMO 37

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by AAP Information Services to registration of trade mark application 728848 in the name of AAAAA All Auto Parts Pty Ltd

Application 728848 was lodged on 28 February 1997 by AAAAA All Auto Parts Pty Ltd (the applicant), for registration of the trade mark appearing below:

The application seeks registration in respect of the following goods and services:

Class 12 
Motor vehicle components in this class; spare parts for motor vehicles; parts and fittings for vehicles including automobiles; motor vehicle accessories

Class 37 
Advisory services in respect of sourcing of motor components; advisory services in respect of spare parts for motor vehicles; repair, installation, renovation maintenance services in connection with machines and vehicles

The application was advertised in the Official Journal as accepted for registration on 21 August 1997.  On 21 November 1997, notice of opposition was lodged by AAP Information Services Pty Ltd (the opponent).

The opponent and applicant served their evidence in support and evidence in answer as allowed by the Act and regulations.  There was a hearing of the issues before me in Sydney on 10 March 1999.

The evidence in support consists of a statutory declaration by Peter James Robson, Company Secretary and General Counsel of the opponent, with Exhibits A - EE.  It evidences the use of the opponent's trade marks in Australia. The evidence in answer consists of a statutory declaration by Peter Chamberlayne Dummer, patent and trade mark attorney for the applicant.  This evidence shows the alleged mode of use of the opponent's trade marks in Australia.

The opponent was represented by Richard Cobden of counsel, instructed by Gilbert & Tobin, solicitors, of Sydney.  The applicant was represented by Michael Green of counsel, instructed by Wallington Dummer, patent attorneys of Sydney.

As the opposition was argued in terms of sections 43, 44 58 and 60 of the Trade Marks Act 1995 (the Act) at the hearing, I will confine my discussion of the submissions, the evidence and my reasons to those headings.

Section 44
This section of the Act allows, inter alia:

44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a)the applicant's trade mark is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)        the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

(a)it is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)   the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

The initial question under section 44 is whether the opponent's trade marks are substantially identical, or, alternatively, deceptively similar to the applicant's trade mark.

The opponent has a number of registered trade marks which may be classified, for ease of reference, into:

(Type One)

(Type Two)

 

There are also some registered word marks owned by the applicant, such as AAP FAX and AAP PULSE, which I will refer to as the 'Type Three' trade marks.

The test for substantial identity is the classical direction by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, at 414, that:

In considering whether marks are substantially identical, they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

Recently, in the Federal Court, Blount Inc v Registrar of Trade Marks [1998] 440 FCA Branson J. noted that:

I do not think that the use of upper-case letters, and the oval device surrounding the word Oregon are sufficient to take the applicant's trade mark outside of the ambit of the observation set out above of Kitto J in the Bayer Pharma Case. These aspects of the trade mark, whether viewed singly or together, are not, in my view, sufficiently distinctive to give the trade mark a significance other than its ordinary geographic significance or its significance in respect of a particular kind of timber.

Additionally, section 7(2) of the Act allows:

(2) To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.

I consider that, in view of Branson J's comments in Blount, supra, that I should regard the trade mark which is the subject of this application as consisting of the letters AAP.  I also reach this conclusion because, in terms of section 7(2) of the Act, it is most unlikely that it would be aurally represented in any other way.  The elongation of the vertical stroke of the letter 'P' in the mark amounts to mere embellishment.

As regards the opponent's Type One trade mark, I do not think that this is substantially identical to the opposed trade mark.  It is not initially obvious that it comprises the letters AAP and those letters are a significant variation from normal font.  It is probably fair to observe that the greater the variation from normal font in a 'letter' trade mark, the greater the likelihood that the trade mark will not be seen as conferring rights in the letters, per se.  With the Type One trade mark, I do not believe that it is obvious that it will automatically be represented aurally as AAP.

With the Type Two trade mark, above, I consider that, while it does not have a complete identity with the opposed trade mark, it is substantially identical to it.  The device portion is a very minor part of the trade mark and adds nothing to the overall distinctiveness of the trade mark and will, in all likelihood, be seen as a minor embellishment.  The font is a normal one and the trade mark will be referred to as AAP.  This being so, the aural representations of the trade marks are identical.

On the subject of deceptive similarity, Windeyer J in Shell Co, supra, went on to say:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is the question. 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 the familiar one of trade mark law. It 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 impression that such persons would get from the defendant’s television exhibitions.

On this basis, I think that the opponent's Type One trade marks, and its Type Three trade marks - the word trade marks, are deceptively similar to the applicant's trade mark.

Mr Cobden, at the hearing, drew my attention to the very broad range of digital communications equipment that may now be installed in motor vehicles.  This includes satellite navigation equipment, computerised mobile-office equipment, telecommunications equipment and so on.  This, suggested Mr Cobden, is within the ambit of the opponent's Class 9 registrations for goods and its Class 38 and 42 registrations for services.  For the sake of brevity, I include only the specifications of the opponent's Type Two registrations:

Class 9
Magnetic data carriers, recording discs, apparatus for recording, transmission or reproduction of sound or images, calculating machines and data processing equipment

Class 38
Communications services, data and information dissemination services, communications services provided through microwave, satellite and terrestrial links, including transmission of news, data and pictures and switched and point-to-point intelligent networking services for voice and data

Class 42
Maintenance services in this class including computer software maintenance, computer programming and rental and data processing and data storage retrieval services

The tests for goods of the same description are those in re an Application by John Crowther & Sons (Milnsbridge) Ltd. (1948) 65 RPC 369, at 372:

In arriving at a decision upon this issue 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 (1946) 63 RPC 59, 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 emphasized 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 the application of the above criteria to the applicant's goods, "Motor vehicle components in this class; spare parts for motor vehicles; parts and fittings for vehicles including automobiles; motor vehicle accessories", and those goods and services of the opponent, above, I think that there is little doubt that these goods and services are not closely related or of the same description.  In my experience, it is not normal for the makers of the automotive components that fall in Class 12 to make the kinds of equipment nominated on the opponent's class 9 registration.  There was no evidence before me to show that this is otherwise.  While it is true that a great deal of digital equipment might be fitted in automobiles, it is made by people other than automobile manufacturers; arrives on the market via different trade channels; and, is available in shops in different areas.  I believe that, while it is true that some digital electronic equipment might be fitted to cars as standard equipment, this is not normally made by automotive manufacturers, or understood by the public to have been made by them.

Additionally, as regards the applicant's services in Class 37, I think that, with one exception, a similar situation exists.  The applicant's services are, 'Advisory services in respect of sourcing of motor components; advisory services in respect of spare parts for motor vehicles; repair, installation, renovation maintenance services in connection with machines and vehicles'.  On the other hand, with respect to the opponent's services, they must be read as including all 'information dissemination services' in Class 35.  However, information services that relate to sourcing of spare parts or motor vehicle components should, I think, be in Class 37.  As far as I am aware, there are no information dissemination services in Class 35 which concern motor vehicle parts or components, even though some of the people receiving the opponent's information service might be in that line of business.  Accordingly, when the opponent's Class 35 specifications are read at their widest, as per Smith Hayden & Co Ltd's Application (1946) 63 RPC 97, I do not think that they include services which are closely related to either the goods or the services of the applicant.

But, I believe that, in considering the opponent's Class 9 specification in relation to the applicant's Class 37 services, as far as they read, 'repair, installation, renovation maintenance services in connection with machines', it is appropriate to consider the criteria in Aussat (1993) 27 IPR 309 where, as delegate of the Registrar, I said:

I believe that the tests must lie in the adoption of criteria similar to those oft quoted from Re John Crowther & Sons (Milnsbridge) Ltd’s Appn (1948) 65 RPC 369 at 372 adopted by the High Court in Reckitt and Colman (Aust) Ltd v Boden (1945) 70 CLR 84 at 94. I believe that these criteria should include:
• are the services performed directly upon or by means of the goods? if so,
• are the goods and services generally regarded by the ordinary consumer as originating in, or being part of, the one industry or trade, or, a closely related trade or industry?

In consideration of the latter point some guide-lines might be suggested and I stress that these are not in any particular order of priority:
• are the goods and services of matching technical complexity?
• is the technical training of the people who make the goods or provide the services the same?
• do the people who make the goods or provide the services belong to the same unions or associations?
• are there personnel who are implicit in the provision of the service, or a necessary ancillary to the provision of it, who are viewed by the ordinary person as having the essential expertise in common to the provision of either the goods or services? (For example, in “vehicle hire services” and the goods “cars”, there are the ancillary personnel common to both, such as car detailers, mechanics, salespersons, credit checkers, and so on which give both the same flavour).
• do the goods usually have this service as a related service agreement or package? For instance, it would be most unusual for a person buying a very expensive piece of machinery not to enter some sort of service agreement. Conversely, are the goods usually offered as part of a service agreement?
• is the nature of the goods or the service such that they would cease to exist without each other, thus creating an expectation of a common source? (Such as “transportation services” and “vehicles” ; or, “vehicle hire services” and “vehicles” ; or “restaurant and take-away food services” and “food”).
• does the service consist of altering, matching and/or installing the goods to a customer’s or client’s requirements? (Such as “curtains and furnishings” and “the sewing of furnishings”). It must be observed that the person doing the service of sewing the furnishings is also exercising the same or very similar skills as were involved in mailing the curtains. Also, the installers of domestic and industrial equipment are often employed either directly or indirectly by the manufacturer.
• are the goods and services commonly offered by the one company or organisation? (For example, “retail sales” and the equivalent “goods”; or, “telephone communication services” and “telephones”).
• are the goods a necessary adjunct to a particular service or the only tangible result of it? (For example, “advertising services” and “directories”, or “publications”; or, “travel agency services” and “publications” ; or “telephone services” and “directories”).
This list of criteria is not exhaustive, neither, I think, is it necessary that all considerations be satisfied, nor do I think that any single criterion is of necessity conclusive although it may be. However, taken as a general guide, these criteria build up a picture of the total of the considerations involved in assessing what are closely related goods and services. In complex cases such as oppositions, the issue may only become clear on the provision of evidence that addresses factors such as those above.

In its broadest sense, the word 'machine' in the applicant's specification of services denotes, 'An apparatus, appliance, instrument' (Oxford English Dictionary).  It follows, therefore, that the word 'machines' in the applicant's specification of services embraces the goods of the opponent's Class 9 registrations.  When I consider both the applicant's Class 37 statement, 'repair, installation, renovation maintenance services in connection with machines' and the opponent's Class 9 specification of goods in relation to the principle of notional use to the extent of the specifications as per Smith Hayden, supra, and in the light of the tests proposed in Aussat, supra, I must conclude that they are closely related goods and services.

With complex items such as are included in the opponent's Class 9 specification, they are frequently installed, maintained and repaired by the person who was the seller of the goods.  Such service packages are often an integral part of the sale of these pieces of equipment.  These service agreements are commonly offered by the person who is selling the goods.  The opponent's goods and these services of the applicant (when considered at their broadest) are of matching technical complexity.  Moreover, the person who sells the goods and the person who maintains and repairs these goods are frequently regarded as being in the same trade.

Accordingly, I find that the opposition based on section 44 of the Act succeeds to the extent of the applicant's 'repair, installation, renovation maintenance services in connection with machines'.

Section 58
Section 58 of the Act allows:

Applicant not owner of trade mark

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

On the subject of proprietorship, which for all material purposes is the same as ownership, Deane J explained in Moorgate Tobacco Co Ltd v Philip Morris Ltd (1984) 156 CLR 414 at 432-433:

The prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of “proprietor” of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods with respect to which the mark is used and that person (see, generally. Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 423–4; Re Registered Trade Mark “Yanx” ; Ex parte Amalgamated Tobacco Corporation Ltd (1951) 82 CLR 199 at 204–5; and the definition of “trade mark” in s.6 (1) of the Trade Marks Act. The requisite use of the mark need not be sufficient to establish a local reputation and there is authority to support the proposition that evidence of but slight use in Australia will suffice to protect a person who is the owner and user overseas of a mark which another is seeking to appropriate by registration under the Trade Marks Act. In such a case, the court “seizes upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of the goods of the foreign trader in Australia”

As observed by D. Shanahan in Australian Law of Trade Marks and Passing Off, "prior use should sustain an objection [on proprietorship] even where the applicant's claim to proprietorship is made in good faith and there is no question of 'piracy' or foreign ownership."

To establish prior ownership, it is essential to show prior use of a trade mark, which is in essence identical to the opposed trade mark, and that use should be on like kind of goods or services: re Hicks Trade Mark (1897) 22 VLR 636, at 640.

I have already found, in relation to the opposition under section 44, that the opponent's Type Two trade mark is substantially identical to the applicant's trade mark.  The applicant, in its evidence, has also shown use of the trade mark AAP, in block-type, since 1935.  The unregistered block-type version of the AAP trade mark is, I consider, identical to the opposed trade mark.  Since I have found that the letters AAP and the Type Two trade mark are substantially identical, it would appear that I should find that the opponent's AAP trade marks (that is, the block-type trade mark and the Type Two trade mark) have been in use since 1935. 

The evidence shows that the opponent provides news and information about every conceivable subject.  To my mind, I think that this must include information about motor vehicles, motor vehicle parts and accessories and related topics.

The evidence also shows that the opponent has a service that it provides to its customers called Newstrack.  This service is one which allows AAP customers with a PC, or a terminal provided by AAP, to structure and select the news and information that they receive, using keywords which look for the occurrence of those words in the text of articles and then select that article for the subscriber to the service.  I note that this service includes specialist writers within the car industry.

I think that the service of providing information about a given topic and the service of providing advice about the same topic are closely related services and, in effect, amount to the 'like kind' of services referred to in Hicks case, supra.  In reaching this conclusion I note that the people who give advice on a topic may frequently be the same as those who provide information on the same topic and that there may be doubt as to what constitutes 'advice', as opposed to 'information', in the same field.  At the very least, there is a grey area between the services of providing information and providing advice.

Accordingly, I find that the opponent's claims to ownership of the trade mark, as relates to the service of 'advisory services in respect of sourcing of motor components; advisory services in respect of spare parts for motor vehicles', has been made out and that the opposition succeeds under section 58 to the extent of these services.

Sections 43 and 60
In his submissions, Mr Cobden in effect argued these sections together.  However, I believe that the use of section 43 as a basis for opposition is more appropriate to circumstances where the trade mark allegedly contains a deceptive or confusing connotation about some property, attribute or an origin of the goods themselves.  Whilst 'reputation' may be viewed as a connotation that a trade mark has developed over time, as section 60 is framed to allow for oppositions under this head, I believe that it is more appropriate that I discuss the opposition in terms of that section.

Section 60 allows:

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)       it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

(b)       because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

I have already decided that the opponent's Type Two and unregistered block-type AAP trade marks are substantially identical to the applicant's trade mark, and that the opponent's Type One and Type Three trade marks are deceptively similar to the applicant's trade mark.  Therefore, it remains for me to decide whether, because of the reputation of the AAP trade marks, the use of the applicant's trade mark would deceive or cause confusion.

The priority date

This date is that defined by sections 12 and 29 of the Act.  The relevant date for this application is therefore 28 February 1997.

Reputation
As was said in a recent Office decision in Hugo Boss AG v Jackson International Trading Company Kurt D. Bruhl Gesellschaft m.b.H. & Co. KG , unpublished, I think that it is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of services dealt with under a trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark.  The quantum of sales, advertising and promotion contributes to the 'recognition' component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the 'esteem' component of the trade mark.

It follows that a trade mark used in relation to services with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it.  The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

The public perception of how a trade mark is being used, developed and exploited by its owner also constitutes a part of that reputation.  An analogy exists with Canon Kabushiki Kaisha v Brook and Anor (1996) 69 FCR 401, where Canon's evidence did not show extensive brand extension, as opposed to Twentieth Century Fox Film Corporation v The South Australian Brewery Co Ltd (1996) 66 FCR 451 (the Duff beer case), where Fox films was able to show that part of its reputation was in intensive brand extension.

The reputation of the opponent's trade mark
The evidence shows that the opponent's core business is in the provision of news and information to media outlets and business organisations.  The opponent started business in 1935 as a joint venture between some dozen newspapers that sought to reduce the cost of the telegraphic transmission of news.  Since these relatively humble beginnings, the business has grown into a major concern.  The 'non-core' parts of the opponent's business includes communications and telecommunications goods and services, information technology goods and services, sports and entertainment services, gambling goods and services, printed matter, publication services and paper goods, and satellite transmission services.  While all of these services paint a picture of a large, diversified, organisation, the evidence leads me to conclude that the areas into which the opponent has spread its business are those into which one would expect it to move and which are associated with its core business.

The opponent's turnover is well over $0.5 billion per year and it spends in excess of a million dollars a year on advertising and the promotion of its activities.  In addition, the opponent is deeply involved in philanthropic works and gives to a long list of charities.  This undoubtedly assists in both the public recognition and esteem in which the opponent is held.  The opponent also promotes its corporate image widely via advertising and sponsorships.

Deceptive Similarity
The applicable principles are the same as those that governed the assessment of confusion and deception under section 28(a) of the Trade Marks Act 1955.

The following summary of the relevant case-law is taken from Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd [1997] 623 FCA (11 July 1997).  I note that the decision of Heerey J was overturned but not on these points:

• The opponent bears the initial onus of establishing a reputation in its mark sufficient to found an objection

• However, once this onus is discharged the burden shifts to the party seeking registration

• The rights of the parties are to be determined as at the [priority date]

• The onus is on the party seeking registration to satisfy the Court that there is no reasonable possibility of deception or confusion

• In order to defeat the application for registration it is not necessary for the opponent to establish that there is an actual probability of deception which will amount to a passing-off. While a mere possibility of confusion is not enough - for there must be a real, tangible danger of it occurring - it is sufficient that the result of the user of the mark will be that a substantial 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 that the ordinary person entertains a reasonable doubt

• In considering the issue of deception all the surrounding circumstances must be taken into consideration. The factors to be considered include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable purchaser of the goods or user of the services

• A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived

• It is not enough for the party seeking registration to negative the likelihood of confusion in relation to the actual trade carried on by the opponent at the [priority date] and to the manner in which the latter then uses his mark. The applicant must also take into account all legitimate uses which the opponent may reasonably make of his mark within the ambit of his registration

• The question whether the use of a mark is likely to deceive or cause confusion is in the end a question of impression and common sense; it is a "jury question" in which the judge is entitled to give effect to his or her own opinion as to the likelihood of deception or confusion

Mr Green, in his submissions, relied heavily on one of the opponent's internal office documents which dictates how the opponent's Type Two trade marks are to be used.  However, I have already found that the Type Two trade marks are substantially identical to the applicant's trade mark.  Further, the approach that Mr Green wished me to take does not take into account that the opponent has been using the block-type trade mark in respect of its services since 1935 - oppositions under section 60 are not restricted to being founded on registered trade marks.

Mr Cobden submitted that the opponent had been the only person having AAP trade mark registrations in Australia and that a person, seeing the trade mark and knowing of the opponent's reputation, would be more likely to assume that the goods or services offered by the applicant would have some form of connection with the opponent.

In his submissions, Mr Cobden drew my attention to the fields that the opponent's services had spread into and submitted that these were akin to the brand extension cases, to which I refer above. 

As remarked above when discussing the evidence, I think that the fields into which the applicant has spread are the natural expansion of a growing information and news provider.  I think that this can be contrasted with the brand extension cases that succeeded because of the public perception of the marketing patterns and commercial exploitation undertaken by traders who are quick to take advantage of niches where their goods might sell.

The sale of motor vehicle parts and accessories, or the maintenance of motor vehicles, are not fields that a person would normally expect a news and information provider to move into.

Having closely read all of the evidence, I do not believe that the reputation of the opponent's trade marks in Australia is such that a person seeing the mark will automatically assume a connection between the goods and the opponent.

I therefore believe that, despite the reputation of the opponent's trade marks, it is unlikely that the use of the applicant's trade mark would confuse or deceive in relation to its Class 12 goods 'Motor vehicle components in this class; spare parts for motor vehicles; parts and fittings for vehicles including automobiles; motor vehicle accessories' or its Class 37 services 'repair, installation, renovation maintenance services in connection with machines and vehicles.'

However, I believe a person, knowing of the reputation of the opponent's trade marks and their widespread, indeed pervasive, use in relation to information and news services, might readily infer some sort of connection between those trade marks and the applicant's advisory services and, because of that, would be likely to be confused or deceived.

As discussed under the heading 'Section 44', there is a nexus between some advisory and information services, and I think that it is quite likely that a member of the public would be confused or deceived in relation to these services.

I therefore consider that the opposition succeeds under section 60, to the extent of 'Advisory services in respect of sourcing of motor components; advisory services in respect of spare parts for motor vehicles'.

Conclusion
I have found that the opposition succeeds under both sections 58 and 60 in relation to 'Advisory services in respect of sourcing of motor components; advisory services in respect of spare parts for motor vehicles.'  It also succeeds under section 44 in relation to 'repair, installation, renovation, maintenance services in connection with machines'  I therefore direct that, subject to any appeal from my decision, the application may proceed to acceptance if the applicant amends its Class 37 specification to read:

'Motor vehicle repair, installation, renovation and maintenance'

I allow the applicant 28 days from the date of this decision to so amend its goods or I will issue my final decision refusing registration.

Costs
If the applicant agrees to amend its specification of goods as I have indicated, it will mean that both parties have been successful to some extent and it is appropriate that each party bear its own costs

If the applicant does not agree to the amendment, then the opponent will have been successful and would be entitled to its costs.

Ian Thompson
Hearing Officer

19 April 1999