Aktiebolaget SKF v Yan Jing Xiang
[2020] ATMO 70
•30 April 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Aktiebolaget SKF to registration of trade mark application number 1861783 (class 7) – SKL (fancy) - in the name of Yan Jing Xiang.
| Delegate: | M. Cooper |
| Representation: | Opponent: Phillips Ormonde Fitzpatrick Applicant: Pipers Intellectual Property |
| Decision: | 2020 ATMO 70 Trade Marks Act 1995 (Cth) – Opposition to extension of protection to IRDA – reg 17A.33 of the Trade Marks Regulations 1995 (Cth) - grounds under sections 42(b), 44 and 60 of the Trade Marks Act 1995 and reg 4.15A of the Trade Marks Regulations 1995 pressed – none established – IRDA to proceed. |
Background
On 3 May 2017, Yan Jing Xiang (‘the Holder’) applied to extend protection of International Registration of the below trade mark to Australia.
Application no: 1861783
IRDA No: 1357825
Filing Date: 3 May 2017
Trade Mark: (‘Trade Mark’)
Specification of Goods:
Class 7: Self-oiling bearings; ball-bearings; bearing brackets for machines; bearings [parts of machines]; bearings for vehicles; roller bearings; ball rings for bearings; anti- friction bearings for machines; bearing bush; bearings for transmission shafts. (‘Goods’)
The Trade Mark was examined as mandated by regulation 17A.12 of the Trade Marks Regulations 1995 (‘the Regulations’) and advertised as accepted for possible protection on 18 January 2018 in the Australian Official Journal of Trade Marks.
On 5 February 2018 Aktiebolaget SKF (‘the Opponent’) filed a Notice of Intention to Oppose the extension of protection to the Trade Mark. On 7 February 2018 it filed its Statement of Grounds and Particulars (‘SGP’) which specified grounds under sections 42(b), 44 and 60 of the Trade Marks Act 1995 (‘the Act’) and reg 4.15A of the Regulations.
The Holder filed a Notice of Intention to Defend on 15 March 2018.
As neither party requested a hearing, IP Australia wrote to the parties on 18 December 2018 advising that a decision would be made on the written record and provided a period within which submissions should be filed. Neither party filed submissions.
As a delegate of the Registrar, I have proceeded to decide the matter on the filed material.
Evidence
Evidence in Support was filed by the Opponent on 21 June 2018. It comprised a statutory declaration by Rishin Kapur, Company Secretary for SKF Australia Pty Ltd, a wholly owned subsidiary of the Opponent, with annexures RK-1 to RK-12 (‘the Kapur declaration’).
In his declaration Mr. Kapur described the Opponent as a ‘leading global bearing and seal technology business’ which commenced operation in 1907 and is now present in more than 130 countries worldwide with more than 100 manufacturing sites in 35 countries. Its presence in Australia commenced with an Australian agent in 1907 and SKF Australia was established in 1940. It is described as ‘Australia’s leading supplier of bearings and related products and services’. Website pages annexed to the Kapur declaration, in particular its 1300-page catalogue for its ‘rolling bearings’, listed its 59 authorized Australian distributors who, it is claimed, provide an extensive range of services. Examples of product promotion, trade and industry magazine advertising, directory listings, participation in trade events, sponsorships, and other advertising and promotion activities are also annexed, as is material demonstrating a significant social media presence.
Mr. Kapur claims the Trade Mark is deceptively similar to ‘SKF’ and that the use of the Trade Mark on the Goods in Australia is likely to deceive or cause confusion. He observed that ‘both marks are three letters, the first two of which are the letters S and K. Although L and F are not the same, they are visually similar in that they both consist of a combination of vertical and horizontal elements. None of the letter combinations SK, SKF and SKL have any descriptive meaning or connotation relating to bearings or other engineering products. Although there are some other three letter bearing brands operating in Australia, none have SK as their first two letters.’
The trade marks on which the Opponent relies were listed in the Kapur declaration and in the SGP as below (‘the Opponent’s marks’):
Trade Mark No.
Trade Mark
Class
16577
7
191630
S.K.F.
7
191631
S.K.F.
6
191633
S.K.F.
12
191635
S.K.F.
8
302489
6,7,8,9,12
861055
16,35,37,39,40,41,42
1082549
4,6,7,8,9,11,12,16,17, 35,37,38,39,40,41,
42
1105960
SKF EXPLORER
7,12
1224106
17
1623215
4,6,7,8,9,12
Onus
The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]
[1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599 [6-26].
The date on which the grounds under regulation 17A.34 must be considered is the filing date of the opposed application,[2] (‘the relevant date’, also the ‘priority date’ in s 44 and s 60).
Consideration and reasons
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 [595].
Regulation 4.15A
This regulation was made under s 189A of the Act which provides for regulations to be made which ‘deal with...the protection given to protected international trade marks in Australia’, and is essentially identical to s 44 of the Act. While the SGP reflects the reg 4.15A ground, the Opponent does not identify or particularise any IRDA’s under the Madrid Protocol in relation to it. Consequently, as there is no IRDA against which it can be assessed, this ground is not established.
Section 44
Section 44 of the Act relevantly provides:
44. Identical etc. trade marks
(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.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
In order to establish the s 44 ground of opposition under s 44(1), the Opponent must demonstrate, subject to subsections (3) and (4), that the Trade Mark issubstantially identicalwith or deceptively similar to the Opponent’s marks; is in respect of similar goods or closely related services (s 44(1)(a)); and has a priority date not earlier than that of the Opponent’s marks (s 44(1)(b)).
Section 14(1) of the Act provides that goods are “similar” to other goods if they are the same, or of the same description, as the other goods.
In the SGP, in relation to this ground, the Opponent particularises the trade marks listed in the above table and states as follows:
‘Section 44/Regulation 4.15A: The Opposed Trade Mark is substantially identical with or deceptively similar to one or more other trade mark/s in respect of the same goods or services or closely related goods or services (Prior Trade Mark/s) where the Prior Trade Mark/s has/have earlier priority date/s than the Opposed Trade Mark and is/are the subject of registrations or protected international registrations or of application/s or IRDA/s.
The evidence demonstrates that the Trade Mark’s priority date (3 May 2017) is later than those of the Opponent’s marks which span the period 23 December 1913 to 10 December 2013. The Opponent’s marks 1623215, 1082549, 1105960, 302489, 191633, 191631, 191631, 191630, 16577 (‘the Opponent’s identified marks’) designate various types of bearings and therefore I am satisfied that they are in respect of similar goods.
It remains to be determined whether the Trade Mark is substantially identical with, or deceptively similar to, the Opponent’s identified marks.
As noted above, no submissions or evidence was provided in this regard other than in the Kapur declaration.
Substantially identical
The issue of substantial identity was considered by the Full Federal Court decision Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’)[3]. Referring to ‘dominant cognitive cues’ and ‘essential elements’ of trade marks as discussed in the prior Accor decision[4], the court said:
There is no doubt in our view that the Full Court in Accor in using the phrase “dominant cognitive cues” was making analogical reference to the “essential features” of the mark for the purposes of a side by side comparison in determining whether marks are substantially identical consistent with the observations of Windeyer J in Shell at 414 as earlier recognised by the court in the reasons. The dominant cognitive cues are the essential features striking the eye in a side by side comparison so as to determine whether marks are substantially identical.[5]
[3] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’) [2017] FCAFC 83.
[4] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (‘Accor’) [2017] FCAFC 56.
[5] Pham Global [51].
On a side by side comparison, the Trade Mark and the Opponent’s identified marks appear as below:
| Trade Mark | Opponent’s identified mark | Trade Mark no. |
| 16577 | ||
| S.K.F. | 191630 | |
| S.K.F. | 191631 | |
| S.K.F. | 191633 | |
| 302489 | ||
| 1082549 | ||
| SKF EXPLORER | 1105960 | |
| 1623215 |
As can be seen in the table, the Opponent’s identified marks all have a different last letter. In addition, they are either stylised, separated by dots or full stops, contained in an image or contain an additional word. Overall, on a side by side comparison, having regard to the essential features of the Trade Mark, I am not satisfied that a total impression of resemblance emerges between it and any of the Opponent’s identified marks such that they might be regarded as being substantially identical.[6]
[6] Shell Co. of Australia v Esso Standard Oil (Aust.) Ltd. (‘Shell’) [1963] HCA 66 [12]; (1963) 109 CLR 407 [415].
Deceptive similarity
Section 10 of the Act defines deceptive similarity as follows:
Section 10 - Definition of deceptively similar
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
In assessing trade marks for deceptive similarity, Windeyer J said in Shell[7]:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in 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 recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions.
[7] Shell [416].
That is, a determination of ‘deceptive similarity’requires an assessment of the likelihood of deception or confusion arising from a recollection or impression of the relevant mark by potential consumers of the goods and/or services. This is to be assessed by reference to the standards of ordinary people ‘who should not be credited with high perception or habitual caution’ and in the context of the business and the way in which the particular class/es of goods are sold or services provided.[8] A possibility of confusion is not sufficient; there must be a real tangible danger of confusion.[9] Even so, the threshold for confusion is not high.[10]A likelihood of confusion will exist if there ‘is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products…come from the same source.’[11] The use to be considered is notional use.[12]
[8] Australian Woollen Mills v F S Walton and Co Ltd (1937) 58 CLR 641 [658].
[9] Ibid; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 [594-5].
[10] Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153 [70].
[11] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 [50(ii)].
[12] Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353 [362].
On a visual assessment, having regard to the Opponent’s identified marks 1082549 and 1623215, I consider the strong visual difference between them and the Trade Mark is such that there is little likelihood of deception or confusion arising. Similarly, in relation to the 1105960, it comprises the additional word ‘explorer’, which is not in any obvious sense descriptive, and is such a point of difference that I consider there is little likelihood of deception or confusion between it and the Trade Mark.
Conversely, the other of the Opponent’s identified marks contain 3 letters, as does the Trade Mark, the first two of which are the same. In addition, the representation of the first letter ‘S’ in the Trade Mark is similar to the ‘square’ representation of the first letter in the Opponent’s identified marks, particularly 302489 (as below). I do not however consider it is such a unique or memorable representation that it might give rise to confusion in the mind of a consumer who sees it with an imperfect recollection of the Opponent’s mark.
In terms of the aural presentation of the marks, with the exception of mark 1105960, the Trade Mark and the Opponent’s identified marks each contain three letters, two of which are the same. Nevertheless, the marks are initialisms. As such, when the Goods are ordered or requested, the enunciation of each letter is required. There is no evidence or indication that any emphasis would be placed on any one of the three letters. There is no suggestion or evidence that any part of the Trade Mark or the Opponent’s identified marks are common to the trade or commonly used. In this context I am not persuaded that there is sufficient aural similarity between the marks such that, when the goods are ordered or requested orally by a person with an imperfect memory of the Opponent’s identified marks, they are likely to be confused.
It is also necessary to have regard to the surrounding circumstances, in particular, the goods to which the marks are to be applied and ‘the nature and kind of customer who would be likely to buy those goods’.[13] On a consideration of the notional use of the Goods, given that they are the same or similar, they will most likely be sold to the same consumers in the same market. That market, as indicated in the Kapur declaration, is one in which the Opponent ‘provides a wide range of products to OEM (original equipment manufacturer) and aftermarket customers around the world in every major industry at each phase of the asset lifecycle.’ Annexures show persons concerned with the Goods include plant floor operators, mechanics, electricians, fitters, maintenance and mechanical/electrical apprentices, purchasing and stores personnel, supervisors, maintenance personnel, and many types of engineers. While there is no indication of the expense or otherwise of the Goods, they appear to be relatively specialist items, not lightly purchased, that would be sought or provided to astute or knowledgeable consumers and/or on the advice of those with relevant expertise in the field. Given this, and notwithstanding the visual and aural similarities between the Trade Mark and the Opponent’s identified marks, I consider any likelihood of deception or confusion would be significantly diminished. It follows that I am not satisfied that the Trade Mark is deceptively similar to the Opponent’s identified marks within the meaning of s 44(1).
[13] In the Matter of An Application by the Pianotist Company Ltd for the Registration of a Trade Mark (1906) 23 RPC 774 [777].
The s 44 ground of opposition has not been established.
Section 60
Section 60 of the Act provides as follows:
Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, 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.
Note: For priority date see section 12.
Therefore, the Opponent must first establish that its marks (as identified in paragraph 10) had a reputation in Australia at the relevant date and, secondly, that because of that reputation, the Holder’s use of the Trade Mark would be likely to deceive or cause confusion.
The Opponent particularised this ground in the SGP as follows:
The Opponent is a leading global technology provider established in Sweden in 1907. It currently has 48,000 employees spread across 140 sites in 32 countries. Around the world. The Opponent provides a broad range of goods under the SKF brand including bearings and units, seals, mechatronics, lubrication systems and related services. The Opponent has used the SKF trade mark in Australia since as early as 1920 and has continued to use the mark SKF and SKF formative marks since that time throughout all of Australia. The Opponent’s goods are distributed in Australia via 59 authorised distributors. Annual sales in Australia of goods in relation to which the SKF and SKF formative trade marks are used have been in excess of AUD 85 million over the past five years.
The trade marks specifically relied upon in this context were those identified above in paragraph 10, all of which precede the relevant date.
Reputation
In McCormick & Co Inc v McCormick Kenny J considered the meaning of reputation in s 60 as ‘the recognition of the [trade mark] by the public generally’[14] and observed, in relation to the measurement of reputation as follows:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[15]
[14] [2000] FCA 1335 [81].
[15] Ibid [86].
The material annexed to the Kapur declaration demonstrates substantial sales, promotions and advertising and significant use of the Opponent’s marks as a badges of origin in connection with ball bearings and associated class 7 goods (among other goods) across several industries over several years in Australia and the world.
On this basis, I am satisfied that, at the relevant date, the Opponent had established, among a substantial or significant number of Australian consumers likely to be concerned with the Goods, the relevant reputation in its marks for the purposes of s 60(a).
Likelihood of deception or confusion
It is also necessary for the Opponent to establish that, because of its reputation in its marks, notional use of the Trade Mark on the Goods would be likely to deceive or cause confusion among relevant Australian consumers.
The assessment of the likelihood of deception or confusion is informed by ‘the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties’.[16]
[16] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124, [40].
As noted above, I am satisfied that the Opponent’s evidence establishes its strong Australian reputation in its marks including, among other things, in respect of the Goods. The Trade Mark and the Opponent’s marks are clearly distinctive. It also follows from my previous findings, (paragraphs 27-30), that I accept there is a nexus between the Goods and that there are aural and visual similarities between the Trade Mark and the Opponent’s identified marks. While the circumstances in which the Goods will be sold and types of consumers who will trade and purchase the Goods are likely to be the same, as noted above, the Goods themselves are specialist goods which would most likely be purchased by persons after careful assessment and/or on instructions or advice of experienced and/or professional persons. In this context I consider the comments of Jessup J in Delfi Chocolate Manufacturing SA v Mars Australia Pty Ltd are apt:
What this means in practice is that the notional consumer of average intelligence thinking of making a purchase by reference to goods in association with which the latter mark is used, or intended to be used, is no longer someone who has had no more than some exposure to the “other” mark: he or she is someone who is assumed to have that level of awareness of that mark as is consistent with the content and extent of the reputation of it.
I would find that the respondent’s mark is strongly embedded in the consciousness of many of those of average intelligence whose circumstances provide the template for the notional consumer of confectionery with whom I must be concerned. It is probably an overstatement to say that everyone has heard of Maltesers, but it is established on the evidence that a great many people have. As noted above, the applicant conceded that the respondent’s mark had a reputation in Australia as required by s 60(a), but I would go further and find that it has a very widespread, solid, reputation in the area of packaged confectionery.
I do not consider, however, that that circumstance would make it any more likely that the notional consumer of confectionery would have cause to wonder whether products displayed and sold under the applicant’s mark were from a common source with those displayed and sold under the respondent’s mark. Indeed, with a stronger awareness of the respondent’s mark, I consider that such a consumer would be immediately struck by the differences between the two marks, as discussed above. He or she may observe the limited similarities between the marks and, because the subject of the presumptive interest would be confectionery, may assume that the products were of the same nature as those sold under the respondent’s mark, but, giving the matter a moment’s reflection, would readily conclude that those products were not Maltesers. As I say, the strong reputation of the respondent’s mark would, if anything, make that conclusion a more likely one.[17]
[17] [2015] FCA 1065 [27-29].
Similarly, the evidence has established the Opponent’s marks have a very “widespread, solid, reputation” in the Goods. I am not satisfied however that the evidence establishes that, because of this reputation, it is likely that the notional consumer of the Goods displayed or sold under the Trade Mark would have cause to wonder whether they were associated with the Opponent. On the contrary, I consider the ‘more likely scenario’ is that the strength of the Opponent’s reputation in its trade marks is such that the consumer, while perhaps noting an apparent attempt by the Holder to mimic the Opponent’s marks, on ‘giving the matter a moment’s reflection, would readily conclude’ that the Goods bearing the Trade Mark were not genuine SKF parts. This is especially so in a context in which the Goods are not everyday goods, like confectionary, but are relatively specialist products, purchased with care and attention, generally by or on the advice of informed and/or skilled persons.
Therefore, while I accept that the Opponent’s evidence has established its reputation in its marks in Australia at the relevant dates in respect of the Goods, there is no probative evidence indicating a real likelihood of deception or confusion occurring among relevant Australian consumers in the marketplace by virtue of the use of the Holder’s Trade Mark.
It follows that I am not satisfied the s 60 ground has been established.
Section 42(b)
Section 42 of the Act provides:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.
In relation to s 42(b), the Opponent’s SGP stated as follows:
Due to the significant reputation the Opponent has in the trade mark SKF and SKF formative trade marks in Australia, use of the Opposed Trade Mark would mislead and deceive the public, thus contravening s 18 and s 29 of the Australian Consumer Law.
The onus is on the Opponent to establish that use of the Trade Mark would be, rather than could be, contrary to law, on the balance of probabilities.[18]
[18] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 [411].
Section 18 (formerly s 52 of the Trade Practices Act 1974 (Cth)) and s 29 of the Australian Consumer Law (‘ACL’) require consideration as to whether relevant consumers would be misled or deceived as to the true origin of the Holder’s Goods, or that they had some connection with the Opponent, or whether false representations have been made. The Court noted in Puxu that ‘conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s. 52’.[19] Therefore, given my above findings as to the lack of evidence of the likelihood of deception or confusion arising from use of the Trade Mark, it follows that I am not satisfied, in the absence of any further persuasive evidence in this regard, that the Opponent has discharged the onus on it to establish that use of the Trade Mark would be likely to mislead or deceive within the meaning of s 18 of the ACL.
[19] Custom Built Furniture Pty Ltd vPuxu Pty Ltd (1982) 149 CLR 191 [198].
Furthermore, in relation to s 29, I note that there is no evidence before me that the Holder has directly represented that its goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have.
It follows that I am not satisfied that the Opponent has established that use of the Trade Marks would be contrary to law.
Accordingly, the s 42(b) ground of opposition has not been established.
Decision
Reg. 17A.34N of the Regulations provides:
Decision on opposition
(1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a) to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.
(2) The Registrar must notify the International Bureau of the Registrar's decision.
I have found that the Opponent has not established any of its grounds of opposition. I therefore direct that protection of the Trade Mark be extended to Australia one month from the date of this decision in respect of all the Goods.
If the Registrar has been served with a notice of appeal before that time, I direct that extension of protection shall not occur until the appeal has been decided or discontinued or, if this decision is successfully appealed, that the IRDA be dealt with as the Court orders. If the Registrar has not been served with a notice of appeal before that time the International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accordance with reg. 17A.34N(2).
Costs
The Holder sought an award of costs. As the successful party, it is appropriate that costs be awarded against the Opponent under s 221 of the Act in the amounts set out in Schedule 8 of the Regulations.
Mary-Ann Cooper
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
30 April 2020
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