Amazon Technologies, Inc v Ringwall Ltd

[2024] ATMO 89

TRADE MARKS ACT 1995

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

Re:Opposition by Amazon Technologies, Inc. to registration of trade mark application number 2222522 (11) – r RINGWALL (Figurative) – in the name of Ringwall Ltd

Delegate:

Louise Tuohy

Representation:

Opponent: Shauna Ross of Counsel instructed by King & Wood Mallesons

Applicant: Not represented

Decision:

2024 ATMO 89

Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 44, 60 and 42 – section 44 established – trade mark refused

Background

1.     This matter concerns an opposition by Amazon Technologies, Inc (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark application (‘Application’) in the name of Ringwall Ltd (‘Applicant’):

[1]  Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.  

Trade mark number:              2222522

Trade mark:    (‘Trade Mark’)

Filing date:  31 October 2021

Specification:  Class 11: LED lamps (‘Applicant’s Goods’)  

2.     The Application was examined as required by s 31 and advertised for possible registration on 1 April 2022.

3.     On 1 June 2022 the Opponent filed a Notice of Intention to Oppose the registration of the Trade Mark followed by its Statement of Grounds and Particulars on 1 July 2022. The Applicant filed a Notice of Intention to Defend the proceeding on 21 July 2022.

4. Thereafter the Opponent filed the following Evidence in Support in accordance with the Regulations:

• Declaration of Victoria Suzanne James, lawyer employed by King & Wood Mallesons, the legal representatives of the Opponent, made on 1 November 2022 with Exhibit VSJ-1.

5.     The Applicant did not file any Evidence in Answer.

6.     Once time for filing evidence had ended both parties were given the opportunity to request either an oral hearing or hearing by way of written submissions. The Opponent requested an oral hearing via videoconference. The Applicant did not request a hearing. As a delegate of the Registrar of Trade Marks I heard the matter by videoconference on 10 April 2024. Shauna Ross of Counsel instructed by Cate Nagy, Vineetha Veerakumar and Victoria James of King & Wood Mallesons appeared on behalf of the Opponent. The Opponent’s oral submissions were supported by written submissions filed prior to the hearing.

Grounds of Opposition, Relevant Date and Onus

7.     In the SGP the Opponent nominated grounds of opposition under ss 42(b), 44 and 60.

8.     The date at which the rights of the parties are to be determined is the filing date 31 October 2021 (‘Relevant Date’) which is also the priority date for the purposes of ss 44 and 60.

9.     The Opponent bears the onus of establishing at least one of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

Discussion

Section 44

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132] (Besanko, Jagot and Edelman JJ).

1. Section 44(1) 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.

   […]

   11.     In the SGP the Opponent particularises the ground under s 44 as follows:

   The Opposed Mark is deceptively similar to the Opponent’s earlier trade marks set out in the table below (collectively, the “RING Marks”):

Trade Mark	Trade Mark Number	Classes	Priority Date
AMAZON RING	1945951	9, 11, 35, 38, 41, 42, 45	27 February 2018
RING FLOODLIGHT CAM	1961391	9	15 November 2017
NEIGHBORS BY RING	1963024	9, 11, 35, 38, 41, 42, 45	17 May 2018
RING BEAMS	1966644	9, 11, 12, 35, 38, 41, 42, 45	31 May 2018
RING NET	1996871	9, 11, 12, 35, 38, 41, 42, 45	27 September 2018
RING HALO	1997081	9, 11, 12, 35, 38, 41, 42, 45	27 September 2018
RAPID RING	2062570	8, 9, 38, 42	16 July 2019
RING	1761201	9	10 February 2016
RING	1919401	9, 11, 38, 45	9 June 2017
1925700	9, 35, 37, 42, 45	23 March 2017
RING SPOTLIGHT	1927414	9, 11	28 June 2017
RING SPOTLIGHT	2159270	9, 42	26 February 2021
RING	1946254	35, 38, 41,45	27 February 2018
RINGMOTE	2170718	9, 11, 38, 42	20 October 2020
RING	2189661	9, 11, 42	27 February 2018
RING ID	1717430	9	27 August 2015
RING	2254429	9, 42, 45	28 September 2021

The priority dates of the Opponent’s RING Marks pre-date the Priority Date of the Opposed Application.

The Opposed Goods directly overlap with, or are highly similar or closely related to, the goods and services in respect of which the Opponent has registered and sought registration of the RING Marks.

The Opposed Mark is deceptively similar to the Opponent’s RING Marks. There is a tangible concern that a number of relevant consumers with an imperfect recollection of the Opponent’s RING Marks would be caused to wonder, upon seeing the Opposed Mark, whether it might be the case that the Opposed Goods come from the Opponent, or are a range of the Opponent’s Goods and Services. This is because, inter alia:

(a) The word RING is inherently distinctive for the goods and services covered by the Opponent’s RING Marks. The Opponent is accordingly prima facie entitled to a full and generous scope of protection for its marks.

(b) The high level of distinctiveness of the RING Marks increases the risk of confusion on the part of the consumer when confronted with the Opposed Mark.

(d) The likelihood of confusion is exacerbated because of the risk of contextual confusion between the Opposed Mark and the Opponent’s RING Marks.[4] To the extent that differences are noticed between the Opposed Mark and the Opponent’s RING Marks, consumers would be indirectly confused into thinking that the Applicant’s Trade Mark simply presents as a brand extension of the Opponent’s RING Marks, or that the Applicant is in some way connected or endorsed by the Opponent.

[4] See e.g. Nicholas J in Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAC 159 (14 November 2012).

12.     To satisfy the s 44 ground of opposition, the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date in the name of a person other than the Applicant, and in respect of similar goods or services which are closely related to the Applicant’s Goods. 

13.     At the hearing the Opponent focused on trade mark 1919401 (‘401’) and trade mark 1925700 (‘700’). Both these trade marks are for the plain word RING and were I to find that these trade marks were not substantially identical or deceptively similar to the Trade Mark I would by necessity reach the same conclusion with the remainder of the Opponent’s RING marks, each of which contains additional elements that further distinguish them from the Trade Mark.

14.     Each of trade marks 401 and 700 has a priority date that is earlier than the priority date of the Trade Mark. The next consideration is whether the Applicant’s Goods are similar or closely related to the Opponent’s goods and services.  

15. Pursuant to s 14(1) of the Act ‘similar goods’ are goods that are the same, or of the same description. The determination of whether goods are similar involves the consideration of a number of factors including the nature, use and trade channels of the goods.[5]

[5] Jellinek’s Application (1946) 63 RPC 59 (Romer J);Beck, Koller & Company’s Application (1947) 64 RPC 76.

16.     The Opponent notes that its class 11 specification for 401 includes floodlights, spotlights, wall lights, motion sensitive security lights; security lights for outdoor use; none of the foregoing goods being circular in shape; none of the foregoing for vehicle or transportation use. The Opponent submits that the scope of the items floodlights, spotlights and wall lights encompasses the Applicant’s Goods. Further, the Opponent submits that the class 9 specification for 700 includes lighting controllers; lighting control apparatus; electric control devices for lighting fixtures which are similar to the Applicant’s Goods.

17.     I consider that the Applicant’s Goods are similar to the class 11 goods floodlights, spotlights and wall lights in 401. These goods are directed at the same consumers and the inherent nature and characteristics of the goods, the intended use of the goods and the trade channels are similar. I also consider that the Applicant’s Goods are similar to the class 9 goods lighting controllers; lighting control apparatus; electric control devices for lighting fixtures in 700. These goods are similar because they are used together and sold through the same trade channels.

18.     However, I do not consider the remainder of the goods covered by 401 in classes 9 and 11 and 700 in class 9 are similar to the Applicant’s Goods, because they all have specific and distinct nature and purpose.

19.     The Opponent does not submit that any of the services covered by 401 and 700 are closely related to the Applicant’s Goods. For completeness I am not satisfied that the services would be directed to the same consumers or that the public would expect the same business to supply both Applicant’s Goods and the services covered by 401 and 700.[6] As such I find that none of the services covered by 401 and 700 are closely related to the Applicant’s Goods. 

[6] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [38] (French J).

20.     I will now consider whether the Trade mark is substantially identical or deceptively similar to 401 and 700.

21.     The test for substantial identity requires that the trade marks are considered side by side while having regard to the essential features of the trade marks.[7] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical. For the purposes of comparison, I have reproduced the respective trade marks below:

[7] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Windeyer J).

Trade mark 401

RING

Trade mark 700

Trade Mark

22.    

23.     On a side by side comparison there are clear differences between the trade marks. The Trade Mark consists of the letter R and the words RING and WALL inside a divided rectangle. In comparison trade marks 401 and 700 are for the word RING solus. For these reasons, I find that neither 401 nor 700 are substantially identical with the Trade Mark.  The total impression emerging from a side by side comparison is not one of similarity.

24.     I found that the respective trade marks are not substantially identical. Therefore, I turn now to the question of whether they are deceptively similar.

25.     The expression ‘deceptively similar’ is defined by s 10:

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.

26.     In the case of Australian Woollen Mills v F. S. Walton and Company Ltd, Dixon and McTiernan JJ provided the relevant test for comparison:

[T]he marks ought not…be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same…The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.[8]

[8] [1937] HCA 51; (1937) 58 CLR 641, [658].

1. In the recent High Court case of Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, the Court noted the following[9]:

   [9] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [33] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

   In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"[10]. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark[11], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[12]. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark[13]

   [10] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549 at 589 (emphasis added), approved in Henschke (2000) 52 IPR 42 at 62 [44], Hashtag Burgers [2020] FCAFC 235; (2020) 385 ALR 514 at 532 [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8; (2021) 157 IPR 230 at 238 [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598 at 622 [97] (see also 626 [111]) and Swancom (2022) 168 IPR 42 at 56 [73].

   [11] Act, s 68.

   [12] New South Wales Dairy [1989] FCA 124; (1989) 86 ALR 549 at 589.

   [13] Swancom (2022) 168 IPR 42 at 59 [89]. See also Henschke (2000) 52 IPR 42 at 62 [44].

   28.     In the present case, the Opponent submits that the word RING is the entirety of 401 and 700 and is wholly contained within the Trade Mark. The addition of the device in the Trade Mark does little to distinguish it.

   29.     The Opponent submits that the commonality of the word RING being the first part of the Trade Mark which as accepted in many cases, is “accentuated in comparison” to the termination of words which, in the English language, tend to be slurred. The result being that the “first syllable of a word is, as a rule, far the most important for the purpose of distinction”.[14] Therefore, the most important part of the Trade Mark, i.e. RING, is identical to 401 and 700.  

   [14] London Lubricants (1920) Limited’s Application 91924) 42 RPC 264 [279] (Sargent LJ).

   30.     The Opponent submits that prospective purchasers will recall the obvious and striking similarities between the Trade Mark and its 401 and 700 trade marks. The similarity in general style of the words otherwise will suggest to prospective consumers, in his or her imperfect recollection, that the goods that can be offered under the Trade Mark come from, or are otherwise connected with, the same source as goods provided under 401 or 700.  

   31.     The Opponent argues that an important surrounding circumstance is that the Trade Mark is RINGWALL and this is significant in circumstances where trade mark 401 is registered in class 11 for wall lights. This is because, a consumer faced with the Trade Mark on LED lamps will be caused to wonder if the trade source of that and the Opponent’s 401 wall light are the same.

   32.     The word RING does not appear to have any meaning in relation to the goods in question. The word WALL in the Trade Mark is descriptive of lighting goods which are designed to be attached to walls and does not significantly alter the imperfect recollection of the ordinary consumer, who would likely recall the Trade Mark by the leading word RING. Likewise, the letter R within the Trade Mark highlights the word RING. The similarities of the trade marks are such that consumers would be caused to wonder about whether the trade marks have the same trade source. I consider there to be a real tangible danger of confusion. For these reasons, I find the trade marks are deceptively similar.

   33.     The Applicant has not sought to have the application accepted under the provisions of ss 44(3)(a) or 44(4). Therefore, the Opponent has established the s 44 ground of opposition.

   Decision

   34.     Section 55 provides:

   55  Decision

   (1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)  to refuse to register the trade mark; or

   (b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   35.     The Opponent has established a ground of opposition under s 44. Accordingly, I refuse to register trade mark number 2222522. If the Registrar is served with a notice of appeal, I direct that the disposition of the Application should be in accordance with the Court’s order or direction.

   Costs

   36. Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Applicant under s 221 in line with Schedule 8 of the Regulations.

   Louise Tuohy

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   7 May 20224