American Power Conversion Corporation v Tecom Resources Pty Ltd

[2004] ATMO 58

TRADE MARKS ACT 1995

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

Re:Opposition by American Power Conversion Corporation to registration of trade mark application 870245 (9, 37) - APC - filed in the name of Tecom Resources Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent  Martin Pollock of Spruson & Ferguson, Patent and Trade Mark Attorneys
Applicant  No representation or appearance

Decision:

1.   Section 52  opposition, ss 42, 58 & 60 grounds established,  application refused

2.   Costs awarded against applicant

Background

1. Tecom Resources Pty Ltd, (“the applicant”), has filed application to register the following trade mark:

Application Number:	870245
Priority date:	26 March 2001
Goods:	Class 9  Computer equipment, sold as computer packages and as individual items but excluding power and supply protection apparatus and instruments Class 37 Repairs and maintenance of computer equipment
Trade Mark:	APC
Advertised:	11 July 2002

1. On 11 October 2002, American Power Conversion Corporation, of Rhode Island USA, (“the opponent”) filed notice of opposition to the registration of application 870245 pursuant to section 52 of the Trade Marks Act 1995, (“the Act”). The notice effectively cited all of the available grounds of opposition provided in the Act.

2. The matter came before me as a delegate of the Registrar of Trade Marks for hearing in Sydney on 19 July 2004. The opponent was represented by Mr Martin Pollock of Spruson & Ferguson of Sydney. The applicant was not represented at the hearing.

   Evidence

3. The only evidence filed and served was evidence in support filed and served by the opponent. It comprised the declaration by Jeffrey J. Giguere, Vice President and General Counsel of American Power Conversion Corporation declared 1 October 2003. The declaration contains exhibits A to L.

4. The evidence gives details of the opponent’s current registrations for APC with the Trade Mark Office. It also provides details of the current products produced by the opponent, of worldwide and Australian sales and Australian advertising expenditure.  The evidence exhibits numerous promotions in magazines which generally predate the priority date of the opposed application and show the placement of the opponent's goods in the context of information technology and computing goods.

5. The applicant did not serve or file any evidence or submissions.

   Grounds of Opposition

6. At the hearing Mr Pollock pressed grounds of opposition under the provisions of sections 42, 44, 58 and 60.  The remaining grounds nominated in the notice of opposition were not supported by evidence and I now find that they have been unsuccessful.

   Ground 1 – s.58: Applicant not the owner of the trade mark

7. Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.  In order to establish this ground, it is incumbent upon an opponent to show that, in the time before filing, the applicant is not the first user in trade in Australia of the applied-for trade mark.  To do so, the opponent must show, at a minimum, that not only is the applied for trade mark substantially identical with the older trade mark, but that it is applied to the same kind of goods: Re Hicks’ Trade Mark (1897) 22 VLR 636 at 640.

8. The opponent cited its registrations for APC dating from 1994.  The opponent relied upon re Morney Ltd's Trade Marks (1951) 68 RPC 131, at 149 to 150 for authority that the registration in plain block script is taken to protect all other versions of the mark, so long as they are rendered in a clearly legible form of lettering.

9. The opponent also submitted that this present case is virtually identical to the facts of ABB Asea Brown Boveri Ltd v ABB Grain Ltd (2001) 54 IPR 398, a case involving the trade Mark ABB and stylised ABB in mark. In that case the trade marks were found to be substantially identical. Relevant issues were:

   (a)there is no real meaning the range of letters in the sense that they do not form a word or common usage phrases such as “ABC”, “ TNT” or “BBQ”;

   (b)visually the marks are similar;

   (c)the impression carried away in both cases is that the letters are initials or an acronym - ie nothing in the letters hints at the origin of the letters.

10. The opponent submitted that the evidence demonstrates that, since 1994, the opponent has used its mark in relation to computer and computer-related equipment and in relation to support services relating to repair and maintenance of computer and computer-related equipment.  It was further submitted that such goods and services were the same kind of thing as goods of the applicant.

11. I am satisfied that the applicant's mark is substantially identical with those of the opponent, and that the opponent has used its marks before the applicant.  I am also satisfied the opponent has used its marks in relation to the same kind of thing as the goods of the applicant.  Consequently this ground of opposition has been established.

    Ground 2 – s.44: Identical etc. trade marks

12. In order to establish a ground of opposition under the provisions of section 44 of the Act, the opponent must establish there is a substantially identical or deceptively similar trade mark application or registration, with an earlier priority date, in respect of similar goods or closely related services, in the name of a person other than the applicant. Section 10 of the act provides that a deceptively similar trade mark is one that o nearly resembles the other trade mark that is likely to deceive or cause confusion.

13. The trade marks on which the opponent relied are set out in the following table:

Trade Mark no.	Priority Date	Trade Mark	Goods
635317	19.07.1994	APC	Class 9: power supply protection apparatus and instruments including power protection devices of computers and sensitive electrical equipment
638083	19.07.1994	Class 9: power supply protection apparatus and instruments including power protection devices of computers and sensitive electrical equipment

1. The opponent's trade marks have a priority date which is earlier than the applicant's trade mark.

2. The matters for determination are therefore whether the applicant's mark:

   (a)is substantially identical or deceptively similar to the opponent's registered trade marks; and

   (b)is in respect of similar goods or closely related services.

3. I have already found that the applicant's mark the substantially identical to the opponent's registration 635317.  However, I am not satisfied that the opponent's trade mark is registered in respect of similar goods, in that I do not consider that they would be seen by purchasers as having the same trade origin if sold under deceptively similar marks.

4. Is not necessary to me to determine whether or not the applicant's mark is substantially identical or deceptively similar to 638083 as I have already determined that are not satisfied the opponent's trade mark is registered in respect of similar goods.  This ground of opposition has not been established.

   Ground 3 – s.42: Contrary to Law

5. Subsection 42(b) of the Act provides that an application for the registration of a trade mark must be rejected its use would be contrary to law. Mr Pollock submitted that the applicant's used its trademark on the goods in its application would be contrary to law because such use would contravene section 52 of the Trade Practices Act 1974 (TPA), which provides that “A corporation shall not in trade or commerce to engage in conduct that is misleading or deceptive or is likely to mislead or deceive”.

6. The opponent submitted that it was not necessary to prove that misleading and deceptive conduct has actually taken place.  That it is enough that there is a likelihood of misleading or deceptive conduct.  Reference was made to Shanahan's Australian Law of Trade Marks and Passing Off, 3rd edition, 2003 at page 598, which states: 'Misleading conduct does not merely cause confusion; it actually directs a person towards the wrong choice'.

7. Their opponent also referred to the case of Simplicity Funerals Ltd v Simplicity Funerals Pty Limited 1987 ATPR 40-814 at 48836. The case supports the proposition that section 52 of the TPA also applies conduct which is likely to mislead or deceive in the near future although not presently doing so.

8. I have already found, under the section 58 ground, that the opponent has used its mark in relation to computer and computer-related equipment and in relation to support services relating to repair and maintenance of computer and computer-related equipment.  Such goods and services were the same kind of thing as goods of the applicant.

9. I am satisfied that use of trade mark which is substantially identical to the opponent's mark in relation to the same kind of goods and services would be likely to direct a person to wrong choice when selecting those goods or services.  I am further satisfied the applicant is a corporation.  Therefore I am satisfied that this ground opposition has been established.

   Ground 4 – s.60: Reputation

10. To satisfy section 60, the opponent has the burden of establishing the following elements:

    ·     a pre-existing trade mark;

    ·     substantial identity or deceptive similarity between the applied for trade mark and the pre-existing trade mark;

    ·     the acquisition of a reputation in Australia by the pre-existing trade mark; and

    ·     a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

11. It was submitted that the opponent has established a reputation for its mark not only in Australia but on a world wide basis prior to the priority date of the applicant’s mark through its continuous promotion of its goods and services within the computer industry.

12. The opponent referred to the evidence that established that he opponent had substantial and significant sales of its products in Australia and world wide, and also substantial expenditure on promotion of such products in these markets.

13. I have already found that the opposing marks are substantially identical. I have also found that the opponent has used its apc trade mark before the applicant’s priority date.

14. It is necessary to compare the reputation of the opponent with the possible use by the Applicant within the scope of the applicant’s proposed registration – Registrar of Trade Marks v. Woolworths 45 IPR 411, Southern Cross Refrigerating Company v. Toowoomba Foundry Pty Limited (1953) 91 CLR 592 at 608; Renaud Cointreau and CRE v. Cordon Bleu [2000] FCA 720 at paragraph 84 (per Heerey J).

15. As noted above, the relevant test is whether, as a result of the use by the applicant, a number of persons will be caused to wonder whether it might not be the case that the applicant’s services under or by reference to the trade mark came from the same source as the proprietor of the opponent’s APC trade marks.  In making this comparison, regard may be had for the habits of consumers and the trade journals through which the goods or services may be supplied or promoted.

16. Having regard to the evidence, I am satisfied that the opponent acquired a reputation for its apc trade mark in Australia before the applicant’s priority date. The opponent’s trade mark is substantially identical with the applicant’s mark, and I am satisfied that use of the applied for trade mark would be likely to deceive or cause confusion.  Therefore, I am satisfied that this ground opposition has been established.

    Decision

17. The opponent has established grounds of opposition on which it relied so that the opposition as a whole has been successful. Pursuant to section 55 of the Act, I refuse to register Application number 870245.

    Costs

18. The opponent has sought its costs in this matter. As the opponent has been successful in its opposition, I award costs against the applicant and direct that the applicant pay the costs of the opponent in accordance with the official scale.

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    27 October 2004