Audi AG, v Auditel (UK) Ltd
[2022] ATMO 207
•30 November 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Audi AG to registration of trade mark application number 2097525 (class 35) - AUDITEL - in the name of Auditel (UK) Ltd
Delegate: | M. Cooper |
Representation: | Opponent: Russell Water of Phillips Ormonde Fitzpatrick Applicant: Joseph Elks of counsel instructed by Gorton IP |
Decision: | 2022 ATMO 207 Trade Marks Act 1995 (Cth) – opposition under section 52 – s 44 ground pressed – not established – trade mark to proceed to registration. |
Background
This matter concerns an opposition by Audi AG, (‘the Opponent’), under s 52 of the Trade Marks Act 1995 (‘the Act’), to registration of the trade mark 2097525 (‘Trade Mark’) detailed below in the name of Auditel (UK) Ltd (assigned by Map Organisation Ltd) (‘the Applicant’):
Application no: 2097525
Filing Date: 20 June 2020
Trade Mark: AUDITEL
Specification of Services:
Class 35: Business consultancy; business management assistance; business management consultancy; business organisation consultancy; accounting consultancy; compilation and provision of business analysis, business information or business reports; business analysis and consultancy relating to cost; business analysis and consultancy relating to purchasing; cost-containment consultancy, cost containment analysis, cost savings analysis services and cost savings consultancy, all relating to utility costs; cost of utilities consultancy services; utility bill auditing services; services for analysing or checking telecommunications, gas, electricity and/or water invoices; services for finding cost savings in relation to charges for the provision of telecommunications services, to charges for the provision of gas, electricity or water or to sewerage charges; provision of information and advice relating to the aforesaid services.
(‘Services’)
The Trade Mark was examined and advertised on 21 November 2020 for possible registration.
On 16 December 2020, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 21 December 2020, a Statement of Grounds and Particulars (‘SGP’) was filed which cited a s 44 ground of opposition. The Applicant filed a Notice of Intention to Defend on 28 January 2021. The parties then filed their evidence as detailed further below.
On 11 November 2021 the Opponent requested a hearing. I heard the matter by videoconference on 7 September 2022 as a delegate of the Registrar of Trade Marks (‘the Registrar’). Russell Waters of Phillips Ormond Fitzpatrick appeared for the Opponent. The Applicant was represented by Joseph Elks of counsel instructed by Michelle Gorton of Gorton IP.
Evidence
The Opponent’s Evidence in Support was filed on 4 May 2021 and comprises: -
Declaration by Annette Krah, Audi AG Senior Manager, dated 28 April 2021 with Exhibits AK-1 to AK-6 (‘Krah’).
Declaration by Russell John Waters, Principal at Phillips Ormonde Fitzpatrick, the Opponent’s legal representatives, dated 21 April 2021,with Exhibit RJW-1(‘Waters 1’).
The Applicant’s Evidence in Answer was filed on 5 August 2021 and comprises the declaration by Christopher Gordon Allison, the owner and Chairman of Map Organisation Ltd (the Applicant’s predecessor in title), dated 30 July 2021 with Annexures A to T (‘Allison’).
The Opponent’s Evidence in Reply was filed on 11 October 2021 and comprises the declaration by Russell John Waters dated 4 October 2021 with Exhibits RJW-2 to RJW-5 (‘Waters 2’).
In accordance with directions, the Opponent and Applicant filed written submissions. These and the evidence are discussed further below.
Summary of Evidence
Krah lists the Opponent’s various Australian trade marks, including 1109298 and 1706193 for ‘AUDI’ and 1463592 for ‘AUDI CONNECT’ as relied on in the opposition, noting their coverage and exhibiting various examples of their use. Waters 1 refers to searches of the Australian Trade Mark Register for the suffix ‘TEL’ in classes 35 and 38. He exhibits the results, observing that it is a common suffix in relation to telecommunication services. In Waters 2, the Opponent’s successful challenges to the registration of ‘AUDI’-prefixed marks in Europe (none those of the Applicant) are noted and copies of those decisions exhibited.
Allison outlines the Applicant’s establishment in the UK in 1994, its operation in the UK and EU since then, and describes it as a ‘creator of procurement and business transformation solutions which are delivered via the Company’s franchise partners to over 1600 clients in a variety of sectors including building and facilities management; education; hospitality and entertainment; housing and healthcare and retail services.’ He states that the Trade Mark was selected in 1994 and registered in the UK and EU shortly afterwards. He notes that it has coexisted with the Opponent’s trade marks since then with no evidence of confusion. He notes the Trade Mark is pronounced AUDIT-EL, with the emphasis on word AUDIT, which corresponds with the Applicant’s auditing, consulting and procurement services. He further states that the Trade Mark application has been filed in preparation for the Applicant’s relaunch in Australia, where it has previously operated from 1995-1999. He also notes the evidence of the Opponent’s successful European trade mark challenges all relied on the Opponent’s reputation, which is not a claim made in this opposition.
Grounds and 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 (Besanko, Jagot and Edelman JJ) affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599 [6-26].
In its written and oral submissions, the Opponent relied on s 44/reg. 4.15A ground of opposition. The date on which the ground is to be assessed is the filing date of the opposed application, 20 June 2020 (‘the relevant date’), which is also the ‘priority date’ for s 44 purposes.
Consideration and reasons
Section 44
Section 44 of the Act relevantly provides the following in respect of an application for registration of a trade mark for services:
44. Identical etc. trade marks
(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.
In order to establish the s 44 ground of opposition under s 44(2), the Opponent must demonstrate, subject to subsections (3) and (4), that the Trade Mark issubstantially identicalwith or deceptively similar to another registered (or sought to be registered) mark; is in respect of similar services or closely related goods (s 44(2)(a)) and has a priority date not earlier than that of the other mark (s 44(2)(b)).
The Opponent particularised this ground in its SGP 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 registration/s or protected international registration/s or of application/s or IRDA/s. Particulars:
Number Class(es) Mark
1109298 4, 38 Audi
1463592 9, 12, 38, 42 Audi Connect
1706193 11, 35 Audi
Further Particulars: There has been no honest concurrent use of the Opposed Trade Mark with the Prior Trade Mark/s and no other circumstances exist such that the Registrar should be satisfied that it is proper to accept the Opposed Trade Mark subject to any conditions or limitations that the Registrar thinks fit to impose. The opposed trade mark was accepted without submissions to the Registrar that would allow for acceptance under s.44(3) or regulation 4.15A(3).
The provisions of subsection 44(4) of the Act should not be applied in favour of registering the Opposed Trade Mark in relation to any or all of the Goods and/or Services. The opposed trade mark was accepted without submissions to the Registrar that would allow for acceptance under s.44(4) or regulation 4.15A(5).
Prior to the hearing the Opponent advised that it no longer relied on its trade mark 1463592 as it had expired prior to the filing of the opposition. The Applicant confirmed at the hearing that it does not seek to rely on ss 44(3) or 44(4).
The Opponent’s remaining registrations 1109298 and 1706193 (‘Opponent’s marks’), were both filed on 20 January 2006, earlier than the Trade Mark’s priority date of 20 June 2020.
Trade mark 1706193 is registered for
Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
Class 35: Advertising, business management, administration of companies, office works; advertisement services for computers; personnel recruitment supported by psychologically aptitude testing.
Trade mark 1109298 is registered for
Class 4: Industrial oils and greases, lubricants; fuels
Class 38: Telecommunications
Substantial identity
In summary, the Opponent submits that the marks are substantially identical because the first two syllables of the Trade Mark and Opponent’s marks are identical, and ‘-TEL’ is a common suffix used by many traders to identify goods or services in class 35 or 38. As such it is merely descriptive and should be discounted in the comparison of the marks. As the essential feature of both marks, ‘AUDI’, is the same, they should be regarded as substantially identical.
The assessment of substantial identity was identified by Windeyer J in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited as follows:
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 features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[2]
[2] [1963] HCA 66; (1963) 109 CLR 407, 415 (Dixon CJ, McTiernan, Kitto, Taylor and Owen JJ).
A side-by-side comparison is shown in the table below.
| Trade Mark | Opponent’s mark/s |
| AUDITEL | AUDI |
Self-evidently, the Trade Mark and the Opponent’s marks contain the same element, ‘AUDI’ however on a side-by-side basis, the visual difference is apparent, that is, the addition of the ‘TEL’ suffix in the Trade Mark. Also, the Trade Mark comprises three syllables, the Opponent’s marks contain two. As discussed further below, while it is the only element of the Opponent’s marks, I am not persuaded that ‘AUDI’ would necessarily be perceived as the essential element in the Trade Mark. Overall, I am not satisfied that an impression of similarity emerges between the Trade Mark and the Opponent’s marks such that they might relevantly be regarded as ‘substantially identical.’
Deceptive similarity
Reiterating its above submissions, the Opponent further submits that the emphasis in the comparison of the marks should fall on the first word or syllables of the marks and notes that these are identical. The Applicant’s assertions of pronunciation are said to have no bearing on how consumers are likely to comprehend the Trade Mark in use and no evidence has been produced as to how it is pronounced. Any phonetic differences are said to be minor. Relying on the decision in NEC Corporation v Punch Video (S) Pte Limited (‘Necvox’)[3], it contends that there is a real tangible danger that use of the Trade Mark would cause persons to wonder if the Services are supplied by Opponent or are from the same source. The coexisting European registrations are said to have little bearing on this application as their registration processes and considerations are different. Further, the actual use demonstrated of both marks is said to make it highly likely that a number of persons who have encountered the Opponent’s marks in relation to business and telecommunications would, on seeing the Trade Mark, assume a connection. Such confusion would not be dispelled by appreciation of the different aural effect of the marks.
[3] [2005] FCA 1126 (Branson J).
The Applicant disputes that it and the Opponent operate in similar markets and with a similar customer base, noting that there are tangible differences insofar as the evidence of the Opponent’s use of its marks is all ‘car-related’ and applies to its own business whereas the Applicant’s services under the Trade Mark are provided to a wide variety of other businesses. It further maintains that the Trade Mark is visually and aurally distinctive to ‘AUDI’. While the marks contain the same first letters , they are not deceptively similar because they have a sufficiently different pronunciation.[4]
[4] The Applicant relied for example on MBIP Nominees Pty Ltd v Meeka Pty Ltd (2020) 154 IPR 313 (Hearing Officer K. Brown) where ‘MEEKA’ and ‘MECCA’ were found not deceptively similar because of their different pronunciation.
Section 10 of the Act provides that a trade mark will 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.’
This comparison is to be made 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.[5] A possibility of confusion is not sufficient; there must be a real tangible danger of confusion.[6] 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.’[7] It is not necessary that the confusion persist up to, or contribute to inducing, a sale.[8] The use to be considered is notional use.[9]
[5] Australian Woollen Mills v F S Walton and Co Ltd (‘Australian Woollen Mills’) (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).
[6] Registrar of Trade Marks v Woolworths Ltd (‘Woolworths’) (1999) 93 FCR 365; [1999] FCA 1020 [50] ( French J).
[7] Ibid.
[8] TiVo Inc v Vivo International Corporation Pty Ltd (‘TiVo’) [2012] FCA 252 [105] (Dodds-Streeton J).
[9] Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353, 362 (Mason J).
Notionally, assuming use of the Trade Mark in a normal and fair manner for the Services, the Applicant may be providing services bearing the Trade Mark in respect of business management services, to the same types of Australian consumers and in the same markets as the Opponent. Contrary to the Opponent’s submissions, I am not satisfied the same can be said for telecommunications services. This is because, as designated in the Trade Mark, they relate to checking invoices and finding costs savings, a different market to that of class 38 telecommunications services designated in the Opponent’s mark 1109298.[10]
[10] The explanatory note to the class 38 heading, at the time this trade mark was registered (and also currently) provides that it ‘includes mainly services allowing at least one person to communicate with another by a sensory means’. The nature of the services designated by the Trade Mark relate to financial services and clearly would be provided for different purposes to a different market by different types of suppliers.
In estimating the effect or impression produced on the mind of potential consumers, I note the comment in Clark v Sharp in relation to the appropriate comparison:
One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing results of such matters, but by judging the effect of the respective wholes.[11]
[11] (1898) 15 RPC 141,146 (Byrne J).
Assessed as wholes, the visual and aural effect of the marks is different. The Trade Mark comprises three syllables while the Opponent’s marks contain only two. Notwithstanding the common element ‘AUDI’, there is no evidential basis on which to accept the Opponent’s characterisation of the third syllable of AUDITEL as ‘-TEL.’ Having regard to the Allison declaration, and in the absence of persuasive evidence from the Opponent otherwise, Mr. Allison maintains the pronunciation of the Trade Mark is ‘AUDIT – EL’. That is, the three syllables are ‘OR-DIT-EL’. I accept this as a plausible explanation of the Trade Mark’s aural effect because I consider an ordinary English-language speaker, on seeing the Trade Mark used for the Services, is more likely to identify the obvious and common word ‘AUDIT’ than the ‘AUDI’ element.[12] ‘AUDI’ is an invented word with no obvious meaning in relation to the Services. I am not satisfied it has retained its identity in the Trade Mark as an essential feature. Rather, it is AUDIT which ‘strikes the eye and fixes itself in the recollection’[13] of the consumer as the essential feature. Therefore, notwithstanding the common element ‘AUDI’ which might otherwise be considered to create a perception that the marks are related,[14] the addition of ‘TEL’ to ‘AUDI’ has created a different word with a different syllabic structure and meaning.
[12] The Opponent makes no claims that its marks have any degree of notoriety.
[13] Coca Cola Co v PepsiCo Inc (no 2) (2014) 322 ALR 505, [226] (Besanko J).
[14] Jafferjee v Scarlett [1937] HCA 36, (1937) 57 CLR 115, 121-122 (Latham CJ, Dixon and McTiernan JJ); Pamela Margaret Brown v Herron Pharmaceuticals Pty Ltd [1998] ATMO 53.
Therefore, viewed as wholes, I consider the Trade Mark’s look and sound is readily distinguishable from the Opponent’s marks. Even considering the effect of careless pronunciation and imperfect recollection, I consider that the addition of ‘TEL’ to ‘AUDI’ so fundamentally changes the perception of the sound and any possible meaning, that confusion is unlikely. On this basis I am unpersuaded that there is a real tangible risk that a person with an imperfect memory of the Opponent’s marks would, on seeing the Trade Mark, confuse it with the Opponent’s marks or wonder if it has a connection to the Opponent.
I have also had regard to the Opponent’s submissions that its use of its myAudi, Audi A4 and Audi e-tron marks means consumers are likely to see the Trade Mark as being constituted by ‘AUDI’ followed by the non-distinctive ‘TEL’, ‘conveying the meaning of telecommunications,’ and will regard the Trade Mark as a brand extension of AUDI and/or be caused to wonder whether the Services are supplied by the Opponent. In this context I note the evidence does not support any widespread awareness or use of the Opponent’s marks for telecommunications or their use with a conjoined suffix. While the Opponent placed significant reliance on the Necvox decision,[15] the evidence falls short of establishing that the Opponent is recognised as having a ‘family’ of marks in Australia that would suggest to consumers seeing the Trade Mark that it denoted the same trade origin. As Burchett J observed of the trade mark ‘EUROVOGUE’ in relation to contextual confusion:
It is not like "Polo Club", where the original meaning of "Polo" is retained and is dominant, so that a product labelled with the two words may be taken as merely the "club" version of the Polo product.’[16]
[15] Above, n 3
[16] Conde Nast Publications Pty Ltd v Virginia Taylor [1998] FCA 864 (Branson J).
As discussed above, even though AUDITEL wholly contains ‘AUDI’, it does so in a new, invented word which indicates a different meaning, reducing the emphasis on the word AUDI. The ‘AUDI’ element is ‘too indefinite a word’ in the context of the Services to be retained or considered as dominant.[17]
[17] Ibid.
In considering the surrounding circumstances, while the business management services designated by the two marks are quite broad and, on a notional assessment, likely to be provided to a wide range of potential consumers, the types of consumers who seek to enlist such services are likely to be attentive and careful in their selection of providers. Such consumer care and scrutiny in purchasing the Services militates against the likelihood that a consumer would be caused to wonder or infer that those Services provided under the Trade Mark are those of the Opponent or associated with it. This is reinforced by the undisputed absence of any evidence of confusion in the UK and European markets where both marks have operated for approximately 30 years. The Opponent’s successful European oppositions (for different trade marks) are of little relevance because they were considered in a different legal framework and are founded either on the Opponent’s reputation or the fact that the goods and services are identical and there is aural similarity between the relevant marks.
For the above reasons, I am not satisfied that the one common element between the marks, that is, the word ‘AUDI’, is sufficiently similar to ‘AUDITEL’ such that there is a real tangible danger a person with an imperfect memory of the Opponent’s marks, on seeing the Trade Mark, will be caused to wonder if there is a connection or association between them.
It follows that I am not satisfied that the Trade Mark ‘so nearly’ resembles the Opponent’s mark in any material way such that its use would be ‘likely to deceive or cause confusion’ among ‘persons of ordinary intelligence and memory’, even allowing for imperfect recollection.
Therefore, the s 44 ground has not been established.
Decision
Section 55 of the Act relevantly provides:
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.
Subsection (3) does not apply to these proceedings.
The Opponent has failed to establish the ground of opposition nominated in the SGP. Accordingly, the Trade Mark may proceed to registration after one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.
Costs
Both parties sought costs. As the Applicant was the successful party, I award costs against the Opponent under s 221 of the Act in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).
Mary-Ann Cooper
Hearing Officer
Delegate of the Registrar of Trade Marks
30 November 2022
Key Legal Topics
Areas of Law
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Intellectual Property
Legal Concepts
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Appeal
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