Audi AG v NIO (ANHUI) Co Ltd - [2024] ATMO 231

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 numbers 2268673 (12) – ES6 and 2268674 (12) – ES8 and 2293984 (12) – ES7 – in the name of NIO (ANHUI) CO., LTD.

Delegate:

Louise Tuohy

Representation:

Opponent: Russell Waters of Phillips Ormonde Fitzpatrick

Applicant: Luke Merrick of Senior Counsel instructed by Corrs Chambers Westgarth

Decision:

2024 ATMO 231

Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 44, 60, 42(b) and 43 considered – none established – trade marks to proceed to registration

Background

This matter concerns an opposition by Audi AG (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark applications (‘Applications’) in the name of NIO (ANHUI) CO., LTD (‘Applicant’) (‘collectively ‘Applicant’s Marks’):
[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:              2268673
Trade mark:  ES6 (‘673 Mark’)
Filing date:  10 May 2022

Specification: Class 12: Vehicles for locomotion by land, air, water or rail; Bumpers for automobiles; Sports cars; Cars; Electric vehicles; Driverless cars (autonomous cars); Motorcycles; Steering wheels for vehicles; Tyres for vehicle wheels; Vehicle chassis; Engines for land vehicles; Automobile hoods; Automobile bodies; Vehicle windows; Rearview mirrors; Cigar lighters for automobiles; Luggage carriers for vehicles; Safety seats for children (for vehicles); Vehicle seats; Safety belts for vehicle seats; Windshield wipers; Anti-theft devices for vehicles; Anti-theft alarms for vehicles; Ashtrays for automobiles; Ashtrays for motor vehicles; Ski carriers for cars; Electric bicycles; Motor scooters; Pedal scooters; Self-balancing scooters; Mobility scooters; Push scooters (vehicles); Materials for lining car interiors; Interior trim parts of automobiles (‘673 Goods’)

And

Trade mark number:              2268674
Trade mark:  ES8 (‘674 Mark’)
Filing date:  10 May 2022
Specification:  Class 12:Vehicles for locomotion by land, air, water or rail; Bumpers for automobiles; Sports cars; Cars; Electric vehicles; Driverless cars (autonomous cars); Motorcycles; Steering wheels for vehicles; Tyres for vehicle wheels; Vehicle chassis; Engines for land vehicles; Automobile hoods; Automobile bodies; Vehicle windows; Rearview mirrors; Cigar lighters for automobiles; Luggage carriers for vehicles; Safety seats for children (for vehicles); Vehicle seats; Safety belts for vehicle seats; Windshield wipers; Anti-theft devices for vehicles; Anti-theft alarms for vehicles; Ashtrays for automobiles; Ashtrays for motor vehicles; Ski carriers for cars; Electric bicycles; Motor scooters; Pedal scooters; Self-balancing scooters; Mobility scooters; Push scooters (vehicles); Materials for lining car interiors; Interior trim parts of automobiles (‘674 Goods’)

And

Trade mark number:              2293984
Trade mark:  ES7 (‘984 Mark’)
Filing date:  25 May 2022
Specification:  Class 12: Sports cars; cars; motors for land vehicles; cycles; tires for vehicle wheels; water vehicles; steering wheels for vehicles; electric vehicles; cycle cars; motorcycles; Apparatus for locomotion by land, air or water; Vehicles; Motor vehicles; Land vehicles; Electric vehicles; Electric motors for land vehicles; Axles for vehicles; Bodies for electric vehicles; Shoe brakes and brake linings for vehicles; Brake calipers, brake systems, bumpers, couplings, differential, drive gears, drive shafts, motors, exchange gear selector, transmission, transmission shafts, hydraulic cylinders and motors, couplings, carrying bearings, all for vehicles; Chassis for vehicles; Manual and power steering apparatus, safety restraints, seats, sliding roofs, steering columns, all for vehicles; Hubs for vehicle wheels; Vehicle wheels; Deflectors, direction indicators, doors, hatches, upholstery, handles for doors, horns, mirrors [Rearview Mirror], luggage racks, ski racks, mudguards, snow or antiskid chains, head restraints, seat belts, safety seats for children, mud flaps, roof racks, shock absorbers, springs, stabilizer, starters, steering wheels, steering linkages, suspensions, torsion bars, rods, windows, window winding mechanisms, windshield wipers, all for vehicles; Arm rests for vehicles; Lead weights for balancing vehicle wheels; Protective covers, radiator grilles, fluid containers, storage boxes and boxes, spare wheel carriers, all being parts of vehicles; Trim panels for vehicle bodies; Parts and fittings for vehicles, particularly motor vehicles and electric vehicles (‘984 Goods’)

The Applications were examined as required by s 31 and advertised for possible registration on 11 October 2022 for the 673 and 674 Marks and 22 October 2022 for the 984 Mark.
The Opponent filed Notices of Intention to Oppose the possible registration of the 673 and 674 Marks on 9 December 2022 and the 984 Mark on 16 December 2022. Then on 4 January 2023 the Opponent filed its Statements of Ground and Particulars (‘SGPs’). The Applicant filed Notices of Intention to Defend the Oppositions on 7 March 2023 for the 673 and 674 Marks and on 15 March 2023 for the 984 Mark.
Thereafter the parties filed evidence in accordance with the Regulations. The Opponent filed the following evidence in support:

673 Mark

Declaration of Russell John Waters, Principal of Phillips Ormonde Fitzpatrick, Attorneys for the Opponent, made on 8 June 2023, with Exhibits RJW-1 to RJW-2 (‘Waters 1’).
Declaration of Nicholas Martin Reid, General Manager Marketing for Audi Australia Pty Ltd, made on 8 June 2023, with Exhibits NMR-1 to NMR-7 (‘Reid 1’)

674 Mark

Declaration of Russell John Waters, Principal of Phillips Ormonde Fitzpatrick, Attorneys for the Opponent, made on 8 June 2023, with Exhibits RJW-1 to RJW-2 (‘Waters 2’).
Declaration of Nicholas Martin Reid, General Manager Marketing for Audi Australia Pty Ltd, made on 8 June 2023, with Exhibits NMR-1 to NMR-7 (‘Reid 2’)

984 Mark

Declaration of Russell John Waters, Principal of Phillips Ormonde Fitzpatrick, Attorneys for the Opponent, made on 8 June 2023, with Exhibits RJW-1 to RJW-2 (‘Waters 3’).
Declaration of Nicholas Martin Reid, General Manager Marketing for Audi Australia Pty Ltd, made on 8 June 2023, with Exhibits NMR-1 to NMR-8 (‘Reid 3’)

The Applicant filed the following evidence in answer:

Declaration of Stephen Marcus Stern, Partner of Corrs Chambers Westgarth solicitors for the Applicant, made on 8 September 2023, with Annexures SMS-1 to SMS-7 (‘Stern’).

Declaration of Philip Brook, retired senior automotive executive, made on 14 September 2023 (‘Brook’).

Declaration of Lei Li, Intellectual Property Counsel at NIO Holdings Co., Ltd, made on 15 September 2023, with Annexures LL-1 to LL-6 (‘Li’).

The Opponent filed the following evidence in reply:

Declaration of Paul Ward Gover, motor writer and automotive analyst, made on 20 November 2023 (‘Gover’).

Declaration of Russell John Waters, made on 21 November 2023, with Exhibits RJW-3 to RJW-4 (‘Waters 4’).

Once time for filing evidence had ended both parties were given the opportunity to either request an oral hearing or a hearing by way of written submissions. Both parties requested an oral hearing. As a delegate of the Registrar of Trade Marks I heard the matter by videoconference on 18 October 2024. Russell Waters of Phillips Ormonde Fitzpatrick observed by Winney Yang of Phillips Ormonde Fitzpatrick, appeared on behalf of the Opponent. Luke Merrick of Senior Counsel instructed by Stephen Stern and Nicholas Mason of Corrs Chambers Westgarth appeared on behalf of the Applicant. The parties’ oral submissions were supported by written submissions filed prior to the hearing.

Grounds of Opposition, Relevant Date and Onus

In the SGPs the Opponent nominated grounds of opposition under ss 42(b), 43, 44 and 60.
The date at which the rights of the parties are to be determined is the filing date of 10 May 2022 for the 673 and 674 Marks and on 25 May 2023 for the 984 Mark (‘Relevant Date/s’) which is also the priority date for the purposes of s 44 and 60.
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

[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, [133] (Besanko, Jagot and Edelman JJ).

Section 44

Section 44 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.
…
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant’s trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.

To satisfy the s 44 ground of opposition the Opponent must establish that the Applicant’s Marks are substantially identical with, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, and in respect of similar goods or closely related services.
In the event that each of these requirements is satisfied it may still be possible for me to accept the Applications (or allow them to proceed to registration) if I am satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Applicant’s Marks, other circumstances which would make acceptance of the Application for registration of the Applicant’s Marks proper, or that the Applicant has continuously used its Marks beginning before the priority dates of the Opponent’s relied upon trade marks.
In the SGPs the Opponent nominated the following trade mark registrations (collectively ‘Opponent’s Marks’):

Registration number	Trade mark	Filing date	Class 12 Goods
1304701 (‘701 Mark’)	31 May 2009	Vehicles; apparatus for locomotion by land, air or water
1304702 (‘702 Mark’)	31 March 2009	Vehicles; apparatus for locomotion by land, air or water
760038 (‘038 Mark’)	S8	20 April 1998	Automobiles
1305981 (‘981 Mark’)	5 May 2009	Vehicles; apparatus for locomotion by land, air or water

From the information set out in the SGPs and verified on the Register of Trade Marks it is evident that the Opponent’s Marks are held in a name other than that of the Applicant, and have priority dates earlier than the Relevant Dates.

Similar Goods

Section 44 also requires that goods be similar. Section 14(1) states that goods are similar if they are the same or of the same description to other goods. 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.[4]

673 Goods

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

The 673 Goods in class 12 for Vehicles for locomotion by land, air, water or rail; Sports cars; Cars; Electric vehicles; Driverless cars (autonomous cars); Motorcycles; Electric bicycles; Motor scooters; Pedal scooters; Self-balancing scooters; Mobility scooters; Push scooters (vehicles) are the same as the Vehicles; apparatus for locomotion by land, air or water covered by the 701 Mark in class 12.
The 673 Goods in class 12 for Bumpers for automobiles; Steering wheels for vehicles; Vehicle chassis; Engines for land vehicles; Automobile hoods; Automobile bodies; Vehicle windows; Rearview mirrors; Cigar lighters for automobiles; Vehicle seats; Safety belts for vehicle seats; Windshield wipers; Anti-theft devices for vehicles; Anti-theft alarms for vehicles; Ashtrays for automobiles; Ashtrays for motor vehicles; Materials for lining car interiors; Interior trim parts of automobiles are similar to the goods Vehicles; apparatus for locomotion by land, air or water in class 12 covered by the 701 Mark. The 673 Goods can be characterised as vehicle parts and accessories and inherently related to the goods covered by the 701 Mark, as it is normal practice for vehicle manufacturers to sell parts and accessories under the same brand.

674 Goods

The 674 Goods in class 12 for Vehicles for locomotion by land, air, water or rail; Sports cars; Cars; Electric vehicles; Driverless cars (autonomous cars); Motorcycles; Electric bicycles; Motor scooters; Pedal scooters; Self-balancing scooters; Mobility scooters; Push scooters (vehicles) are the same as the Automobiles in class 12 covered by the 038 Mark and the Vehicles; apparatus for locomotion by land, air or water in class 12 covered by the 981 Mark.
The 674 Goods in class 12 for Bumpers for automobiles; Steering wheels for vehicles; Vehicle chassis; Engines for land vehicles; Automobile hoods; Automobile bodies; Vehicle windows; Rearview mirrors; Cigar lighters for automobiles; Vehicle seats; Safety belts for vehicle seats; Windshield wipers; Anti-theft devices for vehicles; Anti-theft alarms for vehicles; Ashtrays for automobiles; Ashtrays for motor vehicles; Electric bicycles; Motor scooters; Pedal scooters; Self-balancing scooters; Mobility scooters; Push scooters (vehicles); Materials for lining car interiors; Interior trim parts of automobiles are similar to the Automobiles in class 12 covered by the 038 Mark and the Vehicles; apparatus for locomotion by land, air or water in class 12 covered by the 981 Mark. The 674 Goods can be characterised as vehicle parts and accessories and inherently related to the goods covered by the 038 and 981 Marks, as it is normal practice for vehicle manufacturers to sell parts and accessories under the same brand.

984 Goods

The 984 Goods in class 12 for Sports cars; cars; cycles; water vehicles; electric vehicles; cycle cars; motorcycles; Apparatus for locomotion by land, air or water; Vehicles; Motor vehicles; Land vehicles; Electric vehicles are the same as the Vehicles; apparatus for locomotion by land, air or water in class 12 covered by the 702 Mark.
The 984 Goods in class 12 for motors for land vehicles; steering wheels for vehicles; Electric motors for land vehicles; Axles for vehicles; Bodies for electric vehicles; Shoe brakes and brake linings for vehicles; Brake calipers, brake systems, bumpers, couplings, differential, drive gears, drive shafts, motors, exchange gear selector, transmission, transmission shafts, hydraulic cylinders and motors, couplings, carrying bearings, all for vehicles; Chassis for vehicles; Manual and power steering apparatus, safety restraints, seats, sliding roofs, steering columns, all for vehicles; Hubs for vehicle wheels; Vehicle wheels; Deflectors, direction indicators, doors, hatches, upholstery, handles for doors, horns, mirrors [Rearview Mirror], , mudguards, head restraints, seat belts, mud flaps, shock absorbers, springs, stabilizer, starters, steering wheels, steering linkages, suspensions, torsion bars, rods, windows, window winding mechanisms, windshield wipers, all for vehicles; Arm rests for vehicles; Lead weights for balancing vehicle wheels; Protective covers, radiator grilles, fluid containers, storage boxes and boxes, spare wheel carriers, all being parts of vehicles; Trim panels for vehicle bodies; Parts and fittings for vehicles, particularly motor vehicles and electric vehicles are similar to the Vehicles; apparatus for locomotion by land, air or water in class 12 covered by the 702 Mark. The 984 Goods can be characterised as vehicle parts and accessories and inherently related to the goods covered by the 702 Mark, as it is normal practice for vehicle manufacturers to sell parts and accessories under the same brand.
None of the remaining 673 Goods in class 12 being Tyres for vehicles; Luggage carriers for vehicles; Safety seats for children (for vehicles); Ski carriers for cars, or the 674 Goods in class 12 being Tyres for vehicle; Luggage carriers for vehicles; Safety seats for children (for vehicles), or the 984 Goods in class 12 being tires for vehicles; luggage racks, ski racks, snow or antiskid chains, safety seats for children or roof racks are the same or similar to the goods covered by the 701, 702 038 and 981 Marks in class 12. Although these goods are for vehicles, they perform different functions and are created by different traders.

Substantially identical

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. Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical. [5]
[5] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Windeyer J) (‘Shell’).
In this matter the Opponent relies on more recent decisions which have placed relevance of the essential elements or ‘dominant cognitive cues’ of the trade marks. In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’),[6] the Full Court held that a comparison of marks is to be carried out cognisant of the essential elements of the trade marks, noting that essential elements are unlikely to be found in mere descriptive elements. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd,[7] use of a composite trade mark containing HARBOUR LIGHTS and five gold stars was found to be use of HARBOUR LIGHTS. In Henley Constructions Pty Ltd v Henley Arch Pty Ltd[8] the Court considered use of the name HENLEY with a triangle device and the word PROPERTIES. The Court was not persuaded that use of the word PROPERTIES and/or the triangular device substantially effected the identity of HENLEY.
[6] [2017] FCAFC 83, [52] (Greenwood, Jagot, and Beach JJ).
[7] [2017] FCAFC 56 (Greenwood, Besanko and Katzmann JJ).
[8] [2023] FCAFC 62 (Yates, Rofe and McElwaine JJ).

The Opponent submits that the ‘dominant cognitive cues’ in the Opponent’s Marks are the alphanumerical combinations S6, S7 and S8. These cues are how these Opponent’s Marks are referred to in speech and how its Marks would be remembered by consumers. The 038 Mark is the alphanumeric combination S8 solus. The 701, 702 and 981 Marks consists of the alphanumerical combinations S6, S7 and S8 and a parallelogram device. The Opponent argues that the device element, whilst adding to the overall impression of the Marks, is a simple geometric shape with limited capacity to distinguish.

I agree with the Opponent that the parallelogram device in the Opponent’s 701, 702 and 981 Marks is a simple geometric shape which sits in the background and that this element makes a relatively unimportant contribution to the overall impression of its Marks. I am satisfied that consumers would perceive the device as merely decorative, and use of the device does not substantially affect the identity of the alphanumerical combinations S6, S7 and S8.
The Opponent also argues that the differences between its Marks and the Applicant’s Marks is the presence of the letter E preceding the common elements of the Applicant’s Marks. The Opponent contends that the letter E is merely descriptive of ‘electronic’ or ‘electric’ goods within the scope of the claimed goods and so is not an essential feature of the Applicant’s Marks.[9] This leaves the common elements S6, S7 and S8 as the essential elements of all the trade marks.
[9] Trade Marks Manual of Practice and Procedure Section 22.14.1 E trade marks.
In support of the Opponent’s submissions Exhibit RFW-2 to Waters 1[10] comprises an extract from the Macquarie Dictionary Online which defines the letter e as a prefix which indicates something that operates electronically: e-tag; e-ticket. Moreover, Exhibit RJW-1 to Waters 1 comprises undated screen captures taken from the Peugeot, Kia, Renault, Ford, Honda, Mercedes and the Opponent’s websites. The pages reveal that these manufacturers use trade marks featuring the letter E in relation to electric vehicles. For example: Peugeot E-2008; Peugeot e-Partner; Kia Niro EV; Kia EV6; Kia EV9; Renault Kangoo E-Tech; Renault Megane E-Tech; Ford Mustang Mach-E; Honda-e; Audi e-tron; Audi e-tron Sportback; Audi e-tron S; Audi e-tron S Sportback, Audi e-tron FT, Audi RS e-tron GT; and Mercedes EQ.
[10] All references to Waters 1 are also a reference to Waters 2 and 3 as these declaration contain the same information.
In response the Applicant filed the Brook declaration, in which Mr Brook, a retired Senior Automotive Executive with global experience in sales, marketing and communications, states that alphanumeric naming conventions are extremely common in the automotive industry and are even more commonly used amongst premium and luxury automotive brands. Mr Brooks considers that while there are some car manufacturers that use the letter E for electric vehicles, such vehicles are relatively recent arrivals on the car market. The letter E has long been used and continues to be used for non-electric vehicles. Mr Brooks states that he is aware of the following uses of the letter E in the automotive industry:
·     for some manufacturers the letter E is used to denote the word ‘emotion’;
·     for other manufacturers the letter E is used to demote a sequential model of motor vehicles. For example, Jaguar produced the Jaguar E-Type after earlier producing the Jaguar C-Type and D-Type. Jaguar recently launched an SUV called the F-Pace and then used the letter E on the follow up model called the E-Pace. The use of the E in this case was to designate the fact that the E-Pace is a smaller model than the F-Pace;
·     there is use of the letter E by Mercedes which has used the letter E in two different ways. Originally E stood for the German word ‘Einspritzung’ indicating that the vehicle engine was equipped with petrol fuel injection (for example the E320 model). Later, once virtually all Mercedes models had a petrol fuel injection feature, the entire class was named E-Class with the letter E standing for ‘Executive’ (for example the E300 model);
·     the letter E has also been used to denote the word ‘edition’. For example, General Motors used the term SLE which stands for ‘Standard Luxury Edition’. Many brands have used the term SE which usually means ‘Special Edition’ or the term ‘LE’ which if often used by motor vehicle manufacturers to mean ‘Limited Edition’.

Annexure SMS-7 to Stern comprises a data set providing details of car manufacturers who do not use the letter E as a designation for electric vehicles including: Volvo XC40, Jaguar I-Pace, Volkswagen ID.4, BMW i4, BMW iX, Hyundai Ioniq 5, Tesla Model Y, Tesla Model 3, and Porsche Taycan.
Furthermore, in Li, Mr Li states that the Applicant’s first vehicle, the EP9 Supercar[11] was launched in 2016. Mr Li declares that the name EP9 was selected on the basis that the letter E stood for ‘emotional’, and the letter P stood for ‘performance’. Mr Li states that the same naming logic was then followed for the Applicant’s ES and EC vehicle ranges. Mr Li notes that the letter E has been consistently used by the Applicant to denote ‘emotionality’ in connection with the Applicant’s philosophy that its products should be designed to arouse human emotions.
[11] Li [12] to [13], Exhibit LL-1 and LL-2.
In response Mr Waters states that he reviewed the Applicant’s website In particular he looked at webpages relating to the Applicant’s EP9, ES6, ES7 and ES8 models and looked for instances of the words ‘emotion’ and ‘electric’. Mr Waters declares that he found no occurrences of the word ‘emotion’ however each page showed one or more occurrences of the word ‘electric’.[12]
[12] Waters 4 [3], Exhibits RWJ-3.
In addition, in Gover, Mr Gover, a writer and automotive analyst, notes Mr Brooks discussion on the use of the letter E as part of trade marks in the automotive industry. However, Mr Gover considers that the letter E is now intrinsically linked to electric vehicles (‘EV’) and the electrification in the automotive world. Examples include the Audi e-tron GT, BMW 330e, xDrive30e, Fiat 500e, Ford E-Transit, Ford Mustang Mach-E, Kia E-Niro, LDV eDeliver 9, LDVeT60, Lexus RZ450e, Mercedes EQE, Mercedes GLC300e, Mini Cooper SE, Peugeot e-2008 and Renault Megane E-Tech.
In assessing the evidence before me I am satisfied that it is reasonable to consider that the letter E in the Applicant’s Marks stands for ‘emotionality’ and is used to promote the values/principles of the Applicant. This position is supported by Mercedes promotional materials which state that its model designation EQ stands for ‘emotion and intelligence’, two of its guiding principles.[13] While the letter E is used by a number of car manufacturers to denote the electrification of their lines, there is no evidence demonstrating that the letter E would be readily understood by Australian consumers as meaning ‘electric’ in the context of model designations or that consumers are known to shorten model designations which use the letter E as a prefix.
[13] Stern, Annexure SMS-4.
Turning to the Applicant’s Marks I note that even if the letter E might be perceived as an abbreviation of ‘electric’ or ‘electronic’, the letter S does not have a clear meaning and it is unclear what the numbers 6, 7 and 8 are supposed to describe. As such there is no indication that the Applicant’s Marks as a whole are descriptive.
Therefore, I find that both the letters E and S and the numerals 6, 7, or 8 are all equally essential features of the Applicant’s Marks.
On a side by side comparison, there are clear differences between the trade marks. The Opponent’s Marks are for the alphanumeric combinations S6, S7 and S8. In comparison the Applicant’s Marks are for the alphanumeric combinations ES6, ES7 and ES8. The presence of the letter E as a prefix in the Applicant’s Marks is unlikely to go unnoticed on a side by side comparison. As such I find that that the compared trade marks are not substantially identical. The total impression emerging from a side by side comparison is not one of resemblance.
I now turn to the question of whether the respective trade marks are deceptively similar. 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.
The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell:
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 on 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 [trade mark].[14]
[14] Shell (n 5), 416.
The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[15] conveniently stated the relevant principles, which may be summarised as follows:
[15] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (‘Self Care’).

(a)the resemblance between the two marks must be the cause of the likely deception or confusion;[16]
[16] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ) (‘Swancom’).
(b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[17]
[17] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).
(c)the marks should not be compared side by side;[18]
[18] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).
(d)the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[19]
[19] Ibid.
(e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[20]
[20] Ibid.
(f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[21]
[21] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ) (‘Henschke’).
(g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[22]
(h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [23]

the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[24]

(j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “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”;[25]
(k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[26] and
(l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[27]
[22] Shell, (n 5), 415.
[23] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).
[24] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).
[25] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (‘Woolworths’) (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).
[26] Australian Woollen Mills (n 18).
[27] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) (‘Hashtag Burgers’) citing Australian Woollen Mills (n 18), 657.

Furthermore, the Court, in the same case, noted the following:[28]
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"[29]. 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[30], 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[31].
[28] Self Care (n 15), [33].
[29] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd (1989) 86 ALR 549, 589 (emphasis added), approved in Henschke (n 21), [44], Hashtag Burgers (n 27), Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel (2021) 157 IPR 230, 238 [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598, 622 [97] (see also 626 [111]) and Swancom (n 16), 56 [73].
[30] Act, s 68.
[31] New South Wales Dairy [1989] FCA 124; (1989) 86 ALR 549 at 589.

The Opponent references Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc,[32] where the common termination in the trade mark led to a finding of deceptive similarity. In that case the judge compared two trade marks, “In-N-Out Burger” and “Down-N-Out” with similar stylisation and found that the overall impression between the trade marks was sufficient to find a likelihood of deception or confusion. In that case the nature of the goods, were burgers so the word burger, as a descriptive term, was not a meaningful point of distinction and thus focus was placed on the “In-N-Out’ element. The Court determined that none of the differences between “In-N-Out” and “Down-N-Out” affected the impression created by the sound of the trade marks having regard to consumers with imperfect recollection.
[32] Hashtag Burgers (n 27).
The Opponent’s Marks are for the alphanumeric combination S6, S7 and S8 and its 701, 702 and 981 Marks also contain a device element. The Applicant’s Marks are for ES6, ES7 and ES8. Visually the Applicant’s Marks consist of three characters starting with the letter E which is unlikely to go unnoticed by consumers in the market for vehicles. In the world of automobiles, where letter and numeral combinations are often used, in comparing the respective trade marks, it is important to bear in mind the scope of the monopoly afforded by registration of a letter and numeral name. Visually consumers of automobiles are conditioned to expect that automobile manufacturers use combinations of letters and numerals which may or may not be more than one letter in differing ways. In comparing the respective trade marks as a whole, I find they do not share a significant visual degree of similarity.
In relation to aural similarity, the Applicant’s Marks are language sets that would be sounded out individually by consumers with importance placed on the first letter E,[33] which is not silent, i.e. E, then S, then 6 or 7 or 8, while the leading element in the Opponent’s Marks is the prefix S.
[33] London Lubricants (1920) Limited’s Application (1925) 42 RPC 264, [279] (Sargant LJ).
While the idea of using letters and numerals in a myriad of combinations is well known, the respective trade marks do not convey similar ideas or in fact any ideas. ES6, ES7 and ES8 have no obvious meaning and neither do S6, S7 or S8.
When the Applicant’s Marks are considered as wholes the visual and aural differences create an overall sufficiently different impression to the Opponent’s Marks. In addition to the differences between the trade marks, many of the class 12 goods are large and expensive purchases, and are at the price point that suggests consumers would have greater regard for the differences in the trade marks.
A consideration of deceptive similarity is not concerned with the mere possibility of deception or confusion between trade marks but a real, tangible danger of it occurring. After consideration of the differences in the respective trade marks, taken together, and even allowing for imperfect recollection, as a matter of impression and common sense they generate an overall visual, aural and conceptual impression of difference.
I am not satisfied that consumers viewing or hearing the Applicant’s Marks would be caused to wonder whether the Applicant’s 673, 674 and 984 Goods originate from the same trade source as the Opponent, or that the trade marks are otherwise connected in some way. I find that there does not exist a real, tangible danger of deception or confusion between the respective trade marks.
The Opponent has not established the ground of opposition under s 44.

Section 60

Section 60 provides:
60 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.

In the SGPs the Opponent particularised the ground under s 60 as follows:
The Opponent has used the mark S6 in Australia since at least 2000 [the Opponent has used the mark S7 in Australia in relation to land vehicles since at least 2012; and Opponent has used the mark S8 in Australia since at least 1998] and has acquired a significant reputation in that mark as a result of that use. Because of that reputation, use of the Opposed Trade Mark by the Applicant is likely to deceive or cause confusion.
To satisfy s 60, the Opponent must establish that the trade marks upon which it relies had a reputation in Australia at the priority dates of the Applicant’s Marks. The Opponent must then establish that because of that reputation, use of the Applicant’s Marks would be likely to deceive or cause confusion.
In McCormick & Co Inc v McCormick, Kenny J asked what is intended by the word ‘reputation’ in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’12F9F[34] and quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner…[35]
[34] [2000] FCA 1335, [81].
[35] [1992] FCA 159, [118].

Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sale or turnover of goods sold under the 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 its esteem, or image, projected by that trade mark. The quantum sale, 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 reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorship, cross-promotions, ‘contra deals’ and so forth.
It follows that a trade mark used in relation to goods 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 sale 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 association of the trade marks with the goods or services themselves.14F11F[36]
[36] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 436.
What constitutes a significant or substantial number of persons in the relevant market must be considered. Heerey J in Le Cordon Bleu BV v Cordon Bleu International Ltee provided some guidance:
What is “significant” or “substantial” will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.F12F[37]
[37] [2000] FCA 1587, [91], (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955 (Cth)), (emphasis in original).
Each mark is separate when considering the operation of s 60 and it is appropriate to consider the use of which they have been put.

701 Mark

In Reid 1, Mr Reid declares that the Opponent’s use of its 701 Mark in Australia commenced in 2000.[38] The 701 Mark is used as a grill plate badge on the Opponent’s vehicle goods,[39] and the Opponent uses the 701 Mark in its publicity materials. Exhibit NMR-3 to Reid 1 comprises copies of the Opponent’s October 2006, March 2020 and March 2022 vehicle specification sheets and brochures. The specifications all feature use of the 701 Mark. Exhibit NMR-4 to Reid 1 comprises social media templates issued by the Opponent to its Australian dealerships in relation to the release of its new sedan featuring the 701 Mark arriving in 2020. Exhibit NMR-5 to Reid 1 comprises a copy of a media release dated 22 October 2012 for the Opponent’s sedan featuring the 701 Mark. Confidential Exhibit NMR-7 to Reid 1 comprises Australian sales figures of the Opponent’s goods featuring the 701 Mark for the years 2015 to 2022.

702 Mark

[38] Reid 1, Exhibit NMR-1

[39] Reid 1, Exhibit NMR-2

In Reid 3, Mr Reid states that use of the 702 Mark in Australia commenced in 2012.[40] The 702 Mark is used as a boot badge on the Opponent’s vehicles,[41] and in its publicity materials. Exhibit NMR-3 to Reid 3 comprises copies of the Opponent’s September 2011, May 2020 and March 2022 vehicle specifications brochures. The specifications all feature use of the S7 mark. Exhibit NMR-4 to Reid 3 comprises social media templates for Facebook and Instagram issued by the Opponent to its Australian dealerships in relation to the 2020 release of its new Sportsback vehicle featuring the 702 Mark. Exhibit NMR-5 to Reid 3 comprises a copy of a media release dated 22 October 2012 for the Opponent’s Sportsback limited edition model featuring the 702 Mark. Exhibit NMR-6 to Reid 3 comprises a spreadsheet setting out the text of the sponsored ads which would appear in relation to any relevant Google search and features the headline “Audi S7 Sportback”. Confidential Exhibit NMR-8 to Reid 3 comprises Australian sales figures of vehicles featuring the 702 Mark for the years 2015 to 2022.

038 and 981 Marks

[40] Reid 3, Exhibit NMR-1.

[41] Reid 3, Exhibit NMR-2

In Reid 2, Mr Reid declares that the Opponent has used its 981 Mark and 038 Mark in Australia since at least 1998.[42] Exhibits NMR-1 to Reid 2 comprises two screenshots from the Internet Archive Service Wayback Machine from the Opponent’s Australian website (‘Website’). The captures dated 3 December 1998 and 18 February 1999 show the 038 Mark appearing as a value on a drop down menu, and in specifications. Exhibit NMR-2 to Ried 2 comprises a photograph from the Opponent’s Website showing the 981 Mark appearing on a vehicle boot. Mr Reid states that the Opponent also uses the 981 and 038 Marks in its publicity materials. Exhibit NMR-3 to 5 to Reid 2 are copies of the Opponent’s vehicle specifications featuring the 702 and 038 Marks dated October 2006, August 2020 and August 2022. Exhibit NMR-6 to Reid 2 comprises a copy of a media release dated August 1998 for the Opponent’s launch of its Supercar featuring the 981 and 038 Marks. Confidential Exhibit NMR-7 to Reid 2 comprises Australian sales figures of vehicles featuring the 981 and 038 Marks for the years 2015 to 2022.
[42] Reid 2, Exhibit NMR-2
In my assessment of the evidence before me it appears that the Opponent has used its 701 Mark for 24 years, its 702 Mark for 12 years, and its 038 and 981 Marks for 26 years in Australia. The Opponent has provided examples of promotion of the 701, 701, 038 and 981 Marks on its Website, specifications, and through its social media and media information releases. The Opponent has not provided evidence regarding advertising expenditure. The confidential sales figures show continued sales of its vehicle goods, however unit sales data indicates that the actual number of products sold in the reporting period are low, although the Opponent submits that its products are luxury vehicles with each costing in excess of AU$180,000. Overall, I am satisfied that the Opponent has shown a limited reputation in Australia for its goods bearing each of its Marks at the Relevant Date.
It is not sufficient that the Opponent merely establishes that its Marks have a reputation, I must also be satisfied that because of that reputation the use of the Applicant’s Marks would be likely to deceive or cause confusion. There is no requirement that the trade marks upon which the Opponent relies are deceptively similar to the Applicant’s Marks, nor that the goods of the parties are similar. Nonetheless, resemblance between the parties’ trade marks remains a relevant factor, as noted in Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd12F wherein Hearing Officer Lyons said:
Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.
What can be said then of section 60 as we now find it is that it comprehends that the trade marks under comparison might be quite dissimilar, and yet, taken in combination with the repute of the opponent’s trade mark (and possibly other factors), deception or confusion is still more likely than not. Put another way, section 60 now contemplates that an opponent may prevail because of the reputation in the mark on which it relies notwithstanding that the trade marks under comparison may even be quite dissimilar.^[43]
[43] [2010] ATMO 5, [39]-[40].

For the reasons provided in relation to the s 44 ground of opposition, I consider the differences between the Applicant’s Marks and each of the Opponent’s Marks are too notable for the Opponent to establish a likelihood of deception or confusion irrespective of the alleged reputation acquired by each of its Marks within Australia. Consumers who encounter vehicles bearing the Applicant’s Marks would not likely be confused or deceived as to the origin of those goods due to the Opponent’s Marks, particularly as the evidence shows that the Opponent’s four ringed trade mark is featured on all of the Opponent’s vehicles and the Opponent’s primary word mark AUDI and its four ringed trade mark are featured in all of its promotional materials.
The Opponent has not established the ground of opposition under s 60.

Section 42(b)

Section 42(b) provides:
42 Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
…
(b) its use would be contrary to law.

In the SGPs the Opponent particularised the ground under s 42(b) as follows:
The Opponent has used the mark S6 in Australia since at least 2000 [the S7 in Australia since at least 2012 and S8 in Australia since at least 1998] and has acquired a significant reputation in that mark as a result of that use. Because the Opposed Trade Mark is deceptively similar to the Opponent’s S6 [S7 and S8] mark, use by the Applicant would constitute passing off at common law as well as misleading and deceptive conduct under the Australian Consumer Law.

The case law on s 42(b) requires the Opponent to show that use of the Applicant’s Marks would be, rather than could or might be, contrary to law.[44] As observed by Rangiah J in Primary Health Care Limited v Commonwealth of Australia:
It is not enough for a party opposing registration to show that s 18 of the ACL [Australian Consumer Law 2010] or s 52 of the TPA [Trade Practices Act 1974] might be contravened. The opponent must prove, on the balance of probabilities, that the provision would be contravened by use of the trade mark.[45]
[44] Advantage Rent a Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
[45] [2017] FCAFC 174, [411].
Section 18 of the Australian Consumer Law[46] (‘ACL’) is concerned with misleading or deceptive conduct, while s 29 of the ACL is concerned with false and misleading representations. Case law has made it plain that s 18 of the ACL imposes a more stringent test than that for deception or confusion under s 60.[47] I have found that the Opponent has failed to establish a ground of opposition under s 60. Consequently, I find that the Opponent has also failed to establish that use of the Applicant’s Marks would be contrary to s 18 of the ACL.
[46] Competition and Consumer Act 2010 (Cth), sch 2.
[47] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198. This case was decided under the superseded s 52 Trade Practices Act 1974 (Cth) (‘TPA’) the equivalent provision to the current s 18 of the ACL.
In relation to s 29 of the ACL it has been held that where a trade mark does not offend s 18 of the ACL, neither will it offend s 29 of the ACL[48] and nor will it constitutepassing off.[49]
[48] In Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, Beaumont J considered – in connection with the superseded TPA - that ‘the Court’s conclusion on section 52 would necessarily carry with it a conclusion on section 53 (c) and (d).’ Sections 53(c)-(d) of the TPA are the equivalent provisions to ss 29(1)(g)-(h) of the ACL.
[49] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J), wherein failure to succeed under ss 52 or 53 of the TPA ‘will invariably mean that proceedings for passing off would likewise fail’.
The Opponent has not established the ground of opposition under s 42(b).

Section 43

Section 43 provides:
43 Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
In the SGPs the Opponent particularised the ground under s 43 as follows:
The letter “E” appearing in the mark is commonly used in the automotive industry to indicate an electric vehicle. Use in relation to non-electric vehicles covered by the application is likely to deceive or cause confusion.

To establish a ground of opposition under s 43, there must be an inherent connotation within the trade mark itself. Justice Gyles in Pfizer Products Inc v Karam commented:
‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question …[50]
[50] [2006] FCA 1663, [53].
In Winton Shire Council v Lomas, Spender J noted:
Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.[51]
[51] [2002] FCA 288, [19].
The Opponent submits that the letter E commencing each of the Applicant’s Marks is an indication that the goods to which the Applicant’s Marks will be applied are electric vehicles or goods which incorporate electronics or electronic technology. The Opponent argues that while some of the claimed goods meet this requirement, there are many that do not, and the Applicant’s Marks are potentially misdescriptive when used in relation to those goods. Use of the Applicant’s Marks for those goods is therefore likely to deceive or cause confusion.
In response the Applicant submits that the letter E has long been used in the automotive industry for a range of branding purposes. Secondly, the Applicant submits that the Opponent contention rests on the idea that if the Applicant achieves registration, it would use its Marks in a way that was misdescriptive and that this supposition is unproven.
Section 43 is concerned with a connotation arising from the trade mark itself. I have already established that the letter E does not necessarily suggests the 673, 674 and 984 Goods are electric or incorporate electronics or electronic technology, especially in the face of the more common naming convention for electric vehicles i.e. the acronym EV which would be understood by consumers. I agree with the Applicant that there is no evidence before me sufficient to establish there is a connotation in the Applicant’s Marks which would cause confusion or deception.
The Opponent has not established a ground of opposition under s 43.

Decision

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.
The Opponent has not established a ground of opposition in relation to the Applicant’s 673, 674 and 984 Goods. Accordingly, I decide that trade mark numbers 2268673, 2268674 and 2293984 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal, I direct that the disposition of the Applications should be in accordance with the Court’s order or direction.

Costs

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 Opponent under s 221 in line with Schedule 8 of the Regulations in respect of trade mark number 2268673. For trade mark number 2268674 and trade mark number 2293984, I award reduced costs against the Opponent in the same manner as Hume Industries (Malayasia) Berhad v James Hardie & Coy Pty Ltd.[52]
[52] [2001] ATMO 78 (Delegate Williams).

Louise Tuohy

Hearing Officer

Delegate of the Registrar of Trade Marks

28 November 2024

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Citations

Audi AG v NIO (ANHUI) Co Ltd [2024] ATMO 231

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