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;…
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- Case
- [2024] ATMO 231
- Decision Date
CaseChat Overview and Summary
The primary legal issue before the Registrar was to determine whether the Opponent had established any grounds for opposing the registration of the Applicant's trade marks. This required the Registrar to consider whether the reputation of the Opponent's marks, coupled with the resemblance between the marks and the goods or services in question, would lead to a likelihood of deception or confusion among consumers.
The Registrar reasoned that merely establishing a reputation for the Opponent's marks was insufficient. The Opponent needed to demonstrate that the use of the Applicant's marks would, because of that reputation, be likely to deceive or cause confusion. While the similarity of the trade marks and the goods was a relevant factor, it was not a prerequisite for opposition. Ultimately, the Registrar found that the Opponent had not established a ground of opposition in relation to the Applicant's trade marks 673, 674, and 984.
Accordingly, the Registrar decided that trade mark numbers 2268673, 2268674, and 2293984 could proceed to registration one month from the date of the decision, unless a notice of appeal was filed. Costs were awarded against the Opponent in respect of trade mark number 2268673, and reduced costs were awarded against the Opponent for trade mark numbers 2268674 and 2293984.
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Background
Background to the litigation
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Evidence
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Decision
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