Aura Systems, Inc v Audioxtra International Pty Ltd

[2000] ATMO 65

TRADE MARKS ACT 1995

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

Re:Opposition by AURA SYSTEMS, INC to registration of trade mark application 753697 & 753699(9) - AURASOUND & AURA- filed in the name of AUDIOXTRA INTERNATIONAL PTY LTD.

Background

Audioxtra International Pty Ltd filed trade mark applications 753697 and 753699 and the Trade Marks Office has accepted them for registration.  The trade marks in question are, respectively,

APPLICATION 753697  APPLICATION 753699

In both instances, the goods specified for registration are: "Audio products, being radio/cassette/compact disc players, amplifiers, graphic equalisers and loudspeakers for personal, home and automobile use".

Registration of these trade marks has been opposed by Aura Systems Inc, ("the opponent") a manufacturer of high fidelity audio equipment that it has sold in Australia under the trade mark AURA.  The opponent has served evidence in support of its opposition.  That evidence consists of two declarations, by Geoffrey Matthews and Andrew Stanforth. 

The opponent then requested a hearing.  I conducted this, under delegation from the Registrar of Trade Marks.  Ray Walton, a patent attorney of the attorney firm of Griffith Hack, represented the opponent.  The applicant did not appear and has not responded to the proceedings in any way. 

Issues and Decision

At the hearing, Mr Walton argued, in relation to both applications, that because of the opponent's reputation in the trade mark AURA, use by the applicant would be likely to deceive or confuse a significant number of people. This is an argument under s 60 of the Trade Marks Act 1995 ("the act"). Mr Walton also argued, in relation to application 753699 only, that the applicant was not the owner of the trade mark.

It will be convenient and efficient to deal with both of these matters in terms of s 60. This provides:

Trade mark similar to trade mark that has acquired a reputation in Australia

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

Note 1:  For deceptively similar see section 10.  A trade mark is deceptively similar to another trade mark if it so nearly resembles that other mark that it is likely to deceive or cause confusion.

Note 2:  For priority date see section 12.  The priority date for both of the opposed applications is 29 January 1998.

In the absence of any argument from the applicant, I will take it as obvious that the opponent's trade mark AURA is substantially identical to the trade mark the subject of application 753699, and deceptively similar to that of application 753697. Therefore, to determine if the threshold requirement of s 60(a) is met, I must decide if the opponent's trade mark had acquired a reputation in Australia.

The evidence relied on by the opponent satisfies me that a limited volume of amplifiers, tuners and compact disc players was imported into Australia over the period 1992 to 1998.  Some of this was distributed to larger retailers such as Grace Brothers and Harvey Norman.  Promotional material has been distributed to the trade in general, and AURA products have been the subject of in-store promotions.

The opponent's products under this trade mark were, prior to the relevant date, and still are, for that matter, sophisticated items that were not aimed at the mass market.  The extent of the opponent's reputation is, no doubt, that of a niche manufacturer.  While there is a real lack of detail in the opponent's evidence, I do not think I should act as an advocate of the applicant in this matter.  As Mr Walton argued, it has been served with all of the opponent's evidence and does not, apparently, cavil with it. 

More to the point, the fact that the opponent operates in a sophisticated market niche does, I think, make it easier for it to establish that its reputation will, among insiders, those in the outlets through which its goods have passed or been offered for sale, be significant.  Its trade mark, too, assists it, being a word with overtones of elegance, but also short and of a memorable and distinctive character.  Therefore I take the threshold test as established.

Given this, and the fact that the applicant seeks registration for, inter alia, precisely the same goods as those in which the opponent trades, I believe that the second leg of s 60 has also been established. Among some of those in the trade, deception or confusion would be likely in relation to some of the goods specified in the application.

I also state, for the sake of completeness, that the evidence satisfies me that, before the priority date of application 753699, and in the absence of use by the applicant, the opponent had used "the same mark for the same kind of thing"[1].  Therefore, in terms of s 58, the applicant is not the owner of the trade mark AURA in relation to some of the specified goods.

[1] See Re Hicks's Trade Mark: (1897) 22 VLR 636 and the comments in Australian Law of Trade Marks and Passing Off, D R Shanahan, pp 157-159

On the other hand, there is absolutely no evidence of use by the opponent in relation to audio equipment for use in motor vehicles.  Nor is there any evidence of a spillover of reputation from the opponent's niche market into the more general market for in-car audio equipment.  Given the paucity of detail in the opponent's case, I am not prepared to infer that there is any reasonable risk of deception or confusion in relation to the latter products.  These are, in a practical sense a very different line of products to the opponent's, very often sold to different customers and through different outlets.

It follows that, in relation to audio equipment for use in motor vehicles, the opponent has entirely failed to make out a ground of opposition.

Conclusion

The opponent has established a ground of opposition under s 60 in relation to both applications, but only in respect of a limited range of goods. In addition, it has established a ground under s 58 in relation to application 753699, again in relation to a limited range of goods.

Accordingly, I will allow the applicant one month to amend the applications so that the goods are restricted to "audio products, being radio/cassette/compact disc players, amplifiers, graphic equalisers and loudspeakers, all for use in motor vehicles".  If that is done, I will direct that the applications be registered.  I will decide the question of costs when the fate of the applications is known.

Terry Williams
Hearing Officer

29 June 2000