Automobiles Peugeot v Viva Time Corporation

[2001] ATMO 52

TRADE MARKS ACT 1995

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

Re:Opposition by Automobiles Peugeot to registration of trade mark application 771492(14) - PAUL PEUGEOT- filed in the name of Viva Time Corp.

Background

In this matter Viva Time Corp (‘Viva’), a New York corporation of New York, New York, filed application under the Trade Marks Act 1995 (‘the Act’) on 26 August 1998 (‘the priority date’) in Class 14 of the International (Nice) Classification of Goods and Services to register the words PAUL PEUGEOT as a trade mark in respect of:

Watches and parts and accessories therefor in this class including watch bands, watch cases, watch chains, watch crystals, watch glasses, watch springs and watch straps, horological and chronometric instruments

Following examination, the application was accepted and advertised as such in the Australian Official Journal of Trade Marks on 24 December 1998. On 10 March 1999, within the time allowed under the Act and regulations to do so, Automobiles Peugeot (‘AP’ or ‘Peugeot’), a French company of Paris, filed Notice of Opposition to the registration of the trade mark. The Notice cites grounds under sections 43, 58, 44 and 60 of the Trade Marks Act 1995 (‘the Act’); however, in submissions, AP relied on sections 44 and 60. I will regard the other grounds as having been abandoned and now dismiss the opposition in relation to the grounds other than those under sections 44 and 60 which I will discuss under the heading Reasons, below.

AP has served and filed evidence in support of its opposition.  Viva has not served or filed evidence in answer.  The evidence in support comprises two statutory declarations; the first by Ms Florence McFarlane who is a trade mark consultant.  At the time Ms McFarlane made her declaration she was employed by Carter Smith & Beadle – since then, this firm has merged with another to form Freehills Carter Smith Beadle.  The other declaration is by Ms Françoise Bouet who is the manager of the trade mark and design department of the PSA Peugeot-Citroën company (‘PSA’).  For ease of reference, I will refer to the declarations by the surname of the declarant.

The structure of the Peugeot group of companies, and their consequent different holdings of Peugeot trade marks, are relevant to this matter, so I will outline this before discussing the declarations in more detail. The evidence shows that, in 1965/1966, the Peugeot Group was restructured and the holding company, Peugeot SA was created.  Peugeot SA had control over three manufacturing companies:

·     Aciers et Outillages Peugeot (steel and tools)

·     Cycles Peugeot (bicycles and motorcycles)

·     Automobiles Peugeot (automobiles)

In 1976, Peugeot SA and Citroën SA merged to form the PSA Peugeot-Citroën group.  One of the companies within PSA (Etablissements Peugeot Frères) is the principal shareholder of the holding company, Peugeot SA.

I will refer to the above companies as a whole as the Peugeot group.

The trade marks previously or currently owned within the Peugeot group which are both relevant to these proceedings, and relied on in submissions, are:

Current Status	Removed - Not Renewed
Reg Number:	152478
Owner:	Automobiles Peuguot
Priority Date:	30 January 1959
Goods:	Motor cars, motor trucks, and parts thereof
Trade Mark:	PEUGEOT

Current Status:	Registered
Reg Number:	383893
Owner:	Automobiles Peugeot
Priority Date:	15 November 1982
Goods:	All goods in this class including bicycles and mopeds, and parts and accessories therefor included in this class
Trade Mark:	PEUGEOT

Current Status	Registered
Reg Number:	388905
Owner:	Automobiles Peugeot
Priority Date:	21 March 1983
Goods:	land vehicles; their parts and fittings included in Class 12 and apparatus for locomotion by land, air or water
Trade Mark:	PEUGEOT 205

Current Status	Registered
Reg Number:	412169
Owner:	Establissements Peugeot Freres
Priority Date:	30 January 1984 (France)
Goods:	Jewellery in this class, but not including badges, ornaments for vehicles, key rings and also not including horological and chronometric instruments
Trade Mark:

Establissements Peugeot Freres, (which I note is spelt ‘Etablissements Peugeot Frères’ within the declarations but which I will regard as being the same entity), also has other registrations of the same trade mark as that appearing immediately above.  These registrations are in classes 3, 9, 14, 18, 25 and 28 of the International (Nice) Classification of Goods and Services.

The McFarlane declaration

In brief, Ms McFarlane attests that the specification of goods of 412169, above, was restricted to exclude ‘badges, ornaments for vehicles, key rings and horological and chronometric instruments’ under protest by Etablissements Peugeot Frères because the examiner perceived a conflict in terms of subparagraph 28(a) and section 33(1) of the Trade Marks Act 1955 (‘the Old Act’) with the registrations appearing over it in the above list, (and others in Class 12), which existed in the name of Automobiles Peugeot. Correspondence between the examiner and attorney are annexed to the McFarlane declaration. Many of the conclusions that Ms McFarlane draws from this exchange are, I consider, submissions and I will address these more fully under the headings Submissions and Reasons, below.

Ms McFarlane then gives an outline of the history of the PSA Peugeot-Citroën company.  I will detail this in my discussion of Ms Bouet’s declaration since I regard her declaration as being more authoritative concerning the history of her company.

Ms McFarlane appends to her declaration the results of Internet searches which show the trade marks of well-known car makers in use on watches.  These trade marks include Jaguar, BMW, Mercedes, Porsche, Land Rover and Ferrari.  The trade marks are shown on the dials, or faces, of the watches.  Also attached to the McFarlane declaration is a copy of an extract from the 1998 Peugeot Christmas catalogue which Ms McFarlane says shows watches bearing the AP trade mark PEUGEOT on their faces or dials.  Technically, I think this is a slight mistake by Ms McFarlane since the registration on which she relies is in the name of Etablissements Peugeot Frères – not AP.  I do not think that Ms McFarlane is saying that the trade mark belongs to AP and not to Etablissements Peugeot Frères, rather that she has mis-remembered who the owner of the trademark is.

Ms McFarlane also avers that she has visited, and photographed, most of the jewellery shops in the vicinity of her office near Camberwell Junction which, she informs me, is a famous shopping area of Melbourne.  She notes that these shops, the photographs of which are appended to her declaration, sell both watches and jewellery and that the displays within the windows show both watches and jewellery together.

Ms McFarlane refers to, and appends to her declaration, a photocopy of the entry in the Macquarie Dictionary for the word ‘jewellery’:

Jewellery noun jewels; articles made of gold, silver, precious stones, etc., for personal adornment

Ms McFarlane also appends to her declaration printed copies of magazine advertisements and Internet pages showing watches made in gold, silver and precious stones.

The Bouet Declaration

Ms Bouet attests that the Peugeot group has its genesis in the creation of a steel foundry in 1810 in France by Jean-Pierre and Jean-Frederick Peugeot.  In 1885, Armand Peugeot, a descendant, started making velocipedes, the forerunners of bicycles, tricycles and quadricycles.  In 1889, Armand exhibited a Peugeot tricycle powered by a steam engine at the Universal Exhibition in Paris and, in 1890, a vehicle based on this came onto the market powered by a Daimler internal combustion engine.

The company has grown since then into a major part of the Peugeot group – the automotive division sold some 1.2 million vehicles in 1997 throughout the world, recorded sales in excess of $100 million in Australia, with a large amount spent on advertising.  Ms Bouet appends to her declaration examples of posters and brochures which feature vehicles sold under the PEUGEOT trade marks and states that the goods bearing the trade mark are, in Australia, advertised and promoted in, or by, newspapers, trade journals, pamphlets, posters, magazines, catalogues, direct mail, signage, sponsorship, in-store promotions, telemarketing, trade fairs, exhibitions, point of sale material, Internet, radio and television advertising, cinema, conferences and training seminars.

Ms Bouet concludes her declaration by stating that it is her knowledge that a number of car-makers also put watches onto the market under their trade mark. She also appends to her declaration the Peugeot 1998 Christmas catalogue, which advertises watches bearing the PEUGEOT trade mark.

Submissions

Much of Ms McFarlane’s submission appears to be based on the premise that the examiner of (then) application 412169 in Class 14 was correct in citing registrations in Class 12 as a bar to the registration of that application in Class 14 and correct in her comments made in support of the objection.  The examination of 412169 was under the Trade Marks Act 1955 (‘the Old Act’) where the onus was on the applicant[1] and it was prior to the decision of the High Court in New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Limited (1990) 171 CLR 363. Subsequent to that decision of the High Court, examiners no longer took objections to registration based on a comparison of trade marks under both subsection 33(1) and subparagraph 28(a) of the Old Act – the comparison in terms of subparagraph 28(a) now no longer occurred. The situation before me, under the Trade Marks Act 1995, is quite different in that there is no longer an onus[2] on the applicant in relation to section 44 (which replaces section 33 of the Old Act); and, it is accepted that section 43 (which replaces certain elements of section 28 of the Old Act ) has no place in the comparison of trade marks: Wilcox, Kiefel & Emmett JJ in T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720 at para 43:

[1] Eno v Dunn (1890) 15 AC 252.

[2], Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411.

The case on deception and confusion sought to be made by Big Country and Friday's Australia in the present proceedings is one that falls outside the reasons specified in those sections. It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others. So the alleged deception or confusion is not for a reason covered by section 43.

It follows that what I am being asked to do, in effect, is to follow, or be bound by, an approach to examination which was changed subsequent to Murray Goulburn, above; which also was under a superseded Act; and, further, to apply a section of the current Act in a way that the Courts have expressly stated to be wrong.  Obviously, I cannot do this.

Moreover, even if the legislation had not changed, I do not accept either that the examiner was then correct in terms of section 33(1) of the Old Act or that I can be bound by the examiner’s comments. The attorney who was then prosecuting application 412169 stated that the examiner was in error; and, Ms McFarlane states that the restriction to the specification of goods was made under protest – Ms McFarlane therefore wishes me to rely on comments made in support of an objection that both she and her predecessor both either expressly or implicitly state were wrong.

However, it may only be that the examiner did not adequately express her reliance only on subparagraph 28(a), and not subsection 33(1), of the Old Act in raising the objection. As I have noted, the relevant portion of subparagraph 28(a) now resides in section 43 of the current Act and has no place in the comparison of trade marks per T.G.I. Friday's, above.

Otherwise, Ms McFarlane submits that, in terms of section 44, notwithstanding the exclusion of watches and other horological equipment from the specification of goods of 412169, the goods of this application (771492) remain either the same goods, or goods of the same description, as those of 412169 and that the trademarks are deceptively similar. Further, she submits that, in terms of section 60, the reputation of the AP Peugeot trade marks is such that the use of the PAUL PEUGEOT trade marks would deceive or cause confusion.

Other

I will note now that the registration relied on by AP in relation to its opposition in terms of subsection 44(1) is not owned by it.  Registration 412169 is owned by Establissements Peugeot Freres.  This standing of the opponent does not represent a problem; section 52 allows, inter alia:

52  Opposition

If the Registrar has accepted an application for the registration of a trade mark, a person may oppose the registration by filing a notice of opposition.

As AP is a person, it may oppose registration.          

Reasons

Section 44

Absent any evidence of use of the opposed trade mark, section 44 of the Act relevantly provides:

Identical etc. trade marks

44.(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.

Note 1:  For deceptively similar see section 10.

Note 2:  For similar goods see subsection 14(1).
Note 3:  For priority date see section 12.

The definitions referred to in Notes 1, 2 and 3, above, are respectively:

Definition of deceptively similar

10. 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.

14  Definition of similar goods and similar services

(1)       For the purposes of this Act, goods are similar to other goods:
(a)       if they are the same as the other goods; or
         (b)       if they are of the same description as that of the other goods.

12  Definition of priority date

The priority date for the registration of a trade mark in respect of particular goods or services is:
(a)       if the trade mark is registered—the date of registration of the trade mark in respect of those goods or services; or
         (b)       if the registration of the trade mark is being sought—the day that would be the date of registration of the trade mark in respect of those goods or services if the trade mark were registered.

The priority date of the Establissements Peugeot Freres registration 412169 is 30 January 1984 and the priority date of the opposed application is 26 August 1998 – the priority date for the registration of the Viva trade mark in respect of the Viva goods is, therefore, not earlier than the priority date for the registration of the Establissements Peugeot Freres trade mark.

Ms McFarlane did not argue that the trade marks are substantially identical; accordingly, the issues which I am to consider are whether the opposed trade mark and that relied on by AP are deceptively similar and whether the goods are either the same goods or goods of the same description.

The Goods

I note that watches and other horological equipment are excluded from the specification of goods of registration 412169 which reads, “Jewellery in this class, but not including badges, ornaments for vehicles, key rings and also not including horological and chronometric instruments”.  The AP argument, that, notwithstanding the exclusion, reference to watches and horological equipment is still contained within the description “jewellery”, cannot be accepted.  I think that, both to give effect to the purpose and intent of the amendment and exclusion, and as a result of the logical structure of the specification of goods as a whole, the word “jewellery” must be read as “jewellery but excluding watches, etc. …” 

Thus, although jewellery and watches may or may not be the same goods in some instances, I do not have to decide whether they are (or not) because, although watches might (or might not) be comprehended within the general description “jewellery”, they could not be encompassed within the word “jewellery” within the specification of registration 412169 since they are specifically excluded from it.

The question of ‘goods of the same description’ was recently discussed by Kenny J in McCormick & Company Inc v McCormick [2000] FCA 1335 at paragraph 17. Her Honour said:

Whether the relevant goods are of the same description is essentially a question of fact.

The authorities establish that there are three principal factors to be considered in this regard. They are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold. As to the last-mentioned matter, it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade: see In Re Jellinek's Application (1946) 63 RPC 59 at 70-72; In Re John Crowther & Sons (Milnsbridge) Ltd's Application (1948) 65 RPC 369 ("Crowther's Application") at 372; In Re Frank George Whiting's Application (1952) 69 RPC 219 at 221; and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 94. As the High Court stated in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 ("Southern Cross") at 606-607:

The fact that examination of the nature of the applicant's goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant's goods are not specified by the regulations as being within the same class of goods: see In re The Australian Wine Importers Ltd (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84, at p 90 per Latham CJ. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In reJellinek's Application (1946) 63 RPC 59. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek's Case, the Assistant-Comptroller elaborated on the observations of Romer J in the following manner: `In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application, Romer J classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are "of the same description": In re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 when he said: 'What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments' (1945) 70 CLR, at p 94.

On the one hand, goods are not necessarily of the same description simply because they are sold for human consumption and in common trade channels: see, for example, In Re J & J Colman Ltd's Application (1929) 46 RPC 126, where mustard and semolina were held not to be goods of the same description. See also G Wood, Son & Co Ltd v McVitty & Co Pty Ltd (1964) 34 AOJP 2601 and In ReChan Li Chai Medical Factory (HK) Ltd's Application (1990) 19 IPR 140 at 144. On the other hand, the expression "goods of the same description" is not construed restrictively and regard is paid to the commercial context in which the goods in question are bought and sold: see Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 546 and Dinning v New Balance Athletic Shoe Inc (1992) AIPC 38,719 at 38,725.

After considering the above guidelines, I agree with Ms McFarlane that ‘jewellery’ and ‘watches’ are goods of the same description.  Ms McFarlane has provided me with the Macquarie Dictionary definition of the word ‘jewellery’ which I have reproduced under the heading Evidence.  The Collins Dictionary provides:

jewellery 1. objects that are worn for personal adornment, such as bracelets, rings, necklaces, etc., considered collectively.

The evidence shows, and my experience confirms, that jewellery and watches are frequently sold in very close association with each other through jewellers’ shops.  Frequently, these goods are sold over the same counter and by the same shop assistant.  Although watches are primarily functional, they have a major secondary role as articles of personal adornment and as such are often not only to be worn on the wrist as are bracelets, but otherwise round the neck as are necklaces, or on brooches or on fobs.  Watches and other timepieces are frequently made of precious metals and are often ornamented with precious stones.  It is my experience that people will co-ordinate their selection of watch and jewellery, such as bracelet, necklace and brooch, or cufflinks, to match or complement each other. 

I have no evidence before me as to whether watches and jewellery are usually, or ever, made in the same factories or workshops.  However, it would seem to me that some jewellers may make watches and some watchmakers may make horological goods which have many of the attributes of jewellery.

Both watches and jewellery are often sold within the same shops, over the same counter, to the same class of customer, for (inter alia) closely related purposes – personal adornment.

Although not all watches and horological goods are necessarily goods of the same description as jewellery, many of them are.  The differential between those goods under consideration that are of the same description and those are not is gradual and it is difficult to draw a line between them.  I am satisfied, however, that the goods, “jewellery” and “watches and other horological goods” are goods of the same description.

I do not accept Ms McFarlane’s argument that, as cars and other automobiles contain clocks, automobiles and watches are goods of the same description.  Obviously, watches, etc and automobiles are usually made by different traders, they go onto the market through completely different trade channels, they are bought by a different class of customer for completely different purposes.

The trade marks

In the oft quoted words of Windeyer J in Shell Company Of Australia Ltd v Esso Standard Oil (Australia) Ltd  1B IPR 523, the test for deceptive similarity of trade marks is to be considered in the following way:

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 television exhibitions. To quote Lord Radcliffe again (de Cordova v Vick Chemical Co (1951) 68 RPC 103; at 106; 1B IPR 496; at 499):

The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him … It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.

And in Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641; at 658, Dixon and McTiernan JJ said:

In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.:

Further, the commercial and other surrounding contexts of the comparison must be considered and some rules of the comparison of trade marks apply: Lord Parker (then Parker J) in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777), said:

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion — that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods — then you may refuse the registration, or, rather, you must refuse the registration in that case.

Ms McFarlane submits that I may take account of what she states to be the reputation of the PEUGEOT trade mark, per Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411. I have some difficulty with this approach. As I understand the decision of French J in Woolworths, above, he talked of notoriety, not reputation, and (in order to apply the principle) I must be satisfied that the PEUGEOT trade mark is, in fact, notorious among Australians.  In C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539 (31 October 2000) at paragraph 52, the Full Bench of the Federal Court said:

Nevertheless, in our view, Woolworths suggests a proposition for which the cases on which the appellants rely may be taken as authority. It is that, in assessing the nature of a consumer's imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration. [Stress added]

While I know of the PEUGEOT trade mark apart from these proceedings (and, it is an important element of trade mark registration 412169), I doubt that it belongs to the genus of notorious trade marks as does WOOLWORTHS.  The latter trade mark is pervasive, ubiquitous, of very long standing and encountered by most Australians at every turn.  The trade mark PEUGEOT is not in this category – it is undoubtedly well-known, however this is not the test, as I understand it, in Henschke, above.  Accordingly, I do not consider that the principle in Woolworths, above, may be applied.

I note that there is little space within which to display a trade mark on a watch-face.  On analogue dials, the pivot around which the hour and minute hands rotate introduces an obstacle above, or below, which a trade mark must be placed.  There is evidence that composite trade marks, such as that of Establissements Peugeot Freres, are displayed on the watch-face with one part of the trade mark on the upper portion of the face above the pivot and the other part of the trade mark on the lower part of the dial.  In this way, the lion part of the Establissements Peugeot Freres trade mark appears on the upper part of the dial and the PEUGEOT part of the trade mark appears on the bottom.  Although this must constitute a use of the composite trade mark, it means that the public when inspecting the watch will not necessarily see the trade mark as a composite – the word PEUGEOT, being the most dominant feature, may either appear to be used on its own or to dominate the lion device.

Within jewellers’ shops the self-service element is minimal – indeed, many goods such as watches or jewellery are kept in locked cabinets – requests for such goods are therefore made orally and there is limited opportunity for close visual inspection of the goods prior to a request that a sales assistant retrieve the item from the cabinet.  In any request for goods by reference to a trade mark, it is also likely, I consider, that the prospective purchaser will be likely to shorten the trade mark PAUL PEUGEOT to the single word PEUGEOT[3] – this word is the only word which suggests itself within registered trade mark 412169 by which a customer might request the goods.  The chances of verbal confusion of the trade marks is therefore high.

[3] George Ballantine and Son Ltd. v. Ballantyne Stewart and Coy. Ltd. (1959) R.P.C. 273

There also exists, I believe, a likelihood of what is termed ‘contextual’ confusion which was explained in John Fitton & Co Ltd's Appn (1949) 66 RPC 110, at 113, where, in considering the trade mark EASYJEST in face of the registered trade mark JEST, the Assistant Comptroller said that no limitation was to be placed "upon the nature of the confusion or deception so envisaged, whether it be visual or phonetic confusion of the marks themselves, or what is termed contextual confusion, or deception as to the trade provenance of the goods". In other words, it is quite likely that a prospective purchaser, noting the similarities of the trade marks will, notwithstanding any differences, believe that the goods are placed onto the market under the aegis of one trader or that the products are related in some way.[4] 

[4] See John Lysaght v Reid Bros and Russell Pty Ltd [1907] VLR 432; Expanded Metal Co Ltd v Finn Blinds (1986) AIPC 90-305.

In Woolworths, above, at paragraph 45, French J said:

The position now is that the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

I am satisfied that there is a reasonable likelihood of deception, or confusion between the two trade marks I have discussed, above, and therefore I find that the opposition under this heading succeeds.

Reputation

Section 60 of the Act 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)     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.

Note 2:For priority date see section 12.

The trade marks that AP may rely on in relation to section 60 include the trade marks which it uses in relation to automobiles (or other goods), whether they be registered or not. In relation to section 60, the comparison lies in relation to the trade marks of an opponent including those which may have been used at common law. As such, the trade marks relied on by AP include the word PEUGEOT used as a trade mark on automobiles. I have already found that the trade mark the subject of registration 412169, which incorporates the device of a lion, is deceptively similar to the trade mark PAUL PEUGEOT. A fortiori, the trade mark PEUGEOT, is deceptively similar to the trade mark PAUL PEUGEOT.

I paraphrase the words of the Registrar's Delegate, Mr Nancarrow, in Somers and Another v Greenbelt Pacific Pty Ltd (1998) 42 IPR 587:

[This] ground relied upon introduces opposition in terms of s 60 of the Act, that use of the trade mark by [Viva] would be likely to deceive or cause confusion because of the prior reputation acquired by [Peugeot] in using [a] similar trade mark[s].

The relevant inquiries to be made encompass two major areas.  First, are the trade marks of [Viva] and [Peugeot] either substantially identical or deceptively similar?  Secondly, would use in a fair and reasonable manner of the mark applied for by [Viva] lead to deception or confusion of the general public in the face of the reputation of the [Peugeot] trade mark?  Of course, relevant to this test is the actual reputation gained by [Peugeot] in the use of their mark.

In order to succeed with this ground of opposition, [Peugeot] are first obliged to provide evidence of some reputation in use of their trade mark.  Such evidence would normally include the amount of use, shown in dollar terms, of sales in connection with the trade mark and the value of advertising using the trade marks.  Many other factors could assist in showing that a reputation has been established prior to the date of the present application.  [Parenthetical material altered]

Of course, reputation may be assessed on other than a strict assessment of the amounts spent on advertising and or revenue gained by sale of goods.  As Kenny J observed in McCormick & Company Inc v McCormick [2000] FCA 1335:

[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that 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 the esteem, or image, projected by that trade mark. The quantum of sales, 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 sponsorships, 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 sales 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 associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC ¶91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451.

Further, talking of deceptive similarity, in Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999) French J said:

In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

(iv) The rights of the parties are to be determined as at the date of the application.

(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:

"...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark.  The issue is whether that use would give rise to a real danger of confusion."

The evidence shows that the AP Peugeot trade marks have been long associated with a diverse range of goods and that, in parts of the world, these trade marks have developed a strong reputation for the quality and functionality of the goods on which they are, or were, used.  These goods include (or included) a range which is quite diverse and embraces saws, saw blades and other tools such spanners, augers, files, pliers and so on; coffee grinders, pepper mills, chefs’ knives; bicycles; sewing machines; washing machines; ironing machines; as well as, electric drills, screwdrivers, hedge clippers etc.  However, it is not clear that any of these goods are, or were, imported into Australia or that most Australians are aware of the diversity of goods made within the Peugeot group of companies.

However, I believe that I can take account of the practice of automobile manufacturers of marketing goods other than cars – of ‘cashing in’ on the reputation of their trade marks.  This practice is effectively that of ‘brand extension’ referred to in such matters as Campomar Sociedad, Limitada v Nike International Limited [2000] HCA 12 (9 March 2000). Although this is not in evidence, I am aware that many people, and many automobile manufacturers, view the purchase of an automobile as a lifestyle choice – this is particularly true at the ‘prestige’ end of the market. Vehicle manufacturers market goods, some of them completely unconnected with vehicles, which are seen as embodying the image projected by the trade mark and reflecting the lifestyle image projected by the vehicles. The trade mark usually features prominently on these goods. Although it may seem unusual that people would buy goods which turn themselves into mobile billboards, the practice is quite common in relation to certain goods and widely accepted by the public. The Peugeot 1998 Christmas Catalogue is in evidence – the goods in the catalogue include goods such as scarves and ties, bags, cases and wallets, clothing, watches and sunglasses, key rings, cosmetic compacts and personal grooming accessories as well as model cars.

It is not clear whether the publication of the Peugeot 1998 Christmas Catalogue pre-dates the date of this application – 26 August 1998 – however, I believe that the catalogue epitomises what I consider to be a public expectation of the marketing practices of automobile manufacturers who are exploiting the established reputation and prestige of their trade marks.

Additionally, automobiles bearing the Peugeot trade mark do, as I have discussed under the heading Evidence, have very strong sales and advertising within Australia which have been over an extended period of time.

Accordingly, I believe that this matter should be distinguished from Nissan Jidosha Kabushiki Kaisha v Woolworths Limited [1999] ATMO 66 (24 June 1999). There the Deputy Registrar observed:

I accept that by the critical date, 3 October 1995, Nissan Jidosha had used its trade mark in respect of an impressive product, [a luxury motor vehicle] and in the course of that use had undertaken one quite spectacular promotional activity. However, I am not satisfied that either the sales or the promotion brought about a public awareness which, so far as clocks and watches are concerned, was (at 3 October 1995) likely to give rise to confusion or deception. Sales have clearly been confined to a limited population, probably characterised by an atypically high income level. The publicity seems to me to have been principally limited to one gala night and, so far as the evidence shows, the knowledge of that event seems to have been limited to participants and invited guests. The television promotion is subject to the criticism mentioned variously above, and indeed, despite Mr Suwa's assertion that television advertising was extensive and national, without corroborative material demonstrating just what that might mean, I can give that evidence little weight.

In sum, I am not satisfied that by 3 October 1995, Nissan Jidosha had a reputation in its trade mark INFINITI that was likely to give rise to deception and confusion should Woolworths use its INFINITI trade mark in respect of clocks and watches. In the absence of such a reputation the evidence that other prestige car manufacturers use their trade marks on watches and clocks does not materially help Nissan Jidosha. [Parenthetical material added]

The evidence before me shows that the trade mark on which AP relies has been used in Australia for very much longer than had the INFINITI trade mark; the sales and advertising figures are over a far longer period and this prolonged advertising has been to the broad Australian populace.  Further, although one might regard the automobiles sold by AP as being relatively expensive, they are, I believe, not projected at a market with an atypically high income level; and, there is evidence that the trade mark has, in fact, been used in marketing goods other than motor cars.  I would also infer from this that the trade mark has thus been in use for long enough to establish the sort of reputation and prestige to enable the trade mark owner to engage in brand extension.

Further, (and I believe that this goes more to the reputation of the Establissements Peugeot Freres trade mark than any comparison of the trade marks in question), the word PEUGEOT is a very rare surname in Australia – in fact, it does not occur on the Australian electoral roll. It is quite likely, therefore, that the only occasions on which Australians have encountered the word PEUGEOT is in relation to the goods of AP. When the brand extension practices of some car manufacturers is born in mind, I consider that this increases the likelihood that, because of the reputation of the Establissements Peugeot Freres PEUGEOT trade mark, use of the trade mark PAUL PEUGEOT will confuse or deceive. I would stress here that I am referring to the reputation of the Establissements Peugeot Freres trade mark and not ‘notoriety’ which I have discussed under the heading Section 44, above.

Accordingly, I conclude that, because of the reputation of Establissements Peugeot Freres’s PEUGEOT trade mark, the use of Viva’s PAUL PEUGEOT trade mark would be likely to deceive or cause confusion and that the opposition succeeds under section 60 of the Act.

Decision

The opposition succeeds under sections 44 and 60 of the Act and, in terms of section 55 of the Act, I refuse to register application 771492.

Costs

AP has requested, and is entitled to its costs, which I award against Viva.

Ian Thompson
Hearing Officer

Monday, 20 February 2023