Axis Communications AB v Action Electronics Co Ltd

[2008] ATMO 58

TRADE MARKS ACT 1995

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

Re:Opposition by Axis Communications AB to registration of trade mark application 1035613(9) - AXION - filed in the name of Action Electronics Co. Ltd..

Delegate:

Iain Thompson

Representation:

Opponent:  Celia Davies of Freehills, Patent & Trade Mark Attorneys.

Applicant:  Did not appear or put in written submissions.

Decision:

2008 ATMO 58

Section 52 proceedings – sections 44 and 60 – trade marks not deceptively similar – opposition not established.

Costs ordered against opponent.

Background

1. In this matter, Action Electronics Co. Ltd of Chung Li, Taiwan, (‘the applicant’) has applied under the Trade Marks Act 1995 (‘the Act’) to register a trade mark current details of which appear below:

Application No: 1035613

Priority Date:  21 December 2004

Goods:Class: 9  Audio cassette recorders; pre-recorded audio cassettes featuring music; audio discs featuring music; audio mixers; audio speakers; digital audio tape players; audio tape recorders; blank digital audio tapes; electric luminescent display panels; laser printers; video monitors; projection screens; video cameras; video cassette recorders; digital versatile disc (DVD); flat panel display monitor screens for DVD.

Trade Mark:  AXION

1. After examination of the application, it was accepted and advertised for possible registration in the Australian Official Journal of Trade Marks on 9 June 2005.

2. On 9 September 2005, Axis Communications AB of Scheelevagen 16, Lund, S-223 70, Sweden, (‘the opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the trade mark.  The Notice includes the following grounds subsequently relied on by the opponent:

   (e) The trade mark is substantially identical with and/or deceptively similar to:

   (1)         a trade mark registered by another person in respect of similar goods and/or closely related services; and/or

   (2)         a trade mark whose registration in respect of similar goods and/or closely related services is being sought by another person, (the “prior trade marks”) and the priority date of the opposed application is not earlier than the priority date of the prior trade marks, or any of them.

   (1)The Applicant has not:

   (i)           honestly and concurrently used the trade mark;

   (ii)          continuously used the trade mark for a period beginning before the priority date of the prior trade marks, or any of them; and/or

   (2)There are no other circumstances which make it proper for the Registrar to accept and register the Trade Mark.

   (h) The trade mark is substantially identical with, or deceptively similar to, a trade mark that, before the priority date of the opposed application, had acquired a reputation in Australia and, because of the reputation of that other trade mark, the use of the trade mark would be likely to deceive or cause confusion.

3. For the sake of completeness, I note that the grounds in the Notice, other than those above, have not been established by the opponent.

4. The matter came before me as a delegate of the Registrar of Trade Marks in Melbourne on 19 June 2008.  Celia Davies of Freehills, Patent & Trade Mark Attorneys, represented the opponent.  The applicant did not appear or put in written submissions.

Evidence

1. There are two statutory declarations in evidence, one in support of the opposition and one in answer.

2. The declaration in support of the opposition is by Ray Michael Mauritsson, President and Chief Executive Officer of the opponent.

3. Mr Mauritsson explains that the opponent was established in 1984 and is based in Sweden and uses the trade mark AXIS in plain and logo form.  The opponent is a manufacturer, provider and distributor under those trade marks of:

   ·     Goods, being electrical apparatus and instruments for input, processing, transferring, storing and output of data; magnetic data carriers; computer processing equipment; computers and mini computers; hardware, expansion cards, memories, peripherals and processors all for use together with computers, cameras, network video products and printers; CD-ROM servers, DVD servers, printer servers, servers for storage of data; camera servers, video servers; modems; printer controllers, protocol converters, multiplexers; computer interface boards, interfaces and adapting units (for computers); interface cards (integrated circuits), printed circuit boards, printer emulation boards; chips (integrated circuit); electronic devices for use in combination with computers or as integrated parts of computers or in computer networks, computer programs and software; apparatus for OCR, barcode scanners; apparatus for recording, receiving, transmitting or reproducing sound and images, transmission and reproduction of information and images via global networks and/or via other networks; cameras, digital cameras, network cameras and web cameras, video recorders and video players, network video products, wireless access points (network products); IP-cameras.

   ·     Services, being professional consulting activities in the form of professional expertise (non-business); technical expertise; computer consulting services regarding program design for microprocessors, updating of computer programs for text and data processing, consultation for product development; consulting activities in the form of testing and consultation for new products and development of new products; consultation in the field of computer hardware, computer software, system integration and recorded computer programs; designing computer systems, design and development of products (hardware and software) for others in the field of computers; technical consultation and research in the fields of computers software and computer processing; engineering including software and/or electronic engineering; supply of technical know-how; industrial designing, computer programming, computer system analysis; software design; maintenance and support of software, updating software, leasing access time and providing access to computer databases; rental and leasing of computer processing apparatus, computers, video recorders, network video products and cameras; leasing user rights to databases; licensing of software, licensing of know-how; licensing of intellectual property; services concerning burglar alarms and security, security alarms and security systems; granting access time to databases; hosting computer sites (web sites); maintaining and creating websites for others.

4. Mr Mauritsson goes on to aver that the opponent’s goods and services are principally used in providing networked video solutions for remote monitoring, security surveillance and broadcasting, solutions for network printing, document management and CD/DVD sharing.  Mr Mauritsson says the opponent is known in Australia and around the world as an innovative market leader in relation to the goods and services that it provides by reference to the AXIS trade marks.  The research firm Frost & Sullivan has (Mr Mauritsson says) recognised the opponent as the leader in the global network video market, a market which is expected to reach revenues of US$790 million by 2005. A copy of that Frost & Sullivan report is attached under annexure Confidential-A.

5. Mr Mauritsson further explains that the opponent’s goods and services are based on in-house developed chip technology which is also sold to third parties. The opponent has offices in 16 countries, including Australia (where it has a subsidiary, Axis Communications Pty Ltd – discussed below), and in cooperation with resellers and distributors (such as Ingram Micro, Tech Data and Azlan), system integrators and Original Equipment Manufacturer (OEM) partners the opponent sells its products in 70 countries worldwide. Among its strategic partners and customers in the Australian market are Canon, Honeywell and ABB. More than 95% of the Opponent’s sales occur in markets outside of Sweden.

6. Mr Mauritsson attests that the AXIS trade marks were first used in Australia by the opponent in relation to the goods and services on 27 February 1991, and have continuously been used in Australia in relation to goods and services since that time; and that the AXIS logo of the opponent is the subject of Australian trade mark registrations 551224 and 551225.

7. Details of these registrations are:

Reg No:  551224

Priority Date:  3 September 1990 (Priority Claim: Sweden)

Goods:Class: 9 Protocol converters, printer controllers, interface, printed circuit boards, printer emulation boards, page printers, electronic devices for use in combination with computers or as integrated parts of computers or in computer networks, all the aforementioned goods being for use in connection with computers and printer; and all other goods as are included in this class in connection with computers and printers, but specifically excluding computers and devices in this class used in combination with computers for recording sound, and also specifically excluding computer programs for use by the insurance industry

Trade Mark:  

Reg No:  551225

Priority Date:  3 September 1990 (Priority Claim: Sweden)

Services:Class: 42 Engineering drawing; technical research; licensing of know-how; computer hardware development; system design for computer equipment; specification work for computer systems; system integration; consulting services regarding micro-processors

Trade Mark:  

1. The opponent has another trade mark registration which is unmentioned in Mr Mauritsson’s declaration but on which the opponent relied on at the hearing – this is:

Reg No:  1057932 (IR 848136)

Priority Date:  1 October 2004

Goods/Services:  Class: 9 Electrical apparatuses and instruments for input, processing, transferring, storing and output of data; magnetic data carriers; computer processing equipment; computers and mini computers; hardware, expansion cards, memories, peripherals and processors all for use together with computers, cameras, network video products and printers; CD-ROM servers, DVD servers, printer servers, servers for storage of data; camera servers, video servers; modems; printer controllers, protocol converters, multiplexers; computer interface boards, interfaces and adapting units (for computers); interface cards (integrated circuits), printed circuit boards, printer emulation boards; chips (integrated circuit); electronic devices for use in combination with computers or as integrated parts of computers or in computer networks, computer programs and software; apparatus for OCR, bar-code scanners; apparatus for recording, receiving, transmitting or reproducing sound and images, transmission and reproduction of information and images via global network and/or via other networks; cameras, digital cameras, network cameras and web cameras, video recorders and video players, network video products, wireless access points (network products); IP cameras; the aforementioned goods do not include compact discs

Class: 36 Leasing of computer processing apparatus, computers, video recorders, network video products and cameras

Class: 42 Professional consulting activities in the form of professional expertise (non business); technical expertise; computer consulting services regarding program design for microprocessors, updating of computer programs for text and data processing, consultation for product development; consulting activities in the form of testing and consultation for new products and development of new products; consultation in the field of computer hardware, computer software, system integration and recorded computer programs; designing computer systems, design and development of products (hardware and software) for others in the field of computers; technical consultation and research in the fields of computers, software and electronic data processing; engineering; supply of technical know how; industrial designing, computer programming, computer system analysis; software design; maintenance and support of software, updating software; licensing of software, licensing of know-how; licensing of intellectual property; hosting computer sites (web sites); maintaining and creating web sites for others

Class: 45 Services concerning burglar alarms and security, security alarms and security systems

Trade Mark:  

1. I note that, based on the evidence and Notice in these proceedings, the applicant is unlikely to be aware that the opponent is reliant on the above trade mark registration in relation to the ground under section 44. The inclusion of the above trade mark registration amongst those upon which the opponent wishes to rely as late as the hearing may thus (in the absence of the applicant at the hearing) constitute an unanswerable ambush and there exists a strong argument this registration should therefore be excluded from my considerations in order to afford the applicant procedural fairness. I am therefore reluctant to give this registration any weight. In the end, however, it makes no difference to the outcome of these proceedings whether I give the registration any weight or not in view of my finding, below, that the trade marks of the parties are not deceptively similar.

2. Mr Mauritsson avers the price range for the opponent’s goods sold by reference to the AXIS Trade Marks varies between AUD$149 and AUD$2,289 and that his company sells over one hundred million dollars worth of goods on a worldwide basis each year.

3. Confidential sales figures for Australia are provided by Mr Mauritsson and I assess these as being moderate, considering the nature of the goods and the marketplace.  Advertising and promotional expenditure is in commensurate proportion to the sales figures and Mr Mauritsson states that advertising and promotional activities in relation to goods sold under the trade mark include, catalogues, magazines, conferences, posters, sponsorship, training seminars, promotions and exhibitions.

4. No figures are provided by the opponent concerning revenue from services performed under the trade mark.

5. The opponent also registered the domain name in 1996 and has operated a website from that URL since 1997.  Since the website became operational, up until 21 December 2004, the website has received approximately a quarter of a billion ‘hits’ or visits.

6. The evidence in answer is a declaration by Mr Chiung-Ping Peng, President of the applicant, (‘the declarant’).

7. The declarant states that his company was established in 1975, and has progressed through manufacturing and selling a range of different products since its inception.  The declarant draws my attention to the history of his company at a page on a copy of which is exhibited to the declaration.

8. The declarant explains that the AXION trade mark may be considered the “House Brand” of his company. It was first introduced in 1991 when his company developed its own Liquid Crystal Display (LCD) technology.  From 1991, all of the opponent goods have been sold under the trade mark AXION.

9. The declarant exhibits at CPP- 3 to the declaration several pages printed from his company’s internet site showing the range of goods sold under the trade mark. In 2006, his company sold USD $400 million of goods into the world market.  A pie chart illustrates the distribution of exported product sold under the AXION trade mark into the various countries/regions (not including Taiwan) for 2006.

10. The declarant also draws my attention to differing dictionary definitions for the words AXIS and AXION.  The Macquarie Dictionary provides the following:

    axis

    1. the line about which a rotating body, such as the earth, turns.

    2. the central line of any symmetrical, or nearly symmetrical, body: the axis of a cylinder; the axis of the building.

    3. a fixed line adopted for reference, as in plotting a curve on a graph, in crystallography, etc.

    4.  Anatomy

    a. a central or principal structure, about which something turns or is arranged: the skeletal axis.

    b. the second cervical vertebra.

    5.  Botany the longitudinal support on which organs or parts are arranged; the stem, root; the central line of any body.

    6.  Aeronautics one of three fixed lines of reference defining the lines of an aeroplane, mutually perpendicular and meeting at the centre of gravity.

    a. longitudinal axis, from nose to tail.

    b. lateral axis, from wingtip to wingtip.

    c. vertical axis, from top to bottom.

    7. Fine Arts one or more theoretical central lines around which an artistic form is organised or composed.

    8. an alliance of two or more nations to coordinate their foreign and military policies, and to draw in with them a group of dependent or supporting powers. [Latin: axle, axis, board. Compare axle]

11. There is no definition of the word AXION in the Macquarie Dictionary.  The Oxford English Dictionary provides:

    A neutral pseudoscalar boson with very small mass that is the quantum of a field postulated as accounting for the fact that charge-parity symmetry is rarely broken.

12. A copy of the Wikipedia on-line encyclopaedia entry for the word AXION is appended to the declaration.  It gives:

    The axion is a hypothetical elementary particle postulated by Peccei-Quinn theory in 1977 to resolve the strong-CP problem in quantum chromodynamics (QCD). In 2005, an experimental search by the PVLAS collaboration reported results suggesting axion detection; however new experiments performed by the PVLAS team exclude this result. The 2005 PVLAS results were problematic because compatibility with the negative results of other searches, such as CAST, as well as astrophysical limits, ruled out standard axion scenarios, while alternative hypotheses have been postulated by other researchers.

    The name was introduced by Frank Wilczek, co-writer of the first paper to predict the axion, after a brand of detergent—because the problem with QCD had been “cleaned up”.

13. The declarant also appends to his declaration the results of a search on the Australian Register of Trade Marks which includes various trade marks which start with the letters AX or are stated to have some visual or phonetic similarity to the words AXIS and AXION – such as ACCESS or ACTION.

14. It would seem to me to be likely that the applicant selected the trade mark AXION because of its phonetic similarity to the word ACTION which occurs in its name.

Reasoning

1. I consider that success in this matter for the opponent is predicated upon its thesis that the trade marks AXIS and AXION are deceptively similar in terms of sections 44 and 60 of the Act.

2. I consider that the opponent’s trade mark had a reputation in Australia in relation to its goods at the priority date of the opposed application in terms of section 60 of the Act. Reputation is to be assessed according to the tests in McCormick & Company Inc v McCormick [2000] FCA 1335 stated by Kenny J at paragraph 81:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

3. Here I consider that the opponent’s goods are of a specialized nature and sold in a particular field and the trade mark is comparatively well-known in that field.  The trade mark of the opponent thus has a reputation in Australia, at least in relation to its goods – no figures for revenue derived from provision of services under the opponent’s trade mark are provided and the supporting materials exhibited to the opponent’s declaration are strongly oriented towards the sales of goods.

1. Additionally, in terms of section 44 of the Act, the applicant’s goods (in particular because of the inclusion of the expressions ‘electronic devices for use in combination with computers or as integrated parts of computers or in computer networks, all the aforementioned goods being for use in connection with computers and printers; and all other goods as are included in this class in connection with computers and printers’ in opponent’s specification of goods) include at least some goods of the same description in terms of section 44 or have sufficient nexus to meet the requirements of section 60.

2. Accordingly, (it not being argued that the trade marks are substantially identical) this opposition is most conveniently decided by consideration of whether the trade marks involved are deceptively similar – and, for the sake of clarity, I will consider the opponent’s trade mark AXIS (word) which I understand that it primarily relies on in terms of section 60. If the opponent’s AXIS (word) trade mark is not deceptively similar to the opposed trade mark in terms of section 60, a fortiori, neither is the logo form of the trade mark in terms of section 44. Of course, if I find that the word forms of the trade marks are deceptively similar in terms of 60, I must then consider if the logo form of the opponent’s trade mark is also deceptively similar to the opposed trade mark in terms of section 44.

Deceptive Similarity

1. The definition of the expression ‘deceptively similar’ is given at section 10 of the Act:

   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.

2. This concept was considered by French J in Registrar of Trade Marks v Woolworths [1999] FCA 1020 at paragraph 50:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (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] HCA 43; (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.”

3. I will stress that I am to consider the similarity (in terms of section 44) in the context of the marketplace of all of the goods included in the respective specifications – this would include goods sold in the retail environment: see Re Smith Hayden and Co’s Application (1946) 63 RPC 97 at 101.8, quoted in Woolworths, above, at paragraph 45 of his judgment:

   Assuming a use by the proprietor of each of the cited trade marks in a normal and fair manner in respect of any of the goods and services covered by those registrations, is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration (the respondent to this application) also uses its mark normally and fairly in respect of services covered by the proposed registration.

4. In Woolworths, above, French J added:

   So far as this passage, reflected in oral submissions, suggests that an applicant must satisfy the Registrar or the Court that there will be no reasonable likelihood of deception and confusion it does not represent the law as it stands under the 1995 Act. 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.

5. In terms of section 60 of the Act, I am to consider the fair notional use of the opposed trade mark in respect of any of the goods in respect of which registration is sought and the opponent’s actual use of its trade marks upon its goods. This may include forms of the opponent’s trade mark which have no corresponding trade mark registration and a more limited range of goods than the opponent’s registrations which here are, ‘remote monitoring, security surveillance and broadcasting, solutions for network printing, document management and CD/DVD sharing.’

6. The comparison of the trade mark of the parties also has judicial guidelines. In Australian Woollen Mills Limited v F S Walton and Company Limited [1937] HCA 51; (1937) 58 CLR 641, Dixon and McTeirnan, JJ said, concerning the comparison of trade marks:

   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. 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, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.

7. Subsequently, in the same case, they said:

   It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs.

8. This contextual comparison of the trade marks was stressed in In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, above, where Parker J, as he then was, 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.

9. At the hearing, Ms Davies submitted:

   When assessing whether trade marks are deceptively similar, regard must be had to the visual, phonetic and conceptual similarities of the trade marks, taking into account the surrounding circumstances and the effects of imperfect recollection.

   The words AXIS and AXION are visually, phonetically and conceptually similar.

   The visual similarities between the trade marks are self evident.  They contain the same first three letters. It is only the endings which are different. There is nothing stand out or significant in either ending.

   For the purposes of comparison of marks, the first element is the most important. (London Lubricants (1920) Ltd’s Appn). Consumers are more likely to recall the AXI element of the trade marks, over and above the S and ON suffixes. Further, the AXI prefix, consisting of three letters and two syllables, is the largest and most dominant element of both trade marks. Visually and phonetically, the AXIS and AXION trade marks are similar.

   The visual similarity between these trade marks is important for comparison purposes.  The goods and services in question are more likely to be purchased after a consumer has viewed them rather than being ordered over the telephone.

   The words AXIS and AXION are conceptually similar.  Both are scientific concepts established through mathematical theorem.  An axis is generally accepted as a means of defining a coordinate system.  The Macquarie Dictionary definition of axis contained in exhibit CPP-5 of the statutory declaration of Chiung-Ping Peng states an axis is “the line about which a rotating body such as the earth turns”.  In that context, an axis is a mathematical construct which helps identify locations of interest in three-dimensional space. The Wikipedia definition of axion contained in exhibit CPP-6 of the statutory declaration of Chiung-Ping Peng states an axion is “a hypothetical elementary particle postulated by Peccei-Quinn theory in 1977 to resolve the strong-CP problem in quantum chromodynamics”. Put simply, an axion is a construct of mathematical theory to explain unknowns in physical phenomena. Therefore, both AXIS and AXION are mathematical constructs for resolving unknown variables and are therefore conceptually similar.

   The trade mark AXIS also presents as being an “irregular” plural form of the word AXION.  This is in the same way that CRITERIA is the plural form of CRITERION, PHENOMENA is the plural form of PHENOMENON, and so forth.

   Taking into account the effects of imperfect recollection, it is our submission that the totality of these similarities between the marks AXIS and AXION are sufficient to render them deceptively similar.  There is a real tangible risk that a substantial number of persons will be caused to wonder whether a connection exists between the opponent’s mark AXIS and the applicant’s mark AXION.

   We also submit that the applicant’s trade mark is deceptively similar with each of the opponent’s other two “AXIS trade marks”, namely AXIS COMMUNICATIONS and the AXIS Logo.

   The dominant and distinctive feature of these trade marks for comparison purposes is the word AXIS. COMMUNICATIONS is descriptive and the logo is a simple triangular graphic.

   In the opponent’s submission, these trade marks too are deceptively similar with the trade mark AXION.

10. I do not make much of the fact that the opposed trade mark is a dictionary word.  It seems to me that not many people will be aware of its meaning in relation to particle physics and are much more likely to view it as being either an invented word or a phonetic equivalent of the word ACTION that occurs in the name of the applicant.

11. Thus, I consider, the notion that the trade marks are conceptually similar can be immediately discarded.  Those people sufficiently acquainted with particle physics to know that an axion is a hypothetical elementary particle will know that the idea or meaning of the AXION trade mark is completely different to that of the opponent’s trade mark.  They will tend to remember and recall it in a quite different way and readily distinguish between the trade marks in the marketplace, based on their meanings.  Those unacquainted with particle physics, who must surely constitute most (or all but a tiny fraction) of the population, will regard the word AXION as being invented or a phonetic equivalent of the word ACTION occurring in the applicant’s name.  This too will tend to lead to a different recollection and recognition of each trade mark.

12. Looked at from this point of view, the ‘ideas’ of the trade marks in question are quite distinct from each other.  It is, anyway, not fatal if the ideas are similar: similarity in ideas is one factor that may play a part in the assessment of deceptive similarity - Cooper Engineering Company Proprietary Limited v Sigmund Pumps Limited [1952] HCA 15.

13. I also consider that the principle that the endings of words tend to be slurred and that the beginnings of words are more stressed and are of greater importance in comparison espoused in Re London Lubricants (1920) Ltd's Application (1925) 42 RPC 264 at 279 should be carefully applied. Where the words in question are in other ways distinct and the overall sounds of the words are unlikely to be mistaken or confused for each other, this test, does I consider, become of less relevance. It is quite possible, for example, to point to conceptual and orthographic similarities between the words ZEBRA and ZEBU – the words both start with the same letters ZEB- and end in a vowel and, further, the words both relate to wild animals. But the chance of the words actually being confused for each other is remote even if most people have a hazy idea of what a zebu actually is.

14. The submission that the opponent’s trade mark is likely to be viewed as the pluralised form of the word AXION does, I consider, invite me to stray into the realm of pure speculation.  I think that most people, if asked to form a plural of the word AXION would suggest the word AXIONS and the plural of the word AXIS is, anyway, the word AXES.  Additionally, such speculations form no part of a pragmatic consideration of the real likelihood of deception and confusion.

15. I also observe that the goods involved are of some degree of technical complexity and expense and are not likely to be bought casually off the shelves of supermarkets but from specialised stores or providers after some thought and consideration.  The purchaser is likely to inspect the goods quite carefully; in LANCER Trade Mark Application, [1987] RPC 303, (which involved the trade marks LANCER and LANCIA) it was observed that the more expensive an item to be purchased, the greater the care that was usually exercised in the purchase by ordinary people. The opponent’s evidence tends to support this proposition – I note that Annexure Confidential A lists one of the opponent’s competitors as being AXCESS – a trade mark which bears at least an equal similarity to the opponent’s trade mark AXIS as does the opposed trade mark but apparently co-exists in at least some marketplaces without confusion.

16. I am not satisfied the trade marks AXIS and AXION are deceptively similar.

17. It follows the opponent has not established its grounds of opposition under sections 44 and 60.

Section 55

1. Section 55 of the Act provides:

   Decision

   55. Unless the proceedings are discontinued or dismissed, 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.

   Note:  For limitations see section 6.

2. The opponent has not, as I have observed, established its opposition to the registration of the trade mark.

3. The trade mark application may accordingly proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that the disposition of the application be in accordance with the order or direction of the Court.

Costs

1. The applicant in these proceedings has been successful.  I order costs against the opponent.

Iain Thompson

Hearing Officer

Trade Marks Hearings

04 July 2008