Bayerische Motoren Werke AG v Home Focus Development Limited

[2016] ATMO 110

TRADE MARKS ACT 1995

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

Re:Opposition by Bayersiche Motoren Werke AG to registration of trade mark application number 1527817 (9, 16, 25, 28 and 41) – Mini Models - in the name of Home Focus Development Limited.

Delegate:

Heath Wilson

Representation:

Opponent: Stephen Rebikoff of Counsel instructed by Aparna Watal of Davies Collison Cave.

Applicant: No appearance or submissions.

Decision:

2016 ATMO 110

Opposition to registration pressing grounds of opposition under sections 42(b), 44 and 60 of the Trade Marks Act 1995 – section 60 established – Trade Mark refused registration.

Background

1. On 26 November 2012, Home Focus Development Limited (‘the Applicant’) filed for registration of the following trade mark under the Trade Marks Act 1995 (‘the Act’):

   Trade Mark No: 1527817.

   Trade Mark: Mini Models (‘the Trade Mark’).

   Convention Priority Date: 10 August 2012 (Office for Harmonization in the   Internal Market[1])

   Specification of Goods and Services:

   [1] Now the European Union Intellectual Property Office.

   Class 9:

   Computer games programs downloaded via the internet (software); Games software; Animated films; Television films; Pre-recorded video programmes in relation to cartoons and animation

   
   
   Class 16:

   Articles of cardboard for stationery purposes; Stationery; Pencil sharpeners; Pencils; Pens (writing instruments); Roller ball pens; Text markers (pens); Paint brushes; Writing brushes; Writing chalk; Staplers for office use; Hole punchers for office use; Rulers for drawing; Writing apparatus; Drawing apparatus; Printed cardboard articles (not for the purpose of making models); Paper; Albums; Boxes made of cardboard; Boxes made of paper; Writing pads; Notebooks; Booklets; Wrapping paper; Greeting cards; Trading cards (printed matter); Labels of paper; Adhesive stickers

   
   Class 25: Apparel (clothing, footwear, headgear)

   
   Class 28:

   Balloons (toys); Electronic toys; Bath toys; Plush toys; Spinning tops (toys); Apparatus for ball games; Apparatus for electronic games; Apparatus for use with board games; Board games; Card games; Dice games; Electronic games (other than software); Electronic games consoles; Hand held computer games; Hand held electronic games; Markers (counters) for playing games; Mechanically operated games; Parlour games; Rackets for ball games; Ring games; Skittles (games); Toy car games; Toy card games; Trading cards (card games); Toy gun holsters; Caps for pistols (toys); Toy guns; Kites; Ball games; Toy masks; Stuffed toy animals; Articles for use in playing card games; Water pistols (playthings); Accessories for dolls; Skateboards; Ice skates; Roller skates; Surfboards; Jigsaw puzzles; Swimming flutter boards; In-line skates

   
   
   Class 41:

   Training, Entertainment, Education services, not related to models or making models; Internet games (non-downloadable); Providing digital music (not downloadable) from the Internet; Organisation of sporting activities; Cultural activities

2. The Trade Mark was examined under section 31 of the Act and was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 27 March 2014. A Notice of Intention to Oppose was filed by Bayersiche Motoren Werke AG (‘the Opponent’) on 27 May 2014 followed on 26 June 2014 by a Statement of Grounds and Particulars (‘SGP’).

3. The SGP outlined grounds of opposition under section 41, 42(b), 43, 44, 58 and 60 of the Act. The Applicant filed a Notice of Intention to Defend and the evidence subsequently filed consisted solely of evidence in support from the Opponent , being the declarations of:

• Dr. Hannes Bucher made 4 November 2014 with exhibits A to N (‘Bucher’).

• Lena Balakrishnan made 4 November 2014 with exhibits LJB-1 to LJB-6 (‘Balakrishnan’).

1. The Opponent requested a hearing and the matter was allocated to me to be decided in my capacity as a delegate of the Registrar of Trade Marks. I set out the timetable for the provision of written submissions and the Opponent provided its summary of argument indicating that the grounds of opposition pressed would be those under sections 44, 60 and 42(b) of the Act. The Applicant did not request to be heard, nor did it make any submissions.

2. I heard the opposition on 20 October 2016 in Canberra with Stephen Rebikoff of Counsel making submissions on the Opponent’s behalf, instructed by Aparna Watal of Davies Collison Cave.

Onus

1. The Opponent bears the onus of establishing at least one of the grounds of opposition on the civil standard of the balance of probabilities.[2]

   [2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663, [26].

Reasons

1. Section 60 of the Act provides:

   60Trade mark similar to trade mark that has acquired a reputation in Australia

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

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

   Note:For priority date see section 12.

2. To establish the ground of opposition under section 60, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia as at the priority date for the registration. As can be seen above, ‘priority date’ is defined under section 12 of the Act and the Applicant has successfully claimed a right of priority for the Trade Mark on the basis of registration being sought in a Convention country on 10 August 2012.[3] As a result, the priority date for this ground of opposition is 10 August 2012.

   [3] Under section 29 of the Act.

3. In terms of the level of reputation required, it must be amongst a ‘significant’ or ‘substantial’[4] number of Australian consumers. The requirement for that number of consumers must be sensibly applied[5] with reference to the relevant goods/services. The reputation in a trade mark cannot be assumed, but rather must be established as a matter of fact.[6]

   [4] See Renaud Cointreau & Cie v Cordon Bleu International Ltee (2001) 52 IPR 382; [2001] FCA 1170 and ConAgra Inc. v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 23 IPR 193.

   [5] “Bali” Trade Mark [1969] RPC 472, (496).

   [6] ConAgra Inc v McCain Foods (Aust) Pty Ltd, (1992) 33 FCR 302, [77].

4. The Opponent must then establish that a notional use of the Trade Mark on the goods and services would be likely to deceive or cause confusion as a result of the aforesaid reputation. It is not a requirement that the trade marks in question are deceptively similar, but there should be some nexus of similarity between them.[7] It is also not a requirement that the respective goods and services are similar or closely related, but if they are, there may be a greater likelihood of deception or confusion.[8] As found in the case of Qantas Airways Limited v Edwards:

   A further matter to note in relation to the s 60 objection is that, contrary to the respondent’s submission, the “other” mark need not have acquired a reputation in Australia that is specific to the goods or services which are the subject of the opposed application. However, I accept that if such a reputation does exist at the relevant time, it is likely to be a most material consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.[9]

   [7] Reece Pty Ltd v Rogers Seller & Myhill Pty Ltd [2010] ATMO 5; (2010) 85 IPR 647.

   [8] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124, [40].

   [9] [2016] FCA 729, [143] (my emphasis in bold).

5. Kenny J in the case of McCormick & Company Inc v McCormick found:

   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? [10]

   [10] McCormick & Company Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102, [81]-[82].

6. Also relevant are the following comments made by the Hearing Officer in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft Gmbh & Co KG:

   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.[11]

   [11] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft Gmbh & Co KG (1999) 47 IPR 423, (436).

Reputation in MINI

1. Bucher sets out the history of the Opponent’s ‘MINI’ brand (or ‘model’) of automobile, a prototype of which was first produced in October 1957. In August 1959, the Morris Mini Minor was released to the public. Morris Mini Minors were assembled in both the United Kingdom and Australia and over the years became known simply as the ‘MINI’. Originally owned by the British Motor Corporation, British Aerospace acquired the ‘MINI’ trade mark between 1980 and 1990 and British Aerospace was subsequently acquired by the Opponent in 1994.

2. Bucher additionally contains extracts from a book entitled ‘1959-1994 - MINI: Thirty Five Years On’ by Rob Golding which set out the origins and history of the Opponent’s MINI car models over that period. The declaration provides extracts from a publication of the Opponent simply entitled ‘MINI: The Book’[12] which contains facts about the Opponent’s models of car including the development of the Opponent’s ‘MINI’ logo trade mark.

   [12] (1^st Edition 2006).

3. The sales figures for the Opponent’s MINI cars worldwide and within Australia are considerable and the turnover for associated MINI merchandise in Australia before the priority date is also significant. In this regard I refer to the case of McCormick & Co Inc. v McCormick[13], and the comments of Kenny J therein:

   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.

   [13] (2000) 51 IPR 102, (127).

4. In popular culture, the MINI has featured prominently in the 1969 movie ‘The Italian Job’ starring Michael Caine (and also prominently in the 2003 remake) and had success in rally car racing with the MINI COOPER S winning rallies in Britain, Monte Carlo and also at Bathurst in 1966. The MINI received a Car of the Century award in 2006.

5. I am satisfied, from the evidence before me, that the Opponent has demonstrated a significant reputation in the automotive industry in relation to its MINI automobile and certain variations on that trade mark (discussed later). However, that is not the full extent of the evidence before me. As with many major automobile manufacturers, the Opponent also actively engages in the sale of a wide range of merchandise associated with its automobile brand.

MINI Merchandise

1. The Opponent’s ‘MINI Collection’ premiered in 2002 and consists of merchandise and accessory items (such as clothing, luggage and stationery). Dr Bucher declares that the items have been available in Australia since that year and also supplies significant sales figures for these merchandise items in Australia from 2010 to 2013.

2. In relation to the extension of the Opponent’s ‘MINI’ brand to other products, Mr Rebikoff directed my attention to the comments of the hearing officer in the decision of Automobiles Peugeot v Viva Time Corporation. I am in agreement with Mr Rebikoff that the following comments made in that decision have particular relevance to this matter:

   [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.[14]

   [14] (2001) 54 IPR 568, [582].

3. I am faced with analogous evidence. The Opponent has, for example, highlighted catalogues at exhibit G to Bucher for the 2007/2008 financial year. The catalogue features ‘MINI’ emblazoned on t-shirts, key-rings, hooded sweat jackets, caps, beanies, scarfs, umbrellas, winter jackets, a chill box (or bar fridge), a plush bulldog toy and also on shoes and bags. Further ‘MINI Collection’ catalogues in a similar vein are in evidence for the financial years 2010/2011 and 2012/2013.

4. The Opponent also sells ride-on toys of its MINI COOPER convertible models along with plush toys of its MINI car and model miniatures of the MINI as collectible toys. The items have been purchased online by customers and have been available via official MINI dealers within Australia.  While the price list for these items at exhibit H to Bucher is from 2014 (and therefore well outside the date at which reputation must be established), it provides an indication of the breadth of the Opponent’s merchandise and the price of the items at that point in time.

5. Balakrishnan provides, amongst other things, current evidence of various MINI Car clubs in each state of Australia[15] and supplies website extracts from the Mini Car Club of WA, the Mini Club of South Australia, the Victorian Mini Club and the Mini Car Club of New South Wales.

   [15] Balakrishnan [6], exhibit LJB-4.

6. Despite the fact that the Opponent’s MINI trade mark has not been used in relation to each specific good and service within the Applicant’s specification, as can be seen from the examples mentioned it is nevertheless involved in the production of many of them. This fact, combined with the extent of the reputation and esteem in which the Opponent’s brand is held, creates a significant likelihood of deception or confusion in the Australian marketplace. I therefore find that there is a significant ‘awareness, cognisance or knowledge’[16] of the Opponent’s trade mark in Australia as at the priority date.

   [16] Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd [1979] RPC 410, (424).

The likelihood of deception or confusion

1. Mr Rebikoff argued that due to the demonstrated reputation in the trade marks of the Opponent, deception or confusion is likely to occur on two fronts. That is, given the association with the word ‘MINI’, the addition of the word ‘models’ in the Trade Mark is capable of two interpretations.  On the one hand is the likelihood that the Trade Mark brings to mind model replicas or representations of the Opponent’s iconic car (i.e. collectible miniatures and toy cars) and on the other hand, that it brings to mind the particular types of the Opponent’s ‘MINI’ car.

2. I accept that there is a possibility the words comprising the Trade Mark may be seen in another descriptive usage (such as a miniature version of something that is photographed for promotional display). However, once the requisite reputation has been demonstrated by the Opponent, I find that such a low-level possibility would not diminish the deception or confusion likely to arise from the significant number of the relevant consumers perceiving an association with the Opponent’s brand.  

3. The fact that, at the priority date, there were many established ‘models’ in Australia and overseas of the Opponent’s ‘MINI’ brand of car lends support to the Opponent’s arguments. Since 2000, the Opponent has manufactured the MINI Hatch, MINI Cabrio, MINI Clubman, MINI Countryman, MINI Paceman, MINI Coupe, MINI Roadster, MINI Convertible and MINI Cooper. To illustrate Mr Rebikoff’s specific point, the above examples would not unnaturally be referred to as the Opponent’s ‘MINI models’. In fact, the Opponent has provided examples of where it has been referred to in that fashion. Exhibit L to Bucher contains a number of  examples from the Opponent’s 2013 Annual Report (extracted below):

   Five of the MINI models – Hatch, Clubman, Convertible, Coupe and Roadster – are manufactured at the Oxford plant (United Kingdom).

   …

   As from 2014, a completely new family of engines featuring BMW TwinPower turbo technology will power the first BMW and MINI models with new 3-, 4- and 6-cylinder in-line engines, ensuring the best possible Efficient Dynamics technology is available in all segments and performance categories.

4. It is also worth mentioning that exhibit M to Bucher which features the Opponent’s Australian-based website (‘ has a ‘MINI – Model Filter’ function which enables the customer to search the various models of MINI car. In addition,  the Opponent’s registered trade marks not only include ‘MINI’, but also ‘MINI COOPER’, ‘MINI ONE’, ‘MINI Convertible’, ‘MINI International’, ‘MINI Garage’, ‘MINI Challenge’, and the similarly recognizable ‘MINI logos’ below:

1. While it is not a requirement under section 60, I would find that the Trade Mark is at least deceptively similar[17] on a prima facie basis to the Opponent’s Mini Logos extracted above. As mentioned earlier, such a finding necessarily increases the likelihood of deception or confusion arising from the demonstrated reputation in the Opponent’s trade marks. 

   [17] See section 10 of the Act.

2. Balakrishnan also highlights the likelihood of the expression comprising the Trade Mark when used in relation to computer games and games software resulting in deception or confusion as a result of the reputation in the Opponent’s trade mark. It is relatively simple to envisage a scenario where a gamer may select a car to drive from a range of ‘MINI models’ and mistakenly attribute a business connection with the Opponent’s MINI. There are, in fact, driving games[18] currently available where the Opponent’s brand of car may be selected from a range of car models. 

   [18] Exhibit LJB-1 to Balakrishnan.

1. The likelihood of deception or confusion here is informed by the strength of the Opponent’s reputation in its trade marks and the esteem in which they are held along with the presence of brand extension into other areas. As the above authorities make clear, it is simply not a requirement that the Opponent demonstrate a reputation for all the goods and services of the opposed application. Having said that, I find that on the strength of the evidence before me, Australian consumers are attuned to the Opponent’s brand extension activities and it would be a logical extension of those activities for the Opponent to trade in the remainder of the goods and services in the specification of the Trade Mark.

2. On that basis, I find that the ground of opposition under section 60 has been established.

3. As the Opponent has discharged the onus it bears and established a ground of opposition under the Act, it is strictly unnecessary to consider the remaining grounds argued.

4. However, in case I am wrong in the conclusion that the ground of opposition under section 60 is established in relation to all of the goods and services claimed in the specification, I propose to make some comments relevant to the section 44 ground.

5. As mentioned earlier, the Applicant provided no evidence or submissions for these proceedings and if the ground under section 44(1) and (2) of the Act were established, the exceptions under section 44(3) and (4) would not be available to the Applicant.

6. The Opponent’s MINI Logos which constitute Australian trade mark registrations 729833 and 827328 both predate the Trade Mark. As I have mentioned above, I am of the view that the Trade Mark is deceptively similar[19] to the Opponent’s MINI Logos.

   [19] Section 10 of the Act.

7. In terms of whether the respective goods and services are similar[20], I note that trade mark no. 827328 is registered in respect of ‘clothing, footwear, headgear’ in class 25 and ‘games and playthings and sporting articles’ in class 28. Trade mark no. 729833 is registered in respect of ‘sound, video and audio-visual recordings’ and ‘computer software, computer programmes, and amusement apparatus’ in class 9. It is also registered in relation to ‘printed matter, stationery, books and printed publications’ along with ‘writing and drawing instruments and materials’ in class 16 and similar claims for ‘articles of outerclothing’ in class 25 and ‘toys and playthings’ in class 28.   

   [20] Section 14(1) and 14(2) of the Act.

8. For the avoidance of doubt, I find that these goods are similar to the Opponent’s goods in those classes. I would therefore find that the ground of opposition under section 44 had been established on the balance of probabilities. If any goods and services were to remain after the above findings, I am in the same position as the delegate in Body Tease Inc v D & Y International Trading Pty Ltd[21], who said:

   The applicant has made no attempt to defend the application so that any attempt by me to differentiate between the opponent's goods and the full range of goods covered by the application would be quite arbitrary.

   [21] [2002] ATMO 102

9. I also refer to the following comments made in Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited:

   I consider the Court has power under s 65(7) of the Act to cut down the breadth of the application but I do not take that course when no party argued that the Court should do so, or identified a principled basis upon which the Court could approach such a task.[22]

   [22] [2014] FCA 373, [231]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156. [13].

10. In any event, the other grounds available under the Act may be pursued by the Opponent in the event of an appeal to a prescribed court from this decision.

Decision

1. Section 55 of the Act relevantly provides:

55Decision

(1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a)to refuse to register the trade mark; or

(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note:For limitations see section 6.

1. The Opponent has established a ground of opposition under the Act. Accordingly, I refuse to register trade mark application no. 1527817.

Costs

1. As the Opponent is the successful party and costs ordinarily follow the event, I award costs against the Applicant under section 221 of the Act in line with the amounts set out in Schedule 8 of the Trade Marks Regulations 1995.

Heath Wilson

Hearing Officer

Oppositions and Hearings

1 December 2016