Belkin International Inc. v Belfan LLC

[2012] ATMO 26

TRADE MARKS ACT 1995

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

Re:Opposition by Belkin International Inc. to registration of trade mark application 1326353 (9) – Belfan (stylized) - filed in the name of Belfan LLC.

Delegate:

Debrett Lyons

Representation:

Opponent :  Garen Holopikian of Spruson and Ferguson, Patent & Trade Mark Attorneys

Applicant :   No appearance and no written submissions

Decision:

2012 ATMO 26

Section 52 opposition – ss 42, 44, 59 and 60 pressed – s 60 established. Costs awarded against Applicant.

Background

1. This is an opposition brought by Belkin International Inc. (“the Opponent”) pursuant to section 52 of the TradeMarks Act 1995 (“the Act”) to registration of an application filed in the name of Belfan LLC (“the Applicant”), current details of which are:

App. No.	1326353
Priority Date	16 October 2009
Trade Mark
Goods	Class 9: Computer peripheral devices; high-frequency apparatus; acoustic couplers; material for electricity mains (wires, cables); amplifiers; chips (integrated circuits); wire connectors (electricity); remote control apparatus; remote control apparatus connected by modems to computers; remote control apparatus for lighting units; remote control apparatus for use with televisions; remote control apparatus for use with video cassette recorders; battery chargers; theft prevention installations, electric

2.     I will refer hereafter to the goods of the opposed application collectively as “the Goods” and to the opposed trade mark as “the Trade Mark”.

3.     The Trade Mark was examined, accepted, and advertised as ready for possible registration in the Australian Official Journal of Trade Marks but on 18 May 2010 the Opponent filed a Notice of Opposition against it.

4.     The Opponent later served and filed Evidence-in-Support consisting of the statutory declarations of Chris Flower made on 2 March 2011 and Garen Holopikian made on 18 March 2011.  No Evidence-in-Answer or further evidence of any kind was served. 

5.     The matter was set down for hearing and on 16 February 2012 in Sydney, acting as a delegate of the Registrar of Trade Marks, I heard submissions made on behalf of the Opponent by Garen Holopikian of Spruson and Ferguson, Patent & Trade Mark Attorneys. The Applicant was not present, was not represented and did not make any written submissions.

Grounds of Opposition and Onus

6.     The onus is upon the Opponent to establish one or more of its grounds of opposition on the balance of probabilities[1]. The Notice of Opposition nominated most of the grounds of opposition available under the Act however prior to the hearing the Opponent filed outline submissions indicating that it intended to press only those grounds under sections 42, 44, 59 and 60 of the Act. At the hearing only those grounds were argued. The evidence served and filed by the Opponent does not appear to go to the other grounds in the Notice and for the sake of completeness I find that they have not been established.

Discussion

[1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32].

Section 44

7.     Subsection 44(1) provides:

(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.

8.     The Opponent must therefore point to a registered or pending trade mark which has an earlier priority date than the Trade Mark (16 October 2009) and is substantially identical with or deceptively similar to the Trade Mark and which covers goods or services which are similar or closely related to the Goods. 

9.     For that purpose, the Opponent relies on its Australian trade mark registrations 796239 and 796240 (“the Opponent’s Registrations”), details of which are shown below.

10.   Trade Mark	11.
12.   Regn No	13.   796239
14.   Priority Date	15.   3 June 1999
16.   Goods	17.   Class 9 : Computer parts and accessories, namely computer cables and electrical connectors for such computer cables, data transfer switch boxes, computer peripheral sharing devices for enabling a plurality of computers to have shared access to an accessory device or devices such as a printer, computer peripheral sharing devices for enabling a single computer to simultaneously display output on multiple monitors, electrical surge protectors, local area network devices for coupling multiple computers in networks, computer printer stands, mouse pads, wrist rests, devices for permitting wireless transmission of data from computers to peripheral devices and from computer to computer, and computer carrying cases for storing and transporting portable computers; audio-visual accessories, namely audio and video cables and jacks, speaker cables and wires, stereo plug adapters, dubbing cords, audio and video cassette head cleaning devices, video splitters, band separators, antenna switchers, TV signal amplifiers, transformers, couplers, and video cassette rewinders; telephone accessories, namely modular telephone cords, modular telephone-to-handset cords, twist-free cord adapters, modular phone cord couplers and converters, telephone jacks, telephone receiver rests, telephone answering machine cassettes, telephone answering machine stoppers, replacement batteries for cordless telephones, and antennas for cordless telephones

18.   Trade Mark	19.   BELKIN
20.   Regn. No.	21.   796240
22.   Priority Date	23.   3 June 1999
24.   Goods	25.   Class 9: Computer parts and accessories, namely computer cables and electrical connectors for such computer cables, data transfer switch boxes, computer peripheral sharing devices for enabling a plurality of computers to have shared access to an accessory device or devices such as a printer, computer peripheral sharing devices for enabling a single computer to simultaneously display output on multiple monitors, electrical surge protectors, local area network devices for coupling multiple computers in networks, computer printer stands, mouse pads, wrist rests, devices for permitting wireless transmission of data from computers to peripheral devices and from computer to computer, and computer carrying cases for storing and transporting portable computers; audio-visual accessories, namely audio and video cables and jacks, speaker cables and wires, stereo plug adapters, dubbing cords, audio and video cassette head cleaning devices, video splitters, band separators, antenna switchers, TV signal amplifiers, transformers, couplers, and video cassette rewinders; telephone accessories, namely modular telephone cords, modular telephone-to-handset cords, twist-free cord adapters, modular phone cord couplers and converters, telephone jacks, telephone receiver rests, telephone answering machine cassettes, telephone answering machine stoppers, replacement batteries for cordless telephones, and antennas for cordless telephones

26.   The Opponent’s Registrations pre-date the Priority Date and it is clear that the Goods are identical or at least similar to the goods covered by the Opponent’s Registrations.  When compared side by side the respective trade marks are not substantially identical[2] and so the remaining question is whether they are deceptively similar.  The accepted test for deceptive similarity was set out by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil(Aust) Ltd (1963) 109 CLR 107:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. 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 the recollection of the plaintiff’s mark, that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the defendant’s…mark.

[2]  See Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil(Aust) Ltd (1963) 109 CLR 107 at 414-415.

27. Section 10 of the Act states “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.” The Opponent submitted that:

The Opposed Mark is “Belfan” as compared to the Opponent’s registered trade mark BELKIN.  The two marks are visually similar.  Each word is made up of the same prefix syllable consisting of three letters “BEL”.  Each mark has the same last letter “N”.  These trade marks are analogous to the “No-Tox” and BOTOX marks which were found by Justice Stone to be deceptively similar in Allergan, Inc v Di Giacomo [2011] FCA 154. In that case, the Judge, in holding that the marks are deceptively similar, took into account that the marks have the same length and both have two syllables.

Both marks are invented words.  Further, they both have similar pronunciation, particularly given the propensity of individuals to slur the ending of the words.  As stated in London Lubricants (1920) Ltd’s Appn. (1925) 42 RPC 264 at 279 “… the tendency of persons using the English language to slur the termination of words … has the effect necessarily that the beginning of words is accentuated in comparison, and … the first syllable of a word is, as a rule, far the most important for the purpose of distinction”. It is likely that the Opposed Mark will be pronounced as BELFIN bringing it even closer to the Opponent’s registered mark BELKIN.

28.   I have read with interest the decision in Allergan, Inc v Di Giacomo however on my application of the test in the Shell case I have come to the considered view that the trade marks under comparison here are not deceptively similar.

Section 60

29. Section 60 states that 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 of the registration of the opposed trade mark, acquired a reputation in Australia; and (b) because of the reputation of that other trade mark, the use of the opposed trade mark would be likely to deceive or cause confusion.

30.   The Opponent must show on the balance of probabilities that on the Priority Date the trade mark BELKIN enjoyed the type of reputation in Australia that would have the likely effect to cause a significant number of persons to be deceived or confused if the Applicant used the Trade Mark on the Goods.   In the case of McCormick & Co Inc v. McCormick (2000) 51 IPR 102, the court held that it was permissible to infer reputation from a high volume of sales and advertising expenditure. In this case, the evidence shows that the trade mark BELKIN has been used in Australia since 2001. Taking one set of figures from the evidence in support, the gross Australian annual sales of goods bearing the trade mark for the years 2004 through to 2010 are in the millions of dollars per annum. In 2009 alone, sales reached almost AU$100 million dollars. The evidence shows that products bearing the BELKIN trade mark had, by the Priority Date, been sold in Australia-wide retail chain stores including Harvey Norman, Domayne, Joyce Main, Dick Smith, Big W, Kmart, Target, Myer, David Jones, Apple, Apple resellers, JB HiFi, Bing Lee, WOW sight and sound, Next Byte, OfficeWorks, Leading Edge, Optus Stores, Telstra and T-Life Stores, Crazy Johns and Retravision.

31. There is virtually no doubt that the Opponent enjoyed a very sizeable reputation in the BELKIN trade mark in Australia on the Priority Date. I return then to the wording of section 60 as it has been amended and to observations on the effect of that amendment made in the case of Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5 (18 January 2010):

Confusion can not arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.

What can be said then of section 60 as we now find it is that it comprehends that the trade marks under comparison might be quite dissimilar, and yet, taken in combination with the repute of the opponent’s trade mark (and possibly other factors), deception or confusion is still more likely than not. Put another way, section 60 now contemplates that an opponent may prevail because of the reputation in the mark on which it relies notwithstanding that the trade marks under comparison may even be quite dissimilar.

32. Use of the BELKIN trade mark has consistently been in relation to electrical and electronic products including products the same as the Goods. For the purposes of section 60, whilst it is the actual use of the Opponent’s trade mark which must be considered, it is the notional use which the Applicant may make of any of the Goods which I must take into account.  Put another way, I must consider all of the uses to which the Applicant can put the Trade Mark within the scope of the registration which will ensue[3].  So, while there may be differences within the compared specifications of goods, the Goods will be notionally present in the same marketplace.

[3] See Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362; see also French J in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at 88.

33. The Goods are the same or similar to the goods which the Opponent has sold and in respect of which it has shown a substantial reputation and the trade marks bear a level of resemblance which, though in my estimation falls short of the threshold of deceptive similarity as understood by the section 44 case law, still links the marks in a significant way in the public mind.

34. I find that the Opponent has established its ground of opposition under section 60 of the Act.

Decision

35. Section 55 (1) of the Act provides:

(1) 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.

36. The Opponent has established a ground of opposition under the Act and so I refuse to register trade mark application 1326353.

Costs

37. The Applicant has been unsuccessful in this matter and the Opponent is entitled to costs. To that end, I award costs against the Applicant to the extent allowed under Schedule 8 of the Trade Marks Regulations 1995.

Debrett Lyons

Hearings Officer

Trade Marks Hearings

23 February 2012