Benelli Q. J. Srl. v Ford Motor Company

[2011] ATMO 9

TRADE MARKS ACT 1995

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

Re:Opposition by Ford Motor Company to protection of international registrations designating Australia – 1119891 (IR884498) – TORNADO NAKED TRE 1130 - and 1119892 (IR884503) – TORNADO NAKED TRE SPORT - in the name of Benelli Q. J. Srl.

Delegate:	Debrett Lyons
Representation:	opponent:   No representation – written submissions only holder:   No representation or written submissions
Decision:	2011 ATMO 9 Reg17A.29 oppositions: ss. 42(b), 44, 59 and 60 pressed; none established.  Protection may be extended.

Background

1. Benelli Q.J. Srl (‘the holder’) requested protection in Australia for the following international registrations designating Australia (‘IRDAs’):

   Application No:               1119891 (International  Regn. 884498)         
   Priority Date:                   18 January 2006

   Goods:Class: 12 Vehicles; apparatus for locomotion by land with the exclusion of bicycles, air or water; motor bicycle, motorcycle, motor scooter, parts and accessories of said products comprised in this class

   
   
   

   Trade Mark:  TORNADO NAKED TRE 1130

   ………….

   Application No:               1119892 (International  Regn. 884503)  
   Priority Date:                   18 January 2006

   Goods:Class: 12 Vehicles; apparatus for locomotion by land with the exclusion of bicycles, air or water; motor bicycle, motorcycle, motor scooter, parts and accessories of said products comprised in this class

   Trade Mark:  TORNADO NAKED TRE SPORT

2. Following examination, the IRDAs were accepted on 10 September 2007 and advertised as such in the Official Journal of Trade Marks on 27 September 2007.

3. On 21 December 2007, Ford Motor Company (‘the opponent’) filed Notices of Opposition to the extension of protection to Australia.

4. The matter was set down for hearing but before it went ahead, the opponent asked instead for a decision on the written record.

5. In this case the written record comprises:

   Ø  the opponent’s written submissions dated 1 December 2010;

   Ø  evidence in support of the opposition, being statutory declarations made by:

   ·Garen Holopikian dated 18 June 2009;

   ·David Katic dated 18 February 2010;

   ·Andrew Maclean dated 22 February 2010.

6. The holder did not file evidence or written submissions.

   Notices of Opposition

7. Opposition to protection of an IRDA is governed by paragraph 17A.29 of the Regulations to the Trade Marks Act 1995 (‘the Act’). Regulation 17A.31 sets out the grounds for opposing an IRDA. They are sections 39 to 44 of the Act (by virtue of 17A.31(1) and 17A.28(1)), and sections 58 to 61 of the Act (by virtue of 17A.31(3)). Regulations 17A.28(2) and 17A.31(3) establish that where the relevant section refers to an ‘application’, an IRDA is to be understood; and where an ‘applicant’ is referred to, the holder of the IRDA is to be understood.

8. The Notices of Opposition are in essentially identical terms and cite most grounds of opposition available to the opponent under the Act; however, in submissions the opponent limited its grounds of opposition to those under sections 42(b), 44, 59, and 60.

Discussion

1. In opposition proceedings before the Registrar, the opponent bears the onus of establishing at least one ground of opposition stated in the Notice of Opposition on the balance of probabilities.[1] 

   [1] Pfizer Products Inc v Karam (2006) 70 IPR 599, per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 at [22] to [26].

2. For the sake of completeness, I find that the grounds of opposition listed in the Notices but not pressed have not been established.

   Section 44 

3. Section 44(1) of the Act states:

   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.

4. Thus, in order to establish this ground, the opponent must establish:

   ·     the existence of one or more trade marks registered or pending in the name of a person other than the applicant;

   ·     that/those trade marks having earlier priority date(s) than that of the opposed trade mark;

   ·     that/those trade marks must be registered or pending in respect of goods which are similar, or services which are closely related, to those in respect of which the opposed application is made; and

   ·      the opposed trade mark must be substantially identical or deceptively similar to the trade mark(s) on which the opponent relies.

5. For the purposes of section 44, the registrations on which the opponent relies are:

Trade Mark

Trade Mark No.

1022869

Priority Date

29 September 2004

Specification

Class: 14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; lapel pins, tie pins, badges and key rings; horological and chronometric instruments including watches and clocks; watch bands, watch cases, watch straps

Class: 18 Leather and imitations of leather and goods made from these materials not included in other classes; umbrellas; bags and luggage including backpacks, duffle bags, cargo bags, sports bags, bum bags, wallets, toiletry bags, satchels, suit cases, compendiums in fabrications including nylon, leather, PVC vinyl, suede and polyester

Class: 20 Furniture, mirrors, picture frames; bean bags; cushions; folding canvas camping chairs and stools, beds; inflatable chairs

Class: 24 Textile and textile goods not included in other classes; bed and table covers; bunting; napery; manchester; towels; golf towels; bedding including quilt cover sets, quilt covers, bed spreads, pillow cases, sheets, blankets; beach towels, bath towels; cushion covers, curtains; fabric for the foregoing; picnic rugs; rubber backed bar mats

Trade Mark

Trade Mark No.

1181464 (divisional from 1022869)

Priority Date

29 September 2004

Specification

Class: 6  Key rings

Class: 12  Passenger motor vehicles
 
Class: 16 Printed matter (excluding calendars and calendar pads); stickers; posters and postcards; all the foregoing only for promotional use in the automotive field
 
Class: 25 Clothing, footwear and headgear

Class: 28 Toy vehicles including die cast collectible vehicles, ride-on toy vehicles, micro radio controlled toy vehicles; radio controlled vehicles powered by gas, electricity and/or batteries; skateboards; plastic toy race car model kits; plastic role play mechanic's tool chest; playing cards

(‘the opponent’s registrations’)

1. The opponent’s registrations have earlier priority dates than the IRDAs. The goods described as ‘passenger motor vehicles’ in the opponent’s registration 1181464 are either the same or similar goods to those goods of the IRDAs.  It remains only to be determined whether the trade marks of the parties are (or are not) substantially identical or deceptively similar.

2. Substantial identity is to be assessed according to the test in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407, where Windeyer J said at page 414:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity, my opinion is ….

3. It is evident from an application of that test that the trade marks of the IRDAs TORNADO NAKED TRE 1130 and TORNADO NAKED TRE SPORT are not substantially identical with the opponent’s trade mark  . 

4. In the same case, Windeyer J went on to state that:

   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 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.

5. The trade marks share one common element – the word TORNADO – but there the similarity ends.  The prominent integer F6 dominates the opponent’s registrations and renders the word TORNADO significantly less impressive.  The IRDAs also contain additional matter – NAKED TRE 1130 or NAKED TRE SPORT – and whilst to the motorcycling enthusiast those terms will have a meaning, they are in the end a quantitatively significant part of each IRDA.  In the result, the commonality of the term TORNADO is not enough, in the overall assessment of the compared trade marks so as to render them deceptively similar.

6. For those reasons the opponent has not established its ground of opposition under section 44.

   Section 60

7. The opponent’s submissions state that since the oppositions were commenced on 21 December 2007 the provisions of section 60 as amended on 23 October 2006 apply.

8. The statement is incorrect.  It is the unamended version of section 60 which governs this opposition: see Apple Computer Inc. v Todaytech Group Pty Ltd, (the ‘Macron’ case)[2].  Prior to 23 October 2006, section 60 required, amongst other things, that the compared trade marks be substantially identical or deceptively similar.  I have already found that the trade marks under comparison are neither substantially identical, nor deceptively similar[3].  Accordingly, section 60 is not established.

   [2] 2007 ATMO 40.

   [3] There is some evidence that the opponent’s trade mark was referred to simply as TORNADO but given what I later note under section 42(b) in relation to Australian sales, no special attention need be given to the point for the purposes of section 60.

   Section 42(b)

9. The ground of opposition based on section 42(b) requires evidence that use of the trade marks of the IRDAs “would be contrary to law”. The opponent submits that use of the trade mark would offend any or all of sections 52 and 53(a), (c) or (d) of the Trade Practices Act 1974.

10. Those sections deal with misleading or deceptive conduct or with the making of false or misleading representations.  The opponent must show that, by using the trade marks of the IRDAs, the holder would:[4]

    ·   engage in conduct that is misleading or deceptive or is likely to mislead or deceive (section 52); or 

    ·   falsely represent that goods are of a particular standard, quality, value, grade, composition, style or model or have had a particular history or particular previous use (section 53(a)); or

    ·   represent that goods have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have (section 53(c)); or

    ·   represent that the corporation has a sponsorship, approval or affiliation it does not have (section 53(d)).

    [4] Advantage-Rent-A- Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 per Madgwick J at paragraphs 26 and 28

11. For use of the trade marks by the holder to have any of those effects, the relevant misrepresentation or misleading or deceptive conduct would arise, amongst other things, from a pre-existing public awareness of the opponent’s trade mark.

12. Mr. David Katic is the opponent’s principal declarant.  He is the General Marketing Manager of Ford Motor Company of Australia Limited.  Mr. Katic has stated that his declaration contains certain commercially sensitive information that should be kept confidential.  Whist I have respected that request, it presents me with a dilemma since the confidential information relates to the history and first adoption of the opponent’s trade mark in this country.  Although I struggle to see the confidential nature of much of the information, or the risk of commercial harm to the opponent or to Ford Motor Company of Australia Limited if that information was re-statement here, I can without fear of compromise say that the trade mark was used from about May 2005 onwards in relation to a limited range of high performance motor vehicles.

13. There are specific sales figures for 2005 - 2008 which are also the subject of a confidentiality request.  Given the need for a public awareness of the opponent’s trade mark before the January 2006 priority date of the IRDAs, it is only the 2005 figures that have any bearing on this opposition.  I have no hesitation in characterizing those 2005 sales as insignificant within the context of annual new motor vehicle sales in this country.  To the extent that it might be said that those sales were to a niche purchasing group, my view is that in this case that would only work against the opponent’s claims under the Trade Practices Act.

14. There is nothing in the evidence to establish even the smallest likelihood[5] that the holder’s use of its trade marks at the relevant time would be likely to offend those sections of the Trade Practices Act mentioned already and so nothing to support the ground of opposition under section 42(b).  The ground is not established.

    [5] See generally, Equity Access Pty Ltd v Westpac Banking Corporation (1990) ATPR 40-994

    Section 59

15. Section 59 states:

    59: Applicant not intending to use trade mark

    The registration of a trade mark may be opposed on the ground that the applicant does not intend:

    (a) to use, or authorise the use of, the trade mark in Australia; or

    (b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

    in relation to the goods and/or services specified in the application.

16. The opponent’s sole argument is that the holder’s website (not in evidence, but of which I am asked to inform myself) shows it to be a manufacturer of motorbikes and motor scooters and so the opponent reasons that the IRDAs were filed:

    …without a relevant intention to use the marks in relation to all of the goods specified in the applications.  The opposed applications include a claim to “vehicles” and “apparatus for locomotion by land” which could be described as a claim which is speculative, defensive and intended to gain an advantage over competitors.

17. The holder enjoys a rebuttable presumption that it intends to use the trade marks across the full breadth of the specifications.[6]  In Suyen Corporation v. Americana International Limited,[7] I summarized the cases which had given rise to an inference that a trade mark applicant may not intend to use the mark such that the onus might shift to it to prove otherwise.  None of the cases considered there assist the opponent.

    [6] Aston v Harlee Manufacturing Co (1960) 103 CLR 391.

    [7] 2008 ATMO 4

18. I have not looked at the holder’s website and even if it was appropriate for me to do so, I do not consider that it would assist me either.  The holder’s website is not a resource which alone speaks for the company’s aspirations.  It is within my common general knowledge that the holder is an Italian maker of motor bikes.  Whilst I might be surprised to see the holder expand its business to car production, it would surprise me no more than when Porsche decided to make a 4WD SUV or when Lamborghini decided to make supercars in addition to agricultural tractors.  Whilst I appreciate that terms like NAKED and SPORT are apposite to certain styles of motor bike appearance and that a designation like 1130 may be more likely to refer to motorcycle engine capacity, it remains that the commercial intentions for the trade marks are as likely to be concealed from me as they are from the opponent.  The inclusion of those terms does not preclude the use of the trade marks in relation to other claimed goods, and therefore does not shift the presumption to the holder to establish its intention.

19. I find section 59 is not established.

    Decision

20. No ground of opposition has been established. I therefore extend protection to Australia in respect of all the goods listed in the IRDAs.  The International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accordance with Regulation 17A.34(2).

    Debrett Lyons

    Hearing Officer
    Trade Marks Hearings
    27 January 2011