Bose Corporation v QSC Audio Products Inc

[2002] ATMO 118

TRADE MARKS ACT 1995

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

Re:Opposition by Bose Corporation to registration of trade mark 770189(9) POWER WAVE & Device and 770190(9) – POWER WAVE – filed in the name of QSC Audio Products, Inc.

Background

These issues arise out of the filing, by QSC Audio Products, Inc., (‘the applicant’) of California, on 13 August 1998, (‘the priority date’) of applications 770189 and 770190 both in Class 9 of the International Classification of Goods and Services to register the trade mark POWER WAVE (770190 – ‘the second opposed trade mark’) and the trade mark appearing below, for ‘Audio and video equipment including electronic audio and video signal processing equipment, namely, amplifiers and power amplifiers’ (‘the nominated goods):

770189 ‘the first opposed trade mark’

Following examination, the applications were accepted for registration by a delegate of the Registrar of Trade Marks and advertised in the Australian Official Journal of Trade Marks of 1 April 1999. 

On 30 June 1999, within the time allowed to do so, Bose Corporation (‘the opponent’) of Massachusetts, filed Notices of Opposition (‘the Notices’) to the registration of the trade marks. 

I heard the matters in Canberra on 4 December 2002, as a delegate of the Registrar of Trade Marks; Ian Horak of Phillips Ormonde Fitzpatrick represented the opponent in person.  The applicant relied on written submissions by Tracey Berger of Spruson & Ferguson.

The Evidence

The parties have filed their evidence in accordance with the Act.  The evidence comprises:

Declarant	Referred to as/ Position	Date Made	Exhibits
Evidence in Support
John Peressini	Peressini Group Sales Manager Denman Audio	12 June 2000
Christopher David Schlicht	Schlicht Solicitor for opponent	29 June 2000	CDS-1 to CDS-2
David Gable	Gable Marketing Manager of opponent	19 June 2000	DG-1 to DG-12
Angela Natalie Reed	Reed Sales Assistant of opponent at Myer Melbourne	6 June 2000	ANR-1
Evidence in Answer
Tracey Michelle Savage	Savage Solicitor	30 April 2001	TMS-1 tp TMS-3
Maxwell Twartz	Twartz Marketing Director Technical Audio Group	25 June 2001	MT-1 to MT-3
Evidence in Reply
Dominic John Waters	Waters National Sales Manager Bose Pty Ltd	2 April 2002
Margaret Mary Ryan	Ryan Solicitor for opponent	17 June 2002	MMR-1

Peressini

Mr Peressini’s employer, Denman Audio, is a retailer of hi-fi, audio and video equipment that operates ‘out of’ Melbourne.  It is not clear from the declaration whether sales by Denman are local or national.  Mr Peressini attests to his expertise in his field and states his opinion that Bose has a considerable reputation in the audio field in relation to loud speakers, and sound reproduction systems incorporating such loudspeakers: these systems are usually compact (and I gather from the balance of the evidence are sold by reference to the trade mark BOSE).  Mr Peressini states that the opponent uses the trade marks WAVE and ACCOUSTIC WAVE in following way:

Trade Mark WAVE used in relation to:

• sound systems for cinemas and auditoria

• radios, combined radio/CD players

  Trade Mark ACOUSTIC WAVE used in relation to

• loudspeakers for cinemas and auditoria

Schlicht

Mr Schlicht attaches to his declaration the results of Freedom of Information requests – this material comprises copies of the official files of these opposed applications up to and including the acceptance of the opposed applications.

Gable

Mr Gable attests extensively to the history of the opponent in Australia and the opponent’s use of the trade marks ACOUSTIC WAVE and WAVE in Australia. 

The opponent commenced manufacturing loudspeakers for hi-fi systems in the United States of America in 1964.  These speakers are of innovative design, compact and have won an inventor’s award for their designer.  The opponent’s goods have been sold in Australia since 1970; while it may be inferred that these goods were predominantly loudspeakers initially, these goods now include:

osound reproduction systems incorporating a CD player and radio

ohome theatre music systems

ocommercial sound reproduction systems

oloudspeakers

oradios

oamplifiers

osystem controllers

oaccessories for the opponent’s goods

The opponent’s goods are sold at 185 retail outlets throughout Australia, the opponent operates an Internet site, where the goods are promoted, and the goods have been subject to a telephone enquiry rate to Bose Pty Ltd of about 2,000 calls a year.

I will state that I have had some difficulty in delineating between the opponent’s uses of its WAVE and ACOUSTIC WAVE trade marks in the declaration of Mr Gable – some products appear to carry only the WAVE trade mark, others appear to carry both.  In summary, Mr Gable deposes in relation to the trade marks ACOUSTIC WAVE and WAVE that:

Trade Mark	Used in relation to	First Use in Australia	Units sold in Australia
WAVE	Loudspeaker System, loudspeakers, system controller Clock radio Radio/CD player	1987 1995 Not clear	124 (at March 2000) Not stated
ACOUSTIC WAVE	Appears to be used in relation to certain of the opponent’s loudspeaker technologies which incorporates an acoustic ‘waveguide’. A stereo system and accessories which incorporates the above mentioned speakers.
ACOUSTIC WAVE Cannon	Tubular Loudspeaker System, loudspeakers, system controller	1987	124 (at March 2000)

The opponent has two registrations on which it relies:

Reg No:  417741
Priority Date:             2 November 1984
Goods:  Loudspeaker systems and parts and fittings therefore included in this class
Trade Mark:               ACOUSTIC WAVE

Reg No:  720025
Priority Date:             21 October 1996
Goods:  Radios and parts and fittings therefore included in class 9
Trade Mark:               WAVE

In a brochure attached to the Gable declaration at DG-2, the technology behind the expression ACOUSTIC WAVE is explained as follows:

Wave^™ Systems from Bose® are extended-bandwidth high-performance fixed-installation sound systems suitable for use in a number of applications; nightclubs, dance clubs cinemas performing arts centres, churches and more.

WaveSystems are entirely modular and consist of three components: 1) the Acoustic Wave® Cannon™ system; 2) the 8O2™.Series II loudspeaker and 3) the WSG1 WaveSystem Controller.

The Acoustic Wave® Cannon system: the fundamental difference between Wave Systems and conventional sound systems.  Rather than depending on a vibrating speaker cone radiating directly into the room, the Acoustic Wave® Cannon system produces sound using two vibrating columns of air captured in an acoustic waveguide. This proprietary, patented Bose technology results in two important benefits:

Purer sound - in an Acoustic Wave® speaker design, the waveguide’s captured driver only needs to move a small amount in order to set the sound producing air columns into high-amplitude motion.  Reduced cone motion means inherently lower distortion. The driver in waveguide acts as the motor for an acoustic lever. It is the freely vibrating columns of' air that actually deliver the listening environment.

[Stress in original]

The Gable declaration shows that goods bearing the opponent’s trade marks have been extensively advertised and promoted in magazines, trade fairs and so on.

Reed

The declarant states that she is employed in the audio department of Myer Melbourne as a sales representative of the opponent.  She worked in this position for approximately three years prior to making her declaration.  Ms Reed states her knowledge of the opponent’s clock radio bearing the trade mark WAVE and her belief that she would immediately think of the opponent’s WAVE trade marked radio if she saw the opposed trade mark on an audio product.

I note now that Ms Reed does not mention the ACOUSTIC WAVE trade mark but I am not certain what this omission, if it be such, denotes.

Savage

In her evidence in answer, Ms Savage, who is solicitor for the applicant, appends to her declaration the results of a search for trade marks on the IP Australia data-base of trade marks which incorporate the word, or part-word WAVE.  I will return to the significance of this search when giving my reasons, below.

Twartz

Mr Twartz is Marketing Director of the applicant’s sole distributor in Australia.  He attests that the trade mark has been used in relation to audio amplifiers in Australia since 1995 and that the sales have steadily increased since that time.  The applicant has advertised and promoted the amplifiers in relation to which the trade mark is used.  Mr Twartz states his belief that the trade marks are not deceptively similar in relation to the goods in respect of which the trade marks are actually used.

Sample advertisements in magazines appended to the Twartz declaration shows that the opposed trade mark is used in relation to the switching technology within a large amplifier such as might be used for stage performances by musical groups.

Waters

In his evidence in reply Mr Waters says that he is National Sales Manager of the opponent.  He states that he has read the Twartz declaration and believes that the word ‘power’ in the opposed trade mark is merely descriptive of the goods of the opponent (being power amplifiers) “so that the distinctive portion of the trade mark POWERWAVE in relation to amplifiers, particularly power amplifiers, is the word WAVE.”

Mr Waters goes on emphasise that the opponent’s goods are suitable for use in both domestic and professional audio installations and states his opinion about the relative likelihoods of deception or confusion occurring as regards domestic and professional audio purchasers

Ryan

Ms Ryan exhibits to her declaration a copy of the decision of the United States Court of Appeal in Bose Corporation v QSC Audio Products – this case is reported at The matter concerned an appeal from The Trade Mark Trial and Appeal Board which dismissed opposition by the current opponent to the application of QSC Audio Products, Inc. to register the mark POWERWAVE for amplifiers and power amplifiers.  In summary, the Court found that, “Because the Board erred in several respects in its analysis of the likelihood of confusion between the marks in suit, in particular failing to accord fame to the Bose marks, we reverse the Board's decision.”

Reasons

Mr Horak’s argument focused on similarities of the trade marks and through those to the provisions of sections 44 and 60 of the Act.

Insofar as it is relevant to these proceedings, section 44 of the Act provides:

44  Identical etc. trade marks

(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).

Section 60 of the Act provides:

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

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

(a)       it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

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

Note 1:            For deceptively similar see section 10.

Note 2:            For priority date see section 12.

In relation to section 44, although it is faintly argued otherwise in the applicant’s evidence, there can be no doubt that if the goods of the parties are not the same goods, they are goods of the same description[1] and the priority dates of the registrations on which the opponent relies are earlier than that of the opposed applications. Both sections 44 and 60 have in common a requirement that, in order for these oppositions to succeed, the trade marks should be deceptively similar. In terms of section 60, it is for the opponent to establish that the opposed trade marks are deceptively similar to its trade mark which has a reputation in Australia. Resolution of the question of deceptive similarity precedes the question of whether, because of the reputation of the opponent’s trade mark(s), the use of the opposed trade marks would confuse or deceive.

[1] See section 14 of the Act.

Whilst discussing the operation of section 60, this juncture is a convenient one to consider the relevance of the decision of the United States Court of Appeal in Bose Corporation v QSC Audio Products.  There the Court stated:

Fame of an opposer's mark or marks, if it exists, plays a "dominant role in the process of balancing the DuPont[2] factors,"  Recot, 214 F.3d at 1327, 54 USPQ2d at 1456, and "[f]amous marks thus enjoy a wide latitude of legal protection." Id.  This is true as famous marks are more likely to be remembered and associated in the public mind than a weaker mark, and are thus more attractive as targets for would-be copyists.  Id.  Indeed, "[a] strong mark . . . casts a long shadow which competitors must avoid."  Kenner Parker Toys, 963 F.2d at 353, 22 USPQ2d at 1456. A famous mark is one "with extensive public recognition and renown."

[2]  In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).

The consideration of ‘fame’, or reputation, and its effects in the United States case is therefore before, or is conjoint with, the question of whether the trade marks are deceptively similar. Under section 60 the Trade Marks Act 1995, there is no ‘long shadow’ potentially cast by the opponent’s trade marks as consideration of the effects of reputation follows the consideration of deceptive similarity.  There is therefore no analogy to be drawn from the United States decision for application to these Reasons.

However, in relation to section 44, I take note of the caution sounded by the Full Bench of the Federal Court in C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539 (31 October 2000) at paragraph 52:

Woolworths[3] was not an infringement case and, of course, the notoriety taken into account was not any notoriety attaching to marks already registered (or marks applications for which had been lodged before the Woolworths application); the notoriety attached to an element of the mark for registration of which Woolworths had applied. Nevertheless, in our view, Woolworths suggests a proposition for which the cases on which the appellants rely may be taken as authority. It is that, in assessing the nature of a consumer's imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration. It is unnecessary to consider whether the cases are authority for precisely that proposition. All that is necessary for present purposes is to hold, as we would, that they are authority for no wider proposition in relation to the relevance, on a question of deceptive similarity in proceedings where it is alleged under s 120(1) that a registered mark has been infringed, of evidence as to the reputation attaching to the mark. A wider proposition would not, in our view, be consistent with the earlier, and binding, authority to which we have referred. It is unnecessary, in order to decide this case, to go further.

[3] Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411

I am not satisfied that the trade marks on which the opponent relies are so ubiquitous or notorious that they are a factor in assessing the imperfect recollection of consumers of hi-fi equipment.

The issues in these matters thus come down to one question: are the trade marks deceptively similar?  

Submissions

I will, for convenience sake, initially focus on the similarities of the parties’ WAVE and POWERWAVE trade marks.  Mr Horak submitted as follows:

The WAVE trade mark of the opponent is wholly included within the opposed Trade Marks.  The word POWER is descriptive of the goods the subject of the opposed Applications.  The goods covered by the Opposed applications are claimed as “Audio and video equipment including electronic audio and video signal processing equipment, namely amplifiers and power amplifiers”[emphasis added].  The Applicant’s own statement of goods makes direct reference to a class of amplifiers as power amplifiers.  The word POWER is not distinctive of amplifiers, it is a general laudatory term which traders do use in relation to audio and video equipment and particularly in relation to amplifiers and power amplifiers.  It would be generally true to say that the more powerful the better.

An amplifier is an “apparatus for increasing the strength of wireless signals” (The Shorter Oxford English Dictionary; see also Macquarie Dictionary).  The term “increasing strength” effectively means making the signal more powerful.  POWER is therefore central to amplifiers with the word POWER being directly descriptive of amplifiers and power amplifiers – they are power devices that supply power to speakers.  The Applicants brochures are littered with use of the word “power” as a descriptor of the goods.  For example, Exhibit CDS-1 to the declaration of Christopher Schlicht there is contained a brochure headed “PowerLight 9.0PFC”, it contains a number of references (in a descriptive sense) to the word power.

“new standards in high power professional amplifiers”

“highest ratio of power to size and weight ever achieved by a professional power amplifier”

“massive power output capacity”

“breakthroughs in power supply technology”

“ideal for powering subwoofers and low frequency drivers or high-power full-range systems”

When the descriptor POWER is combined with the word WAVE in respect of “audio and video equipment including electronic audio and video signal processing equipment, namely, amplifiers and power amplifiers”, the distinctive part of the trade mark is the word WAVE, not POWER.  By combining the two words, the trade mark POWERWAVE has the meaning that the goods had more power, played louder or longer than Bose’s WAVE goods (see David Gable para 52) or that the product is a louder, better or bigger version of the Bose WAVE radio product or that it has a boosted sound level or that it may be “turbo charged” (see Angela Natalie Reed para 11).  That is, there is a real risk that consumers seeing the POWERWAVE trade mark and having knowledge of the WAVE trade mark of the Bose will mistakenly believe that the word POWER is being used to describe a powerful version of the Bose product.

There are a significant number of cases in which the opposed trade mark contained the whole of the prior mark the two marks have been found to be deceptively similar: Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 (FUNSHIP and SITMAR’S FUNSHIP, FAIRSTAR THE FUNSHIP), John Fitton & Company Limited’s application (1949) 66 RPC 110 (JESTS and EASYJEST); Henry Arendsen’s application [1932] AOJP 433 (ERA and NEW ERA); Kodak (Australasia) Pty Ltd’s application (1936) 6 AOJP 1724 (PAN and HYPERPAN); Olin Corporation v Pacemaker Pool Supplies (1984) AIPC 93-216 (PACE used in combinations and OLIN PACE); Re Application by Eau de Cologne - & Parfumerie-Fabrik Glockengasse No 4711 Gegenuber der Pferdepost von Ferd Mulhens (1990)17 IPR 540 (MY MELODY and MY MELODY DREAMS).

In other cases the result has been the reverse: Hypertec Pty Ltd v Kabushiki Kaisha Tec (1996) AIPC 91-245 (TEC and HYPERTEC); Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505 (VOGUE and EV EUROVOGUE); Schering–Plough Healthcare Products, Inc v Nu Skin International, Inc [1990] ATMO 110 (29 October 1999) (SHADE and MOISTURSHADE); Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 (METRO and WOOLWORTHS METRO).

Bose is not attempting to monopolise all words incorporating the word WAVE.  It objects to the POWERWAVE trade mark precisely because it suggests that it is a bigger, better, more powerful version of its WAVE and ACOUSTIC WAVE products.  The Statutory Declaration of Tracey Michelle Savage exhibits a search of trade marks in class 9 incorporating the part word WAVE.  Firstly, the results of this search may have limited utility given that the Federal Court has emphasised that evidence of the state of the register should be disregarded: Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 at 590. Marks may have been wrongly registered in the past. Furthermore, a trade mark search says nothing about what is happening in the market. In any event many of the trade marks contained in Exhibit TMS-3 are in respect of goods which are completely different to the goods the subject of the prior Bose registrations. For those in respect of which there is an overlap, or which cover all goods in class 9, the suffix or prefix attached to the word WAVE is distinctive in itself and does not describe audio or video equipment. It is submitted that this Statutory Declaration provides no assistance in determining the issues in this case and we request that the hearing officer ignore it for the purposes of making his decision.

In relation to section 60, Mr Horak drew my attention to evidentiary material, which he submitted establishes the opponent’s reputation, and went on to state:

Bose has registered and used not only the trade mark WAVE but also the composite mark ACOUSTIC WAVE thus creating a family of trade marks incorporating the word WAVE.  There is evidence of use of both of the trade marks so the fact that they form a family is a relevant consideration: Schering-Plough Healthcare Products, Inc v Nu Skin International, Inc [1999] ATMO 110 (29 October 1999); Dow Chemical Co v CH Boehringer Sohn KG (1987) 9 IPR 360 at 361. Because of this family, it is therefore logical that, if Bose were to introduce a new product, it may adopt another trade mark incorporating the word WAVE. POWERWAVE is such a trade mark. Unlike the trade marks exhibited to the Statutory Declaration of Tracey Michelle Savage, which do not contain any reference to sound technology, POWERWAVE contains a direct reference to sound technology, and is therefore logically in a family with WAVE and ACOUSTIC WAVE in relation to sound equipment. This fact reinforces the likelihood of deception or confusion amongst members of the public engendered by the use of the POWERWAVE trade mark. The possibility of trade marks being used in a family to indicate that they came from the same source was recognised in relation to perfumes and cosmetics in Re Application by Eau de Cologne - & Parfumerie-Fabrik Glockengasse No 4711 Gegenuber der Pferdepost von Ferd Mulhens (1990) 17 IPR 540 at 542 - for example 4711, 4711 CARAT and 4711 ICE and in Kodak (Australasia) Pty Ltd’s application (1936) 6 AOJP 1724.

The declarations in support of the Opponents case show that there is a high likelihood of deception or confusion.  As stated by Heerey J in Nettlefold Advertising Pty Ltd v Nettlehold Signs Pty Ltd (1997) 38 IRP 495 (as approved on appeal by the Full Federal Court), the Opponent has the initial onus of establishing a reputation in its mark.  “However, once this onus is discharged the burden shifts to the party seeking registration” That is “The onus is on the party seeking registration to satisfy the court that there is no reasonable possibility of deception or confusion”.  It is respectfully submitted that the Opponent has shown a significant reputation in the trade marks “WAVE” and “ACOUSTIC WAVE” in Australia and that the Applicant has not discharged its onus to show that there is no possibility to deception or confusion.

I observe now that the case discussed in the last paragraph, above, was a proceeding under subparagraph 28(a) of the Trade Marks Act 1955. The operation of subparagraph 28(a) is obviously quite different from that of section 60 of the current Act. The burden and standard under the current Act is discussed below.

In her written submissions, Ms Berger drew my attention to the relevant case law in:

Pianotist Co’s Appn (1906) 23 RPC 774 at 777 per Parker J

Australian Woollen Mills Ltd v. FS Walton & Co Ltd (1937) 58 CLR 641 at 658 per Dixon & McTiernan JJ

Shell Co (Aust) Ltd v. Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at 414-415 per Windeyer J

Registrar of Trade Marks v. Woolworths Ltd (1990) 45 IPR 411

Ms Berger went on to submit:

The trade marks in question share the common element “wave” which is a familiar English word with known meanings.  Further, it is not a word entirely without meaning in relation to the goods of the Applicant and Opponent being an obvious reference to sound waves.  Given the allusion to sound waves, the prevalence of marks on the Register for goods with overlapping or similar goods to those of the Applicant and Opponent (see the Savage Declaration) is unsurprising and evidences the desirability of traders to use the term “wave” for their similar goods. 

Given the various registrations for marks including the word WAVE in class 9 covering the same or similar goods to those of the Opponent, any monopoly granted by such registrations is necessarily limited.

In the case of the Opponent’s trade mark WAVE, this mark is wholly included in the Applicant’s Trade Marks but this is not sufficient to support a finding of deceptive similarity (see Shanahan’s Australian Law of Trade Marks and Passing Off 2^nd edition at 170-171; Angoves Pty Ltd v. Johnson (1982) 43 CLR 349 at 362). Delegates of the Registrar of Trade Marks have for have held for some time that marks containing a common element are distinguishable including in Tecmo Kabushiki Kaisha v. Tokyo Denki Kabushiki Kaisha [1995] ATMO 20 (5 May 1995) and E.A.and K.R. Patterson V. WRQ, Inc [2000] ATMO 16 (29 February 2000), amongst other decisions.

The Federal Court also recently considered the issue in Conde Nast Publications Pty Limited v. Virginia Taylor [1998] 864 FCA (24 July 1998) in finding VOGUE not deceptively similar to EUROVOGUE & Device, Burchett J found that it needed to “be borne in mind that the word ‘vogue’ is neither a made-up word nor a word wholly without any direct application, in the ordinary use of language, to the goods in question.  A trader is not entitled to monopolise such a word, denying its use entirely to other traders.  Deceptive use is barred but the Court should be careful not to shut out inappropriately other traders from fair use of the language in ways that will not in reality deceive or confuse”. 

Reasons

Context of Considerations
In considering whether the trade marks are deceptively similar, I must find that the opponent has not established its grounds of opposition unless I am satisfied that there is a reasonable likelihood of deception or confusion: Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999) at paragraph 45 per French J who said:

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

While the Court here discussed the impact of section 33 of the Act and considerations before acceptance of a trade mark, section 55 has a similar impact in oppositions as it states:

55  Decision

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.

The burden is therefore on an opponent to establish its grounds of opposition to my satisfaction.  In Eclipse Sleep Products Inc. v. The Registrar of Trade Marks (1957) 99 CLR 300, at 313, by Dixon C.J, Williams and Kitto JJ observed of the standard under the predecessors of the Trade Marks Act 1995:

[an application for registration] at that stage is "in petitorio" and if the tribunal is left "in dubio" whether to grant the application or not, the application should be refused : Eno v. Dunn (1890) 15 App Cas 252, at p 257.

This dicta is, under the Trade Marks Act 1995, effectively reversed: if there be doubt as to whether to grant the application or not, the application should be registered.

The standard to be applied was discussed by Branson J in Blount Inc v Registrar of Trade Marks [1998] 440 FCA (1 May 1998).  Her Honour said:

Each of s 33(1) and s 41 involves the concept of the Registrar being "satisfied". Where the Act requires the Registrar to be "satisfied" of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

Deceptive Similarity

Deceptive similarity is to be assessed to according to the well-known precepts discussed by Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415:

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.

Windeyer J added, at 416, that "[the] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone but, by the effect of that similarity in all the circumstances".

In Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658, Dixon and McTiernan JJ stated it as follows:

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 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.

Other factors which are to be taken into consideration were stated by Lord Parker (then Parker J) in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777), where he said:

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

A logical start point in this debate is the relative strength of the opponent’s trade mark WAVE.  It is the opponent’s thesis that “the distinctive part of the [opposed] trade mark is the word WAVE”.  As some support for this submission, Mr Horak has referred me to the registration of the opponent’s trade mark ACOUSTIC WAVE where the word ACOUSTIC is subject to a ‘disclaimer’.  Disclaimer, which was a feature of the predecessor of the current Act is discussed in Eclipse, above.  Sufficient to say, disclaimer does not confer a monopoly, it defines where no right exists.

Mr Horak has strongly submitted that I exclude evidence as to the state of the Register and he cites as an authority for this approach Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 at 590. However, this is not an inquiry as to whether the word WAVE is registrable in terms of section 41 as a trade mark in respect of the goods of either party. Viewed objectively, in the context of considerations under section 44, the opponent would wish me to assume that all other trade marks which incorporate the word WAVE might be on the Register by mistake, but its own registrations are not – there are obvious weaknesses in this approach. The evidence shows that the opposed trade marks are in use in the market-place by the applicant without apparent demur by the opponent and with no instances of reported confusion amongst customers: neither the state of the market-place nor the Register are perfect indicators of the relative strength of the trade mark WAVE but they provide some indications. The allegation made by the applicant is that the word WAVE falls into the same category of trade marks as does the word VOGUE, above. One obvious source for corroboration of such an allegation is the Register itself – whilst not a perfect reflection of the trade marks in use in Australia, it may provide some indication of the state of the marketplace or the relative strength of the parties’ claims.  Significant, in my consideration, amongst the examples provided by the applicant are:

Reg No:  393216
Priority Date:             24 June 1983
Goods:  Gas meters; gasometers; gas testing instruments; all other goods in Class 9
Trade Mark:               WONDERWAVE

Reg No:  625487
Priority Date:             22 March 1994

Goods:Compact discs, computer discs and software containing interactive and audiovisual programs in the fields of sports information, sports entertainment, children's entertainment, children's education, adult education, and general entertainment for adults; interactive products in this class about film, television, theatre, music, history and the arts, guides to outdoor recreation, travel, tourism, resorts and vacations; and all other goods in class 9

Trade Mark:               STARWAVE

Reg No:  662409
Priority Date:             29 May 1995

Goods:Apparatus for recording, transmission or reproduction of sound or images including radio cassette recorders, compact stereo/headphone players, radios, compact disc players, compact disc radio cassette recorders/players, clock radios, clock radio cassette recorder/player, headphones, earphones, microphones, speakers, amplifiers, portable compact disc players

Trade Mark:                 

(SHOCKWAVE Logo)

Reg No:  728463
Priority Date:             21 February 1997
Goods:  sound and video recording and reproducing apparatus and instruments
Trade Mark:               WAVE RACE

The list provided by the applicant is not extensive – however, I think there is room for a view that if the logic of the opponent’s argument holds true, its own trade marks should, prima facie, not have been registered in the face of WONDERWAVE or STARWAVE which combine laudatory epithets with the word WAVE and are registered for the same goods as those of the opponent.  Mr Horak has argued that it is obvious that some of the examples, above, containing the expression ‘all goods in this class’ are not in use in respect of goods the same as the opponent’s goods – however, the specification of any trade mark which is registered, or for which an application is pending is, in terms of section 44 of the Act, to be read at its widest.[4]

[4] Re Smith Hayden and Co's Application (1946) 63 RPC 97 at 101.

The opponent’s evidence also gives some indications of the word WAVE’s antecedents.  The pamphlet at DG-2 uses the expressions:

otwo vibrating columns of air captured in an acoustic waveguide

othe waveguide’s captured driver

oThe driver in waveguide acts as the motor

The pamphlet at DG-5 uses the expressions:

oyou’ll be absolutely astounded by the by the sound of acoustic waveguide technology

othe discovery of Bose acoustic waveguide speaker technology

Thus, in terms of Conde Nast, above, the word WAVE at least approaches the species of trade mark which is, “[N]either a made-up word nor a word wholly without any direct application, in the ordinary use of language, to the goods in question.”  The word does, as Ms Berger submits, have some utility in relation to sound waves.

Contextual Confusion

I consider that the approach suggested by the opponent in its analysis of the trade mark POWERWAVE is not apt in the comparison of these trade marks.  The suggested approach is to equate the word POWER, as a part of a conjoined word, with the power amplifiers in respect of which the trade mark is used and to ‘subtract’ it from the applicant’s trade mark and to hence identify the word WAVE as the distinctive (and therefore distinguishing) feature.  This approach to the comparison of trade marks invokes the principle of so-called ‘contextual confusion’ in John Fitton & Company Limited’s Application (1949) 66 RPC 110 (JESTS and EASYJEST). In Fitton there were a number factors present:

othe element in common between the trade marks was ‘strong’ trade mark material – in terms of the predecessors of the current Act, it is prima facie distinctive and likely to be perceived as such in the minds of consumers[5].

[5]  See Kellogg Company v Premium Brands Pty Limited [2000] ATMO 70 (17 July 2000) common element ‘BUBBLES’ “holds a measure of descriptive connotation that traders in such goods may wish to exploit”.

othe variable element of the trade mark was very ‘weak’ trade mark material

othe variable element was likely to be seen by consumers as qualifying both the ‘distinctive’ portion of the trade mark and the goods

othere were no other registrations in evidence incorporating the word JEST in respect of the same goods[6]

[6] Riggio Tobacco Corporation Limited, The House of Edgeworth Incorporated and Rothmans of Pall Mall (Australia) Limited v W.D. & H.O. Wills (Australia) Limited [1998] ATMO 27 (8 June 1998) Common element EXPRESS “Given … the inclusion of the word EXPRESS in another proprietor's marks … I believe the opponent has overestimated the significance of the element EXPRESS”.

othe goods involved in Fitton were of comparatively low cost, being ‘medicated sweets’ on the one hand and ‘medicated preparations for human use in the treatment of indigestion and similar ailments’ on the other.[7]

[7] In The Kettle Chip Company Pty Ltd v Apand Pty Ltd (1993) 46 FCR 152, Burchett J at 161 said: “In general, and more particularly in the case of an item likely to be purchased for a small price without long consideration, the comparison which must be made is between the impression of the applicant's goods retained in a customer's mind and the impression made by the sort of consideration he is likely to give to the respondent's product before purchasing it.”

These factors are balanced in accordance with the circumstances of each case, and it may be that contextual confusion might be found with some items of great expense: the Assistant-Comptroller remarked, for instance, in Fitton at 114 that, “[T]he Registrar would under Sec. 12(1) refuse an application to register the words 'Ursa Minor' as a new mark in respect of, say, motor vehicles in favour of one proprietor if the mark 'Ursa Major' were already on the Register in respect of those goods in the name of another proprietor.”[8]  I will discuss each of the above ‘dot-points’ below.

[8]  See Ford Motor Company v Hino Motor Sales Australia Pty Limited [2002] ATMO 75 (30 August 2002) where Hearing Officer Murray found RISING RANGER deceptively similar to the registered trade mark RANGER in respect of trucks.

As observed, above, the word WAVE is not, on the basis of the evidentiary material, particularly strong trade mark material.  While the word POWER suffers more obvious defects as a trade mark, solus, it is, in the opposed trade mark, part of a conjoined word.  As such, the word WAVE, when the opposed mark is artificially dissected, may appear to be stronger, more distinctive or adapted to distinguish, than it actually is. 

The element POWER in the opposed trade mark, I consider, does not more obviously refer to power amplifiers than it does to the electricity that runs them or to the strength of the sound that the amplifiers produce.  There is some divergence in the opponent’s evidence which confirms that the signification of the word POWER is not obvious – Mr Gable believes that the word might refer to power amplifiers while Ms Reed avers that she believes that the opposed trade mark might denote a more powerful or ‘turbo-charged’ version of the opponent’s WAVE product.  Words derive their significations in part from the context in which they are used and the element POWER in the context in which it is used in the opposed trade mark is likely to be viewed by a member of the public as forming some kind of ‘corporate identity’ with the word WAVE to which it is attached.  Indeed it might be fairly observed that, in the context of the opposed trade mark, the word POWER only obviously refers to ‘power amplifiers’ when the word AMPLIFIERS is placed alongside it.  The opponent’s alternative thesis that the word POWER used alongside the word WAVE might denote to consumers a power version of the opponent’s stereo equipment also suffers from the defect that all of the opponent’s stereo equipment is powered and the supposed denotation is hence either redundant or tautological and thus one not likely to occur immediately to consumers.

There are, as discussed above, other registrations incorporating the element WAVE on the Register for the same goods as the goods of the parties.

The goods in question here are not of slight value – they are complex items of electronic sound equipment of a type that consumers spend some care and attention in purchasing.  In the case of professional sound equipment, purchasers will have the help of a salesman or consultant.  In the instance of consumer stereo equipment, consumers will have the assistance of a shop assistant.  The goods of the parties are not goods which are casually or lightly bought as from the shelves of a supermarket.

I also observe that the adjectival nature of the element EASY in the word EASYJEST renders it more susceptible to a conceptual ‘decoupling’, or a ‘qualifying’ function, in relation to the word JEST and the goods than is possible with the element POWER (which is a noun) within the trade mark POWERWAVE.

Family of Trade Marks

I think that the fact that other traders have registered trade marks which incorporate the word WAVE in respect of the same goods must immediately quash any claim the opponent has to any exclusivity in a family of trade marks such that the presence of the element WAVE would connote only the goods of the opponent.

Conclusion

I am not satisfied that the opposed trade marks are deceptively similar to the trade marks on which the opponent relies.  I have focussed, in the main, on the parties' trade marks WAVE and POWERWAVE: if the latter two trade marks are not deceptively similar, I think it must follow that the other opposed trade mark POWERWAVE & Logo on the one hand and the opponent's trade marks ACOUSTIC WAVE and WAVE on the other are a fortiori neither deceptively similar.

Decision

Section 55 of the Act provides:

55  Decision

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.

The opponent has not established any of its grounds of opposition.  I direct that, if this office has not received notice of an appeal within four weeks of the date of these reasons, the application may proceed to registration.  If notice of appeal is received within the specified time, the opposed trade mark should not be registered until the Court proceedings are completed or discontinued.

Costs

The applicant has requested its costs.  I order that the opponent pay the applicant’s costs as per the schedule to the regulations.

Ian Thompson
Hearing Officer

20 December 2002